FEDERAL COURT OF AUSTRALIA

Roadshow Films Pty Limited v Telstra Limited [2025] FCA 744

ORDERS

THE COURT NOTES THAT:

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

(a)    Aussie Broadband means the forty-seventh 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 fifth and seventh to tenth 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-sixth to forty-fourth Respondents.

(k)    URL means a Uniform Resource Locator.

(l)    Vocus means the eleventh to twenty-fifth Respondents.

(m)    Vodafone means the forty-fifth and forty-sixth 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 any 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 has 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(a) 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(b), 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 or 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 network or systems; or

(d)    ensure its ability to block access to online locations associated with criminal content or its ability to comply with its statutory obligations, including under s 313(3) of the Telecommunications Act 1997 (Cth), is not impaired,

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 to the Court and all parties to this proceeding, 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 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 covered by these Orders; and/or

(d)    for an order in this proceeding extending the operation of these Orders.

12.    If the Applicants and their solicitor form a good faith belief that 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:

(a)    the Applicants may, by their solicitor, 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 provides brief reasons therefor;

(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 of 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; and

(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 the operator or administrator 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.

Schedule A - Target Online Locations

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

REASONS FOR JUDGMENT

YOUNAN J

1.    BACKGROUND

1 By Amended Originating Application filed on 29 May 2025, the applicants seek orders under s 115A of the Copyright Act 1968 (Cth) for site blocking and ancillary orders. In essence, the applicants seek to require the respondent carriage service providers to block users’ access to pirating websites that allow the free streaming of films over which the applicants claim copyright. This proceeding follows several other similar matters that have been heard by this Court since the introduction of s 115A, commencing with Roadshow Films Pty Ltd and Others v Telstra Corporation Ltd and Others [2016] FCA 1503; 248 FCR 178 (Roadshow No 1) (collectively, Roadshow Proceedings).

1.1    The applicants

2 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. The application concerns cinematograph films of which the applicants purport to be the owners or exclusive licensees of the copyright in Australia, and which are listed in Schedule 2 to the Amended Statement of Claim (Cinematograph Films).

1.2    Target online locations

3 The target online locations that are alleged by the applicants to infringe, or facilitate infringement of, copyright in the Cinematograph Films, are identified in Schedule A to the Originating Application (Target Online Locations). The Target Online Locations are all “streaming” locations.

4 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).

1.3    The respondents

5 Relevantly, the respondents are carriage service providers.

6 There are six main respondent groups, namely:  Telstra (first respondent); Optus (second to fifth and seventh to tenth respondents); TPG (twenty-sixth to forty-fourth respondents); Vodafone (forty-fifth and forty-sixth respondents); Aussie Broadband (forty-seventh respondent); and Vocus (eleventh to twenty-fifth respondents). Save for the sixth respondent, the respondents in this matter are the same as those in Roadshow Films Pty Ltd v Telstra Limited [2024] FCA 1388. There is otherwise substantial identity in previous proceedings.

7 Having been served, the respondents did not appear at the hearing. They filed submitting notices, save for the Vocus group, which did not file a notice of address for service or a submitting appearance, despite being ordered to do so by Burley J on 2 April 2025.

2.    EVIDENCE

8 The applicants rely on the following evidence in support of their application:

(1)    The affidavit of Andrew Gavin Stewart affirmed on 28 May 2025. Mr Stewart is the partner in charge of this matter at Baker McKenzie, and has experience in 17 previous applications brought under s 115A of the Copyright Act, as detailed in his affidavit.

(2)    The affidavit of Jackson Ion Moir affirmed on 28 May 2025. Mr Moir is a paralegal at Baker McKenzie under the supervision of Mr Stewart.

(3)    The second affidavit of Andrew Gavin Stewart affirmed on 2 June 2025.

9 The applicants also tendered Exhibit JIM-2 to Mr Moir’s affidavit, which is a USB portable hard drive disk containing two recordings purporting to show Mr Moir’s screen as he accesses examples of the Cinematograph Films on certain Target Online Locations and Target Domain Names. The applicants handed up an aide memoire comprising a table of screenshots selected from the videos, alongside a description of the screenshot and the functionality of the webpage (corresponding to a timestamp), in the form of supplementary submissions.

3.    LEGISLATIVE FRAMEWORK

10 The relevant legislative framework and legal principles have been set out in several of the Roadshow Proceedings. Given the coincidence of matters, and so as to avoid undue repetition, I gratefully adopt the summary provided by Nicholas J in Roadshow No 1 at [25]-[34], as supplemented by Burley J in Roadshow Films Pty Limited v Telstra Corporation Limited (Extension of Orders) [2023] FCA 1167 at [7]-[12].

