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Pirates of the Old West-ern Australia

Intellectual Property Law News | August 2015


On 6 May 2015, the Federal Court ordered the internet service provider iiNet Limited to provide Dallas Buyers Club LLC (“DBC”) with a verified list of each of their account holders’ details. The Court also ordered that DBC were first required to provide the Court with a copy of the correspondence which it intended to send to the account holders to prevent DBC from engaging in the practice of ‘speculative invoicing’.

In the earlier proceedings (Dallas Buyers Club LLC v iiNet (No. 3) [2015] FCA 317) DBC sought damages from infringers of their copyright for the following reasons:

  • The retail cost of purchasing a copy of the Movie;
  • A substantial sum representing a licence fee to enable the infringer to share the movie Dallas Buyers Club (“the Movie”) with others;
  • Punitive damages for copyright infringement based on how many copies of other copyright works which the infringer had downloaded; and
  • The cost, both technological and legal, in getting access to the infringer’s details.

The Court’s conclusion in the earlier proceedings was that DBC might well have a right to sue for copyright infringement under section 115(1) of the Copyright Act 1968 (Cth) people who have been sharing copies of the Movie through sites such as the BitTorrent network.

The Court’s 14 August 2015 decision

The Federal Court’s recent decision on 14 August 2015 now requires DBC to pay a bond of $600,000 to the Court prior to obtaining the names and addresses of Australian internet users whom are believed to have pirated the Movie. This decision focused on deterring the practice of “speculative invoicing” from being implemented in Australia. The term ‘speculative invoicing’ is used to describe the behaviour of copyright owners sending letters to internet users for allegedly infringing copyright by downloading media content without permission.

In the more recent proceedings DBC sought to have their damages on the basis that these damages would increase for each piece of illegally downloaded media which had been downloaded by the infringer. The Court indicated that this type of claim would be summarily dismissed, as the copyright owner was not permitted to claim damages for breaches of copyright which they did not own.

Held

DBC were to remain bound by an undertaking to only communicate with account holders in Australia in the manner approved by the Court. The Court held that because DBC has no presence in Australia it would not be possible to punish them in the event that they do not honour this undertaking. As a result, DBC were ordered to pay a bond of $600,000 as a means of securing DBC’s compliance with their undertaking.

This case still has a number of outstanding issues, including the form of letters which are to be sent to account holders, restrictions on access to websites with the primary purpose of infringing copyright, as well as privacy issues arising from the collection, use and storage of the personal data of account holders by companies like DBC.

Forum Law advises in all areas of business and commercial law including laws relating to real property and intellectual property. Intellectual property is often overlooked as a serious asset of a business and it must be protected and asserted if it is to develop and preserve its value.
Forum Law is conveniently located in Leichhardt in the inner west of Sydney and we offer free client parking. Call Annette or Jackson on +61 2 9560 3388 to discuss your concerns.

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