FEDERAL COURT OF AUSTRALIA
Take-Two Interactive Software, Inc v Anderson [2021] FCA 1024
File number: NSD 1751 of 2018 Judgment of: NICHOLAS J Date of judgment: 27 August 2021 Catchwords: PRACTICE AND PROCEDURE – application to set aside judgment resulting from respondent’s failure to comply with self-executing order – where self-executing order entered with the consent of the parties – where no satisfactory explanation advanced for failure to comply with order – whether arguable defence demonstrated – whether respondent would suffer prejudice were application refused – leave granted for respondent to defend claims referable to causes of action for which an arguable defence demonstrated Legislation: Competition and Consumer Act 2010 (Cth) sch 2
Copyright Act 1968 (Cth) ss 10, 116AN, 116AO
Copyright Amendment Act 2006 (Cth)
Federal Court of Australia Act 1976 (Cth) s 37M
Federal Court Rules 2011 (Cth) rr 5.21, 39.05
Cases cited: Amirbeaggi as trustee of the bankrupt estate of John Mamdouh Hanna v Kamel (No 3) [2020] FCA 1202
Re Luck (2003) 203 ALR 1
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Number of paragraphs: 71 Date of last submissions: 28 July 2021 Date of hearing: 21 June 2021 and 21 July 2021 Counsel for the Applicants: Mr R Cobden SC with Mr W Wu Solicitor for the Applicants: Bird & Bird Solicitor for the Respondent: Mr A Macinnis of StevensVuaran Lawyers ORDERS
NSD 1751 of 2018 BETWEEN: TAKE-TWO INTERACTIVE SOFTWARE, INC
First Applicant
ROCKSTAR GAMES, INC
Second Applicant
AND: CHRISTOPHER ANDERSON
Respondent
ORDER MADE BY:
NICHOLAS J
DATE OF ORDER:
27 AUGUST 2021
THE COURT DECLARES THAT:
1.The respondent has infringed the first applicant’s copyright by:
(a)reproducing or making a copy of the whole or a substantial part of one or more of the GTA V Works (as defined in para 1 of schedule 1 to these orders) in material form in Australia, other than in accordance with the terms of a current licence from the first applicant;
(b)authorising users of the software titled “Infamous” (“Infamous Mod”) to reproduce in a material form or make a copy in Australia of one or more of the GTA V Works or a substantial part thereof, other than in accordance with the terms of a current licence from the first applicant.
2.The respondent has procured or induced breaches of, and otherwise interfered with the performance of, the following agreements between one or more of the applicants and users of the Infamous Mod:
(a)versions of the agreement titled “Limited Software Warranty and License Agreement”; and
(b)versions of the agreement titled “Terms of Service”.
3.The respondent has, by distributing, selling and offering for sale the Infamous Mod, contravened s 18(1) of the Australian Consumer Law (Cth) (“the ACL”).
THE COURT ORDERS THAT:
4.Pursuant to s 115(2) of the Copyright Act 1968 (Cth) (“the Copyright Act”), the respondent be permanently restrained from doing any of the following acts, whether by himself, his servants, agents or otherwise:
(a)reproducing in a material…
Continue reading Take-Two Interactive Software, Inc v Anderson
Sign in free to access the full text
- AGLC
- Take-Two Interactive Software, Inc v Anderson [2021] FCA 1024
- Case
- [2021] FCA 1024
- Decision Date
CaseChat Overview and Summary
The court was required to determine whether the judgment should be either varied or set aside so as to relieve the respondent of the consequences of his default. The court considered the respondent’s explanation for his default, whether the respondent had an arguable defence to the claims pleaded against him, what prejudice the respondent would suffer in the event that the orders sought by him were not made and what prejudice the applicants would suffer in the event that the orders sought were made. The court found that the respondent had not provided a satisfactory explanation for his default, that the respondent had demonstrated an arguable defence to some of the claims, that the prejudice to the respondent if the application was dismissed was minimal, and that the prejudice to the applicants if the application was granted was minimal. The court concluded that leave should be granted for the respondent to defend claims referable to causes of action for which an arguable defence had been demonstrated.
The court granted the respondent leave to rely upon the affidavit of Christopher Anderson affirmed 10 May 2021 at the trial of the issues identified in paragraph 15 below subject to any proper objection and dismissed the respondent’s interlocutory application. The court set down the proceeding for trial on a date to be fixed, in relation to the remaining aspects of the applicants’ claims. The court also referred the proceeding for mediation and listed the proceeding for a case management hearing to fix a date for trial.
