Roadshow Films Pty Limited v Telstra Corporation Limited

THAWLEY J: 1 The applicants apply for an injunction under s 115A(1) of the Copyright Act 1968 (Cth). Subsections 115A(1) and (2) of the Act provide: 115A Injunctions relating to online locations outside Australia Application for an injunction (1) The owner of a copyright may apply to the Federal Court of Australia to grant an injunction that requires a carriage service provider to take such steps as the Court considers reasonable to disable access to an online location outside Australia that: (a) infringes, or facilitates an infringement, of the copyright; and (b) has the primary purpose or the primary effect of infringing, or facilitating an infringement, of copyright (whether or not in Australia). (2) The application under subsection (1) may also request that the injunction require an online search engine provider (other than a provider that is covered by a declaration under subsection (8B)) to take such steps as the Court considers reasonable so as not to provide a search result that refers users to the online location. 2 The applicants do not seek an injunction in terms contemplated by s 115A(2) to require an online search engine provider to take steps so as not to provide a search result that refers users to the online location. 3 Subsections (2A) and (2B) of s 115A provide: Granting the injunction (2A) The Court may grant the injunction in the terms, and subject to the conditions, that the Court considers appropriate. Note 1: For the matters that the Court may take into account when determining whether to grant the injunction, see subsection (5). Note 2: The terms and conditions of the injunction that apply to a carriage service provider under subsection (1) may be different from those that apply to an online search engine provider under subsection (2). (2B) Without limiting subsection (2A), the injunction may: (a) require the carriage service provider to take reasonable steps to do either or both of the following: (i) block domain names, URLs and IP addresses that provide access to the online location and that are specified in the injunction; (ii) block domain names, URLs and IP addresses that the carriage service provider and the owner of the copyright agree, in writing, have started to provide access to the online location after the injunction is made; and (b) require the online search engine provider to take reasonable steps to do either or both of the following: (i) not provide search results that include domain names, URLs and IP addresses that provide access to the online location and that are specified in the injunction; (ii) not provide search results that include domain names, URLs and IP addresses that the online search engine provider and the owner of the copyright agree, in writing, have started to provide access to the online location after the injunction is made. 4 The Court may grant an injunction under subsection (2A): (1) requiring a carriage service provider to take reasonable steps to block domain names, URLs and IP addresses that the carriage service provider and the owner of the copyright agree, in writing, have started to provide access to the online location after the injunction is granted: s 115A(2B)(a)(ii); (2) requiring an online search engine provider to take reasonable steps not to provide search results that include domain names, URLs and IP addresses that the online search engine provider and the owner of the copyright agree, in writing, have started to provide access to the online location after the injunction is made: s 115A(2B)(b)(ii). As the terms of s 115A(2A) and (2B) make clear, this procedure is only available where provided for in the injunction granted. The injunction sought by the applicants does not so provide; relief is not sought under s 115A(2B)(a)(ii) or (b)(ii). Nor does the injunction sought seek an order as contemplated by s 115A(2B)(b)(i). 5 The applicants do however seek orders as contemplated by s 115A(2B)(a)(i). 6 Leaving aside the fact that the orders sought by the applicants concern different online locations or websites, they are in a substantially similar form to those made in a number of previous applications under s 115A, including Roadshow Films Pty Ltd v Telstra Corporation Ltd (2016) 248 FCR 178 (Roadshow No 1), Roadshow Films Pty Ltd v Telstra Corporation Limited [2017] FCA 965 (Roadshow No 2); Roadshow Films Pty Limited v Telstra Corporation Limited [2018] FCA 582 (Roadshow No 3); Roadshow Films Pty Limited v Telstra Corporation Limited NSD 1246 of 2018 (Roadshow No 4); and Roadshow Films Pty Limited v Telstra Corporation Limited [2019] FCA 885 (Roadshow No 5). 7 The difference of substance is that the applicants seek a shorter timeframe within which to approach the Court to have the orders extended at the end of the initial period of operation compared to that ordered in the decisions just referred to.

