Federal Court of Australia

Roadshow Films Pty Ltd v Telstra Limited [2024] FCA 246

ORDERS

THE COURT NOTES:

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:

(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 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 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;

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

(d)    for an order in this proceeding extending the operation of the 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.    If an Applicant makes an application under order 11(d) to extend the period of operation of these orders, the following procedure applies:

(a)    the application must be made at least 28 days prior to the expiry of the operation of the orders by filing a minute of the orders sought together with a solicitor’s certification in accordance with (b) below;

(b)    a solicitor on behalf of the Applicant must certify that:

(i)    within the 6 weeks prior to the application, the solicitor or another representative of the Applicant has attempted to access each Target Online Location via each Target Domain Name;

(ii)    following the exercise in (b)(i) above, the solicitor has a good faith belief that each Target Online Location that is the subject of the application has not permanently ceased to have the primary purpose or effect of infringing or facilitating the infringement of copyright, and that each Target Domain Name, Target URL or Target IP address that is the subject of the application has not permanently ceased to enable or facilitate access to a Target Online Location;

(iii)    the Applicant has given the Respondents at least 7 days’ notice of the application;

(c)    the accompanying minute of order may specify any Target Domain Names, Target URLs or Target IP addresses that are excluded from the application;

(d)    within 7 days of receiving notice of the application, any Respondent objecting to the extension of these orders must notify the Applicant and the Court in writing of the objection and the reasons therefor;

(e)    if any Respondent objects in accordance with (d) above, the proceeding will be relisted for directions, unless the Court otherwise orders;

(f)    if no Respondent gives notice of any objection, then the Court may make orders in terms of the Applicant’s minute without any further hearing;

(g)    the Applicant must serve on the Respondents any such orders made; and

(h)    the Applicant must attempt to give each relevant Target Online Location notice of the Orders made by sending an email to one email address identified by such Location as providing a means to contact its operator or administrator (if any is identified), further notifying it that it may seek to vary or set aside such Orders upon the filing of a notice of appearance with the Court and an appropriate application, supported by affidavit evidence.

18.    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.

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.

REASONS FOR JUDGMENT

NICHOLAS J:

1    This is an application for orders under s 115A of the Copyright Act 1968 (Cth) (“the Act”) for site blocking and ancillary orders in respect of what are defined in the applicants’ proposed orders as Target Online Locations. The proceeding was commenced by an originating application and statement of claim filed on 9 November 2023. Amended versions of these documents were filed on 5 March 2024. The application is supported by affidavits made by Andrew Stewart and Vaughan Marega from Baker & McKenzie (the applicants’ solicitors) and Jackson Moir who was previously employed by that firm.

2    The applicants are producers and distributors of commercially released motion pictures and television programs. The respondents are carriage service providers. All except for the forty-ninth respondent (“Aussie Broadband”) is a member of the Telstra, Optus, TPG, Vodafone, or Vocus groups. The Telstra, Optus, TPG, Vodafone and Aussie Broadband respondents have filed submitting appearances. The Vocus respondents have not appeared or sought to be heard.

3    There are thirty-three Target Online Locations most of which are accessible via a number of domain names, URLs and IP addresses. These are identified in the proposed orders as Target Domain Names, Target URLs and Target IP Addresses respectively. For example, the first of the Target Online Locations (guazitv) is, or at least was, accessible via three Target Domain Names (guazitv9.com, guazitv.tv and gztv.tv), three corresponding Target URLs (eg. https://guazitv9.com) and seven different Target IP Addresses.

4    The evidence describes the efforts made by the solicitors for the applicants to bring to the attention of the operators of the Target Online Locations the existence of this proceeding and the site blocking orders sought by their clients. I am satisfied that the operators of the Target Online Locations have been duly notified of this proceeding and the orders sought by the applicants or, to the extent they have not been so notified, that reasonable efforts to notify them have been made. None of the operators of the Target Online Locations the subject of the applicants’ proposed orders applied to be joined or otherwise appeared in the proceeding.

5    Evidence relied on by the applicants shows that each of the Target Online Locations is most likely situated overseas. In addition to that evidence, the applicants rely on the statutory presumption in s 115A(5A) of the Act. Mr Moir and Mr Marega have between them visited all of the Target Online Locations and noted which of the relevant motion pictures or television programs (copyright in which is owned by the applicants) were available at that location or, in the case of proxy locations, at some of the third-party sites to which the proxy location directed them. For each such location, they then navigated to a link to at least one of those films and then, depending on the type of online location, streamed or downloaded the film in question. In each case they watched certain parts of the film and confirmed that it was a true copy of the film. They also observed that each of the Target Online Locations provide access to directories, indexes and content descriptions which assist users in locating titles for streaming, downloading or sharing.

6    When Mr Moir and Mr Marega visited each of the Target Online Locations, they also observed that the primary service offered by those locations was to provide online access without charge to large numbers of motion pictures and television programs. The motion pictures and television programs made available at the Target Online Locations include many well-known commercially released titles. They further observed that the majority of the Target Online Locations carried out advertising.

7    Many of the Target 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. However, most of the operators did not respond to communications from the applicants’ solicitors or take any steps to cease making the applicants’ motion pictures and television programs available online. Some of the responses received came from persons or entities claiming to be the domain name registrar or hosting provider. In almost every case the notification system does not appear to provide any genuine or effective means for notifying the operators of the Target Online Locations of copyright infringement occurring at their online location or to facilitate genuine or effective remedial action in relation to any such infringement by the operator.

8    In one case, the applicants’ solicitors’ notification appears to have had the desired effect. Earlier this year, Mr Marega ascertained that what was previously the thirty-fourth Target Online Location (dramacool accessible via dramacool.sr and dramacool.ge) no longer made available any of the films on which the applicants rely and, consequently, relief is now not sought with respect to that Target Online Location.

9    The applicants also received a response to a notice sent to the domain registries for the domain names “guazitv9.com” and “gogoanime.mom”. The response said the domain registrar had suspended those domain names, “thereby rendering all services availed by the domain names inoperative”. When Mr Marega again attempted to navigate to those domain names, he found that they no longer provided access to the Target Online Location via the Target Domain Names “guaziTV” and “gogoanime”. However, it remained accessible via the domain name gztv.tv and, in those circumstances, the applicants maintain the claim for relief in respect of that Target Online Location. There are a number of other Target Online Locations that appear to have changed the domain names from which they can be accessed. The changes appear to be aimed at circumventing the site blocking orders sought by the applicants and do not appear to me to involve any genuine attempt at eliminating or curtaining copyright infringement at the Target Online Locations concerned.

10    I am satisfied that each of the Target Online Locations infringes the applicants’ copyright in one or more of the relevant motion pictures or television programs. I am also satisfied that the primary purpose or effect of each of the Target Online Locations is to infringe, or to facilitate the infringement of, copyright. The evidence satisfies me that the copyright infringement engaged in, or facilitated by, the Target Online Locations is flagrant and that the operators display a blatant disregard for the rights of copyright owners. In my opinion this is an appropriate case for making the site blocking and ancillary orders sought by the applicants.

11    Orders accordingly.

Associate:

Dated:    15 March 2023

SCHEDULE OF PARTIES