On 18 October 2018, the Federal Government introduced a bill to broaden the rights of copyright owners in relation to overseas websites which infringe their copyright: Copyright Amendment (Online Infringement) Bill 2018 (Cth).
The bill builds on laws introduced in June 2015 (section 115A of the Copyright Act 1968 (Cth)), under which a copyright owner can apply to the Federal Court for orders requiring a “carriage service provider” (eg, an ISP) to take reasonable steps to disable access to an overseas “online location” (website) if:
· the website infringes, or facilitates the infringement of, copyright; and
· that is the primary purpose of the website.
A key objective of the current laws is to provide copyright owners with a more efficient form of legal redress to combat online copyright infringement given the evolving nature of internet technologies and the difficulties in identifying, locating and bringing legal action against operators of overseas websites typically the focus of applications under these laws, such as “The Pirate Bay”.
This area can be particularly problematic given the intersecting interests of copyright owners, who may want to expand the law to make it easier and quicker to deal with infringing content online, contrasted with the public interest in avoiding or minimising internet censorship. The issue arises most acutely in the case of websites which make available both legitimate and infringing content. The primary question is at what level of infringing content does the website cross-over from being legitimate to illegitimate and thereby an appropriate candidate for a Federal Court injunction under these laws.
The introduction of the bill follows the Federal Government’s February 2018 “Review of Copyright Online Infringement Amendment”. Information about the review can be accessed here. Although a formal report has not been issued by the Government, the Regulatory Impact Statement (RIS) to the Explanatory Memorandum (EM) sets out some comments relating to the review. Copies of the EM and RIS can be accessed here.
The key changes the bill proposes introducing to the existing laws are as follows.
A new “primary effect” test
The bill proposes giving the Court the power to grant an injunction where the overseas website has the “primary effect” of infringing or facilitating the infringement of copyright. This would be in addition to the Court’s power to do so where this is the “primary purpose” of the website.
The EM says that some overseas websites “have the primary effect of facilitating large-scale copyright infringement”, but they might not fall under the current laws “as it could be difficult to establish that this is the ‘primary purpose’ of the online location”.
Based on the EM and RIS, it appears that a particular focus of the Government is file-hosting services, such as “cyberlockers”. The RIS notes that these are “very hard to monitor, as they employ one-to-one connectivity” and are “often used to trade infringing movie and music files”. The RIS identifies “openload.co”, “rapidgator” and “uploaded.net” as being particularly problematic.
The RIS refers to concerns raised about sites such as “Pinterest” and cyberlocker sites (which are used by legitimate small businesses to transfer large files) being caught by the new laws because they have the “primary effect” of facilitating copyright infringement.
The RIS optimistically suggests that “copyright owners would be more likely to seek cooperation from the operators of popular websites to address online infringement issues” and that if an application for an injunction was made, “the operator of a popular website would be more likely to appear in the Court and oppose the making of an order”.
The RIS also suggests that the risk of an injunction being ordered would be “extremely low” given the factors the Court is required to take into account in determining whether to grant an injunction against a popular site with a large amount of legitimate material. These factors include whether or not the owner or operator of the online location demonstrates a disregard for copyright generally.
To date, in determining the “primary purpose” of a website, the Courts have considered the use that is or may be made of the website. In Roadshow Films Pty Ltd v Telstra Corp Ltd (2016) 122 IPR 81, Nicholas J said (at ):
The purpose of the online location may be ascertained by a consideration of the use that is or may be made of it. If the Court is satisfied that the principal activity for which the online location is used or designed to be used is copyright infringement or the facilitation of copyright infringement, then it will be open to conclude that the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright.
In relation to cyberlockers, during the second reading speech, the Minister said that “at the moment, there is doubt about whether these sites have the ‘primary purpose’ of infringing copyright, or facilitating the infringement of copyright. The bill will enable sites such as these to be brought within the scheme.”
However, if the primary purpose of a website is determined by reference to the principal activity for which it is used or designed to be used, it is unclear how a Court would assess what its “primary effect” is. Further, if the principal activity of a cyberlocker, for example, is non-infringing (such that its “primary purpose” is non-infringing), it is unclear how the Court could find that it nevertheless has the “primary effect” of infringing or facilitating the infringement of copyright. The EM does not provide further guidance on this point.
Internet search engine providers
The bill also proposes making internet search engine providers subject to the website blocking laws.
Specifically, the bill proposes that copyright owners would be able to seek orders requiring internet search engine providers to take whatever steps the Court considers reasonable to not provide Australian users with search results relating to websites to which access has been disabled by reason of an injunction.
According to the EM, the intention of this change is to “reduce the visibility and availability of infringing material to users located in Australia”. During the second reading speech, the Minister said the effectiveness of blocking orders can be undermined by online search engines which provide alternative pathways to blocked websites.
The RIS notes the search engine market in Australia is dominated by Google (92%) and Bing (5%), and they are expected to be the only providers subject to the proposed new laws in practice. The RIS asserts that Google and Bing have the relevant capabilities to comply with an injunction of this kind in light of a “code of practice” they agreed to in the UK, under which they demote UK search results to infringing websites, and on the basis of other cases in which Google has delisted websites from its search results.
New domain names, URLs and IP addresses
Copyright owners currently have the right to seek extensions of injunctions to cover new domain names, URLs and IP addresses as they emerge to the same (blocked) website. However the RIS states that this process under the current laws is “too slow”.
The bill proposes “clarifying” that the Court can grant injunctions extending to domain names, URLs and IP addresses which copyright owners and ISPs/internet search engine providers agree “have started to provide access to the online location after the injunction is made”.
The EM says that this “clarifies that the Federal Court is able to issue responsive and adaptive injunctions. The intention is to build greater flexibility in the scheme so that infringing online locations can be capture more quickly as they relocate and re-emerge, saving the parties and the Court time and expense.”
The extent to which internet search engine providers and/or ISPs will swiftly agree with copyright owners that new domain names, URLs and IP addresses provide access to the same “online location” is unclear. Indeed, the RIS notes that modifications were made to the draft bill following further consultations with stakeholders to make it clearer that online search engine providers “cannot be coerced or forced into agreeing with copyright owners”. This may suggest that copyright owners expressed some concern about the proposed new laws, and perhaps foreshadowed that they may not be willing to swiftly agree these matters with copyright owners.
Presumption regarding location
Finally, rather than requiring copyright owners to prove that an “online location” is located outside Australia, the bill proposes introducing a rebuttable presumption that the relevant online location is located outside Australia.
The EM says that this change addresses the difficulty which copyright owners face in proving where an online location is based “given the use of proxy servers and other devices which can mask the true location of an infringing online location”.