Tips for lawyers

1. Be tech savvy; know what kind of block will be most effective.
2. Cover all bases; the primary purpose test and the discretionary matters in subsection (5) mean you need evidence about the website, its owner and its functions.
3. Investigate; no matter how hidden they are, you need to at least make reasonable efforts to determine the website operator’s identity and notify them of the proceedings.
4. Co-operate with the ISPs; this is a no fault provision- therefore, the proceedings don’t have to be adversarial. The more issues that can be agreed, the easier the application will be.
5. Think past the orders; have a mechanism in mind for expanding/modifying the initial orders to cover domain shifting etc.

Online copyright infringement has been a problem for content owners since the inception of the internet. The unauthorised downloading (and uploading) of copyright material is especially prevalent in Australia, where a 2015 survey estimated that Australians download movies, songs and television programs in the hundreds of millions each year.¹ While content owners have been criticised by some for not making content available in Australia (or making it available at a comparatively inflated price), the unauthorised downloading of copyright material is a clear infringement of content owners’ rights.  

The problem facing content owners is that it is very difficult to enforce these rights. Online infringement is easy to do and difficult to detect. While one individual download may not cause huge loss to the content owner, the damage arises from the cumulative impact of large numbers of otherwise paying viewers obtaining the material for free.

The introduction of section 115A of the Copyright Act 1968 (the Act) by way of the Copyright Amendment (Online Infringement) Bill 2015 gives content owners a potential way to tackle the problem. The section allows content owners to seek an injunction to force ISPs to take reasonable steps to block troublesome websites. However, before considering this new section and how effective it may be, it’s worth highlighting some of the events that helped shape it.

Previous attempt

ISPs and ‘authorisation’

Content owners have in recent years tried different solutions to the problem of online infringement. In 2009, Roadshow Films and others attacked internet service providers (ISPs) on the basis that they were providing the ‘means’ (internet access) for their customers to access copyright material. Roadshow alleged that by providing this access, together with the iiNet’s actual knowledge that certain accounts were accessing infringing content (based on notices provided by an industry body), iiNet ‘authorised’ their customers’ infringement in breach of section 101 of the Act.

In the High Court,² the primary issue was the degree of control iiNet had over their customers’ infringement. In the context of authorisation, section 101(1A) provides that consideration must be given to ‘the extent (if any) of the person's power to prevent the doing of the act concerned’. The Court rejected Roadshow’s argument that iiNet had the power to prevent the infringement by suspending a customer’s account and found iiNet lacked the requisite control over their customers’ act. In doing so, French CJ, Crennan and Kiefel JJ noted that iiNet had no control over its customers’ choice to use Bit Torrent program, the Bit Torrent program itself or the customers’ decision to simply access the program through a different ISP.

Dallas Buyers Club

The next approach was to target the individual users accessing the material, but again through the ISPs. In 2014, the owners of the copyright in the Dallas Buyers Club film sought preliminary discovery under Part 7 of the Federal Court Rules 2011, with iiNet again a respondent. The film owners argued that they had evidence of iiNet customers illegally downloading the film, however lacked the information necessary (ie. the customer’s details) to commence proceedings against them. While the film owners had apparently obtained the IP addresses used to download and share the film, they could not connect that address to the individual behind it without iiNet’s assistance.

Perram J agreed that the film owners were entitled to preliminary discovery.³ However, this was a pyrrhic victory only. In exercising the Court’s discretion over the implementation of the orders, Perram J required the film owners to effectively submit a draft letter to customers for approval by the Court, to ensure that the information disclosed by iiNet would not be used for ‘negotiating positions lacking legal substance’.⁴ In this regard, the Court was particularly concerned with the film owners intention to seek ‘additional’ damages under section 115(4) of the Act, as well as damages for alleged sharing of the film.

Without these heads of damage, the film owners were left with no more than the standard licence fee amount per download (which was also the subject of debate), together with the costs of obtaining the individual’s details in the proceedings. Given the way the proceedings concluded, it can be inferred that this alone would not be economically viable. Despite the initial success, content owners were in no better position than they were after iiNet.

Section 115A

While these battles were playing out, the content owners were seeking a legislative solution. The result was section 115A of the Act.

The ultimate remedy available under section 115A is an injunction against a ‘carriage service provider’ (for present purposes, an ISP), to require them to take ‘reasonable steps to disable access’ to an ‘online location’.

In order to obtain an injunction under section 115A, a content owner must satisfy the Court that:

• a carriage service provider provides access to an online location outside Australia;
• the online location infringes, or facilitates an infringement of, the copyright; and
• the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in Australia).

Further, the Court must also consider the list of matters in subsection (5) when determining whether to order an injunction. The list includes the flagrancy of the infringement, whether access to the online location has been blocked in other jurisdictions and whether disabling access is a proportionate response and in the public interest.

