Microsoft Corp v D H D Distribution Pty Ltd

[1999] FCA 1316

FEDERAL COURT OF AUSTRALIA

Microsoft Corp v D H D Distribution Pty Ltd

[1999] FCA 1316

MICROSOFT CORPORATION v D.H.D. DISTRIBUTION PTY LIMITED
(ACN 081 165 166) trading as AUSTIN COMPUTERS AND ZHAN SHAN HUANG

NG 1087 OF 1998

LEHANE J
15 SEPTEMBER 1999
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1087 OF 1998

BETWEEN:	MICROSOFT CORPORATION First Applicant
MICROSOFT PTY LIMITED Second Applicant
AND:	D.H.D. DISTRIBUTION PTY LIMITED (ACN 081 165 166) trading as AUSTIN COMPUTERS First Respondent
ZHAN SHAN HUANG Second Respondent

JUDGE:	LEHANE J
DATE:	15 SEPTEMBER 1999
PLACE:	SYDNEY

THE COURT ORDERS THAT:

1.        The question ordered to be separately determined be answered in the affirmative.

2.Costs of the applicant’s motion for separate determination of a question be costs in the cause.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1087 OF 1998

BETWEEN:	MICROSOFT CORPORATION First Applicant
MICROSOFT PTY LIMITED Second Applicant
AND:	D.H.D. DISTRIBUTION PTY LIMITED (ACN 081 165 166) trading as AUSTIN COMPUTERS First Respondent
ZHAN SHAN HUANG Second Respondent

JUDGE:	LEHANE J
DATE:	15 SEPTEMBER 1999
PLACE:	SYDNEY

EX TEMPORE REASONS FOR JUDGMENT

1. I have ordered that the following question be determined separately and prior to all other issues in the proceedings: do the provisions of s 128 of the Copyright Act 1968 (Cth) apply to the literary works the subject of these proceedings such that copyright is presumed to subsist and to be owned by the first applicant in each such work unless the contrary is established by the respondents? I ordered also that the question for separate determination be heard forthwith and I have received evidence and heard argument from counsel for the applicant on it. Counsel for the respondent has not offered any evidence or submissions in opposition to the contentions of the applicants.

2. It is accepted that the separate question is to be read as applying only to two particular works, that is to say a programme or set of programmes described as Microsoft Office 97 and another described as Microsoft Windows 95.

3. The evidence is, and I find, that those two works (which, for the purposes of the Copyright Act (Cth) 1968, are to be regarded as literary works) were first published in the United States of America on, respectively, 30 December 1996 and 24 August 1995. Section 128 of the Copyright Act provides:

   “128Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, the last preceding section does not apply, but it is established:

   (a)that the work was first published in Australia and was so published during the period of 50 years that ended immediately before the commencement of the calendar year in which the action was brought; and

   (b)that a name purporting to be that of the publisher appeared on copies of the work as first published;

   then, unless the contrary is established, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of publication.”

4. Section 184 of the Copyright Act provides, among other things, that the regulations made under the Copyright Act may make provision to the effect that any of the provisions of the Act will apply in relation to works first published in a Convention country. Regulation 4 of the Copyright (International Protection) Regulations provides in sub-reg (1):

   “4(1)Subject to these Regulations, the provisions of the Act apply in relation to literary, dramatic, musical and artistic works and editions first published, and sound recordings and cinematograph films made or first published, in a country that constitutes, or forms part of, the territory of a Country specified in Part I, Part II, Part III or Part V of Schedule 1 in like manner as those provisions apply in relation to literary, dramatic, musical and artistic works and editions first published, and sound recordings and cinematograph films  published, in Australia.”

5. It inexorably follows in my view that if the works with which the separate question is concerned have in the terms of par (b) of s 128 a name appearing on copies of them, as first published, purporting to be that of the publisher, then the separate question must be answered in the affirmative.

6. Each of the works in question has upon it a legend indicating that Microsoft Corporation, the first applicant, claims copyright in the work.  There are also a number of plain indications on the works that they are what might be called Microsoft products.  But what is particularly important for present purposes, I think, is that on each there is an explicit reference to the first applicant as the person claiming a copyright in the work.

7. The question, and I think the only question of any significance in relation to the separate question, is whether the name thus appearing purports to be that of the publisher as it appears on the copies of the works in evidence, those being, on the evidence, copies of each of the works as first published.  There is no room for dispute as to the ordinary meaning of the word publish.  A definition proffered by the applicants is that which appears in the Macquarie Dictionary 3^rd Ed at 1724; the first meaning given is “to issue or cause to be issued in copies made by printing or other processes for sale or distribution to the public as a book, periodical, map, piece of music, engraving or the like”.

8. That of course is to be read as applying equally to a work of the kind here in question.  It seems to me that the references on each of the works in question are plainly references to the first applicant as a person who has issued or caused to be issued copies of the works, as they were first published.

9. It follows, in my view, that the applicants are entitled in relation to the two works in question to the benefit of the presumptions in s 128 of the Copyright Act and that, read as applying to those two works, the question ordered to be separately determined should be answered in the affirmative.  I so order.

10. I think this is not a case where it is appropriate simply to order that the respondents in any event pay the applicant's costs of the motion.  I think equally that it would be productive of difficulty and inconvenience to attempt an apportionment.  In the long run it is likely that the interests of justice will be served simply by ordering that the costs of the motion be costs in the cause, and I so order.

I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lehane.

Associate:

Dated:             21 September 1999

Counsel for the First and Second Applicants:	Mr J V Nicholas
Solicitor for the First and Second Applicants:	Mallesons Stephen Jaques
Counsel for the First and Second Respondents:	Mr M S M White
Solicitor for the First and Second Respondents:	Diamond Peisah & Co
Date of Hearing:	15 September 1999
Date of Judgment:	15 September 1999