25 October 2018

Australia’s internet blocking laws set to be expanded

This article was written by Cate Nagy, Luke Hawthorne and Katie Warner.

In a swift development, with bipartisan support, the reach of the current internet blocking provisions under the Copyright Act 1968 (Cth) is set to be widened in reforms proposed by the Australian Government this month. The Government has proposed fundamental and wide-reaching reforms to the Copyright Act, which are set to bring a significantly wider range of online products, technologies and services within the ambit of Australia’s piracy regime – some, perhaps, unanticipated. If passed, as is likely, these amendments are bound to impact upon the future of media, social and emerging technologies in the ongoing battle over online copyright infringement.

In particular, the proposed amendments expand the reach of the existing regime by:

  • capturing online locations that have the “primary effect” of infringing or facilitating the infringement of copyright; and
  • rendering online search engine providers susceptible to blocking injunctions; and
  • providing for adaptive blocking orders that can block new mirror or proxy websites.

The Copyright (Online Infringement) Bill 2018

The Copyright Amendment (Online Infringement) Bill 2018  proposes various amendments to the internet blocking regime in section 115A of the Copyright Act. The Bill underwent minimal public consultation before being introduced to Parliament on 18 October 2018. Having passed the House of Representatives, it is due to come before the Senate with bipartisan support.

The current blocking regime

In its current form, section 115A of the Copyright Act allows copyright owners to apply to the Federal Court of Australia for an injunction requiring that a carriage service provider (generally an ISP) take reasonable steps to block access to an online location located outside Australia. For an injunction to be granted, the relevant online location must:

  • infringe, or facilitate an infringement, of the copyright; and
  • have the primary purpose of infringing copyright or facilitating the infringement of copyright (whether or not in Australia).

Section 115A was introduced in June 2015 and the first injunction was ordered in December 2016 by Nicholas J in Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503.[1] Since 2016, injunctions have been granted with respect to a range of online locations at which infringing content is made available, including PirateBay, SolarMovie and KickassTorrents.

The scope of internet services and products targeted by copyright owners has already expanded. While the original wave of applications made under the regime targeted either unlawful streaming or torrent indexers, later applications have disabled a broader range of technologies.  On 27 April 2018, the Federal Court delivered judgment in Roadshow Films Pty Ltd v Telstra Corporation Ltd [2018] FCA 582, disabling the HDSubs+ App by targeting the ancillary services that allow an “app” or device to function, rather than a website.

Proposed changes to the blocking regime

The Bill extends the scope of the current website blocking regime by:

  1. broadening the threshold test of “primary purpose of infringing copyright” to “primary purpose or primary effect of infringing copyright”;
  2. extending the potential application of injunctions to “online search engine providers” and not just ISPs; and
  3. providing for an adaptive style of injunction, meaning that ISPs and online search engine providers can continue to block domain names, URLs and IP addresses (or search results) that they agree provide access to the infringing online location, without the need for Court intervention.

"Primary Purpose or Primary Effect"

The current regime requires that the online location have the “primary purpose” of infringing or facilitating the infringement of copyright. Whilst the term “primary purpose” is not defined in the Copyright Act, the Court has made clear that this test focuses on the intention of website operators.[2]

Under the Bill, the proposed threshold test will require the Court to be satisfied that the “primary purpose or primary effect” of the online location is to infringe, or facilitate the infringement of copyright. The Government has stated[3] that the “primary effect” test aims to capture file hosting sites such as “cyber lockers”, which allow users to share files through password-protected online hard drive spaces. In the Government's view, cyber lockers may have the “primary effect” of facilitating the trade of infringing movie and music files, but may not meet the “primary purpose” test.

Unfortunately, the Bill offers no guidance as to when an online location will be found to have the “primary effect” of infringing copyright. This raises considerable uncertainty, particularly for websites, products and technologies which provide access to some measure of infringing content, but fulfil a range of other functions. For example, where a website enables the sharing of ideas and content between users, fosters communication and creative endeavour, but also infringes copyright through the sharing of unlicensed content, it is unclear how the Court will determine which of these “effects” is the “primary effect” of the website.

