International Wushu Federation v Google LLC

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FEDERAL COURT OF AUSTRALIA

International Wushu Federation v Google LLC [2021] FCA 904

File number(s): VID 264 of 2021
Judgment of: ROFE J
Date of judgment: 4 August 2021
Catchwords: PRACTICE AND PROCEDURE – application for preliminary discovery pursuant to r 7.22 of the Federal Court Rules 2011 (Cth) – allegedly defamatory comments made online – allegations of copyright infringement – respondent did not appear – application granted
Legislation:

Copyright Act 1968 (Cth)

Jurisdiction of Courts (Cross-Vesting) Act1987 (Cth)

Civil Law (Wrongs) Act 2002 (ACT)

Cases cited:

Allphones Retail Pty Ltd v Australian Competition and Consumer Commission (2009) 259 ALR 354

Boyd v Automattic Inc [2019] FCA 86

Dallas Buyers Club LLC v iiNet Ltd (2015) 245 FCR 129

Dow Jones & Company Inc v Gutnick (2002) 210 CLR 575

Hooper v Kirella Pty Ltd (1999) 96 FCR 1

Kulkulka v Google LLC [2020] FCA 1229

Rana v Google Inc (2017) 254 FCR 1

Siemens Industry Software Inc v Telstra Corporation Ltd [2020] FCA 901

Division: General Division
Registry: Victoria
National Practice Area: Intellectual Property
Sub-area: Copyright and Industrial Designs
Number of paragraphs: 48
Date of hearing: 27 July 2021
Counsel for the Prospective Applicant: Mr G Mukherji
Solicitor for the Prospective Applicant: PH Solicitor
Counsel for the Prospective Respondent: The Prospective Respondent did not appear

ORDERS

VID 264 of 2021
BETWEEN:

INTERNATIONAL WUSHU FEDERATION

Prospective Applicant
AND:

GOOGLE LLC

Prospective Respondent

ORDER MADE BY:

ROFE J

DATE OF ORDER:

27 JULY 2021

THE COURT ORDERS THAT:

1.Google shall provide to the applicant’s solicitors by email at paul@phsolicitor.com.au

as soon as is reasonably practicable and in any event within 21 days of having received via certified mail this Order, the following information (to the extent that it is  available):

(a)the YouTube subscriber registration information of the Google account holder who uploaded the following YouTube videos to the Wushuleaks Channel:

(i) and

(ix)

(Wushuleaks Videos)

(b)the IP logins for the YouTube account associated with the Wushuleaks Videos;

2.No provision of this order is to be construed as requiring Google to provide to the applicant, the contents of any email sent to or from the Google account.

3.The applicant acknowledges that the respondent may inform the YouTube Account Holder of this request, in accordance with Google’s usual policies.

4.Google may apply to the court at any time to vary or discharge this Order, subject to first informing the applicant’s solicitors by email.

5.To the extent that the information disclosed pursuant to this Order contains personal data, the applicant will hold such data in accordance with all applicable data protection legislation and ensure only proportionate and appropriate use of such data.

6.No order as to costs.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.


REASONS FOR JUDGMENT

ROFE J:

INTRODUCTION

  1. The prospective applicant, the International Wushu Federation (IWUF), by originating motion pursuant to r 7.22 of the Federal Court Rules 2011 (Cth) (FCR), seeks an order that…

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Details
Case
[2021] FCA 904
Decision Date

CaseChat Overview and Summary

The International Wushu Federation (IWUF), the governing body for wushu worldwide, sought an order from the Federal Court of Australia for preliminary discovery against Google LLC in relation to a YouTube channel named Wushuleaks. The IWUF alleged that the channel had reproduced its copyrighted works and contained defamatory comments. The Wushuleaks Channel did not appear before the court, and the IWUF's application was successful.

The court had to determine whether the IWUF possessed a reasonable belief that it may have a right to obtain relief against the operator of the Wushuleaks Channel, and if the proposed claims were not merely speculative. The IWUF argued that it was the owner of copyright subsisting in the material it claimed was infringed and that the court should be satisfied that it may have a right to obtain relief for copyright infringement against the operator of the Wushuleaks Channel. The court held that the IWUF had satisfied the threshold for a prospective applicant and that its claim for copyright infringement had a real prospect of success.

