FEDERAL COURT OF AUSTRALIA

Roadshow Films Pty Ltd v Telstra Corporation Limited [2022] FCA 1468

ORDERS

THE COURT NOTES:

In these orders, the following terms have the following meanings:

(a)    Aussie Broadband means the fifty-second Respondent.

(b)    Domain Name means a name formed by the rules and procedures of the Domain Name System (DNS) and includes subdomains.

(c)    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 4.

(d)    IP Address means an Internet Protocol address.

(e)    Optus means the second to twelfth Respondents.

(f)    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).

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

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

(i)    Telstra means the first Respondent.

(j)    TPG means the thirty-first to the forty-ninth Respondents.

(k)    URL means a Uniform Resource Locator.

(l)    Vocus means the thirteenth to twenty-third, twenty-fifth, twenty-seventh, and twenty-ninth to thirtieth Respondents.

(m)    Vodafone means the fiftieth to fifty-first 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 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 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, Vodafone’s and Aussie Broadband’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 the Court is an application for orders under s 115A of the Copyright Act 1968 (Cth) (“the Act”) for site blocking and ancillary orders. The proceeding was commenced by an originating application and statement of claim.

2    The applicants are well-known producers and distributors of commercially released films and television programs. The respondents are carriage service providers. All except for the fifty-second respondent is a member of the Telstra, Optus, Vocus or TPG groups. The proceeding as against the twenty-fourth, twenty-sixth and twenty-eighth respondents has been discontinued. The thirteen to thirtieth respondents have not filed any submitting notice or notice of address for service. All other respondents filed submitting notices. None of the operators of the online locations which are the subject of the applicants’ proposed orders applied to be joined or otherwise appeared in the proceeding.

3    The application is supported by affidavits made by the applicants’ expert witness, Gregory Donald Fraser, and the applicants’ solicitors, Andrew Gavin Stewart, Peter Carstairs, Jackson Moir and Tiffany Britchford. Among other things those affidavits recount the efforts made to bring to the attention of the operators of the online locations the existence of this proceeding and the site blocking orders sought by the applicants.

4    The evidence relied on by the applicants shows that each of the online locations is most likely situated overseas. The applicants also rely on the statutory presumption in s 115A(5A) of the Act. The evidence satisfies me that the primary service provided by each of the relevant online locations involves providing online access without charge to motion pictures and television programs. The vast majority of the online locations carry advertising. The motion pictures and television programs made available at the online locations include large numbers of well-known commercially released titles, the copyright in which is owned by one or more of the applicants or other copyright owners. The evidence satisfies me that the primary purpose and effect of each of the online locations is to infringe, or facilitate the infringement of, copyright in motion pictures and television programs.

5    Turning to the matters relevant to the discretion to make an order under s 115A, it is apparent from the evidence that the online locations facilitate copyright infringement on a large scale. Some act as proxy servers to other servers and some share Torrent files using the BitTorrent protocol (see Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503; (2016) 248 FCR 178) at [17]-[20]. The vast majority of the online locations provide access to directories, indexes and content descriptions which assist users in locating titles for streaming, download or sharing.

6    Many of the websites at the relevant online locations purport to provide a notification system enabling a copyright owner to give notice that its material is being made available online in breach of copyright. Many of the websites also include statements stating or implying that their activities do not infringe copyright. The notification systems do not appear to provide any genuine, reasonable or effective means for notifying operators of copyright infringement occurring at their online locations.

7    Most of the operators did not respond to communications from the applicants’ solicitors and those that did respond do not appear to have taken any steps to cease making the applicants’ motion pictures and television programs available online. Some of the responses received (of which there were only a few) came from persons or entities claiming to be the domain name registrar or hosting provider who said they lacked power to control content on the site.

8    The evidence satisfies me that the copyright infringement engaged in, or facilitated by, the relevant online locations is flagrant and that the operators display a disregard for the rights of copyright owners.

9    In my opinion this is an appropriate case for making the site blocking and ancillary orders sought by the applicants.

10    Orders accordingly.

Associate:

Dated:    6 December 2022

SCHEDULE OF PARTIES