What you need to know
- On 10 December 2018, section 115A of the Copyright Act 1968 (Cth) was amended to significantly expand the powers of courts to order injunctions to disable access to overseas websites (and other online locations, such as mobile apps) that have the primary purpose or effect of infringing or facilitating the infringement of copyright.
- The amendments to section 115A of the Act empower courts, amongst other things, to grant injunctions against search engine providers (such as Google, Yahoo! & Bing) to remove from search results any domain names, URLs and IP addresses that may provide access to websites and other online locations the subject of an injunction.
- The injunctive relief that can be granted by a court may be the subject of flexible conditions. This may allow the parties to agree on additional domain names, URLs and IP addresses to be blocked by carriage service and search engine providers after an injunction is granted, and without the expense of returning to court to seek those amendments.
Avast ye pirates: a win for copyright owners
In a move that has been hailed as a significant win for copyright owners, the Copyright Act 1968 (Cth) (Act) was amended on 10 December 2018, in order to expand the powers given to courts to deal with the scourge of online piracy driven by numerous copyright infringers based outside Australia.
The amendments, which were passed with bipartisan support under the Amendment (Online Infringement) Bill 2018, considerably amend the scope and application of the measures provided for by section 115A of the Act, including by:
- introducing a rebuttable presumption that the website or online location that is the subject of a proceeding brought pursuant to section 115A is located outside of Australia (thereby reducing the evidentiary burden on copyright owners).
- altering the threshold for the grant of injunctive relief to ensure the legislation's applicability to online locations that are shown to have the "primary effect" (and not just the "primary purpose") of infringing or facilitating the infringement of copyright in Australia or elsewhere.
- enabling copyright owners to seek injunctions requiring online search engine providers (other than those that are exempted) to take such steps as the court considers reasonable to remove search results that refer users to impugned websites or other online locations.
- clarifying that injunctions may be the subject of flexible conditions, to allow copyright owners to block additional domain names, URLs and IP addresses without the parties having to attend court.
As with the previous regime, section 115A provides that Carriage Service Providers (CSPs) and Search Engine Providers (SEPs) are not liable for any costs in relation to the proceedings unless they enter an appearance or take part in the proceedings (for example, to resist the grant of injunctive relief).
A treasure trove of amendments: What's new?
Reducing the burden
The amendments significantly reduce the burden on copyright holders who wish to bring an action against the operator of an allegedly infringing website or other online location by introducing a rebuttable presumption that the online location is based overseas. The amendment addresses a key criticism of the previous version of section 115A, which required rights holders to undertake the complex exercise of proving the location of infringing online locations that may employ proxy servers and other techniques to disguise their geo-location.
Primary effect test
The amendments also broaden the scope and application of the injunction regime to ensure that websites and other online locations that can be shown to have the "primary effect" of infringing, or facilitating the infringement of copyright, may be dealt with. This is significant because under the previous scheme some overseas online locations that facilitated large scale infringement, such as file-hosting websites, could avoid being ensnared by an injunction because it was difficult to establish the "primary purpose" of the website (including, for example, because of the difficulties inherent in proving the intention of the website operator or users of that website).
The new threshold test will ensure that a broader range of overseas websites and file-hosting services (such as cyber-lockers) fall within the scope of the section such that action can be taken to protect rights holders. However, it remains to be seen how the "primary effect" test will be applied in practice.
Despite the increase in scope, it is intended that websites that are operated for a legitimate purpose, but which might contain a small percentage of infringing content, will not be ensnared by the revised regime.
Search engine providers (SEPs)
The amendments have significant ramifications for search engines given that the amendments allow a court to require a SEP to take such steps as the court considers reasonable to, for example, remove, demote or disable search results for sites that refer users to online locations blocked under the scheme.
Previously the court was limited to requiring only CSPs (such as ISPs) to take action against infringing websites through the injunction regime. However this limitation was widely criticised given that search engine search results leading to various infringing websites often remained live and were available to be clicked on and used by Australian users.
In the ordinary course, the regime will be applied to large search engine providers operating in Australia, including Google, Yahoo! and Bing. However, under the amendments, the relevant Minister has the power to declare, by legislative instrument, that particular online SEPs, or classes of online SEPs, be exempt from the scheme, including smaller operators, such as entities that offer internal (intranet) search functions and entities that provide search functionality that is limited to their own sites or to particular content or material (such as real estate, employment websites or library databases).
Flexible injunctions
To prevent the operators of overseas websites (and other online locations) from circumventing injunction orders by using a different domain name or creating a different URL for the purpose of providing a pathway to infringing content, the court is empowered to grant injunctions that have flexible terms and conditions. According to section 115(2B), such injunctions can apply to domain names, URLs and IP addresses that come into existence after an injunction is granted provided that the parties agree to add those additional pathways to the terms of the injunction.
The flexibility has been enshrined in the amendments for the purpose of resolving any ambiguity with respect to the previous injunction regime and comes with the added benefit of saving the parties and the court the time and expense of having to return to court to amend injunction orders.
For the avoidance of any doubt, the Explanatory Memorandum to the Amendment (Online Infringement) Bill 2018 specifies that any injunctions issued by a court are limited in application to Australia, meaning that a court cannot, for example, require a SEP to block search results worldwide.
Navigating uncharted waters: the way forward
The amendments fortify an already effective online infringement scheme and are representative of the government's commitment to deterring infringement of Australian intellectual property rights. The amendments improve the adaptability and responsiveness of the relevant provisions of the Copyright Act 1968 (Cth) in light of the increasingly nefarious tactics of online pirates.
The amendments are also in line with steps taken by regulators in other jurisdictions to place greater responsibility upon SEPs and other intermediaries for copyright infringement, a trend that is expected to continue (see for example, the EU Directive on Copyright in the Digital Single Market).
However, given the cost and expense of prosecuting proceedings for an injunction, the regime provided for under section 115A may ultimately only be engaged with as a last resort. Provided that the relevant parties reach agreement on which sites to block, and the impugned website or overseas location does not resist the measure, a section 115A injunction is moot.
We consider that copyright owners that wish to avail themselves of the mechanisms under section 115A should seek advice and engage in correspondence with relevant stakeholders as early as possible. It may be that a commercial outcome can be reached cost effectively through negotiation and without the need to prosecute an injunction against a wayward pirate.
Authors: Lachlan Wright, Lawyer; Paul Dimitriadis, Senior Associate; and Robert Todd, Partner.
