Roadshow Films Pty Limited v Telstra Limited

INTRODUCTION 1 This is an application for orders under s 115A of the Copyright Act 1968 (Cth) including site blocking and ancillary orders in respect of Target Online Locations (as defined in the applicants' proposed orders). Most of the Target Online Locations are accessible via one or more domain names (Target Domain Names), URLs (Target URLs) and IP addresses (Target IP Addresses). The relevant copyright works are cinematograph films. 2 The applicants move on a further amended originating application and further amended statement of claim, copies of which were handed up in Court with an undertaking that the documents would be filed immediately following the hearing. By these amended documents, the applicants abandoned their claims for relief in respect of three inactive New Target Domain Names (in respect of which the evidence was deficient) and against two entities in the Optus respondent group, Vaya Pty Ltd and Vaya Communications Pty Ltd (previously identified as the 11th and 12th respondents) who are no longer carriage service providers. These party designations are not used in the final iteration of the documents that will be filed. 3 This proceeding is the latest in a line of proceedings which commenced with Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503; 248 FCR 178 (NSD 239 of 2016) (Roadshow No 1) which I will refer to collectively as the Roadshow Proceedings. The applicants seek orders substantially in the same form as the orders made in Roadshow Films Pty Limited v Telstra Limited [2024] FCA 246; 178 IPR 231 (Roadshow No 14) and Roadshow Films Pty Ltd v Telstra Limited [2024] FCA 485 (Roadshow No 15). In these reasons I have assumed familiarity with the decisions in the earlier Roadshow Proceedings to which I refer.

THE PARTIES 4 The applicants are producers and/or distributors of commercially released motion pictures and television programs throughout the world, including Australia. Largely the same groups of applicants and copyright works as were relevant in the previous Roadshow Proceedings are involved and/or relevant to this application. The exception is the 11th applicant, Viacom International Inc., which is part of the same corporate group as the fourth applicant, Paramount Pictures Corporation. Viacom is relevantly the owner of copyright in five cinematograph films (television series episodes) that have not been previously relied on in the Roadshow Proceedings, but which are relevant to this application. 5 The applicants were represented at the hearing by Ms F St John of counsel, instructed by Baker McKenzie. In advance of today's hearing, I was grateful to receive detailed written submissions carefully referenced to the evidence on which the applicants intended to rely. The written submissions were updated at the hearing and supplemented by oral submissions. 6 The respondents are carriage service providers within the definition in s 87 of the Telecommunications Act 1997 (Cth). They are the same groups of respondents as in previous Roadshow Proceedings. The respondent groups are: Telstra Limited (first respondent); Optus (second to 10th respondents); Vocus (13th to 27th respondents); TPG (28th to 46th respondents); Vodafone (47th and 48th respondents); and Aussie Broadband Limited (49th respondent). Telstra, Aussie Broadband and the Optus, TPG and Vodafone respondent groups have filed submitting appearances. The Vocus respondents have been served but have not appeared or sought to be heard. 7 When the matter was called for hearing, including outside the Courtroom, there was no appearance on behalf of any of the respondents.

EVIDENCE 8 The applicants read the following affidavits: (1) Andrew Gavin Stewart (solicitor for the applicants) affirmed 2 December 2024, save for paragraph 43 and pages 105 to 107 of the Annexure marked AGS-1 which were not read; (2) Min Sung Choo (solicitor for the applicants) affirmed 8 November 2024; and (3) Min Sung Choo affirmed 2 December 2024. 9 The applicants tendered Exhibit MC-2 to Ms Choo's first affidavit which was a USB portable hard drive disk containing videos of examples of certain Target Online Locations and Target Domain Names. The applicants handed up an aide memoire as an accompaniment to Exhibit MC-2 which comprised a table which included screenshots taken from the videos accompanied by descriptions in the form of supplemental submissions. 10 The applicants also tendered a list of signatories to the Berne Convention for the Protection of Literary and Artistic Works as at 1 August 2023.

LEGISLATIVE FRAMEWORK AND APPLICABLE PRINCIPLES 11 The legislative framework and applicable principles have been set out in a number of the Roadshow Proceedings. I will not repeat the relevant framework and applicable principles here. I gratefully adopt and apply the principles set out in Roadshow No 1 at [25]-[26] (Nicholas J) as supplemented by Burley J in Roadshow Films Pty Limited v Telstra Corporation Limited (Extension of Orders) [2023] FCA 1167 at [7]-[12] and Halley J in Roadshow No 15 at [12]-[13] and [23].

