WILMAP: Australia

LEGISLATION

 
[Website blocking scheme: Section 115A of the Copyright Act 1968 enables copyright owners to the Federal Court of Australia for an injunction requiring ISPs to disable access to online services hosted outside Australia. Before granting the injunction, the Court must be satisfied that the foreign site either directly infringes copyright  or ‘facilitates’ infringement. Rightsholders bear the onus of showing that the ‘the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in Australia).’ The Court must take into consideration a range of factors including whether disabling access to the online location is a proportionate response in the circumstances, the impact on any person likely to be affected by the grant of the injunction, and whether it is in the public interest to disable access to the online location. Once granted, the injunction requires the ISP to take reasonable steps to disable access to the online location. The Court has further powers to make detailed orders in relation to the technical means to be adopted by the ISP to disable access. This provision came into force on 30 June 2015.]
 
 
[Safe harbours for intermediaries were introduced as part of the Australia - United States Free Trade Agreement (Ch 17) by the US Free Trade Agreement Implementation Act 2004 (Cth) Sch 9 and amended by the Copyright Legislation Amendment Act 2004 (Cth) Sch 1. The safe harbours largely follow the structure of 17 USC 512, although they have been substantially redrafted. The safe harbours limit the liability for intermediaries to injunctive relief for transmission, caching, hosting, and indexing activities (Section 116AG). The conditions imposed on intermediaries seeking to rely on the safe harbours include a reasonably implemented termination policy for repeat infringers and a notice and takedown regime (Section 116AH(1)). The equivalent of US vicarious liability, expressed as a “financial benefit that is directly attributable to the infringing activity if the carriage service provider has the right and ability to control the activity” is expressly excluded from the scope of the hosting and indexing safe harbours (Section 116AH(1)). Importantly, the safe harbours only apply to Internet Service Providers (defined as ‘Carriage Service Providers’ under the Telecommunications Act 1997 (Cth) s 87.)]
 
 
[Clause 91(1) of Schedule 5 of the Broadcasting Services Act 1992 (Cth) provides a general limitation of liability for internet service providers and content hosts from Australian State and Territory laws for material hosted on behalf of another. On its face, Cl 91(1) appears to provide a strong immunity similar in effect to Section 230 of the US Communications Decency Act. The Federal clause renders any State or Territory legislation and any rule of common law or equity invalid to the extent that it: subjects internet hosts or ISPs to criminal or civil liability for hosting or transmitting content where the host is not aware of the nature of the content; or requires an internet host or ISP to monitor, make inquiries about, or keep records of, content hosted or transmitted. In practice, Cl 91(1) has not been greatly tested, and its operation is still unclear. Clause 91(1) provides little additional protection from the common law tort of defamation, as amended by legislation of Australian States and Territories, which applies to anyone who ‘publishes’ a defamatory imputation. While there are defences for ‘innocent dissemination’ which will apply to internet intermediaries who are publishers, these defences evaporate once the intermediary is put on notice, at which point Cl 91(1) will no longer apply. Recently, the provision was successfully relied upon in Fairfax Digital Australia & New Zealand Pty Ltd v Ibrahim [2012] NSWCCA 125 (13 June 2012) to invalidate overly broad suppression orders which may have required intermediaries to prevent access to prejudicial material, wherever that material may be hosted globally.]
 
 
[Setting out the particulars of the notice and takedown regime.]
 
 
[Sections 36(1) and 101(1) establish the exclusive right to ‘authorise’ the doing, in Australia, of any act comprised in the copyright. Whether an intermediary has ‘authorised’ an act of infringement is a question of fact assessed in all of the circumstances. ‘Authorise’ is defined as ‘sanction’, ‘approve’ or ‘countenance’ (UNSW v Moorhouse [1975] HCA 26), and assessed with specific regard to: (a) the extent (if any) of the person’s power to prevent the doing of the act concerned; (b) the nature of any relationship existing between the person and the person who did the act concerned (c) whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice. (Sections 36(1A), 101(1A)). ‘Mere conduit’ exceptions exists in Sections 39B and 112E, but the provisions have very little significance following iiNet. There are exceptions for temporary reproductions of works (Section 43A) or copies of other subject matter (Section 111A) made in the course of making or receiving a communication, but these does not apply if the communication itself is an infringement.]

