INSIGHT

A clear path for new website blocking laws

By Miriam Stiel
Industrials Intellectual Property Patents & Trade Marks

In brief

The Copyright Amendment (Online Infringement) Bill 2018 (Cth) is the latest legislative development aimed at enabling copyright owners to enforce their rights in the online sphere. Associate Emma Gorrie reports.

Background

The Copyright Amendment (Online Infringement) Bill 2018 (Cth) (the Bill) passed the House of Representatives on 24 October 2018 and is also expected to pass the Senate.

Copyright owners already have the benefit of s115A of the Copyright Act 1968 (Cth), which allows them to seek an injunction requiring a carriage service provider (CSP) to disable access to certain online locations. The ability to seek injunctions against CSPs recognises the difficulty of taking direct action against overseas-based operators of online locations.

What will change?

If (as expected) the Bill passes:

  • the threshold test for an injunction will change from 'primary purpose' to 'primary purpose or effect' of infringing, or facilitating an infringement, of copyright (whether or not in Australia);
  • there will be a rebuttable presumption that the online location is outside Australia;
  • search engine providers may be required to restrict search results linking to online locations blocked under the regime;
  • there will be more flexibility to grant injunctions in terms that deal with proxy and mirror sites; and
  • the Minister will be able to declare certain exemptions apply in relation to online search engine providers.

'Primary purpose' to 'primary purpose or effect'

The expanded threshold test intends to catch more online locations that are deliberately and flagrantly infringing copyright, without targeting incidental infringers. For example, the 'primary effect' test aims to capture file-hosting services such as cyberlockers, on the basis that these are often used to distribute or share copyright-infringing files. The Bill offers little guidance as to how exactly the 'primary effect' test will be applied.

Rebuttable presumption

It can be challenging for copyright owners to establish that an infringing online location is based outside Australia, as operators often employ methods, such as proxy servers, to mask geographic location. The introduction of the rebuttable presumption will reduce the evidentiary burden on copyright owners, streamlining the process of seeking an injunction.

Search engine providers

While ISPs have been the focus of the s115A cases to date, the changes will bring online search engine providers into the mix. The rationale for this is that online search engine providers can play a role in reducing the efficacy of s115A injunctions, by:

  • alerting users to blocked online locations that may be popular search results; and
  • revealing alternate pathways to blocked online locations.

Flexible injunctions

References to 'whack-a-mole' are common when talking about website blocking, due to proxy and mirror sites popping up after a website is blocked. The introduction of s115A(2B) is directed at reducing the time and expense involved in blocking access to proxy and mirror sites. The current process requires copyright owners to seek a variation to existing orders from the Court. Section 115A(2B) clarifies that an injunction may include provision for the copyright owners and CSPs/online search engine providers to agree (in writing) on additional domain names, URLs and IP addresses that should also be covered by an existing injunction.

Declaratory power

The amended s115A will grant the Minister the power to declare that particular online search engine providers, or classes of online search engine providers, be excluded from the regime. This change attempts to deal with concerns about overreach.

A clear path for interested parties?

While it is generally accepted that the Bill will pass the Senate, it remains to be seen:

  • how the Court will apply the 'primary effect' test;
  • whether the application to online search engine providers will be appropriately limited; and
  • whether CSPs/online search engine providers will be able to reach agreement with copyright owners under s115A(2B).