FEDERAL COURT OF AUSTRALIA

Infa-Secure Pty Ltd v Crocker (No 3) [2018] FCA 605

ORDERS

THE COURT ORDERS THAT:

1.    The applicant is to submit a draft form of orders to give effect to the reasons of the Court.

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

REASONS FOR JUDGMENT

REEVES J:

INTRODUCTION

1    In December 2014, Ms Crocker (the respondent) sent a series of emails to a range of retailers who were, at the time, customers of Infa-Secure Pty Ltd (the applicant). In those emails, Ms Crocker made a number of serious allegations about Infa-Secure concerning a child car-safety restraint device called “Secur-ap” or “Securap” (hereafter referred to as the “Securap device”). Among many other things, Ms Crocker claimed to hold the intellectual property rights in the Securap device and she alleged that Infa-Secure and, as a consequence, its customers who were retailing the device – the recipients of the emails – were breaching her intellectual property rights and were therefore acting unlawfully.

2    Soon after Ms Crocker sent this series of emails, Infa-Secure commenced this proceeding and sought, among other things, an interlocutory injunction to prevent her continuing to make such allegations against it. At the first hearing of that injunction application, Ms Crocker agreed to give an undertaking to the Court “until trial or earlier order”. An intense interlocutory process ensued as a consequence of which Ms Crocker was found guilty of contempt of court for breaching her undertaking. Infa-Secure now seeks a permanent injunction against Ms Crocker and some other relief.

FACTUAL AND PROCEDURAL BACKGROUND

3    Before detailing the contents of the emails at the heart of this proceeding, it is necessary to briefly outline some of its lengthy and complex factual and procedural background. It stretches back more than two decades to 1995. In or before that year, Ms Crocker and her former husband operated a company called Maternally Yours Pty Ltd. Through that company, they manufactured and supplied the Securap device.

4    Infa-Secure is one of a number of companies controlled by the Horsfall family. It trades as a wholesaler suppling infants’ and children’s products to retailers in Australia, including Toys ‘R’ Us, Baby Zone, Baby Co, Bubs, Baby Kingdom, PramWarehouse Online, My Baby Warehouse and Baby Bunting.

5    In or about 1995, a corporate predecessor to Infa-Secure, also operated by the Horsfall family, called Infa Products Pty Ltd, purchased a supply of the Securap devices from Maternally Yours.

6    In 1998, Maternally Yours ceased to trade and that company was subsequently deregistered.

7    By about 1999, Infa Products had exhausted its stock of Securap devices. For a short period, it sourced a supply of the devices from a company called Tasman Tannery Pty Ltd. Then, from about the year 2000, it commenced to manufacture the Securap device itself, calling it “Secur-rap”. From about 2004 to approximately 2008, Infa Products arranged for the device to be manufactured in China.

8    During 2006, Ms Crocker contacted Mr Richard Horsfall, a director of Infa Products. She claimed to Mr Horsfall that she held a patent over the Securap device. She told Mr Horsfall that she intended to take action for patent infringement against his company unless he paid her a royalty. Mr Horsfall agreed to do so provided Infa Products was granted exclusive rights over the Securap device. As well, he requested a copy of the patent. Ms Crocker agreed to both conditions provided that the first royalty payment was paid to her immediately. Mr Horsfall arranged to prepare a written agreement granting Infa Products the exclusive rights to the Securap device and he sent that, together with a cheque for the first royalty payment, to Ms Crocker. Ms Crocker cashed the cheque on the next day after she received it, but she did not return a signed copy of the agreement to Mr Horsfall and nor did she provide a copy of the patent to him. After arranging to conduct a patent search and discovering that the only patent for the Securap device had been held by Maternally Yours; and it had lapsed a number of years earlier, Infa Products refused to make any further royalty payments to Ms Crocker.

9    The various interests of Infa Products were transferred and assigned to Infa-Secure by an agreement dated 7 February 2011.

10    Infa Products, and after February 2011, Infa-Secure, continued to market the Securap device until March 2014. From that point, Infa-Secure began to market a new version of the device under the name “Securall”.

11    In 2014, Ms Crocker commenced a proceeding (QUD 647 of 2014) against four respondents: Infa-Secure and three of its retailer customers – Toys ‘R’ Us (Aust) Pty Ltd, Baby Zone (Australia) Pty Ltd and The Baby Project Limited Partnership LP. Having commenced that proceeding, Ms Crocker then sent the series of emails that are at the centre of this proceeding. When Infa-Secure threatened to make an application in that proceeding for an interlocutory injunction to restrain Ms Crocker from continuing to send such communications to its customers, Ms Crocker discontinued that proceeding against Infa-Secure.

