Intellectual Property and Technology

Defamation in the Google age: search engines as publishers of defamatory content

15 June, 2020

In what appears to be a win for copyright holders, the Federal Court of Australia (Court) in Dallas Buyers Club LLC v iiNet Limited [2015] FCA 317 ordered iiNet and five other ISPs (ISPs) to hand over the names and addresses of customers who allegedly infringed copyright in the 2012 film Dallas Buyers Club (Movie).

Among other things, the case highlights the tension between the enforcement of copyright and the obligations on ISPs and other businesses to use the personal information of their customers in accordance with the Australian privacy laws.


Dallas Buyers Club LLC (Dallas), which claims to be the owner of the copyright in the Movie, and its parent company (the Applicants) brought an action for preliminary discovery in the Court against the ISPs. Preliminary discovery is a procedure which enables a party who is unable to identify the person it wishes to sue to seek the assistance of the Court in identifying that person.

The Applicants claimed to have identified:

  • 4,726 unique IP addresses from which the Movie was shared without their permission and contrary to the Copyright Act 1968 (Cth); and
  • the ISPs that had supplied those IP addresses.

However, the Applicants did not know the identity of the individuals involved. It was this information the Applicants were seeking.

The Arguments

The ISPs put nearly everything in issue. Their primary position was to resist the application on the following grounds:

1. The Applicants’ evidence was not sufficient to identify the infringing IP addresses.

The Court relied on the Applicants’ expert evidence in rejecting this argument.

2. The claims against the individuals were speculative as it was unclear whether all individuals involved in the seeding process were liable or simply the ‘end-user’ (who, while had only uploaded a sliver of the file, was      the user that made the entire file available for sharing). Further, any claims against the individuals were not likely to materialise as the value of each copy of the Movie was less than $10 per distribution. Therefore, it    was commercially unsound for the Applicants to seek to recover that sum from each individual.

The Court was not persuaded that a suit by the Applicants naming individual infringers would be economically pointless and the Court went on to identify a deterrent effect the bringing of such cases may provide.

3. The Applicants had failed to satisfy the preconditions required under the Court Rules for the Court to make orders regarding preliminary discovery, namely:

(a) The Applicants had a right to relief against the individuals – no such right existed as ‘seeding’ involves the uploading of a sliver of a file, which was an insubstantial upload that could not amount to copyright infringement.

For the reasons outlined above regarding the end-user, the Court rejected this argument and held that the Applicants had a right to relief.

(b) The Applicants could not identify the individuals – the Applicants could identify the individuals by monitoring internet chat rooms and comments made on links/websites.

As the individuals would not have used their real names when illegally downloading/sharing the Movie, the Court noted this argument was unlikely.

(c) The ISPs knew the identity of the infringers – While the ISPs may have the registered contact details for an IP address, they could not ascertain with certainty whether that registered individual was the person that infringed copyright (or alternatively, whether there was another individual using that IP address that could have undertaken the illegal download).

The Court noted that while this may be the case, it is likely the owner of the IP address would be able to assist in identifying the person that downloaded the Movie.

4. The Applicants had not sufficiently identified that they are the owner of the copyright in the Movie.

The Court held that Dallas owned the copyright in the Movie and therefore had a right to sue for infringement.

Given the ISPs’ primary arguments had failed, the Court took into consideration their supplementary position, namely that the orders sought by the Applicants be granted subject to the following constraints:

  • The Applicants should not be permitted to send ‘speculative invoices’ to account holders – the practice of sending a letter of demand to the individuals requesting a large amount of money and offering to settle for a smaller sum, which was still very much in excess of what might actually be recovered in any actual proceeding.
  • The privacy of the account holders should be adequately protected.

The Judgment

The Court identified the potential to breach both the Australian Consumer Law and the Australian Securities and Investment Commission Act 2001 (Cth) if correspondence to the alleged infringers was not carefully drafted. Such concerns however did not preclude the Court finding in favour of the Applicants.

The Court recognised that the privacy concerns raised by the ISPs were relevant. The Court was required to weigh up competing sections of legislation which on one hand allowed for disclosure of individuals’ details if required by law while on the other hand prevented ISPs from disclosing their customer’s details. The Court approach to this clash of rights was to try to accommodate both by requiring the information to be provided but by imposing, by way of conditions, safeguards to ensure that the private information remains private.