A number of undefined terms appear on first view of the section. For example, what exactly is an ‘online location’? How can the ‘primary purpose’ of an online location be determined? What constitutes ‘reasonable steps’?

The Revised Explanatory Memorandum attempts to provide some context to the terms used in section 115A. ‘Online location’ is intentionally broad to ‘accommodate future technologies’.⁵ An online location with the ‘primary purpose’ of infringement excludes online locations that are mainly operated for a legitimate purpose, but may contain a small percentage of infringing content.’⁶ ‘”Reasonable steps” may include blocking its subscribers from accessing a website operated overseas that facilitates copyright infringement in any such a manner as the Court sees fit.’⁷

It can also be seen that the section has an international focus, as the online location must be outside Australia. The Revised Explanatory Memorandum states that this is because content owners have ‘existing avenues to take direct action against an online location operated within Australia, but face difficulties in enforcing their rights against an online location operated outside the jurisdiction’.⁸ While this approach may be sound in principle, the fluid presence of an ‘online location’ remains a difficult issue.

Section 115A in action

Establishing a case for an injunction

So far, there have been two decisions to consider section 115A: Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 and Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435 (however at least one other is pending). These decisions bring to the surface some of the difficulties in interpreting section 115A and exposes its limitations in reducing online infringement.

Roadshow

In Roadshow, Roadshow Films and Foxtel sought to block a number of popular Torrent sites, including ‘the Pirate Bay’ and ‘IsoHunt’. The applicants joined a number of ISPs to the proceedings.

The content owners adduced evidence to satisfy the requirements of section 115A, including that:

• they were the copyright owners in nominated cinematographic films;
• certain websites (including the Pirate Bay and its various iterations) provided unauthorised access to the films;
• the primary purpose of the websites was to infringe or facilitate infringement (this was done by drawing the Court’s attention to the sheer volume of unauthorised material available from the websites⁹);
• the websites were hosted outside Australia;
• they had made reasonable efforts to notify the operator of the online location;
• each of the ISPs joined as respondents provided access to the websites; and
• the matters in subsection (5) warranted the making of an injunction.

Having regard to the content of each online location, the Court had little difficulty concluding that they content owners established the ‘primary purpose’ test. The Court did, however, identify some issues in the drafting of the section that were troublesome:

• the section uses language in the present continuous tense: ‘provides’, ‘infringes’ and ‘facilitates’. Does this mean that each online location must satisfy the requirements of the section at the time of making the order? Given the presence of online locations are continuously changing, it’s possible an affidavit asserting these matters filed in the morning could be outdated by the afternoon. His Honour noted these practical difficulties and found that the temporal meaning of the section is neutral; that is, it will apply to both past and present conduct.¹⁰
• The section only applies to an online location outside Australia. What if the online location was based overseas, but a user accessed it through a proxy server based in Australia? His Honour raised but did not have to decide this question.¹¹

Ultimately Nicholas J found that each of the applicants had satisfied the matters in section 115A and that an injunction was appropriate.

Orders

After establishing that an injunction was warranted, his Honour then considered what would constitute ‘reasonable steps’ to disable access to the online location.

Nicholas J did not attempt to define what an online location is, apart from noting that it could include a website¹². However, earlier in his judgment, his Honour delved into the technical aspects of online communications and distinguished between three potential levels of ‘blocking’:

• Domain Name System (DNS) blocking: when users enter a website address in their browser, their computer will contact a DNS Server, usually operated by the user’s ISP. The DNS Server translates the domain name entered by the user into an IP address to find the requested website. A DNS block would mean if the user entered a specific domain name into their browser, the ISP’s DNS Server would cause an error message to be displayed or re-direct the user to a different website.
• Uniform Resource Locator (URL) blocking: A URL ‘is a reference (an address) to a resource, such as a computer server, an electronic document, or a webpage on the Internet, and refers to the entire address used to fetch a resource from an online location’. A URL block involves ISPs inspecting the data being exchanged between the user and the resource to identify whether a blocked URL is being requested.
• IP Address blocking: of the three discussed, this type of block is the most broad. It involves the ISPs stopping an attempted connection between a user’s IP address and a particular website (ie. above the DNS level).

The Court ordered that an ISP would take ‘reasonable steps’ by implementing any of the above blocks. During the hearing, the ISPs indicated that they proposed to implement DNS blocking to satisfy any order, which was not opposed by the content owners. While it is likely to have the least effect of the three blocking types:

• It is presumably the cheapest one to implement (calculated by the Court at $50 per blocked domain name¹³);
• URL blocking will not be effective for secure resources (those beginning with ‘https’¹⁴); and
• As a single IP address can be associated with a number of different and unrelated websites, IP address blocking could result in a number of unintended websites being blocked¹⁵ (as occurred when ASIC attempted to block access to particular websites in 2013).

