Quanta Software International Pty Ltd v Quanta Systems Ltd [2004] FCA 1182

FEDERAL COURT OF AUSTRALIA

Quanta Software International Pty Ltd v Quanta Systems Ltd [2004] FCA 1182 ESTOPPEL – reliance on assumed state of facts – permissibility of subsequent reliance on inconsistent facts – relevance of context to interpreting language founding estoppel claim – precise and unambiguous language – detriment or material disadvantage Grundt v Great Boulder Pty Gold Mines Limited (1937) 59 CLR 641 referred to Verschures Creameries v Hull & Netherlands Steamship Co [1921] 2 KB 608 referred to Thompson v Palmer (1933) 49 CLR 507 referred to Low v Bouverie [1891] 3 Ch D 82 followed GEC Marconi Systems Pty Limited v BHP Information Technology Pty Limited (2003) 128 FCR 1 followed Waltons Stores (Interstate) Limited v Maher (1988) 164 CLR 387 referred to National Westminster Finance New Zealand Limited v National Bank of New Zealand Limited [1961] 1 NZLR 548 referred to QUANTA SOFTWARE INTERNATIONAL PTY LIMITED v QUANTA SYSTEMS LIMITED N 1193 OF 2003 BEAUMONT J SYDNEY 10 SEPTEMBER 2004

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 1193 OF 2003

BETWEEN: QUANTA SOFTWARE INTERNATIONAL PTY LIMITED

APPLICANT

AND: QUANTA SYSTEMS LIMITED

RESPONDENT

JUDGE: BEAUMONT J

DATE OF ORDER: 10 SEPTEMBER 2004

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: The Amended Application be dismissed, with costs. 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 N 1193 OF 2003

BETWEEN: QUANTA SOFTWARE INTERNATIONAL PTY LIMITED

APPLICANT

AND: QUANTA SYSTEMS LIMITED

RESPONDENT

JUDGE: BEAUMONT J

DATE: 10 SEPTEMBER 2004

PLACE: SYDNEY

REASONS FOR JUDGMENT

introduction

The applicant's Statement of Claim 1 By its Further Amended Statement of Claim ('the Claim') the applicant (Quanta Software International Pty Limited) claims the following against the respondent (Quanta Systems Limited): · Copyright subsists in the 'Eunice' software ('Eunice') created in 1980 by Michael Harvey and Michael Green and others, employees of the respondent (formerly Quanta Holdings Limited), a New Zealand corporation. · By a written Licence, dated 2 February 1991, the respondent granted to the applicant an exclusive perpetual licence to use, copy, publish, translate and sub-licence rights to Eunice with respect to all countries except New Zealand (par [4]). · The Licence provides (relevantly, for immediate purposes) as follows: · The respondent granted to the applicant an exclusive perpetual licence to use copy, publish, translate and sub-licence rights to Eunice (with respect to all countries except New Zealand) its 'software system' (ie, Eunice), including certain integrated modules (cl 1 of the Licence). · The applicant agreed to pay the respondent certain amounts in certain events. · Provision was made for maintenance. · The Licence was conditional upon the execution of a Shareholder's Deed. · The Licence 'shall be effective in perpetuity', with provision for termination for cause or for force majeure. · It was an express term and condition of the Licence that the respondent would not use, copy, publish, translate and sub-licence rights to Eunice in any country except New Zealand (see cl 1) (par [5A]). · It was an implied term and condition of the Licence that the respondent would not engage in any action 'in respect to Eunice or any derivative thereof which would on the part of anyone other than the owner of Eunice have enabled the applicant to sue for infringement of copyright (par [5])'. · Trilogy CSI Pty Limited ('Trilogy CSI') was the applicant's agent in relation to the marketing, billing and support of Eunice (par [6]). · In breach of the Licence and, in particular, in breach of the express and implied terms (see above), the respondent has (par [7]): (a) reproduced Eunice or a substantial part thereof; (b) exposed Eunice for sale; and (c) distributed Eunice.