13 January 2016

Red Tape | Website-blocking injunctions to combat the increasing risk of online copyright infringement

This article was written by Cate Nagy (Partner, Sydney) and Anna Spies (Solicitor, Sydney)

Technological advances in the digital era have substantially increased the ease with which copyright material can be reproduced and distributed. In recent times we have seen a number of legislative reforms, industry agreements and technological-based measures introduced internationally with the aim of preventing and regulating online copyright infringement.

This article focuses on website-blocking injunctions, as one such measure that has been used or introduced in a number of jurisdictions to tackle online copyright infringement. Direct enforcement of copyright against websites operated and hosted outside of the jurisdiction is notoriously difficult. Website-blocking injunctions enable a copyright owner to apply for an injunction requiring an ISP to block local access to such websites. This article focuses on the approach to blocking injunctions in Australia, the UK and Singapore. While legislation has only recently been introduced in Australia and Singapore, such injunctions have been used since 2011 in the UK and have been said to have had some effect reducing online copyright infringement.

Australia – the Copyright Amendment (Online Infringement) Act 2015

On 22 June 2015, the Australian Government enacted the Copyright Amendment (Online Infringement) Act 2015, which inserted a new injunction power into the Copyright Act 1968 (Cth). The new section 115A gives the Federal Court of Australia the power to order an injunction to require an ISP to take reasonable steps to disable access to an online location located outside Australia with the primary purpose of infringing or facilitating infringement of copyright. Copyright owners must pursue existing remedies under the Copyright Act in relation to local websites.

Before making the order, the Court must be satisfied that the ISP provides access to an online location outside Australia, that the online location infringes or facilitates the infringement of copyright and that the primary purpose of the online location is to infringe or facilitate the infringement of copyright.  The “primary” purpose was an intentionally high threshold, intended to exclude websites that are mainly operated for a legitimate purpose, but contain a small percentage of infringing content.[1] It was also intended to exclude Virtual Private Networks (VPNs) that are promoted and used for legitimate purposes[2] and websites that provide legitimate copyright material overseas, but are not licensed to distribute that material in Australia.[3]

The Court, in its discretion, may also take into account a list of factors when determining whether to grant the injunction. These include the flagrancy of the infringement, whether the website has been blocked in another jurisdiction, whether blocking the website is a “proportionate response”, the public interest and the impact on any person, or any class of persons likely to be affected by the grant of the injunction.

An injunction may be granted regardless of whether the ISP has actual knowledge of the copyright infringement. The provisions are intended to create a “no fault” remedy. The website operator is not automatically a party to the proceeding, but may apply to the Court to be joined as a party. However, unless the Court dispenses with the notice requirement, the copyright owner must inform the operator of the online location of the injunction application.

There have not yet been any cases brought pursuant to s 115A in Australia.

United Kingdom - s97A of the Copyright, Designs and Patents Act 1988

Article 8(3) of the European Union Infosoc Directive [4] provides that “Member States shall ensure that right holders are in a position to apply for an injunction against intermediaries whose services are used by a third-party to infringe a copyright or related right”. The CJEU in UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Ors (C-314/12) recently confirmed that ISPs can be ordered to block access to a website without specifying the measures to be taken.  An ISP must take all “reasonable” measures, taking into account the right of internet users to freedom of information.

Section 97A of the Copyright, Designs and Patents Act 1988 implements Article 8(3) of the Infosoc Directive. It provides that the High Court has power to grant an “injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright”. For the Court to have jurisdiction to make a blocking order under s 97A, it must be established[5]:

“(1) that the ISPs are service providers, (2) that the users and/or operators of the target websites infringe copyright, (3) that users and/or the operators of the target websites use the services of the ISPs to do that, and (4) that the ISPs have actual knowledge of this.”

