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Roadshow Films Pty Ltd v iiNet Ltd

Roadshow Films Pty Ltd v iiNet Ltd

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HIGH COURT OF AUSTRALIA
FRENCH CJ,
GUMMOW, HAYNE, CRENNAN AND KIEFEL JJ
ROADSHOW FILMS PTY LTD & ORS APPELLANTS
AND
IINET LIMITED RESPONDENT
Roadshow Films Pty Ltd v iiNet Limited [2012] HCA 16
20 April 2012
S288/2011
ORDER
Appeal dismissed with costs.
On appeal from the Federal Court of Australia
Representation
A J L Bannon SC with J M Hennessy SC and C Dimitriadis for the appellants (instructed by Gilbert + Tobin Lawyers)
R Cobden SC with R P L Lancaster SC and C J Burgess for the respondent (instructed by Herbert Geer Lawyers)
M J Leeming SC appearing as amicus curiae on behalf of the Australasian Performing Right Association Limited (instructed by Banki Haddock Fiora)
P W Flynn appearing as amicus curiae on behalf of the Communications Alliance Limited (instructed by Carwardine Legal Solicitors)
Notice: This copy of the Court's Reasons for Judgment is subject to formal revision prior to publication in the Commonwealth Law Reports.

FRENCH CJ, CRENNAN AND KIEFEL JJ. This appeal from the Full Court of the Federal Court of Australia (Emmett and Nicholas JJ; Jagot J dissenting)[1] concerns the authorisation of copyright infringement by a person who is neither the owner nor the licensee of a copyright under ss 101(1) and 101(1A) of the Copyright Act 1968 (Cth) ("the Copyright Act").
[1]Roadshow Films Pty Ltd v iiNet Ltd (2011) 194 FCR 285.
The 34 appellants are Australian and United States companies which either own or exclusively license the copyright in thousands of commercially released films and television programs, including a sample of 86 films in evidence before the courts below ("the appellants' films"). The respondent ("iiNet") is an Australian internet service provider ("ISP") which provides its customers with access to the internet in return for a monthly fee.
A number of parties sought leave to intervene or to appear as amicus curiae. Leave to appear as amicus was granted to the Australasian Performing Right Association Limited, which supported the appellants, and to the Communications Alliance Limited, which supported the respondent.
As will appear, some customers of iiNet have used the internet access provided by iiNet to infringe copyright in the appellants' films by making the films available online using the BitTorrent peer-to-peer file sharing system, explained below. The appellants claim that iiNet has infringed copyright in their films by authorising its customers' infringing acts.
The key question in the appeal, whether iiNet authorised its customers' infringing acts, "depends upon all the facts of the case"[2]. The facts and circumstances on which the appellants rely to support their contention that iiNet authorised its customers' infringing acts include the following:
.the provision by iiNet to its customers (and to other users of those customers' accounts) of access to the internet, which can be used generally and, in particular, to access the BitTorrent system;
.the infringement of the copyright in the appellants' films by customers of iiNet who have made the films available online in whole or in part using the BitTorrent system;
.the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2012] HCA 16
Decision Date: 20 April 2012

CaseChat Overview and Summary

Roadshow Films Pty Ltd and others (the appellants) appealed to the High Court of Australia against iiNet Ltd (the respondent), an internet service provider. The dispute concerned allegations that iiNet had authorised copyright infringement by its users. Specifically, users of iiNet's services were alleged to have infringed the copyright of the appellants' films by making them available online via the BitTorrent peer-to-peer file-sharing system. The appellants had served notices on iiNet alleging these infringements, but iiNet took no action in response.

The central legal issue before the High Court was whether iiNet had authorised the copyright infringement carried out by its users, within the meaning of the Copyright Act 1968 (Cth). This required the Court to consider the scope of the term "authorise" in the context of an internet service provider's role and responsibilities, particularly in light of the specific provisions of the Act relating to the matters to be taken into account when determining authorisation.

The Court's reasoning focused on the interpretation of section 101(1A) of the Copyright Act, which outlines factors to be considered when assessing authorisation. These factors include the extent of the alleged authoriser's power to prevent the infringement, the nature of the relationship between the alleged authoriser and the primary infringer, and whether reasonable steps were taken to prevent or avoid the infringement. The Court found that while iiNet had the technical capacity to identify customers associated with particular IP addresses at specific times, its power to prevent the actual infringement was limited. iiNet could not control subscribers' choice to use BitTorrent software, nor could it modify the software or remove infringing content. Furthermore, the Court considered whether iiNet had taken reasonable steps, noting that the appellants had not fully disclosed the methods used to gather evidence of infringement, and that the effectiveness of warnings or account terminations was not established. The Court also noted that iiNet was not to be taken to have authorised infringement merely by providing facilities for making content available online.

The High Court dismissed the appeal, upholding the decision of the Full Court. The appeal was dismissed with costs.

Orders

Orders of the court

Appeal dismissed with costs.

