Federal Court of Australia

Roadshow Films Pty Limited v Telstra Corporation Limited [2020] FCA 1468

ORDERS

THE COURT NOTES 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 7.

c)    IP Address means an Internet Protocol address.

d)    Optus means the third to tenth Respondents.

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

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

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

(iii)    at the Domain Names listed in Schedule A 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 13 (subject to the procedure set out in that Order).

f)    Telstra means the first to second Respondents.

g)    TPG means the twenty-ninth to the forty-sixth Respondents.

h)    URL means a Uniform Resource Locator.

i)    Vocus means the eleventh to twenty eighth Respondents.

j)    Vodafone means the forty-seventh to forty-ninth Respondents.

THE COURT ORDERS THAT:

1.    Leave be granted pursuant to s 120 of the Copyright Act 1968 (Cth) to the Eleventh Applicant to proceed with this application without joining the copyright owner of the cinematograph film of which it is the exclusive licensee.

2.    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 13), 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; or

(d)    any alternative technical means for disabling access to the Target Online Locations as agreed in writing between the Applicants 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 service of these Orders, notify the Applicants of the step or steps it has implemented.

5.    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 2 to a webpage established, maintained and hosted by either:

(a)    the Applicants, or their nominee, pursuant to Order 6; or

(b)    that Respondent or its nominee.

The Applicants’ obligations pursuant to Orders 6 and 7 only arise if a Respondent notifies the Applicants that the Respondent will redirect a communication pursuant to Order 5(a) and for so long as at least one Respondent redirects communications to that webpage.

6.    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 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 Applicants will notify each of the Respondents in writing of the URL of the webpage established, maintained and hosted under Order 5 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 that the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

9.    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 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 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.

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 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, 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 13(a), the Respondents must notify the Applicants and the Court in writing if they object to taking steps pursuant to Order 2 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 13(a);

(c)    if any Respondent objects to disabling a Domain Name, IP Address or URL notified in accordance with Order 13(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 13(b) no Respondent objects to disabling access to any Domain Name, IP Address or URL notified in accordance with Order 13(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 2 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 13(a).

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

15.    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 17 shall apply.

16.    The affidavit referred to in Order 17 is to be given by a deponent duly authorised to give evidence on behalf of the Applicants and may be given by their solicitor.

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

(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.

18.    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 2.

19.    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 A - Target Online Locations

REASONS FOR JUDGMENT (REVISED FROM THE TRANSCRIPT)

RARES J:

1    The applicants comprise 11 corporations that are either the owners, or in one case the exclusive licensee in Australia, of the copyright in cinemograph films, theatrical motion pictures, television programs, videos, DVDs, Blu-ray discs, digital downloads, and related products (films) that they create, distribute, market, and/or licence throughout the world, including Australia. The first eight applicants (the MPA applicants), are Australian or international companies, including well known United States companies, Disney Enterprises, Inc., Paramount Pictures Corporation, Columbia Pictures Industries, Inc., Universal City Studios LLC, Warner Bros. Entertainment Inc. and Netflix Studios, LLC.

2    The ninth and tenth applicants are Hong Kong companies, Television Broadcasts Limited and TVBI Company Limited (the TVB applicants). They create, licence, market and distribute apparently Cantonese, or other Chinese, language television programs throughout the world, including Australia. Madman Anime Group Pty Ltd (the eleventh applicant) is the exclusive licensee in Australia of a film known as Tokyo Ghoul episode 1.

3    I will, in these reasons, refer simply to the applicants generically as the “owners”. Each of the 49 respondents is a carriage service provider under the Telecommunications Act 1997 (Cth). A service provider operates a service that, in effect, enables persons to search and locate on internet websites that, for present purposes, include sites that allow downloading or access to copyright material of which one of the applicants is the owner or exclusive licensee.