BILLS AND PENDING PROPOSALS

Copyright Notice Scheme – Industry Code (pending registration under the Telecommunications Act 1997 (Cth)), April 2015
 
[An industry-negotiated graduated response Code was submitted to the Australian Communications and Media Authority (ACMA) for registration as an industry code under the Telecommunications Act 1997 (Cth) on 8 April 2015. The Code introduces a Copyright Notice Scheme that requires Internet Service Providers to pass on warnings to residential fixed account holders who are alleged to have infringed copyright. The scheme consists of an escalating series of infringements notices. These notices include educational material designed to deter copyright infringing behaviour and educate consumers about available and lawful content alternatives. Upon receipt of a third and final notice within a 12-month period, account holders may challenge the validity of the allegations by having them independently reviewed by a panel. The Code also provides for a ‘facilitated preliminary discovery’ court process. Where an account holder receives three notices within a 12-month period, a rightsholder can file an application for preliminary discovery in the Federal Court of Australia or the Federal Circuit Court seeking access to the account holder’s details. ISPs must “act reasonably” to facilitate and assist in this application. The Court retains discretion as to whether preliminary discovery should be granted. The Code has not yet been registered by the ACMA since ISPs and rightsholders have not yet been able to reach commercial agreement about who will bear the costs of the scheme. Once the Scheme is registered, approximately 70 of Australia’s largest ISPs will be required to comply with it. ISPs who fail to comply will be liable to civil penalties. The effectiveness of the Code will be independently evaluated 18 months after its commencement.]
 
Online Copyright Infringement – Discussion Paper, July 2014 (Public consultation) [ENACTED as the Copyright Amendment (Online Infringment) Act 2015 (see above)]
 
[The Australian Government Attorney-General’s and Communications’ Departments released a discussion paper proposing to extend the scope of secondary infringement, introduce website blocking provisions, and broaden the safe harbours in Australia’s copyright legislation. The proposal first aims to overturn the Roadshow Films Pty Ltd v iiNet Ltd (below) decision by enlarging the test for authorisation liability of all secondary actors. The proposed amendments reduce the importance of control to secondary liability and instead focus on whether the defendant took “reasonable steps” to prevent infringing behaviour. The discussion paper also includes proposals to give rightsholders the ability to apply to the court for injunctive relief requiring ISPs to block access to overseas websites facilitating illicit downloading of copyright-protected content. Finally, the proposal would rectify the copyright safe harbours to cover all entities providing network services, rather than only “carriage service providers”. Submissions to this public consultation are available here. It is still unknown when the Government will respond to the consultation.]
 
Australia-Korea Free Trade Agreement (KAFTA), signed on April 8th 2014 (Chapter 13, Intellectual Property Rights, Article 13.5)
 
[Proposing an amendment of the Copyright Act 1968 in due course to provide a legal incentive for online service providers to cooperate with copyright owners in preventing infringement due to the High Court’s decision in Roadshow Films Pty Ltd v iiNet Ltd (see below), which found that ISPs are not liable for authorising the infringements of subscribers.]

DECISIONS

Superior Courts

Supreme Court of the Australian Capital Territory (ACT), Piscioneri v Brisciani [2015] ACTSC 106, May 6, 2015
[defamation, hosting provider, forum operator, publisher]
 
[The proprietor of an online discussion forum was held liable in defamation for posts made by himself and third parties about the plaintiff. The self-represented defendant was found to be the ‘publisher’ of relevant posts on the basis that he had the ability to moderate and remove posts and actively participated in the discussion. ]
 
Supreme Court of New South Wales, Bleyer v. Google Inc. [2014] NSWSC 897, August 12, 2014
[defamation, search engine, Google, publisher]
 
[Bleyer brought a claim in defamation against Google on the basis of its organic search results. The New South Wales Supreme Court dismissed the claim on summary judgment on the basis that Google is not a publisher of its search results, at least prior to notification of a complaint. Google’s production of the search results involves no human input, apart from the creation of its search algorithm. The Court rejected the conclusion reached in Trkulja (below) and explicitly adopted the UK position on this point (Metropolitan International Schools Ltd v Designtechnica Corporation [2009] EWHC 1765; Tamiz v Google Inc [2012] EWHC 449).]
 