The making of a blocking order under section 115A continues to be discretionary, and under the statutory test the Court may take into account proportionality, the public interest and the “flagrancy” of the infringement when determining whether to grant the injunction. However, in the absence of any clear statutory or judicial guidance as to how these factors should be applied, particularly in the context of a “primary effect” test, the discretionary nature of a website blocking order affords only limited comfort for relevant stakeholders.

Extension to “online search engine providers”

The proposed amendments also enable applicants to seek injunctions against “online search engine providers” and not just ISPs. In a website blocking application filed against an ISP, the copyright owner may seek a further injunction against an online search engine provider requiring it to take steps to block search results that refer users to the relevant online location.

The term “online search engine provider” is not defined in the Bill, although it is clearly aimed at search engines like Google, Yahoo and Bing. This amendment has the potential to significantly broaden the power of the blocking orders by providing a mechanism for searching censorship.

Provision for adaptive injunctions

Under the current regime, the Court maintains supervisory oversight of amendments to website blocking orders. This means that copyright owners must apply to the Court to vary the injunction when they discover new domain names, URLs or ISP addresses which provide access to the same infringing online location.

The proposed amendment will dispense the need for the parties to return to Court to vary existing orders where the copyright owner and ISP (or search engine provider) agree that a new domain name, URL or IP address has started to provide access to an online location specified in the earlier order.

It remains to be seen whether copyright owners and ISPs or online search engine providers ever reach agreement in the manner contemplated by this provision.

What next?

The Government’s proposed amendments signify a rapid expansion of the existing regime. It is clear that ISPs are no longer the only stakeholders that need to profile their risks.

Our Intellectual Property team has considerable experience with section 115A of the Copyright Act and have been monitoring the amendments closely.

If your business would like to discuss its risks in light of the proposed legislative changes, please contact our team.

Addendum: Summary of proposed changes

 

Current Regime 

Proposed regime

1

A copyright owner identifies an online location outside Australia which infringes, or facilitates the infringement of their copyright.

A copyright owner identifies an online location outside Australia which infringes, or facilitates the infringement of their copyright.

 2

The copyright owner applies to the Federal Court of Australia for an injunction requiring that the relevant carriage service provider take reasonable steps to disable access to that online location.

The copyright owner applies to the Federal Court of Australia for an injunction requiring that a relevant carriage service provider take reasonable steps to disable access to that online location.

The application may also request that the injunction require a relevant online search engine provider to take reasonable steps so as not to provide a search result that refers users to the online location.
 3

In order to grant the injunction, the Federal Court must be satisfied that:

  • the online location is in fact outside Australia;
  • the online location infringes, or facilitates the infringement of the owner's copyright;
  • the “primary purpose” of the online location is to infringe, or facilitate the infringement of copyright (whether or not in Australia); and
  • the steps required of the carriage service provider are reasonable.

In determining whether to grant the injunction, the Court may have regard to inter alia the flagrancy of the infringement, proportionality, the public interest and the impact on individuals.

In order to grant the injunction, the Federal Court must be satisfied that:

  • the online location infringes, or facilitates the infringement of the owner's copyright;
  • the “primary purpose or the primary effect” of the online location is to infringe, or facilitate the infringement of copyright (whether or not in Australia); and
  • the steps required of the carriage service provider and online search engine provider are reasonable.
In determining whether to grant the injunction, the Court may have regard to inter alia the flagrancy of the infringement, proportionality, the public interest and the impact on individuals.
 4

If the copyright owner discovers other domain names, URLs and IP addresses that provide access to the infringing online location after the injunction is made then the copyright owner must apply to the Court to vary the injunction, per Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 at [13].

The Judge may choose to grant an "adaptive" injunction. If this is the case, the carriage service provider and online search engine provider must block/not provide search results for domain names, URLs and IP addresses that the parties agree have started to provide access to the infringing online location after the injunction was made.


[1] King & Wood Mallesons acted for the Telstra Respondents in this application.

[2] Roadshow Films Pty Ltd v Telstra Corp Ltd (2018) 132 IPR 1; [2018] FCA 582 at [48].

[3] Regulation Impact Statement prepared by the Department of Communication and the Arts.



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