Madman’s standing

4    Madman, as an exclusive licensee, needs leave of the Court under s 120 of the Copyright Act 1968 (Cth) (the Act) to bring this proceeding without joining Pierrot Co Ltd, a copyright owner of Tokyo Ghoul. Akiko Fukushi is the team lead of the international distribution and licensing team of Pierrot. I am satisfied by the affidavit evidence of Mr Fukushi that Pierrot is an owner of the copyright in Tokyo Ghoul, and that it consents to Madman bringing this proceeding. Pierrot had the right, under the licence agreement between it and Madman. The licence agreement was the subject of a deed of novation made on 10 May 2017, to require that an enforcement proceeding, in respect of a breach of copyright in Tokyo Ghoul, be taken in Perriot’s name. Mr Fukushi confirmed that Pierrot waived its right to bring the proceeding.

5    In Universal Music Australia Pty Limited v TPG Internet Pty Ltd (2017) 348 ALR 493 at 505–506 [46]–[51], Burley J considered the then provisions of s 115A of the Act (prior to its being amended to its present form), and requirements in s 120 including, in respect of the requirement for an exclusive licensee of a copyright work, to have leave of the Court to sue without joining its owner. His Honour concluded (at 506 [51]):

The requirement under s 120 that both exclusive licensee and copyright owner be joined as parties might be considered to have more limited application to an action brought pursuant to s 115A than an action under s 115. … In the case of an action brought under s 115A, the separation of rights as between copyright owner and exclusive licensee is less likely to give rise to these complications. It is possible, of course, that an online location may wish to raise a defence within s 121 of the Copyright Act, an example of which may be that the copyright owner authorised the alleged acts of infringement. However, in the circumstances of the present case, where the operators of the online location have apparently avoided or ignored service and have not sought to appear, it is appropriate to grant the leave sought. No such defences will be raised. Nor will an action of this type give rise to any pecuniary remedy. Accordingly, in my view it is appropriate to grant leave to the exclusive licensees to proceed without joining the copyright owners.

(emphasis added)

6    In Australasian Performing Right Association Ltd v Telstra Corporation Limited (2019) 369 ALR 529 at 537 [24], Perram J stated that he understood Burley J to have said that it was generally appropriate to grant leave to an exclusive licensee under s 120(1) to bring proceedings under s 115A(1).

7    Here, Pierrot is one of three co-owners of the copyright in Japan. That joint ownership does not prevent it from bringing in its own right, or authorising an exclusive licensee to bring, infringement proceedings: Foxtel Management Pty Limited v TPG Internet Pty Ltd (2017) 349 ALR 154 at 161 [28] per Burley J. In those circumstances, I am satisfied that it is appropriate to grant leave to Madman, as an exclusive licensee, to bring this proceeding without joining Pierrot or its other co-owners of the copyright in Tokyo Ghoul.

The statutory context

8    Relevantly, s 115A 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).

…

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;

…

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

(a) the owner of the copyright; and

(b) the carriage service 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

….

(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;

…

(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;    

.…

(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.

The position of the respondents

9    Each respondent carriage provider in the present proceeding is an Australian company that has been served with the originating application, statement of claim and the amendments that the applicants have made subsequently to those pleadings. All the respondents, other than those forming part of the Vocus group, submitted to any orders that the Court might make except as to costs. On 14 August 2020, I ordered that those respondents, which had not already submitted, provide an address for service or file a submitting appearance. Vocus did neither. But, it was aware of the proceedings, and in an email dated 23 July 2020, its general counsel and company secretary, Simon Lewin, informed the solicitors for the owners that it had accepted service.

10    No respondent has filed a defence to the original or any of the amended statement of claims. In those circumstances, I am satisfied that none of the respondents has any defence to the allegations in the current statement of claim.

11    In Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd (2006) 236 ALR 665, Kiefel J discussed the basis on which O. 35A r (3)(2)(c) of the previous Federal Court Rules 1979 (Cth) operated where an applicant sought to obtain judgment against a respondent in default and it appeared that the applicant was entitled to relief based on a statement of claim. However, there is no equivalent in that rule to the present r 16.07(2) of the Federal Court Rules 2011.

