Disney Enterprises, Inc and Others v M1 Ltd and others [2018] SGHC 206

Introduction

The plaintiffs are owners of various copyrights subsisting in numerous cinematograph films. In originating summons no 95 of 2018, the plaintiffs sought blocking orders pursuant to s 193DDA of the Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”), which would require the defendant network service providers to take reasonable steps to block its subscribers’ access to certain websites which infringe or facilitate infringement of copyright. After hearing the submissions of the parties, I granted the blocking orders sought.

Background

The plaintiffs are engaged in the creation, distribution, licensing and marketing of theatrical motion pictures, television programming and other related products. The plaintiffs own various copyrights subsisting in numerous films (“the Subject Films”) including the subtitles of these films.

The defendants are network service providers engaged in the business of providing telecommunications services. The defendants are the major internet service providers in Singapore.

The plaintiffs’ application concerned 53 online locations which provided public access to a collection of films, including the Subject Films, without the requisite 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. Domain name, URL and IP address have the following meanings:

(a) Domain name:

(i) A “domain name” is a name formed by the rules and procedures of the “Doman Name System” (“DNS”), which is the system for naming computer servers and other resources connected to the Internet.

(ii) A “primary domain name” is the domain name a user request resolves to when requesting a website. A “redirect domain name” is a domain name which resolves to the primary domain name when the user requests it. For example, where a user keys in the redirect domain name “xmovies8.es” into a search engine, the user is redirected to “xmovies8.nu” which is the primary domain name for the website “xmovies8”.

(b) URL: A URL is the entire address used to fetch a resource from an online location. An example of a URL is “https://xmovies8.es”.

(c) IP address: An IP address is a unique string of numbers that identifies a computer and enables a computer to communicate with another computer via the Internet. A computer requires an IP address to ensure that data sent over the Internet reaches its intended destination.

The plaintiffs sought two types of orders. First, the plaintiffs sought 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 (“the main injunction”). The plaintiffs submitted that the 53 websites were “Flagrantly Infringing Online Locations” (“FIOLs”), in that they were being used to flagrantly commit or facilitate infringement of copyright in materials. The order sought in relation to the main injunction read, in material parts:

Second, the plaintiffs sought an order that would require the defendants to block new FQDNs not presently listed in the plaintiffs’ schedule which are subsequently discovered to provide access to the same FIOLs that are the subject of the main injunction, upon receiving notification from the plaintiffs (“the dynamic injunction”). It was proposed that under the dynamic injunction, the plaintiffs would provide notification to the defendants by serving an affidavit on the defendants (and filing it in court) which will identify the additional FQDNs and provide reasons why the FIOLs accessible from the additional FQDNs are the same FIOLs which have been blocked in the main injunction. The order sought in relation to the dynamic injunction read:

The dynamic injunction was sought by the plaintiffs in the light of the potential for measures to be taken by owners of the FIOLs to circumvent the main injunction, such as by changing the domain name, URL and/or IP address for the FIOL.

The parties’ submissions

The plaintiffs submitted that the procedural and substantive requirements for an order under s 193DDA of the Copyright Act were satisfied.

The plaintiffs submitted that they had the standing, being the owners of the copyright in the Subject Films, to bring the application. They had also fulfilled the notice requirements under s 193DDB(1)(a) read with s 193DDB(3) of the Copyright Act by sending take-down notices to the owners of 41 out of 53 of the FIOLSs, and in respect of the remaining 12 FIOLs, undertaking all reasonable efforts to send take-down notices to the owners. Likewise, the plaintiffs had also fulfilled the notice requirement under s 193DDB(1)(b) of the Copyright Act by informing the defendants of their intention to apply for an order under s 193DDA. The notice and service requirements for the application under s 193DDB(2) of the Copyright Act were also fulfilled.

The plaintiffs further submitted that it had adduced sufficient evidence to demonstrate that the 53 websites were FIOLs, given that, amongst others, the primary purpose of the websites was to commit or facilitate copyright infringement. This was evident from the fact that searches for cinematograph films on the 53 websites disclosed a large number of page results, and a significant number of the Subject Films were made accessible through the websites without the consent or authorisation of the respective copyright owners.