12    Immediately thereafter Infa-Secure commenced its separate proceeding (the present proceeding) against Ms Crocker seeking, among other things, an interlocutory injunction in essentially the same terms as that mentioned above. When this proceeding was first mentioned before Dowsett J on 12 January 2015, Ms Crocker gave the undertaking that is already mentioned above not to communicate with any persons about the subject matter of the two proceedings: her proceeding QUD 647 of 2014 and the present proceeding QUD 9 of 2015 (see Infa-Secure Pty Ltd v Crocker [2015] FCA 830 at [39]–[41]). As is also mentioned above, that undertaking was the source of most of the interlocutory applications that consumed this proceeding in 2015.

13    Ultimately, on 13 August 2015, on Infa-Secure’s application, Ms Crocker was found guilty of 27 counts of contempt of Court for breaching her undertaking (see Infa-Secure Pty Limited v Crocker [2015] FCA 830). At about the same time, Infa-Secure filed a further statement of charge alleging an additional three counts of contempt against Ms Crocker.

14    On 4 March 2016, Ms Crocker was found guilty on two of the three additional counts of contempt and, on the 29 findings of contempt, she was sentenced to a term of imprisonment of 13 weeks, of which she was to serve two weeks, with the balance being suspended. She was also ordered to pay Infa-Secure’s costs on an indemnity basis to be taxed forthwith (see Infa-Secure Pty Limited v Crocker (No 2) (2016) 338 ALR 586; [2016] FCA 202).

15    In the meantime, in September 2015, Ms Crocker commenced a separate proceeding against the Registrar of Trademarks IP Australia. That proceeding was stayed in 2016 after Ms Crocker was declared bankrupt and it was dismissed, notwithstanding Ms Crocker’s opposition, on 9 February 2017 at the election of Ms Crocker’s trustee in bankruptcy pursuant to s 60(2) of the Bankruptcy Act 1966 (Cth).

16    Ms Crocker’s original proceeding issued in December 2014 suffered the same fate. It was stayed in 2016 and was subsequently dismissed, again notwithstanding Ms Crocker’s opposition, on 9 February 2017 at the election of Ms Crocker’s trustee in bankruptcy.

THE SERIES OF EMAILS

17    The particular parts of the seven emails sent by Ms Crocker upon which Infa-Secure relied, together with the allegations made in Infa-Secure’s amended statement of claim, and its contentions with respect thereto, are set out hereunder.

Email 1: 4 December 2014

18    This email was sent to: Bubs, Baby Kingdom, PramWarehouse Online, My Baby Warehouse and Baby Bunting. In it, Ms Crocker stated:

I have commenced action in the Federal Court of Australia as attached and sealed by the Court.

As a result, I am locating all companies who are still continuing to sell my property unlawfully and adding them to the action seeking relief as set out in the Originating Application.

Your website is showing that you are selling the product and as such, your company is to be added to the claim.

I am sorry to have to take this action against retailers but it is the only course of action available to me lawfully to ensure the return of my property and all monies made by all persons to date who did not have the lawful right to be using my property.

I will add you to the respondent list today with the Federal Court of Australia and you will be served your copy in the coming week. You should seek the advice of your lawyer in this matter.

19    In its amended statement of claim, Infa-Secure claimed that, by this email, Ms Crocker made the following untrue representations:

(a)    each instance of the [Securap device] is [Ms Crocker’s] property;

(b)    [Ms Crocker] was entitled to possession of any instance of the [Securap device] in a trader’s possession;

(c)    a trader, by selling an instance of the [Securap device], has acted unlawfully;

(d)    a trader, by selling an instance of the [Securap device], will be liable to account to [Ms Crocker] for the proceeds of such a sale.

20    In its submissions, Infa-Secure claimed that each of these representations was false or misleading. It submitted that, contrary to the above representations, Ms Crocker had “no basis” for claiming ownership of the Securap device, given that the patent had lapsed and she had not marketed the device for several years, thus Ms Crocker held no intellectual property in the device. Further, Infa-Secure relied on the fact that, by March 2014, it had replaced the Securap device with the Securall device.

Email 2: 5 December 2014

21    This email was sent to: Toys ‘R’ Us, Baby Zone, Baby Co, Bubs, Baby Kingdom, PramWarehouse Online, My Baby Warehouse and Baby Bunting. It contained the following statements upon which Infa-Secure relied:

The only way I will withdraw this action against all parties is if the matter is fully resolved, my property returned to my name, monies owed to me paid in full, invoices satisfied and a written apology to me for the false allegations I was subjected to in being nationally defamed and accused of extortion among other common criminal actions.

…

If Infa believe they are not responsible for any wrong doing, then you need to provide all parties with an indemnity and provide them with an assurance I will not succeed in this matter and provide them with a sworn affidavit that I am not the owner and inventor and I do not have any legal rights …

…

Indemnify your retailers Matthew, give them an assurance that I will not win this case and assure them that you will reimburse them financially if I do …

Don’t bully me, indemnify your clients and guarantee them that no court proceeding can harm them because Infa have committed no wrong at all …

…

… Infa destroyed my Christmas last year financially breaking me in fighting this and they have done it to me again this year and I am still without the furniture I sought as was my right in unpaid royalties. I am sorry, but it is ending now and I am fighting this and suing every person who is using my property without my consent and ensuring I am fully reimbursed for the harm and the trauma I have been forced to endure.

