Microsoft Corporation v Glostar Pty Ltd - [2003] FCA 210

FEDERAL COURT OF AUSTRALIA
Microsoft Corporation v Glostar Pty Ltd [2003] FCA 210
COPYRIGHT – infringement action – copyright in computer software, operating systems and programs – copying of computer programs and operating systems onto computers for sale thereby making the package sold more attractive to consumers – software loaded onto computer system sold to applicants´ investigators – where respondents’ breach was made in knowledge of the applicants’ rights – where there is a threat of continuing infringement – assessment of damages.
TRADE MARKS – infringement action – trade marks in computer software, operating systems and programs – copying of computer programs and operating systems onto computers for sale thereby making the package sold more attractive to consumers – software loaded onto computer system sold to applicants´ investigators where respondents’ breach was made in knowledge of the applicants’ rights – where there is a threat of continuing infringement – restraining the respondents from continuing the infringing conduct.
Federal Courts of Australia Act 1976 (Cth) – s 51A
Copyright Act 1968 (Cth) – s 36, s 38, s 115(2), s 115(4)
Trade Marks Act 1995 (Cth) – s 121
Trade Practices Act1974 (Cth)
Federal Court Rules, O 18 r 2
MICROSOFT CORPORATION AND MICROSOFT PTY LTD (ABN 29 002 589 460) AND MICROSOFT LICENSING, INC v GLOSTAR PTY LTD (ABN 15 079 851 728)
trading as Downtown Technology Centre AND JOHN ATHANASIOU
N 983 OF 2002
HILL J
7 FEBRUARY 2003
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 983 OF 2002

BETWEEN:

MICROSOFT CORPORATION
FIRST APPLICANT

MICROSOFT PTY LTD (ABN 29 002 589 460)
SECOND APPLICANT

MICROSOFT LICENSING, INC
THIRD APPLICANT

AND:

GLOSTAR PTY LTD (ABN 15 079 851 728)
trading as Downtown Technology Centre
FIRST RESPONDENT

JOHN ATHANASIOU
SECOND RESPONDENT

JUDGE:

HILL J

DATE OF ORDER:

7 FEBRUARY 2003

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

The steps taken as at 7 February 2003 to bring the hearing of the Applicants’ notice of motion dated 17 December 2002 and the proceedings to the attention of the Respondents are deemed to be service of the motion and of the supporting affidavits in accordance with the Federal Court Rules.

The Applicants’ notice of motion dated 17 December 2002 be heard in the absence of the Respondents.

The Respondents and each of them, whether by their employees, agents or otherwise, be permanently restrained from:
(a) reproducing or authorising the reproduction of the whole or a substantial part of any of the Microsoft Programs without the licence of the First Applicant;
(b) selling, offering for sale, supplying, offering to supply or distributing any Infringing Microsoft Program;
(c) authorising, directing or procuring any other company or person to engage in any of the conduct sought to be restrained by sub-paragraphs (a) and (b) above.
(a) manufacturing, procuring the manufacture of, importing, purchasing, selling, offering to sell, supplying, offering to supply or distributing any Infringing Microsoft Product; and
(b) authorising, directing or procuring any other company or person…

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.

Keep reading for free

Create a free CaseChat account to read Microsoft Corporation v Glostar Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2003] FCA 210
Decision Date: 7 FEBRUARY 2003

CaseChat Overview and Summary

Microsoft Corporation brought an action against Glostar Pty Ltd in the Federal Court of Australia, seeking relief for the alleged infringement of copyright in its computer software and trademarks. The dispute centred around Glostar’s unauthorised reproduction, distribution, and sale of Microsoft’s computer programs and the unauthorised use of Microsoft’s trademarks on various products. Microsoft sought an injunction against Glostar’s infringing activities, the delivery of all infringing products and equipment, and damages for the infringement.

The court had to determine whether Glostar had indeed infringed Microsoft’s copyright and trademarks, and if so, what remedies were appropriate. Microsoft argued that Glostar’s actions constituted clear infringement, as they had reproduced and distributed Microsoft software without authorisation and used Microsoft’s trademarks on products without permission. Glostar did not contest the allegations in court, leading to the court finding that the infringement had occurred. The court then considered the appropriate relief to be granted, including permanent injunctions, delivery of infringing products, and financial compensation.

