FEDERAL COURT OF AUSTRALIA

Australasian Performing Right Association Ltd v Telstra Corporation Limited [2019] FCA 751

ORDERS

THE COURT ORDERS THAT:

In these Orders, the following terms have the following meanings:

(a)    Domain Name means a name formed by the rules and procedures of the Domain Name System (DNS) and includes subdomains.

(b)    DNS Blocking means a system by which any user of a Respondent's service who attempts to use a DNS resolver that is operated by or on behalf of that Respondent to access a Target Online Location is prevented from receiving a DNS response other than a redirection as referred to in Order 3.

(c)    Target Online Locations means the websites that are currently accessible at the Domain Names listed in Schedule A to this Order (together, the Nominated Domain Names).

1.    Each Respondent must, within 15 business days of the grant of these Orders, take reasonable steps to disable access to the Target Online Locations.

2.    Without limiting the technical means which a Respondent may implement to comply with Order 1, Order 1 is deemed to have been complied with by a Respondent if that Respondent implements at its discretion any of the following measures:

(a)    DNS Blocking in respect of the Nominated Domain Names;

(b)    any alternative technical means for disabling access to the Target Online Locations as agreed in writing between an Applicant and a Respondent.

3.    Each Respondent must redirect any communication by a user of its service seeking access to the Target Online Locations which have been disabled pursuant to Order 1 to either:

(a)    the webpage at http://www.copyrightpage.com/, which is maintained and hosted by the Applicants, or their nominee, pursuant to Order 4; or

(b)    a website established, maintained and hosted by that Respondent or its nominee.

4.    The Applicants are to cause the webpage at http://www.copyrightpage.com/ to be maintained and hosted, which informs users of a Respondent’s service who have been redirected to the webpage pursuant to Order 3(a) that access to the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

5.    The Applicants will notify each of the Respondents in writing if the webpage which is maintained and hosted by the Applicants, or their nominee, pursuant to Order 4, ceases to operate for any reason and will notify each of the Respondents in writing of a different URL that complies with Order 4.

6.    If, in complying with Order 3, a Respondent redirects any communication by a user of its service to a webpage established, maintained and hosted by it, that Respondent or its nominee must ensure that the webpage informs the user of that Respondent's service that access to that the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

7.    The Applicants must notify each Respondent, in writing, within 15 business days of the Applicants (or any one of them) becoming aware that any Nominated Domain Name ceases to enable or facilitate access to the Target Online Locations otherwise than by reason of these orders, or that the Target Online Locations have ceased to have the primary purpose or effect of infringing or facilitating the infringement of copyright, in which case the Respondents shall no longer be required to take steps to disable access to the relevant Target Online Location(s) in accordance with Order 1 in relation to the relevant Nominated Domain Name(s).

8.    Order 1 is to operate for a period of 3 years from the date of the grant of these Orders.

9.    A Respondent will not be in breach of Order 1 if it temporarily declines or temporarily ceases to take the steps ordered in Order 1 (either in whole or in part) upon forming the view, on reasonable grounds, that suspension is necessary to:

(a)    maintain the integrity of its networks or systems, or functioning of its blocking system;

(b)    upgrade, troubleshoot or maintain its blocking system;

(c)    avert or respond to an imminent security threat to its networks or systems; or

(d)    ensure the reliable operation of its ability to block access to online locations associated with criminal content if it reasonably considers that such operation is likely to be impaired, or otherwise to comply with its legal obligations (other than any contractual obligations to its customers) including under section 313(3) of the Telecommunications Act 1997 (Cth) or otherwise,

provided that:

(e)    unless precluded by law, it notifies the Applicants or their legal representative(s) of such suspension, including the reasons and the expected duration of such suspension by 5.00 pm on the next business day; and

(f)    such suspension lasts no longer than is reasonably necessary and in any case, no longer than 3 business days or such longer period as the Applicants may agree in writing or the Court may allow.

10.    The owner or operator of any of the Target Online Locations and the owner or operator of any website who claims to be affected by these Orders may apply on 3 days' written notice, including notice to all parties, to vary or discharge these Orders, with any such application to:

(a)    set out the orders sought by the owner or operator of the Target Online Location or affected website; and

(b)    be supported by evidence as to:

(i)    the status of the owner or operator of the Target Online Location or affected website; and

(ii)    the basis upon which the variation or discharge is sought.