4.    CONSIDERATION

4.1    Are the respondents carriage service providers (s 115A(1))?

11 The applicants rely on deemed admissions that the respondents are carriage service providers within the meaning of ss 10(1) and 115A of the Copyright Act. The admission is said to arise by operation of r 16.07(2) of the Federal Court Rules 2011 (Cth).

12 The premise of r 16.07(1) is the circumstance of a party pleading to an allegation of fact in another party’s pleading. Rule 16.07(2) is not so circumscribed in its terms, which has led to the view that it is not so circumscribed in its operation. However, the reference to the manner of denial (i.e., that it be specific so as not to engender an admission), suggests that it is the corollary of r 16.07(1).

13 That being said, a party cannot choose not to plead without risking deemed admissions in accordance with r 16.07(2): Hadgkiss v Construction, Forestry, Mining and Energy Union [2005] FCA 1453 at [34]. It would be an odd circumstance if a general denial engendered an admission, but the absence of denial did not. Furthermore, there is authority that a respondent in default of an order to file a defence allows an applicant to rely on deemed admissions of all the facts pleaded in the statement of claim: Jiangyin Yinying Goods and Materials Trade Co. Ltd v Australia Victoria Capital Pty Ltd [2012] FCA 274 at [12]; Thunder Studios Inc (California) v Kazal (No 9) [2020] FCA 846 at [32]-[33]. While the circumstance of a party not actively participating in a proceeding may present a factually different scenario, the principle remains one of the failure of a party to meet a claim or join issue.

14 In the present case, the failure of the respondents to object to their identification as carriage service providers is evident in both:

(a)    the filing of submitting appearances by all respondents (other than the Vocus respondents), who have not sought to dispute or put the applicants to proof on this issue; and

(b)    the response (or failure to respond) to correspondence inviting the respondents to indicate if they no longer provide carriage services (which is defined in s 87 of the Telecommunications Act 1997 (Cth)). This is aside from the sixth respondent, which was subsequently removed from the list of respondents.

15 On that basis, I am satisfied that the respondents in this matter are carriage service providers within the meaning of s 87 of the Telecommunications Act and therefore for the purposes of s 115A of the Copyright Act (as per the definition in s 10(1) of the Copyright Act).

4.2    Are the Target Online Locations outside Australia (s 115A(1))?

16 The applicants relied on the presumption in s 115A(5A) of the Copyright Act to establish that the Target Online Locations are outside Australia. They also presented evidence that each of the Target IP Addresses was registered or created, and each of the Target Domain Names was registered, overseas based on the investigations undertaken by Mr Moir. On that basis, I am satisfied that the Target Online Locations are outside Australia for the purposes of s 115A(1) of the Copyright Act.

4.3    Did the applicants notify the owners or operators of the Target Online Locations (s 115A(4))?

17 The evidence is that the applicants ascertained the contact details of the owners or operators of the Target Online Locations, where available. Mr Moir sent correspondence to these (postal and email) addresses. Where the Target Online Location provided an online form, Mr Moir also attempted to notify the owner or operators via this form.

18 The evidence is that the owners or operators of the Target Online Locations, in large part, did not respond to correspondence from the applicants. The responses that were received were not substantive, or were automated responses from hosting services and domain-name registrars. No owner or operator appeared before me.

19 I am satisfied that reasonable efforts have been expended to notify the owners or operators of the Target Online Locations of the making of the application. On that basis, and to the extent that those efforts have not resulted in notice being given to those owners and operators, I dispense with the need for the applicants to take any further steps to effect the notice required to be sent under s 115A(4)(b) of the Copyright Act.

4.4    Does copyright subsist and is it owned by the applicants (s 115A(1) and (3(a))?

20 The applicants relied on the presumptions in ss 126 and 131 of the Copyright Act as to subsistence and ownership of copyright, and on deemed admissions (in relation to ownership and exclusive licensing) referable to the pleadings, given that the application was uncontested. The first applicant as exclusive licensee has standing to apply for an injunction under s 115A as a consequence of the operation of s 119(a) of the Copyright Act.

21 The applicants presented evidence of:

(1)    the copyright notices displayed on the DVD sleeves of a number of the Cinematograph Films;

(2)    the copyright notice displayed on the Netflix website during the closing credits of several of the Cinematograph Films; and

(3)    the US copyright certificates for a number of the Cinematograph Films, which indicated that the copyright was owned by several of the applicants.