The court granted the IWUF's application for preliminary discovery and ordered Google to provide the IWUF's solicitors with the YouTube subscriber registration information of the Google account holder who uploaded the Wushuleaks videos, and the IP logins for the YouTube account associated with the Wushuleaks videos. The court noted that the disclosure of personal data was subject to applicable data protection legislation, and that the IWUF would hold such data in accordance with all applicable data protection legislation and ensure only proportionate and appropriate use of such data. The court did not make an order as to costs.

This case highlights the importance of the reasonable belief requirement for a prospective applicant and the threshold for a claim not to be merely speculative. The court's decision also emphasises the need for the prospective applicant to establish that it may have a right to obtain relief against the prospective respondent, rather than having to establish the existence of a prima facie case against the prospective respondent.

Orders

Orders of the court

1. Google shall provide to the applicant’s solicitors by email at paul@phsolicitor.com.au

as soon as is reasonably practicable and in any event within 21 days of having received via certified mail this Order, the following information (to the extent that it is available):

(a) the YouTube subscriber registration information of the Google account holder who uploaded the following YouTube videos to the Wushuleaks Channel:

(i) https://www.youtube.com/watch?v=dcjoxD4Dz5Y&t=3s&ab_channel=wushuleaks;

(ii) https://www.youtube.com/watch?v=ly-26Ul19bg&t=3s&ab_channel=wushuleaks;

(iii) https://www.youtube.com/watch?v=m3ayP6-xBE&t=18s&ab_channel=wushuleaks;

(iv) https://www.youtube.com/watch?v=Sjax49kbT34&t=111s&ab_channel=wushuleaks;

(v) https://www.youtube.com/watch?v=t-QpZ32GX_8&t=2s&ab_channel=wushuleaks;

(vi) https://www.youtube.com/watch?v=RSK2lQO_yg&t=202s&ab_channel=wushuleaks;

(vii) https://www.youtube.com/watch?v=vv61l_WXK5E&ab_channel=wushuleaks;

(viii) https://www.youtube.com/watch?v=U1XPqj9lJYU&ab_channel=wushuleaks; and

(ix) https://www.youtube.com/w7atch?v=ftGiUlXF9Js&ab_channel=wushuleaks

(Wushuleaks Videos)

(b) the IP logins for the YouTube account associated with the Wushuleaks Videos;

2. No provision of this order is to be construed as requiring Google to provide to the applicant, the contents of any email sent to or from the Google account.

3. The applicant acknowledges that the respondent may inform the YouTube Account Holder of this request, in accordance with Google’s usual policies.

4. Google may apply to the court at any time to vary or discharge this Order, subject to first informing the applicant’s solicitors by email.

5. To the extent that the information disclosed pursuant to this Order contains personal data, the applicant will hold such data in accordance with all applicable data protection legislation and ensure only proportionate and appropriate use of such data.

