Website blocking orders – what has to be proven?

Section 115A of the Copyright Act 1968 (Cth) came into effect on 27 June 2015 and was amended on 11 December 2018 by the Copyright Amendment (Online Infringement) Act 2018 (no. 157, 2018) (Online Infringement Act).   The amendments were considered in the case of Australasian Performing Right Association Ltd v Telstra Corporation Ltd [2019] FCA 751 (APRA) which was the first case heard after the 2018 amendments where Justice Perram revisited the factors relevant in determining whether to not to make the orders pursuant to the amended section 115A of the Copyright Act 1968 (Cth) (Act).

The 2018 amendments

A significant change that occurred in the Online Infringement Act was the expansion of subsection (b) of 115A.  Prior to the 2018 amendments, section 115A(1)(c) read:

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

However, the Explanatory Memorandum to the 2018 Online Infringement Act (Explanatory Memorandum) noted that this was an exceptionally high threshold which was designed to prevent the “over-blocking” of websites.

As a result, in 2018 this threshold was lowered so that it now extends to online locations with the:

“primary purpose or primary effect of infringing, or facilitating the infringement, of copyright (whether or not in Australia)”.

The Explanatory Memorandum summarises the impacts and reasoning for the changes.  With respect to the addition of the ‘primary effect’, the explanatory memorandum states on page 10:

“This new threshold test will ensure that the intent of the online location operator, or of the location’s users, are not conclusive factors in granting an injunction. This new threshold is sufficiently high to exclude online locations that are primarily operated for a legitimate purpose but may contain a small proportion of infringing content.”

In other words, while the 2018 amendments lowered the “primary purpose” threshold, it remains high enough to safeguard those legitimate websites which contain only a small percentage of infringing content.

Three (3) limbed test for a copyright blocking order

The three (3) limbs of section 115A(1) to be satisfied are:

• a carriage service provider provides access to an online location outside Australia (Provides Access);
• the online location infringes, or facilitates an infringement of, the copyright (Infringes or Facilitates the Infringement); and
• has the primary purpose or the primary effect of infringing, or facilitating an infringement, of copyright (whether or not in Australia) (Primary Purpose or Effect).

We consider each of these limbs below.

Carriage service provider Provides Access

This was discussed in obiter in the earlier case of Universal Music Australia Pty Ltd v TPG Internet Pty Ltd [2017] FCA 435 (Universal).  In that case, Burley J said at [15]:

“the requirement in s 115A(1)(a) that a “carriage service provider” provides access to an online location directs attention to the definition of that term in s 87 of the Telecommunications Act 1997 (Cth) (Telecommunications Act) (see s 10 Copyright Act) which provides that if a person supplies, or proposes to supply, a listed carriage service to the public using a network unit owned by one or more carriers, or a network unit in relation to which a nominated carrier declaration is in force, then the person is a carriage service provider. Under that Act, a carriage service means “a service for carrying communications by means of guided and/or unguided electromagnetic energy” and a “listed carriage service” includes a carriage service between a point in Australia and one or more other points in Australia.”

This limb is not controversial.

Infringes or Facilitates the Infringement …of copyright

In the case of Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 (Roadshow) Justice Nicholas noted that the term “facilitates” is deliberately broad.  With respect to this requirement, His Honour said at [47]:

“Even if the online location does not itself infringe copyright, the requirements of section 115A(1)(b) may be satisfied if the online location “facilitates” an infringement of copyright. The language used is deliberately broad. The word “facilitate” means “to make easier or less difficult; help forward (an action or process etc)”: Macquarie Dictionary (6th ed, 2013) at p 525.”

“In determining whether an online location facilitates the infringement of copyright, the Court will seek to identify a species of infringing act and ask whether the online location facilitates that act by making its performance easier or less difficult. An online location may both infringe and facilitate the infringement of copyright by making an electronic copy of a work or other subject matter available online for transmission to users. But it may also facilitate the infringement of copyright merely by making it easier for users to ascertain the existence or whereabouts of other online locations that themselves infringe or facilitate the infringement of copyright.”

In essence, once the copyright owner has established that the location infringes or facilitates the infringement of their copyright, the Court will take a broad view of the primary purpose or effect of the online location.

Primary Purpose or Primary Effect

In the APRA case, the websites allowed users to download music files from YouTube videos, which the applicants argued infringed copyright because it reproduced and communicated to the public online the corresponding musical works and sound recordings.  Justice Perram clarified that section 115A(b) only requires that the primary purpose or primary effect of the online locations is to infringe copyright generally, rather than the applicant’s own copyright specifically.

His Honour therefore held that:

“the online locations are specifically intended to facilitate the copying of soundtracks by members of the public from YouTube. It is likely that this is indeed their exclusive purpose and effect, and they do so flagrantly. The services provided by the online locations will only be of use to anyone where YouTube does not offer download functionality- that is, where no permission is given to make a copy of media on YouTube.”

The primary purpose or primary effect test was considered in detail by the Court in Roadshow.  Justice Nicholas said at [48]:

“The requirement that the online location have as its primary purpose copyright infringement or the facilitation of copyright infringement provides an important check on the operation of s 115A. Thus, the fact that a particular website makes some unlicensed copyright material available online or is routinely used by some users to infringe copyright does not establish that the primary purpose of the website is to infringe or facilitate the infringement of copyright.”

His Honour went on to consider the Explanatory Memorandum and gave some specific examples of situations which would not be considered to have the “primary purpose or primary effect” of infringing copyright.  These include:

• an art gallery website operated outside of Australia that may contain one unauthorised photograph;
• a video on YouTube;
• a Virtual Private Network (VPN) being used for at least in part for legitimate purposes; and
• music or other media available on the iTunes store.

These situations would not prima facie satisfy the test as being an online location that infringes or facilitates the infringement of copyright.

Justice Nicholas also concluded at [49] that:

“The purpose of the online location may be ascertained by a consideration of the use that is or may be made of it. If the Court is satisfied that the principal activity for which the online location is used or designed to be used is copyright infringement or the facilitation of copyright infringement, then it will be open to conclude that the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright.”

Evidently the Court takes a broad view of the primary purpose or primary effect test.  Therefore, section 115A may provide recourse for owners of copyright in online enterprises which have been hacked, particularly where the website has been operated overseas and the operator cannot be located.

Takeaways

The 2018 amendments to the Copyright Act 1968 (Cth) broadened the thresholds for granting a section 115A blocking order.  This was designed to ensure that online locations that are deliberately and flagrantly infringing copyright will be captured by this provision.  The Court has generally taken a broad view of the test, and applicants will only need to show that the effect of the online location is to infringe copyright generally, rather than their own copyright specifically.

Links and further references

Legislation

Copyright Act 1968 (Qld)
Copyright Amendment (Service Providers) ACT 2018 (No. 71, 2018)
Copyright Amendment (Online Infringement) Act 2018 (no. 157, 2018)
Criminal Code Act 1995 (Cth)
Explanatory Memorandum
Telecommunications Act 1997 (Cth)

Cases on 115A of the Copyright Act 1968 (Cth)

Roadshow Films Pty Limited v Telstra Corporation Limited (No 2) [2020] FCA 769
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
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
Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503; (2016) 248 FCR 178

Further information about website blocking orders

If you need assistance to obtain a copyright blocking order to stop infringers using your copyright material where the perpetrators seem beyond reach, please telephone me for a confidential and obligation free discussion.

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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