Orders
Orders of the court
4. Pursuant to s 115(2) of the Copyright Act 1968 (Cth) (“the Copyright Act”), the respondent be permanently restrained from doing any of the following acts, whether by himself, his servants, agents or otherwise:
(a) reproducing in a material form, or making a copy of, in Australia any one or more of GTA V Works or any substantial part thereof;
(b) authorising another person to reproduce in a material form, or make a copy of, in Australia any one or more of the GTA V Works or any substantial part thereof,
where such act is done in circumstances in which one or both of the following apply:
(c) the act is done in conjunction with the use of the Infamous Mod or any other cheat software by the Respondent or by the other person in paragraph (b); or
(d) the act done is not in accordance with the terms of a current licence from the first applicant.
5. Pursuant to s 232(1) of the ACL, the respondent be permanently restrained, whether by himself, his servants, agents or otherwise, from:
(a) causing the applicants or any player of the video game Grand Theft Auto V, to receive false or misleading data about any multiplayer game in play, including data about the status and statistics of any other player or any other data,
(b) whether by means of the Infamous Mod or otherwise.
6. The respondent do all things necessary and desirable that are within his power to do to cause the Infamous Mod to be made permanently inoperable, including but not limited to permanently disabling any authentication service upon which the Infamous Mod relies.
7. The respondent delete and not restore or recreate, or permit restoration or recreation of, all copies of the Infamous Mod (including source code, compiled code, updates, drafts or unpublished versions) in his possession, custody, power or control.
8. The respondent file and serve an affidavit on or before 4.00pm on 17 September 2021, specifying and verifying:
(a) the actions he has taken pursuant to order 6; and
(b) the deletions he has made pursuant to order 7.
9. An account be taken of the profits made by the respondent as a result of the infringements referred to in declaration 1 above, and an assessment of the quantum of the interest thereon pursuant to s 51A of the Federal Court of Australia Act 1976 (Cth).
10. Unless the parties agree on the quantum of profits and interest referred to in order 9 above, the proceeding be listed before Nicholas J on a date to be fixed in accordance with order 15(d) for further directions.
11. The respondent pay the applicants’ costs in the proceeding to date (except those costs specifically referable to the applicants’ ACL claim pleaded in paragraphs 57–60 and 64(a) of the statement of claim), in an amount as agreed or as determined in accordance with the lump‑sum costs procedure in the Court’s costs practice note GPN‑COSTS.
12. The respondent have leave to rely upon the affidavit of Christopher Anderson affirmed 10 May 2021 at the trial of the issues identified in paragraph 15 below subject to any proper objection.
13. The respondent’s interlocutory application dated 7 May 2021 be otherwise dismissed.
14. The respondent pay the applicants’ costs of his interlocutory application, to be included in the costs referred to in order 11 above.
THE COURT FURTHER DIRECTS THAT:
15. The proceeding be set down for trial on a date to be fixed, in relation to the remaining aspects of the applicants’ claims; namely:
(a) whether the respondent has engaged in actionable conduct under s 116AN(1) of the Copyright Act;
(b) whether the respondent has engaged in actionable conduct under s 116AO(1) of the Copyright Act;
(c) if the respondent has engaged in actionable conduct under either or both sections, what remedies should be granted under s 116AQ of the Act,
(together, “the TPM Matters”), and
(d) unless the parties agree on the quantum of profits and interest, the taking of the account referred to in order 9 above.
16. The applicants are to file and serve any evidence in reply in relation to the TPM Matters on or before 4.00pm on 17 September 2021.
17. The proceeding be referred for mediation by a Registrar of the Court to conclude on or before 15 October 2021.
18. The proceeding be listed for a case management hearing at 9.30am on 22 October 2021 to fix a date for trial.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011 .
Schedule 1 – GTA V Works
1. The GTA V Works means the following works in each Relevant Version of the GTA V Executable and GTA V Library Files:
(a) “computer programs” within the meaning of s 10(1) of the Copyright Act, including the computer programs embodied in:
i. the GTA V Executable (including the GTA V Core);
ii. the executable GTA V Library Files; and
iii. the GTA V Source Code;
(b) “artistic works” within the meaning of s 10(1) of the Copyright Act, including the artistic works embodied in the non-executable GTA V Library Files (such as the graphics and models referred to in paragraph 3 above);
(c) “cinematograph films” within the meaning of s 10(1) of the Copyright Act, being the aggregates of the:
i. visual images embodied in the GTA V Library Files’ graphics and models, that are capable of being shown as moving pictures; and
ii. sounds embodied in the GTA V Library Files’ sound effects, being sound‑tracks associated with those visual images;
(d) “sound recordings” within the meaning of s 10(1) of the Copyright Act, being the aggregates of the sounds embodied in the GTA V Library Files’ sound effects.
