Microsoft Corporation v Blanch - [2002] FCA 895

FEDERAL COURT OF AUSTRALIA
Microsoft Corporation v Blanch [2002] FCA 895
COPYRIGHT – copyright in computer software and programs – infringement – counterfeit copy obtained by sale below market rate – software loaded onto computer system sold to applicants’ investigator – supply of “burnt disk” with copy of applicants’ software on
TRADE MARKS – marks in respect of software – infringement - infringing products obtained by sale – infringing product supplied on “burnt disk” – infringing product displayed on computer monitor
FAIR TRADING – misleading conduct – whether sale of counterfeit disk which infringed copyright and trade marks of applicant constituted misleading conduct – the meaning of ss 10, 11 under Fair Trading Act 1999 (Vic) – whether acts of respondents liable to “mislead the public”
INJUNCTIONS – whether an injunction should be granted in broad terms because of applicants’ apprehension of further infringements of their copyright materials and trade marks by the respondents
Copyright Act 1968 (Cth) ss 31(1)(a), 36(1)
Trade Marks Act 1995 (Cth) ss 120(1)
Fair Trading Act 1999 (Vic) ss 10,11
Federal Court Rules O 11 r 13(1), O 10 r 7, O 20 r 1, O 18 r 4
Microsoft Corp v Business Boost Pty Ltd [2000] FCA 1651 followed
Microsoft Corporation v Goodview Electronics Pty Limited [2000] FCA 1852 followed
Microsoft Corporation v Plato Technology Limited [1999] FSR 834 considered
Australasian Performing Right Association Limited v Pashalidis [2000] FCA 1815 cited
MICROSOFT CORPORATION AND MICROSOFT PTY LTD v ROBERT GEOFFREY BLANCH AND WENDY THERESA WILSON
N1299 OF 2001
BRANSON J
18 JULY 2002
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N1299 OF 2001

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LTD
SECOND APPLICANT

AND:

ROBERT GEOFFREY BLANCH
FIRST RESPONDENT

WENDY THERESA WILSON
SECOND RESPONDENT

JUDGE:

BRANSON J

DATE OF ORDER:

18 JULY 2002

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT the applicants bring in short minutes of orders which reflect these reasons for judgment.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N1299 OF 2001

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LTD
SECOND APPLICANT

AND:

ROBERT GEOFFREY BLANCH
FIRST RESPONDENT

WENDY THERESA WILSON
SECOND RESPONDENT

JUDGE:

BRANSON J

DATE:

18 JULY 2002

PLACE:

SYDNEY

REASONS FOR JUDGMENT
THE PARTIES

The first applicant (“Microsoft Corporation”) is a corporation incorporated under the laws of the State of Washington in the United States of America. It carries on the business of manufacturing, marketing, distributing and supplying computer programs (“Microsoft Programs”)
The second applicant (“Microsoft Pty Ltd”) is an Australian company, which is a subsidiary of Microsoft Corporation. Microsoft Pty Ltd provides marketing and technical support in Australia on behalf of the Microsoft Corporation in respect of the Microsoft Programs. It is an authorised user of Microsoft Trade Marks.
The respondents trade under the business name “Robert Blanch Computer Services”. The business has been registered in Victoria since 18 August 1995.
HISTORY OF THE PROCEEDING
The application and statement of claim were filed on 11 September 2001. These documents…

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 Corporation v Blanch

Details

AGLC: Microsoft Corporation v Blanch [2002] FCA 895
Case: [2002] FCA 895
Decision Date: 18 JULY 2002

CaseChat Overview and Summary

The Federal Court of Australia was called upon to decide a dispute between Microsoft Corporation and Microsoft Pty Ltd (the applicants) against Robert Geoffrey Blanch and Wendy Theresa Wilson (the respondents) over the alleged infringement of copyright and trade marks, as well as misleading conduct under the Fair Trading Act 1999 (Vic). The applicants sought relief in the form of injunctions and damages for the unauthorised sale of counterfeit computer software and programs. The respondents, who traded under the name "Robert Blanch Computer Services," were accused of selling counterfeit software, including Windows 95, Windows 98, and Office 97, which infringed the applicants' copyright and trade marks. The Court found that the respondents had indeed infringed the Microsoft trade marks by selling computers loaded with unauthorised software and counterfeit compact disks. Furthermore, the respondents were found to have infringed the applicants' copyright by reproducing and authorising the reproduction of Microsoft programs in material forms without the necessary licences.

The Court also examined whether the respondents' conduct constituted misleading conduct under the Fair Trading Act 1999 (Vic). Evidence demonstrated that the respondents displayed counterfeit compact disks for public sale, which misled potential buyers about the nature and characteristics of the products. Consequently, the Court found that the respondents engaged in conduct that was likely to mislead the public, in violation of the Act.

In terms of relief, the applicants sought injunctions to prevent the respondents from further infringing their copyright and trade marks and making misleading representations. The Court accepted that the applicants had a reasonable apprehension of further infringements by the respondents. As a result, the Court granted the injunctions as sought by the applicants. The Court also ordered the respondents to pay the applicants' costs up to and including 26 April 2002 but not thereafter.

Orders