In considering whether the Court should exercise its discretion to make the order, the Court must consider whether the relief sought is proportionate (whether the likely costs burden on the ISPs is justified by the efficacy of the blocking measures and the consequent benefit to the rights holders)[6]. When assessing proportionality, matters for the Court to consider include the availability of alternative measures, the efficacy, costs and dissuasiveness of the measures, and the impact on lawful users of the internet.[7]

Initially, the grant of the blocking injunctions pursuant to s 97A was opposed by ISPs, as was the scope of the injunction to be granted[8]. However, following the first few such decisions, the essential principles relating to s 97A website blocking orders have been settled and many orders have been made on the papers.[9]   

Since 2010, the UK courts have ordered ISPs to block a large number of websites pursuant to s 97A. The list of blocked websites maintained by UK ISP TalkTalk currently names 590 websites that are blocked.[10]

Singapore – Copyright Amendment Act 2014

The Singaporean website blocking provisions were introduced by the Copyright Amendment Act 2014 (Singapore) and are contained in ss 193DDA-193DDB of the Singaporean Copyright Act (Chapter 63).

Under the Singaporean legislation, the High Court can issue an injunction that requires a network services provider to take “reasonable steps to disable access” to a “flagrantly infringing online location” if it is satisfied that the services of the network service provider are being used to commit or facilitate infringement of copyright.   The High Court must have regard to a list of factors when making an order, including the harm that has been caused, the burden on the ISP, technical feasibility, effectiveness, possible adverse effects and other comparatively effective orders. The Court must consider a further list of factors in determining whether an online location is being used to flagrantly commit or facilitate infringement, which are similar to the factors considered under s 115A of the Australian legislation.

Before applying for an order, the copyright owner must notify the online location, although the Court may dispense with the notice requirements. The online location owner has a “right to be heard” on the application for an injunction and any appeal.

The Singaporean High Court has not yet handed down any decisions under the new provisions.

Key issues raised in relation to website-blocking injunctions

Concerns have been raised over the potential impact of website-blocking injunctions on freedom of expression and legitimate content. The website owner or operator is not generally active in the proceeding and there are concerns that legal content may be blocked given that the hearing is effectively ex parte. Concerns have been raised that there may be “over-blocking”, where other non-infringing websites are blocked in error, such as because they are hosted at the same IP addresses. However, under the UK orders, safeguards have been introduced so that an interested party may apply to discharge or vary the order, and this might similarly be adopted in Australia and Singapore.

It has also been argued that website-blocking injunctions are ineffective. ISP-level blocking is relatively easy to evade (the so-called “whack-a-mole” effect). In the UK, to address this issue, ISPs are required to block the named website and when notified in writing, any other IP address or URL whose sole or predominant purpose is to facilitate access to the named website. Mr Justice Arnold recently considered the efficacy of website-blocking orders in the Cartier decision [11] and concluded that although experienced and determined users would be able to circumvent the blocking measures, blocking websites has proved to be reasonably effective in reducing use of those websites in the UK.

The website-blocking injunctions are but one part of a raft of measures that have been introduced to address copyright infringement, although the measure is not without controversy and criticisms of its efficacy. The Australian Government has committed to reviewing the new injunction power 18 months after commencement and it will certainly be interesting to examine evidence of the effect of the injunction power on online copyright infringement.

A form of this article was first published as part of the Australian Intellectual Property Law Bulletin (2015) Volume 28 No 8

[1] Explanatory Memorandum, Copyright Amendment (Online Infringement) Bill 2015 at [20] and [38].

[2] Revised Explanatory Memorandum, Copyright Amendment (Online Infringement) Bill 2015 at [39].

[3] Explanatory Memorandum, Copyright Amendment (Online Infringement) Bill 2015 at [39].

[4] European Parliament and Council Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society 2001/29/EC of 22 May 2001.

[5] Twentieth Century Fox Film Corporation v Sky UK Limited [2014] EWHC 1082 (Cth) per Birss J at [25].

[6] Twentieth Century Fox Film Corporation v Sky UK Limited [2014] EWHC 1082 (Cth) per Birss J at [261].

[7] Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch) per Arnold J at [189].

[8] Twentieth Century Fox Film Corporation v Newzbin Limited [2010] EWHC 608 (Cth) and Twentieth Century Fox Film Corporation & Ors v British Telecommunications plc [2011] EWHC 1981 (Ch).

[9] Twentieth Century Fox Film Corporation v Sky UK Limited [2014] EWHC 1082 (Cth) per Birss J at [3] to [5], citing Arnold J in Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch).

[10] As at 31 October 2015 <http://help2.talktalk.co.uk/access-restricted-certain-file-sharing-websites>, noting that this includes some websites blocked for trade mark infringement.

[11] Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2014] EWHC 3354 (Ch) per Arnold J at [235]-[236].

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