FEDERAL COURT OF AUSTRALIA

Roadshow Films Pty Limited v Telstra Limited [2023] FCA 777

ORDERS

THE COURT NOTES:

1.    In these Orders, the following terms have the following meanings:

(a)    Aussie Broadband means the forty ninth 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 twenty eighth to the forty sixth respondents.

(k)    URL means a Uniform Resource Locator.

(l)    Vocus means the thirteenth to twenty seventh respondents.

(m)    Vodafone means the forty seventh and 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 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 or the primary effect 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 s 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)    file and serve 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 or facilitating access to 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 or the primary effect 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 of these orders.

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.

Schedule A - Target Online Locations

REASONS FOR JUDGMENT

HALLEY J:

A.    INTRODUCTION

1    Before me today, is an application for orders under s 115A of the Copyright Act 1968 (Cth) (Act) for site blocking and ancillary orders. The proceeding was commenced by an originating application and statement of claim.

2    The applicants rely on the following evidence:

(a)    affidavits of Andrew Gavin Stewart affirmed on 30 June 2023 and 6 July 2023. Mr Stewart is the solicitor on the record for the applicants and has been the solicitor on the record and given evidence in 12 previous applications before this Court for site blocking and ancillary orders under s 115A of the Act involving similar applicants and respondents (Previous Roadshow Applications); and

(b)    an affidavit of Jackson Ion Moir affirmed on 30 June 2023. Mr Moir is a paralegal acting under the supervision of Mr Stewart.

B.    BACKGROUND

3    The applicants are each engaged in the creation, distribution, licensing, and/or marketing of theatrical motion pictures, television programming, videos/DVDs, Blu-ray discs, digital downloads and related products throughout the world, including in Australia.

4    The respondents are carriage service providers. They are the same respondent groups as in the Previous Roadshow Applications. The respondents comprise Telstra (the first respondent), Optus entities (the second to twelfth respondents), Vocus entities (the 13th to 27th respondents), TPG entities (the 28th to 46th respondents), and Vodafone entities (the 47th and 48th respondents). The 49th respondent, Aussie Broadband, was a respondent in the two most recent of the Previous Roadshow Applications.

5    The Telstra, Optus and Aussie Broadband respondent groups have all filed submitting appearances. The Vocus, TPG, and Vodafone respondents have been served but have failed to file either a notice of address for service or a submitting appearance, contrary to orders made by this Court. None of the respondents has sought to be heard in the proceeding.

6    The cinematograph films relied on by the applicants (Cinematograph Films) are listed in Sch 2 to the statement of claim dated 2 June 2023.

7    The applicants rely on the presumptions in s 126 and s 131 of the Act, and on deemed admissions as to ownership of copyright. Although it is not necessary, Mr Stewart also gives evidence of the applicants’ ownership of copyright in the Cinematograph Films on information and belief.

C.    GRANT OF RELIEF UNDER S 115A OF THE ACT

8    Section 115A of the Act relevantly 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.

…

(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; and

…

9    Section 115A(4) of the Act permits the Court to make an order dispensing with service on the carriage service provider, online search engine provider and 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.

10    The target online locations that are alleged by the applicants to infringe or facilitate infringement of copyright in the Cinematograph Films are identified by Mr Moir in tables in the annexures to his affidavit (Target Online Locations). They fall into three classes, (a) a “linking” location, (b) “streaming” locations, and (c) “torrenting” locations. The classes have been the subject of previous applications under s 115A, including in each of the Previous Roadshow Applications.

11    The Target Online Locations are accessible at identified target uniform resource locations (Target URLs), which incorporate identified target domain names (Target Domain Names); and at identified target internet protocol addresses (Target IP Addresses). The URLs, domain names, and IP addresses for each of the Target Online Locations are set out in Table 1 to the Annexure JIM-1 to the affidavit of Mr Moir.

12    There are three types of Target Domain Names: (a) “primary” domain names, which are the main locations that provide the functionality complained of by the applicants, (b) “secondary” domain names, which redirect users to corresponding primary domain names, and (c) “mirror” domain names. A mirror domain name is a location substantially identical to another location, so that it appears to be the same website hosted on multiple domains simultaneously.

13    The applicants rely on the presumption in s 115A(5A) of the Act, that in proceedings for an injunction under s 115A, the online location is presumed to be outside Australia, unless the contrary is established. The applicants also rely on searches undertaken by Mr Moir that show that each of the Target IP Addresses was registered or created, and each of the Target Domain Names was registered, overseas.

