FEDERAL COURT OF AUSTRALIA

Foxtel Management Pty Limited v TPG Internet Pty Ltd [2019] FCA 1450

ORDERS

In this Application, 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 5.

(c)    IP Address means an Internet Protocol address.

(d)    Optus means the twenty second to thirty first Respondents.

(e)    Target Online Locations means the online locations:

(i)    referred to in this Application as ShareMovies, SeriesOnline8, Movie4U, SeeHD, StreamDreams, MoviesOnline, WatchSoMuch, TorrentKen, SkyTorrents, Unblocked.lol, Unblocked.win, Unblockall, Unblocker and Myunblock; or

(ii)    the primary purpose, and/or the primary effect, of which is to facilitate access to URLs, IP Addresses or Domain Names at which the online locations referred to in this Application as ShareMovies, SeriesOnline8, Movie4U, SeeHD, StreamDreams, MoviesOnline, WatchSoMuch, TorrentKen, SkyTorrents, Unblocked.lol, Unblocked.win, Unblockall, Unblocker and Myunblock can be accessed;

and that are or were accessible:

(A)    at the IP Addresses listed in Schedule 2 to this order (together, the Target IP Addresses);

(B)    at the Domain Names listed in Schedule 2 to this order (together, the Target Domain Names);

(C)    at the URLs listed in, or subsequently added to, Schedule 2 to this order (if any) (together, the Target URLs); and

(D)    at any other domain names, URLs and IP addresses that the Respondents and the Applicant agree in writing, have started to provide access, after the date of these orders, to any of the online locations referred to in subparagraph (e)(i) above.

(f)    Telstra means the nineteenth to twenty first Respondents.

(g)    TPG means the first to eighteenth Respondents.

(h)    URL means a Uniform Resource Locator.

(i)    Vocus means the thirty second to forty ninth Respondents.

(j)    Vodafone means the fiftieth to fifty second Respondents.

THE COURT ORDERS THAT:

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

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

3.    Order 2 is taken to have been complied with by a Respondent if that Respondent implements any one or more of the following steps:

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

(b)    IP Address blocking or re-routing in respect of the Target IP Addresses;

(c)    URL blocking in respect of the Target URLs and the Target Domain Names, if Target URLs are listed in, or subsequently added to, Schedule 2 to this order; or

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

4.    If a Respondent in complying with order 2 does not implement one of the steps referred to in order 3, that Respondent must, within 15 business days of these orders, notify the Applicant of the step or steps it has implemented.

5.    Each Respondent must redirect any communication by a user of its service seeking access to a Target Online Location which has been disabled pursuant to order 2 to a webpage established, maintained and hosted by either:

(a)    the Applicant, or its nominee, pursuant to order 6; or

(b)    that Respondent or its nominee.

The Applicant's obligations pursuant to orders 6 and 7 only arise if a Respondent notifies the Applicant that the Respondent will redirect a communication pursuant to order (a) and for so long as at least one Respondent redirects communications to that webpage.

6.    The Applicant, or its nominee, must establish, maintain and host a webpage which informs users of a Respondent's service who have been redirected to the webpage pursuant to order 5 that access to the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

7.    Within 5 business days of these orders, the Applicant will notify each of the Respondents in writing of the URL of the webpage established, maintained and hosted under order 6 and, if the webpage ceases to operate for any reason, will notify each of the Respondents in writing of a different URL that complies with order 6.

8.    If, in complying with order 5, 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 the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

9.    In the event that the Applicant has a good faith belief that:

(a)    any Target URL, Target IP Address or Target Domain Name which is subject to these orders has permanently ceased to enable or facilitate access to a Target Online Location; or

(b)    any Target URL, Target IP Address or Target Domain Name has permanently ceased to have the primary purpose of infringing or facilitating the infringement of copyright,

a representative of the Applicant must, within 15 business days of the Applicant forming such a good faith belief, notify each Respondent of that fact in writing, in which case the Respondents shall no longer be required to take steps pursuant to order 2 to disable access to the relevant Target URL, Target IP Address or Target Domain Name that is the subject of the notice.

10.    A Respondent will not be in breach of order 2 if it temporarily declines or temporarily ceases to take the steps ordered in order 2 (either in whole or in part) upon forming the view, on reasonable grounds, that suspension is necessary to:

(a)    maintain the integrity of its network 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 network or system; 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 Applicant 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 Applicant may agree in writing or the Court may allow.

11.    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 Locations or affected website; and

(b)    be supported by evidence as to:

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

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

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

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

(b)    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 3; and/or

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

13.    If a website the subject of any of the Target Online Locations is at any time during the operation of these orders provided from a different Domain Name, IP Address or URL:

(a)    The Applicant may file and serve:

(i)    an affidavit which:

(A)    identifies the different Domain Name, IP Address or URL;

(B)    states that, in the good faith belief of the deponent the website operated from the different Domain Name, IP Address or URL is a new location outside Australia for the Target Online Locations 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 different Domain Name, IP Address or URL; and

   (B)    the time period in order 2 of these orders starts to run in relation to the different Domain Name, IP Address or URL upon service in accordance with order (d) of the orders as made.

