Autodesk Australia Pty Ltd v Cheung

Re: AUTODESK AUSTRALIA PTY. LTD. AND AUTODESK, INC.
And: CHARLES CHEUNG
No. G566 of 1987
FED No. 121
Copyright
(1990) AIPC para 90-665

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox J.(1)

CATCHWORDS

Copyright - Disposal by respondent of "pirate" copies of computer programs produced by applicants - "Pirate" copies imported from overseas and distributed free of charge to purchasers of computer hardware sold by respondent - Infringement of copyright conceded - Assessment of damages - Claim for compensatory damages based on net return to applicants if programs had been purchased from them - Difficulties in assessing compensation on this basis - Claim for additional (exemplary) damages - Discusssion of relevant factors - Damages assessed to cover both compensatory and additional damages and apportioned between applicants.

Copyright Act 1968 ss.37, 38, 115

HEARING

SYDNEY

#DATE 4:4:1990

Counsel for the Applicants: Mr A Panna

Solicitors for the Applicants: Stephens Solicitors

Counsel for the Respondent: JE Armfield

Solicitors for the Respondent: Paul Wells and Co

ORDER

1. Judgment be entered in favor of the first applicant against

the respondent in the sum of Thirty thousand dollars

($30,000).

2. Judgment be entered in favor of the second applicant against

the respondent in the sum of Twenty thousand dollars

($20,000).

3. The respondent pay to the applicants their costs of this proceeding.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This is an action for breach of copyright. Autodesk Inc, the second applicant, creates computer programs which it distributes in Australia through a subsidiary company, Autodesk Australia Pty Ltd, the first applicant. As he now concedes, Charles Cheung, the respondent, has infringed the applicants' copyright and the sole matter requiring determination by the Court is the amount of damages payable by the respondent.

The facts

1. The applicants first became aware of the respondent's activities in October 1987. At that time an unrelated computer software company, HST Technology Pty Limited, received certain information regarding Mr Cheung. This evidence led it to believe that Mr Cheung was in the habit of supplying copies of programs marketed by HST Technology free of cost to purchasers of computers sold by him. That company arranged for a consultant, Mr JA Quigley, to contact Mr Cheung in the guise of a person interested in acquiring a computer. On 12 October 1987, in company with an associate, Mr Robert Lim, Mr Quigley went to premises in the Sydney suburb of Ryde where Mr Cheung conducted his business. These premises were part of his home. Mr Cheung demonstrated certain computer hardware. During the course of these demonstrations Mr Quigley expressed an interest in acquiring some software. Mr Cheung replied:
   "The computer is no good without the
   programs. I can give you whatever programs
   you wish. They are pirated programs and it is
   illegal. As long as you keep quiet about it I
   can let you have whatever you want as a gift
   if you buy…