Microsoft Corp v Business Boost Pty Ltd - [2000] FCA 1651

FEDERAL COURT OF AUSTRALIA
Microsoft Corp v Business Boost Pty Ltd [2000] FCA 1651
INTELLECTUAL PROPERTY – copyright – meaning of “storage from which the work … can be reproduced” – whether reproducing computer program onto a computer’s hard drive infringes copyright in the original program – whether reproducing computer programs into a computer’s random access memory (RAM) infringes copyright in the original program
Copyright Act 1968 s 10
Copyright Act 17 USC §101
Dyason v Autodesk Inc (1990) 24 FCR 147 discussed
Tesco Supermarket Ltd v Nattrass [1972] AC 153 applied
MAI Systems Corp v Peak Computer Inc 991 F2d 511 (9^th Cir 1993) cited
MICROSOFT CORPORATION AND MICROSOFT PTY LIMITED v
BUSINESS BOOST PTY LIMITED trading as PERRY TAIT’S and COMPUTER WHOLESALER DIRECT, PERRY TAIT, PASSIONS PTY LIMITED trading as STAR WORKS PROMOTIONS MARKETING, and THERESA MILOSEVIC
N 244 OF 1999
TAMBERLIN J
SYDNEY
17 NOVEMBER 2000

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N244 OF 1999

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LIMITED
SECOND APPLICANT

AND:

BUSINESS BOOST PTY LIMITED
(ACN 070 654 732) trading as PERRY TAIT'S and
COMPUTER WHOLESALERS DIRECT
FIRST RESPONDENT

PERRY TAIT
SECOND RESPONDENT

PASSIONS PTY LIMITED
(ACN 066 213 741) trading as STARWORKS PROMOTIONS MARKETING
THIRD RESPONDENT

THERESA MILOSEVIC
FOURTH RESPONDENT

JUDGE:

TAMBERLIN J

DATE:

17 NOVEMBER 2000

PLACE:

SYDNEY

REASONS FOR JUDGMENT

This matter was listed for hearing on 7 November 2000 as against the fourth respondent only. As against the third respondent this matter has been finalised, and the proceedings continue against the first and second respondents. When this matter was called on for hearing none of the respondents, including the fourth respondent, appeared. I am satisfied that the fourth respondent was aware that this was a final hearing and having regard to the past history of non-appearance at directions hearings I considered that the matter should proceed in her absence. Having read the material in evidence and after hearing submissions from Counsel for the applicants I made orders on 7 November 2000. I now publish my reasons.
At the outset of the hearing I ordered that this matter and N1123 of 1999 be heard together, and that to the extent that the material was relevant the evidence in one be evidence in the other. I also ordered that the question of liability should be heard separately from the question of quantum. These reasons only concern the liability issue.
On the material and affidavits before me I am satisfied that the applicants have made out a case for the relief sought against the fourth respondent. In reaching this conclusion I accept the submissions made by the applicants and the facts as set out in the documentary material in the affidavits. I am also prepared to draw the inferences advanced by the applicants in submissions based on the facts alleged in the evidentiary material.
In relation to the claim of copyright infringement I am satisfied that the fourth respondent has wrongfully authorised unlicensed reproductions of…

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.

Continue reading Microsoft Corp v Business Boost Pty Ltd

Details

AGLC: Microsoft Corp v Business Boost Pty Ltd [2000] FCA 1651
Case: [2000] FCA 1651
Decision Date: 17 NOVEMBER 2000

CaseChat Overview and Summary

Microsoft Corp sought relief against Business Boost Pty Ltd for copyright infringement, specifically regarding the storage and reproduction of software on computer hardware. The Federal Court of Australia was tasked with determining whether the storage of Microsoft's software on computer hard disk drives and RAM constituted an infringement of copyright under the Copyright Act 1968 (Cth). The Court had to interpret the definition of "material form" as it pertains to the storage of software, and assess whether the storage in both permanent and temporary storage mediums constituted a reproduction of the software.