In addition, according to the plaintiffs, the factors set out under s 193DB(3) of the Copyright Act, which the court may have regard to in determining if an order under s 193DDA should be granted, weighed in favour of the granting of the orders. It was submitted that the main injunction was necessary to prevent further harm to the plaintiffs and also would not impose an undue burden on the defendants. The dynamic injunction was in turn necessary to ensure the continued effectiveness of the main injunction, given the tendency for owners of FIOLs to take circumventive actions to evade site-blocking orders issued by the courts.

In relation to the dynamic injunction sought, the plaintiffs further submitted that the court had the jurisdiction under the Copyright Act to grant the injunction, and that the injunction was consistent with the legislative purpose of s 193DDA of the Copyright Act which is to disable access to the FIOL. According to the plaintiffs, the dynamic injunction also would not impose an undue burden on the defendants.

The defendants did not raise any objections to the plaintiffs’ application.

My decision

After hearing the submissions of the parties at the hearing on 26 April 2018, I granted the main injunction. In relation to the dynamic injunction, I requested further submissions to be filed by the plaintiffs.

Upon hearing further submissions on 12 July 2018, I granted the dynamic injunction but on modified terms, in particular, to include a proviso in the order sought by the plaintiffs.

That the various legal requirements for the main injunction were met was relatively uncontroversial and straightforward in the light of the evidence. The main issue in this case was therefore whether the dynamic injunction sought by the plaintiffs could be granted under the framework of the existing legislation and if so, if the dynamic injunction ought to be granted. The ensuing analysis will therefore consider the following issues, with an emphasis on (d):

Analysis

The central legislative provision in this application 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. The provision reads:

Locus standi and procedural requirements

Pursuant to s 193DDA(1) of the Copyright Act, an application for a site-blocking order may only be brought by “the owner or exclusive licensee of copyright in a material”. Under s 130 of the Copyright Act, copyright is presumed to subsist in the work in question and the plaintiff is presumed to be the owner of such copyright where subsistence and ownership of the copyright are not challenged by the defendant:

As neither subsistence nor ownership of the copyright in the Subject Films were put in question by the defendants, the plaintiffs were presumed to be the owners of the copyright in respect of the Subject Films. I was therefore satisfied that the plaintiffs had the requisite locus standi to bring the application.

The notice and service requirements for an order under s 193DDA of the Copyright Act are set out under s 193DDB. In brief, this provision requires the plaintiff to inform the owner of the online location of its intention to apply for an order under s 193DDA if the owner fails to comply with its take-down notice within a prescribed period. Following the end of the prescribed period, the plaintiff must also send a notice to the defendant network service provider stating its intention to apply for the order. I was satisfied based on the evidence adduced by the plaintiffs that the notice requirements were satisfied in the present case as there were reasonable efforts to identify the owners of the 53 online locations and to notify them as well as the defendants of these proceedings. The service requirements were also met.

Whether the online locations were FIOLs

The term “online location” is not expressly defined in the Copyright Act. That said, a “flagrantly infringing online location”, ie, a FIOL, is defined under s 193A of the Copyright Act as:

In addition, pursuant to s 83 read with s 103(1) of the Copyright Act, infringement of copyright in a cinematograph film takes place where a person who, not being the copyright owner, and without the licence of the copyright owner, makes a copy of the film or communicates the film to the public. Further, under s 26(1) read with s 31(1) of the Copyright Act, the copyright in subtitles would be infringed where a person who, not being the copyright owner, and without the licence of the copyright owner, reproduces in material form the said subtitles.

The definition of a FIOL is intended to be, to some extent, imprecise and amorphous in order to accommodate advancements in technology. At the second reading of the Copyright (Amendment) Bill (No 16 of 2014), the then Senior Minister of State for Law, Ms Indranee Rajah, SC stated in relation to the definition of a FIOL that:

A similar position is taken in the Explanatory Memorandum to the Australian Copyright Amendment (Online Infringement) Bill 2015:

As alluded to earlier at [4] above, in relation to the plaintiffs’ application, the alleged 53 FIOLs were websites. These websites were in turn accessible via FQDNs which the plaintiffs sought to block in the orders applied for.

Pursuant to s 193DDA(2) of the Copyright Act, in determining if an online location is a “flagrantly infringing” online location, the court must consider all of the following matters:

(a) whether the primary purpose of the online location is to commit or facilitate copyright infringement;

(b) whether the online location makes available or contains directories, indexes or categories of the means to commit or facilitate copyright infringement;

(c) whether the owner or operator of the online location demonstrates a disregard for copyright generally;

(d) whether access to the online location has been disabled by orders from any court of another country or territory on the ground of or related to copyright infringement;

(e) whether the online location contains guides or instructions to circumvent measures, or any order of any court, that disables access to the online location on the ground of or related to copyright infringement; and

(f) the volume of traffic at or frequency of access to the online location.