THE PARTIES AND SERVICE 8 Subsections (3) and (4) of s 115A provide: Parties (3) The parties to an action under subsection (1) are: (a) the owner of the copyright; and (b) the carriage service provider; and (ba) if the application under subsection (1) also sought for the injunction to apply against an online search engine provider - the online search engine provider; and (c) the person who operates the online location if, but only if, that person makes an application to be joined as a party to the proceedings. Service (4) The owner of the copyright must notify: (a) the carriage service provider; and (aa) if the application under subsection (1) also sought for the injunction to apply against an online search engine provider - the online search engine provider; and (b) the person who operates the online location; of the making of an application under subsection (1), but the Court may dispense, on such terms as it sees fit, with the notice required to be sent under paragraph (b) if the Court is satisfied that the owner of the copyright is unable, despite reasonable efforts, to determine the identity or address of the person who operates the online location, or to send notices to that person.

The applicants 9 The applicants fall into three classes, the first two of which are owners of relevant copyright works: (1) The first to eighth applicants (Roadshow Applicants) are themselves or together with related corporations, engaged in the creation, distribution, licensing, and/or marketing of theatrical motion pictures, television programming, videos/DVDs, Blu-ray discs, digital downloads and related products throughout the world, including in Australia. (2) The ninth and tenth applicants (TVB Applicants) create, distribute, license and market Chinese television programs throughout the world, including in Australia. (3) The eleventh applicant (Madman) distributes, licenses and markets in Australia one of the motion pictures and television programs relevant to the proceedings, "Tokyo Ghoul, episode 1". On 18 June 2019, the Court granted leave for the application to proceed without joining the owner of that cinematograph film - cf: Australasian Performing Right Association Ltd v Telstra Corporation Ltd [2019] FCA 751 at [24] (Perram J); Universal Music Australia Pty Limited v TPG Internet Pty Ltd (2017) 126 IPR 219 at [48] to [51] (Burley J).]. ?

The respondents 10 Aside from the ninth respondent, against which orders are no longer sought, there are 52 respondents. Each has directly admitted, or an admission is implied from failure to respond to a Notice to Admit, that it is a carriage service provider. The respondents belong to five corporate groups: Telstra, Optus, Vocus (formerly M2), TPG and Vodafone. 11 The first to thirteenth (Telstra and Optus) and fiftieth to fifty-second respondents (Vodafone) have filed submitting appearances. The remaining respondents have filed nothing, but were served with the originating documents and have not sought to be heard in the proceedings.

The operators of the relevant websites 12 None of the operators of the relevant websites or online locations applied to be joined as a party to the proceedings and none sought to appear at the hearing. I am satisfied on the evidence adduced, which described attempts to identify and notify the persons who operated each of the relevant websites, that the applicants have made reasonable efforts to determine the identity of, and to contact to provide relevant notice to, the persons who operate the relevant websites. 13 I will refer in due course in more detail to one response received from an entity which did not seek to be joined or to appear, namely "twist.moe".

THE COPYRIGHT WORKS 14 As mentioned earlier, the applicants fall within three categories. Each group of applicants rely upon different copyright works. It is not necessary to list all of them. So far as concerns those relevant to the Roadshow applicants' application, a number are very well known and were relied upon in Roadshow No 1, Roadshow No 2, Roadshow No 4 and Roadshow No 5. So far as concerns those relevant to the TVB applicants' application, the copyright works are cinematograph films which were relied upon by the TVB applicants in Roadshow No 4. So far as concerns Madman's application, as mentioned, the copyright work is the cinematograph film Tokyo Ghoul (episode 1) which is exclusively licenced to Madman. 15 I accept that the first to tenth applicants have established subsistence and ownership of copyright. In that regard, s 126 of the Act provides: 126 Presumptions as to subsistence and ownership of copyright In an action brought by virtue of this Part: a) copyright shall be presumed to subsist in the work or other subject‑matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject‑matter; and b) where the subsistence of the copyright is established - the plaintiff shall be presumed to be the owner of the copyright if he or she claims to be the owner of the copyright and the defendant does not put in issue the question of his or her ownership. 16 In respect of the application of the Act, the applicants tendered as Exhibit 2, a list of signatories to the Berne Convention for the Protection of Literary and Artistic Works which identified both China and Japan as signatories. This is relevant to the operation of ss 90 and 184 of the Act and reg 4 of the Copyright (International Protection) Regulations 1969 (Cth). . 17 The evidence established, in addition to ownership of copyright, that consent had not been granted by the owners or, in the case of Madman, the exclusive licensee of the copyright works to the various owners and or operators of the online locations.

