Micro Focus (US) Inc v New South Wales

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FEDERAL COURT OF AUSTRALIA

Micro Focus (US) Inc v State of New South Wales (New South Wales Police Force) [2011] FCA 787

Citation: Micro Focus (US) Inc v State of New South Wales (New South Wales Police Force) [2011] FCA 787
Parties: MICRO FOCUS (US) INC, MICRO FOCUS (IP) LIMITED and MICRO FOCUS IP DEVELOPMENT LIMITED v STATE OF NEW SOUTH WALES (NEW SOUTH WALES POLICE FORCE), POLICE INTEGRITY COMMISSION and STATE OF NEW SOUTH WALES (NEW SOUTH WALES OMBUDSMAN)
File number(s): NSD 640 of 2011
Judge: JAGOT J
Date of judgment: 15 July 2011
Catchwords:

COPYRIGHT – infringement – whether s 35A of the Ombudsman Act 1974 (NSW) conferred immunity from liability in respect of alleged acts of copyright infringement

STATUTORY INTERPRETATION – whether installation of computer software constituted an act done by the Ombudsman “for the purpose of executing” the Police Act 1990 (NSW) – whether s 35A of the Ombudsman Act 1974 (NSW) binding on the Federal Court in respect of proceedings under the Copyright Act 1968 (Cth) in light of s 79 of the Judiciary Act 1903 (Cth) – whether the Copyright Act1968 (Cth) “otherwise provided” within the meaning of s 79 of the Judiciary Act 1903 (Cth)

Legislation: Copyright Act 1968 (Cth) ss 7, 10, 31, 115, 116
Federal Court of Australia Act 1976 (Cth) s 31A
Judiciary Act 1903 (Cth) s 79
Ombudsman Act 1974 (NSW) ss 6, 35A
Police Act1990 (NSW) Pt 8A
Federal Court Rules O 9 r 7
Cases cited:

Ainsworth v The Ombudsman (1988) 17 NSWLR 276
Austral Pacific Group Limited (in liquidation) v Airservices Australia (2000) 203 CLR 136
Board of Fire Commissioners of New South Wales v Ardouin (1961) 109 CLR 105
Botany Council v The Ombudsman (1995) 37 NSWLR 357
Dartberg Pty Ltd v Wealthcare Financial Planning Pty Ltd (2007) 164 FCR 450
Northern Territory of Australia v GPAO (1999) 196 CLR 553
Puntoriero v Water Administration Ministerial Corporation (2000) 199 CLR 575
TheOmbudsman v Laughton (2005) 64 NSWLR 114
Commissioner of Police v The Ombudsman (unreported, Supreme Court of New South Wales, Sackville AJ, 9 September 1994)

Date of hearing: 12 July 2011
Place: Sydney
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 27
Counsel for the Applicants: Mr G R Kennett SC with Mr M J Darke and Mr M Smith
Solicitor for the Applicants: Clayton Utz
Counsel for the First Respondent: The first respondent did not appear
Solicitor for the Second Respondent: Ms E White of Baker & McKenzie
Counsel for the Third Respondent: Mr J Griffiths SC
Solicitor for the Third Respondent: Baker & McKenzie

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 640 of 2011
BETWEEN:

MICRO FOCUS (US) INC
First Applicant

MICRO FOCUS (IP) LIMITED
Second Applicant

MICRO FOCUS IP DEVELOPMENT LIMITED
Third Applicant
AND:

STATE OF NEW SOUTH WALES (NEW SOUTH WALES POLICE FORCE)
First Respondent

POLICE INTEGRITY COMMISSION
Second Respondent

STATE OF NEW SOUTH WALES (NEW SOUTH WALES OMBUDSMAN)
Third…

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Details
Case
[2011] FCA 787
Decision Date

CaseChat Overview and Summary

Micro Focus (US) Inc and others brought an action against the NSW Ombudsman for copyright infringement, claiming that the NSW Ombudsman had installed and used computer software without a licence. The NSW Ombudsman argued that it was immune from such claims under section 35A of the Ombudsman Act 1974 (NSW). The primary legal issues were whether the installation of the software constituted an act done by the Ombudsman "for the purpose of executing" the Police Act 1990 (NSW), and if so, whether section 35A of the Ombudsman Act conferred immunity from liability. Furthermore, the court had to determine whether section 35A was binding on the Federal Court under the Copyright Act 1968 (Cth) in light of section 79 of the Judiciary Act 1903 (Cth), and if the Copyright Act "otherwise provided" within the meaning of section 79.