22    In its amended statement of claim, Infa-Secure claimed that, by these statements, Ms Crocker made the following untrue representations:

(a)    [Infa-Secure] had gained at [Ms Crocker’s] expense by marketing the [Securap device] and is liable to account to [Ms Crocker] for that;

(b)    any retailer who re-supplied the [Securap device] is liable to account to the respondent for any proceeds of such re-supply; and

(c)    retailers broke the law by selling the [Securap device] without the consent of [Ms Crocker];

(d)    the [Securap device] was [Ms Crocker’s] property.

23    In its submissions, Infa-Secure alleged that each of these representations was false or misleading because Ms Crocker possessed no property right in the Securap device and, accordingly, had no right to any reimbursement or unpaid royalties.

Email 3: 15 December 2014

24    This email was sent to: Baby Zone Direct, Toys ‘R’ Us and Baby Co. In it, Ms Crocker made the following statements upon which Infa-Secure relied:

It has come to my attention that some of you are of the opinion that I have to prove I am the inventor of the property in court… This is incorrect, I have claimed invention, have provided evidence as far back as I can go and it is up to all respondents to prove I am not the inventor and they are not infringing my property unlawfully. The court will accept my claim of invention and will rely on each of you to disprove my claim if you wish to defend yourselves in using my invention without my consent.

I would strongly suggest that you seek that Infa Secure Pty Ltd provide you with an affidavit stating that they own the property or have a licensed trade agreement with the owner because I have now spoken to police and am seeking the criminal prosecution of all parties continuing to use the property without my consent. At least with an affidavit you can counter sue for fraud when the court finds in my favour….. and if Infa won’t give you an affidavit, you need to ask yourself why not???? if they are speaking the truth to you in that you are not selling my property and cannot get into any legal trouble, then they won’t have a problem giving you that in writing immediately…

…

I own all legal rights to the entirety of the product, packaging and slogans etc between 1990 and November 2012 when a decision was induced against me by fraud. After 2012, I need a judicial review to reinstate my ownership and my legal rights and at that time, I will be seeking further action against all retailers.

…

… obviously no one because you are all still selling it and making money out of it stealing from me.

…

I will leave it with you and advise that I am now seeking a criminal investigation into all retailers for their refusal to cease using my property that was taken unlawfully from me. Selling stolen property or property taken unlawfully via an act of fraud is a criminal offence and that is what Infa have done to you…

…

Infa have NO lawful right to this product whatsoever as will be determined by the court and police and it will be proven that Infa have caused each of you to commit a criminal offence for which you can be prosecuted …

(Errors in original, emphasis added)

25    In its amended statement of claim, Infa-Secure claimed that, by these statements, Ms Crocker made the following untrue representations:

(a)    [Infa-Secure] was, by supplying the [Securap device], infringing some intellectual property of [Ms Crocker];

(b)    [Infa-Secure] had, by supplying the [Securap device], committed a criminal offence;

(c)    the addressees would, by trading in the [Securap device], commit a criminal offence;

(d)    [not pursued and struck out];

(e)    [not pursued and struck out];

(f)    [not pursued and struck out];

(g)    [Infa-Secure] had obtained rights with respect to the [Securap device] by fraud;

(h)    the addressees, by trading in the [Securap device], were stealing from [Ms Crocker]; and

(i)    [Infa-Secure] was supplying instances of the [Securap device] which had been stolen from [Ms Crocker];

(j)    the [Securap device] was [Ms Crocker’s] property.

26    In its submissions, Infa-Secure claimed that each of these representations was false or misleading due to the lack of “any demonstrable property right” and “any demonstration of fraud in obtaining property rights”. With respect to the representations in (b) and (c), Infa-Secure particularly relied on the use of the words “fraud” and “seeking the criminal prosecution” in the second paragraph of this email. With respect to the representation in (g), Infa-Secure contended that the third paragraph of this email should be construed to mean “that Ms Crocker [was] saying she owned all the legal rights until November 2012 when the decision was induced against her by fraud”. It contended that this representation was false because “the evidence demonstrates that there has been no copyright taken [and] to the extent that reputation in goods or in the mark matter, all the evidence points to Infa-Secure having traded in them over the intervening period.”

Email 4: 16 December 2014

27    This email was sent to: Mr Matthew Horsfall, as well as Toys ‘R’ Us, Baby Co, Baby Zone Direct and Baby Kingdom. In it, Ms Crocker relevantly stated:

… I am contacting the administrators of mothers online forums to notify consumers that Securap is the subject of an infringement action in the Federal Court of Australia.

