Microsoft Corp v Compustar Australia Pty Ltd

Case [2000] FCA 1648

FEDERAL COURT OF AUSTRALIA

Microsoft Corp v Compustar Australia Pty Ltd [2000] FCA 1648

MICROSOFT CORPORATION AND MICROSOFT PTY LIMITED v
COMPUSTAR AUSTRALIA PTY LTD AND THERESA MILOSEVIC
N 1123 of 1999

TAMBERLIN J
SYDNEY
17 NOVEMBER 2000


IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N1123 OF 1999

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LIMITED
SECOND APPLICANT

AND:

COMPUSTAR AUSTRALIA PTY LTD
(ACN 086 546 401)
FIRST RESPONDENT

THERESA MILOSEVIC
SECOND RESPONDENT

JUDGE:

TAMBERLIN J

DATE:

17 NOVEMBER 2000

PLACE:

SYDNEY

REASONS FOR JUDGMENT

  1. In this matter, which was heard at the same time as N 244 of 1999, I am satisfied that the applicants have made out their case against both respondents.  I made orders in this matter on 7 November 2000 and I now set out below a brief summary of my reasons.

  2. When the matter was called on for hearing on 7 November 2000 there was no appearance for the respondents.  I am satisfied that they were aware of the hearing date and that the matter had been listed for final hearing.  I therefore proceeded to hear the matter in their absence.  At the commencement of the hearing I made orders that the evidence in N 244 of 1999 be evidence in this matter, to the extent that such evidence was relevant, and I ordered that issues of liability and quantum should be heard separately.

  3. I have considered the uncontradicted evidence of the applicants and have taken into account their written submissions and I am satisfied of the following matters:

    1.The first respondent has reproduced some of the Microsoft Programs identified by the applicants.

    2.Such reproductions were without the leave or licensee of either applicant.

    3.Such reproductions infringed the copyright which subsisted in the first applicant.

    4.The second respondent as director, secretary and sole shareholder of the first respondent authorised the reproduction by the first respondent of the infringing programs in the sense that she had the power to prevent the infringement and did not do so.

    5.The second respondent is also liable as a joint tortfeasor with the first respondent for the copyright infringement by the first respondent because the inference should be drawn from the evidence that she participated in the unlawful conduct and directed such conduct.

    6.The first respondent also infringed the copyright of the first applicant by supplying a copy of the program “Microsoft Works”: s 38 of the Copyright Act 1968.

    7.The second respondent impliedly procured or directed such infringement by reason of her relationship to the company referred to earlier.

    8.The respondents infringed the trade marks of the applicant, particularly the trade mark “MICROSOFT”.

    9.Both respondents have engaged in misleading and deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 as a consequence of which the applicants have suffered loss.

    CONCLUSION

  4. The applicants have succeeded in their application and the respondents should therefore pay the costs of the applicants up to and including today.  I grant leave to the applicants to tax such costs forthwith.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.

Associate:

Dated:             17 November 2000

Counsel for the Applicant: R Cobden
Solicitor for the Applicant: Mallesons Stephen Jaques
Counsel for the Respondent: No appearance
Date of Hearing: 7 November 2000
Date of Judgment: 17 November 2000
Details
AGLC
Microsoft Corp v Compustar Australia Pty Ltd [2000] FCA 1648
Case
[2000] FCA 1648
Decision Date

CaseChat Overview and Summary

Microsoft Corp and Microsoft Australia Pty Ltd commenced proceedings against Compustar Australia Pty Ltd and its director, secretary and sole shareholder, Ms R. The dispute involves allegations of copyright infringement, trademark infringement, and misleading and deceptive conduct under the Trade Practices Act 1974. Microsoft claimed that Compustar had reproduced some of its software programs without authorisation, leading to copyright infringement, and that the reproductions were supplied to others, further infringing copyright. Additionally, Microsoft asserted that Compustar's actions constituted trademark infringement and misleading and deceptive conduct. The court was tasked with determining whether Compustar and Ms R infringed Microsoft's copyright, whether Ms R was liable for the infringement as a joint tortfeasor, whether the reproductions constituted trademark infringement, and whether misleading and deceptive conduct had occurred.

The court concluded that Compustar had reproduced Microsoft's programs without permission, thereby infringing copyright. Ms R was found liable as a joint tortfeasor for authorising and directing the infringement. The court further ruled that Compustar had supplied copies of Microsoft Works, infringing copyright under section 38 of the Copyright Act 1968. Ms R was implicated in this infringement due to her position within the company. The reproductions were also deemed to infringe Microsoft's trademarks, particularly the "MICROSOFT" mark. Lastly, the court found that both Compustar and Ms R engaged in misleading and deceptive conduct, causing loss to Microsoft.

The court ordered Compustar and Ms R to pay the costs of the proceedings to Microsoft up to and including the date of the decision. Microsoft was granted leave to tax the costs forthwith. This decision underscores the importance of obtaining authorisation for software use and the legal consequences of infringing intellectual property rights and engaging in misleading and deceptive conduct.

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
I have considered the uncontradicted evidence of the applicants and have taken into account their written submissions and I am satisfied of the following matters:1.The first respondent has reproduced some of the Microsoft Programs identified by the applicants.2.Such reproductions were without the leave or licensee of either applicant.3.Such reproductions infringed the copyright which subsisted in the first applicant.4.The second respondent as director, secretary and sole shareholder of the first respondent authorised the reproduction by the first respondent of the infringing programs in the sense that she had the power to prevent the infringement and did not do so.5.The second respondent is also liable as a joint tortfeasor with the first respondent for the copyright infringement by the first respondent because the inference should be drawn from the evidence that she participated in the unlawful conduct and directed such conduct.6.The first respondent also infringed the copyright of the first applicant by supplying a copy of the program “Microsoft Works”: s 38 of the Copyright Act 1968.7.The second respondent impliedly procured or directed such infringement by reason of her relationship to the company referred to earlier.8.The respondents infringed the trade marks of the applicant, particularly the trade mark “MICROSOFT”.9.Both respondents have engaged in misleading and deceptive conduct within the meaning of s 52 of the Trade Practices Act 1974 as a consequence of which the applicants have suffered loss.CONCLUSION The applicants have succeeded in their application and the respondents should therefore pay the costs of the applicants up to and including today. I grant leave to the applicants to tax such costs forthwith.

Ratio Decidendi

Legal Principle Established

Established by: TAMBERLIN J

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