11.    If access to any of the Target Online Locations is at any time during the operation of these Orders available via a domain name that is not a Nominated Domain Name (Additional Domain Name):

(a)    the Applicants may file and serve:

(i)    an affidavit which:

               (A)    identifies the Additional Domain Name;

               (B)    states that, in the good faith belief of the deponent, the website provided from the Additional Domain Name is a new location outside Australia for a Target Online Location the subject of these Orders and brief reasons therefor; and

(ii)    proposed short minutes of order to the effect that:

               (A)    the definition of Target Online Locations in these Orders is amended to include the Additional Domain Name as a Nominated Domain Name; and

               (B)    the time period in Order 1 of these Orders starts to run in relation to the Additional Domain Name upon service in accordance with Order 13(a) below.

(b)    the process contained in Order 13 shall apply.

12.    The affidavit referred to in Order 11 is to be given by a deponent duly authorised to give evidence on behalf of one or more of the Applicants and may be given by their solicitor.

13.    If an affidavit and proposed short minutes of order are filed and served in accordance with Order 11:

(a)    the Respondents must, within 10 business days, notify the Applicants and the Court if they object to the Orders being made in accordance with the short minutes of orders served by the Applicants;

(b)    if any Respondent gives notice of any objection, or the Court otherwise thinks fit, the proceeding will be listed for further directions;

(c)    if no Respondent gives notice of any objection and the Court does not otherwise require the proceeding to be relisted, then the Court may make orders in terms of the short minutes of order served by the Applicants without any further hearing; and

(d)    the Applicants must serve on the Respondents any such orders made.

14.    The parties have liberty to apply on 3 days' written notice, including, without limitation, for the purpose of any application:

(a)    for an order in this proceeding extending the period of operation of Order 1;

(b)    for further orders to give effect to the terms of these Orders;

(c)    for further orders in the event of any material change of circumstances including, without limitation, in respect of the costs, consequences for the parties and effectiveness of the technical methods under Order 2; and/or

(d)    for orders relating to other means of accessing the Target Online Locations not already covered by these Orders.

15.    The requirement under s 115A(4) of the Copyright Act 1968 (Cth) (Copyright Act) that the Applicants give notice of their application to the person(s) who operate the Target Online Locations be dispensed with in so far as any such notice has not already been given.

16.    The First, Third and Fourth Applicants be granted leave under s 120(1) of the Copyright Act, to proceed with this proceeding without joining the relevant copyright owners as applicants or respondents.

17.    The Applicants pay the Respondents' compliance costs calculated at the rate of $50 per domain name to which access is disabled for the purposes of complying with Order 1.

18.    There be no other order as to costs.

19.    Pursuant to Rule 36.03(b) of the Federal Court Rules, the date fixed for filing a notice of appeal is 21 days from the date on which the Court publishes its reasons for judgment.

To:    Telstra Corporation Limited (ACN 051 775 556) and others named in the Schedule

Take notice that failure to comply with this Order may make you liable to imprisonment or to sequestration of property for contempt of Court.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

PERRAM J:

Introduction

1    One popular form of entertainment is the music video. A music video is a short film which integrates a song with visual imagery. One purpose, perhaps the principal purpose, of music videos is to encourage those who see them to buy the songs which are embedded in them. Consequently, as a promotional object music videos have generally been provided to the public free of charge. At first, they appeared on particular television shows such as, in this country, Countdown. Later, in 1981, an entire channel—MTV—was launched dedicated to playing them continuously. Since 1987 the ABC has run a program—Rage—which plays music videos all night every weekend.

2    In the genteel age before the internet, it was of course possible for persons determined not to have to pay for their music to record a song embedded in a music video on a cassette recorder. However, the quality of such recordings was very poor and the practice never really took hold.

3    In the age of the internet, music videos have persisted on MTV and numerous other television outlets although they have to an extent been challenged by other forms of high-brow entertainment now available. Many of them involve house inspections or the rituals of courtship, and sometimes both. Nevertheless, despite these diversions, the Rage is maintained. Music videos are also now available by way of streaming from the internet. One prominent site which offers streaming of music videos is YouTube, a website maintained by a subsidiary of Google LLC (itself a subsidiary of Alphabet Inc.). A person may visit YouTube and watch a streamed version of just about any music video they wish. One typical aspect of the streaming experience is that whilst YouTube permits a user to watch the music video it does not permit either the music video or its soundtrack to be permanently downloaded to the user’s device. This limitation serves as an encouragement to users to purchase the song.

4    Like most modern prohibitions, it may be readily circumvented by persons with sufficient computer literacy. The general practice of extracting a file for download from a streaming service is usually called ‘ripping’.