Ultimately, the Court ordered the ISPs to divulge the names and physical addresses of their customers alleged to have infringed the Applicants’ copyright. The Court imposed upon the Applicants a condition that the information only be used for the purposes of recovering compensation for the infringements and was not otherwise to be disclosed without the leave of the Court. Further the Court imposed a condition on the Applicants that any letter they proposed to send to an alleged infringer needed to be first submitted to the Court. Finally, the Court ordered the Applicants to pay the costs of the proceedings.


Whilst it may be uneconomical for the Applicants to commence proceedings for copyright infringement against an individual for the cost of each distribution, say $10, the Copyright Act contains provisions for an award of additional damages. Additional damages are awarded having regard to, among other things, the flagrancy of the infringement, the need to deter similar infringements and the individual’s conduct after he/she was informed of the alleged infringement.

Australians do not enjoy a right to privacy, except to the extent that the Australian privacy laws apply to their personal information. Further, in certain circumstances, private information may also be covered under an action for breach of confidence. Whilst the Australian privacy laws contain an exception which allows the disclosure of personal information if required by a court order, this case illustrates the Court’s desire to exercise that exemption only to the extent that is necessary to enable a party to exercise another right.

For further information or assistance with your own intellectual property law matters please contact Jimmy Gill.

This article is not legal advice. It is intended to provide commentary and general information only. Access to this article does not entitle you to rely on it as legal advice. You should obtain formal legal advice specific to your own situation. Please contact us if you require advice on matters covered by this article.

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Canadian Court elevates thumbs-up emoji to signature status

