FEDERAL COURT OF AUSTRALIA

Roadshow Films Pty Limited v Telstra Corporation Limited (No 2) [2020] FCA 769

ORDERS

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 6.

(c)    IP Address means an Internet Protocol address.

(d)    Optus means the fourth to eleventh Respondents.

(e)    Target Online Locations means the online locations as referred to in the Schedule to these Orders and that are or were accessible:

(i)    at the URLs listed in the Schedule to this Order (together, the Target URLs);

(ii)    at the IP Addresses listed in the Schedule to this Order (together, the Target IP Addresses);

(iii)    at the Domain Names listed in the Schedule to this Order (together, the Target Domain Names); and

(iv)    any other domain names, URLs and IP addresses that the Applicants notified to the Respondents pursuant to Order 12 (subject to the procedure set out in that Order).

(f)    Telstra means the first to third Respondents.

(g)    TPG means the thirtieth to the forty-seventh Respondents.

(h)    URL means a Uniform Resource Locator.

(i)    Vocus means the twelfth to twenty-ninth Respondents.

(j)    Vodafone means the forty-eighth to fiftieth Respondents.

THE COURT ORDERS THAT:

1.    Each Respondent must, within 15 business days of service of these Orders (and thereafter within 15 business days of an obligation to disable access to a Domain Name, IP Address or URL arising under Order 12), take reasonable steps to disable access to the Target Online Locations.

2.    Order 1 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; or

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

3.    If a Respondent in complying with Order 1 does not implement one of the steps referred to in Order 2, that Respondent must, within 15 business days of service of these Orders, notify the Applicants of the step or steps it has implemented.

4.    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 a webpage established, maintained and hosted by either:

(a)    the Applicants, or their nominee, pursuant to Order 5; or

(b)    that Respondent or its nominee.

The Applicants’ obligations pursuant to Orders 5 and 6 only arise if a Respondent notifies the Applicants that the Respondent will redirect a communication pursuant to Order 4(a) and for so long as at least one Respondent redirects communications to that webpage.

5.    The Applicants, or their 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 4 that access to the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

6.    Within 5 business days of these Orders, the Applicants will notify each of the Respondents in writing of the URL of the webpage established, maintained and hosted under Order 4 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 5.

7.    If, in complying with Order 4, 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.

8.    In the event that any of the Applicants 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 any 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 Applicants must, within 15 business days of any of the Applicants 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 1 to disable access to the relevant Target URL, Target IP Address or Target Domain Name that is the subject of the notice.

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 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 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 statutory obligations including under section 313(3) of the Telecommunications Act 1997 (Cth),

      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 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 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.

11.    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 consequences for the parties and effectiveness of the technical methods under Order 2; and/or

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

12.    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, the Applicants may, by their solicitor:

(a)    Provide a notice in writing to the Respondents and the Court that:

(i)    Identifies the different Domain Name, IP Address or URL; and

(ii)    Certifies that, in the good faith belief of the Applicants, the website operated from the different Domain Name, IP Address or URL is a new location for the Target Online Locations the subject of these Orders and brief reasons therefore;

(b)    Within 7 business days of the notice given pursuant to Order 12(a), the Respondents must notify the Applicants and the Court in writing if they object to taking steps pursuant to Order 1 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 12(a);

(c)    If any Respondent objects to disabling a Domain Name, IP Address or URL notified in accordance with Order 12(a), or the Court otherwise considers it appropriate to do so, the proceeding will be relisted for further directions; and

(d)    If, within the time period specified in Order 12(b) no Respondent objects to disabling access to any Domain Name, IP Address or URL notified in accordance with Order 12(a) and the Court does not otherwise require the proceeding to be relisted, then upon receipt of a notification from the Applicants that the Court does not require the matter to be relisted, that Respondents must take steps pursuant to Order 1 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 12(a).

13.    These Orders are to operate for a period of 3 years from the date of these Orders.

14.    No less than two months prior to the expiry of these Orders:

(a)    the Applicants may file and serve:

(i)    an affidavit which states that, in the good faith belief of the deponent, the Target Online Location continues to have the primary purpose of infringing or facilitating the infringement of copyright; and

(ii)    short minutes of order extending the operation of these Orders for a further 3-year period; and

(b)    the process contained in Order 16 shall apply.

15.    The affidavit referred to in Order 16 is to be given by a deponent duly authorised to give evidence on behalf of the Applicants and may be given by their solicitor.

16.    If an affidavit and short minutes of order are filed and served in accordance with Order 14:

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

(b)    if any Respondents give 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 order served by the Applicants without any further hearing; and

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

17.    The Applicants 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 1.

18.    There be no order as to costs.

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

SCHEDULE

REASONS FOR JUDGMENT

BURLEY J:

1    On 20 April 2020 I delivered reasons for judgment where I found that the respondents, each a carriage service provider (CSP), should be required to take reasonable steps to disable access to 86 target online locations that infringe or facilitate the infringement of copyright: Roadshow Films Pty Limited v Telstra Corporation Limited [2020] FCA 507. These reasons adopt the same definitions as in Roadshow.