5    When a person rips a song from a music video, two copyrights are infringed. The first copyright is in the musical work which is being performed by the artist, that is to say, the copyright in the music itself. This is a copyright in a ‘work’ regulated by Pt III of the Copyright Act 1968 (Cth) (‘the Act’). The second is the copyright in the performance of the song which, not being a work governed by Pt III, is a subject matter other than a work and therefore governed by Pt IV of the Act. A third copyright is involved in this case too, albeit indirectly, and this is the copyright which inheres in the music video itself which is, after all, a cinematographic film and hence subject to copyright under Pt IV (specifically, s 90). These copyrights may be owned by a variety of persons. Leaving aside any process by which the copyrights are assigned, the copyright in a musical work is originally vested in its author (s 35(2)) which because the copyright generally expires 70 years after the author dies (s 33(2), item 1), necessarily implies that the author is a human: IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14; 239 CLR 458 at 494 [97] per Gummow, Hayne and Heydon JJ; Telstra Corporation Ltd v Phone Directories Company Pty Ltd [2010] FCAFC 149; 194 FCR 142 at 166 [72] per Keane CJ, 172 [100] per Perram J and 182 [134] per Yates J. The copyright in a sound recording vests in its maker (s 97(2)) which will be where one party (i.e. a record company) contractually engages another (i.e. an artist) to make the sound recording for the first party (i.e. the record company) (s 97(3)). The owners of the copyright in a cinematographic film are the director of the film, its producer and the screenwriter (s 98(2)).

6    This case is concerned with a number of websites which enable users to rip soundtracks from music videos streamed from YouTube (collectively, the ‘online locations’). The services and their domain names from which they are offered are as follows:

Service            Domain name(s)

2conv            2conv.com

Flv2mp3        Flv2mp3.by

            Flv2mp3.com

            Flv2mp3.org

Convert2mp3        Convert2mp3.net

Flvto            Flvto.biz

            Flvto.com

7    The Applicants are all owners of the copyright in Australia in a number of well-known sound recordings (i.e. subject matters other than works under Pt IV) or musical works (under Pt III) or, if not the owners, are the exclusive licensees of that copyright. They now apply for orders under s 115A of the Act which, if made, would require most of the internet service providers operating in Australia to take steps to disable access to the abovementioned domain names. The respondents to this application are the major Australian internet service providers: Telstra, Foxtel, Vodafone, Optus and TPG. With the exception of TPG each has filed a submitting appearance. TPG did not file such an appearance but also did not appear to oppose the making of the orders sought. None of the owners of the online locations sought to be joined to the proceeding. This is so notwithstanding as I explain below that I am satisfied they had notice of this application.

8    The matter was heard on 3 April 2019 at which time I made the orders sought by the Applicants. I did so because the case presented as a clear case of blatant piracy requiring the granting of immediate relief. I indicated that I would deliver my reasons later. At the same time as I made those orders I extended the time for any appeal to 28 days after the production of these written reasons.

THE STATUTE

9    Section 115A was inserted into the Act in 2015 by the Copyright Amendment (Online Infringement) Act 2015 (Cth) and was recently amended by the Copyright Amendment (Online Infringement) Act 2018 (Cth). After the most recent amendments s 115A now provides:

115A Injunctions relating to online locations outside Australia

Application for an injunction

(1)    The owner of a copyright may apply to the Federal Court of Australia to grant an injunction that requires a carriage service provider to take such steps as the Court considers reasonable to disable access to an online location outside Australia that:

     (a)    infringes, or facilitates an infringement, of the copyright; and

  (b)    has the primary purpose or the primary effect of infringing, or facilitating an infringement, of copyright (whether or not in Australia).

(2)    The application under subsection (1) may also request that the injunction require an online search engine provider (other than a provider that is covered by a declaration under subsection (8B)) to take such steps as the Court considers reasonable so as not to provide a search result that refers users to the online location.

Granting the injunction

(2A)    The Court may grant the injunction in the terms, and subject to the conditions, that the Court considers appropriate.

Note 1:    For the matters that the Court may take into account when determining whether to grant the injunction, see subsection (5).

Note 2:    The terms and conditions of the injunction that apply to a carriage service provider under subsection (1) may be different from those that apply to an online search engine provider under subsection (2).

(2B)    Without limiting subsection (2A), the injunction may:

(a)    require the carriage service provider to take reasonable steps to do either or both of the following:

    (i)    block domain names, URLs and IP addresses that provide access to the online location and that are specified in the injunction;

    (ii)    block domain names, URLs and IP addresses that the carriage service provider and the owner of the copyright agree, in writing, have started to provide access to the online location after the injunction is made; and

(b)    require the online search engine provider to take reasonable steps to do either or both of the following:

     (i)    not provide search results that include domain names, URLs and IP addresses that provide access to the online location and that are specified in the injunction;

         (ii)    not provide search results that include domain names, URLs and IP addresses that the online search engine provider and the owner of the copyright agree, in writing, have started to provide access to the online location after the injunction is made.

