Roadshow Films Pty Limited v iiNet Limited [2011] FCAFC 23
On 24 February 2011 the Full Federal Court, in a 2:1 decision, dismissed an appeal by Hollywood film studios against a decision that iiNet, an internet service provider (ISP), had not authorised copyright infringement by not suspending or terminating users’ accounts in cases of copyright infringement.
However, the judgement left open the possibility that in different circumstances an ISP may be held liable for authorisation of their users’ infringement. There were four main points to come out of the judgments of the majority, Justice Arthur Emmett, the lead judge, and Justice Nicholas, which will be of comfort to copyright owners:
1. There is no absolute defence for ISPs to allegations of copyright infringement. The Court emphasised the importance of the factors in s.101(1A) of the Copyright Act 1968, and rejected the trial judge’s distinction that iiNet provided merely a “necessary precondition” and not the “means” of infringement. In addition, the Court held that to benefit from the defence in s.112E, an ISP must “merely” have provided the facilities for copyright infringement and this will not be satisfied where it has knowledge of primary infringement.
2. The content of the infringement notices sent to the ISP is critical. Justice Emmett in effect spelt out what copyright owners must do in the future. He suggested that there are four factors which should be contained in an infringement notice:
(a) it must state particulars of specific primary acts of infringement of copyright by use of particular IP addresses of its customers;
(b) it must request the ISP to communicate with its customer certain information and warnings;
(c) it must contain “unequivocal and cogent evidence” of the alleged primary acts of infringement, including information about how the material supporting the allegations of infringement was derived, that is adequate to enable the ISP to verify the accuracy of the allegations; and
3. The copyright owners must have undertaken to reimburse the ISP for the reasonable cost of verification of the infringements and of establishing and maintaining a regime to monitor future infringement, and to indemnify it in respect of any liability it reasonable incurred as a consequence of mistakenly suspending or terminating a service on the basis of allegations made by the copyright owner.
4. On the facts, the infringement notices neither provided means of verification nor contained an offer of reimbursement. Justice Jagot, dissenting, believed that the notices given to iiNet were sufficient to give iiNet the level of knowledge that was required to actually take steps against users who infringed.
5. If presented with such a notice, an ISP can be obliged to take action against a customer, including suspending or terminating the account, otherwise they may be liable for authorising the infringement.
6. ISPs need to have adopted and implemented a good policy to deal with repeat infringers in order to benefit from the safe harbour provisions in the Copyright Act.
If copyright holders adhere to the guidelines given by the Full Federal Court, in particular those of Justice Emmett, it will be possible for them to focus their attention on enforcing their rights against ISPs rather than users, thereby saving the costs and inefficiencies of pursuing individual infringers . In addition, ISPs have been give proper legal incentives to co-operate with copyright owners in deterring infringements.
This decision will undoubtedly increase pressure on the Federal Government to pass laws to address file sharing and piracy on the internet, as has occurred in New Zealand, France and the UK. However, it is unlikely that there will be any law reform before the High Court has heard the appeal, if the film studios seek leave to appeal.
John Wakefield
Partner
T: +61 2 9390 8302
E: john.wakefield@holmanwebb.com.au Disclaimer