Micro Focus (US) Inc v State of New South Wales (New South Wales Police Force) [2011] FCA 787 involves action by a software developer against the NSW Police Force, the Police Integrity Commission and NSW Ombudsman regarding alleged infringement of copyright in Micro Focus' ViewNow for Mainframe software program.
Micro Focus and associated parties claim relief against the NSW Ombudsman under s 115(2) of the Copyright Act 1968 (Cth) consisting of -
• an order restraining the NSW Ombudsman from reproducing the whole or a substantial part of ViewNow without a licenceJagot J notes that it must be assumed that -
• damages (including additional damages), and
• an account of profits.
the NSW Ombudsman, since at least July 2010, has reproduced in material form the whole or a substantial part of one or more versions of ViewNow without any licence from the copyright owner to do so and, thereby, has infringed copyright in those works.The Ombudsman contends that s 35A of the Ombudsman Act 1974 (NSW) provides protection from liability for the alleged infringement, with the consequence that the proceeding cannot be maintained or has no reasonable prospect of success.
... the NSW Ombudsman and officers of the NSW Ombudsman use ViewNow on their computers to access the computerised records of the New South Wales Police Force relating to all police operational activity – a system known as COPS. The NSW Ombudsman and officers of the NSW Ombudsman use ViewNow for the purpose of exercising functions under Pt 8A of the Police Act 1990 (NSW), which empowers the NSW Ombudsman to investigate complaints against the NSW Police Force and to monitor investigations of the NSW Police Force conducted by the Commissioner of Police (NSW), as well as to keep under scrutiny the systems established within the NSW Police Force for dealing with complaints and to provide special reports to the NSW Parliament on any matter arising in connection with these functions.
That section provides that -
(1) The Ombudsman shall not, nor shall an officer of the Ombudsman, be liable, whether on the ground of want of jurisdiction or on any other ground, to any civil or criminal proceedings in respect of any act, matter or thing done or omitted to be done for the purpose of executing this or any other Act unless the act, matter or thing was done, or omitted to be done, in bad faith.Jagot J states that -
(2) Civil or criminal proceedings in respect of any act or omission referred to in subsection (1) shall not be brought against the Ombudsman or an officer of the Ombudsman without the leave of the Supreme Court.
It may be accepted, as the NSW Ombudsman submitted, that the office of the Ombudsman is unique, with the Ombudsman exercising extensive powers in the public interest for the purpose of improving public administration and accountability (Ainsworth v The Ombudsman (1988) 17 NSWLR 276 at 283 and Botany Council v The Ombudsman (1995) 37 NSWLR 357 at 367-368).The Court went on to state that -
It may also be accepted that the NSW Ombudsman and officers thereof only use ViewNow for the purpose of exercising functions conferred on the NSW Ombudsman by the Police Act (noting that s 6(8) of the Ombudsman Act provides that the Ombudsman may exercise functions conferred or imposed by the Ombudsman Act or any other Act).
It may further be accepted that use of the ViewNow system provides an effective and efficient means for the NSW Ombudsman and officers thereof to discharge their statutory functions under Pt 8A of the Police Act.
All these matters may be accepted without leading to the conclusion that s 35A of the Ombudsman Act is engaged so as to protect the NSW Ombudsman from liability for infringements of copyright as alleged in this case.
... the NSW Ombudsman required no statutory authority to install software on the computers used by the Ombudsman or the Ombudsman’s officers. This could be done without any specific legislative authority. In terms of the approach of Callinan J it was no part of the NSW Ombudsman’s functions to copy software onto a computer in breach of copyright.Moreover -
Although The Ombudsman v Laughton (2005) 64 NSWLR 114; [2005] NSWCA 339 concerned the relationship between two State Acts, the same approach is evident. Spigelman CJ said that s 35A of the Ombudsman Act must be construed purposively. The purpose of the section is to “protect from challenge the substantive conduct of the Ombudsman”, with the consequence that the words "'executing (an) Act' do not necessarily extend to the performance of any statutory function or the exercise of any statutory power" (at [25]). Handley JA construed the words "in respect of any act, matter or thing done or omitted to be done for the purpose of executing this or any other Act" as “words of limitation which confine the protection afforded by the section to acts or omissions done or omitted in exercising or refusing to exercise the statutory powers of obtaining information and investigating complaints conferred by the Act" (at [29]).
On either approach the copying of software onto a computer to enable access to the COPS database is outside the scope of s 35A. The act of copying is not "substantive conduct" of the NSW Ombudsman but conduct preliminary or incidental thereto. The act of copying is also not done in the exercise of or refusal to exercise the NSW Ombudsman’s powers of obtaining information or investigating complaints. It is done merely in order to provide the NSW Ombudsman with a method or means of facilitating the exercise of the Ombudsman’s powers of obtaining information or investigating complaints. In this sense, acquiring software is no different from acquiring any tool to assist in the exercise of those powers such as a laptop, a photocopying machine or the like. ...
For these reasons I do not accept the contention of the NSW Ombudsman that s 35A(1) of the Ombudsman Act is engaged in this case. It follows that the requirement for leave under s 35A(2) is also inapplicable. This conclusion also renders moot the applicants’ other answer to the NSW Ombudsman’s notice of motion, that by s 79 of the Judiciary Act s 35A does not apply to this proceeding.
in the present case, it is inappropriate to attempt to resolve the operation of s 79 of the Judiciary Act on an assumed construction of s 35A(1) of the Ombudsman Act which I do not accept and in circumstances which appear to be to be far removed from those which s 35A(1) is intended to cover.Jagot accordingly held that -
Section 35A(1) of the Ombudsman Act does not protect the NSW Ombudsman from liability in respect of the applicants’ claims in this case. Accordingly, the notice of motion must be dismissed. Costs should follow the event.It would appear to have been simpler for the Ombudsman to simply pay the licence for the software and implicitly set an example for other NSW agencies.