CONSIDERATION 12 Based on the evidence led, and applying the principles identified in the Roadshow authorities to which I have referred, I am satisfied that the applicants have established: (1) service of the proceedings and other documents on the respondents, or that sufficient steps have been taken to bring the proceedings to the attention of the respondents; (2) the respondents' status as carriage service providers (s 115A(1)); (3) the Target IP Address of the Target Online Locations, as those terms are defined in the orders sought; (4) infringement (s 115A(1)(a)); (5) the primary purpose and/or primary effect of each of the Target Online Locations (s 115A(1)(b)); (6) copyright subsistence, ownership and licensing of the copyright works (s 115A(3)(a)); and (7) notice to owners or operators of the Target Online Locations (s 115A(4)(b)) or that sufficient steps have been taken to give such notice. 13 I will address each of these issues in turn before turning to consider the matters identified in s 115A(5).

Service 14 I am satisfied that the operators of the Target Online Locations have been duly notified of this proceeding and the orders sought by the applicants or, to the extent they have not been so notified, that reasonable efforts to notify them have been made. The applicants' solicitors sent notices about the proceedings, by email and post, to the addresses identified at the Target Online Locations, and also to addresses identified in the domain name and IP address searches conducted by the applicants' solicitors. The owners or operators of the Target Online Locations did not provide any substantive response to the applicants' notification of this proceeding. Most owners or operators did not respond at all. Some owners or operators provided automated responses, which were generated by Cloudflare, Inc., an online service described by Nicholas J in Roadshow No 1 at [22]. None of the owners or operators of the Target Online Locations the subject of the applicants' proposed orders applied to be joined or otherwise appeared in the proceeding.

Status as carriage providers (s 115A(1)) 15 The extant respondents are carriage service providers within the definition in s 87 of the Telecommunications Act 1997 (Cth). The applicants rely on the deemed admissions arising as a result of the allegation to this effect made in the pleadings. Submitting appearances have been filed by all respondents other than the Vocus respondents. The Vocus respondents were directed to file an address for service or submitting appearance but have not done so. They have not sought to dispute or put the applicants to proof on this issue.

IP Address of Target Online Locations 16 The Target Online Locations are listed in the updated version of Table 1 annexed to Ms Choo's second affidavit. The applicants have identified both "streaming" locations and where relevant, a "linking" location. The Target Domain Names include both "primary" domain names, which are the main locations that provide the functionality which facilitates the infringement of which the applicants complain; and "secondary" domain names, which redirect users to corresponding primary domain names. 17 The applicants rely on the presumption in s 115A(5A) of the Act that the online location is outside Australia, unless the contrary is established. Further to the statutory presumption, searches undertaken by the applicants' solicitors demonstrate that each of the Target IP Addresses was registered or created, and each of the Target Domain Names was registered, overseas.

Infringement 18 I am satisfied that each of the Target Online Locations infringes the applicants' copyright in one or more of the copyright works. 19 Ms Choo gives evidence that she was able to access at least one cinematograph film owned or exclusively licenced by the applicants on each of the Target Online Locations. She gives evidence of the steps taken in order to view the relevant film and then proceeded to watch segments of the relevant film from the beginning, middle and end of the film. Exhibit MC-2 includes three examples of the process by which Ms Choo accessed and watched the opening credits, parts of the film and closing credits of films owned or exclusively licenced by the applicants. As mentioned, an aide memoire handed up as an accompaniment to Exhibit MC-2 further illustrates summarily the effect of the evidence on this issue. Ms Choo watched the authorised copies of the relevant films so as to be able to confirm that the parts of the films that she accessed on the Target Online Locations were to her observation the same as the authorised copies of the applicants' films.

Primary purpose or primary effect of each of the Target Online Locations (s 115A(1)(b)) 20 The evidence established that the primary purpose or effect of each of the Target Online Locations is to infringe, or to facilitate the infringement of, copyright. The primary service offered by the Target Online Locations is facilitating online access to motion pictures and television programs, without charge. The Target Online Locations offer vast catalogues and include directories, indexes or categories of motion pictures and television programs to facilitate easier access to content. 21 In addition to the films relied on by the applicants for standing, each Target Online Location makes available a significant number of other recent and well-known motion pictures and television programs. Ms Choo gives evidence of the relevant content available on the Target Online Locations. In Table 3 annexed to Ms Choo's first affidavit, she sets out other recent and/or well known films made available on the Target Online Locations 22 A majority of the Target Online Locations carry advertising which is displayed to users. I would infer that the advertising generates revenue for the owners or operators of the sites. 23 Many of the Target Online Locations include statements about copyright compliance, claiming to have a copyright infringement notification regime, or claiming that the website does not infringe copyright. However, the evidence demonstrates that the operators of the relevant sites have been unresponsive to notifications from the applicants in relation to complaints about what is alleged to be infringing conduct. To the extent that responses were received in relation to allegations of infringement, Ms Choo gives evidence and provides examples of the responses received. Counsel for the applicants described the responses as lacking in substance and being akin to chasing a series of rabbits down barren burrows. The analogy is apt. It is stark that none of the responses in evidence, including those which appear to be generic or automatically generated, include any assertion as to being authorised in relation to the copyright works.