THE ONLINE LOCATIONS 18 Each applicant alleges that the relevant websites are online locations situated outside Australia and that they infringe, or facilitate the infringement of, copyright in cinematograph films owned by, or in the case of Madman exclusively licensed to, the applicants. 19 In the case of the Roadshow applicants, the online locations fall into three classes: (1) Linking: Linking Target Online Locations provide indexes of hyperlinks to content located elsewhere. The hyperlinks direct the user to a third-party site from which motion pictures and television programs can be streamed or downloaded. They often also have a search function, and sometimes they are curated to show top movies or television programs. (2) Streaming: Streaming Target Online Locations allow users to stream motion pictures and television programs directly. They have indexing and cataloguing functions. (3) Torrenting: Torrenting Target Online Locations provide access to torrent files or "magnet links" that allow users to connect to other users using a networking program. Two users of the program can directly access files on each other's hard drives without connecting through a central server. Torrent sites typically also have searchable indexes of content. 20 In the case of the TVB applicants, the online locations are either Linking or Streaming. In the case of Madman, the online locations are either Streaming or Torrenting. 21 The Target Online Locations are accessible at: (1) identified target uniform resource locations (Target URLs), which incorporate identified target domain names (Target Domain Names); and at (2) identified target internet protocol addresses (Target IP Addresses). 22 In the case of the Roadshow applicants, there are three types of Target Domain Names: (1) Primary Target Domain Names, which are the main locations that provide the functionality of which the applicants complain. (2) Secondary Target Domain Names, which redirect users to the relevant Primary Target Domain Names. (3) Mirror Target Domain Names, which are locations or websites that are substantially identical to other locations or websites, so that they appear to be the same website hosted on multiple domains simultaneously. 23 In the case of the TPV applicants and Madman, it is only the first two types of Target Domain Names which are relevant.

THE ONLINE LOCATIONS 24 Subsection (5A) of s 115A provides that, for the purposes of the proceeding, the online location is presumed to be outside Australia, unless the contrary is established. 25 The contrary was not established and I am satisfied that the presumption applies. 26 In any event, the applicants' solicitors performed WHOIS Lookup searches for each of the Target Domain Names and IP Addresses, yielding the following results: (1) IP Addresses: each search result indicated that the IP address was registered or created in a country other than Australia. (2) Domain Names: with the exception of two domain names relevant to the Roadshow applicants, each search result indicated that the Target Domain Name was registered in a country other than Australia. 27 With respect to the Target Domain Names "freemovieswatchonline.me" and "moviesub.is", the registrar of each domain name is an Australian company which did not respond to notice of the proceedings. However, the IP addresses of the relevant sites are in the United States of America. Mr Fraser, who is the Content Protection Investigations Manager for Australia and New Zealand for the Motion Picture Association of America, expressed the opinion that the country disclosed by a WHOIS Lookup search in respect of an IP address indicates where the computer server that hosts that website is located. The registrant of "freemovieswatchonline.me" is located in the Auckland district of New Zealand. The WHOIS Lookup search result for "moviesub.is" does not disclose the country in which the registrant of the domain name resides. 28 If the presumption in s 115A(5A) had not applied, I would have concluded on the basis of the evidence read on the application that each of the Target Online Locations is outside of Australia.

INFRINGEMENT OR FACILITATION OF INFRINGEMENT OF COPYRIGHT 29 Section 115A(1)(a) requires that the online location outside Australia infringes, or facilitates an infringement, of copyright. As to the meaning of "facilitates an infringement" of copyright, see: Roadshow No 1 at [47]; Universal Music Australia Pty Ltd v TPG Internet Pty Ltd (2017) 126 IPR 219 (Burley J) at [17]-[18]. 30 There was a significant amount of evidence adduced on the application. It is unnecessary to set out the evidence in detail. It can be summarised in respect of the infringement, or the facilitation of the infringement, of copyright in the following way. 31 Affidavit evidence from Mr Fraser (in relation to the Roadshow applicants), Mr Wu (in relation to the TVB applicants) and Mr Vagnoni and Mr Walsh (in relation to Madman) established that they were able to access and watch the various copyright works at each of the various Target Online Locations. 32 As mentioned earlier, the evidence also established that the relevant applicants had not licensed or consented to the owners or the operators of the Target Online Locations to copy or communicate the copyright works. 33 I am satisfied that each of the Target Online Locations infringes or facilitates the infringement of copyright in one or more of the relevant copyright works.