…

I will provide any consumer who asks a copy of the application to allow them to seek damages for the exploitation of their child’s safety in the deliberate provision of counterfeit goods.

…

All parties have knowingly made the counterfeit product available for use on children without regard to child welfare and are continuing to make it available.

(Errors in original, emphasis added)

28    In its amended statement of claim, Infa-Secure claimed that, by these statements, Ms Crocker made the following untrue representations:

(a)    [not pursued and struck out];

(b)    [not pursued and struck out];

(c)    [Infa-Secure] and the retailers had knowingly counterfeited the [Securap device];

(d)    [Infa-Secure] and the retailers had, in trading in the [Securap device], acted in disregard of the welfare of children in respect of whom the [Securap device] is used.

Additionally, Infa-Secure claimed it could be inferred that Ms Crocker also made these representations to the administrators and users of internet fora.

29    In its submissions, Infa-Secure claimed that each of these representations was false or misleading. In relation to the representation in (c), it submitted that “counterfeiting”, by definition, involved making something “in exact imitation of something with the intent to deceive”, and that there had been no “proof that [Infa-Secure] ha[d] done anything other than have the product manufactured and taken [to] the market”. Further, it contended that, in order to make out this counterfeiting allegation, Ms Crocker would need to establish “some property right capable of being infringed.” In relation to the representation in (d), it submitted that there was no basis for claiming that the welfare of children had been disregarded because the evidence showed “that the product ha[d] been in largely similar form for a long time” and “Ms Crocker does not contend that back in the old days it was unsafe.”

30    Infa-Secure also asked the Court to infer that Ms Crocker made these representations in online consumer fora and submitted this inference could “more readily” be drawn “given that Ms Crocker offers no evidence on the point”.

Email 5: 17 December 2014

31    This email was sent to: Toys ‘R’ Us, Baby Zone Direct and Baby Co. In it, Ms Crocker made the following statements upon which Infa-Secure relied:

I am unable to discuss this any further but advise that you are seriously unwise to be continuing to sell the Infa Securap product having being (sic) notified that it is stolen property …

…

… I am quite confident that the media will report the matter fully at the conclusion of investigations and court proceedings providing consumers with the information they need to seek damages against all parties who have knowingly sold stolen and counterfeit goods for use on babies.

…

I would strongly suggest that you seek immediate legal advice and if you can’t afford it, then at least phone your state police HQ and ask the basic questions…

…

Can you be charged for facilitating the destruction of another’s property so it can be replaced with an alternative?

Is it a criminal offence to continue to sell a product once you have been notified that it is counterfeit?

Can the public sue you for selling them counterfeit goods knowingly?

Any police department can provide you with basic information in relation to your position if you are found to be party to a crime and they can give you that information for free. They can also assure you that you cannot be indemnified for criminal offences and that you cannot plead that you were misled after you were given the information that the property is stolen. Police can assure you that a letter from a lawyer telling you a product is not illegal is not a defence to selling stolen property and neither will it protect you from being criminally charged… It is YOUR responsibility to know that you are not selling stolen property and not providing stolen property to the public. It is YOUR responsibility to know that you are not facilitating any criminal offence/activity directly or indirectly. Police will not give you legal advice but they will tell you what laws they monitor and administer and how your conduct can cause criminal charges.

(Errors in original)

32    In its amended statement of claim, Infa-Secure claimed that these statements made the following untrue representations:

(a)    [not pursued and struck out];

(b)    [not pursued and struck out];

(c)    the [Securap device] constituted stolen property;

(d)    [not pursued and struck out];

(e)    there was some basis for asserting that [Infa-Secure] or the addressees had facilitated the destruction of property;

(f)    the [Securap device] was counterfeit;

(g)    on that basis:

(i)    trading in the [Securap device] constituted criminal conduct; and

(ii)    those trading in the [Securap device] were liable to civil suit by consumers purchasing the [Securap device];

(h)    [not pursued and struck out]; and

(i)    [not pursued and struck out].

33    In its submissions, Infa-Secure claimed that each of these representations was false or misleading as they all relied on “Ms Crocker being able to demonstrate some protectable interest”, which she had not done. It was further submitted in relation to the representation in (e) that there was “no evidence or any suggestion anywhere that property ha[d] actually been destroyed at any point [or that] Ms Crocker ever supplied any physical property to [Infa-Secure], other than when through Maternally Yours she sold it to them.” As such, it contended it was false for Ms Crocker to have implied in the first rhetorical question quoted in the email above that “there is a possibility that [Infa-Secure or the addressees] will be charged or that they had engaged in conduct of that nature”.

Email 6: 19 December 2014

34    This email was sent to: Mr Matthew Horsfall, as well as Toys ‘R’ Us, Baby Co, Baby Zone Direct and Baby Kingdom. It comprised approximately seven pages. While Infa-Secure relied on the whole of this email, it placed particular reliance on the following statements contained within it:

Stealing someone’s property and counterfeiting it, inducing an administrative decision against the owner with fraud and assuring retailers you are the owner, does not make you the owner.

