Simpsons Solicitors

Second bite bites back

January 5th 2016

As reported in previous news items, Dallas Buyers Club LLC (“DBC”) has been attempting to get access from ISPs to the names and contact addresses of some 4,000 people identified as having an account from which a copy of the film Dallas Buyers Club was uploaded.

The road has been rocky and, with the most recent decision of Justice Perram on 16 December 2015, the road became even rockier.

Background

In May 2015, Justice Perram granted the order sought by DBC to obtain the addresses, but “stayed” that order until DBC satisfied him that the letter DBC intended to send to the identified account holders was appropriate.

In August 2015, DBC brought the proposed wording for the letter to the Court, but Justice Perram was not satisfied that the wording of the letter was appropriate. This was because he disagreed with the demand in the draft letter that the recipient provide DBC with information about their other uploading activity and that they pay “additional” damages for other infringements (including for films in which DBC did not own copyright).

His Honour consequently both declined to lift the stay on his earlier orders and indicated that he expected that the letter should do no more than demand payment of the retail price of a copy of the film and a proportion of costs relating to getting the information about the account holder. To add insult to injury, his Honour stated that DBC would need to pay a bond of $600,000 before any stay would be lifted. This was ordered because, his Honour wanted to make sure that, as it is based overseas, if DBC was given the information, it would not just go ahead anyway and send out letters containing information not approved by the Court.

The latest decision 

The latest decision follows DBC making a further application to the Court to have the stay lifted.

In support of the stay, DBC argued that it should be permitted to send a letter to identified account holders that would demand both a “fair and reasonable licence fee” for a worldwide, non-exclusive distribution licence for the film and additional damages. DBC also argued that the bond it would be required to pay should be reduced to $60,000.

Justice Perram gave DBC short shrift, including because, in his view:

 

  • DBC was attempting to re-litigate a number of matters that his Honour had already dealt with in his August judgment;
  • the move by DBC to include in the letter a demand that account holders pay a fee based on a worldwide, non-exclusive distribution licence for the film was not supported by any evidence as to what this sum would be; and
  • he did not accept that the inclusion in the proposed letter of a claim for additional damages would be appropriate or warranted against each account holder (even if, on more evidence, such a claim may be maintainable against some).

His Honour also rejected DBC’s application to have the bond reduced.

What happens next? 

Unless DBC makes a new application seeking to lift the stay before noon on 11 February 2016, DBC’s claims will be entirely dismissed.

Any new application may encompass both coming back to Justice Perram with draft wording of a letter that he would approve (which might be a demand for no more than the retail price of a copy of the film and a proportion of costs), and the posting of the original bond of $600,000. From an economic point of view, however, with such limitations, DBC may well find that the whole exercise may have been (or become) completely unworkable from a commercial point of view.  Alternatively, it may be that an appeal of the decision of Justice Perram is being considered.

Stay tuned!

The decision is available at:

http://www.austlii.edu.au/au/cases/cth/FCA/2015/1437.html 

If you would like advice on copyright  (including infringement issues), contact copyright lawyers Adam Simpson or Ian McDonald at Simpsons Solicitors.