FEDERAL COURT OF AUSTRALIA
IPC Global Pty Ltd v Pavetest Pty Ltd (No 4) [2017] FCA 260
File number: NSD 1203 of 2015 Judge: MOSHINSKY J Date of judgment: 16 March 2017 Catchwords: COPYRIGHT – infringement – literary work – computer program – form of relief
INTELLECTUAL PROPERTY – confidential information – computer program – form of relief – whether ‘springboard’ injunction should be ordered
Legislation: Federal Court of Australia Act 1976 (Cth), s 43
Federal Court Rules 2011, r 40.13
Cases cited: Bowen Investments Pty Ltd v Tabcorp Holdings Ltd (No 2) [2008] FCAFC 107
Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 327 ALR 192
IPC Global Pty Ltd v Pavetest Pty Ltd (No 2) (2016) 121 IPR 434
IPC Global Pty Ltd v Pavetest Pty Ltd (No 3) [2017] FCA 82
Jardin v Metcash Ltd (2011) 285 ALR 677
Kerry Ingredients (UK) Ltd v Bakkavor Group Ltd [2016] EWHC 2448 (Ch)
Latoudis v Casey (1990) 170 CLR 534
Les Laboratoires Servier v Apotex Pty Ltd (2016) 117 IPR 415
Nexus Adhesives Pty Ltd v RLA Polymers Pty Ltd (2012) 97 IPR 160
QBE Management Services (UK) Ltd v Dymoke [2012] IRLR 458; [2012] EWHC 80 (QB)
Queensland North Australia Pty Ltd v Takeovers Panel (No 2) (2015) 236 FCR 370
RLA Polymers Pty Ltd v Nexus Adhesives Pty Ltd (2011) 280 ALR 125
Roger Bullivant Ltd v Ellis [1987] FSR 172
Ruddock v Vadarlis (No 2) (2001) 115 FCR 229
Seager v Copydex Ltd [1969] RPC 250
Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1967] RPC 375
United States Surgical Corporation v Hospital Products International Pty Ltd [1983] 2 NSWLR 157
Universal Thermosensors Ltd v Hibben [1992] 1 WLR 840
Vestergaard Frandsen A/S v Bestnet Europe Ltd [2010] FSR 2; [2009] EWHC 1456 (Ch)
Zomojo Pty Ltd v Hurd (No 2) (2012) 299 ALR 621
American Law Institute, Restatement (Third) of Unfair Competition, 1995
Dal Pont GE, Law of Confidentiality (LexisNexis Butterworths, Australia, 2015)
Date of hearing: 14, 17, 19, 20 October and 7, 8 November 2016, 14 March 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 53 Counsel for the Applicant: Mr R Cobden SC with Ms E Bathurst Solicitor for the Applicant: Bird & Bird Counsel for the Respondents: Mr CP Thompson Solicitor for the Respondents: Stephens Lawyers & Consultants ORDERS
NSD 1203 of 2015 BETWEEN: IPC GLOBAL PTY LTD (ACN 168 265 156)
Applicant
AND: PAVETEST PTY LTD (ACN 160 146 083)
First Respondent
CON SINADINOS
Second Respondent
ALAN JOHN FEELEY (and another named in the Schedule)
Third Respondent
JUDGE:
MOSHINSKY J
DATE OF ORDER:
16 MARCH 2017
THE COURT DECLARES THAT:
1.The first respondent, by the third respondent reproducing the source code for the system library and the test modules UTS001, UTS002, UTS003, UTS004, UTS006, UTS018…
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- Case
- [2017] FCA 260
- Decision Date
CaseChat Overview and Summary
The Federal Court ruled in favor of IPC Global, affirming the infringement of copyright and breach of confidence by Pavetest Pty Ltd. The court granted IPC Global the requested declarations regarding copyright infringement and breach of confidence, and issued injunctions to prevent the unauthorized reproduction, communication, and distribution of the infringing software. Furthermore, the court mandated that Pavetest Pty Ltd destroy all copies of the infringing software and ordered them to provide detailed information about their sales and supplies of the software. The court also set out a schedule for quantifying damages and ordered the respondents to pay IPC Global's costs associated with the proceedings. The court's decision provides a clear framework for addressing intellectual property disputes in the software industry.
Orders
Orders of the court
6. The first respondent, whether by itself, its directors, servants, agents or otherwise howsoever, be permanently restrained, without the licence of the applicant, from infringing the copyright subsisting in the UTS Software by the reproduction, communication, importation, supply, sale or offer for sale or supply of version 1 of the Pavetest TestLab Software.
7. The second and third respondents be permanently restrained from, without the licence of the applicant, authorising the infringement, by the reproduction, communication, importation, supply, sale or offer for sale or supply of version 1 of the Pavetest TestLab Software.