Parties

(3)    The parties to an action under subsection (1) are:

 (a)    the owner of the copyright; and

 (b)    the carriage service provider; and

(ba)    if the application under subsection (1) also sought for the injunction to apply against an online search engine provider--the online search engine provider; and

(c)    the person who operates the online location if, but only if, that person makes an application to be joined as a party to the proceedings.

Service

(4)    The owner of the copyright must notify:

   (a)    the carriage service provider; and

(aa)    if the application under subsection (1) also sought for the injunction to apply against an online search engine provider--the online search engine provider; and

   (b)    the person who operates the online location;

of the making of an application under subsection (1), but the Court may dispense, on such terms as it sees fit, with the notice required to be sent under paragraph (b) if the Court is satisfied that the owner of the copyright is unable, despite reasonable efforts, to determine the identity or address of the person who operates the online location, or to send notices to that person.

Matters to be taken into account

(5)    In determining whether to grant the injunction, the Court may take the following matters into account:

(a)    the flagrancy of the infringement, or the flagrancy of the facilitation of the infringement, as referred to in paragraph (1)(b);

(b)    whether the online location makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright;

(c)    whether the owner or operator of the online location demonstrates a disregard for copyright generally;

(d)    whether access to the online location has been disabled by orders from any court of another country or territory on the ground of or related to copyright infringement;

(e)    whether disabling access to the online location is a proportionate response in the circumstances;

(ea)    if the application under subsection (1) also sought for the injunction to apply against an online search engine provider--whether not providing search results that refer users to the online location is a proportionate response in the circumstances;

(f)    the impact on any person, or class of persons, likely to be affected by the grant of the injunction;

(g)    whether it is in the public interest to disable access to the online location;

(ga)    if the application under subsection (1) also sought for the injunction to apply against an online search engine provider--whether it is in the public interest not to provide search results that refer users to the online location;

  (h)    whether the owner of the copyright complied with subsection (4);

  (i)    any other remedies available under this Act;

  (j)    any other matter prescribed by the regulations;

  (k)    any other relevant matter.

Presumption that the online location is outside Australia

(5A)    For the purposes of the proceedings, the online location is presumed to be outside Australia, unless the contrary is established.

Affidavit evidence

(6)    For the purposes of the proceedings, section 134A (affidavit evidence) applies as if the reference in paragraph 134A(f) to a particular act included a reference to a class of acts.

Rescinding and varying injunctions

(7)    The Court may:

(a)    limit the duration of; or

(b)    upon application, rescind or vary;

an injunction granted under this section.

(8)    An application under subsection (7) may be made by:

(a)    any of the persons referred to in subsection (3); or

(b)    any other person prescribed by the regulations.

(8A)    An application under subsection (7) must not request the Court to vary the injunction so that it applies to an online search engine provider that is covered by a declaration under subsection (8B).

Declarations excluding online search engine providers

(8B)    The Minister may, by legislative instrument, declare that:

(a)    a particular online search engine provider; or

(b)    an online search engine provider that is a member of a particular class;

must not be specified in an application under subsection (1) or (7).

Costs

(9)    A carriage service provider or, if applicable, an online search engine provider is not liable for any costs in relation to the proceedings unless the provider enters an appearance and takes part in the proceedings.

10    This case is the first case heard since those amendments took effect.

THE ONLINE LOCATIONS AND BASIS FOR THE INJUNCTION

The online locations

11    Two minor matters may be dealt with at the outset. First, the expression ‘online location’ appeared in s 115A prior to its amendment. In Universal Music Australia Pty Ltd v TPG Internet Pty Ltd [2017] FCA 435; 126 IPR 219 (‘Universal’) at 225 [16] Burley J concluded that the expression was intentionally broad and includes, ‘but is not limited to, a website and would also accommodate future technologies’. Each of the services is a website and hence is an online location for the purposes of s 115A(1). Secondly, by s 115A(1) the online locations must be located outside Australia. However, by reason of s 115(5A) an online location is presumed to be located outside Australia unless the contrary is shown. The contrary was not shown on the present application and the online locations are therefore taken to be outside Australia.

Carriage service providers

Definition of ‘carriage service provider’

12    Section 115A only authorises orders against carriage service providers. Section 10 of the Act defines ‘carriage service provider’ to have the same meaning as it bears in the Telecommunications Act 1997 (Cth) (‘Telecommunications Act’). Section 87(1) of that Act provides the basic definition of a carriage service provider in these terms:

87 Carriage service providers

Basic definition

(1)    For the purposes of this Act, if a person supplies, or proposes to supply, a listed carriage service to the public using:

    (a)    a network unit owned by one or more carriers; or

(b)    a network unit in relation to which a nominated carrier declaration is in force;

the person is a carriage service provider.