In June 2023, a Canadian Court in South-West Terminal Ltd v Achter Land and Cattle Ltd, 2023 SKKB 116, held that the "thumbs-up" emoji carried enough weight to constitute acceptance of contractual terms, analogous to that of a "signature", to establish a legally binding contract.   Facts This case involved a contractual dispute between two parties namely South-West Terminal ("SWT"), a grain and crop inputs company; and Achter Land & Cattle Ltd ("ALC"), a farming corporation. SWT sought to purchase several tonnes of flax at a price of $17 per bushel, and in March 2021, Mr Mickleborough, SWT's Farm Marketing Representative, sent a "blast" text message to several sellers indicating this intention. Following this text message, Mr Mickleborough spoke with Mr Achter, owner of ALC, whereby both parties verbally agreed by phone that ALC would supply 86 metric tonnes of flax to SWT at a price of $17 per bushel, in November 2021. After the phone call, Mr Mickleborough applied his ink signature to the contract, took a photo of it on his mobile phone and texted it to Mr Archter with the text message, "please confirm flax contract". Mr Archter responded by texting back a "thumbs-up" emoji, but ultimately did not deliver the 87 metric tonnes of flax as agreed.   Issues The parties did not dispute the facts, but rather, "disagreed as to whether there was a formal meeting of the minds" and intention to enter into a legally binding agreement. The primary issue that the Court was tasked with deciding was whether Mr Achter's use of the thumbs-up emoji carried the same weight as a signature to signify acceptance of the terms of the alleged contract. Mr Mickleborough put forward the argument that the emoji sent by Mr Achter conveyed acceptance of the terms of the agreement, however Mr Achter disagreed arguing that his use of the emoji was his way of confirming receipt of the text message. By way of affidavit, Mr Achter stated "I deny that he accepted the thumbs-up emoji as a digital signature of the incomplete contract"; and "I did not have time to review the Flax agreement and merely wanted to indicate that I did receive his text message." Consensus Ad Idem In deciding this issue, the Court needed to determine whether there had been a "formal meeting of the minds". At paragraph [18], Justice Keene considered the reasonable bystander test: " The court is to look at “how each party’s conduct would appear to a reasonable person in the position of the other party” (Aga at para 35). The test for agreement to a contract for legal purposes is whether the parties have indicated to the outside world, in the form of the objective reasonable bystander, their intention to contract and the terms of such contract (Aga at para 36). The question is not what the parties subjectively had in mind, but rather whether their conduct was such that a reasonable person would conclude that they had intended to be bound (Aga at para 37)."   Justice Keene considered several factors including: The nature of the business relationship, notably that Mr Achter had a long-standing business relationship with SWT going back to at least 2015 when Mr Mickleborough started with SWT; and   The consistency in the manner by which the parties conducted their business by way of verbal conversation either in person or over the phone to come to an agreement on price and volume of grain, which would be followed by Mr Mickleborough drafting a contract and sending it to Mr Achter. Mr Mickleborough stated, "I have done approximately fifteen to twenty contracts with Achter"; and   The fact that the parties had both clearly understood responses by Mr Achter such as "looks good", "ok" or "yup" to mean confirmation of the contract and "not a mere acknowledgment of the receipt of the contract" by Mr Achter.   Judgment At paragraph [36], Keene J said: "I am satisfied on the balance of probabilities that Chris okayed or approved the contract just like he had done before except this time he used a thumbs-up emoji. In my opinion, when considering all of the circumstances that meant approval of the flax contract and not simply that he had received the contract and was going to think about it. In my view a reasonable bystander knowing all of the background would come to the objective understanding that the parties had reached consensus ad item – a meeting of the minds – just like they had done on numerous other occasions." The court satisfied that the use of the thumbs-up emoji paralleled the prior abbreviated texts that the parties had used to confirm agreement ("looks good", "yup" and "ok"). This approach had become the established way the parties conducted their business relationship.   Significance of the Thumbs-Up Emoji Justice Keene acknowledged the significance of a thumbs-up emoji as something analogous to a signature at paragraph [63]: "This court readily acknowledges that a thumbs-up emoji is a non-traditional means to "sign" a document but nevertheless under these circumstances this was a valid way to convey the two purposes of a "signature" – to identify the signator… and… to convey Achter's acceptance of the flax contract." In support of this, Justice Keene cited the definition of the thumbs-up emoji: "used to express assent, approval or encouragement in digital communications, especially in western cultures", confirming that the thumbs-up emoji is an "action in an electronic form" that can be used to allow express acceptance as contemplated under the Canadian Electronic Information and Documents Act 2000. Justice Keene dismissed the concerns raised by the defence that accepting the thumbs up emoji as a sign of agreement would "open the flood gates" to new interpretations of other emojis, such as the 'fist bump' and 'handshake'. Significantly, the Court held, "I agree this case is novel (at least in Skatchewan), but nevertheless this Court cannot (nor should it) attempt to stem the tide of technology and common usage." Ultimately the Court found in favour of SWT, holding that there was a valid contract between the parties and that the defendant breached by failing to deliver the flax. Keene J made a judgment against ALC for damages in the amount of $82,200.21 payable to SWT plus interest.   What does this mean for Australia? This is a Canadian decision meaning that it is not precedent in Australia. However, an Australian court is well within its rights to consider this judgment when dealing with matters that come before it with similar circumstances. This judgment is a reminder that the common law of contract has and will continue to evolve to meet the everchanging realities and challenges of our day-to-day lives. As time has progressed, we have seen the courts transition from sole acceptance of the traditional "wet ink" signature, to electronic signatures. Electronic signatures are legally recognised in Australia and are provided for by the Electronic Transactions Act 1999 and the Electronic Transactions Regulations 2020. Companies are also now able to execute certain documents via electronic means under s 127 of the Corporations Act. We have also seen the rise of electronic platforms such as "DocuSign" used in commercial relationships to facilitate the efficient signing of contracts. Furthermore, this case highlights how courts will interpret the element of "intention" when determining whether a valid contract has been formed, confirming the long-standing principle that it is to be assessed objectively from the perspective of a reasonable and objective bystander who is aware of all the relevant facts. Overall, this is an interesting development for parties engaging in commerce via electronic means and an important reminder to all to be conscious of the fact that contracts have the potential to be agreed to by use of an emoji in today's digital age.

