In brief

  • Section 35A of the Ombudsman Act 1974 (NSW) gives the New South Wales Ombudsman immunity from liability in respect of certain acts or matters executed in the course of performing its statutory functions.
  • However, the installation of computer software on multiple computers in the office of the Ombudsman without a licence was held not to be ‘for the purpose of executing’ these functions and, as a result, the immunity did not apply.

Summary

In Micro Focus (US) Inc v State of New South Wales (New South Wales Police Force) [2011] FCA 7871, the court considered a section of the Ombudsman Act 1974 (NSW) (Ombudsman Act), which gives the New South Wales Ombudsman (Ombudsman) protection from liability in respect of certain acts or matters executed in the course of performing its statutory functions, in the context of a copyright infringement claim against the Ombudsman.

Ultimately, Justice Jagot of the Federal Court found that the installation of computer software was not done ‘for the purpose of executing’ the relevant New South Wales Act and, as a result, offered the Ombudsman no immunity from proceedings under the Copyright Act 1968 (Cth) (Copyright Act).

Implications of the decision

This decision serves to caution those vested with statutory powers and functions that any immunity or protection from liability stemming from their exercise will be strictly construed and considered in light of common sense and the weight of authority. In this case, the installation of software used for the purpose of exercising the Ombudsman’s statutory functions was considered to be only preliminary or incidental to executing those functions, and was therefore not protected from liability.

Background

The copyrighted work in this case was ‘ViewNow for Mainframe’ (ViewNow), a computer program which allowed the Ombudsman and the officers of the Ombudsman to access the records of the New South Wales Police Force held in a system known as COPS (Computerised Operational Policing System). The Ombudsman did so for the purposes of exercising its powers under the Police Act 1990 (NSW) (Police Act), that is: 

  • investigating complaints against the New South Wales Police Force 
  • monitoring investigations conducted by the New South Wales Police Force 
  • scrutinising the New South Wales Police Force’s systems for dealing with complaints, and
  • providing special reports to the New South Wales Parliament in relation to the above.

In facilitating this use of ViewNow in the office of the Ombudsman, the Ombudsman copied ViewNow onto computers within the office without a licence to do so, ultimately enabling approximately 25 users to access the software.

Micro Focus (US), the current owner of the copyright in ViewNow, as well as two other Micro Focus entities who had previously owned that copyright (collectively, Micro Focus), brought proceedings against the State of New South Wales (New South Wales Police Force), the Police Integrity Commission and the Ombudsman. As regards the Ombudsman, Micro Focus alleged infringement of their copyright in ViewNow and sought to restrain the Ombudsman from reproducing the program, damages and an account of profits.

In response, the Ombudsman sought orders setting aside, dismissing or staying proceedings against it based on section 35A of the Ombudsman Act.

Issues

The parties conceded that the facts of the case were not in dispute, namely that:

  • copyright subsisted in ViewNow and Micro Focus owned that copyright, and
  • the Ombudsman ‘reproduced in material form the whole or a substantial part of one or more versions of View Now’ without a licence and therefore infringed copyright in the program.

The main issue in this instance was therefore whether section 35A of the Ombudsman Act, which granted the Ombudsman protection for liability ‘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 those acts were done in bad faith, was engaged by the circumstances. Micro Focus argued that section 35A was not relevant to their claim or, in the alternative, that if section 35A was relevant, it was overridden by the Copyright Act due to the operation of the Judiciary Act 1903 (Cth) (Judiciary Act).

Decision

What is the appropriate construction of s 35A?

Justice Jagot accepted the following propositions put forth by the Ombudsman:

  • that the Ombudsman exercises ‘extensive powers in the public interest’, and that the office of the Ombudsman is therefore ‘unique’
  • that the Ombudsman and its officers only use ViewNow for the purpose of exercising their functions under the Police Act, and
  • that ViewNow is an ‘effective and efficient’ means of discharging these statutory functions.

However, the fact that section 35A must be strictly construed—a fact that was accepted by both parties—in combination with the ordinary and natural meaning of the words ‘for the purpose of executing’ and a common sense interpretation of the term, meant that the Ombudsman must have done or omitted to do the relevant acts, matters or things ‘in the process of doing that which the Act requires or authorises’. On this basis, it was clear that the Police Act and the Ombudsman Act do not require or authorise reproduction of computer software without a licence.

The Ombudsman’s preferred interpretation of that term as meaning a ‘step along the way’ of execution, ‘with the ultimate object of executing’, or to ‘enable or facilitate’ such execution was rejected on this construction, and further did not accord with the authority in relation to similar immunity provisions. While cautioning that such provisions will differ, the weight of authority was against the Ombudsman in this instance. Previous cases have required that the relevant act, matter or thing:

  • be ‘the very thing, or an integral part or step in the very thing’ authorised by the Act and not ‘incidental’ or ‘in the course of’ the exercise of power2
  • relate to statutory powers or functions which ‘involve interference with persons or property’3
  • relate to the ‘extraordinary powers’ vested in the relevant office or body in order to enable it to exercise its functions,4 or
  • relate to the ‘substantive conduct’ of the Ombudsman.5

When these interpretations were applied to the case at hand, it was clear that the installation of software does not involve interference with persons or property, and moreover that such installation is not the ‘very thing’ that the Ombudsman does, the Ombudsman’s ‘substantive conduct’, or a power specifically vested in the Ombudsman but rather a preliminary or incidental step in relation to that thing, conduct or power.

In this sense, acquiring software is no different from acquiring any tools to assist in the exercise of the Ombudsman’s powers, such as a laptop, a photocopier and the like.

What role does the Judiciary Act play in these circumstances?

While the court found that this argument was ‘rendered moot’ by the construction of section 35A, it nevertheless considered the construction of section 79 of the Judiciary Act, which states that the laws of ‘each State or Territory’ shall be binding on all federal courts ‘except as otherwise provided by … the laws of the Commonwealth’.

Micro Focus argued that, if the Ombudsman Act excluded liability for copyright infringement in cases such as the present one but the federal Copyright Act provided for liability in such cases, then a law of the Commonwealth had in this instance ‘otherwise provided’ and left no scope for section 35A to operate. Justice Jagot accepted that, if the Ombudsman’s interpretation of section 35A was accepted, then the irreconcilable nature of the two Acts may lead to the conclusion that the Copyright Act did in fact ‘otherwise provide’ within the meaning of section 79.

However, given that this argument relied on an ‘assumed’ (and rejected) construction of the immunity provision, and the distant relationship between the present circumstances and the circumstances which section 35A had contemplated (that is, the direct exercise of the Ombudsman’s statutory powers), Justice Jagot considered any attempt to resolve the operation of section 79 in these circumstances to be ‘inappropriate’.