New Discovery:  No Longer may we be Pirates in Private

New Discovery: No Longer may we be Pirates in Private

On 7 April 2015, an application for the disclosure of individual internet protocol addresses (IP Addresses) of Australian internet users was heard in the Federal Court of Australia, New South Wales before his Honour Justice Perram.  The outcome of this application could morph the modern-day average Australian into a copyright pirate, and all thanks to a 2012 movie in which Mathew McConaughey becomes a HIV medication smuggler; Dallas Buyers Club.

Dallas Buyers Club LLC, a United States entity which owns the copyright in Dallas Buyers Club, and its parent entity Voltage Pictures LLC, a movie production company involved in producing Dallas Buyer Club (DBC) filed an application on 14 October 2014 for various infringements of the Copyright Act 1968 (Cth) allegedly committed by 4,726 Australian citizens with the facilitation of the following internet service providers (ISPs):

  • iiNet Limited;
  • Internode Pty Ltd;
  • Amnet Broadband Pty Ltd;
  • Dodo Services Pty Ltd;
  • Adam Internet Pty Ltd; and
  • Widebrand Networks Pty Ltd.

DBC suspected at least 4,726 Australians (End Users) of having contravened the Copyright Act 1968 (Cth) by illegally using BitTorrent software to distribute Dallas Buyers Club via peer-to-peer file sharing platforms.  DBC did not have sufficient details to ascertain the identities of these purported pirates and for that reason, was not in a position to commence proceedings for recovery of damages against each End User.  

DBC relied on Rule 7.22 of the Federal Court Rules 2011 (Cth) to obtain the End User information.  Under this Rule, DBC had to have succeeded in satisfying the Court:-

(a)   firstly that they have a right to obtain relief against the prospective pirates;

(b)   secondly, that DBC cannot identify the End Users individually on its own; and

(c)   thirdly that the ISPs know, or have the ability to ascertain, the description of the prospective pirates.

His Honour Justice Perram was satisfied that DBC had successfully proved all three elements.

With respect to the first element required to be met, DBC had to prove to the Court that the 4,725 End Users contravened the Copyright Act 1968 (Cth) and because of these contraventions, DBC was entitled to relief.  DBC satisfied his Honour Justice Perram, on the basis of cogent circumstantial evidence that the End Users were infringing the copyright of DBC. Justice Perram did not accept the argument submitted by the ISPs that the 4,726 End Users only shared/”seeded” a very small sliver of the movie (due to the mechanism by which the BitTorrent software operates) and to that extent, had not sufficiently “communicated” or “made available online” the movie within the meaning of sections 86 and 10 of the Copyright Act 1968 (Cth).  

The second element was proved by DBC rather easily.  DBC proved that they had no way of knowing the individual identities of the End Users from the IP addresses alone.

With respect to the third element that had to be satisfied, namely that the ISPs have the ability to ascertain the description of those individuals infringing the Copyright Act 1968 (Cth) his Honour heard evidence from technical analyst of a German forensic investigation firm which produced a software program, Maverik Monitor 1.47, which operated to identify the IP addresses which shared the Dallas Buyers Club file via the BitTorrent platform.  The ISPs had the ability to match the IP addresses that had been flagged by the Maverik Monitor 1.47 to the End Users’ individual accounts.  DBC was successful in convincing the Court that the ISPs ought to divulge the details of the 4,726 End Users.

Despite the submission from the ISPs that it could only identify each account holder linked to the IP Address and there was no guarantee that the account holders were in fact the persons who had infringed the copyright held by DBC, Justice Perram was satisfied that the account holder would be able to identify which person had downloaded/”seeded” each movie based on the movies’ genre.  In his judgment, his Honour stated that the audiences for Cinderella and American Sniper would have few common members (hopefully).

A likely litigant who, similarly to DBC, knows that it has been wronged, does not have the ability to individually identify the wrongdoer(s), and knows someone who can, may rely on Rule 7.22, if bringing an application within the Federal jurisdiction.

The Federal Court possesses only statutory jurisdiction[1] to hear a narrow range of matters such as those that turn on judicial review, bankruptcy, intellectual property, native title, taxation and consumer law

If a likely litigant’s matter turns on common law or the equitable jurisdiction, an equivalent of Rule 7.22 is not available to a Queensland litigant under the Uniform Civil Procedure Rules 1999 (Qld) (the UCPR). Disclosure under Chapter Seven of the UCPR extends only to preliminary disclosure which facilitates the finding out of whether a party has a case against another party, whose identity is already known. There is no direct equivalent in the Queensland UCPR which facilitates the finding out of the identity of a prospective wrongdoer where it is not already known.

It is worth noting that a potential litigant in Queensland may be stripped of his/her ability to rely on Rule 7.22, even in instances where the litigants’ matter involves incidental issues of a Federal jurisdictional nature, due to the cross-vesting scheme. [2] The individual nature of each matter will determine whether the cross-vesting scheme is applicable.

Likely litigants in New South Wales whose matters turn on common law; however, are more fortunate as the Federal Court Rule 7.22 is reflected in Regulation 5.2 of the Uniform Civil Procedure Rules 2005  (NSW).

So what is the take away message for you modern day pirates?

If you have a predilection for downloading  movies, music or software files free of charge, that you reasonably believe someone or something owns a copyright in, without the owner’s knowledge, your internet service provider may be, or indeed may have already been, compelled to divulge this information.  This case demonstrates that the days of being a protected pirate in private are coming to an end.

This landmark decision indicates that such acts of piracy may leave you exposed to litigation commenced by large scale movie production companies, and what we ask is it really worth it, just to watch an emaciated Mathew McConaughey for two hours?

Cronin Litigation Lawyers are experienced commercial litigators, acting for Plaintiffs and Defendants in the Federal Jurisdiction, Queensland jurisdiction and interstate jurisdictions. If you have a dispute of a legal nature, please contact Derek Cronin or Stacy Miller at Cronin Litigation Lawyers on (07) 5592 6633 to find out how we may be of assistance. 

 Story by Tara Phelan, Solicitor, Cronin Litigation Lawyers - tara@croninlitigation.com.au


[1] Section 19 of the Federal Court of Australia Act 1976 (Cth)

[2] Pursuant the to the Jurisdiction of Court (Cross Vesting)Act 1987 (Cth) and the subsequent enactment of the Federal Courts (State Jurisdiction) Act 1999 (Qld) the State/Territorial Courts of Australia have jurisdiction to hear matters of a Federal nature when same is  incidental State/Territorial matter but the Federal Court of Australia does not have jurisdiction to hear State/Territorial  matters (even when incidental to a Federal matter) as it has been deemed unconstitutional, specifically insofar as it is a contravention of Chapter III of the Constitution. See also  Re Wakim; Ex Parte McNally 7 Anor; Re Wakim; Ex Parte Darvall; Re Brown 7 Ors; Ex Parte Amann & Anor; Spinks & Ors v Prentice [1999] HCA 27 and Gould v Brown (1998) 115 ALR 395