The central legal issue was whether the storage of software on a computer's hard disk drive and RAM constituted a reproduction that infringed copyright. Microsoft argued that the storage of its software on both hard disk drives and RAM constituted a reproduction in material form, which infringed the copyright in the software. Business Boost contended that storage in RAM did not constitute a reproduction as it was not "fixed" in a material form for more than a transitory period. The Court had to consider whether the storage in RAM, being ephemeral, could still be considered a reproduction under the Act, and whether the definition of "material form" included such ephemeral storage.

The Court found that the definition of "material form" in the Act was broad and intended to cover various forms of storage, including ephemeral storage in RAM. It relied on the Explanatory Memorandum for the Copyright Amendment Bill 1984, which indicated that the definition was meant to be inclusive of future storage technologies. The Court also considered relevant United States authority, particularly MAI Systems Corp v Peak Computer Inc, which held that loading software into RAM constituted a reproduction. The Court concluded that the storage of software on both hard disk drives and RAM constituted a reproduction under the Act, and thus an infringement of copyright.

The Federal Court of Australia found in favour of Microsoft, holding that the storage of its software on both hard disk drives and RAM constituted a reproduction in material form, and therefore infringed the copyright in the software. The Court rejected the argument that storage in RAM was not a reproduction because it was not "fixed" in a material form for more than a transitory period. The Court's interpretation of "material form" and its consideration of United States authority led to the conclusion that ephemeral storage in RAM could still constitute a reproduction. Microsoft was granted the relief it sought, including an injunction, damages, and an account of profits.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

TAMBERLIN J

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Ratio Decidendi

Legal Principle Established

Established by: TAMBERLIN J

It is to be noted that the definition of “material form” in the Act makes no reference to the duration of the storage and is consistent with storage being either for a short or long period. The crucial concept is “storage”. The present case is one where I consider regard can be had to the Explanatory Memorandum directed to the Copyright Amendment Bill 1984 introducing the present definition. That relevantly reads:“28.The definition of ‘material form’ is new and makes it clear that the material form includes such methods as storage or reproduction on magnetic tape, read only or random access computer memory, magnetic or laser disks, bubble memories and other forms of storage which will doubtless be developed.” (Emphasis added) It is evident from this that the definition was intended to be far-reaching and to cover not only ROM and RAM but also other types of storage to be developed in the future. Some general guidance can be obtained from United States authority. In MAI Systems Corp v Peak Computer Inc 991 F2d 511 (9th Cir 1993) the United States Federal Court of Appeal for the Ninth Circuit held that “copying” for the purposes of US copyright law occurs when a computer program is transferred from a permanent storage device to a computer’s RAM. At 518 of its reasons the Court said:“After reviewing the record we find no specific facts … which indicate that the copy created in the RAM is not fixed. …The law also supports the conclusion that [the defendant’s] loading of copyrighted software into RAM creates a ‘copy’ of that software in violation of the Copyright Act.” In considering this decision it needs to be borne in mind that the Copyright Act 17 USC §101 under consideration provided that:“A work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phono record, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” (Emphasis added) The term “fixed” indicates something more permanent than “storage” but on the other hand the US provision covers any period of time provided it can be said to be more than “transitory”. The Court’s reasoning in Peak’s case has been followed in numerous subsequent United States cases: see Advanced Computer Services of Michigan, Inc v MAI Systems Corp 845 F Supp 356 (Ed Va 1994) at 363-364; Triad Systems Corp v Southeastern Express Co 64 F3d 1330 (9th Cir 1995); Marobie-Fl, Inc d/b/a Galactic Software v National Association of Fire Equipment Distributors 983 FSupp 1167 (ND I11 1997); Stenograpgh L.L.C. v Bossard Associates Inc 144 F3d 96 (DC Cir 1998). In my view the United States decisions lend support to the submissions made by Microsoft. Having regard to the above matters I am satisfied on the material presently before me that the applicant has made out its case in relation to both the reproduction to and from the hard disk drive storage and the RAM storage infringements.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N244 OF 1999

JUDGE:	TAMBERLIN J
DATE:	17 NOVEMBER 2000
PLACE:	SYDNEY