I was satisfied based on a consideration of all of the factors listed under s 193DDA(2) that the 53 websites were FIOLs. Hence, the requirement under s 193DDA(1)(b) was met.

All of the 53 websites were one of the following:

(a) A linking target website: a website that contains an index of hyperlinks to copyrighted films which redirects the end-user to the hyperlinked site, ie, the host site in order to stream the content. A linking target online location facilitates the user’s making of a copy (via downloading) and the host site’s making available of the film (via streaming) and thereby facilitates the user’s and host site’s infringement of the copyright in the films.

(b) A streaming target website: a website which allows end-users to directly stream copyrighted content. These sites directly make available the films to the public and thereby both infringe and facilitate infringement of copyright.

(c) A Peer-to-Peer target website: an internet network which allows a group of computer users with the same networking programme to connect with each other and directly access files from each other’s hard drive without connecting through a central server. These websites therefore enable users to download films from other users of the networks and correspondingly facilitate infringement of copyright.

(d) A subtitle target website: a website which provides links for users to download copyrighted subtitles. Such websites facilitate the user’s reproduction in material form of the subtitles and thereby facilitate the user’s infringement of the copyright in the subtitles.

The plaintiffs adduced sufficient evidence that the main purpose of all 53 websites was to commit or facilitate copyright infringement by showing, inter alia, that the websites provided access to a large library of films, including the Subject Films, without the authorisation of the owners of the copyright. Screenshots were adduced by the plaintiffs showing successful attempts to search for and view the relevant subtitles and/or cinematograph films via the 53 websites. In addition, the websites were designed to facilitate easy access to cinematograph films, including the Subject Films, in breach of the copyright in those films. They contained indexes of the films, which were categorised including by quality, genre, viewership and ratings.

I was also satisfied that the operators of the websites demonstrated a disregard for copyright generally by virtue of the extent of the copyright infringement, and non-compliance with the take-down notices issued by the plaintiffs. Instructions to circumvent measures taken to disable access were also found on a number of these websites, as evidenced by screenshots of posts on these websites, which show the owner or operator of the websites informing users of a change of domain name for the websites.

There was also evidence that a number of the websites had been blocked in other jurisdictions.

Evidence was also adduced from a company which provides traffic data to show that the volume of traffic at the websites in question was significant.

I was thus satisfied that the 53 online locations were FIOLs and correspondingly that the requirement under s 193DDA(1)(b) of the Copyright Act was met.

Whether the defendants’ services were being used to access the FIOLs

There was also evidence adduced, which the defendants did not dispute, that the defendants’ services were being used to access the 53 FIOLs. This was to be expected since the defendants were internet service providers and the FIOLs were correspondingly accessible by the defendants’ subscribers through the defendants’ services. Hence the requirement under s 193DDA(1)(a) of the Copyright Act was also met.

Whether the orders sought were reasonable steps to disable access to the FIOLs

The High Court’s power to grant site-blocking orders stems from s 193DDA of the Copyright Act (see above at [16]). This provision allows the court to make an order requiring the network service provider to “take reasonable steps to disable access to the flagrantly infringing online location”.

In addition, 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:

The main injunction

The main injunction required the defendants to take reasonable steps to block the scheduled FQDNs (ie, domain names, URLs and/or IP addresses) which the plaintiffs had identified as providing access to the 53 websites which I have found are FIOLs. I was satisfied that the factors under s 193DB(3) of the Copyright Act supported the granting of the main injunction. The main injunction was necessary to mitigate further harm caused to the plaintiffs. I was also satisfied that the methods proposed to block access to the FQDNs, which were left largely within the discretion of the defendants, including DNS blocking, URL filtering or IP address blocking were technically feasible and did not place an excessive burden on the defendants.

The dynamic injunction

The dynamic injunction required the defendants to block additional FQDNs not presently listed in the plaintiffs’ schedule which provide access to the same 53 FIOLs, upon receiving notification of such additional FQDNs from the plaintiffs.

