Supreme Court overturns lower court's decision in a landmark case involving
the sale of pirated Microsoft software programs
Tilleke & Gibbins International Ltd.
October, 2000, in a landmark judgment which drew extensive criticism from
local and foreign legal practitioners alike, the Thai Supreme Court overturned
a decision handed down by the Intellectual Property and International
Trade Court ("IP&IT Court") and dismissed criminal charges
against a Thai computer assembly company for illegal sale of unlicensed
computer software owned by the prominent US computer software company,
Microsoft Corp. ("Microsoft").
Supreme Court ruled that the Plaintiff's method of securing evidence of
infringement by the Defendants, i.e. sending an investigator to purchase a personal computer loaded with unlicensed software owned
by the Plaintiff for the purpose of prosecuting the Defendants, was a
form of entrapment. According to the Court, the Plaintiff could not be
regarded as an injured party in this case and was therefore not entitled
to file charges against the Defendants under the Thai Criminal Procedure
Code. The Court thus dismissed Microsoft's allegations against the Defendants.
the Entrapment Was Carried Out
1997, Microsoft hired an investigator to conduct an investigation of the 1st Defendant, a manufacturer
and distributor of computers, for suspected infringing activities. The investigator,
posing as a customer, discussed the purchase of a computer with the 3rd Defendant, an employee of the 1st Defendant. The investigator asked that programs for letter writing, text documents, word processing,
accounting, etc. be installed in the computer for his private business
use, to which request the 3rd Defendant suggested that unlicensed
software programs owned by the Plaintiff could be installed at no additional
cost. (Their conversation was recorded on tape, which was later used as
evidence in trying the Defendants in court.) After making the purchase,
the investigator had the computer in question inspected by a technician. The technician
checked the programs which had been installed and confirmed that they
had been reproduced, track by track, from another computer. All the programs
found were unauthorized Microsoft programs.
Lawsuit in the IP&IT Court
the above-stated evidence, the Plaintiff filed criminal charges against
the 1st Defendant, its director (the 2nd Defendant),
and the 3rd Defendant with the IP&IT Court, a Court of
was established before the IP&IT Court that the Plaintiff, creator
and owner of the software programs, is a foreign owner of copyrighted
works entitled to protection under Section 8 (2) of the Copyright Act
in compliance with the Berne Convention for the Protection of Literary
and Artistic Works to which Thailand is a signatory. The Plaintiff alleged
that the Defendants reproduced and installed the Plaintiff's software
programs in a computer hard drive without authorization, and furthermore,
jointly sold, offered for sale, had possession of and distributed infringing
copies of the Plaintiff's software programs for commercial purposes, in
violation of the Thai Copyright Act.
1st and 2nd Defendants countered that they were
not involved in the infringing activities as alleged by the Plaintiff,
maintaining that their internal policy prohibited their employees from
reproducing programs for customers other than those which the company
owned the copyright to. In this regard, the 1st and 2nd Defendants claimed that an employee had been assigned the responsibility
of overseeing such matters in the place where the infringement allegedly
occurred. Therefore, they were not involved in the unauthorized reproduction
and sale of the programs in question, and that this act was committed
solely by the Defendants' employee (the 3rd Defendant).
reviewing the evidence, the IP&IT Court determined that the reproduction,
track by track, of the software programs from one computer to the purchased
computer was a process that required special equipment. It is unlikely
that the 3rd Defendant carried out the said reproduction alone
and that the act was done with the assistance of others employed by the
Defendants. Based on the evidence, the Court held that the 1st and 2nd Defendants were involved with the 3rd Defendant
in committing infringement activities as alleged by the Plaintiff. Thus,
the Court ruled in favor of the Plaintiff.
Defendants lodged an appeal with the Supreme Court against the judgment
of the IP&IT Court. In their appeal, the Defendants raised the following
significant legal issues:
The Plaintiff was not entitled to file a complaint in this case
due to the invalidity of the Power of Attorney issued by the Plaintiff
authorizing its lawyer to file suit.