…

You are not the owner and an administrative decision stating I am not the owner does not make it so… the decision is void due to the fraud and that will be confirmed by the High Court of Australia in coming weeks.

As for insurance, please do not tell retailers that the product is insured… read your disclosure statement where it specifically states that the policy is void in the event of any fraud relating to the property… tell them the truth. If a child is harmed, then the retailer is culpable for the harm as the provider of the product to the public and they will be hit further when it is established that they provided a counterfeit good knowingly.

…

Seriously, who are you people???

Government departments that allow themselves to be defrauded and then refuse to remedy the fraud, bikies working for you, lawyers who file fraud affidavits after they had extensive conversations with me and should know my common law rights, a lawyer who conceals evidence and lies to the government claiming the product is the clients, steal people’s property and threaten them and defame them nationally… it looks like organized crime and it frightens me to no end.. this is not what I signed up for when I invented a baby product and licensed it to what I thought was a decent family business in the baby industry…

…

I have six children who are in the various stages of seeking legal advice to commence actions against your retailers for facilitating the theft of their inheritance. Infa may think they are immune to legal matters but retailers are also culpable for selling the property for you and for robbing my family. Everytime they sell a product that is an act of robbery against me and my family….

…

Don’t tell retailers that they can’t be charged for criminal facilitation.. It’s actually called “accessory” in Australia and every one of them is an accessory today because they have all been told what is going on and they all chose to continue to sell the product. They can all be sued by consumers for selling counterfeit goods to unsuspecting consumers and for failing to recall the product the moment they learned it was counterfeit… and that is where this is headed Matthew… I have already spoken to a tort lawyer who is ready to take on a class action for consumers the moment I receive my judgement from a real court and a real judge, not an administrative tribunal and former bank clerk that was conned.

I then have an additional lawsuit Matthew after you disclosed yesterday that you are phasing out the Securap™ and are replacing it with Secureall… that wasn’t very clever Matthew,, it was an admission that Infa are removing my product from the market while you have the power to do so and having it replaced with something you have fashioned from what you stole from me … the problem you have however is that your product with the boning in it is going to stab children in the throat in an accident and if you had the specifications of my product development, you wouldn’t have had to add boning to maintain the structure of the product… that will net me a small sum in compensation when my property is returned to my name and I hand up the evidence that it was conspired to phase mine out while you had unlawful control of it… it will give me an additional lawsuit against all retailers also who helped you over the past year after they were notified that my property was stolen and it was counterfeit… it will prove that Infa’s intention was to destroy my business before it was returned to me and retailers assisted that action against me.. Something I already raised with one of the Ministers but your lawyer likely doesn’t have a copy of that letter because she didn’t want to know what I was doing and predicting.

…

Make sure your retailers are prepared for this Matthew because they are facing seven further lawsuits at least and possibly a class action from consumers who will have the right to seek damages against any business or company who has knowingly sold counterfeit child safety accessory items. As I said Matthew previously , this is not an insignificant product it is a safety accessory that has the potential in its true form to protect children and in its counterfeit form, to harm children… I have printed off a number of complaints on the internet about your version of the product and it seems it has deteriorated terribly in recent years…. You manufactured a flimsy version of the product and then introduced a new product after you damaged my products reputation and I assure you the advertising I will engage in will bring SecurapTM back stronger than ever… the publicity alone I will receive will be staggering…

(Errors in original, emphasis added)

35    In its amended statement of claim, Infa-Secure claimed that, by these statements, Ms Crocker made the following untrue representations:

(a)    each of the addressees had unlawfully used property belonging to [Ms Crocker];

(b)    each of the addressees had, by selling the [Securap device], acted unlawfully;

(c)    the [Securap device] is counterfeit;

(d)    [not pursued and struck out];

(e)    [Ms Crocker] had rights in the [Securap device];

(f)    [Ms Crocker] had suffered fraud at the hands of [Infa-Secure];

(g)    [Ms Crocker] had some form of intellectual property (whether confidential information, copyright, trademark or some other form) which had been infringed;

(h)    Each of the addressees was liable to compensate or account to [Ms Crocker] in respect of their use of the [Securap device];

(i)    [not pursued and struck out];

(j)    [not pursued and struck out];

(k)    [not pursued and struck out];

(l)    [not pursued and struck out];

(m)    [not pursued and struck out]; and

(n)    retailers are robbing the family of [Ms Crocker] each time they sell the [Securap device].

36    In its submissions, Infa-Secure claimed that each of these representations was false or misleading because Ms Crocker held no protectable interest that was capable of being infringed.