Supreme Court of New South Wales, Visscher v. Maritime Union of Australia (No 6) [2014] NSWSC 350, March 31, 2014
[defamation, webpage, hyperlink, publisher]
 
[New South Wales Supreme Court found the Maritime Union was liable for publishing defamatory imputations when it hyperlinked to a third party webpage. The Court held that the words “Read Full Story” showed the Maritime Union ‘published’ and accepted responsibility for the content of the hyperlinked webpage. The words conveyed to the reader that the Maritime Union considered the defamatory imputations in the hyperlinked article to be part of a complete version of events. Accordingly, the hyperlink amounted to a ‘publication’ of the defamatory imputations in the hyperlinked webpage. The Court stressed that the question of publication is always one of fact, not law; it was therefore inappropriate to decide that hyperlinking could never amount to publication.] 
 
High Court of Australia, Google Inc. v Australian Competition and Consumer Commission (2013) 249 CLR 435; [2013] HCA 1, February 6, 2013
[trade and commerce, misleading or deceptive conduct, advertising, search engine, Google, AdWords]
 
[The High Court of Australia held that Google did not engage in misleading or deceptive conduct under s 18 of the Australian Consumer Law (Schedule 2, Competition and Consumer Act 2010 (Cth)) by displaying or publishing misleading AdWords in organic search results. Google was not the author of the sponsored links; the advertisers were the authors, as they determined every relevant aspect of the sponsored links. Google's automated response (of displaying the sponsored link) to a user's search request merely assembled the information to be displayed as an advertisement. In doing so, Google neither adopted nor endorsed the misleading representations made by the advertisers, and was merely passing on the sponsored links 'for what they were worth'. Google was not relevantly different to physical intermediaries who publish, display or broadcast others' advertisements. The Court held that it was clear that ordinary and reasonable users of Google's search engine would have understood that the sponsored links, and the representations of those links, were created by the advertisers, and not adopted or endorsed by Google.]
 
Supreme Court of Victoria, Trkulja v. Google Inc. & Anor [2012] VSC 533, November 12, 2012
[defamation, search engine, google, publisher]
 
[Plaintiff’s personal information and photos in Google’s search engine were displayed together with pictures of major known criminals in Melburne, Australia. Plaintiff sued Google for defamation and required the content to be taken down. Plaintiff claimed that the search results were defamatory because created the false innuendo that he was involved with crime in Melburne. The jury in this case was asked to answer the question whether search engines are liable for publishing defamatory materials that are assembled for the first time in an automated manner by their software. Jury found that search engines, such as Google, are publisher of the defamatory material when their software produce and put together search results in accordance with its intended operation. The judge in this case instructed the jury that it was entitled to consider Google as an intentional online publisher or internet newsagent for the automated results even before it had notice of the defamatory materials, because the intrinsic algorithmic design was to associate and display search results in such a manner.]
 
Supreme Court of New South Wales, Court of Criminal Appeal, Fairfax Digital Australia & New Zealand Pty. Ltd. v. Ibrahim (2012) 83 NSWLR 52; (2012) 293 ALR 384; (2012) 263 FLR 211; [2012] NSWCCA 125, June 13, 2012
[criminal trial, suppression order, inconsistency with federal law, constitutional validity of suppression order, media and communications]
 
[Successful appeal against suppression orders that would oblige internet content hosts to remove, or otherwise restrict access to, content they were not aware of. The suppression orders, made pursuant to state law, purported to prohibit the disclosure, dissemination or access to content via the internet, of material referring to a criminal trial. The New South Wales Court of Criminal Appeal found the orders to be inconsistent with the safe harbors in Clause 91 of Schedule 5 the Broadcasting Services Act 1992 (Cth).]
 
High Court of Australia, Roadshow Films Pty Ltd v iiNet Limited [2012] HCA 16, April 20, 2012
[copyright, authorisation, ISPs, BitTorrent, indifference, countenance]
 
