FEDERAL COURT OF AUSTRALIA

CPL Notting Hill Pty Ltd v Microsoft Corporation [2018] FCA 1473

File number(s):

NSD 1736 of 2018

Judge(s):

O'CALLAGHAN J

Date of judgment:

26 September 2018

Catchwords:

PRACTICE AND PROCEDURE – urgent interim injunction sought by appellants seeking stay of enforcement orders made by Federal Circuit Court of Australia – where decision has been appealed in Federal Court but not yet returnable before a Federal Court judge where Federal Circuit Court judge did not provide written reasons within the period of the stay of enforcement orders – where Federal Circuit Court judge refused to permit parties to access transcript – interim injunction extending stay of enforcement orders granted

Legislation:

Copyright Act 1968 (Cth), s 115(4)

Date of hearing:

26 September 2018

Registry:

New South Wales

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Copyright and Industrial Designs

Category:

Catchwords

Number of paragraphs:

11

Counsel for the Appellants:

Mr P Zappia QC and Mr A McRobert

Solicitor for the Appellants:

SSmith & Associates

Counsel for the Respondents:

Mr G Hansen of Harris & Company

Solicitor for the Respondents:

Harris & Company

ORDERS

NSD 1736 of 2018

BETWEEN:

CPL NOTTING HILL PTY LTD

First Appellant

WEI LI

Second Appellant

CPL DISTRIBUTION PTY LTD (and another named in the Schedule)

Third Appellant

AND:

MICROSOFT CORPORATION

First Respondent

MICROSOFT PTY LTD (ACN 002 589 460)

Second Respondent

MICROSOFT REGIONAL SALES CORPORATION

Third Respondent

JUDGE:

O'CALLAGHAN J

DATE OF ORDER:

26 SEPTEMBER 2018

THE COURT ORDERS THAT:

1.    Orders 3, 4(a), (b) and (c), 10, 11(a), (b) and (c), 12 (insofar as it relates to the first to third respondents below) and 13 of the Honourable Judge Street made on 29 August 2018 in proceeding SYG1205/2016 are stayed until 5 pm on 5 October 2018 or until further order.

2.    The appellants’ application for an interim stay be adjourned for further hearing until 9.30 am on 5 October 2018.

3.    Costs reserved.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

(Revised from transcript)

O’CALLAGHAN J:

1    These reasons for judgment were delivered ex tempore at the hearing on 26 September 2018 and accompany the orders set out above.

2    This matter came before me as duty judge. It is an urgent application for an interim stay. The applicants (who were the first, second and third respondents in the proceeding below and the appellants in the appeal before this court) (the CPL Parties) seek a stay of certain orders made by Judge Street of the Federal Circuit Court of Australia on 29 August 2018 in favour of the applicants below (Microsoft) at the conclusion of a three-day trial. The orders of the judge (enforcement orders) were made ex tempore as follows:

1.    A declaration that each of the First to Fourth Respondents has infringed the First Applicant’s copyright in the Microsoft Windows 7 Professional software, the Microsoft Windows 7 Horne Premium software and in the Microsoft Certificates of Authenticity affixed to computers on which one or other of the said operating systems software was reproduced by reproducing or authorising the reproduction, using and/or selling of the said software, and/or affixing or authorising the affixing of the said Certificates of Authenticity or a substantial part thereof without the licence of the First Applicant.

2.    An order, pursuant to s 115(2) of the Copyright Act 1968 (Cth) that the First and Third Respondents, whether by themselves, their servants and/or agents be restrained from infringing the First Applicant's copyright in the Microsoft Windows 7 Professional software, the Microsoft Windows 7 Home Premium software and in the Microsoft Certificates of Authenticity by reproducing or authorising the reproduction, using and/or selling the said software, and/or affixing or authorising the affixing of the said Certificates of Authenticity or a substantial part thereof without the licence of the First Applicant.

3.    An order that the First to Fourth Respondents pay to the First Applicant damages for infringement of copyright pursuant to s 115(2) of the Copyright Act 1968 (Cth) in the sum of $256,658.

4.    An order that the First to Fourth Respondents pay to the First Applicant additional damages pursuant to s 115(4) of the Copyright Act 1968 (Cth) in the following separate amounts:

(a) in respect of the First Respondent, $500,000;

(b) in respect of the Second Respondent, $500,000;

(c) in respect of the Third Respondent, $500,000;

(d) in respect of the Fourth Respondent, $500,000.

5.    A declaration that the First Respondent has engaged, in the course of trade or commerce, in conduct in contravention of s 18 of the Australian Consumer Law (Cth).

6.    A declaration that by reason of having been knowingly concerned in the contravening conduct of the First Respondent, the Second, the Third and Fourth Respondents have contravened s 18 of the Australian Consumer Law (Cth).

