Roadshow Films Pty Limited v Telstra Limited

Federal Court of Australia|2024-05-08|Before: Halley J

A. In these orders, the following terms have the following meanings: (a) Aussie Broadband means the forty ninth respondent. (b) Domain Name means a name formed by the rules and procedures of the Domain Name System (DNS) and includes subdomains. (c) DNS Blocking means a system by which any user of a respondent's service who attempts to use a DNS resolver that is operated by or on behalf of that respondent to access a Target Online Location is prevented from receiving a DNS response other than a redirection as referred to in Order 4 of these orders. (d) IP Address means an Internet Protocol address. (e) Optus means the second to twelfth respondents. (f) Target Online Locations means the online locations as referred to in Schedule A to these orders and that are or were accessible: (i) at the URLs listed in Schedule A to these orders (together, the Target URLs); (ii) at the IP Addresses listed in Schedule A to these orders (together, the Target IP Addresses); (iii) at the Domain Names listed in Schedule A to these orders (together, the Target Domain Names); and (iv) any other domain names, URLs and IP addresses that the applicants notified to the respondents pursuant to Order 12 of these orders (subject to the procedure set out in that Order). (g) New Target Online Locations means the locations referred to in Order 13 of these orders. (h) New Target Online Location Orders refers to orders sought or made under Orders 13 or 15 of these orders. (i) Telstra means the first respondent. (j) TPG means the twenty eighth to the forty sixth respondents. (k) URL means a Uniform Resource Locator. (l) Vocus means the thirteenth to twenty seventh respondents. (m) Vodafone means the forty seventh and forty eighth respondents.

[The order entered is available on the Commonwealth Courts Portal, which attaches the Target Online Locations] Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

A. INTRODUCTION 1 Before me today is an application for orders under s 115A of the Copyright Act 1968 (Cth) (Act) for site blocking and ancillary orders. 2 The proceeding was commenced by an originating application and statement of claim. 3 The applicants rely on the following evidence: (a) an affidavit of Andrew Gavin Stewart affirmed on 29 April 2024. Mr Stewart is a solicitor on the record for the applicants, and has been a solicitor on the record and given evidence in 14 previous applications before this Court for site blocking and ancillary orders under s 115A of the Act involving similar applicants and respondents (previous Roadshow applications); and (b) an affidavit of Min Sung Choo affirmed on 29 April 2024. Ms Choo is a solicitor acting under the supervision of Mr Stewart.

B. BACKGROUND 4 The applicants are each 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. 5 The first to ninth applicants rely on the same cinematograph films in this application as in Roadshow Films Pty Ltd v Telstra Limited [2024] FCA 246 (Nicholas J). 6 The tenth applicant, Apple Video Programming LLC (Apple), is a new applicant in the applications under s 115A. It relies on certain films that have not been relied on in previous proceedings. Apple is the owner of the copyright in each of those films. 7 The respondents are carriage service providers. They are the same respondent groups as in the previous Roadshow applications. The respondents comprise Telstra Limited (the first respondent), Optus entities (the second to twelfth respondents), Vocus entities (the thirteenth to twenty seventh respondents), TPG entities (the twenty eighth to forty sixth respondents), and Vodafone entities (the forty seventh and forty eighth respondents). The forty ninth respondent, Aussie Broadband Limited, was a respondent in the four most recent of the previous Roadshow applications. 8 The Optus, TPG, Vodafone and Aussie Broadband respondent groups have all filed submitting appearances. The Telstra and Vocus respondents have been served, but have failed to file either a notice of address for service or a submitting appearance, contrary to orders made by this Court. 9 None of the respondents has sought to be heard in this proceeding. 10 The cinematograph films relied on by the applicants (Cinematograph Films) are listed in Sch A to the statement of claim. 11 The applicants rely on the presumptions in s 126 and s 131 of the Act, and on deemed admissions as to ownership of copyright. Although it is strictly not necessary, Mr Stewart also gives evidence of the applicants' ownership of copyright in the Cinematograph Films on information and belief.