13    A ‘listed carriage service’ is a carriage service that is provided between various points at least one of which is in Australia: Telecommunications Act s 16(1). A ‘carriage service’ is a ‘service for carrying communications by means of guided and/or unguided electromagnetic energy’: s 7. The concept of a ‘network unit’ in s 87 also requires some elucidation. One begins with the definition of a ‘line’ in s 7 as meaning ‘a wire, cable, optical fibre, tube, conduit, waveguide or other physical medium used, or for use, as a continuous artificial guide for or in connection with carrying communications by means of guided electromagnetic energy’. This is the most basic infrastructure unit that the Telecommunications Act contemplates. When one line is joined to another they become a ‘line link’: ss 30(1)-(2). Without dwelling on the diverting but presently immaterial detail of how the recursive definition of a line link operates, at its most basic a ‘network unit’ is defined in s 26 to be a line link connecting distant places in Australia which are more than 500 metres apart. Intuitively, one can see that a network unit so defined is the basic integer of a larger network. Returning to the definition of a ‘carriage service provider’ in s 87, this means therefore that it is in substance a person who provides a telecommunications service over a network at least part of which is in Australia.

The Respondents to this application

14    The First to Third Respondents filed submitting appearances identifying themselves as the ‘Telstra respondents’. In correspondence with the Applicants, the Telstra respondents admitted that they were carriage service providers. The Fourth respondent, Foxtel Management Pty Ltd, also filed a submitting appearance and admitted in correspondence that it was a carriage service provider for the purpose of s 115A. The Fifth to Fourteenth respondents filed submitting appearances identifying themselves as the ‘Optus respondents’. They too admitted that they were carriage service providers for the purpose of s 115A. The Thirty Third to Thirty Fifth respondents filed a submitting appearance identifying themselves as the ‘Vodafone respondents’. They also admitted in correspondence that they were carriage service providers.

15    I am satisfied that each of the Telstra, Foxtel, Optus and Vodafone respondents are carriage service providers for the purposes of s 115A.

16    The Fifteenth to Thirty Second respondents, however, did not file an appearance. The Applicants referred to them as the ‘TPG respondents’. Efforts by the Applicants’ solicitors to find out the attitude of the TPG respondents to the application did not receive the courtesy of a response. I am satisfied that the TPG respondents are aware of the fact of the application and do not propose to participate in it. The Applicants submitted that the Court should treat them, in substance, as having filed a submitting appearance. I accept this.

17    There was no direct evidence that the TPG respondents were carriage service providers. There was a statement in an affidavit by one of the solicitors for the Applicants, Ms Yu, that the TPG respondents, inter alia, were carriage service providers. However, I do not think evidence of that kind is sufficient to prove this matter. The question of which 18 separate corporate respondents are carriage service providers and which are not is not a matter which I would expect Ms Yu to know. Whilst Ms Yu and I both know that TPG is a well-known internet service provider I do not accept that that knowledge allows either of us to infer which of one or more of 18 subsidiaries are the ones which are carriage service providers.

18    The Applicants alleged in their concise statement that each of the TPG respondents was a carriage service provider. The fact that those respondents have not appeared does not procedurally permit the Court to proceed on the basis that this matter had been admitted by them.

19    If the matter had proceeded by statement of claim then the TPG respondents would have been obliged by Federal Court Rules 2011 (Cth) (‘FCR’) r 16.32 to file a defence within 28 days of service. A failure to do so would have entitled the Applicants to apply for an order on default under FCR 5.23(2)(c) for the relief to which the Court was satisfied they were entitled. However, whilst a failure to file a defence has the effect of permitting an application for default orders to be made, it does not have the effect of operating as an admission of all of the allegations in the statement of claim. Hence, even if the matter had proceeded by way of statement of claim, the fact that the TPG respondents have ignored the proceeding would not have relieved the applicants of the burden of proving that the TPG respondents were carriage service providers.

20    Even so, this case is further complicated by the fact that the Applicants did not proceed by way of statement of claim but instead on an originating application. It is true that the Applicants took up the invitation contained at cl 4.2 of the Intellectual Property Practice Note (IP-1) to consider commencing a proceeding with the delivery of a concise statement. The thinking underlying concise statements includes rapid hearings and extensive directions at the first case management hearing quite possibly including an order that a respondent file a concise statement in response. However, when all is said and done, these procedures do not arise from the FCR. Where, as here, respondents do not file an appearance under FCR 12.01, the legal situation under the FCR is that the proceeding is by way of originating application without a statement of claim. Consequently, the failure by the TPG respondents to file a notice of appearance does not result, as a matter of law, in an admission by them of the allegations made in the Applicants’ concise statement for no rule so provides. Further, even if one could pretend for a moment that a concise statement was a statement of claim for the purposes of FCR 16.32 (which one cannot), this would not relieve the Applicants of the need to prove the TPG respondents were carriage service providers (for the reasons just given).