12    Rule 16.07(2) provides that “[a]llegations that are not specifically denied are taken to be admitted”. It operates in the way that Gray J explained in Jiangyin Yinying Goods and Materials Trade Co Limited v Australia Victoria Capital Pty Ltd [2012] FCA 247 at [12]. He said that where a respondent was in default of an order to file a defence, r 16.07(2) allowed “the applicant to rely on deemed admissions of all the facts pleaded in the statement of claim”: see also Thunder Studios Inc (California) v Kazal (No 9) [2020] FCA 846 at [32], where I discussed the authorities that have applied that view of the rules, and the operation of r 16.07.

13    The owners supplemented that deemed admission with a large body of evidence that reinforces their rights and entitlement to relief of the kind they seek in respect of a large number of their own films that the online locations (the targeted sites) identified in schedule 3 of the further amended statement claim are making available by what appear to be flagrant infringements of those and many other copyright works.

14    The purpose of the powers granted in s 115A can be seen in the grounds on which an injunction may be granted and the matters that the Court may take into account under s 115A(5). The Court has now established a considerable body of jurisprudence as to the circumstances in which s 115A operates commencing with Nicholas J’s decision on the earlier form of its provisions in Roadshow Films Pty Ltd v Telstra Corporation Ltd (2016) 248 FCR 178. The carriage service provider in most of the decided cases has not sought to oppose the making of the orders that directly affect their targets, being the online locations either hosting or facilitating the infringing conduct.

15    Proceedings such as the present involve the Court exercising a statutory power of some significance on an application by an owner of a copyright. The Court can impose on a carriage service provider the obligation to block access to an online location outside Australia if it infringes, or facilitates an infringement of, copyright, and has the primary purpose, or the primary effect, of infringing or facilitating such infringement, whether or not in Australia. Among others, the consequences of such an order can be interference with the freedoms of expression and communication that are essential characteristics of a constitutional democracy, such as Australia, and the right of a citizen to access information freely.

16    However, part of the context in which our democracy works is that it provides laws for the protection of, among other rights, intellectual property, such as copyright. Such cases are, of their nature, intensely factually complex and require reference to many documents, as the reported and unreported decisions that have been given on s 115A in both its forms reveal.

17    In the present case, the conduct complained of consists of the targeted sites making available multiple copyright films, including, usually, many films of the owners, without any licence or permission and for no charge to the viewer, thereby depriving the owners of their rights to earn a return for the cost and effort expended in producing those films.

The considerations in s 115A

18    I am satisfied on the evidence that copyright exists in Australia in each of the owners’ films listed in schedule 2 to the further amended statement of claim. First, ss 126 and 131 of the Act, coupled with the statements in each of the films that the respective applicant is the copyright owner of its relevant film, entitles the drawing of an inference that copyright subsists in the film and that it is owned by the relevant (or exclusively licensed to Madman) applicant. Secondly, in respect of Roadshow’s films, s 90(1) provides that copyright subsists in each film made in Australia of which the maker was a qualified person for the whole, or a substantial part, of the period during which it was made. Correspondingly, copyright subsists for films made by the overseas based owners by force of s 184(1)(a) of the Act and reg 4(1) of the Copyright (International Protection) Regulations 1969 (Cth). That is because each of the United States of America, Japan, China and the Special Administrative Region of Hong Kong are signatories to the Berne Convention for the Protection of Literary and Artistic Works as amended.