6. No order as to costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

In addition, the definition of “prospective applicant” in FCR r 7.21 as a person who “reasonably believes that there may be a right for the person to obtain relief against another person who is not presently a party to a proceeding in the Court” means that IWUF must possess such a belief and that belief must be reasonable: Dallas Buyers Club LLC v iiNet Ltd (2015) 245 FCR 129 at [52] (Perram J).The Evidence Mr Missingham gives evidence that IWUF is the governing body for wushu worldwide. Traditional wushu is commonly known as Kung Fu and is a martial art originating in China designed for self-defence and as an art of war. IWUF was established on 3 October 1990 and registered in Lausanne in Switzerland as a not-for-profit organisation. IWUF is recognised by the International Olympic Committee as the sole worldwide governing authority for wushu in all its forms. IWUF is also a member of both the Association of IOC Recognised International Sports Federations and the Global Association of International Sports Federations. IWUF has 155 national/territorial members across five continents, including the Oceania Kung Fu Wushu Federation (OKWF) of which Mr Missingham is, and has been since 2015, the President. The OKWF has been in existence since 1998 and represents eleven Oceania countries, including Australia. The aims of IWUF as set out in its Constitution include, amongst others, to:(a)promote and encourage the development and practice of wushu in all of its manifestations throughout the world;(b)organise and approve international wushu competitions and activities and to formulate standards for approval and certifying of international wushu judges and coaches;(c)promote cooperation, friendly relations and mutual understanding among its members;(d)actively promote and popularise wushu and improve health worldwide through its practice; and(e)respect the principles of democracy, equality and harmony within the sport of wushu. IWUF has oversight and control over all official wushu competitions conducted throughout the world. The IWUF constitution provides that IWUF owns all rights relating to the IWUF name, domain name, emblem, flag and anthem, and IWUF organised and/or sanctioned competitions and activities including all rights relating to their organisation, exploitation, broadcasting, recording, representation, reproduction, access and dissemination in any form and by any means or mechanism. IWUF is also the owner of all media rights to IWUF events, including all television, radio, film, internet and other media rights. Mr Horvath's evidence is that IWUF is the ultimate holder of copyright and intellectual property rights associated with competitions, demonstrations and classes teaching wushu around the world. This includes ownership of copyright in photographs and footage of competitions, marketing and advertising materials and educational materials and manuals. Mr Missingham gives evidence that in late 2019 he became aware of a channel on the YouTube platform named Wushuleaks. He gives 24 examples of videos posted on the Wushuleaks Channel between October 2019 and August 2020, which were viewed and downloaded in Australia and which he says reproduce copyright works of IWUF and contain statements which are defamatory. The Wushuleaks Channel provides no contact details for its operator and has no private messaging facility by which to contact the operator.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Mr Horvath gives evidence of IWUF's unsuccessful attempts to ascertain the identity of the Wushuleaks Channel through correspondence with Google. Consideration The prospective applicant may have a right to obtain relief IWUF contends that it may have a right to obtain relief against a prospective respondent for infringement of copyright in certain copyright works of which IWUF is the copyright owner, and for defamation. IWUF submits that the proceedings contemplated by it against the operator of the Wushuleaks Channel for breach of copyright and defamation have prospects of success and are not merely speculative. IWUF does not need to establish the existence of a prima facie case against a prospective respondent. It is enough if IWUF can show that it may have a right to obtain relief. This threshold has been described as “not onerous”: Kulkulka v Google LLC [2020] FCA 1229 at [22]. The foreshadowed claim must have some prospect of succeeding, in that it must be a claim within the jurisdiction of this court and which is not so near to being hopeless as would reasonably and properly justify the claim being described as “merely speculative” (Allphones Retail Pty Ltd v Australian Competition and Consumer Commission (2009) 259 ALR 354 (Allphones) at [54] (Foster J)). Success in this context requires a cause of action known to the law which has a real (as opposed to fanciful) prospect that some remedy might be granted: Allphones at [54], Hooper v Kirella Pty Ltd (1999) 96 FCR 1 at [31] to [34] (Wilcox, Sackville and Katz JJ). Sections 36 and 101 of the Copyright Act 1968 (Cth) relate to copyright infringement of works and subject matter other than works. Copyright in works and subject matter other than works is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright. IWUF contends that it is the owner of copyright subsisting in the IWUF material it says is infringed, and that the Court should be satisfied that it may have a right to obtain relief for copyright infringement against another person who is not a presently a party to this proceeding, the operator of the Wushleaks Channel for the unauthorised reproduction of that material. IWUF further contends that it is reasonable for IWUF to believe that it has a right to obtain relief for copyright infringement from the operator of the Wushuleaks Channel. This Court has jurisdiction to hear a prospective claim in relation to the infringement of IWUF's copyright as a result of ss 115 and 131C of the Copyright Act 1968 (Cth). It is unnecessary and undesirable to undertake a detailed consideration of the merits of the proposed claims for relief in this application. It is sufficient for this application that I am satisfied on the material before the Court that IWUF may have a claim for relief for copyright infringement against the operator of the Wushuleaks Channel in respect of the unauthorised reproduction of its copyright material including its footage and photographs. I am also satisfied that, on the basis of the evidence given by Mr Missingham, IWUF holds a reasonable belief in this respect.