Email 7: 20 December 2014

37    This email was sent to: Mr Matthew Horsfall, as well as Toys ‘R’ Us, Baby Co, Baby Zone Direct and Baby Kingdom. In it, Ms Crocker made the following statements:

As I said in my email of yesterday, each of you are named in this lawsuit to protect me and now is where that is going to take place but having said that, you are also named because you have unlawfully used my property, you failed to cease using my property and you were not wise in business in ensuring that the property you were selling was lawfully entitled to be sold by you.

…

This matter is going to be resolved and although I can appreciate that each of you are terribly angry with me for taking this action, it is an action that needs to be taken to ensure that each of you are also protected in the long run…am I the only case you will be subject to in your business period dealing with products purchased from distributors who you do not actually know have a right to provide those products to you? It is an expensive lesson to learn but a valuable one as it will teach you to be more astute in the future and to seek guarantees and evidence from distributors as to the lawful right of the distributor to be providing any product. Is it not better to know what you are involved in now rather than be involved in multiple lawsuits at a later date for selling stolen property and infringing my ip? Is it not better to work with me toward exposing this matter and protecting yourself as a party who has also been victimized in this matter? Is it not better to have a court judgement found in your favour that you were not knowing of this matter and protect yourself from any class actions consumers may bring as is likely to take place at the conclusion of this matter.

(Errors in original, emphasis added)

38    In its amended statement of claim, Infa-Secure claimed that, by these statements, Ms Crocker made the following untrue representations:

(a)    each of the addressees had unlawfully used property belonging to [Ms Crocker];

(b)    [not pursued and struck out];

(c)    [not pursued and struck out];

(d)    [Ms Crocker] had rights in the [Securap device];

(e)    each of the addressees was liable to compensate or account to [Ms Crocker] in respect of their use of the [Securap device];

(f)    [not pursued and struck out];

(g)    [not pursued and struck out];

(h)    [not pursued and struck out]; and

(i)    each of the addressees had infringed personal [intellectual property] of [Ms Crocker].

39    In its submissions, Infa-Secure claimed that each of these representations was false or misleading as it had not been established that Ms Crocker had any “identifiable protectable interest”.

THE RELIEF SOUGHT

40    In its amended originating application, Infa-Secure sought an order that it acknowledged was “highly specific” and, because of its complexity, may give rise to difficulties with compliance. As a result, in its written submissions for the trial, it accepted that the permanent injunction should be in the following form:

[That Ms Crocker be restrained] from suggesting to any retailer or consumer that by marketing the [Securap or Securall device], either Infa-Secure or any reseller is engaging in any conduct which:

(a)    infringes any intellectual property right;

(b)    is likely to render any person liable to civil suit by reason of such infringement; and

(c)    is criminal in nature.

41    As well, Infa-Secure sought a declaration that the threats of action for copyright infringement that Ms Crocker had made were unjustifiable and sought an injunction against the repetition of such threats. It also originally sought damages pursuant to s 202 of the Copyright Act 1968 (Cth) (Copyright Act). However, at the trial, it abandoned this damages claim.

42    Finally, it should be noted that Infa-Secure also sought a declaration that it had established goodwill in the Securap device and was lawfully entitled to supply it for re-supply. However, it did not really develop this claim in its submissions at the trial, but instead submitted that Ms Crocker did not have any reputation or goodwill in the Securap device. Further, while it also originally sought damages for the alleged contraventions of ss 18 and 29 of the Australian Consumer Law, as set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL), and for passing off, at the trial it also abandoned those claims.

THE RELEVANT LEGISLATION

43    Sections 18 and 29 of the ACL relevantly provide:

18     Misleading or deceptive conduct

(1)    A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

29    False or misleading representations about goods or services

(1)    A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

(a)    make a false or misleading representation that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or

(b)    make a false or misleading representation that services are of a particular standard, quality, value or grade; or

(c)    make a false or misleading representation that goods are new; or

(d)    make a false or misleading representation that a particular person has agreed to acquire goods or services; or

(e)    make a false or misleading representation that purports to be a testimonial by any person relating to goods or services; or

(f)    make a false or misleading representation concerning:

(i)    a testimonial by any person; or

(ii)    a representation that purports to be such a testimonial;

relating to goods or services; or

(g)    make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or

(h)    make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation; or

(i)    make a false or misleading representation with respect to the price of goods or services; or

(j)    make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods; or

(k)    make a false or misleading representation concerning the place of origin of goods; or

(l)    make a false or misleading representation concerning the need for any goods or services; or

(m)    make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3-2); or

(n)    make a false or misleading representation concerning a requirement to pay for a contractual right that:

(i)    is wholly or partly equivalent to any condition, warranty, guarantee, right or remedy (including a guarantee under Division 1 of Part 3-2); and

(ii)    a person has under a law of the Commonwealth, a State or a Territory (other than an unwritten law).

