Intellectual Property Law
| Date | 01 December 2018 |
| Publication year | 2018 |
| Published date | 01 December 2018 |
| Citation | (2018) 19 SAL Ann Rev 586 |
| Author | David TAN LLB (Hons), BCom (Melbourne), LLM (Harvard), PhD (Melbourne); Professor and Vice Dean (Academic Affairs), Faculty of Law, National University of Singapore. Susanna H S LEONG LLB (Hons) (National University of Singapore), LLM (London); Professor and Vice Provost (Lifelong Education), National University of Singapore. |
19.1 In Disney Enterprises Inc v M1 Ltd1 (“Disney Enterprises”), the High Court, in a judgment handed down by Lee Seiu Kin J in September 2018, analysed s 193DDA of the Copyright Act2 and granted a dynamic injunction that would require network service providers in Singapore to block access to 53 online locations which were initially identified as Flagrantly Infringing Online Locations (“FIOLs”).
19.2 The plaintiffs were engaged in the creation, distribution, licensing and marketing of theatrical motion pictures, television programming and other related products and included companies such as Disney Enterprises, Twentieth Century Fox Film, Paramount Pictures and Warner Bros Entertainment. They owned copyrights in numerous films and sought injunctions to block access to 53 online locations which provided public access to a collection of films without consent or licences from the plaintiffs. The 53 online locations were websites which were in turn accessible via Fully Qualified Domain Names (“FQDNs”). An FQDN is a domain name, a uniform resource locator (“URL”) and/or an Internet protocol address (“IP address”) which can access an online location, including a website.
19.3 The defendants were network service providers engaged in the business of providing telecommunications services and were the major Internet service providers in Singapore, such as M1, Singtel and Starhub.
19.4 The plaintiffs sought two types of orders. The first was an order for the defendants to take reasonable steps to disable access by its subscribers to a list of FQDNs which were being used to enable or facilitate access to the 53 websites identified as FIOLs (“the main injunction”). The second was an order that would require the defendants to block new FQDNs not presently listed in the plaintiffs' schedule which were subsequently discovered to provide access to the same FIOLs that were the subject of the main injunction, upon receiving notification from the plaintiffs (“the dynamic injunction”). Under this dynamic injunction, the plaintiffs may from time to time notify the defendants in writing of FQDNs via which a FIOL which was referred to in the schedule to the main injunction is accessible, and provide an affidavit to the defendants and the court, which identifies the additional domain name(s), URL(s) and/or IP Address(es) and states the reasons the FIOL accessible from the FQDNs is the same FIOL which is identified in the schedule to the main injunction.
19.5 Lee J granted the main injunction in April 2018 and requested further submissions from the plaintiffs regarding the dynamic injunction.
19.6 The central legislative provision in the application for injunctive relief was s 193DDA of the Copyright Act. Section 193DDA empowers the High Court to order network service providers to take reasonable steps to disable access to a FIOL:
193DDA.—(1) Where the High Court is satisfied, on an application made by the owner or exclusive licensee of copyright in a material against a network service provider, that —
(a) the services of the network service provider have been or are being used to access an online location, which is the subject of the application, to commit or facilitate infringement of copyright in that material; and
(b) the online location is a flagrantly infringing online location,
the High Court may, after having regard to the factors referred to in section 193DB(3), make an order requiring the network service provider to take reasonable steps to disable access to the flagrantly infringing online location.
…
19.7 Lee J was of the view that the notice and service requirements for an order under s 193DDA of the Copyright Act as set out under s 193DDB were satisfied by the plaintiffs, as the plaintiffs had undertaken reasonable efforts to identify the owners of the 53 online locations and to notify them as well as the defendants of these proceedings.3
19.8 Regarding the issue whether the online locations were FIOLs, Lee J turned to s 193A of the Copyright Act which defines a FIOL as:
… an online location which is determined by the High Court under section 193DDA to have been or is being used to flagrantly commit or facilitate infringement of copyright in materials.