21    That is not, however, the end of the matter. The TPG respondents were also respondents in Universal. It was this case which resulted in the judgment of Burley J to which I have already referred. In that proceeding the applicant, Universal, issued a notice to admit facts to the TPG respondents requiring them to admit that they were carriage service providers. That admission was made. Ms Yu gave evidence in this proceeding about the making of that admission. The admission is therefore before the Court on the present application. As a result, I accept that the TPG respondents are carriage service providers. It is not presently necessary to consider whether such an admission is subject to the implied undertaking referred to in Hearne v Street [2008] HCA 36; 235 CLR 125 at 155 [96] per Hayne, Heydon and Crennan JJ; Gleeson CJ agreeing at 131 [3], and Kirby J at 145 [57]. It is perhaps a nice question whether an admission under a notice to admit is acquired as a result of a compulsory process. If it were, it would of course be possible for the leave to be granted nunc pro tunc.

Ownership and subsistence of copyright

22    Section 115A(1)(a) requires that the applicant for an injunction under it must be the owner of a copyright. However, s 119(a) extends s 115A so that it also applies where an applicant is the exclusive licensee of a copyright. Further, by s 126 copyright is presumed to subsist in a work or other subject matter if the respondent does not put in issue the question of subsistence. None of the respondents have put in issue the subsistence of copyright in any of the musical works or sound recordings involved in the present application. Consequently, the effect of ss 119 and 126 is that copyright is presumed to subsist in all of them. Neither the fact that s 115A is, perhaps, not an altogether ordinary procedure nor the fact that none of the entities operating the aforementioned domain names have filed appearances in this Court has the consequence that ss 119 and 126 do not apply to bring about this outcome: Universal at 232 [55].

23    There are four applicants in this proceeding. The first is the Australasian Performing Right Association Ltd (‘APRA’) which is the collecting society for, inter alia, the composers of musical works. As described in greater detail below it is either the owner or exclusive licensee of the copyrights in a number of musical works. In some instances, APRA holds its rights as a tenant in common with some other person. However, this does not impact on its right to proceed: Olympic Amusements Pty Ltd v Milwell Pty Ltd (1998) 81 FCR 403 at 415 per Wilcox J. The three other applicants are Sony Music Entertainment Australia Pty Ltd (‘Sony’), Universal Music Australia Pty Ltd (‘Universal’) and Warner Music Australia Pty Limited (‘Warner’) each of which is a significant player in the music industry. Each is either the owner or exclusive licensee of the copyright in a number of sound recordings, also described more precisely below.

24    Because each of the applicants is in some cases only an exclusive licensee of the relevant copyright it is necessary to note a further matter. In a proceeding brought by an exclusive licensee the effect of s 120(1) of the Act is ordinarily to require the corresponding copyright owner to be joined to the proceeding unless the Court otherwise grants leave. However, it is established that in proceedings under s 115A(1) it is generally appropriate to grant that leave: Universal at 231-232 [51]. I accordingly granted leave for the applicants to do so at the hearing.

The sounds recordings and musical works in this application

25    APRA is the owner of the right to communicate to the public the musical work, being a song ‘Talk is Cheap’, performed by the artist Chet Faker. It is the exclusive licensee of the right to communicate to the public the musical work, being a song, ‘Thinking Out Loud’, performed by the artist Ed Sheeran and the musical work, being a song, ‘I’m Not the Only One’, performed by the artist Sam Smith. It is the joint owner of the right to communicate to the public the musical works ‘Chandelier’ performed by the artist Sia and ‘She Looks So Perfect’ performed by the artist 5 Seconds of Summer.

26    Sony is the owner of the copyright in Australia of all of the sound recordings found on the album Beautiful by the artist Jessica Mauboy. The album cover for Beautiful was in evidence and contained this notation: ‘℗ 2013 Sony Music Entertainment Australia Pty Ltd’. The effect of this notation is to enliven a rebuttable presumption arising under s 130(3) of the Act that the recording was first published in 2013 and that the owner is Sony. Sony is also the owner of the copyright in Australia of all of the sound recordings on the album Heart Beats (Deluxe) by the artist Dami Imi.

27    Universal is the exclusive licensee of the copyright in Australia of a number of sound recordings including all of those on the album entitled American Beauty/American Psycho by the artist Fall Out Boy, the album entitled Purpose (Deluxe) by the artist Justin Bieber, the album Delirium (Deluxe) by the artist Ellie Goulding and the album Youngblood by the artist 5 Seconds of Summer.