Copyright subsistence, ownership and licensing of the copyright works (s 115A(3)(a)) 24 The applicants are the owners or exclusive licensees of the copyright in Australia of 47 relevant films and television program episodes. As mentioned, this includes five new cinematograph films owned by Viacom that have not been previously relied on in the previous Roadshow Proceedings. The applicants also rely on the statutory presumptions in ss 126 and 131 of the Act, and on deemed admissions on the pleadings. To the extent that the applicants rely on deemed admissions arising on the pleadings, the relevant allegations were contained in the iteration of the pleadings that were served on the respondents. 25 The evidence on this issue extends to the use of copyright notices on the DVD sleeves of the applicants' films and in the closing credits of episodes of the applicants' television series and international copyright certificates. 26 The applicants have not granted any licence or consent to the owners or operators of the Target Online Locations to copy or communicate the cinematograph films. That is an inference which I draw based on the evidence of Mr Stewart and Ms Choo read on this application. 27 To the extent that it is necessary to do so, noting that the evidence led in relation to Roadshow Films Pty Limited (the First Applicant) being the exclusive licensee of the copyright in Australia in the cinematograph film "The Lego Movie" is in the form of hearsay, I admit that evidence notwithstanding that it is hearsay by exercising my discretion to waive the rules of evidence under s 190 of the Evidence Act 1995 (Cth) on the basis that this issue does not appear to be genuinely in dispute in circumstances where the respondents have submitted or not appeared and Village Roadshow Films (BVI) Ltd (the Second Applicant) is the owner of the said copyright. 28 The applicants have demonstrated that the relevant cinematograph films which were made or first published overseas are still relevantly protected under the Act by reference to sections 90 and 184(1)(a) of the Act, regulation 4(1) of the Copyright (International Protection) Regulations 1969 (Cth) and by reference to the Berne Convention, of which the United States is relevantly a signatory.

Notice to owners or operators of Target Online Locations (s 115A(4)(b)) 29 Based on Ms Choo's detailed evidence of the steps taken to notify the owners or operators of the locations comprising the Target Online Locations and the New Target Online Locations (as those terms are defined in the orders sought), I am satisfied the applicants have made reasonable efforts to comply with s 115A(4) of the Act. Accordingly, to the extent necessary, I will dispense with need for the applicants to take any further steps to effect the notice stipulated in s 115A(4) of the Act.

Discretion 30 I now turn to consider whether I should exercise the discretion to make orders substantially as sought by the applicants. 31 Having considered the matters in s 115A(5) of the Act, 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. I accept the applicants' submissions that the evidence amply demonstrates that the Target Online Locations infringe copyright and do so in a manner which is flagrant. The sites 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. The owners or operators of the locations display a disregard for copyright generally. The evidence demonstrates that some of the locations include copyright statements directed to give the impression, falsely, that the locations are copyright compliant. One of the Target Domain Names, 'aniwave.to', has been the subject of orders made by the High Court of Delhi on 21 November 2023. 32 The applicants submit, and I accept, that disabling access to the Target Online Locations is a proportionate response. There is no evidence or indication 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 that the operators of the site will be deprived of visits by Australian users. 33 Finally, I note that the applicants maintain their claims for relief in respect of 11 Target Domain Names which were found to be inactive. Mr Stewart, having exposed his qualification to do so by dint of his professional practice in this area, deposed to his opinion that inactive domain names can be reinstated quickly and easily. For this reason, the applicants submit, and I accept, that making orders in respect of the inactive sites is likely to be utile and is also an appropriate exercise of discretion. It is proportionate for an order to be made at this time in relation to these inactive domain names, rather than requiring the applicants to apply to the Court afresh at a later date in the event that access to these domain names from Australia is re-enabled or proves to be only temporarily inactive. 34 Having regard to the evidence outlined above and taking into account the matters identified in s 115A(5) of the Act, I am satisfied that the copyright infringement engaged in, or facilitated by, the Target Online Locations is flagrant and that the operators display a blatant disregard for the rights of copyright owners. The relief sought is a proportionate response in all of the present circumstances. This is an appropriate case for making the site blocking and ancillary orders sought by the applicants.