7.    A declaration that the First Applicant is entitled to damages from the First to Fourth respondents pursuant to s 236 of the Competition and Consumer Act 2010 (Cth) in the same amount the subject of order 3 above.

8.    A declaration that the First Respondent has infringed each of the registered trade marks numbers 371528(9), 377674(16), 576996(9), 733702(9)(16), 788966(9) and 871341(9) (Microsoft Trade Marks).

9.    A declaration that the Second, Third and Fourth Respondents are liable for the acts of the First Respondent, constituting infringement of the Microsoft Trade Marks, as joint tortfeasors.

10.    An order that the First to Fourth Respondents pay to the First Applicant damages pursuant to s 126(1) of the Trade Marks Act 1995 (Cth) in the sum of $25,000.

11.    An order that pursuant to s 126(2) of the Trade Marks Act 1995 (Cth) the First to Fourth Respondents pay the First Applicant additional damages in the following separate amounts:

(a) in respect of the First Respondent, $75,000;

(b) in respect of the Second Respondent , $75,000;

(c) in respect of the Third Respondent, $75,000;

(d) in respect of the Fourth Respondent, $75,000.

12.    An order that the First to Fourth Respondents pay to the First Applicant interest from 13 May 2016 calculated in accordance with the prescribed rate identified in r 39.06 of the Federal Court of Australia Rules 2001 pursuant to s 76 of the Federal Circuit Court of Australia Act 1999 (Cth) on each of the damages identified in orders 3 and 10 above.

13.    That Respondents jointly and severally pay the Applicants' costs of these proceedings including any reserved costs in amount agreed or as fixed on taxation.

14.    Orders 3, 4, 10, 11, 12 and 13 are stayed for a period of 28 days.

3    As is clear from the above, the judge stayed for 28 days the enforcement orders which included that the CPL Parties pay damages of over $2.25 million in respect of contraventions of s 115(4) of the Copyright Act 1968 (Cth).

4    Mr Zappia QC (who appeared with Mr McRobert at the trial and on this application for an interim stay) told me that his Honour’s reasons took approximately two hours to deliver. The interim stay is sought to preserve the position to enable the CPL Parties to appeal the judge’s orders to this court.

5    Since the making of the enforcement orders, the solicitor acting for the CPL Parties, Mr Smith, has endeavoured to obtain from the Registry of the Federal Circuit Court in New South Wales an indication of when written reasons are to be provided.

6    On 6 September 2018, the New South Wales Registry wrote to Mr Smith and told him that the settled version should be available by 14 September 2018. To date, no such reasons have been provided.

7    The day before, on 5 September 2018, Mr Smith wrote to the New South Wales District Registrar as follows (omitting formal parts):

We refer to the above and advise that we act on behalf of the respondents. The final hearing of the above proceeding took place over three days from 27 to 29 August 2018. We ordered the full transcript of the final hearing from Auscript and, save for the afternoon session of 29 August 2018, we have received the full transcript. We have been advised by Auscript that we may request the release of the final afternoon’s transcript from the court and hence, this request for the same.

During the afternoon of 29 August 2018, his Honour Judge Street delivered reasons for judgment, made orders and granted a stay of execution. We urgently require the release of the transcript of the hearing for the afternoon of 29 August 2018.

Thank you for your consideration of this request and we look forward to your response at your earliest convenience.

8    The next day, on 6 September 2018, a representative of the New South Wales Registry of the Federal Circuit Court wrote to Mr Smith, as follows (omitting formal parts):

The request has been refused by his Honour. The settled version of the reasons should be available by the end of next week.

9    As a result, the CPL Parties remain in the position of having no transcript of the judge’s ex tempore reasons and no finalised reasons in circumstances where the stay granted by the judge is about to expire.

10    This is, self-evidently, a most unsatisfactory state of affairs that has been brought about by no fault of the parties. After hearing submissions from Mr Zappia this afternoon, Mr Hansen, the solicitor for Microsoft, said that he would not oppose the making of the following orders:

(1)    Orders 3, 4(a), (b) and (c), 10, 11(a), (b) and (c), 12 (insofar as it relates to the first to third respondents below) and 13 of the Honourable Judge Street made on 29 August 2018 in proceeding SYG1205/2016 are stayed until 5 pm on 5 October 2018 or until further order.

(2)    The appellants’ application for an interim stay be adjourned for further hearing until 9.30 am on 5 October 2018.

(3)    Costs reserved.

11    Accordingly, I will make those orders.

I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice O'Callaghan.

Associate:

Dated:    27 September 2018

SCHEDULE OF PARTIES

NSD 1736 of 2018

Appellants

Fourth Appellant:

JIN WANG