The Federal Court has ordered a number of Australian ISPs to divulge the names and physical addresses of customers associated with 4,726 IP addresses to the owners of the film Dallas Buyers Club.

In Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317, the applicants were successful in obtaining an order for preliminary discovery against certain ISPs to help identity persons who had allegedly infringed copyright by making the film available online through the BitTorret network.

Infringement of copyright

For the purposes of a preliminary discovery application, the applicants did not need to establish a prima facie case of infringement, but simply that the contemplated suit had some prospect of succeeding.

The applicants did not contend that the end-users had “copied” the film or that downloading the film would necessarily infringe copyright. The applicants alleged that particular BitTorrent users, identified through an IP address, had infringed their exclusive right to make the film available online (ie. to communicate the film to the public). In this instance, the applicants alleged that BitTorrent users infringed copyright by making a whole copy of the film available to other BitTorrent users, or by downloading and sharing small “slivers” of the film with other BitTorrent users online.

For the purposes of preliminary discovery, Perram J was comfortably satisfied that downloading slivers of the film from a single IP address and sharing those slivers with other users was strong circumstantial evidence that the end-user was infringing copyright by communicating the film to the public.

Entitlement to sue for infringement

The ISPs disputed the applicants’ entitlement to sue by reason of certain assignments and distribution agreements. However, Perram J found that Dallas Buyers Club LLC was the “the person by whom the arrangements necessary for the making of the film were undertaken” and therefore the original copyright owner.

Further, even if copyright had been assigned to another party as alleged by the ISPs, Voltage Pictures LLC had been granted rights as an exclusive licensee to do certain acts, including commencing infringement proceedings. As such, Perram J was satisfied that either Dallas Buyers Club LLC as the copyright owner or Voltage Pictures LLC as exclusive licensee had standing to sue for infringement.

Privacy concerns

The ISPs sought to avoid the order for preliminary discovery on a number of discretionary grounds, including privacy considerations. Perram J noted that the Australian Privacy Principles enshrined in the Privacy Act 1988 and the protections contained in the Telecommunications Act 1997 are of significant value.

In this regard, Perram J imposed conditions and safeguards to ensure that personal information remains private. In particular, the information can only be used to identify end-users using BitTorrent to download the film, negotiating with end-users and, if necessary, suing end-users for infringement. The applicants must also submit to the Court for approval a draft of any letter they propose to send to account holders.

Conclusion

Following their unsuccessful attempt to sue ISPs directly for authorising infringement of copyright by its customers, this case represents a significant win for rights holders. It will provide them with the names and addresses of account holders whose IP addresses have been identified as being involved in the infringing conduct.

However, the applicants still need to identify the individual who actually communicated the film to the public by making it available online. It remains to be seen how this process will unfold given the substantial amount of media attention this case has received and the Australian Government’s recent moves to combat online copyright infringement.