Federal Court of Australia

Gardner Industries Pty Ltd as trustee for the S M Gardner Family Trust v Telstra Corporation Limited [2021] FCA 294

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 or Supplementary Target Online Locations is prevented from receiving a DNS response other than a Redirection as referred to in Order 8.

(c)    IP Address or Internet Protocol address means the numerical label assigned to each device connected to a computer on the world wide web that uses the internet protocol for communication and for the purposes of network interface identification and location addressing.

(d)    Redirection means the redirection of a communication referred to in Order 6.

(e)    Supplementary Target Online Locations means the online locations referred to in this Originating Application as:

(f)    Supplementary Target Domain Names means the domain name operating at the Supplementary Target URL more particularly identified in column three in the table appearing in the definition of Supplementary Target Online Locations.

(g)    Supplementary Target IP Addresses means an IP Address that is associated with the Supplementary Target Online Locations more particularly identified in column four in the table appearing in the definition of Supplementary Target Online Locations.

(h)    Supplementary Target URLs means the IP Address of the Supplementary Target Online Locations more particularly identified in column two in the table appearing in the definition of Supplementary Target Online Locations.

(i)    Target Online Locations mean the online locations referred to in the Originating Application as:

(j)    Target Domain Name means the domain name operating at a Target URL.

(k)    Target IP Address means an IP Address that is associated with a Target URL that may resolve to a Cloudflare server that each of the Target Domain Names are directed to.

(l)    Target URL means the IP address of the Target Online Locations more particularly identified in column two in the table appearing in the definition of Target Online Locations.

(m)    Telstra means the first respondent and the thirty-ninth respondent.

(n)    TPG means the thirty first respondent to thirty-seventh respondent inclusive and the fortieth respondent to fiftieth respondent inclusive.

(o)    Optus means the second respondent to ninth respondent inclusive.

(p)    URL means a uniform resource locator that is the address of a world wide web page.

(q)    Vocus means the tenth respondent to twenty-seventh respondent inclusive.

(r)    Vodafone means the twenty-eighth respondent to thirtieth respondent inclusive.

THE COURT ORDERS THAT:

1.    The applicant be given leave to file:

(a)    The Amended Originating Application filed 23 October 2020 nunc pro tunc.

(b)    The affidavit of Malcolm Peter Burrows filed 24 November 2020 in the proceeding.

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

3.    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 14), take reasonable steps to disable access to the Target Online Locations and the Supplementary Target Online Locations.

4.    Order 3 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 and the Supplementary Target Domain Names;

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

(c)    URL blocking in respect of the Target URLs, the Supplementary Target URL’s, the Target Domain Names and the Supplementary Target Domain Names; or

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

5.    If a respondent in complying with Order 3 does not implement one of the steps referred to in Order 4, that respondent must, within 15 business days of service of these Orders, notify the applicant of the step or steps it has implemented.

6.    Each respondent must redirect any communication by a user of its service seeking access to the Target Online Locations or the Supplementary Target Online Locations which have been disabled pursuant to Order 3 to a webpage established, maintained and hosted by either:

(a)    the applicant, or its nominee, pursuant to Order 7; or

(b)    that respondent or its nominee.

The applicant’s obligations pursuant to Orders 7 and 8 only arise if a respondent notifies the applicant that the respondent will redirect a communication pursuant to Order 6(a) and for so long as at least one respondent redirects communications to that webpage.

7.    The applicant, or its nominee, must establish, maintain and host a webpage which informs users of a respondent’s service who has been redirected to the webpage pursuant to Order 6 that access to the website has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

8.    Within five 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 7.

9.    If, in complying with Order 6, 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.

10.    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 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; or

(c)    the Supplementary Target URLs, Supplementary Target IP Addresses or Supplementary Target Domain Names which are subject to these Orders has permanently ceased to enable or facilitate access to the Supplementary Target Online Locations; or

(d)    Supplementary Target URLs, Supplementary Target IP Addresses or Supplementary Target Domain Names 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 any 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 3 to disable access to the relevant Target URL, Target IP Address, Target Domain Name, Supplementary Target URL, Supplementary Target IP Address or Supplementary Target Domain Name that is the subject of the notice.