Background

Background to the litigation

Sections 116AA to 116AJ limit the remedies available against carriage service providers for infringements of copyright which result from the carrying out of particular online activities by the carriage service provider, provided that the carriage service provider meets certain conditions. All of the members of the Full Court agreed that iiNet was not entitled to the benefit of these provisions in the circumstances of this case[8], and iiNet does not seek to rely on them in this appeal. What might be noted, however, is that s 116AG(3)(b), which limits remedies against carriage service providers, empowers a court to make "an order requiring the carriage service provider to terminate a specified account". [8]Roadshow Films Pty Ltd v iiNet Ltd (2011) 194 FCR 285 at 347 [272] per Emmett J, 406 [524] per Jagot J, 464 [800] per Nicholas J.Technical background The technical background to the appeal has been explained in the courts below[9] and is not contested on the appeal. Nevertheless, it is convenient to summarise some aspects of the relevant technology before considering the submissions made on the appeal. [9]See Roadshow Films Pty Ltd v iiNet Ltd (No 3) (2010) 263 ALR 215 at 229-235 [44]-[78] per Cowdroy J; Roadshow Films Pty Ltd v iiNet Ltd (2011) 194 FCR 285 at 296-300 [35]-[63] per Emmett J.The Internet Protocol and IP addresses Computers connected to the internet communicate with each other by means of a common language, or protocol, called the Internet Protocol ("IP"). Data sent by means of the IP is broken up into small "packets". Computers sending and receiving data are allocated IP addresses, which enable packets to be exchanged (in much the same way that postal addresses enable mail to be exchanged). Such IP addresses are sold in blocks to ISPs, and ISPs allocate IP addresses to their customers. The identity of the ISP to whom a particular block of IP addresses has been sold is publicly available information. Where a customer's computer is directly connected to the internet (through a modem), the ISP will assign a public IP address to that computer. However, many computers are not directly connected to the internet, but are instead connected to a "router" – a device which can "route" data between a private network of computers. Where a customer's computer is connected to a router, the router will be directly connected to the internet (through a modem), and the ISP will assign a public IP address to the router. Where multiple computers are connected to a router, all of those computers will be able to access the internet – but only the public IP address assigned to the router will be visible to other computers on the internet. As such, a public IP address does not necessarily correspond to a specific person or computer. iiNet allocates "dynamic" IP addresses to all of its non-business customers – this means that the IP address by which an iiNet customer's computer or router connects to the internet will change over time. Systems instituted by iiNet enable it to identify the customer account to which a particular IP address has been allocated at a particular time, but not necessarily the specific person or computer using that IP address (which may be several).The BitTorrent system

Evidence

Evidence Before The Court

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Decision

Reasons for decision

FRENCH CJ, CRENNAN AND KIEFEL JJ (dissent)

Section 101(1A) reads:"In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in a copyright subsisting by virtue of this Part without the licence of the owner of the copyright, the matters that must be taken into account include the following:(a)the extent (if any) of the person's power to prevent the doing of the act concerned;(b)the nature of any relationship existing between the person and the person who did the act concerned;(c)whether the person took any other reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice."Conclusions Section 101(1A) is so drawn as to take an act of primary infringement and ask whether or not a person has authorised that act of primary infringement. In answering that question there will be "matters" that must be taken into account. These include, but are not confined to, the matters identified in pars (a), (b) and (c). Was there any relationship that existed between the primary infringer and the (alleged) secondary infringer? If so, what was its nature (par (b))? Did the secondary infringer have power to prevent the primary infringement; if so, what was the extent of that power (par (a))? Other than the exercise of that power, did the secondary infringer take any reasonable steps to prevent the primary infringement, or to avoid the commission of that infringement (par (c))? In answering these questions an ISP is not to be taken to have authorised primary infringement of a cinematograph film "merely because" it has provided facilities for making it available online to a user who is the primary infringer (s 112E). As indicated earlier in these reasons[156], the power of iiNet as an ISP with respect to the use of facilities provided to subscribers was limited by the nature of their commercial relationship; iiNet could not control the choice of its subscribers and other users to utilise the BitTorrent software, nor could iiNet modify the BitTorrent software or take down the appellants' films which were made available online.[156]At [110]. At all material times iiNet had many thousands of account holders. Was it a reasonable step to require of iiNet that it monitor continually the activities of IP addresses to provide precise details of primary infringements that had been committed, and then take further steps to forestall further infringements? Warnings might or might not have that effect. Evidence was lacking of likely behaviour in that respect by users of ISP facilities. Further, with respect to the AFACT Notices, was it reasonable to expect iiNet to issue warnings or to suspend or terminate the contracts of customers when AFACT had not fully disclosed the methods used to obtain the information in the AFACT Notices? Those methods were disclosed only by the provision of expert evidence during the preparation of the case for trial[157].[157](2011) 194 FCR 285 at 457.

Ratio Decidendi

Legal Principle Established

Established by:

Full text does not contain this section.