[The High Court of Australia held that iiNet, Australia’s second largest ISP, was not liable for authorising its customers’ infringement of copyright films downloaded over BitTorrent. The Australian Federation Against Copyright Theft, now the Australian Screen Association, organised a lawsuit brought by 34 movie and television studios, alleging that iiNet was liable by failing to act upon notices alleging that users were infringing their copyrights. The court found that iiNet’s power to contractually terminate the internet accounts of infringing users was only an indirect power to prevent the primary infringements and insufficient to ground liability. Termination would also expose iiNet to the risk of wrongful termination, and would go further than simply preventing infringement by also denying iiNet customers the non-infringing uses of the internet connection. Therefore iiNet’s inactivity in the face of infringement notices from copyright holders was not indifference amounting to authorisation. The court was critical of the appellants’ reliance on “countenance” to expand the core notion of “authorise” and highlighted the dangers of relying on synonyms for “authorise” found in the dictionary. The court also noted that the mere conduit exception, s 112E, was enacted from an abundance of caution and has no practical effect.Because iiNet had not authorised its customers acts of infringement, the High Court was not required to examine the operation of the safe harbours. The appeal decision of the Full Federal Court below had held that iiNet was not eligible for the protection of the safe harbours as it had not reasonably implemented an appropriate repeat infringer policy. iiNet had argued that its unwritten policy was to terminate the accounts of subscribers who had admitted to infringement or had been found by a court or other authority to have infringed copyright, or when ordered to do so by a competent court. Each member of the Full Federal Court found that this was not an appropriate policy (Justice Emmett described the “so-called policy” as “no more than a policy to obey the law” [264]).]
 
High Court of Australia, University of New South Wales v. Moorhouse [1975] HCA 26; (1975) 133 CLR 1
[copyright, authorisation, sanction, approve, countenance, photocopies]
 
[The University of New South Wales was found liable for authorising the infringements of those who used the photocopiers it provided in its library. The case was brought as a test case, with plaintiffs alleging that UNSW was liable for making the photocopy machines available within its library without supervision and without appropriate notices about copyright rules. The High Court held that “authorise” in s 36(1) of the Copyright Act 1968 means “sanction, approve, countenance”. Two approaches to evaluating authorisation liability emerged from the case. Justice Gibbs stated the test which would later be codified in ss 36(1A) and 101(1A): “It seems to me... that a person who has under his control the means by which an infringement of copyright may be committed – such as a photocopying machine – and who makes it available to other persons, knowing, or having reason to suspect, that it is likely to be used for the purpose of committing an infringement, and omitting to take reasonable steps to limit its use to legitimate purposes, would authorize any infringement that resulted from its use.” Justice Jacobs, with whom McTiernan ACJ agreed, instead focused on the implied invitation given by UNSW to library users to make use of the photocopying machines as they saw fit. By making this invitation without any limitations, UNSW had implicitly authorised any infringements that might result.]
 

Lower Courts

Federal Court of Australia, Dallas Buyers Club LLC v iiNet Limited (No. 4) [2015] FCA 838, August 14, 2015
[copyright, ISPs, hosting provider, BitTorrent, preliminary discovery, infringement]
 
[In a subsequent decision following Dallas Buyers Club LLC v iiNet Limited (see below), the court rejected Voltage Pictures’ draft demands as unreasonable and excessive. The court was satisfied Voltage could ask for the costs of a single copy of the film and an appropriately proportioned fee to recover its legal costs so far. However, the court rejected attempts to multiply these fees, potentially thousands of times, for other BitTorrent peers to whom the subscriber may have transmitted parts of the film. The court also rejected the claim for monetary penalties based on infringements of other copyright owners’ rights that account holders may have admitted to. ]>
 
Federal Court of Australia, Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317, 07 April 7, 2015
[copyright, ISPs, hosting provider, BitTorrent, preliminary discovery, infringement]
 
[The Federal Court of Australia ordered preliminary discovery from iiNet and five other Australian ISPs of the information of 4,726 account holders of IP addresses believed to have infringed copyright in the 2012 film Dallas Buyers Club. The Court was satisfied that there was sufficient evidence for a preliminary discovery application. In making the order, the court imposed several conditions on the applicants. First, the information of the account holders could only be used for the purposes of recovering compensation for the infringements and should not otherwise be disclosed without the leave of the Federal Court. Second, a draft of any letter the applicants intend to send to account holders associated with the identified IP addresses must be submitted to the court.
 
Federal Court of Australia, Rana v. Google Australia Pty. Ltd. and Google Inc. [2013] FCA 60, February 7, 2013
[defamation, search engine, Google, control, publisher]
 
[Rana claimed damages from Google Australia and Google Inc. in defamation for publishing links to defamatory websites in its search results. The Federal Court granted summary judgment to Google Australia, holding that it had no control over the search results. Leave was granted to serve Google Inc. extraterritorially, although the court expressed doubt as to whether Google could be described as a “publisher” of the defamatory imputations.]
 