The court held that section 35A of the Ombudsman Act did not confer immunity on the NSW Ombudsman for the alleged copyright infringements. The court found that the installation and use of the software did not constitute an act done "for the purpose of executing" the Police Act. Additionally, the court ruled that section 79 of the Judiciary Act did not render section 35A binding on the Federal Court in proceedings under the Copyright Act, and that the Copyright Act did "otherwise provide" within the meaning of section 79. The court concluded that the NSW Ombudsman was not immune from liability for the copyright infringement claims.

The court dismissed the notice of motion filed by the NSW Ombudsman and ordered that the NSW Ombudsman pay the applicants' costs of the notice of motion as agreed or taxed.

Orders

Orders of the court

1. The third respondent’s notice of motion filed 28 June 2011 be dismissed.

2. The third respondent pay the applicants’ costs of the notice of motion as agreed or taxed.

Note:

Background

Background to the litigation

To understand these competing contentions, further information about the facts and statutory provisions is required.FACTS The facts, for present purposes, are not in dispute. Consistent with the amended statement of claim filed on 14 June 2011 it must be assumed that ViewNow, including all versions thereof, is an original literary work in which copyright subsists for the purposes of the Copyright Act. Further, it must be assumed that since 1 November 2010 the third applicant has owned the copyright subsisting in ViewNow and that, before that date, the first and then the second applicant owned the copyright subsisting in ViewNow. It must also be assumed that the NSW Ombudsman, since at least July 2010, has reproduced in material form the whole or a substantial part of one or more versions of ViewNow without any licence from the copyright owner to do so and, thereby, has infringed copyright in those works. According to Vincent Riordan, an officer of the NSW Ombudsman whose evidence was not challenged, the NSW Ombudsman and officers of the NSW Ombudsman use ViewNow on their computers to access the computerised records of the New South Wales Police Force (the NSW Police Force) relating to all police operational activity – a system known as COPS (the Computerised Operational Policing System). The NSW Ombudsman and officers of the NSW Ombudsman use ViewNow for the purpose of exercising functions under Pt 8A of the Police Act1990 (NSW) (the Police Act), which empowers the NSW Ombudsman to investigate complaints against the NSW Police Force and to monitor investigations of the NSW Police Force conducted by the Commissioner of Police (NSW), as well as to keep under scrutiny the systems established within the NSW Police Force for dealing with complaints and to provide special reports to the NSW Parliament on any matter arising in connection with these functions. Mr Riordan’s evidence discloses a disjunction between the applicants’ case and the answer of the NSW Ombudsman which should be noted immediately. Copyright does not protect against use. The rights which copyright protects in respect of a literary work are specified in s 31 of the Copyright Act as the right to “reproduce the work in a material form”, to “publish the work”, to “perform the work in public”, to “communicate the work to the public” and to “make an adaptation of the work”. The applicants contend that the NSW Ombudsman has infringed copyright by reproducing (that is, copying) the whole or a substantial part of ViewNow. The relevant acts, accordingly, are the acts involved in the reproduction of ViewNow (which must be assumed for the purposes of the present application to have taken place). As presently particularised, the acts of reproduction in question are the installation of ViewNow so as to enable about 25 users within the office of the NSW Ombudsman to have access to that software (and, by the software, to the COPS database). The applicants’ submissions disclose a possible amendment to their claim insofar as the act of using ViewNow may also reproduce, in whole or as to a substantial part, the software program, thereby giving rise to further infringements. As matters presently stand, however, the applicants’ claim is that the NSW Ombudsman has copied ViewNow onto computers within the NSW Ombudsman’s office without a licence to do so and has thus infringed copyright.THE IMMUNITY PROVISION

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In other words, in the present case, it is inappropriate to attempt to resolve the operation of s 79 of the Judiciary Act on an assumed construction of s 35A(1) of the Ombudsman Act which I do not accept and in circumstances which appear to be to be far removed from those which s 35A(1) is intended to cover. CONCLUSION Section 35A(1) of the Ombudsman Act does not protect the NSW Ombudsman from liability in respect of the applicants’ claims in this case. Accordingly, the notice of motion must be dismissed. Costs should follow the event.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.