International Wushu Federation v Google LLC

introduction 1 The prospective applicant, the International Wushu Federation (IWUF), by originating motion pursuant to r 7.22 of the Federal Court Rules 2011 (Cth) (FCR), seeks an order that the prospective respondent, Google LLC (Google), the owner of the YouTube video platform, make preliminary discovery of all documents in its control relating to the description of the owner or operator of the Wushuleaks Channel on Youtube (Wushuleaks Channel). 2 IWUF is considering commencing proceedings against the operator of the Wushuleaks Channel for infringement under ss 36 and 101 of the Copyright Act 1968 (Cth) and for defamation, but contends that it does not have sufficient information to ascertain the identity of the operator of the Wushuleaks Channel in order to seek relief. 3 IWUF relies upon the following affidavits in support of its application for preliminary discovery: (a) Walter Patrick Missingham, the current Vice President of IWUF, affirmed 7 May 2021; (b) Paul Francis Horvath, IWUF's solicitor, sworn on 13 May 2021; (c) Paul Francis Horvath dated 20 July 2021 (and adopted in Court on 27 July 2021); and (d) Paul Francis Horvath filed on 26 July 2021 (and adopted in Court on 27 July 2021). 4 Due to the Victorian Covid-19 restrictions in place at the time, the hearing of the application took place over Microsoft Teams. 5 On 4 June 2021, Justice Beach made orders granting IWUF leave pursuant to r 10.43 to serve the originating application and supporting material on Google in the US. 6 Google was served with the originating application and supporting material in accordance with the orders of Justice Beach on 15 June 2021. An email attaching the documents was also sent to Google on 8 June 2021. Google has filed no appearance in the proceeding. 7 IWUF relies on correspondence with Google, including three emails from Google dated 24 June 2021, 9 July 2021 and 24 July 2021 in which Google acknowledged receipt of the originating application and supporting material and noted that it did not intend to appear in the proceedings, nor submit to the jurisdiction of the Court. Google further noted that if an acceptable form of orders could be agreed, it would be prepared to comply with those orders on a voluntary basis. 8 On 21 July 2021, IWUF filed written submissions in support of its application. Annexure A to those submissions (Annexure A) sets out the form of preliminary discovery orders sought by IWUF. 9 On 23 July 2021, IWUF's solicitors emailed Google a copy of IWUF's written submissions together with Annexure A, and the second affidavit of Mr Horvath dated 20 July 2021 with its annexures. On 24 July 2021, Google replied that the orders as drafted were acceptable and that it did not object to the order in that form. 10 FCR r 7.22 relevantly provides: 7.22 Order for discovery to ascertain description of respondent (1) A prospective applicant may apply to the Court for an order under subrule (2) if the prospective applicant satisfies the Court that: (a) there may be a right for the prospective applicant to obtain relief against a prospective respondent; and (b) the prospective applicant is unable to ascertain the description of the prospective respondent; and (c) another person (the other person): (i) knows or is likely to know the prospective respondent's description; or (ii) has, or is likely to have, or has had, or is likely to have had, control of a document that would help ascertain the prospective respondent's description. (2) If the Court is satisfied of the matters mentioned in subrule (1), the Court may order the other person: (a) to attend before the Court to be examined orally only about the prospective respondent's description; and (b) to produce to the Court at that examination any document or thing in the person's control relating to the prospective respondent's description; and (c) to give discovery to the prospective applicant of all documents that are or have been in the person's control relating to the prospective respondent's description. 11 In order to obtain an order for preliminary discovery pursuant to r 7.22, IWUF must satisfy the Court that it may have a right to obtain relief against a prospective respondent; that despite making reasonable efforts it cannot identify the prospective respondent; and that another person, in this case Google, knows or is likely to know the identity of that person or have a document which reveals it. 12 In addition, the definition of "prospective applicant" in FCR r 7.21 as a person who "reasonably believes that there may be a right for the person to obtain relief against another person who is not presently a party to a proceeding in the Court" means that IWUF must possess such a belief and that belief must be reasonable: Dallas Buyers Club LLC v iiNet Ltd (2015) 245 FCR 129 at [52] (Perram J).

