On the Heels of Cartier Case, Australia Hands Down Landmark ISP Ruling of its Own

On the heels of a landmark ruling from the United Kingdom’s Court of Appeal, granting site-blocking injunctions to trademark holders against internet service providers (“ISPs”) to block access to websites found to be selling counterfeit goods without a court order, a federal court in Australia has forced the country’s leading internet providers to block several websites for copyright infringement, including ones offering infringing versions of popular HBO series, Game of Thrones.

Late last year, an array of copyright holders in various films and television programs successfully applied to the Federal Court of Australia for orders requiring a number of Australian ISPs, including those within the Telstra, Optus and TPG groups, to take steps to block access to five international copyright infringing sites. The site-blocking injunctions were made pursuant to section 115A of the Copyright Act 1968 ("Copyright Act") and like in the UK case – a trademark case that was filed by Cartier, Alaia, and Net-a-Porter’s parent company, Richemont – they are the first of their kind in Australia.

In the Australian cases – which were commenced in February 2016 by Roadshow, Disney, Twentieth Century Fox, Paramount, Columbia, Universal and Warner Bros and heard together – the Court granted injunctions pursuant to s. 115A of the Copyright Act, requiring certain ISPs to block access to the streaming site, SolarMovie. At the same time, the Australian television company, Foxtel, sought and was granted a s. 115A injunction requiring many of the same ISPs to block access to popular file-sharing sites, The Pirate Bay, Torrentz, TorrentHound and IsoHunt. None of the operators of the sites at issue took part in the case.

Section 115A of the Copyright Act

Section 115A of the Copyright Act, which was came into effect in June 2015, provides that a copyright owner can apply to the Federal Court for an injunction requiring an ISP to take reasonable steps to disable access to an online location if the Court is satisfied that:

(1)  The ISP provides access to an online location outside Australia;

(2)  The online location infringes, or facilitates an infringement of, the copyright; and

(3)  The primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in Australia).

The provision provides for a "no fault" remedy against an ISP that does not depend upon establishing that the ISP itself has committed or authorized an infringement of copyright or that the ISP has any knowledge of the copyright infringement.

Under s. 115A, the Federal Court has the discretion to refuse or grant an injunction, namely based on the following factors: The flagrancy of the infringement, whether access to the site has been disabled by orders in another jurisdiction, whether blocking access to the site is a "proportionate response" or is in the public interest, and the impact of an injunction on third parties.

In the cases at hand, the Court was satisfied that the requirements of s. 115A(1) were met in relation to each of the domain names, IP addresses and URLs sought to be blocked with the exception of six domain names relating to the Pirate Bay. In reaching its conclusion, the Court found that, for the purposes of s. 115A(1)(a), an ISP provides access to an online location if the location was online at the time the proceeding was commenced, even though it may not be online at the time of granting the injunction. The Court said that to find otherwise would be to "deprive the section of much of its usefulness,” as it could allow a website operator to avoid an injunction simply by taking a website off-line temporarily during the course of the proceeding. However, the fact that the online location has been disabled by the time of the hearing may be a matter relevant to the exercise of the Court's discretion.

The Court determined that the "primary purpose" of each of the five sites sought to be blocked was to infringe or facilitate the infringement of copyright. The Court said that the fact that a particular website merely makes some unlicensed copyright material available online or is routinely used by some users to infringe copyright will not establish the relevant "primary purpose". However, in this case, the Court was satisfied that each of the file-sharing and streaming sites is used or designed to be used for the principal activity of facilitating free and unrestricted access to films and/or television programs made available online without the permission of the copyright owners.

In exercising its discretion to grant relief pursuant to s. 115A, the Court noted, in particular, that the five sites positively encouraged the infringement of copyright on a widespread scale or otherwise involved a flagrant disregard of the rights of copyright owners generally and that blocking orders had previously been made in relation to most of the sites in other countries.

As a result, it was agreed that the ISPs would have 15 days to take reasonable steps to disable access to the specified sites by, at the option of the ISP, blocking or re-routing specified IP addresses, blocking specified URLs and domain names, Domain Name System blocking, or by any alternative technical means for disabling access to the Target Online Locations as agreed in writing between the copyright owners and the ISPs. Users seeking access to the blocked sites are to be redirected to a "landing page" informing them that access to the site has been disabled as a result of the Court determining that it infringes or facilitates the infringement of copyright.

The injunctions are to operate for three years and may be extended by the Court upon application by the copyright owners. There is provision for the owners or operators of the blocked sites, or any other sites claiming to be affected by the orders, to apply to vary or discharge the orders on three days' written notice.

The copyright owners had sought a form of "rolling" order, which would have permitted them to extend the scope of the injunctions to include other domain names, IP addresses and URLs relating to the subject sites, which were not covered by the orders made by the Court, simply by providing written notice to the ISPs. However, the Court favored the approach contended for by the ISPs, which was to make any extension or variation of the injunction subject to the approval and order of the Court in light of evidence.

The copyright owners also proposed that the ISPs bear their own costs of complying with the injunctions, whereas the ISPs sought orders for the payment of their costs of complying with the injunctions. The Court held that it was reasonable for the copyright owners to pay the ISPs' compliance costs in the amount of AU $50 per domain name.

The decision in these two cases is of considerable importance for rights holders in providing the first guidance on the Court's approach to applications for site-blocking injunctions pursuant to s 115A and the kinds of orders that may be made as a result.

Article courtesy of Anthony Muratore and Chantal Savage of Jones Day. Additions/edits courtesy of TFL.