Federal Court of Australia, Clarke v. Nationwide News Pty. Ltd. (t/as The Sunday Times) (2012) 289 ALR 345; [2012] FCA 307, March 27, 2012
[defamationracial discrimination, vilification, news article, website host, publisher, readership comments]
 
[A news website publisher was found liable for publishing vilifying comments posted by a reader. A claim was brought under s 18C the Racial Discrimination Act 1975 (Cth), which prohibits doing or saying anything unlawful on the basis of race. The court held that the news website was responsible for reader comments because it actively sought comments from readers, and reserved the right to not publish or to modify the comments. This level of control, combined with actual knowledge, was sufficient to find the newspaper responsible. Damages of $12,000 were awarded against Nationwide News.]
 
District Court South of Australia, Duffy v Google Inc [2011] SADC 178, November 15, 2011
[defamation, search engine, linking, snippets, interlocutory]
 
[Duffy alleged defamation against Google Inc and Google Australia Pty Ltd for search results that contained links to third-party pages containing defamatory material and extracted snippets that were themselves defamatory. The claim against Google Australia was rejected on the basis that there was no evidence it had the ability to remove the URL links and snippets from the Google Search index. The interlocutory application against Google Inc was denied on the balance of convenience without coming to a determination as to whether Google Inc was a ‘publisher’ of allegedly defamatory imputations.]
 
Full Court of the Federal Court of Australia, Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187, December 18, 2006
[copyright, authorisation, filesharing, hyperlinks, liability for linking, control]
 
[Cooper and his hosting provider, Comcen, were liable for authorising infringements by users of his website, mp3s4free.net, which linked to infringing MP3 files on third-party websites. The index was populated by links submitted by users, but no infringing material was stored or communicated by Cooper or ComCen. The court found that Cooper had the power to prevent infringement because he could have not provided his website in the first place (Branson J) or could have not accepted or subsequently disabled and removed links to infringing content (Kenny J). Second, the relationship between Cooper and users was commercial, because Cooper benefitted financially from sponsorship and advertisements on the website which directly increased with the volume of infringing content. Finally, the court held that Cooper did not take any reasonable steps to prevent or avoid the infringements. The disclaimer on his website (“When you download a song, you take full responsibility for doing so. None of the files on this site are stored on our servers. We are just providing links to remote files.”) was merely cosmetic and had no real effect. Justice Kenny concluded that the website “was in substance an invitation to use the hyperlinks provided” and that Cooper. The court also held Cooper’s ISP, Comcen, liable for authorisation. The court found that Comcen was aware of the high level of usage of Cooper’s website and its problems with copyright. Comcen also benefited from infringements: Cooper received free web-hosting in exchange for displaying the Comcen logo on his website. Comcen had the power to prevent the infringements because it had the power to withdraw the hosting of Cooper’s website, but that it had not taken the “reasonable steps” of either withdrawing hosting or placing pressure on Cooper to stop his website being used predominantly for copyright infringement.]
 
Federal Court of Australia, Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2005] FCA 1242, September 5, 2005
[copyright, authorisation, peer-to-peer, filesharing, filters]
 
[Sharman, who operated the Kazaa filesharing platform, were found liable for authorising the infringements of its users. The court held that Sharman knew that the Kazaa system was primarily used to share copyright material. Infringing activity attracted more visitors to the Kazaa site, which benefitted Sharman through advertising revenue. Although there was no Kazaa central server through which Sharman could control users’ activities, the court held that Sharman had the power to prevent infringements because it could have forced an upgrade of the software to inhibit infringement. The court considered, for example, that a keyword filter could have been implemented, or Sharman could have flooded users’ search results with files containing only copyright infringement warnings. Since Sharman had the power to take these steps but did not, the court found Sharman liable for authorising infringement.]

OTHER RESOURCES

 
[The Australian Government Attorney-General’s Department released a public consultation paper in October 2011 concerning the scope of the copyright safe harbour provisions. Submissions were accepted until 22 November 2011 and are available at the link above. As at 11 January 2014, the Australian Government has not issued a formal response and consideration of the scope of the safe harbour scheme is ongoing. In particular, the Australian Government is considering whether the safe harbours should be expanded to cover intermediaries other than Internet Service Providers.]

CONTRIBUTORS

Nicolas Suzor
Email: n.suzor at qut.edu.au
 
Kylie Pappalardo
Email: kylie.pappalardo at gmail.com
 
Alex Button-Sloan,
QUT School of Law
Email: a.buttonsloan at qut.edu.au
 
Rachel Choi
QUT School of Law

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