The Evidence 13 Mr Missingham gives evidence that IWUF is the governing body for wushu worldwide. Traditional wushu is commonly known as Kung Fu and is a martial art originating in China designed for self-defence and as an art of war. IWUF was established on 3 October 1990 and registered in Lausanne in Switzerland as a not-for-profit organisation. 14 IWUF is recognised by the International Olympic Committee as the sole worldwide governing authority for wushu in all its forms. IWUF is also a member of both the Association of IOC Recognised International Sports Federations and the Global Association of International Sports Federations. 15 IWUF has 155 national/territorial members across five continents, including the Oceania Kung Fu Wushu Federation (OKWF) of which Mr Missingham is, and has been since 2015, the President. The OKWF has been in existence since 1998 and represents eleven Oceania countries, including Australia. 16 The aims of IWUF as set out in its Constitution include, amongst others, to: (a) promote and encourage the development and practice of wushu in all of its manifestations throughout the world; (b) organise and approve international wushu competitions and activities and to formulate standards for approval and certifying of international wushu judges and coaches; (c) promote cooperation, friendly relations and mutual understanding among its members; (d) actively promote and popularise wushu and improve health worldwide through its practice; and (e) respect the principles of democracy, equality and harmony within the sport of wushu. 17 IWUF has oversight and control over all official wushu competitions conducted throughout the world. The IWUF constitution provides that IWUF owns all rights relating to the IWUF name, domain name, emblem, flag and anthem, and IWUF organised and/or sanctioned competitions and activities including all rights relating to their organisation, exploitation, broadcasting, recording, representation, reproduction, access and dissemination in any form and by any means or mechanism. IWUF is also the owner of all media rights to IWUF events, including all television, radio, film, internet and other media rights. 18 Mr Horvath's evidence is that IWUF is the ultimate holder of copyright and intellectual property rights associated with competitions, demonstrations and classes teaching wushu around the world. This includes ownership of copyright in photographs and footage of competitions, marketing and advertising materials and educational materials and manuals. 19 Mr Missingham gives evidence that in late 2019 he became aware of a channel on the YouTube platform named Wushuleaks. He gives 24 examples of videos posted on the Wushuleaks Channel between October 2019 and August 2020, which were viewed and downloaded in Australia and which he says reproduce copyright works of IWUF and contain statements which are defamatory. The Wushuleaks Channel provides no contact details for its operator and has no private messaging facility by which to contact the operator. 20 The subject matter in which IWUF asserts copyright subsists are described by Mr Missingham to include cinematograph films and artistic works, being footage and photographs filmed and taken by IWUF of IWUF competitions and judging programs. Mr Missingham states the Wushuleaks Channel is not authorised by IWUF to reproduce any of the IWUF copyright works. 21 Mr Missingham sets out transcripts of material from the videos posted on the Wushuleaks Channel. IWUF contends that the videos contain commentary that carries imputations that IWUF is a corrupt organisation, that it manipulated competition results and that it corruptly accepts payments for favours and is involved in match fixing. Each of these are submitted to be imputations which would tend to lower the IWUF's reputation in the eyes of reasonable members of the community. 22 Mr Horvath gives evidence that in order to create and operate a YouTube channel a user must sign in to the YouTube service by providing identifying details such as an email address, name and date of birth. 23 Mr Horvath gives evidence of IWUF's unsuccessful attempts to ascertain the identity of the Wushuleaks Channel through correspondence with Google.

The prospective applicant may have a right to obtain relief 24 IWUF contends that it may have a right to obtain relief against a prospective respondent for infringement of copyright in certain copyright works of which IWUF is the copyright owner, and for defamation. IWUF submits that the proceedings contemplated by it against the operator of the Wushuleaks Channel for breach of copyright and defamation have prospects of success and are not merely speculative. 25 IWUF does not need to establish the existence of a prima facie case against a prospective respondent. It is enough if IWUF can show that it may have a right to obtain relief. This threshold has been described as "not onerous": Kulkulka v Google LLC [2020] FCA 1229 at [22]. 26 The foreshadowed claim must have some prospect of succeeding, in that it must be a claim within the jurisdiction of this court and which is not so near to being hopeless as would reasonably and properly justify the claim being described as "merely speculative" (Allphones Retail Pty Ltd v Australian Competition and Consumer Commission (2009) 259 ALR 354 (Allphones) at [54] (Foster J)). Success in this context requires a cause of action known to the law which has a real (as opposed to fanciful) prospect that some remedy might be granted: Allphones at [54], Hooper v Kirella Pty Ltd (1999) 96 FCR 1 at [31] to [34] (Wilcox, Sackville and Katz JJ). 27 Sections 36 and 101 of the Copyright Act 1968 (Cth) relate to copyright infringement of works and subject matter other than works. Copyright in works and subject matter other than works is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright. 28 IWUF contends that it is the owner of copyright subsisting in the IWUF material it says is infringed, and that the Court should be satisfied that it may have a right to obtain relief for copyright infringement against another person who is not a presently a party to this proceeding, the operator of the Wushleaks Channel for the unauthorised reproduction of that material. 29 IWUF further contends that it is reasonable for IWUF to believe that it has a right to obtain relief for copyright infringement from the operator of the Wushuleaks Channel. 30 This Court has jurisdiction to hear a prospective claim in relation to the infringement of IWUF's copyright as a result of ss 115 and 131C of the Copyright Act 1968 (Cth). 31 It is unnecessary and undesirable to undertake a detailed consideration of the merits of the proposed claims for relief in this application. It is sufficient for this application that I am satisfied on the material before the Court that IWUF may have a claim for relief for copyright infringement against the operator of the Wushuleaks Channel in respect of the unauthorised reproduction of its copyright material including its footage and photographs. I am also satisfied that, on the basis of the evidence given by Mr Missingham, IWUF holds a reasonable belief in this respect. 32 IWUF also contends that it is reasonable to believe that it has a right to obtain relief against the operator of the Wushuleaks Channel for posting defamatory material. 33 IWUF contends that the material in the videos published on the Wushuleaks Channel contain commentary that carries imputations that, amongst others, IWUF is a corrupt organisation, that it manipulated competition results, that it corruptly accepts payments for favours and is involved in match fixing. IWUF alleges that each of these are imputations which would tend to damage IWUF's reputation. 34 From the material before the Court it can be accepted that IWUF may be able to show that the commentary in the videos posted on the Wushuleaks Channel carries the imputations alleged and that they may tend to lower the IWUF's reputation in the eyes of reasonable members of the community. I am satisfied, on the basis of the material set out in Mr Missingham's affidavit, that there may be a right for IWUF to obtain relief in relation to the commentary in the videos posted on the Wushuleaks Channel. I am also satisfied on the same basis that IWUF holds a reasonable belief in this respect. 35 It then needs to be considered whether this Court has jurisdiction to hear IWUF's prospective defamation claim. 36 A comprehensive review of the sources of jurisdiction of this Court was set out in Rana v Google Inc (2017) 254 FCR 1 (Rana) at [15] to [24] (Allsop CJ, Besanko and White JJ). The Court in Rana states (at [24]) that s 9(3) of the Jurisdiction of Courts (Cross-Vesting) Act 1987 (Cth) has the effect of conferring jurisdiction on this Court with respect to a proceeding that would be within the jurisdiction of the ACT or NT Supreme Courts. 37 Chapter 9 of the Civil Law (Wrongs) Act 2002 (ACT) implements the uniform defamation laws which apply in every state and territory. Rana makes it plain that if there is publication of a defamatory statement in the ACT, this Court has jurisdiction in respect of it: Boyd v Automattic Inc [2019] FCA 86 at [45]. 38 Ordinarily, a defamatory statement made online is taken to be "published" for the purposes of an action in defamation when and where it is downloaded: Dow Jones & Company Inc v Gutnick (2002) 210 CLR 575 at [44] (Gleeson CJ, McHugh, Gummow and Hayne JJ). Given the ability of viewing or downloading the videos on the Wushuleaks Channel by members of the Australian public, such as Mr Missingham, it is reasonable to infer that they could have been viewed or downloaded by people in the ACT and NT. At any substantive hearing, IWUF would need to lead evidence to this effect. However, for the purposes of this application, I am satisfied that the Court is likely to have jurisdiction to hear the prospective claim. 39 IWUF is registered as a not-for-profit organisation and as such is an "excluded corporation" within the meaning of s 121 of the Civil Law (Wrongs) Act 2002 (ACT) (and its analogues) and able to seek relief for defamation. 40 I am satisfied that IWUF may also be able to bring proceedings for defamation in this Court.