The meaning of GTA V Works is affected by paragraphs 2-4 below.
2. The GTA V Executable means the GTA V executable computer file “gta5.exe” in the GTA V software which:
(a) consists of object code that is the result of compiling and linking corresponding source code of the GTA V computer program (“GTA V Source Code”) into a machine readable format;
(b) is copied onto the hard disk of the computer of a player of GTA V (“Player”) during installation of GTA V;
(c) contains instructions that are run by the Player’s computer during gameplay;
(d) runs when the Player wishes to play GTA V, causing it to be executed on the Player’s computer;
(e) when executed on the Player’s computer, causes certain code contained in the GTA V Executable to be copied to the random-access memory in the Player’s computer (this code being the GTA V Core). The GTA V Core is necessary to allow the elements of the game currently being played by the Player.
3. The GTA V Library Files means libraries of executable and non-executable files in the GTA V software, comprising:
(a) graphics, being in-game artworks, textures and colours;
(b) models, being 3D models of in-game characters and objects;
(c) sound effects, being sound files associated with in-game characters, actions and objects; and
(d) object attributes and values being instructions that dictate the behaviour of in-game objects and their associated sound effects.
4. Since the initial publication of the PC version of GTA V, the second applicant has developed, and the first applicant has published, new versions of the GTA V Executable and GTA V Library Files as new features and downloadable content (“DLC”). A reference to the GTA V Executable or the GTA V Library Files in this schedule include a reference to each and every version of the GTA V Executable or GTA V Library Files (including DLC) developed by the second applicant and published up to and including the date of these orders by the first applicant since the initial publication of GTA V (each a Relevant Version).
Background
Background to the litigation
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
The applicants’ counsel submitted that the delay was significant and largely unexplained, and that the evidence of the delay was itself filed out of time. They submitted that Mr Anderson’s evidence did not show any arguable defence. They submitted that the interlocutory application should be dismissed with costs. CONSIDERATION The question is whether the judgment should be either varied or set aside so as to relieve the respondent of the consequences of his default. There are, in my opinion, four main considerations relevant to the present application: first, the respondent’s explanation for his default; second, whether the respondent has an arguable defence to the claims pleaded against him; third, what prejudice the respondent will suffer in the event that the orders sought by him are not made; and fourth, what prejudice the applicants will suffer in the event that the orders sought are made. Also relevant are broader considerations relevant to the interests of justice including the overarching purpose referred to in s 37M of the Act. Explanation for the delay Mr Macinnis submitted that the delay was caused by a combination of the following factors:(1)The voluminous nature of the applicants’ evidence and their delayed response to a request regarding the possible waiver of confidentiality to allow Mr Anderson to see some confidential material prior to the preparation of his affidavit;(2)The respondent’s poor financial situation which prevented him from organising an expert witness; and(3)The respondent’s representatives’ inability to contact the respondent in the weeks leading up to the expiry of the self-executing order.In support of these submissions the respondent relies on Mr Macinnis’ affidavit of 18 June 2021 and some passages of Mr Anderson’s affidavit of 10 May 2021. However, there is nothing in Mr Anderson’s affidavit that provides any explanation for his failure to comply with the self-executing order or why he failed to contact Mr Macinnis in the period between 4 March 2021 and 16 April 2021 to provide him with instructions. As the applicants’ counsel submitted (and the respondent accepted) the question of confidentiality was resolved by correspondence between the parties on 5 November 2020. The date for the filing of the respondent’s evidence had been at that time extended by consent to 4 December 2020 and was subsequently extended to 16 April 2021. Even if the confidentiality issues had delayed the respondent prior to this date, the confidentiality regime cannot account for the delay after the letter of 5 November 2020. Critically, the confidentiality regime had been settled between the parties before the self-executing orders were made. Nor do I accept the respondent’s submission regarding the volume of evidence filed by the applicants. All of the applicants’ evidence was served by 7 July 2020. No issue was raised with the Court at that time (or at any time prior to the hearing of the interlocutory application) concerning the amount of material filed by the applicants. In circumstances where the respondent has had access to all of the material for over ten months I do not accept that the volume of material provides any explanation for his failure to comply with the self-executing order requiring his affidavit evidence to be filed first by 16 April 2021 and then by 23 April 2021.