The recent decision in Universal Music Australia Pty Limited v TPG Internet Pty Ltd  FCA 435 (TPG Internet) heralds another win for copyright owners and exclusive licensees protecting their rights from pirate websites operating outside Australia.
On 28 April 2017, Burley J of the Federal Court of Australia found in favour of the applicants1 who took action against more than 30 respondents2over a website known as ‘KickassTorrents’ (KAT). The KAT website used peer-to-peer file sharing platform BitTorrent to share data that included sound recordings owned by or exclusively licensed to the applicants.
TPG Internet was decided in the wake of the Roadshow Films Pty Ltd v Telstra Corporation Ltd  FCA 1503 (Roadshow), in which the owners and exclusive licensees of copyright in films took similar action over the use of websites to share film content. Both cases revolved around s 115A of the Copyright Act 1968 (Cth) (Copyright Act), a provision which came into force in late June 2015.
The TPG Internet case is noteworthy not just because it considers the application of s 115A in the context of music, but also for the way in which Burley J decided costs – an issue his Honour considered to be “[t]he only substantive matter outstanding between the parties”.3
What is section 115A of the Copyright Act?
Section 115A is a ‘no-fault remedy'4 enacted for the purpose of disrupting the supply of infringing content to Australian internet users from overseas-based websites. The provision enables owners of copyright to apply to the Federal Court for injunctive relief against a Carriage Service Provider (CSP). The Court may grant orders requiring the CSP to take reasonable steps to disable online access to an online location, or website, if it is satisfied that:
- the CSP provides access to the website outside Australia
- the website infringes, or facilitates an infringement of, the copyright
- the primary purpose of the website is to infringe, or to facilitate the infringement of, copyright.
Findings in TPG Internet
Burley J was satisfied, and the respondents did not dispute, that the applicants had established the elements necessary for injunctive relief. His Honour granted injunctions against the 33 respondent CSPs, ordering them to disable internet user access by way of implementing a Domain Name System Blocking (DNS Blocking) to the KAT website. The orders were similar to those made by Nicholas J in the Roadshow case, where different websites also used the BitTorrent platform to share copyrighted content.
Another common thread linking the two cases was the dispute about costs – a matter on which the Copyright Act is silent. In particular, the issues raised during TPG Internet proceedings were:
- the quantum of implementing the DNS Blocking mechanisms and who should bear the costs of complying with them
- who should bear the legal costs of proceedings.
Burley J found that the applicants should pay the respondents’ compliance costs for the blocking orders. In reaching this conclusion, his Honour accepted the respondents’ argument that the applicants receive a commercial benefit from s 115A of the Copyright Act, and likened its operation to:
… processes which use the coercive powers of the Court to require third parties to take actions for the benefit of a litigant under principles developed pursuant to the Norwich Pharmacal case, preliminary discovery and also the administration of subpoenas and the like. … [T]hose remedies are available against innocent third parties who are generally recompensed by the applicant for costs incurred in compliance.5
While the applicants contended that the respondent telecom companies also benefitted from s 115A, his Honour dismissed these arguments. Even if the applicants could prove that the respondents enjoyed some derivative commercial benefit, Burley J held that this would not “displace the fact that the commercial benefit for the action sits most squarely with the applicants”.6The quantum for compliance costs was set at $50 per domain name, of which there were seven in the KAT website network. Given that the total quantum was rather small at $350, the dispute about those costs was evidently one of principle.
In respect of legal costs, Burley J adopted the same form of order made by Nicholas J in Roadshow, that the applicants pay the respondents’ costs in relation to preparing evidence and written submissions and making oral submissions, in relation to the issue of compliance costs.7
For any future participants in litigation of this kind, it is worth bearing in mind Burley J’s comment that the legislative scheme intended that there be constructive dialogue between parties, with a view to reaching an agreement as to how these types of costs will be dealt with.8