Lee J noted the parliamentary intention in the drafting of this provision, commenting that “the definition of a FIOL is intended to be, to some extent, imprecise and amorphous in order to accommodate advancements in technology”.4 His Honour was satisfied that based on a consideration of all of the factors listed under s 193DDA(2) – such as whether the primary purpose of the online location is to facilitate copyright infringement and whether these locations contain directories of the means to facilitate infringement – the 53 websites were indeed FIOLs.5 All of these websites were found to fall into one of the following categories: linking target website, streaming target website, peer-to-peer target website or subtitle target website.6
19.9 The main analysis in the judgment was whether the orders sought were reasonable steps to disable access to the flagrantly infringing online locations. Lee J noted that the court is to take into account the factors referred to under s 193DB(3) in making an order under s 193DDA of the Copyright Act. Section 193DB(3) reads:
When making an order under subsection (1) or (2) or section 193DDA(1), the court shall have regard to —
(a) the harm that has been or may foreseeably be caused to the plaintiff;
(b) the burden that the making of the order will place on the network service provider;
(c) the technical feasibility of complying with the order;
(d) the effectiveness of the order;
(e) any possible adverse effect on the business or operations of the network service provider;
(f) whether some other comparatively effective order would be less burdensome; and
(g) all other matters which it considers relevant.
19.10 Regarding the main injunction, Lee J held that it was necessary to mitigate further harm caused to the plaintiffs and that the methods proposed to block access to the FQDNs, including Domain Name System blocking, URL filtering or IP address blocking were technically feasible and did not place an excessive burden on the defendants.7
19.11 Lee J noted that the dynamic injunction:8
… anticipates and seeks to counteract circumventive measures that may be taken by owners or operators of the FIOLs [which] would include measures taken to change the domain name, URL and/or IP address providing access to the FIOL.
Since the filing of the application by the plaintiffs, the means of accessing some of the FIOLs had already changed, and should the dynamic injunction not be granted, the plaintiffs would need to apply to the court to amend the main injunction in order to add the new domain name for it to be blocked. A dynamic injunction would obviate the need for the plaintiffs to return to court to apply for an amendment of the main injunction or for a new order each time a FIOL employed a circumventive measure.
19.12 In summary, the factors stipulated under s 193DB(3) supported the granting of the dynamic injunction. In coming to his decision, Lee J considered the decisions by courts in the UK and Australia regarding the grant of dynamic injunctions to combat online piracy. It was noted that English courts are more willing to grant such injunctions,9 while the Australian courts have preferred an approach that would require the court to amend the original order to add these new FQDNs, upon application by the applicants.10
19.13 Lee J was persuaded by two key considerations. First, the ease and speed at which circumventive measures may be taken by owners and operators of FIOLs to evade the main injunction, through for instance changing the primary domain name of the FIOL, would render the main injunction ineffective. Essentially:11
… [a] dynamic injunction provides a practical means of ensuring the continued effectiveness of the original injunction since it provides an expedited process for the blocking of additional FQDNs which resolve to the same infringing websites.
Second, Lee J evaluated that:12
… the burden to the defendant network service providers, the technical feasibility of complying with the dynamic injunction, any possible adverse effect on the business of the network service providers, and whether some other comparatively effective order would be less burdensome …
and found that the dynamic injunction would not significantly increase the burden on the defendants from that already imposed under the main injunction. Further, in order to ensure that the interests of the defendant network service providers are not unduly impinged by the dynamic injunction, Lee J included a proviso in the order granted that:13
… the defendants would not be required to block the additional FQDNs upon the request of the plaintiffs if [the defendants] are of the view that the grounds for disabling access provided by the plaintiffs are insufficient.
19.14 In Australia, a “rolling order” sought under s 115A of the Australian Copyright Act 1968 – the equivalent of our dynamic injunction – was denied by the Federal Court in 2016 when film companies such as Roadshow, Disney, Twentieth Century Fox and Paramount, wanted certain carriage service providers to block access to streaming and BitTorrent sites; an injunction, however, was granted to disable access to the target online locations as listed.14 More recently, the Federal Court also found it appropriate to grant an injunction to require the respondents to take reasonable steps to disable access to the KickassTorrents (KAT) website...
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