The dynamic injunction anticipates and seeks to counteract circumventive measures that may be taken by owners or operators of the FIOLs. This would include measures taken to change the domain name, URL and/or IP address providing access to the FIOL. Owners or operators of FIOLs are able to take measures which circumvent existing blocking orders since it is possible for a single FIOL to be accessed via multiple domain names, URLs and/or IP addresses. As an illustration, s/n 52 of the schedule to the plaintiffs’ application sought to block the FQDNs which provide access to the FIOL known as “series9”. Multiple domain names, URLs and IP addresses were associated with the “series9” FIOL:

In this connection, the means of accessing FIOLs are dynamic rather than static. In fact, since the filing of the application by the plaintiffs, the means of accessing some of the FIOLs have already changed. For example, the primary domain name for the FIOL “xmovies8” has since been changed from “xmovies8.es” to “xmovies8.nu”. As the domain name “xmovies8.nu” did not exist at the time of the application and was not listed under the plaintiffs’ schedule, 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. On the other hand, the dynamic injunction would remove the need for the plaintiffs to return to court to apply for an amendment of the main injunction or for a new order.

(1) Whether the court has jurisdiction to issue a dynamic injunction

Section 193DDA of the Copyright Act is worded broadly and in this regard does not expressly preclude the order issued pursuant to the provision from taking the form of a dynamic injunction. This is so long as the actions required pursuant to the dynamic injunction constitute “reasonable steps to disable access to the flagrantly infringing online location”. There is no other provision in the Copyright Act which stipulates the types of orders or the scope of the orders that may be granted by the court under s 193DDA. Therefore, in relation to the dynamic injunction, the question was whether the blocking of additional FQDNs by the defendants, as and when informed by the plaintiffs of such sites, were “reasonable steps to disable access to the flagrantly infringing online location” such that the court had the jurisdiction under s 193DDA of the Copyright Act to issue the injunction.

I found that the court has the jurisdiction to issue a dynamic injunction given that such an injunction constitutes “reasonable steps to disable access to the flagrantly infringing online location”. This is because the dynamic injunction does not require the defendants to block additional FIOLs which have not been included in the main injunction. It only requires the defendants to block additional domain names, URLs and/or IP addresses that provide access to the same websites which are the subject of the main injunction and which I have found constitute FIOLs (see [19] – [29] above). Therefore, the dynamic injunction merely blocks new means of accessing the same infringing websites, rather than blocking new infringing websites that have not been included in the main injunction.

In fact, under the dynamic injunction applied for in the present case, the plaintiffs would be required to show in its affidavit that the new FQDNs provide access to the same FIOLs which are the subject of the main injunction before the defendants would be required to block the new FQDNs (see [6] above). There are technical means of showing that the new FQDNs link to the same blocked FIOLs. One way to show that a new FQDN links to the same FIOL is to demonstrate that that the primary domain name for the FIOL has changed, which is known technically as a “DNS CHANGENAME”. The plaintiffs may also show that there has been a redirect from a new FQDN to the primary domain name of the FIOL, or that a primary domain name already blocked now redirects to a new primary domain name for the same FIOL through a mechanism known as “HTTP 3xx redirect”.

Further, while s 193DDC of the Copyright Act provides a mechanism for the variation of the main injunction, I agreed with the Plaintiffs’ submission that this did not preclude the court from issuing a dynamic injunction in the original order. Section 193DDC reads:

Section 193DDC of the Copyright Act appears to me to be a general provision for variation of orders made under s 193DDA(1) and does not preclude the making of a dynamic injunction.

(2) Whether the dynamic injunction ought to be granted

As with the main injunction, whether or not the dynamic injunction should be granted required a consideration of the factors stipulated under s 193DB(3) of the Copyright Act. I found that these factors supported the granting of the dynamic injunction.

In relation to s 193DB(3)(d) of the Copyright Act, ie, the effectiveness of the proposed order, the dynamic injunction was necessary to ensure that the main injunction operated effectively to reduce further harm to the plaintiffs. This is due to 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. Without a continuing obligation to block additional domain names, URLs and/or IP addresses upon being informed of such sites, it is unlikely that there would be effective disabling of access to the 53 FIOLs.