44    Section 202 of the Copyright Act relevantly provides:

(1)    Where a person, by means of circulars, advertisements or otherwise, threatens a person with an action or proceeding in respect of an infringement of copyright, then, whether the person making the threats is or is not the owner of the copyright or an exclusive licensee, a person aggrieved may bring an action against the first–mentioned person and may obtain a declaration to the effect that the threats are unjustifiable, and an injunction against the continuance of the threats, and may recover such damages (if any) as he or she has sustained, unless the first–mentioned person satisfies the court that the acts in respect of which the action or proceeding was threatened constituted, or, if done, would constitute, an infringement of copyright.

CONTENTIONS

45    For the reasons set out in the review of the seven emails above, Infa-Secure claimed that each of those emails was:

(a)    misleading and deceptive, or likely to mislead or deceive; and

(b)    a false or misleading representation concerning the existence of a right or remedy within the meaning of section 29 of the Australian Consumer Law.

46    Infa-Secure submitted there was no basis for Ms Crocker to claim that any item of the Securap device was her property as the patent she had previously held with her husband had lapsed in 1998 when Maternally Yours ceased trading. Further it contended that Ms Crocker had done nothing by the way of marketing the Securap device for many years and she could not therefore claim any reputation in the marketplace with respect to it. It also submitted that the Securap device itself was not capable of attracting copyright as it did not fall within any of the categories set out in s 10 of the Copyright Act and there was no suggestion that Ms Crocker achieved a work of artistic merit, as distinct from a simple, functional device, relying on the High Court’s decision in Burge v Swarbrick (2007) 232 CLR 336; [2007] HCA 17.

47    Infa-Secure submitted that all of the emails, whilst perhaps appearing to assert legal rights, were actually designed to injure a competitor in the marketplace, relying on a decision of the Full Court in Madden v Seafolly Pty Ltd (2014) 313 ALR 1; [2014] FCAFC 30 (Madden). It submitted that Ms Crocker’s conduct arose from two commercial relationships, namely, the supply of the Securap device by Maternally Yours and the royalties arrangement between Ms Crocker and the predecessor company, Infa Products.

48    Although it claimed it was not necessary to demonstrate a risk of future contraventions of ss 18 and 29 of the ACL to obtain an injunction order under s 232, it contended that, if there were such a risk, that would affect the scope of any injunction the Court may order. Accordingly, it submitted that the threat of future contraventions justified the injunctive relief being granted in more general terms and relied on the following matters in support of this contention:

(a)    Ms Crocker’s contempt of the interlocutory undertaking she gave;

(b)    [Ms Crocker] continuing to peddle the lie that she was confused as to the identity of Infa-Secure when she commenced QUD647/ 2014;

(c)    [Ms Crocker] abusing the process of the Court by filing multiple interlocutory applications for the same summary relief;

(d)    [Ms Crocker’s] admissions to acting tactically to avoid legal consequences throughout this proceeding.

49    Infa-Secure submitted that, as Ms Crocker had no valid claim to ownership to any instance of the Securap device, nor any reason to assert that she had any right or action against the traders to whom she sent the seven emails set out above, the contents of those emails therefore constituted a groundless threat within the meaning of s 202 of the Copyright Act. In this respect, Infa-Secure also placed particular emphasis on an additional email Ms Crocker sent to Ms Chrysiliou, Infa-Secure’s lawyer, dated 5 November 2014, which stated:

COPYRIGHT CEASE AND DESIST LETTER

…

I am writing to direct you immediately to cease and desist from reproducing, selling, advertising and distributing my copyright property Securap.

I am the sole owner of copyright in Securap and I am the developer of the same. As the sole owner of copyright for Securap, I hold the exclusive right to reproduce, modify, post, and distribute those materials and to grant others permission to exercise one or more of those rights.

Accordingly, Infa Secure Pty Ltd has no lawful right to copy, distribute, advertise, offer for sale and/or sell any material that copies, in whole or in part, or is based on my Securap product. I demand that you immediately:

1.    Remove all products from your sales distribution.

2.    Destroy copies of the Securap including any advertising materials.

3.    Provide written assurances to me that you have complied with these directives and will not in the future accept for sale or sell any of my copyrighted materials.

Orders for costs and damages are to be pursued in the Federal Court of Australia. Retailers are to be served a copy of same letter addressed individually no later than Friday the 7th November 2014.

…

(Errors in original)

50    In its amended statement of claim, Infa-Secure claimed that, in this email, Ms Crocker had represented that she owned the copyright in the following items, and that in dealing with the Securap device, Infa-Secure was infringing that copyright:

(a)    the name Securap and Secur-ap;

(b)    packaging design for the [Securap device];

(c)    user instructions for the [Securap device];

(d)    slogans for the [Securap device]; and

(e)    all promotional materials for the [Securap device].

In its submissions, Infa-Secure contended that “the language of [the above] email fits within [s 202]”.

