By Rohan Singh, Jessica Noakesmith and Brett Shandler

Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435 (28 April 2017) (Universal Music)

Last week in the Federal Court of Australia, over thirty internet service providers (ISPs) including TPG, Optus and Telstra were ordered to block access to the torrenting website KickassTorrents and related domain names. Universal Music is the third case to be decided under the recently added section 115A of the Copyright Act 1968 (Cth) after Roadshow Films Pty Ltd v Telstra Corporation Ltd (Roadshow Films) and Foxtel Management Pty Limited v TPG Internet Pty Ltd[1], and represents a win for music labels such as Universal Music, APRA, AMCOS and Warner Music.

In concluding that it was appropriate to grant an injunction, Justice Burley found it was relevant that KickassTorrents had been blocked in other countries and that it reflected a flagrant and “open disregard for copyright”. Last year the alleged owner of the website was arrested by the U.S. Government in Poland and was charged with criminal copyright infringement.

The ISPs did not oppose the website blocking order, but all (except for Foxtel Broadband) argued that the music labels should cover some or all the costs of compliance as they were innocent parties, and the order ultimately serves to benefit the labels. Justice Burley agreed, and adopted the reasoning in Roadshow Films ordering that the ISPs block the nominated websites within 15 business days, for a period of three years and for a nominal fee of $50 per domain name. Relevantly, it was left to the ISPs to cover their own costs in implementing these blocking orders.

To obtain an order under section 115A, a copyright owner must show that[2]:

  1. the carriage service provider (ISP) provides access to an online location outside Australia;
  2. the primary purpose of the online location is to infringe, or facilitate the infringement of copyright; and
  3. the online location infringes or facilitates the infringement of copyright.

For those copyright owners who may be interested in seeking a similar order, this case is informative as to what is necessary to dispense of the requirement for service of the proceedings on the owner of the website, and the evidence that is required to prove that the geographical location is outside of Australia (including using ‘ping tests’ and ‘whois’ searches).

This section is proving effective in practice (except for those Australians circumventing the efforts with private VPNs), however time will tell whether the Federal Court will create a separate list or docket to streamline proceedings. The list could potentially provide for standard orders which could incorporate a variation order for additional domain names as was the case here. These websites reproduce quickly and could be better combated through a streamlined list.

The future of website blocking and piracy

ISPs are no longer a passive vehicle for data and this case adds to the responsibilities created by the Dallas Buyers Club[3] in identifying names of infringing consumers. All ISPs should set up a system where they can comply with any injunctions under section 115A.

The next case seeking an order under section 115A will be Roadshow Films Pty Ltd & Ors v Telstra Corporation Limited & Ors which is fixed for hearing on Wednesday 10 May 2017. The applicants will be seeking to have websites like Putlocker and Megashare blocked.

If actions under this section prove popular it will be interesting to see if a similar provision is added to the Trade Marks Act 1995. Last year the Court of Appeal of England and Wales upheld an order to block certain websites that infringed or facilitate the infringement of trade marks, as it felt it was appropriate to do so under a general injunctive power[4].

[1] [2016] FCA 1503

[2] Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 [31]; Universal Music Australia Pty Limited v TPG Internet Pty Ltd [2017] FCA 435 (28 April 2017) [14]

[3] Dallas Buyers Club LLC v iiNet Limited (No 3) [2015] FCA 422

[4]Cartier International and Others vs BSkyB and others [2016] EWCA Civ 658