8. Within 14 days of the date of these orders, the respondents file and serve an affidavit attesting to the fact that all copies of version 1 of the Pavetest TestLab Software have been destroyed or erased, and the steps undertaken to give effect to such destruction or erasing.
9. Within 14 days of the date of these Orders, the respondents file and serve an affidavit attesting to the fact that the reference copy of the CDAS Firmware referred to in Order 5 of the Orders in these proceedings made on 8 November 2016 has been destroyed or erased. (The Court notes that the reference copy was delivered by the respondents to Stephens Lawyers on 15 November 2016 and is in the possession of Stephens Lawyers).
10. An inquiry be held to quantify the damages (including any additional damages pursuant to s 115(4) of the Copyright Act 1968 (Cth)) or, subject to the applicant’s election, to take an account of profits.
11. Within 28 days of the date of these orders, the first respondent serve an affidavit setting out details of all its sales and supplies of:
(a) its controller known as the Control and Data Acquisition System (CDAS);
(b) version 1 of the Pavetest TestLab Software; and
(a) version 2 of the Pavetest TestLab Software,
including the date of the sale or supply, the person to whom the sale or supply was made and the price of the sale or supply.
12. Within 42 days of the date of these orders, the first respondent give verified discovery of the accounts and records referred to in the undertaking noted at paragraph 19 of the orders made on 23 October 2015.
13. Leave be granted to the applicant to make any application for further discovery within 21 days of compliance with orders 11 and 12 above.
14. The first, second and third respondents pay the applicant’s costs of and incidental to this proceeding, up to and including the date of these orders, forthwith to be taxed in default of agreement.
15. The application against the fourth respondent be dismissed.
16. The matter be listed for a case management hearing on a date to be fixed, in relation to the making of an election by the applicant and the interlocutory steps preparatory to a further hearing on quantum.
17. Liberty to apply in relation to order 14 above, any such application to be made before the day which is 28 days after the final disposition of the proceeding.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
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Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
I will make such an order.Declarations relating to the software part of the case IPC Global seeks the following declarations in relation to the software part of the case. These relate both to infringement of copyright and breach of confidence.1. The first respondent, by the third respondent reproducing the source code for the system library and the test modules UTS001, UTS002, UTS003, UTS004, UTS006, UTS018 and UTS019 of the original computer program known as “Universal Testing Software” (UTS Software) onto the computer provided to Mr Bin Li (Mr Li) in or around November 2012, has infringed the copyright subsisting in the UTS Software.2. The first respondent, by the creation, development, reproduction and distribution of version 1 of the software known as the “Pavetest TestLab Software” (Pavetest TestLab Software), has infringed the copyright subsisting in the UTS Software.3. The second and third respondents, and each of them, have authorised the infringement by the first respondent of the copyright subsisting in the UTS Software.4. The third respondent, by:(a) providing the source code for the UTS Software as well as the communications protocol documents for the UTS Software which comprise Annexures “BJRF5” and “BJRF6” to the affidavit of Mr Bhathiya Jeewaka Raveendra Fernando affirmed 7 October 2015 (together, Confidential Information) to Mr Li without the applicant’s consent; and(b) thereby assisting Mr Li to develop the Pavetest TestLab Software,breached a duty of confidence he owed to the applicant. The respondents do not oppose the making of declarations, but would frame the declarations in slightly different terms. In relation to proposed declaration 1, they would insert the words “a Delphi 7 version of” before “the original computer program known as”. I do not think the addition of these words is appropriate. The factual findings (see the Reasons at [126], [176]) do not go this far. In relation to the second proposed declaration, the respondents would delete the references to “creation”, “development” and “distribution” and insert “communication”. In other words, they would refer only to the reproduction and communication of version 1 of the TestLab software. In my view, the wording proposed by IPC Global appropriately reflects the facts as referred to in the evidence and Reasons. The respondents do not oppose the third and fourth proposed declarations set out above. I will therefore make declarations substantially in those terms.Injunctions relating to version 1 of the TestLab software IPC Global seeks the following injunctions relating to version 1 of the TestLab software (based on the findings relating to copyright infringement):6.The first respondent, whether by itself, its directors, servants, agents or otherwise howsoever, be permanently restrained, without the licence of the applicant, from infringing the copyright subsisting in the UTS Software by the reproduction, communication, importation, supply, sale or offer for sale or supply of version 1 of the Pavetest TestLab Software.7.The second and third respondents be permanently restrained from, without the licence of the applicant, authorising the infringement, by the reproduction, communication, importation, supply, sale or offer for sale or supply of version 1 of the Pavetest TestLab Software.