- The Federal Court has ordered Telstra to give discovery of documents relating to the identity of registered Telstra account holders for specified IP addresses.
- Those account holders are believed to have infringed the copyright in Siemens NX software and the Solid Edge Software.
- The decision shows that the preliminary discovery mechanism in the Federal Court Rules can be used to identify a suspected copyright infringer where only their IP address is known.
In a recent decision in Siemens Industry Software Inc v Telstra Corporation Limited  FCA 901, the Federal Court has ordered Telstra Corporation Limited (‘Telstra’) to give discovery of documents relating to the identity of registered Telstra account holders for specified IP addresses. Those account holders are believed to have infringed the copyright in Siemens NX software and the Solid Edge Software (‘Software’). The Software is used for sophisticated computer-assisted design and computer-assisted manufacturing.
The decision is significant because it is the first time in Australia that a copyright owner of CAD CAM software has obtained an order for preliminary discovery against an ISP. The decision shows that the preliminary discovery mechanism in the Federal Court Rules can be used to identity a suspected infringer where only their IP address is known.
In order to detect copyright infringement, Siemens has embedded an ‘automatic reporting function’ (‘ARF’), in each of the Software products. The ARF is capable of, inter alia, capturing the IP address of a computer connected to the internet while someone is using ‘cracked’ (unlicensed) Software.
Siemens received reports of unlicensed usage of the Software which involved 20 IP addresses. A publicly available search of each IP address resolved to Telstra. This meant that the person in fact using the cracked Software was probably a Telstra subscriber whose identity would be known to Telstra by virtue of Telstra’s billing arrangements. No other identifying information was available.
Siemens sought a preliminary discovery order pursuant to regulation 7.22 of the Federal Court Rules 2011 (Cth) (‘FCR’) against Telstra for the release of the account holders’ personal details. Telstra neither opposed nor consented to the orders sought.
The Federal Court found Siemens satisfied r 7.22 by establishing:
- It may have a right to obtain relief against a prospective respondent; and
- It could not identify the prospective respondent and that Telstra knew or was likely to know the identity of that person or have a document which reveals it.
Justice Burley observed: ‘Siemens is not required to demonstrate the existence of a prima facie case; however, FCR r 7.22 is not to be used in favour of a person who intends to commence merely speculative proceedings, and so a material factor in the exercise of the Court’s discretion is the prospect of Siemens succeeding in proceedings against the alleged infringers: Hooper v Kirella Pty Ltd  FCA 1584; 96 FCR 1 (Wilcox, Sackville and Katz JJ) at  and the cases cited therein’ (at ).