Federal Court of Australia

Roadshow Films Pty Ltd v Telstra Corporation Limited [2022] FCA 134

ORDERS

THE COURT NOTES:

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 second to ninth 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 12 (subject to the procedure set out in that Order).

(f)    New Target Online Locations means the locations referred to in Order 13.

(g)    New Target Online Location Orders refers to orders sought or made under Orders 13 or 15 hereof.

(h)    Telstra means the first Respondent.

(i)    TPG means the twenty-eighth to the forty-fifth Respondents.

(j)    URL means a Uniform Resource Locator.

(k)    Vocus means the tenth to twenty-seventh Respondents.

(l)    Vodafone means the forty-sixth to forty-eighth 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 use reasonable efforts to 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 use reasonable efforts to ensure that the webpage informs the user of that Respondent's service that access to that 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 outside Australia, 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 and their solicitor, the website operated from the different Domain Name, IP Address or URL is a new location for any of 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.    The Applicants have leave to file and serve an amended originating application seeking further orders (New Target Online Location Orders) in respect of any additional target online location (New Target Online Location) that appears to the Applicants’ solicitors to be associated with any of the Target Online Locations (based on its name, branding or the identity of its operator) and making available online the same or substantially the same content that the Target Online Location is or was previously making available online.

14.    Subject to any further order or direction, the leave granted under Order 13 continues to apply for the duration of these Orders.

15.    Subject to any further order or direction, if the Applicants file any amended originating application pursuant to Order 13, then the following shall apply:

(a)    The Applicants must serve on the Respondents a copy of the amended originating application together with any supporting affidavit evidence to be relied on in support of the application for the New Target Online Location Orders within 7 days of filing the amended originating application.

(b)    The Applicants must give notice of their application for the New Target Online Location Orders in accordance with the requirements of s 115A(4) of the Copyright Act 1968 (Cth).

(c)    Any Respondent who wishes to be heard in relation to the New Target Online Location Orders must notify the Applicants and the Court within 7 business days after being served in accordance with Order 15(a) above.

(d)    If no notice is given by any Respondent in accordance with Order 15(c) above, then the Applicants may approach the Court for the purpose of seeking the New Target Online Location Orders and the Court may in its discretion, consider and determine the application for the New Target Online Location Orders on the papers without further notice and without any oral hearing.

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

17.    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 19 shall apply.

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

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

(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.

20.    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.

21.    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

NICHOLAS J:

1    Before me is an application for site blocking orders under s 115A of the Copyright Act 1968 (Cth). The applicants are well-known motion picture and television program production companies. Each of the respondents is a carriage service provider, and a member of the Telstra, Optus, Vocus, TPG or Vodafone corporate groups. The first to ninth and twenty-eighth to forty-eighth respondents have not sought to be heard in the proceeding and submitting notices have been filed on their behalf. The tenth to twenty-seventh respondents did not appear. I am satisfied that they were served.

2    The evidence relied on by the applicants is referred to in Annexure A to the applicants’ written outline of submissions. The evidence also includes an aide memoire (Exhibit A) prepared by the applicants’ solicitors that identifies relevant target domain names, and includes screenshots taken of some of the websites in respect of which site blocking orders are sought.

3    The online locations in respect of which the applicants seek orders against the respondents under s 115A(2A) are identified in the Schedule to the Amended Originating Application filed on 3 February 2022. In all there are 34 online locations (“the target online locations”) most of which operate using a number of different domain names. These domain names incorporate minor variations. There are two types of domain names: “primary” domain names, which are the main locations that provide the functionality complained of by the applicants, and “secondary” domain names, which redirect users to corresponding primary domain names. The evidence identifies which of the relevant domain names is a primary or a secondary domain name.

4    The evidence shows that at least one of the applicants’ cinemograph films could be downloaded or streamed from each of the target online locations. The primary service provided at each of them involves making motion pictures and television programs available online in large numbers and free of charge. I infer from the evidence that the primary purpose or effect of each of the target online locations is to infringe, or to facilitate the infringement of copyright in these cinemograph films, including copyright owned by the applicants.

5    Sections 115A(1), (2A) and (2B) relevantly provide:

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.

…

(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;

…

6    Section 115A(4) permits the Court to make an order dispensing with service on the operator of the online location on such terms as it thinks fit if the Court is satisfied that the owner of 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.

7    The affidavit evidence includes details of the applicants’ solicitors’ attempts to notify the persons who operate each of the relevant target online locations of the commencement of this proceeding. None of the operators provided any substantive reply to the solicitors’ communications. I am satisfied that the applicants have made reasonable efforts to determine the identity and address of the persons who operate the target online locations, and to give them notice of this proceeding and the orders sought.

8    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.

9    The evidence satisfies me that each of the target online locations infringes or facilitates the infringement of the applicants’ copyright in various well-known films including copyright owned by one or more of the applicants. I am also satisfied that the target online locations have the primary purpose, or the primary effect, of infringing or facilitating infringement of copyright in large numbers of commercially released cinematograph films.

10    I have had regard to the matters listed in s 115A(5) for the purpose of determining whether or not an injunction should be granted in respect of each of the target online locations. Section 115A(5) sets out matters that the Court may take into account in determining whether or not to grant an injunction under s 115(2A). The matters referred to include the flagrancy of the infringement or the facilitation of infringement, the availability of directories, indexes or categories of infringing copyright material available for download, whether the operator of the online location demonstrates a disregard for copyright generally and whether disabling access to the online location is a proportionate response in the circumstances.

11    The target online locations infringe copyright flagrantly and their operators display a disregard for copyright generally. They offer large catalogues of infringing material. Most of them provide directories, indexes or categories of motion pictures and television programs for the assistance of users who are looking for a particular motion picture or television program to download or stream. They appear to make money by displaying advertising to users of their service.

12    I am satisfied that the orders sought by the applicants should be made.

13    The particular orders proposed by the applicants are, subject to one exception, in the same form as those made by me in respect of different online locations in Roadshow Films Pty Ltd v Telstra Corporation Limited [2021] FCA 1588. The exception relates to an amendment that the Telstra group proposed in correspondence with the applicants’ solicitors addressing a technical issue concerning a “landing page” established pursuant to proposed order 4. The proposed change provides some latitude in the event that compliance is not possible due to a technical difficulty identified in that correspondence. The applicants have agreed to the proposed amendment.

14    Orders accordingly.

Associate:

Dated:    22 February 2022

SCHEDULE OF PARTIES