11.    A respondent will not be in breach of Order 3 if it temporarily declines or temporarily ceases to take the steps ordered in Order 3 (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:

(a)    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

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

12.    The owner or operator of any of the Target Online Locations or the Supplementary 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 the Supplementary 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, the Supplementary Target Online Locations or affected website; and

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

13.    The parties have liberty to apply on three 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 4; and/or

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

14.    If a website the subject of any of the Target Online Locations or the Supplementary Target Online Locations is at any time during the operation of these Orders provided from a different Domain Name, IP Address or URL, the applicant 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 applicant, the website operated from the different Domain Name, IP Address or URL is a new location outside Australia for the Target Online Locations or the Supplementary Target Online Locations the subject of these Orders and brief reasons therefore;

(b)    within seven business days of the notice given pursuant to Order 14(a) the respondents must notify the applicants and the Court in writing if they object to taking steps pursuant to Order 3 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 14(a);

(c)    if any respondent objects to disabling a Domain Name, IP Address or URL notified in accordance with Order 14(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 14(b) no respondent objects to disabling access to any Domain Name, IP Address or URL notified in accordance with Order 14(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 3 to disable access to the Domain Name, IP Address or URL notified in accordance with Order 14(a).

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

16.    No less 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, a Target Online Location or a Supplementary Target Online Locations continues to have the primary purpose or primary effect of infringing or facilitating an infringement of copyright; and

(ii)    short minutes of Order extending the operation of these Orders for a further three year period; and

(b)    the process contained in Order 18 shall apply

17.    The affidavit referred to in Order 18 is to be given by a deponent duly authorised to give evidence on behalf of the applicant and may be given by their solicitor.

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

(a)    within seven (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 Order served by the applicant;

(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 applicant without any further hearing; and

(d)    the applicant must serve on the respondents any such Orders made.

19.    The applicant pays 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 3.

20.    There be no Order as to costs.

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

REASONS FOR JUDGMENT

GREENWOOD J:

1    These proceedings are concerned with an application under s 115A of the Copyright Act 1968 (Cth) (the “Act”). Section 115A was introduced into the Act by the Copyright Amendment (Online Infringement) Act 2015 (Cth). The section was then amended by the Copyright Amendment (Online Infringement) Act 2018 (Cth). Although s 115A has nine subsections addressing a range of topics, subsection (1) provides that the owner of a copyright may apply to this Court for the grant of 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    These reasons explain the basis for the orders made by the Court on Thursday, 25 March 2021. The orders contain a series of definitions which give coherence to each of the orders. To the extent that any term is used in these reasons which is a defined term in the definition section introducing the orders, that term in these reasons has the meaning attributed to it in that definition section.

3    The applicant, Gardner Industries Pty Ltd (“GI”), as trustee for the S M Gardner Family Trust, has a website which, for present purposes, is sufficiently defined as the “GI website”. To the extent that is necessary to explain the characteristics of a website, the following observation of Jessup J in Dais Studio Pty Ltd and Another v Bullet Creative Pty Ltd and Another (2007) 165 FCR 92 at [3] is relevantly applicable to the website the subject of these proceedings:

The computer data for the images, words, numbers etc that, to the viewer, constitute the site are contained in files located on the server for the site. So are the functional files which cause the site to operate as intended. The construction of a commercial site of any complexity is necessarily a specialised task, and one which would normally (at least according to the assumptions by reference to which this proceeding has been conducted by the parties) be carried out by professional web developers … and the organisations which employ them …

4    GI caused its original website to be constructed in 2010 by Digicon Pty Ltd (“Digicon”). However, GI then took steps to refresh and rewrite its original website and for that purpose it retained Web Design Magic Pty Ltd (“WDM”) to “rebuild” the old website. The rebuilt website “first went live” in Australia on 1 June 2016. The history of these matters is set out in the extensive affidavit of Mr Stephen Gardner who is a director of GI and based on his affidavit, Mr Gardner seems to be the guiding mind of GI. Matters relating to the history of these events are also set out in the affidavit of Mr Daren Hawes who is a director of WDM.