The Plaintiff failed to identify the unlicensed programs as those
that were reproduced and installed in the computer in question and
to prove that the 1st and 2nd Defendants were
engaged in the unauthorized reproduction of the Plaintiff's computer
software programs. These Defendants maintained that if the 3rd Defendant's intent was to commit the criminal offense of infringement,
it should be deemed as a personal offense, making it unlawful to
accuse the 1st and 2nd Defendants of being engaged in
the offense of infringement without proof.
on the above arguments, the 1st and 2nd Defendants
stated that the evidence was insufficient for the IP&IT Court to rule
that they had committed the act of infringement as alleged by the Plaintiff.
(Supreme) Court Decision
Supreme Court overturned the IP&IT Court's judgment and held that
the Plaintiff had no legitimate right to institute criminal proceedings
against the Defendants, because the Plaintiff and its investigator were participants in the criminal action committed by the Defendants.
Therefore, because the Plaintiff had no legitimate right to file a complaint,
the Supreme Court concluded that no further consideration of the case
was required and dismissed the case against the Defendants.
its deliberations, the Supreme Court concentrated on examining the evidence
submitted by the Plaintiff of the Defendants' infringement activities,
i.e. the tape-recorded conversation between the 3rd Defendant
and the investigator,
which had been obtained by means of entrapment carried out by the Plaintiff,
and the investigator's testimony. From the investigator's testimony, the Court cited the following points as significant:
On the day the order to purchase the computer in question was placed,
the 3rd Defendant told the investigator that he could
install the programs required by the investigator at no additional
cost, but they would be unauthorized programs. The 3rd Defendant maintained that he could, however, install the authorized
programs in the computer but for an additional cost. The investigator
was also informed that the assembly of the computer and the installation
of the requested programs would take a few days to complete. Ultimately,
the investigator agreed to buy the computer and the unauthorized
programs owned by the Plaintiff, which clearly illustrated that
the investigator agreed to purchase the computer in question with
the intention of having unlicensed programs installed in the computer.
The Court noted that the computer in question had been assembled
at the factory and was delivered to the Defendant's shop on the
day of collection for delivery to the customer (the investigator).
However, after delivery to the shop, it was unpacked and placed
on a desk along with the monitor, clearly indicating to the Court
that someone had removed the computer from the package so that the
programs could be installed in it. This indicates that the 3rd Defendant reproduced and installed the programs into the hard drive
of the computer after it was assembled by the 1st Defendant. The
reproduction and installation of the Plaintiff's programs were therefore
carried out after the investigator made the entrapping purchase.
the Court's opinion, the Plaintiff instigated the entire scenario for
the purpose of instituting criminal proceedings against the Defendants.
The crime of infringement had not been contemplated by the Defendants,
and they were trapped by the Plaintiff into committing the criminal offense.
According to the Thai Criminal Procedure Code, the Supreme Court is permitted
to raise certain issues of law when deliberating a decision, particularly
if the issue is relevant to public order. In this case, since inducement
to commit a crime is an issue that affects public order, the Court determined
that due to the Plaintiff's role in the crime carried out by the Defendants,
the Plaintiff was not an injured party entitled to prosecute the Defendants.
above decision has been extensively criticized by both local and foreign
legal practitioners, as it has established a precedent that will impact
on the ways and means by which IP owners can obtain evidence of infringement
of intellectual property rights in the future. Unlike in other counterfeiting
and pirating activities where counterfeit or pirated products are available
for sale at the infringer's place of business, computer programs are not
readily evident because they are loaded into computers only after the
placement of orders. In most cases, it would be extremely difficult, if
not impossible, for copyright owners to secure evidence through conventional
trap purchases or trap orders, as the pirated products are not yet ready
for sale. As a result of the ruling in this case, it could be very difficult
to enforce the law against this type of infringement in the future.