I also took into consideration 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 (see ss 193DB(3)(b), 193DB(3)(c) 193DB(3)(e) and 193DB(3)(f) of the Copyright Act respectively). I found that the dynamic injunction would not significantly increase the burden on the defendants from that already imposed under the main injunction. In fact, the dynamic injunction could potentially reduce the burden on the defendants, by obviating the need for them to return to court to respond to the plaintiffs’ application for variation of the main injunction each time a new FQDN resolving to the same FIOLs arises.

Further, in order to ensure that the interests of the defendant network service providers are not unduly impinged by the dynamic injunction, I included a proviso in the order granted, along with the liberty for parties to apply. Under the proviso, the defendants would not be required to block the additional FQDNs upon the request of the plaintiffs if they are of the view that the grounds for disabling access provided by the plaintiffs are insufficient. Thus, the order that I granted in relation to the dynamic injunction read:

In coming to my decision, I had considered the approaches that have been adopted in the UK and Australia. I noted that the English courts have granted dynamic injunctions in order to combat online piracy. In Twentieth Century Fox Film Corporation and others v British Telecommunications plc (No 2) Note [2012] 1 All ER 869, the applicant right-holders brought an application against the respondent internet service provider seeking an injunction pursuant to s 97A of the Copyright, Designs and Patents Act 1988 (c 48) (UK) to block the access by the respondent’s subscribers to a copyright infringing website known as “Newzbin2”. The English High Court granted an order which included a provision for the applicants to notify the respondent of additional IP addresses or URLs whose sole or predominant purpose was to enable or facilitate access to the Newzbin2 website. Arnold J stated at [10]–[12]:

Further, in Cartier International AG and others v British Sky Broadcasting Ltd and others [2017] 1 All ER 700, a decision of the English Court of Appeal, Kitchin LJ stated at [18]:

On the other hand, the Federal Court of Australia has taken a contrary view and has required parties to apply to court to vary the original site-blocking order in response to any circumventive measures taken by operators of FIOLs. In Roadshow Films Pty Limited v Telstra Corporation Ltd [2016] FCA 1503, the Federal Court of Australia declined to issue an order sought by the applicants which would permit them to extend the scope of the main site-blocking order to include additional domain names, IP addresses and/or URLs without any further order of court. While the Australian courts have acknowledged that an online location already ordered to be blocked may be accessed from a new FQDN subsequent to the order, they have preferred an approach that would require the court to amend the original order to add these new FQDNs, upon application by the applicants. Nicholas J stated in this regard at [137]–[138] of Roadshow Films Pty Limited v Telstra Corporation Ltd [2016] FCA 1503 (see also Roadshow Films Pty Limited v Telstra Corporation Limited [2018] FCA 582 at pp iv–v, [13]) :

Nicholas J’s reason as gleaned from the above-quoted passage for declining to issue a dynamic injunction appears to be that the court should be the ultimate arbiter and retain the powers to determine if the additional FQDNs should be blocked. This is presumably to prevent “overblocking”, ie, the blocking of legitimate sites.

However, with respect, this may be an overstated concern in my view. Under the dynamic injunction granted in the present case, the plaintiffs would be required to provide evidence to the defendants (and to the court) that the new FQDNs resolve to the same FIOLs already blocked under the main injunction. Further, with the proviso included, should there be any dispute as to whether this is indeed the case, the defendant network service providers may decline to block the new FQDNs and parties may apply to court for a determination of the issue. In this regard, the court retains the powers to determine if the new FQDNs indeed resolve to the same FIOLs and if they should correspondingly be blocked by the defendant network service providers.

Conclusion

At the second reading of the Copyright (Amendment) Bill (No 16 of 2014), the then Senior Minister of State for Law Ms Indranee Rajah, SC explained that the mechanism under s 193DDA of the Copyright Act seeks to “empower rights owners to more effectively disable access to sites that flagrantly infringe copyright” while at the same time ensuring that the framework does not “unduly impinge upon the rights and interests of other stakeholders, including network service providers and website owners hosting legitimate content”.

I was of the view that the orders granted would strike an appropriate balance between the competing interests. In particular, the dynamic injunction ordered would provide right-holders with a means to more effectively deal with circumventive measures while at the same time providing a recourse to network service providers and site-owners should there be a dispute as to whether the new FQDNs indeed resolve to the same FIOLs blocked under the main injunction.

Such an approach was, in my view, consonant with the legislative objective of s 193DDA of the Copyright Act which is to provide a means of disabling access to the FIOL, given the nature of online piracy today including the ease with which circumventive measures may be adopted.