In December 2016, Australia’s Federal Court ordered Internet Service Providers (ISPs) to block consumers from accessing a number of websites which infringe copyright, including The Pirate Bay, Torrentz, TorrentHound, IsoHunt and SolarMovie. Village Roadshow and Foxtel brought the case with the support of Hollywood studios including Disney, 21st Century Fox, Paramount, Columbia, Universal and Warner Bros. They targeted a long list of ISPs in Australia including Telstra, Optus, TPG and M2.

The landmark case was the first time the new piracy laws the government enacted in 2015 were successfully used in court. Below, we summarise the Court’s findings in Roadshow Films Pty Ltd v Telstra Corporation [2016] FCA 1503 and the implications for consumers and copyright holders.

The New Legislation

Section 115A of the Copyright Act 1968 (Cth) (the Act) states that the Federal Court may grant an injunction against carriage service providers who provide access to websites outside Australia if:

  1. the carriage service provider provides access to a website outside Australia;
  2. the website infringes, or facilitates infringement of, copyright; and
  3. the primary purpose of the website is to infringe or facilitate infringement of copyright.

The section also sets out some matters the court may take into account, including:

  • the flagrancy of the infringement;
  • whether the website has directories, indexes or categories;
  • whether the operator of the website has a general disregard for copyright generally;
  • whether another country has disabled the website;
  • whether disabling access is a proportionate response;
  • the impact on people likely to be affected; and
  • public interest.

A court granting an order under this section does not need to take into account any element of knowledge or intention on the part of the carriage service provider. Further, the Act does not provide for what would happen to users who attempt to access a blocked site.

The Court’s Decision

The issue, in this case, was not whether the Court should grant an injunction under section 115A but the terms and who should pay the associated costs. The Court was firm in its decision to block the pirate websites, stating that the sites had shown “a blatant and willful disregard for the rights of copyright owners”. The Court further noted that other jurisdictions had made blocking orders against these sites and as such, it was appropriate to grant an injunction under section 115A.

Consequently, the Court ordered that the ISPs must move to block the websites within 15 days. As part of the block, any user who lands on a blocked site during this period will be automatically redirected to a landing page setting out the reasons for which the site was blocked. The block will remain in place for three years, before which Foxtel and Village Roadshow may apply to the Court again to continue the block if the websites are still infringing copyright.

Contentious Issues

While the Court was not concerned with whether it should grant the injunction, there are two significant issues which we’ve set out below.

1. Extending the Scope of the Injunction

Village Roadshow and the other applicants had asked for an order permitting them to extend the scope of any website blocking to domain names, IP addresses and URLs not presently specified in the case by giving written notice to the ISPs, and without having to obtain a further order of the Court. 

The ISPs objected, and the Court agreed with their objection. Whether the Court should vary the terms of any injunction was a matter for the Court to determine in light of the evidence. Applicants should obtain a further court order for any new domain names, URLs or IP addresses.

2. Compliance Costs

The second main issue was the payment of compliance costs. The ISPs argued that the costs and inconvenience involved in following the Court orders outlined would be excessive or disproportionate. Village Roadshow had proposed the ISPs bear all their own costs of complying with the website blocks, which all the ISPs opposed. Telstra sought to recover any costs it incurred in configuring and setting up a system to comply with the Court’s orders.

However, the Court stated that it was essential an ISP possess the technical capacity to comply with any injunction if an action was brought under section 115A and that any set-up costs would fall under the general “cost of carrying on a business”. 

Despite this, the Court agreed that Village Roadshow and the other applicants should be required to pay part of the respondents’ compliance costs, and ultimately ruled that the copyright holder will have to pay $50 to the ISPs for every domain blocked.

Future of Pirate Blocking

The case reflects the ongoing battle between copyright holders and pirate users and shows a significant step towards taking a stand against online piracy. Very shortly, users who visit the sites targeted in this case will only see a warning page stating that they cannot access the site because it infringes copyright. 

Media corporations are still looking for additional ways to reduce piracy. For example, Foxtel has stated that in addition to prosecuting those who were pirating on a commercial basis, it may also progress with legal action against people who were not pirating on a commercial basis. Foxtel is further considering implementing a three strikes system where they warn users about obtaining content from copyright infringing sites.

Most notably, the music industry’s case to have the site Kickass Torrents blocked is still pending. However, in light of the Federal Court’s ruling in Roadshow Films Pty Ltd v Telstra Corporation, it seems likely that it may also be blocked.

Key Takeaways

The case shows the tide turning against piracy and websites that provide access to pirated material. In particular, copyright holders and users should keep in mind the following:

  1. The Court has successfully granted an injunction to block pirated websites, which is likely to set up a precedent for similar cases;
  2. The Court, so far, has ruled against expanding the scope of the injunction to allow copyright holders to force ISPs to block websites without getting a court order; and
  3. Copyright holders may be expected to contribute towards compliance costs.

If you have any questions or need assistance enforcing your copyright, get in touch with our IP lawyers on 1300 544 755.

Lianne Tan

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