(b)    Order 13(a) does not limit the effect of subparagraph (D) of the definition of ‘Target Online Location’.

14.    These orders are to operate for a period of 3 years from the date of these orders.

15.    No later than two months prior to the expiry of these orders:

(a)    the Applicant may file and serve:

(i)    an affidavit which states that, in the good faith belief of the deponent, that some or all of the Target Online Locations continue to have the primary purpose and/or the primary effect of infringing or facilitating the infringement of copyright; and

(ii)    short minutes of order extending the operation of these orders in relation to the relevant Target Online Locations for a further 3 year period; and

(b)    the process contained in order 17 shall apply.

16.    The affidavits referred to in orders 13 and 15 are to be given by a deponent duly authorised to give evidence on behalf of the Applicant and may be given by its solicitor.

17.    If an affidavit and short minutes of order are filed and served in accordance with orders 13 or 15:

(a)    within 7 business days, the Respondents must notify the Applicant and the Court if they object to the orders being made in accordance with the short minutes of orders served by the Applicant;

(b)    if any Respondent gives notice of any objection, or the Court otherwise thinks fit, the proceeding will be relisted 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 orders served by the Applicant without any further hearing; and

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

18.    The Applicant pay Telstra's, Optus', Vocus', TPG's and Vodafone's compliance costs calculated at the rate of $50 per Domain Name the subject of DNS Blocking undertaken for the purposes of complying with order 2 hereof.

19.    There be no other order as to costs.

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

REASONS FOR JUDGMENT

NICHOLAS J:

1    Before me is an application under s 115A of the Copyright Act 1968 (Cth) (“the Act”). The orders sought by the applicant are substantially in the form of those made in previous proceedings including Roadshow Films Pty Ltd v Telstra Corporation Ltd (2016) 248 FCR 178. Some minor changes have been made to their form to take account of the recent amendments made to s 115A. In particular, the orders make provision for the extension of the injunction following an agreement in writing made between the applicant and the respondents.

2    None of the respondents have opposed the relief sought. Submitting appearances have been filed by the Nineteenth to Twenty-First Respondents (“Telstra”), the Twenty-Second to Thirty-First Respondents (“Optus”) and the Fiftieth to Fifty-Second Respondents (“Vodafone”). The Thirty-Second to Forty-Ninth Respondents (“Vocus”) have consented by letter to the orders sought in the Originating Application. The First to Eighteenth Respondents (“TPG”) have not responded to any of the correspondence or documents served by the applicant’s solicitors.

3    The applicant alleges that the relevant websites are online locations (“the target online locations”) situated outside Australia which infringe copyright or facilitate the infringement of copyright in large numbers of cinematograph films including some which are protected by copyright co-owned by the applicant.

4    There is affidavit evidence from Mr Kosta Hountalas (a solicitor acting under the supervision of Mr John Fairbairn, solicitor for the applicant) describing attempts to notify the persons who are believed to operate the relevant websites of the commencement of this proceeding. In light of that evidence I am satisfied that the applicant has made reasonable efforts to determine the identity and address of the persons who operate the target online locations, and to send the required notices to those persons.

5    None of the operators of the target online locations applied to be joined as a party to the proceeding and none sought to appear at the hearing of the application.

6    Most of the target online locations allow users to access content using either torrent technology or streaming technology. Each provide internet users with a browsable or searchable index or directory of digital (including audio-visual) content from which they can select content of their choice from various categories of indexed digital content (eg. including categories for “Movies” and “TV”).

7    Other target online locations provide hyperlinked lists of proxy or mirror sites facilitating access to other online locations that facilitate the infringement of copyright which are the subject of site blocking orders previously made pursuant to s 115A. These target online locations make it easier for users to ascertain the existence or whereabouts of other online locations that themselves infringe or facilitate the infringement of copyright by providing internet users with a hyperlinked directory of other popular torrent and streaming sites. From these sites users can download or stream infringing content of their choice, by accessing torrent files or magnet links which enable them to download cinematograph films from other users in a peer-to-peer networks.

8    Mr Hountalas conducted a detailed review of the target online locations. On the basis of his review of the material available at the target online locations he concluded that the main purpose or effect of each is to offer or facilitate access to commercially released audio visual content to users for free and to facilitate the infringement of copyright in such content.

9    I find that each of the respondents is a carriage service provider providing online access to the target online locations identified in the applicant’s proposed orders. I also find that each of the target online locations is located outside Australia, and that it has the primary purpose, or the primary effect, of infringing or facilitating an infringement of copyright including copyright in large numbers of commercially released cinematograph films. These include television programs the copyright in which is co-owned by the applicant.

10    The target online locations do not appear to serve any purpose apart from making copyright material available online for free, without the licence or consent of the copyright owners, and in breach of their copyright in such material. The operators of each of the target online locations appear to have facilitated the online distribution of copyright material in flagrant and open disregard of the rights of copyright owners.

11    Having considered the matters to in s 115A(5), I am satisfied that a site blocking order should be made in the terms sought by the applicant against each of the respondents in respect of each of the target online locations.

Associate:

Dated:    13 September 2019

SCHEDULE OF PARTIES