22 In addition, the applicant relied on hearsay evidence provided by Mr Stewart that the applicants were the owners (save for the first applicant, which is the exclusive licensee) of copyright in Australia in the Cinematograph Films, and that neither the applicants nor their licensees have granted any licence, permission or consent to the owners, operators or users of the Target Online Locations to make copies of the films or communicate the films to the public. I note also that the first applicant is the exclusive licensee of the copyright (of a film) owned by the second applicant.

23 The applicants accepted that this evidence was hearsay, and submitted that I should make a s 190 waiver under the Evidence Act 1995 (Cth) to admit the evidence on the basis that it is not genuinely in dispute. On that basis, and, in the absence of any relevant exception to the hearsay rule, I order that s 59 of the Evidence Act is dispensed with in relation to that evidence.

24 Accordingly, I am satisfied that the applicants are the owners or exclusive licensees of the copyright in the Cinematograph Films in Australia.

4.5    Do the Target Online Locations infringe, or facilitate the infringement of, the applicants’ copyright (s 115A(1)(a))?

25 In his affidavit, Mr Moir details the steps he took to verify that copies of the Cinematograph Films have been reproduced on the Target Online Locations. I was also provided with screenshots and video examples of Mr Moir navigating the Target Online Locations and streaming portions of two of the Cinematograph Films.

26 On the basis of that evidence, I am satisfied that the Cinematograph Films are available for streaming on the Target Online Locations identified by the applicants, without licence or consent, constituting infringement of their copyright.

4.6    Did the Target Online Locations have the requisite purpose and effect (s 115A(1)(b))?

27 In his affidavit, Mr Moir described the functionality of the Target Online Locations that he visited, noting that:

(1)    the Cinematograph Films, as well as other recent or well-known films, were available to be viewed without charge;

(2)    the websites facilitate easy access to the Cinematograph Films, including instructions for their use as well as indexes, directories and categorisation;

(3)    a number of the Target Online Locations contain statements concerning the copyright compliance practices of those online locations; and

(4)    a number of the Target Online Locations display advertising to users, which presumably provides a source of revenue for the owners or operators of the sites.

28 On the basis of that evidence, I am satisfied that the primary purpose and effect of the Target Online Locations is to infringe, or facilitate the infringement of, copyright, pursuant to s 115A(1)(b) of the Copyright Act.

4.7    Matters for consideration under s 115A(5)

29 Having satisfied the requisites of s 115A(1), and in determining whether or not to grant the injunction as a matter of discretion, I have considered the following matters outlined in s 115A(5) of the Copyright Act:

(1)    The Target Online Locations offer large catalogues of infringing material, which reinforces the flagrancy of the infringement, or of the facilitation of the infringement, as referred to in s 115A(1)(b).

(2)    Most of the Target Online Locations have directories, indexes or categories of motion pictures and television programs.

(3)    The operators of the locations have been substantially and substantively unresponsive to notifications about their infringing conduct, despite many having statements about copyright compliance, thereby demonstrating a disregard for copyright.

(4)    One of the Target Online Locations is subject to orders of the High Court of Delhi made on 21 November 2023, which granted an injunction to disable access to the Target Online Location.

(5)    The volume and flagrancy of the infringement warrants disabling access to the Target Online Locations, which is a proportionate response and in the public interest. The applicants identified the public interest in ensuring that copyright owners can exercise their legal monopoly in their rights, and not have their rights infringed by overseas actors whose conduct cannot otherwise be restrained. The applicants noted the difficulty in detecting copyright infringement and therefore in enforcing the monopoly, and in that regard, drew my attention to the Revised Explanatory Memorandum to the Copyright Amendment (Online Infringement) Bill 2015 at [8], which recognises that:

Copyright protection provides an essential mechanism for ensuring the viability and success of creative industries by incentivising and rewarding creators. Online copyright infringement poses a significant threat to these incentives and rewards, due to the ease in which copyright material can be copied and shared through digital means without authorisation.

(6)    There is no evidence or indication that there will be any impact on anyone likely to be affected by the grant of the injunction, except that users will not be able to access infringing material, and the owners or operators of the site will be deprived of visits by Australian users.

5.    CONCLUSION

30 I note that the orders sought by the applicants are in substantially the same form as the orders made by Halley J in Roadshow Films Pty Limited v Telstra Limited [2024] FCA 485.

31 I am satisfied that the steps proposed by the applicants for the respondents to disable access to the Target Online Locations are reasonable, and that, in view of the matters considered above, the injunction sought by the applicants under s 115A of the Copyright Act should be granted.

Associate:

Dated:    9 July 2025

SCHEDULE OF PARTIES