28    Warner is the owner of the copyright in Australia in a number of sound recordings including those on the album Internal by the artist SAFIA, and the sound recordings entitled ‘Life Goes On’, ‘I Don’t Lack Imagination’ and ‘Get Money!’ by the artist E^ST. It is also the exclusive licensee of the copyright in Australia in a number of sound recordings being ‘Papercuts’, ‘Catch 22’ and ‘Oh My’ by the artist Illy, ‘The Campfire Song’ and ‘Ain’t No Little Girl’ by the artist Casey Chambers and ‘Vessel’ by the artist The Kite String Tangle.

29    It follows that the first requirement of s 115A, being that the application be made by a copyright owner, is established in the case of all of the Applicants.

The online locations infringe and facilitate the infringement of the Applicants’ copyright

Streaming, downloading and YouTube

30    I have already adverted to the distinction between streaming media from a website and downloading it. Generally, YouTube permits streaming but does not permit downloading of media from its website. The generality of that proposition requires some qualification. A person who uploads media to YouTube is required, as part of that process, to determine who can view that media and under what circumstances. It is possible as part of that process to grant permission to permit downloading of files. However, this did not occur in relation to any of the music videos with which this case is concerned.

31    Once uploaded, YouTube transcodes the digital format of the media into a variety of other formats which are designed to allow the media to be streamed but not downloaded. This is achieved by YouTube defaulting to delivery of the media via the HTML5 format which enables streaming but not downloading.

32    Dr Robert Nicholls is an engineer specialising in communication technologies and is, inter alia, a senior lecturer at the University of New South Wales Business School and a visiting professorial fellow at the law school of the University of Technology, Sydney. Dr Nicholls gave evidence of an expert nature as to various technical aspects of YouTube and the domain names the target of the present application. He also explained how the internet operates. Dr Nicholls opined that YouTube’s use of HTML5 suggested that it was intended primarily to deliver media to users by way of streaming rather than downloading. I see no reason not to accept that evidence.

33    The usual terms on which YouTube provides its streaming service are available under the link entitled ‘Terms’. Dr Nicholls explained that these usual terms resulted from a choice made by the uploader to select YouTube’s ‘Standard YouTube License’. When this option was selected the resultant terms only authorised a user to stream the media. It was nevertheless possible for an uploader to select the ‘Creative Commons License’ and when this was selected the resultant terms and conditions permitted a user to download the media. The Applicants submitted that it followed from this evidence that where a particular media available on the YouTube platform was only available for streaming this must reflect a choice made by the uploader that they did not wish it to be downloaded. I accept this submission. Consistently therewith, none of the music videos the subject of the present application have been uploaded with the Creative Commons Licence option selected.

34    There is a premium YouTube service for which users pay a subscription. In some cases, these users are permitted to download music videos. However, it was not suggested in this case that any such users were involved in the websites subject to the orders made after the hearing.

Infringement and facilitation of the infringement of copyright

35    Each of the websites referred to above permits a user to copy the URL of a music video from YouTube and to paste it into a data entry box on the website. Once that is done the user is then asked to select the format in which they would like the file to be downloaded (e.g. MP3, MP4 or AVI). The user then initiates the download process and, after a time, the file is downloaded from the website to the user’s device. The downloaded or ‘ripped’ file is not then subject to any further restrictions on its copying.

36    In addition to this functionality, the websites also offer users the choice to download software which provides similar functionality on the user’s own device.

37    A paralegal employed by the Applicant’s solicitors, Ms Short, gave evidence that she used each of the websites except 2conv to strip music files out of each of the musical works and sound recordings. She then checked the music files she had downloaded to be sure that the music file was the same as that soundtrack in the corresponding music video. She ascertained in each case that it was. I accept Ms Short’s evidence.

38    In the case of 2conv, when Ms Short went to use the website to strip out the music from some of the music videos she was confronted with a message which informed her that this was not possible since that there had been a demand made by a rights holder. In those cases, however, she was still able to rip the files using the ‘2Conv YouTube Downloader’ application that was available for download at 2conv. There is no doubt that persons doing as Ms Short did would have infringed each of the copyrights as I have described at [5] above (although Ms Short, acting as she was with the consent of the Applicants, of course did not).

39    So far as the musical works are concerned, the soundtrack in each music video is itself a reproduction in material form of the relevant musical work. A further copying of the soundtrack will therefore involve reproduction in a material form of the musical work: s 21(1). Under Pt III, two exclusive rights conferred on the holder of such a copyright are the right to produce the work in material form (s 31(1)(a)(i)) and the right to communicate the work to the public (s 31(1)(a)(iv)). Relevantly, the concept of ‘communication to the public’ is defined in s 10 to include making the work available online or electronically transferring it. The ripping of a soundtrack from a music video using these websites therefore infringes the copyright in the musical work: s 36(1).