Published by Foez Dewan
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Venues NSW ats Kerri Kane: Venues NSW successful in overturning a District Court decision

The McCabes Government team are pleased to have assisted Venues NSW in successfully overturning a District Court decision holding it liable in negligence for injuries sustained by a patron who slipped and fell down a set of steps at a sports stadium; Venues NSW v Kane [2023] NSWCA 192 Principles The NSW Court of Appeal has reaffirmed the principles regarding the interpretation of the matters to be considered under sections5B of the Civil Liability Act 2002 (NSW). There is no obligation in negligence for an occupier to ensure that handrails are applied to all sets of steps in its premises. An occupier will not automatically be liable in negligence if its premises are not compliant with the Building Code of Australia (BCA). Background The plaintiff commenced proceedings in the District Court of NSW against Venues NSW (VNSW) alleging she suffered injuries when she fell down a set of steps at McDonald Jones Stadium in Newcastle on 6 July 2019. The plaintiff attended the Stadium with her husband and friend to watch an NRL rugby league match. It was raining heavily on the day. The plaintiff alleged she slipped and fell while descending a stepped aisle which comprised of concrete steps between rows of seating. The plaintiff sued VNSW in negligence alleging the stepped aisle constituted a "stairwell" under the BCA and therefore ought to have had a handrail. The plaintiff also alleged that the chamfered edge of the steps exceeded the allowed tolerance of 5mm. The Decision at Trial In finding in favour of the plaintiff, Norton DCJ found that: the steps constituted a "stairwell" and therefore were in breach of the BCA due to the absence of a handrail and the presence of a chamfered edge exceeding 5mm in length. even if handrails were not required, the use of them would have been good and reasonable practice given the stadium was open during periods of darkness, inclement weather, and used by a persons of varying levels of physical agility. VNSW ought to have arranged a risk assessment of the entire stadium, particularly the areas which provided access along stepped surfaces. installation of a handrail (or building stairs with the required chamfered edge) would not impose a serious burden on VNSW, even if required on other similar steps. Issues on Appeal VNSW appealed the decision of Norton DCJ. The primary challenge was to the trial judge's finding that VNSW was in breach of its duty of care in failing to install a handrail. In addition, VNSW challenged the findings that the steps met the definition of a 'stairwell' under the BCA as well as the trial judge's assessment of damages. Decision on Appeal The Court of Appeal found that primary judge's finding of breach of duty on the part of VNSW could not stand for multiple reasons, including that it proceeded on an erroneous construction of s5B of the Civil Liability Act 2002 and the obvious nature of the danger presented by the steps. As to the determination of breach of duty, the Court stressed that the trial judge was wrong to proceed on the basis that the Court simply has regard to each of the seven matters raised in ss 5B and 5C of the CLA and then express a conclusion as to breach. Instead, the Court emphasised that s 5B(1)(c) is a gateway, such that a plaintiff who fails to satisfy that provision cannot succeed, with the matters raised in s 5B(2) being mandatory considerations to be borne in mind when determining s 5B(1)(c). 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The burden of taking the complained of precautions includes to address similar risks of harm throughout the stadium, i.e. installing handrails on the other stepped aisles. This was a mandatory consideration under s5C(a) which was not properly taken into account. As to the question of BCA compliance, the Court of Appeal did not consider it necessary to make a firm conclusion of this issue given it did not find a breach of duty.  The Court did however indicated it did not consider the stepped aisle would constitute a "stairway" under the BCA. The Court of Appeal also found that there was nothing in the trial judge's reasons explicitly connecting the risk assessment she considered VNSW ought to have carried out, with the installation of handrails on any of the aisles in the stadium and therefore could not lead to any findings regarding breach or causation. As to quantum, the Court of Appeal accepted that the trial judge erred in awarding the plaintiff a "buffer" of $10,000 for past economic loss in circumstances where there was no evidence of any loss of income. The Court of Appeal set aside the orders of the District Court and entered judgment for VNSW with costs. Why this case is important? The case confirms there is no obligation in negligence for owners and operators of public or private venues in NSW to have a handrail on every set of steps. It is also a welcome affirmation of the principles surrounding the assessment of breach of duty under s 5B and s 5C of the CLA, particularly in assessing whether precautions are required to be taken in response to hazards which are familiar and obvious to a reasonable person.

Published by Leighton Hawkes
18 August, 2023
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Expert evidence – The letter of instruction and involvement of lawyers

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