The prospective applicant is unable to ascertain the description of the prospective respondent 41 It is apparent from the evidence that IWUF is unable to ascertain the description of the operator of the Wushuleaks channel on the material available to it. 42 The term "description" is defined in the schedule to the FCR to mean for an individual, "the person's name, residential or business address and occupation" and for a person not an individual, "their name and the address of their registered office, principal office or principal place of business". 43 Whilst FCR r 7.22 does not expressly require that a prospective applicant has made reasonable inquiries, the authorities have taken that to be an implicit requirement: Siemens Industry Software Inc v Telstra Corporation Ltd [2020] FCA 901 at [27]. 44 Mr Missingham and Mr Horvath give evidence of the lack of contact details or private messaging facility on the Wushuleaks Channel, and the attempts made by IWUF to ascertain the identity of the operator of the Wushuleaks channel. The attempts comprised email correspondence with Google, culminating in Google advising that it would not provide the information sought by IWUF unless it was ordered to do so by a court. As noted above, in further correspondence after service of the originating application and supporting material, Google advised that it would be prepared to comply with orders for the discovery of the documents in the form of Annexure A on a voluntary basis. Google also advised that if orders in the form of Annexure A were made it did not intend to seek costs from IWUF. 45 I am satisfied that IWUF has made reasonable inquiries to ascertain the identity of the prospective respondent, the operator of the Wushuleaks Channel, and that those enquiries have not been successful.

Google has, or is likely to have control of a document that would help ascertain the prospective respondent's description 46 I am satisfied on the evidence that it is likely that Google has, or has had control of a document that would assist IWUF to ascertain the description of the prospective respondent, the operator of the Wushuleaks Channel. 47 The evidence is that in order to create and operate a YouTube channel a user must sign in to the YouTube service by providing identifying details such as an email address, name and date of birth. It is therefore to be expected that Google, the owner and operator of the YouTube video platform, would have a record of the identifying sign in details of YouTube channel operators. Google is likely to have control of documents that would help IWUF ascertain the identity of the operator of the Wushuleaks Channel. This inference is supported by the fact that Google has not objected to the form of proposed orders 1(a) and (b) and has consented to provide discovery of the documents set out in the proposed orders in Annexure A on a voluntary basis, suggesting that it has documents of the kind sought in the proposed orders in its control. 48 Each of the requirements under FCR r 7.22 has been satisfied. In all the circumstances it is appropriate to make orders for discovery in the form set out in Annexure A. I certify that the preceding forty-eight (48) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.