primary purpose or effect 34 Section 115A(1)(b) requires that the online location outside Australia which infringes, or facilitates an infringement, of copyright, "has the primary purpose or the primary effect of infringing, or facilitating an infringement, of copyright (whether or not in Australia)". 35 Mr Fraser visited each of the Roadshow Target Online Locations. Each of them provided simple access without charge online to motion pictures and television programs, without the applicants' permission. That was his observation as to the primary service offered by each location. Mr Fraser also recorded whether the location made available commercially available films other than Roadshow cinematograph films, observing that each location did, in large numbers. He also recorded that approximately half of the locations carried advertising (a matter I record now for convenience, but which is relevant to s 115A(5) to be addressed next). 36 When Mr Wu visited each of the TVB Target Online Locations, he observed that each of them provided simple access without charge online to motion pictures and television programs, without the applicants' permission. He observed that this was the primary service offered by each location. 37 Mr Wu also identified, on every location but one, a long list of motion pictures and television programs in which TVB owns copyright, other than the TVB cinematograph films relied upon for the purposes of this application. 38 The exception was, "dramawall.com", which carried only four such titles. However, on that website, Mr Wu also identified a number of films originating in the United States of America. Mr Stewart gives evidence that those films are owned by a number of the Roadshow applicants, and that the communication of those films to the public by "dramawall.com" is unauthorised. All but two of the websites carried advertising. 39 Mr Vagnoni visited each of the Madman Target Online Locations except "twist.moe". Each of them provided simple access without charge online to motion pictures and television programs. That was the primary service offered by each location, to his observation. Mr Walsh gave equivalent evidence in respect of "twist.moe". 40 Mr Vagnoni recorded that each of the locations made available motion pictures and television programs other than the Madman cinematograph film, including anime cinematograph films, the Australian copyright in which was owned by certain companies and had been licensed to Madman or an associated entity. Mr Walsh gave broadly similar evidence in relation to "twist.moe". 41 Mr Vagnoni and Mr Walsh recorded that most of the locations carried advertising. 42 I conclude that the Target Online Locations have the primary purpose or the primary effect of infringing or facilitating an infringement of copyright in commercially released cinematograph films.