2    The orders that I proposed to make in Roadshow were set out in Annexure A of the reasons, and were in a slightly different form to those made in a number of previous applications under s 115A of the Copyright Act 1968 (Cth). In particular, in Order 12 they provide a new process whereby additional URLs, domain names and IP Addresses that provide access to target online locations which are the subject of existing orders (additional avenues) can be added to the operation of those orders without further order of the Court. Having regard to the novelty of this form, I invited further submissions from the parties, which have now been received from the applicants and from one of the five respondent groups, Telstra.

3    Having regard to those submissions, the revised form of Order 12 that I will now make is set out below, with amendments to the form proposed in Roadshow marked up:

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, the Applicants may, by their solicitor:

(a)    Provide a notice in writing to the Respondents and the Court that:

(i)    Identifies the different Domain Name, IP Address or URL; and

(ii)    Certifies that, in the good faith belief of the Applicants, the website operated from the different Domain Name, IP Address or URL is a new location for the Target Online Locations the subject of these Orders and brief reasons therefore;

(b)    Within 147 business days of the notice given pursuant to Order 12(a), the Respondents must notify the Applicants and the Court in writing if they agree object to taking steps pursuant to Order 1 [being the initial site blocking Order] to disable access to the Domain Name, IP Address or URL notified in accordance with Order 12(a);

(c)    If any Respondent does not agree objects to disableing a Domain Name, IP Address or URL notified in accordance with Order 12(a), or the Court otherwise considers it appropriate to do so, the proceeding will be relisted for further directions; and

(d)    If, within the time period specified in Order 12(b), no any Respondent objects agrees to disableing access to any Domain Name, IP Address or URL notified in accordance with Order 12(a), and the Court does not otherwise require the proceeding to be relisted, then upon receipt of a notification from the Applicants that the Court does not require the matter to be relisted, that Respondent must take steps pursuant to Order 1 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 12(a)the subject of the agreement.

4    The procedure envisaged in the initially proposed orders required the respondents to consent to the inclusion of additional avenues, failing which the proceedings would be re-listed. The applicants submit that this procedure would be complicated by the problem that frequently, as in the present case, some of the CSPs joined as respondents elect not to participate in the proceedings. They either enter submitting appearances (as Telstra, Optus and Vodafone did in the present case) or enter no appearance at all, despite being ordered to do so (as TPG and Vocus did). In the present proceedings, only Telstra entered an appearance and also supplied submissions in relation to the form of orders.

5    This leads to two difficulties. The first is that more frequently than not it may be expected, as here, that there will be no participation in the proceedings at all by the CSPs. This appears to be routine in such cases: see Roadshow Films Pty Limited v Telstra Corporation Limited [2019] FCA 1328 at [10] – [11]; Roadshow Films Pty Limited v Telstra Corporation Limited [2019] FCA 885 at [2]; Foxtel Management Pty Limited v TPG Internet Pty Ltd [2019] FCA 1450 at [2]; Australasian Performing Right Association Ltd v Telstra Corporation Limited [2019] FCA 751 at [7]. The norm is likely to be that at least some of the CSPs will not consent to the inclusion of the additional avenues, which will occasion the relisting of the proceedings and additional delay and expense, which is antithetical to the purpose for the broader regime envisaged under the recent amendments to s 115A: see Roadshow at [76] – [78].

6    Secondly, if one CSP does consent, but others do not, the consenting CSP may in effect be penalised, because only it will be the subject of a broader site blocking order. This could over time provide the other CSPs with a competitive advantage.

7    The applicants contend that the preferable approach is for the additional avenues to be included within site blocking orders if, upon the provision of notice to the respondents, the respondents fail to notify the Court and the applicants whether they agree to the inclusion within a specified period. Telstra agrees broadly with this approach, but submits that it should be refined slightly so that the obligation upon the CSPs is to indicate “if they object” to the inclusion of the additional avenues. Telstra submits that it is not well placed to determine which online locations are to be blocked, or what additional avenues should be blocked, and does not wish for the additional cost burden of ascertaining the answer to that question to fall upon it. Accordingly, a more appropriate wording is for a CSP to have the opportunity to object to blocking any additional avenue, should a matter come to its attention that should be raised, but otherwise the question of what should be blocked be left to the applicants and the Court.

8    Having regard to the arguments of the parties, I am satisfied that the approach proposed by the applicants, as refined by the Telstra proposal, is appropriate. It meets the objective of the legislation to facilitate, in appropriate cases, a more expeditious and less expensive means by which orders may be amended.

Associate:

Dated:    4 June 2020

SCHEDULE OF PARTIES