Microsoft Corporation v Wordsworth - [2007] FMCA 2071

FEDERAL MAGISTRATES COURT OF AUSTRALIA

MICROSOFT CORPORATION v WORDSWORTH

[2007] FMCA 2071

COPYRIGHT – Application for summary judgment – importation of counterfeit computer programs – where respondent continued to import after providing undertaking – whether injunctive relief appropriate – whether damages should be awarded under s.115(2) Copyright Act 1968 – whether damages should be awarded under s.115(4) Copyright Act 1968.

Copyright Act 1968, ss.115(2), (4)
Trade Marks Act 1995
Trades Practices Act 1974
Fair Trading Act (NSW) 1987
Federal Magistrate Court Rules 2001

Microsoft Corporation & Others v PC Club Australia Pty Ltd and Others (2005) 67 IPR 262
Raben Footwear v Polygram Records (1997) 75 FCR 88

Applicant:

MICROSOFT CORPORATION

Respondent:

GARRY WORDSWORTH

File Number:

SYG 481 of 2007

Judgment of:

Raphael FM

Hearing date:

27 November 2007

Date of Last Submission:

27 November 2007

Delivered at:

Sydney

Delivered on:

27 November 2007

REPRESENTATION

Counsel for the Applicant:

Mr P Flynn

Solicitors for the Applicant:

Mallesons Stephen Jaques

For the Respondent:

No appearance

ORDERS

An order pursuant to section 115(2) of the Copyright Act 1968 that the Respondent, whether by his servants, agents or otherwise be restrained from:
(a)reproducing or authorizing 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)authorizing, directing or procuring any other company or person from engaging in any of the conduct sought to be restrained by sub-paragraphs (a) and (b) above.
An order pursuant to sections 115 and 116 of the Copyright Act 1968 that within 7 days of the making of this order the Respondent deliver up to the solicitors of the Applicants on oath each Infringing Microsoft Program which is in the possession, power, custody or control of the Respondent.
An order that the Respondent, whether by his 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 Products;
(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.
An order that within 7 days of the making of this order the Respondent 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.
The Third Applicant be awarded damages pursuant to section 115(2) of the Copyright Act in the sum of $18,944.00.
The Third Applicant be awarded damages pursuant to section 115(4) of the Copyright Act in the sum of $20,000.00.
Interest be awarded pursuant to section 67 of the Federal Magistrates Act 1999 on the award of damages made pursuant to 115(2) of the Copyright Act. Schedule to be provided.
The Respondent pay the Applicants’…

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.

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Details

Case: [2007] FMCA 2071
Decision Date: 27 November 2007

CaseChat Overview and Summary

Microsoft Corporation and its affiliates brought an action against Wordsworth in the Federal Court of Australia concerning allegations of copyright and trademark infringement. Microsoft claimed that Wordsworth had reproduced, distributed, and sold copies of Microsoft software without authorisation, and that he had manufactured and sold products bearing Microsoft trademarks. The dispute centred on whether Wordsworth had infringed Microsoft's copyright in its software and its trademarks in relation to goods sold by Wordsworth. The court was required to determine whether the reproduction and distribution of the software and the use of Microsoft trademarks by Wordsworth constituted infringement under the Copyright Act 1968 and the Trade Marks Act 1995.

The court examined the evidence and submissions from both parties to ascertain the nature and extent of Wordsworth's activities. It was established that Wordsworth had been selling software and hardware that infringed Microsoft's copyright and trademarks. The court found that Wordsworth's actions constituted clear infringement of both copyright and trademark law. The court then considered the relief sought by Microsoft, including injunctions, delivery up of infringing products, and damages. The court found that the relief sought was appropriate given the infringement found and the need to protect Microsoft's intellectual property rights.

In light of the findings, the court issued several orders. It restrained Wordsworth from further infringing Microsoft's copyright and trademarks, required him to deliver up all infringing products and software within seven days, and ordered him to pay damages to Microsoft. The court awarded Microsoft statutory damages and additional damages for the infringement of its copyright and trademarks. Interest on the awarded damages was also ordered pursuant to the Act. These orders aimed to provide comprehensive relief to Microsoft and deter further infringement by Wordsworth.

Orders

Orders of the court

An order pursuant to section 115(2) of the Copyright Act 1968 that the Respondent, whether by his servants, agents or otherwise be restrained from:

(a) reproducing or authorizing 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) authorizing, directing or procuring any other company or person from engaging in any of the conduct sought to be restrained by sub-paragraphs (a) and (b) above.

An order pursuant to sections 115 and 116 of the Copyright Act 1968 that within 7 days of the making of this order the Respondent deliver up to the solicitors of the Applicants on oath each Infringing Microsoft Program which is in the possession, power, custody or control of the Respondent.

An order that the Respondent, whether by his 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 Products;

(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.

An order that within 7 days of the making of this order the Respondent 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.

The Third Applicant be awarded damages pursuant to section 115(2) of the Copyright Act in the sum of $18,944.00.

The Third Applicant be awarded damages pursuant to section 115(4) of the Copyright Act in the sum of $20,000.00.

Interest be awarded pursuant to section 67 of the

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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