MATTER TO BE TAKEN INTO ACCOUNT IN GRANTING AN INJUNCTION 43 Section 115A(5) relevantly provides: Matters to be taken into account (5) In determining whether to grant the injunction, the Court may take the following matters into account: (a) the flagrancy of the infringement, or the flagrancy of the facilitation of the infringement, as referred to in paragraph (1)(b); (b) whether the online location makes available or contains directories, indexes or categories of the means to infringe, or facilitate an infringement of, copyright; (c) whether the owner or operator of the online location demonstrates a disregard for copyright generally; (d) whether access to the online location has been disabled by orders from any court of another country or territory on the ground of or related to copyright infringement; (e) whether disabling access to the online location is a proportionate response in the circumstances; … (f) the impact on any person, or class of persons, likely to be affected by the grant of the injunction; (g) whether it is in the public interest to disable access to the online location; … (h) whether the owner of the copyright complied with subsection (4); (i) any other remedies available under this Act; (j) any other matter prescribed by the regulations; (k) any other relevant matter. 44 Having considered the matters listed in s 115A(5), I am satisfied that an injunction should be granted in the terms sought by the applicants against each of the respondents in respect of each of the Target Online Locations. The Target Online Locations infringe copyright flagrantly. They are simple to use, they offer large catalogues of infringing material and many of them display advertising to users. I infer that the owners or operators of the locations profit from the advertising. 45 All of the Target Online Locations but one (relevant to Madman) have directories, indexes or categories of motion pictures and television programs. 46 The owners or operators of the Target Online Locations display a disregard for copyright generally. Mr Fraser recorded that a number of the locations include statements about their copyright compliance practices, claiming to have a copyright infringement notification regime, or claiming that the site does not infringe copyright. The operators were, however, in substance unresponsive to notification about their infringing conduct. 47 The Target Online Locations are located outside of Australia. This limits the availability of alternative remedies. 48 There is no evidence that there will be any impact on any person or class of persons likely to be affected by the grant of the injunction, except that users will not be able to access infringing material, and the operators of the site will be deprived of visits by Australian users. 49 There was evidence from one of the applicants' solicitors referring to a number of orders made by courts and regulators of other countries and territories with the effect of requiring access to be disabled to a number of the Target Online Locations, either on the ground of, or related to, copyright infringement. A lengthy list of such orders was provided. In addition, there was a folder of foreign judgments which was tendered and admitted as Exhibit 3. 50 The position of one location should be mentioned in more detail. One of the Madman Target Online Locations, "twist.moe", is presently denying access to users whose IP addresses appear to be from Australia. The primary service this location offers is the ability to stream motion pictures and television programs. It makes available online the Madman cinematograph film, and other films owned by the anime licensors referred to earlier, simply and without charge. It has directories, indexes or categories of motion pictures and television programs. It displays statements concerning copyright compliance practices, claiming to have a copyright infringement notification regime, or claiming that it does not infringe copyright. 51 A person purporting to be the operator of "twist.moe" responded by email to the applicants' notice of the proceedings. It confirmed that they had been making the copyright works available on the website to the public free of charge, but that they had taken steps to deny access to users whose IP addresses appear to be from Australia. The email included: We respect the IP and Copyright Law, we believe that it is important that Applicants are able to protect themselves from unfair use of their hard work and material. We understand and recognize that it may seem unusual that we provided their material free of charge, but our intention has never been to cause harm or to cause the Applicants to lose out on their well deserved earnings … We have taken the necessary actions to block our domain from the Australian audience as requested, and to our knowledge, it should be no longer possible to access any of the material and domain mentioned in Australian land. It is important to be aware that when we block our Australian audience from accessing our website, that many of them would resort in searching for new free websites which would result in those visitors supporting fraudulent websites in generating revenue from our lost visitors. Even though we believe that this action would disadvantage the Applicants since they would assist these fraudulent websites in growing their audience instead of retaining them on a domain which has no intentions of generating revenue from those visitors, we will still comply with the actions as requested. … Since to our understanding, the requested actions have already been taken, we will not be appearing for the court hearing since we read and understood your statements. We also do not wish to be sitting in front of the court since we hope that we made our support already clear in writing. 52 The applicants' solicitors responded to that email indicating that this application would be pressed and advising the date of the final hearing and noting that the person could seek to appear at that hearing if they wished. 53 Mr Fraser's expert opinion was to the effect that blocking access to a website by refusing access to IP addresses known or assumed to be associated with particular countries is not an infallible means of denying access to users of the internet from those countries. That approach involves blocking access to IP addresses that appear to originate from, or to be assigned to, a particular country based on the blocking software's records of the relevant IP addresses. However, IP address assignment changes frequently, including between countries, which reduces the reliability of the approach. He gives evidence that it would be a simple matter for the operator of "twist.moe" to make that website available again to Australian users of the internet, nearly instantaneously, by checking a box. 54 The applicants submit that an order should be made now in relation to that site, rather than requiring them to apply to the Court afresh at some later date if access from Australia is re-enabled. If "twist.moe" intends to continue to block access to users whose IP addresses appear to be from Australia, then it is difficult to see why it would oppose the injunction which the applicants seek. In light of this and the fact that the purported owner in substance admits it is breaching copyright and expresses its support for the applicants' application, I conclude that making an order now in the terms sought is a proportionate response and is otherwise appropriate. 55 I am satisfied, having regard to the matters mentioned and the volume and flagrancy of the infringements and the facilitation of infringements, that disabling access to the various Target Online Locations is a proportionate response and that it is in the public interest.

CONCLUSION 56 As mentioned, the applicants seek a shorter timeframe in which to approach the Court to have the orders extended at the end of the initial period of operation than has been ordered in previous similar cases. The applicants submitted that blocked online locations or websites may change, including in response to the making of orders under s115A. The applicants submitted that a shorter period before expiry of the initial period would enable more up-to-date evidence to be provided as to the status of the blocked online locations when the Court comes to consider any application to extend the orders. Counsel who appeared for the applicants fairly noted that this would give the owners and operators of websites less time to respond if they so wished. However, in all the circumstances it seems to me that two months does provide sufficient time and it seems to me that it would operate to reduce the costs that might otherwise be incurred should notice have to be provided six months before the end of the three-year period. In those circumstances, in my view a two month period is adequate. I certify that the preceding fifty-six (56) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Thawley.