19    The owners, through their solicitors, identified the process or mechanisms by which contact could be made with the operator of the respective targeted site on which apparent infringement of their copyrights was occurring. In many cases, the operator of the targeted site or the person to contact turned out to be CloudFlare, Inc. Nicholas J described CloudFlare in Roadshow 248 FCR at 184 [22]–[23] as the operator of a “reverse proxy” service that retrieves information on behalf of its customer’s severs and returns that information as though it originated from a CloudFlare server. The users of CloudFare’s reverse proxy service allow it to act or masquerade as the authoritative domain name system address for their websites. As his Honour said: (at [23])

It is clear that at least some of these services will appeal to a person operating a website engaged in illicit activities (including copyright infringement or the facilitation of copyright infringement) who may wish to conceal the details of any IP Addresses used by his or her computer.

(emphasis added)

20    I am satisfied that the owners have taken all reasonable steps to notify each person who operates the targeted sites. The owners’ solicitors sought to provide the respective site operators with notice of this proceeding and the relief sought against the site operators through communication to email address, postal address (where it could be found), or the online “contact us” facility offered by the sites. Some of the targeted sites do not appear to offer any facility for receiving such contact. Others gave perfunctory acknowledgements. In two cases the “response” did not even identify the site from which the acknowledgement came. A significant number of the targeted sites appeared to have set up with the involvement of CloudFare so that, by design, the real operator of the site is not apparent or contactable.

21    I am satisfied that the owners have complied with their obligation under s 115A(4), to the extent that it was reasonably practicable to communicate with the person who operates each targeted site.

The infringing conduct

22    Each targeted site engages in various infringements by one or more of the following processes: linking, streaming, BitTorrenting (that is, sending parcels of a film in packets of digitised information that are later assembled on a viewer’s computer with a program that enables the torrented material to be reassembled coherently), or permitting the downloading of infringing copies of the owners’ films. Nicholas J described the way in which each of these technologies operates in Roadshow 248 FCR 178 that I need not repeat here. Sometimes the online location will do this through the use of a proxy site, being one that provides a link to another infringing site from which the linking, streaming, torrenting or downloading can then take place.

23    Some of the targeted sites appear, in effect, to be a replica or clone of another site that this Court, or an overseas Court, had made the subject of a blocking order. In other words, once the online location overseas realises that access to it has been blocked, its operator carries on the infringing conduct on a lookalike site that will be found readily by the previous users of the now blocked site. The new site has substantively the same user interface or get up as that of the blocked site and continues to engage in the same infringing activity.

24    Many of the targeted sites either display advertising material that appears, or is associated, with the provision of the infringing copies, or facilitate what appear to be pop-up advertisements. The pop-ups do not appear directly on the site itself, but present to the viewer as he or she attempts to navigate on the targeted site to obtain the infringing copy of the film that the site displays as being available through its servers.

25    A site which, without the authority of the owners or exclusive licensee, either links directly to, streams or torrents a copyright work, necessarily infringes or facilitates the infringement of copyright by making available the copyright work directly to the computer of the person accessing the site. A proxy site facilitates, at the very least, infringement by providing a link to an online location that in turn will itself link, stream, torrent or permit downloading of an infringing copy. Some of the targeted sites offer many of the same films, albeit that the sites appear to be operated by different persons in overseas locations.

26    I am satisfied that each of the sites is a site that, first, infringes or facilitates an infringement of copyright, and secondly, has the primary purpose, or the primary effect, of so infringing or facilitating that infringement of copyright. The evidence establishes that these sites display as available, not only the various films as pleaded in the further amended statement of claim in which the owners own the copyright in Australia (or, in Madman’s case, exclusively license it), but also a vast number of other apparently well known, popular films.

27    I have also had regard to the relevant matters in s 115A(5) as disclosed in the evidence. The infringements of copyright in evidence are flagrant. Because of the large number of instances and the significant volume of materials in evidence it is not possible or necessary to analyse in detail the circumstances of each and every targeted site or instance of infringement.

28    Gregory Fraser is the content protection investigations manager Australia/New Zealand for the Motion Picture Association. His affidavits explored in detail the way in which many of the targeted sites operate, and the nature of the infringing conduct. This evidence demonstrated that the expressed purpose of those sites is to facilitate users of the internet to access websites that infringe or facilitate the infringement of copyright and that that is the primary purpose or effect of each targeted site.

