On 15 December 2016, applicants including Foxtel and Roadshow Films were successful in obtaining the first site blocking orders from the Federal Court in respect of SolarMovie, The Pirate Bay, TorrentHound, IsoHunt, Torrtentz (Sites) under the newly introduced section 115A of the Copyright Act 1968 (Cth) (Act) (s115A).
The elements of s115A
The key requirements to be satisfied before the Court will grant a site blocking injunction are:
- the respondent carriage service provider provides access to an online location (eg. a website) outside Australia;
- the primary purpose of the online location is to infringe, or facilitate the infringement of, the applicant’s copyright; and
- the online location infringes, or facilitates the infringement of, the applicant’s copyright.
It is important to note that s115A does not require any fault (or even knowledge) on the part of carriage service providers for the remedies to apply if these requirements are satisfied.
The existence of copyright in the films and television shows was not contested by any of the respondents, so the applicants were able to rely on the presumptions in s126 of the Act.
Key learnings from the judgment:
- While Nicholas J was satisfied that the proxy servers referred to in the evidence for this case were all situated outside Australia, it remains unclear whether s115A will enable an order to be granted in respect of a proxy server located in Australia even though it is a mere conduit for communications between an online location located outside Australia and internet users in Australia;
- an online location will infringe copyright in a cinematograph film for the purposes of s115A if it performs any of the acts referred to in s86 of the Act without the licence of the copyright owner. This includes making a copy of the film available online, or electronically transmitting a copy of the film;
- an online location will facilitate the infringement of copyright if it makes it easier, or less difficult, to infringe copyright. For example, a website could facilitate infringement by making it easier for a user to determine the existence or whereabouts of another online location that itself infringes copyright;
- there is an intentionally high threshold in determining whether the primary purpose of the online location is to infringe copyright, or facilitate the infringement of copyright, as this acts as a safeguard against potential abuse of s115A. Nicholas J referred to the Revised Explanatory Memorandum, including that the primary purpose test directs the Court to ‘consider the principal activity for which the online location exists and the principal intention of the users of that online location’. Accordingly, if the principal activity for which the website is used (or designed to be used) is to infringe, or facilitate the infringement of, copyright, this element of the test will be satisfied; and
- in exercising his discretion, Nicholas J particularly considered:
- matters such as the flagrancy of disregard for the rights of copyright owners and whether the Sites were the subject of similar orders in other jurisdictions including the UK; and
- that the requirements of s115A must be satisfied at the time of granting the injunction. However, it will not be fatal if a respondent carriage service provider is not providing access to the online location at the moment in time that the injunction is granted, or if the website is not infringing or facilitating the infringement of copyright at the moment the injunction is granted. In relation to the SolarMovies website, for example, Nicholas J considered there was a substantial risk that the inactivity was merely temporary.
Consequences of the injunctions
- The respondent carriage service providers (including Telstra and Optus) have 15 business days from the date of the order to disable access to the Sites. Nicholas J found that in circumstances where each of the respondents proposes to use DNS blocking, it is appropriate to settle a uniform amount for compliance costs to be paid by the applicants to the respondents, being $50 per domain name;
- after the block is implemented, any user seeking to access a Site will be redirected to a holding page which informs the user that the website has been disabled because the Court has determined that it infringes, or facilitates the infringement of, copyright. The respondent carriage service providers can determine whether they will host the page themselves, or redirect users to a page hosted by the applicant; and
- the orders are effective for 3 years. While they do not automatically apply to any new domain name that the Sites move to, the applicants can apply to the Court (by way of affidavit and proposed short minutes of order) to vary the orders to include a different domain name.
This article was written by John Gray, Partner and Rebecca Lindhout, Senior Associate.