VID 87 of 2020 - the FreeTheFlag Website
5 This application only proceeded against Shopify. PayPal and Vodafone consented to orders which require them to provide preliminary discovery of the information Flagworld sought. I am satisfied that it is also appropriate to make an order for preliminary discovery against Shopify.
6 First, having regard to the affidavit of Edward Tak-Wah Ngai, an employee solicitor with CBL Business Lawyers (CBL), affirmed 13 February 2020 I am satisfied that Flagworld may have a right to obtain relief for breach of copyright against the prospective respondent(s), being the persons or entities operating the FreeTheFlag Website. In summary he deposes that:
(a) in 1997 the Court declared Mr Thomas to be the author of the design of the Aboriginal Flag and that he was the owner of copyright subsisting in that artistic work;
(b) by an agreement, originally made between Mr Thomas and Flagworld in 1998, Flagworld was granted an exclusive licence to reproduce or authorise the reproduction of the design of the Aboriginal Flag on flags, pennants, banners and bunting and to manufacture, promote, advertise and sell such products. By successive agreements made between Flagworld and Mr Thomas in June 2000, April 2004 and September 2005, the term of the licence has been extended to the present time;
(c) the FreeTheFlag Website offers flags for sale titled "Aboriginal Australia Flag" and "Free the Flag, Flag". They are in the same colours as the Aboriginal Flag, with the upper half being black, the lower half being red and a yellow shape in the middle. They are not identical to the Aboriginal Flag as the yellow shape in the centre is an outline of a map of Australia, as opposed to the Aboriginal Flag which has a yellow circle in the centre. On the "Free the Flag, Flag" the words "Free the Flag" appear in writing within the map of Australia. Images of the "Aboriginal Australia Flag" and the "Free the Flag, Flag" appear below:
(d) in September 2019 Mr Ngai made an online purchase of an "Aboriginal Australia Flag" on the FreeTheFlag Website (the trap purchase). He exhibits screenshots from the website which describe Carl Ellis as the Managing Director of "Free the Flag" and display a photograph of him. Subsequently, Mr Ellis corresponded by email with CBL in relation to the trap purchase; and
(e) on 23 October 2019 CBL sent a letter of demand to info@freetheflag.net which asserted that the flags advertised for sale on the FreeTheFlag Website bear a design which is a derivation of and substantially similar to the design of the Aboriginal Flag, and therefore in breach of Flagworld's exclusive licence. There was no response to the letter.
7 To succeed in an application for preliminary discovery under r 7.22, Flagworld is not required to demonstrate the existence of a prima facie case of copyright infringement against the prospective respondent or respondents; it is enough if the prospective applicant can show that he or she may have a right to obtain that relief: Hooper v Kirella at [33].
8 It is undesirable that I express any firm view about the prospects of Flagworld's intended action for copyright infringement. The "Aboriginal Australia Flag" and the "Free the Flag, Flag" are not the same as the Aboriginal Flag, but that does not show that Flagworld may not have a right to obtain relief. To establish that its copyright has been infringed it is enough for Flagworld to show a sufficient degree of objective similarity and a causal connection between the allegedly infringing products and the Aboriginal Flag: SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1885) 159 CLR 466 at 472 per Gibbs CJ, with whom Mason and Brennan JJ agreed. In my view the materials show a cause of action known to the law and a real prospect of the grant of some remedy, which is sufficient for a grant of preliminary discovery: Allphones Retail Pty Ltd v Australian Competition and Consumer Commission [2009] FCA 980; (2009) 259 ALR 354 (Allphones v ACCC) (Foster J) at [54].
9 Second, I am satisfied that Flagworld has made reasonable inquiries and taken other steps reasonably required in the circumstances to ascertain the description of Free the Flag or those controlling its website, but has been unable to do so. The evidence shows that:
(a) having regard to the searches described in the second affidavit of Mr Ngai affirmed on 10 March 2020, Free the Flag and like names are not registered as business names or corporations and do not have a registered office or address. Schedule 1 to the Rules provides that "description" means for a person who is an individual, the person's name, residential or business address and occupation. For a person that is not an individual, it means the person's name, and the address of either the person's registered office, principal office or principal place of business. Flagworld obtained Mr Ellis' name and position description from the website but it has no further details and it has not been able to ascertain the prospective respondent's residential or business address, principal office or principal place of business, nor the residential address and occupation of any other controlling mind(s);
(b) Flagworld conducted a historical ASIC search for the name "Carl Ellis", and then engaged a private investigator to confirm whether the individual ascertained through those searches was the same person that appears on the FreeTheFlag Website. As it eventuated, he was not;
(c) the private investigator located a mobile telephone number for Mr Ellis, but was unable to ascertain his residential or business address. Flagworld has now obtained consent orders requiring Vodafone to provide the name, email address, postal address and any other address which to its knowledge belongs to the person or entity that is the holder of that mobile telephone number;
(d) Mr Ngai tried to ascertain the name and address, either residential or business, of Free the Flag and/or Mr Ellis by telephoning the Chinese company which shipped the trap purchase to him. However, his telephone call went unanswered; and
(e) Flagworld has now obtained consent orders requiring Paypal to provide the name, address, telephone number and email address of any person authorised to use the "Flyy Flags" account which received the payment for the trap purchase.
10 Third, Mr Ngai deposes that his firm conducted a domain search of "www.freetheflag.net" and ascertained that the registrar of that domain is Tucows Domains Inc. He then conducted a search on the Tucows Domains website to locate the provider for the FreeTheFlag Website. He ascertained from that search that the provider for that website is Shopify. He exhibits Shopify's privacy policy which states that it collects merchants' "name, company name, address, email address, phone number(s) and payment details."
11 Given its privacy policy, Shopify is likely to have or have had control of a document or thing that would help ascertain the description of the prescriptive respondent(s). Flagworld has not contacted Shopify and asked it to provide the name, residential address and business address of its clients, but I accept Flagworld's submission that it is unlikely that Shopify would have agreed to do so absent a court order compelling such production. I am confirmed in this view by the fact that, having been served with this proceeding, Shopify has not agreed to supply the identifying information.
12 Flagworld has satisfied the requirements for an order for preliminary discovery against Shopify, and I have made an order accordingly.