14    Mr Moir gives evidence that (a) he visited all of the Target Online Locations, and noted which of the Cinematograph Films were available at each location, (b) for each location, he then navigated to a link to at least one of the Cinematograph Films, then, (c) depending on the type of the online location, streamed or downloaded the film, and (d) in each case, he watched certain parts of the film and confirmed that it was a true copy of the film in question.

15    Further, Mr Moir gives evidence that when he visited each of the Target Online Locations, he found that (a) their primary service was to provide simple access without charge online to motion pictures and television programs, (b) each location made available large numbers of other motion pictures and television programs, and (c) the majority of them carried advertising. I am satisfied that this evidence establishes that the primary purpose or effect of each of the Target Online Locations is to infringe, or to facilitate the infringement of, copyright.

16    I can readily infer from the evidence given by Mr Moir summarised at [14]-[15] above, that the applicants have not granted any licence or consent to the owners or operators of the Target Online Locations to copy or communicate the Cinematograph Films: see Foxtel Management Pty Ltd v TPG Internet Pty Ltd [2017] FCA 1041 at [117] (Burley J); Foxtel Management Pty Ltd v TPG Internet Pty Ltd [2018] FCA 933 at [12] (Nicholas J) . There is also evidence to this effect from Mr Stewart on information and belief.

17    I am satisfied that the evidence relied upon by the applicants establishes that each of the Target Online Locations infringes copyright in one or more of the Cinematograph Films.

18    The matters to be taken into account in determining whether to exercise the Court’s discretion to grant an injunction, are relevantly identified in s 115A(5) of the Act, which provides:

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;

(ea)    if the application under subsection (1) also sought for the injunction to apply against an online search engine provider—whether not providing search results that refer users 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;

(ga)    if the application under subsection (1) also sought for the injunction to apply against an online search engine provider—whether it is in the public interest not to provide search results that refer users 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.

19    I am satisfied that the evidence relied upon by the applicants has established the following matters that weigh heavily in favour of the exercise of the discretion to grant an injunction under s 115A of the Act.

20    First, by reason of the matters identified at [14]-[16] above, the infringement of copyright at each of the Target Online Locations can be appropriately characterised as flagrant.

21    Second, the Target Online Locations are simple to use, they offer large catalogues of infringing material, and most of them make money by displaying advertising to users.

22    Third, the vast majority of them have directories, indexes or categories of motion pictures and television programs.

23    Fourth, the operators of the locations also display a disregard for copyright generally. Many include statements about copyright compliance, claiming to have a copyright they offer large catalogues of infringing material, and most of them make money by displaying advertising to users.

24    Fifth, the operators have been substantially unresponsive to notifications about their infringing conduct.

25    Sixth, at least three of the Target Online Locations are the subject of orders from a court in another country on the ground of, or on grounds related to, copyright infringement.

26    I am also satisfied that the applicants have complied with s 115A(4) of the Act as far as is reasonably possible. They have notified the carriage service providers and they have exerted reasonable efforts to notify the operators of the Target Online Locations. The applicants’ solicitors sent notices about the proceedings, by email and post, to the addresses identified at the Target Online Locations, and also to addresses identified in the domain name and IP address searches. Where the Target Online Locations had web forms, the applicants’ solicitors navigated there and attempted to complete the forms.

27    Generally, the owners or operators of the Target Online Locations did not respond. When they did, the responses were largely not substantive. Most were automated responses from hosting services and domain-name registrars. No owner or operator has appeared at the hearing today.

28    Other remedies are not reasonably available to the applicants because the Target Online Locations are located outside of Australia. Given the volume and flagrancy of the infringement, I am satisfied that disabling access to the Target Online Locations is a proportionate response, and that it is in the public interest. There is no evidence or indication that there will be any impact on any person or class of persons likely to be affected by the grant of the injunction, except that users will not be able to access infringing material, and that the operators of the site will be deprived of visits by Australian users.

D.    DISPOSITION

29    The orders sought by the applicants are in substantially similar form to the orders made in the most recent of the Previous Roadshow Proceedings (NSD 952 of 2022), subject to a minor amendment to proposed orders 8(b) and 17(a)(i), inserting the words “or the primary effect” for consistency with the language of s 115A(1)(b) of the Act.

30    In my view, this is an appropriate case for making the site blocking and ancillary orders sought by the applicants.

Associate:

Dated:    7 July 2023

SCHEDULE OF PARTIES