The court granted extensive relief to Microsoft. It permanently restrained Glostar from reproducing, distributing, or selling any of Microsoft’s computer programs or products without authorisation. Glostar was also required to deliver up all infringing products and equipment to Microsoft. Furthermore, the court awarded Microsoft damages for the infringement under the Copyright Act 1968 (Cth), totalling $295,000, and ordered Glostar to pay Microsoft’s costs of the proceedings. The court also directed that service of certain orders could be effected by sending a sealed copy of the orders to a specified address.

Orders

Orders of the court

1. The steps taken as at 7 February 2003 to bring the hearing of the Applicants’ notice of motion dated 17 December 2002 and the proceedings to the attention of the Respondents are deemed to be service of the motion and of the supporting affidavits in accordance with the Federal Court Rules.

2. The Applicants’ notice of motion dated 17 December 2002 be heard in the absence of the Respondents.

3. The Respondents and each of them, whether by their employees, agents or otherwise, be permanently restrained from:

(a) reproducing or authorising the reproduction of the whole or a substantial part of any of the Microsoft Programs without the licence of the First Applicant;

(b) selling, offering for sale, supplying, offering to supply or distributing any Infringing Microsoft Program;

(c) authorising, directing or procuring any other company or person to engage in any of the conduct sought to be restrained by sub-paragraphs (a) and (b) above.

(a) manufacturing, procuring the manufacture of, importing, purchasing, selling, offering to sell, supplying, offering to supply or distributing any Infringing Microsoft Product; and

(b) authorising, directing or procuring any other company or person to engage in any of the conduct sought to be restrained by sub-paragraph (a) above.

4. The Respondents deliver up to the solicitors for the Applicants on oath within 7 days, each Infringing Microsoft Program and any equipment used to make any such infringing copy, in the possession, power, custody or control of the Respondents or any of them.

5. The Respondents and each of them, whether by the employees, agents or otherwise, be permanently restrained from infringing the Microsoft Trade Marks by:

6. The Respondents deliver up to the solicitors of the Applicants on oath all Infringing Microsoft Products and any equipment used or intended to be used for making Infringing Microsoft Products, in the possession, custody or control of the Respondent.

7. Judgment be entered under s 115(2) of the Copyright Act 1968 (Cth) against the Respondents for the Applicants in the sum of $4,375.00.

8. Judgement be entered under s 115(4) of the Copyright Act 1968 (Cth) against the Respondents for the Applicants in the sum of $291,625.00.

9. The Respondents are jointly and severally liable to the Applicants for the damages awarded under s 115(2) and s 115(4) of the Copyright Act 1968 (Cth) in orders 7 and 8 respectively.

10. The Respondents pay the Applicants' costs of the proceedings.

11. Service of these orders on the Second Respondent may be effected by the Applicants by forwarding a sealed copy of the orders to 30 Tiller Street, Burwood East, Victoria.

12. The application otherwise be dismissed.

In these orders:

"Infringing Microsoft Products" means any Microsoft Class 9 Products and Microsoft Class 16 Products to which the mark "MICROSOFT" or a mark substantially identical with, or deceptively similar to, the marks "MICROSOFT" has been applied without the consent of the First Applicant;

“Infringing Microsoft Program” means a copy of the whole of a substantial part of the any of the Microsoft Programs which has not been made by or with licence of the First Applicant or which has been imported in Australia without the licence of the First Applicant;

"Microsoft Programs" means all versions of computer programs using the trade mark "MICROSOFT" whether created or released subsequent to the date of this order, being operating systems or application programs for use on personal computers and including associated manuals and documentations, therefore it being noted the definition shall include, but without limiting its generality the programs Windows 95, Windows 98 and Microsoft Office;

"Microsoft Class 9 Products" means computer programs, magnetic disks, and tapes containing computer programs, computer software, computer hardware, memory boards for use with computers, programmed chips, cartridges embodying computer programs and computer software and firmware embodied in computers or designed to be used therewith;

"Microsoft Class 16 Products" means printed instructional and teaching material related to computers and computer software, books, paper and printed matter for use with computer equipment, computer hardware and software manuals, newsletters featuring information about computer hardware and software, paper, paper tape and cards for the recordal of computer programs;

"Microsoft Trade Marks" means any or all of the First Applicant's registered trade marks comprising the mark "MICROSOFT" and numbered 371528(9) and 377674(16) or comprising the mark "WINDOWS" and numbered 576996(9) and 576997(16).

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

HILL J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HILL J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 983 OF 2002

JUDGE:	HILL J
DATE OF ORDER:	7 FEBRUARY 2003
WHERE MADE:	SYDNEY