5    As a result of a number of email exchanges on 20 July 2018 and 21 July 2018, Mr Gardner became aware that GI’s website had been interrogated or “hacked” by the conduct of particular persons. That became more clear on 4 August 2018 when Mr Gardner became aware that a “hacking incident” had taken place. The nature of that event is set out in Mr Gardner’s affidavit at [34] to [38] and following. Mr Gardner immediately took steps to try and disable or “take down” three particular websites as described at [48] to [56] of his affidavit. Mr Gardner attempted to achieve that result by issuing notices under the provisions of The Digital Millennium Copyright Act 1998 (US) (the “DMCA”), more formally cited as Pub. L. No. 105-304, 112 Stat. 2860 (Oct. 28, 1998).

6    On or about 19 January 2020, GI first became aware of the Target Online Locations: Gardner at [53]. On 24 January 2020, GI, by its lawyers, issued a DMCA “takedown notice” to one of the Target Online Locations [angelbabes.com]. The takedown notice did not result in the Target Online Location being taken down. The operator of that website filed a counter notice: see the affidavit of Mr Francis Joseph, the solicitor for GI, sworn 3 August 2020 and filed on 11 August 2020 at [2] to [12] of that affidavit. In the affidavits filed on behalf of GI in support of the application, GI asserts that attempts made by it to identify and contact the operators of the Target Online Locations were thwarted. One aspect of that conduct is that in all cases relating to Target Online Locations, the identity of and data related to the operation of each of the Target Online Locations is “hidden” by a service described as “Domains By Proxy” (“DBP”), which is said to operate as a domain registrant shielding the true operator of the website: see the affidavit of Mr Ben Waldeck sworn 22 April 2020 and filed 11 August 2020 at [4] to [11]; the affidavit of Mr Joseph (previously mentioned) at [7] to [10] and [13] to [15].

7    In June 2020, GI became aware of the Supplementary Target Online Locations. Inquiries revealed that these locations were also utilising DBP services. GI caused notifications under s 115A(4) of the Act to be given to carriage service providers (the “CSPs”) of GI’s intention to apply for injunctive relief in relation to both the Target Online Locations and the Supplementary Target Online Locations.

8    The GI website engages with three copyright works: the “literary text” of which Mr Gardner is the author; the “E&B compilation” of which Mr Gardner is the author; and “computer programs” of which persons associated with WDM were the author. The affidavit material filed in support of the application sets out the relevant facts in relation to the authorship of the various copyright subject matter. On 17 June 2020, Mr Gardner assigned all of the intellectual property rights held by him including the copyright subsisting in the literary text and the E&B compilation to GI. The affidavits also address the facts relating to the development of the computer programs. On 29 June 2020, WDM assigned to GI all of its intellectual property rights in subject matter relating to the development of GI’s website, including the copyright subsisting in the computer programs.

9    The CSPs named as respondents in this proceeding were identified through a process undertaken by the solicitors for GI which involved identifying 304 active carrier licences issued to CSPs as identified on the website of the Australian Communications and Media Authority (“ACMA”). A carriage service provider for the purposes of the Act has the same meaning attributed to “carriage service provider” in the Telecommunications Act 1997 (Cth). The process also involved examining closely matters relating to the CSP respondents to applications under s 115A of the Act in the following proceedings: Foxtel Management Pty Ltd v TPG Internet Pty Ltd and Others (2017) 349 ALR 154; [2017] FCA 1041; Roadshow Films Pty Ltd and Others v Telstra Corporation Ltd and Others (2019) 144 IPR 1; [2019] FCA 885; Foxtel Management Pty Ltd v TPG Internet Pty Ltd and Others (2019) 148 IPR 432; [2019] FCA 1450; and Roadshow Films Pty Ltd and Others v Telstra Corporation Ltd and Others (2020) 151 IPR 449; [2020] FCA 507.

10    Prior to the filing of the originating application on 7 August 2020, GI’s solicitors sent a letter to each of the prospective respondents advising of GI’s intention to make an application under s 115A of the Act. GI’s solicitors sought a range of information from the prospective respondents as set out in the affidavits in support of the application, including confirmation that each respondent is a CSP for the purposes of the Telecommunications Act; that each CSP provides consumers of internet services in Australia with access to the internet; and that, if any of the Target Online Locations identified in the originating application are able to be accessed through the internet, does the respondent accept that it provides access to those online locations to users of internet services provided by the CSP.

