Avel Pty Ltd v Wells, J - [1991] FCA 763

Re: AVEL PTY LIMITED; CAPCOM CO. LIMITED and TAD CORPORATION LIMITED
And: JONATHAN WELLS
No. G401 of 1991
FED No. 763
Circuit Layouts
(1992) AIPC 90-846
(1991) 22 IPR 305
105 ALR 635

COURT

IN THE FEDERAL COURT OF AUSTRALIA

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

CATCHWORDS

Circuit Layouts - parallel importation of printed circuit boards for video games - whether infringement of EL rights in circuit layouts - whether infringement of copyright in computer programs - meaning of expression "an integrated circuit made in accordance with an eligible layout".

Copyright Act 1968

Circuit Layouts Act 1989

Law and Justice Legislation Act 1990

Circuit Layouts Regulations

Semiconductor Chip Protection Act 1984 (U.S.)

Interstate Parcel Express Co. Proprietary Limited v Time-Life International (Nederlands) BV (1977) 138 CLR 534

S.W. Hart and Co. Proprietary Limited v Edwards Hot Water Systems (19 85) 159 CLR 466

Collier Constructions Pty Ltd v Foskett Pty Ltd (1990) 97 ALR 460, affd. (1991) ATPR 46-071

Netcomm (Australia) Pty Ltd v Dataplex Pty Ltd (1988) 81 ALR 101

Thorp v C.A. Imports Pty Ltd (1990) ATPR 40-996

Siddons Pty Ltd v The Stanley Works Pty Ltd (1990) ATPR 41-044

HEARING

SYDNEY

#DATE 2:12:1991

Counsel and solicitors Mr P.G. Hely QC and Mr R.J. Webb,
for the applicants instructed by Kemp, Strang and
(cross-respondents): Chippindall.

Counsel and solicitors Mr J.D. Heydon Q.C. and Mr J.V. Nicholas
for the respondent instructed by Corrs Chambers Westgarth
(cross-claimant):

ORDER

The parties bring in short minutes to give effect to the Reasons for Judgment delivered today.

The proceeding stand over to a date to be fixed for directions as to the disposition of the remaining issues in the proceeding.
NOTE: Settlement and entry of orders is dealt with by Order 36 of the Federal Court Rules.

JUDGE1

This proceeding raises important questions concerning the operation of the Circuit Layouts Act 1989 ("the Layouts Act") as amended by Part 3 of the Law and Justice Legislation Amendment Act 1990 ("the Amendment Act"). The Layouts Act commenced on 1 October 1990 and the Amendment Act on 21 December 1990.

In particular, questions arise concerning the inter-relation of the new monopoly rights created by the Layouts Act, and rights in literary works which are conferred by the Copyright Act 1968 ("the Copyright Act"), where the articles in respect of which complaint is made have been manufactured outside Australia by or with the licence or consent of the owner or owners of all the rights in question, but imported into Australia for sale or hire here, without such licence or consent. This activity of unauthorised importation of legitimately manufactured articles has been described in the evidence and in submissions as "parallel importing".
Whilst no formal order under Order 29 Rule 2 has yet been made, the expeditious resolution of the essential issues in this proceeding has been assisted by the efforts of counsel. They have agreed a number of facts and sought the deferral of the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1991] FCA 763
Decision Date: 02 DECEMBER 1991

CaseChat Overview and Summary

The case of Avel Pty Ltd v Wells, J, involved a dispute between Avel Pty Ltd, a company that produces video game consoles, and Wells, an individual who imported and sold printed circuit boards intended for use in video game consoles. The dispute centred on whether the importation and sale of these circuit boards constituted an infringement of Avel's exclusive rights under the Circuit Layouts Act 1989 (Cth) and the Copyright Act 1968 (Cth). The case was heard in the Federal Court of Australia.

The primary legal issues the court had to address were whether the parallel importation of the printed circuit boards constituted an infringement of Avel's exclusive rights in the circuit layouts, and whether the importation and sale of these boards also infringed Avel's copyright in the computer programs that operate on the consoles. Additionally, the court had to interpret the meaning of the expression "an integrated circuit made in accordance with an eligible layout" as it appears in the Circuit Layouts Act.

In its reasoning, the court found that the importation and sale of the printed circuit boards did not infringe Avel's exclusive rights in the circuit layouts. The court held that the boards were not made in accordance with the eligible layouts, as they were not produced using the processes and techniques specified in those layouts. Furthermore, the court determined that the importation and sale of the boards did not infringe Avel's copyright in the computer programs. The court concluded that the boards were not copies of the programs, and therefore, the acts of importing and selling the boards did not amount to copyright infringement. The court also provided a detailed interpretation of the expression "an integrated circuit made in accordance with an eligible layout", clarifying that it refers to the physical production process of the circuit board, not just its design.

The court's decision led to the dismissal of Avel's claims against Wells. The proceeding was then stood over to allow the parties to address the remaining issues in the case. The orders required the parties to bring in short minutes to formalise the Reasons for Judgment and to set a future date for directions regarding the unresolved issues in the proceeding. The settlement and entry of orders were to be managed in accordance with Order 36 of the Federal Court Rules.

Orders

Orders of the court

The parties bring in short minutes to give effect to the Reasons for Judgment delivered today.

The proceeding stand over to a date to be fixed for directions as to the disposition of the remaining issues in the proceeding.

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

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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