Microsoft Corporation v RP Distribution Pty Ltd

[2006] FCA 1842

FEDERAL COURT OF AUSTRALIA

Microsoft Corporation v RP Distribution Pty Ltd [2006] FCA 1842

COPYRIGHT – application for default judgment pursuant to O 35A – respondents failed to enter appearance, file defence and appear at directions hearing – application allowed.

Federal Court Rules, O 35A

MICROSOFT CORPORATION, MICROSOFT LICENSING, GP AND MICROSOFT PTY LTD (ACN 002 589 460) v RP DISTRIBUTION PTY LTD (ACN 109 561 444) AND REUBEN MARK VELLA AND REUBEN MARK VELLA
NSD 2073 OF 2006

TAMBERLIN J
22 DECEMBER 2006
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 2073 OF 2006

BETWEEN:

MICROSOFT CORPORATION
First Applicant

MICROSOFT LICENSING, GP
Second Applicant

MICROSOFT PTY LTD (ACN 002 589 460)
Third Applicant

AND:

RP DISTRIBUTION PTY LTD (ACN 109 561 444)
First Respondent

REUBEN MARK VELLA
Second Respondent

JUDGE:	TAMBERLIN J
DATE OF ORDER:	22 DECEMBER 2006
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The Respondents and each of them, whether by their servants, agents or otherwise be 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, importing or distributing any Infringing Microsoft Program;

(c)   selling, offering for sale, supplying, offering to supply, importing or distributing any Incomplete Microsoft Program; and

(d)   authorising, directing or procuring any other company or person from engaging in any of the conduct sought to be restrained by subparagraphs (a), (b) and (c) above.

2.Within 7 days of the making of this order, the Respondents deliver up to the solicitors for the Applicants on oath each Infringing Microsoft Program which is in the possession, power, custody or control of the Respondents or any of them and any equipment used to make any such infringing copy.

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

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

(b)   authorising, directing or procuring any other company or person from engaging in any of the conduct sought to be restrained by subparagraph (a) above.

4.Within 7 days of the making this order, the Respondents deliver up to the solicitors for 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 Respondents or any of them.

5.The Respondents and each of them, whether by their servants, agents or otherwise, be permanently restrained from representing in trade or commerce to persons to whom the relevant Respondent supplies or offers to supply any Infringing Microsoft Program or Infringing Microsoft Product:

(a)   that any such product has been made with the licence of the First Applicant; or

(b)   that the relevant Respondent is lawfully entitled to supply any such product.

6.The Second Respondent be restrained from aiding, abetting, counselling, procuring or being in any way directly or indirectly a party to or concerned in the conduct sought to be restrained by order 5 above.

7.Within 7 days of the making of this order, the First Respondent and the Second Respondent each file and serve an affidavit made in the case of the First Respondent, by its proper officer and in the case of the Second Respondent, by the Second Respondent, that sets out to the best of his information, knowledge or belief, based upon all necessary and proper enquiries in respect of all Microsoft Programs, Microsoft Class 9 Products, Microsoft Class 16 Products and Microsoft Trade Marks the following:

(a)   the name and address of any person from whom any Infringing Microsoft Program or Infringing Microsoft Products were acquired;

(b)   the quantity of all Infringing Microsoft Programs and Infringing Microsoft Products made or acquired by the relevant Respondent and the date or dates on which they were made or acquired;

(c)   the name and address of any person or company to whom the relevant Respondent has supplied any Infringing Microsoft Program, Infringing Microsoft Products or Incomplete Microsoft Program;

(d)   the quantity of Infringing Microsoft Programs, Infringing Microsoft Products and Incomplete Microsoft Programs supplied by the relevant Respondent and the date or dates on which they were supplied; and

(e)   the quantity and whereabouts of all Infringing Microsoft Programs and Infringing Microsoft Products in the possession, custody or control of the relevant Respondent at the date of making the affidavit,

and which annexes copies of all order forms, invoices, delivery notes, accounts and receipts relating to the transactions referred to in subparagraphs (a) to (e) above.

8.The Respondents pay damages under section 115(2) of the Copyright Act 1968 in the amount of $30,093.

9.The Respondents pay damages under section 115(4) of the Copyright Act 1968 in the amount of $15,047.50.

10.The Respondents pay interest pursuant to section 51A of the Federal Court Act 1976 in respect of the damages awarded under section 115(2) of the Copyright Act 1968 from 10 November 2005 until the date of judgment.

11.The Respondents pay the Applicants’ costs of this proceeding in the amount of $27,000.

[In these Short Minutes of Order:

“Incomplete Microsoft Program” means a copy of the whole or a substantial part of any of the Microsoft Programs which is not accompanied by the associated media, the product manual, and the Microsoft certificate of authenticity label which was originally affixed to that media or product manual;

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

“Infringing Microsoft Program” means a copy of the whole or a substantial part of any of the Microsoft Programs which has not been made by or with the licence of the First Applicant;

“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 Programs” means any and all versions of the computer programs known as “Microsoft Windows”, “Microsoft Office”, “Microsoft Visual Studio” and “Microsoft SQL Server”;

“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)]

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	NSD 2073 OF 2006

BETWEEN:

MICROSOFT CORPORATION
First Applicant

MICROSOFT LICENSING, GP
Second Applicant

MICROSOFT PTY LTD (ACN 002 589 460)
Third Applicant

AND:

RP DISTRIBUTION PTY LTD (ACN 109 561 444)
First Respondent

REUBEN MARK VELLA
Second Respondent

JUDGE:	TAMBERLIN J
DATE:	22 DECEMBER 2006
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. In this matter, I have read the submissions of the applicants.  I note that there has been repeated default by both respondents.  I have also had regard to the correspondence and emails in the history of the proceeding and, having considered the affidavits that are before me, I consider it appropriate to make orders in terms of the short minutes of order. 

2. So far as the question of additional damages is concerned, there has been no opportunity to ventilate this and, in the circumstances, I am prepared to award half the amount of the compensatory damages. In reaching this conclusion, I have taken into account the fact that substantial costs have been incurred and will be the liability of the respondents under the orders.

3. Accordingly, I make orders in accordance with the short minutes, except that in relation to the issue of additional damages, I award half of the compensatory damages sought which equates to an amount of $15, 047.50.

I certify that the preceding three (3) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.

Associate:

Dated:        24 January 2007

Counsel for the Applicants:	P W Flynn
Solicitors for the Applicants:	Mallesons Stephen Jaques
No appearance on behalf of the Respondents.
Date of Hearing:	22 December 2006
Date of Judgment:	22 December 2006