The ancillary orders made included a requirement that the ISPs redirect users to a webpage stating that the particular site has been disabled because the Court has determined that it infringes or facilitates the infringement of copyright. The orders were also limited to a period of three years.

The applicants were ordered to pay the ISPs costs of complying with the order- as described above, assessed at $50 per domain name blocked. This is far less than contended by some ISPs, who requested their costs to ‘set up’ the DNS block. However, his Honour followed United Kingdom authority in deciding that these costs were part of ‘carrying on the business’ of an ISP. The applicants were also ordered to pay the ISPs costs of the proceedings on discrete issues, but not generally.

Universal Music

The applicants in Universal Music sought and obtained very similar orders to those made in Roadshow, relating to different online locations. The target in Universal Music was ‘Kick-ass torrents’, a very popular Bit Torrent site which Burley J noted ‘received millions of visits a month from Australian users’.¹⁶

The Universal Music decision covered much of the same ground as Roadshow. There were however some interesting notes from the judgment:

1. In contrast to Roadshow, the orders in Universal Music did not refer to URL Blocking or IP Address blocking. Rather, the ISPs obligations can be met by DNS Blocking or by ‘any alternative technical means for disabling access…as agreed in writing between an Applicant and a Respondent’;
2. Notwithstanding the costs decision in Roadshow, both parties pressed for the other to bear the costs of the ISPs compliance with an injunction. The Applicants creatively argued that as the ISPs themselves were copyright owners, they will also benefit from the orders and therefore should at least share in the costs. Most of the ISPs argued that as they are innocent parties and the injunctions will serve the Applicants’ interests, the costs should be borne by them. Ultimately, the Court arrived at the same conclusion as Roadshow: $50 per domain name blocked and a limited costs order. In passing, Burley J observed that to avoid arguments on costs there would be ‘much to commend a uniform approach to fixing a “tariff” for the grant of such orders.’¹⁷

Finally a solution…or just more problems?

Notwithstanding their victories, there are major questions about how effective the blocking orders will be. According to some sources, many tech savvy users overcame the blocks in a few minutes. While we do not wish to advertise these methods, it is clear that there are many available that are both simple and require no additional software or programs.

While content owners may take the view that even slight obstructions will encourage compliance, there is still the problem of circumvention measures being taken by the operators of the online locations. Critically, as the ISPs only need to implement a DNS block on the domain names specified in the orders, if the operators of the target websites start using a domain name not mentioned in the orders, that new domain will not automatically be blocked.

This issue is fundamental to the practical effectiveness of the orders. Operators of the websites targeted in Roadshow and Universal Music have demonstrated that they have the knowledge and resources to make technological changes to their locations in order to circumvent the operation of site blocks in other jurisdictions. This combined with the ease at which users can overcome the blocks have many in the IT community believing that the blocks will deter only the most casual of downloaders.

In order to partially deal with this issue, in both decisions, the Court set out a regime for modifying the orders to capture the same websites appearing through different domain names. In short, the content owners must file and serve an affidavit setting out their good faith belief that the ‘online location’ the subject of the orders now operates from a new location. If the ISPs do not object to the new location being subject to the block, the Court may do so without a further hearing.

However, this is not the regime proposed by the content owners. In the United Kingdom, the equivalent provision of section 115A (being section 97A of the Copyright, Designs and Patents Act 1988) permits content owners to incorporate additional online locations simply by notifying ISPs in writing.¹⁸ Nicholas J refused to adopt this approach on the basis that a variation to an injunction ‘is a matter for the Court to determine in light of evidence’.¹⁹  Accordingly, the applicants in Roadshow are left with a fairly cumbersome and potentially prolonged method of ‘whack-a-mole’.

Where to from here?

There are indications that section 115A will come under more judicial scrutiny. Following Roadshow, some of the same applicants have commenced proceedings in respect of a whole new range of online locations.

Apart from obtaining a ‘rolling injunction’, the next frontier for content owners may be in relation to the ‘primary purpose’. Would a file sharing or streaming website that hosts licensed or public domain material and infringing content satisfy the definition? From the content owners’ perspective, the more websites that fall within the definition, the better. However, even if the content owners can continue these small victories, given the ease at which the blocks can be overcome the second reading speech for section 115A was correct: there is no silver bullet for online copyright infringement.

1 http://www.afr.com/technology/study-finds-almost-half-of-australian-digital-users-pirate-content-20150722-gihviv

2 Roadshow Films Pty Ltd v iiNet Ltd [2012] HCA 16

3 Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317

4 Dallas Buyers Club LLC v iiNet Limited (No 4) [2015] FCA 838 at [33]

5 [36]

6 [20]

7 [41]

8 [36]

9 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [97]

10 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [52]

11 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [40]

12 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [53]

13 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [149]

14 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [14]

15 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [15]

16 Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435

17 Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435 at [105]

18 Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 at [58]

19 Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [137]