29    The applicants’ solicitor, Andrew Stewart, explained, in respect of many of the MPA applicants’ films (but also more generally), that some of the targeted sites, or those from which they had been cloned, were the subject of blocking measures, such as injunctions granted by this Court, by the High Court of Justice for England and Wales, the High Court at Dublin, Ireland, and the High Court at Delhi in India. Mr Stewart provided a number of untranslated orders by Courts of other countries, including Italy, that appear to be analogous blocking orders against some of these sites.

30    One example of an operator that appears to have recreated a blocked site through various emanations trades on online locations under the brand name “The Pirate Bay”. The three versions of sites for the brand “The Pirate Bay” display brazenly a logo featuring a pirate ship with a skull and crossbones on her sails. Some emanations of “The Pirate Bay” have already been made the subject of blocking orders. Another such site is called RapidMoviez. A person who goes on the internet to these targeted sites is presented with an array of available content that appears to comprise films, including those in issue here, that the site offers for access at no charge.

31    Wu Kam Ming, TVB’s head of IP technology in its legal and regulatory department, explained how he had established that some of the targeted sites had engaged in a similar pattern of infringement of the copyright of TVB’s films that Mr Fraser described. One of the online locations that Mr Wu investigated was Dramanice. That comprised two domain names, “dramanice.movie” and a mirror site, “dramanice.site” which operated in the same way as Mr Fraser explained about the targeted sites that he visited.

32    Joel Vagnoni, the business and legal affairs executive for Madman, gave similar evidence of targeted sites’ conduct that infringed the copyright in Tokyo Ghoul and other films for which Madman held an exclusive licence for Australia from other copyright owners trading under the Anime brand.

33    All of the targeted sites contain directories, indices or categories of the means to infringe or facilitate the infringement of copyright in the owners’ films and those of third parties. Some of the operators of the targeted sites demonstrate disregard for copyright generally by seeking to avoid blocking measures while offering access to films that they must know are copyright. Numerous operators have so configured their targeted sites that the operator cannot be contacted and its identity is disguised, through the reverse proxy process. Thus, there is no practicable means by which anyone who might wish to alert them to the infringements of copyright can do so.

34    In some cases the targeted sites use advertising or other means of obtaining reward, such as through the enabling of pop-up advertisements when their sites are accessed, to exploit their provision of the owners’ copyright material, adding insult to the copyright owners’ injury.

35    In my opinion, an order requiring the sites and providers to disable access to each of the targeted sites is a proportionate response to the scale and flagrancy of infringing conduct in the circumstances. I am mindful that the impact on each of the target site operators, or owners, will be to interfere with whatever is either their business model or their motivation in unlawfully infringing, or facilitating the infringement of, the owners’ copyrights. However, that interference is necessary to protect the owners’ copyright and does not appear to infringe any right of the persons who own or operate the target sites. Moreover, I consider that it is in the public interest to disable access to each targeted site. That is because the sites seek to undermine the lawful rights of the owners and others to the protection of their intellectual property.

Conclusion

36    The wording of the orders that it is appropriate to make under s 115A has developed, following the amendments to that section. Recently, Burley J carefully analysed the justification for, and appropriate form of, such orders in Roadshow Films Pty Limited v Telstra Corporation Limited (2020) 151 IPR 449 and in Roadshow Films Pty Limited v Telstra Corporation Limited (No 2) (2020) 153 IPR 317. The form of the orders that the owners seek in this proceeding is congruent, with appropriate adaptions to the circumstances of this matter, with the form that his Honour drafted.

37    In my opinion, orders in this form should be made to provide the owners with appropriate relief in this proceeding. Accordingly, I will make orders to the effect that the owners seek.

Associate:

Dated:    15 October 2020

SCHEDULE OF PARTIES