s115A Copyright Act – infringement outside Australia

Section 115A of the Copyright Act 1968 (Cth) came into effect on 27 June 2015 and was amended on 11 December 2018 pursuant to the Copyright Amendment (Online Infringement) Act 2018 (no. 157, 2018) (Online Infringement Act).  The effect of the amendments as described in the Explanatory Memorandum to the Bill were to amend the threshold test from ‘primary purpose’ to ‘primary effect’, add a rebuttable presumption that an alleged ‘online location’ is located outside Australia, to extend the scope to online search engines (Deindexing Orders) and allow the Court to make “more responsive” orders in terms of injunctive relief.

Copyright infringement outside Australia

The mischief that the Online Infringement Act was designed to block access to websites that infringe copyright in circumstances where the party responsible for infringement is located outside the jurisdiction.

Those in the online business know that international copyright infringement is rampant because the infringers can work from unknown locations, hide behind anonymous ‘hotmail accounts’ use virtual private networks (VPN’s).

Amended section 115A

Section 115A now provides that:

“(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.”

Site blocking order

The ‘site blocking’ remedy (Site Blocking Order) available under section 115A(1) of the Copyright Act 1968 (Cth) is an injunction against carriage service providers (CSP’s) (such as Telstra and Optus), requiring that they take reasonable steps to block access to a website or other online location outside of Australia that infringes, or facilitates an infringement, of copyright material (Infringing Website).

Deindexing Order

Section 115A(2) also provides an applicant (the party initiating the legal proceedings) with the ability to seek a further order requiring an online search engine provider (such as Google and Yahoo) to stop indexing pages search result that refers users to the Infringing Website (Deindexing Order).

As at the date of this article, the applications that have been made to the Federal Court have only sought Site Blocking Orders.

The nature of the copyright required for the orders

Section 115A(1) does not limit the classes of “copyright” that the owner may apply to the Court to block or deindex.  It is therefore possible to apply to the Court for orders blocking based on a range of copyrights.

In all of the cases that have been brought before the Court the copyright which has been the subject of the application has been literary works and cinematograph films.

Takeaways

The categories of copyright which can be used as the basis for Site Blocking Orders and Deindexing Orders are not closed.  Therefore an application to the Federal Court could be made based on more than copyright in cinematographic films and literary works.

Further references

Legislation

Copyright Act 1968 (Qld)
Copyright Amendment (Online Infringement) Act 2015 (No 80, 2015)
Copyright Amendment (Service Providers) Act 2018 (No. 71, 2018)
Copyright Amendment (Online Infringement) Act 2018 (No. 157, 2018)

Cases

Roadshow Films Pty Limited v Telstra Corporation Limited [2020] FCA 507 
Foxtel Management Pty Limited v TPG Internet Pty Ltd [2019] FCA 1450
Roadshow Films Pty Limited & Ors v Telstra Corporation Limited & Ors [2019] FCA 885 (No 5)
Roadshow Films Pty Limited v Telstra Corporation Limited (No 2) [2020] FCA 769 
Australasian Performing Right Association Ltd v Telstra Corporation Ltd [2019] FCA 751
Television Broadcasts Limited v Telstra Corporation Limited [2018] FCA 1434 
Foxtel Management Pty Ltd v TPG Internet Pty Ltd [2018] FCA 933 
Roadshow Films Pty Limited v Telstra Corporation Limited [2018] FCA 582
Foxtel Management Pty Limited v TPG Internet Pty Ltd [2017] FCA 1041
Universal Music Australia Pty Ltd v TPG Internet Pty Ltd (2017) 126  IPR 219

Related articles by Dundas Lawyers

Website blocking orders – what has to be proven?
Intellectual property assignments and the right to sue
Infringement of copyright in computer code

Further information

If you need assistance with any aspect of copyright infringement, please telephone me for an obligation free and confidential discussion.

 

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
Telephone: (07) 3221 0013 | Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au

 

 

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances

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