40    So far as the sound recordings are concerned, a person who copies a cinematographic film which has a soundtrack embodied in it copies not only the cinematographic film but also the sound recording which was used to create the soundtrack: Phonographic Performance Company of Australia v Federation of Australian Commercial Television Stations [1998] HCA 39; 195 CLR 158 (‘PPCA’) at 167 [22]. And, as that decision also establishes, this is so even though s 23(1) of the Act deems the soundtrack embedded in the cinematographic film not itself to be a sound recording. The copying which occurs is instead the copying of the sound recording that was used to create the soundtrack for the film. Although the soundtrack is not a musical work because of s 23(1), this does not mean that the anterior sound recording loses its character as a sound recording.

41    It is true that what is involved here is the copying of a part of a cinematographic film being the part which is the soundtrack, whereas PPCA concerned the copying of the whole of a cinematographic film. However, that distinction is not material and the reasoning in PPCA applies equally to the situation where part of a cinematographic film containing a soundtrack is copied and, more pertinently, where—as here—the part copied is the soundtrack. Sound recordings, being subject matter other than works regulated by Pt III, are instead regulated by Pt IV. There are a number of rights associated with the copyright in a sound recording set out in s 85 of the Act. These include the exclusive right to copy it (s 85(1)(a)) and the right to communicate the sound recording to the public (s 85(1)(c)). The ripping of the soundtrack from a music video without the permission of the copyright owner is therefore an infringement of that copyright: s 101(1).

42    It follows that the operators of the websites are infringing the relevant music and performance copyrights by copying the soundtracks out of music videos streamed from YouTube. They are also infringing the same copyrights by making soundtracks then available online and electronically transmitting them to users. The operators also facilitate the infringement of both kinds of copyright by permitting users to make a copy of the soundtrack. Consequently, the Applicants have established that the website operators infringe their copyrights and that they have facilitated that infringement by users. The requirements of s 115A(1)(a) are therefore satisfied.

The primary purpose and primary effect of the online locations is to infringe copyright or facilitate the infringement of copyright

43    Unlike s 115A(1)(a), s 115A(1)(b) includes no definite article and thus does not require the Applicants to show that the primary purpose or primary effect of the online locations is to infringe their copyright, but to infringe copyright generally. Nonetheless, s 115A(1)(b) appears to be engaged largely for the same reasons as considered above in the context of s 115A(1)(a).

44    A quick inspection of the websites shows self-evidently that the online locations are specifically intended to facilitate the copying of soundtracks by members of the public from YouTube. It is likely that this is indeed their exclusive purpose and effect, and they do so flagrantly. The services provided by the online locations will only be of use to anyone where YouTube does not offer download functionality—that is, where no permission is given to make a copy of media on YouTube. In some instances, the online locations purport to inform users that the services they offer are entirely legitimate and non-infringing. For example, the web page for Convert2mp3 states:

Is it legal to download and convert videos from youtube and other video platforms?

Yes, convert2mp3.net is completely legal.

45    The fact that the websites contain statements of this kind is entirely beside the point. The terms and conditions of use for the websites include a warranty by each user that they have permission from the owner of the copyright to copy the soundtrack. Thus statements of this kind, whilst technically correct, are entirely without substance and merely serve to underscore the dishonesty of the website operators.

46    In addition, the evidence shows that these websites are responsible for piracy of music from music videos on an industrial scale. There were 66.5 million visits to Convert2mp3.net in January 2019 and 112.4 million to Flvto.biz in January 2019 alone.

Notice given to the online locations of these proceedings

47    I am satisfied, as s 115A(4) requires, that the operators of these websites were given notice of these proceedings. The terms and conditions page of each web site contains a contact email address which the Applicants’ solicitors contacted. An automatic response was generated asking for contact to be made through the online contact form. This was done but no response was received. This is hardly surprising.

Further factors relevant to granting an injunction

48    Whilst the Applicants set out in their submissions a great number of reasons why they ought to be granted the injunctive relief they sought, including that the online locations have been the subject of orders blocking access in other jurisdictions (s 115A(5)(d)) and that the injunctions would be proportionate and in the public interest (ss 115A(5)(e)-(g)), I do not think it is necessary to go into these matters. On the facts disclosed above, it is plain that these websites are involved in industrial scale copyright infringement. The case for an injunction is overwhelming.

49    It was for these reasons that I made the orders I did on 3 April 2019.

Associate:

Dated:    27 May 2019

Schedule A

SCHEDULE OF PARTIES