11    The “Optus Respondents” and the “Vocus Respondents” responded to the letter confirming all relevant matters. The “Telstra Respondents” did not respond to the letter but those respondents have confirmed that they are CSPs for the purpose of the proceeding. At the time of commencing the proceeding, the “TPG” and “Vodafone Respondents” had not responded to the letter but had also confirmed that they are CSPs for the purpose of the proceeding. The respondents were served with the originating application and statement of claim on or about 12 August 2020. All of the respondents have filed “submitting notices” under r 12.01 of the Federal Court Rules 2011 (Cth).

12    The affidavit material establishes that the Target Online Locations and the Supplementary Target Online Locations are Online Locations outside of Australia. The Target Online Locations and the Supplementary Target Online Locations give rise to infringements or facilitate infringements of the copyright in the subject matter described in the affidavits and have the primary effect of infringing or facilitating an infringement of the copyright in the subject matter described in the affidavits in support of the application.

13    I am satisfied, having regard to the difficulties arising out of identification of the operators of the Target Online Locations and the Supplementary Target Online Locations each of which are associated with the DBP mechanism described earlier, that the applicant has made reasonable efforts to identify the operators and accordingly the Court dispenses with notification under s 115A(4)(b).

14    Counsel for the applicant submits, and I accept, that in making the orders, the following matters ought to be taken into account. They have been taken into account. Those matters are these:

 (a)    The flagrancy of the infringement: s.115A(5)(a).

(b)    The owner or operator of the Target Online Locations and the Supplementary Target Online Locations demonstrates a disregard for copyright generally, with specific reference to the exchange between the Applicant’s solicitors and one Jason Auyeung who appeared to represent the Target Online Location with domain name angelbabes.com: [s.115A(5)(c)].

(c)    It is in the public interest to disable access to the Target Online Locations and the Supplementary Target Online Locations and submissions include in this regard:

  i.    It is in the public interest to protect Australian copyright works.

ii.    The public, particularly small to medium enterprises should not bear the burden of legal and associated costs seeking to take action in foreign jurisdictions to protect their copyright.

iii.    Failure to protect Australian copyright works undermines the value of copyright and thereby discourages authors to produce works (or subject matter other than works) from being created:

s.115A(5)(g) of the Copyright Act.

(d)    The Applicant has notified all CSPs and has made reasonable attempts to notify the operators of the Target Online Locations and the Supplementary Target Online Locations: s.115A(5)(h) of the Copyright Act.

(e)    For the reasons set out in the Explanatory Memorandum to the Copyright Amendment (Online Infringement) Bill 2015, there are no other remedies available under this Copyright Act: s.115A(5)(i) of the Copyright Act.

(f)    A relevant matter in the circumstances of this case, is that escorts who no longer wish to advertise on the [Website] and may not wish to disclose for their personal reasons, that they did at one stage advertise on the Website, will find that their advertisement will be appearing on one or more of the Target Online Locations and the Supplementary Target Online Locations long after they have withdrawn their advertisement on the Website. This is possibly going to be a problem for those escorts and their families if these sites are permitted to continue to be displayed in Australia: s.115A(5)(k) of the Copyright Act.

[footnotes omitted]

15    The application is supported by a substantial body of affidavit material. It is not necessary to review in these reasons all of the affidavit material. However, the following affidavits are important: the affidavit of Mr Gardner affirmed 1 July 2020; the affidavit of Mr Hawes affirmed 29 June 2020; the affidavit of Mr Ben Waldeck sworn 22 April 2020; the affidavit of Mr Shannan Summers sworn 26 June 2020; the affidavit of Mr Joseph affirmed 3 August 2020; the further affidavit of Mr Joseph affirmed 6 August 2020; the affidavit of Mr Daniel Haines affirmed 7 August 2020; and the affidavit of Mr Malcolm Burrows sworn 30 October 2020.

16    Having regard to all of these considerations, the Court makes the orders as published on Thursday, 25 March 2021.

Associate:

Dated:    26 March 2021

SCHEDULE OF PARTIES