C. GRANT OF RELIEF UNDER SECTION 115A OF THE ACT 12 Section 115A of the Act relevantly provides: 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). … Granting the injunction (2A) The Court may grant the injunction in the terms, and subject to the conditions, that the Court considers appropriate. … (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 … 13 Section 115A(4) of the Act permits the Court to make an order dispensing with service on the carriage service provider, online search engine provider and the operator of the online location on such terms as it thinks fit, if the Court is satisfied that the owner of 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. 14 The target online locations that are alleged by the applicants to infringe or facilitate infringement of copyright in the Cinematograph Films are identified by Ms Choo in tables in the annexures to her affidavit (Target Online Locations). They fall into two classes, (a) "streaming" locations and (b) "proxy" locations. These classes have been the subject of previous applications under s 115A, including in previous Roadshow applications. 15 The Target Online Locations are accessible at identified target uniform resource locations (Target URLs), which incorporate identified target domain names (Target Domain Names) and at identified target internet protocol addresses (Target IP Addresses). The URLs, domain names, and IP addresses for each of the Target Online Locations are set out in table 1 to Annexure MC-1 to the affidavit of Ms Choo. 16 There are two types of Target Domain Names, (a) "primary" domain names, which are the main locations that provide the functionality complained of by the applicants, and (b) "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 in proceedings for an injunction under s 115A, the online location is presumed to be outside Australia, unless the contrary is established. The applicants also rely on searches undertaken by Ms Choo that show that each of the Target IP Addresses was registered or created, and each of the Target Domain Names was registered, overseas. 18 Ms Choo gives evidence that (a) she visited all of the Target Online Locations and noted which of the Cinematograph Films were available at each location, (b) for each location, she then navigated to a link to at least one of the Cinematograph Films, then, (c) depending on the type of the online location, streamed or downloaded the film, and (d) in each case, she watched certain parts of the film and confirmed that it was a true copy of the film in question. 19 Further, Ms Choo gives evidence that, when she visited each of the target online locations, she found that (a) their primary service was to provide simple access online without charge, to motion pictures and television programmes, with the exception of one of the Target Online Locations, which did include a charge for accessing the material, (b) each location made available large numbers of other motion pictures and television programmes, and (c) the majority of them carried advertising. 20 I am satisfied that this evidence establishes that the primary purpose or effect of each of the Target Online Locations is to infringe, or to facilitate the infringement of, copyright. 21 I can readily infer from the evidence given by Ms Choo summarised above that 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: see Foxtel Management Pty Ltd v TPG Internet Pty Ltd [2017] FCA 1041 at [117] (Burley J); Foxtel Management Pty Ltd v TPG Internet Pty Ltd [2018] FCA 933 at [12] (Nicholas J). There is also evidence to this effect from Mr Stewart on information and belief. 22 I am satisfied that the evidence relied upon by the applicants establishes that each of the Target Online Locations infringes copyright in one or more of the Cinematograph Films. 23 The matters to be taken into account in determining whether to exercise the Court's discretion to grant an injunction are relevantly identified in s 115A(5) of the Act, which 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; (ea) if the application under subsection (1) also sought for the injunction to apply against an online search engine provider - whether not providing search results that refer users 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; (ga) if the application under subsection (1) also sought for the injunction to apply against an online search engine provider - whether it is in the public interest not to provide search results that refer users 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. 24 I am satisfied that the evidence relied upon by the applicants has established the following matters that weigh heavily in favour of the exercise of the discretion to grant an injunction under s 115A of the Act. 25 First, by reason of the matters identified above, the infringement of copyright at each of the Target Online Locations can be appropriately characterised as flagrant. 26 Second, the Target Online Locations are simple to use. They offer large catalogues of infringing material, and most of them make money by displaying advertising to users. 27 Third, a significant majority of them have directories, indexes or categories of motion pictures and television programs. 28 Fourth, the operators of the locations also display a disregard for copyright generally. Many include statements about copyright compliance, claiming to have copyright, yet they offer large catalogues of infringing material, and most of them make money by displaying advertising to users. 29 Fifth, the operators have been substantially unresponsive to notifications about their infringing conduct. 30 Sixth, at least six of the Target Online Locations are the subject of orders from a Court in another country on the ground of, or on grounds related to, copyright infringement. 31 I am also satisfied the applicants have complied with s 115A(4) of the Act as far as is reasonably possible. They have notified the carriage service providers, and they have exerted reasonable efforts to notify the operators of the Target Online Locations. 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. Where the Target Online Locations had web forms, the applicants' solicitors navigated there and attempted to complete the forms. 32 Generally, the owners or operators of the Target Online Locations did not respond. When they did, the responses were largely not substantive. Most are automated responses from hosting services and domain-name registrars. No owner or operator has appeared at the hearing today. 33 Other remedies are not reasonably available to the applicants because the Target Online Locations are located outside of Australia. Given the volume and flagrancy of the infringement, I am satisfied that disabling access to the Target Online Locations is a proportionate response, and that it is in the public interest. 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 the operators of the site will be deprived of visits by Australian users.

D. DISPOSITION 34 The orders sought by the applicants are substantially in the same form as the orders made in Roadshow Films Pty Limited v Telstra Limited [2024] FCA 246 (Nicholas J), and incorporate the amendments to the procedure for applying to extend the operation of the orders beyond their initial three-year term, in accordance with the statements by Burley J in Roadshow Films Pty Limited v Telstra Corporation Limited (Extension of Orders) [2023] FCA 1167 at [28]. 35 In my view, this is an appropriate case for making the site blocking and ancillary orders sought by the applicants, and orders to that effect will be made. I certify that the preceding thirty-five (35) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Halley.

SCHEDULE OF PARTIES NSD 284 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 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 LTD Eleventh Respondent: VAYA PTY LTD Twelfth Respondent: VAYA COMMUNICATIONS PTY LTD 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 LIMITED Eighteenth Respondent: PRIMUS TELECOMMUNICATIONS (AUSTRALIA) PTY LTD Nineteenth Respondent: DODO SERVICES PTY LTD Twentieth Respondent: ENGIN PTY LIMITED 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

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