CONCLUSION 35 I will make orders for the relief sought by the applicants. I certify that the preceding thirty-five (35) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Cheeseman.

Associate: Dated: 3 December 2024 SCHEDULE OF PARTIES NSD 1035 of 2024 Applicants Fourth Applicant: PARAMOUNT PICTURES CORPORATION Fifth Applicant: COLUMBIA PICTURES INDUSTRIES, INC. Sixth Applicant: UNIVERSAL CITY STUDIOS LLC Seventh Applicant: WARNER BROS. ENTERTAINMENT INC. Eighth Applicant: NETFLIX STUDIOS, LLC Ninth Applicant: NETFLIX WORLDWIDE ENTERTAINMENT, LLC Tenth Applicant: APPLE VIDEO PROGRAMMING LLC Eleventh Applicant: VIACOM INTERNATIONAL INC. Respondents Fourth Respondent: OPTUS ADSL PTY LIMITED Fifth Respondent: OPTUS SATELLITE PTY LIMITED Sixth Respondent: UECOMM OPERATIONS PTY LIMITED Seventh Respondent: OPTUS INTERNET PTY LIMITED Eighth Respondent: OPTUS MOBILE MIGRATIONS PTY LIMITED Ninth Respondent: OPTUS WHOLESALE PTY LIMITED Tenth Respondent: AMAYSIM MOBILE PTY LIMITED Thirteenth Respondent: M2 WHOLESALE PTY LTD Fourteenth Respondent: M2 WHOLESALE SERVICES PTY LTD Fifteenth Respondent: M2 COMMANDER PTY LTD Sixteenth Respondent: PRIMUS NETWORK (AUSTRALIA) PTY LTD Seventeenth Respondent: PRIMUS TELECOMMUNICATIONS PTY LTD Eighteenth Respondent: PRIMUS TELECOMMUNICATIONS (AUSTRALIA) PTY LTD Nineteenth Respondent: DODO SERVICES PTY LTD Twentieth Respondent: ENGIN PTY LTD Twenty First Respondent: EFTEL CORPORATE PTY LTD Twenty Second Respondent: EFTEL RETAIL PTY LTD Twenty Third Respondent: EFTEL WHOLESALE PTY LTD Twenty Fourth Respondent: WHOLESALE COMMUNICATIONS GROUP PTY LTD Twenty Fifth Respondent: VOCUS PTY LTD Twenty Sixth Respondent: AMNET BROADBAND PTY LTD Twenty Seventh Respondent: NEXTGEN NETWORKS PTY LIMITED Twenty Eighth Respondent: TPG INTERNET PTY LTD Twenty Ninth Respondent: TPG NETWORK PTY LTD Thirtieth Respondent: FTTB WHOLESALE PTY LTD Thirty First Respondent: CHARIOT LIMITED Thirty Second Respondent: SOUL PATTINSON TELECOMMUNICATIONS PTY LIMITED Thirty Third Respondent: SPT TELECOMMUNICATIONS PTY LIMITED Thirty Fourth Respondent: SPTCOM PTY LIMITED Thirty Fifth Respondent: SOUL COMMUNICATIONS PTY LTD Thirty Sixth Respondent: PIPE NETWORKS PTY LIMITED Thirty Seventh Respondent: INTRAPOWER TERRESTRIAL PTY LTD Thirty Eighth Respondent: IINET LIMITED Thirty Ninth Respondent: INTERNODE PTY LTD Fortieth Respondent: TRANSACT CAPITAL COMMUNICATIONS PTY LTD Forty First Respondent: TRANSACT VICTORIA COMMUNICATIONS PTY LTD Forty Second Respondent: WESTNET PTY LTD Forty Third Respondent: ADAM INTERNET PTY LTD Forty Fourth Respondent: AAPT LIMITED Forty Fifth Respondent: REQUEST BROADBAND PTY LTD Forty Sixth Respondent: TPG TELECOM LIMITED Forty Seventh Respondent: VODAFONE NETWORK PTY LIMITED Forty Eighth Respondent: VODAFONE PTY LIMITED Forty Ninth Respondent: AUSSIE BROADBAND LIMITED