51    Infa-Secure also relied upon another email which, it submitted, evidenced a groundless threat within the meaning of s 202. That email was sent by Ms Crocker to Mr Van Der Westhuizen, Ms Chrysiliou, Ms Lynne Milham and Mr Matthew Horsfall on 1 June 2017. In it, Ms Crocker stated:

…

[Y]ou will have my affidavit on Monday outlining the entire history of fact which the Court cannot ignore or deny and an outline of all Commonwealth Acts offences including trademark, patent, copyright, corporations, statutory declarations, bankruptcy and so on.

I envisage that your clients application will be dismissed entirely at which time I will investigate criminal proceedings against all persons who have assisted the fraud and seek immediate remedy of the Court for the harm your clients fraudulent application has done.

I remind you that in 12 days time I am free to take this public and will be.

(Errors in original)

52    With respect to the declaration Infa-Secure sought that it had obtained goodwill or reputation in the Securap device, Infa-Secure submitted that “it was Maternally Yours which traded in the [Securap device] until … 1998” and there was “no evidence that Ms Crocker has separately traded in the product at all”. It also pointed to the fact that, in her proceeding (QUD 647 of 2014), Ms Crocker had claimed that Infa-Secure had infringed her common law trademark and had therefore accused it of passing off, and contended that the declaration it sought was necessary to resolve this dispute. Further, it submitted that there was “no prospect of Ms Crocker establishing a current reputation in the [Securap device]” and that any claim for passing off would fail according to the test in Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 at 204. As has already been noted above, these submissions contended that Ms Crocker had no reputation in the device rather than advancing Infa-Secure’s claim that it held that reputation in it.

53    Finally, Infa-Secure submitted that it had suffered loss as a result of the false and misleading representations made by Ms Crocker. In support of this submission, it relied on an affidavit by Mr Matthew Horsfall where he stated that:

Many of Infa’s customers were concerned by representations made to them by Ms Crocker … In order to allay some of those concerns, Infa recalled stock of the [Securap device] from several retail customers of Infa. The value of the recalled stock amounted to $22,448.72 (wholesale, excluding GST). Infa credited its customers from whom stock was recalled with the purchase price of the stock and destroyed the stock.

Additionally, Mr Horsfall stated that in early 2015, “Infa sent several sales of its staff to meet with … retailers … to discuss the representations made by Ms Crocker” including “Toys ‘R’ Us (Australia) Pty Ltd, Baby Factory, BabyCo, Baby Zone/My Baby Warehouse, Sydney Baby Kingdom, Baby Mode and Baby Bunting.” As well, Infa-Secure staff were obliged to spend extra time discussing Ms Crocker’s claims with its customers and allaying concerns relating to them.

54    In her defence, Ms Crocker claimed that Infa-Secure was unknown to her and consequently it was not possible for her to have made any representations about it. Ms Crocker claimed that her dispute was with a company of a similar name, namely Infa Products. She also claimed that all of the email communications involved a proper assertion of her intellectual property rights and that she had not made any false or deceptive representations about those rights. She also claimed that the dispute relating to her intellectual property rights was governed by the Copyright Act and not by the ACL.

55    In her written and oral submissions, Ms Crocker advanced numerous discursive contentions. They included claims that this proceeding was really directed towards obtaining a ruling to override previous decisions of this Court, as well as the Delegate of the Registrar of Trademarks, and was designed to obstruct her right to justice. She also claimed that this proceeding was tainted by fraud; that any commercial restraint placed on her would mean that she would have to remove her existing products from the market; that a Horsfall entity had successfully locked her out of the market by duplicating the Securap device; that Infa-Secure had failed to file correctly; that Infa-Secure’s lawyers were not “filed as representing lawyers”; and that Infa-Secure had breached certain provisions of the Corporations Act 2001 (Cth).

56    Further, Ms Crocker claimed that Infa-Secure had no reputation in the Securap device and, to the extent that its predecessor did, that reputation was gained through false attribution. In this respect, she claimed Infa-Secure had admitted it knew that she was the inventor of the Securap device, but was under the impression that she had abandoned it and had thereafter begun producing the device in its own right. Additionally, Ms Crocker claimed that the transfer of intellectual property rights from Infa Products, the predecessor company to Infa-Secure, did not occur until 2015. As well, Ms Crocker claimed that Infa-Secure’s lawyers had threatened her with groundless legal actions, which constituted misrepresentations on their part. Finally, Ms Crocker claimed that her correspondence was privileged as she sent the emails in the context of the commencement of legal proceedings.

THE ISSUES

57    Based on the pleadings and contentions summarised above, the following issues arise for determination in this proceeding:

(a)    whether Ms Crocker sent the emails in trade or commerce;

(b)    whether Ms Crocker made the representations in the emails as alleged by Infa-Secure;

(c)    if so, whether the representations so made were likely to mislead or deceive;

(d)    if so, whether Ms Crocker is likely to engage in similar contraventions in the future or, in any event, whether a permanent injunction should be ordered against her;

(e)    whether Ms Crocker made groundless threats of legal proceedings in contravention of s 202 of the Copyright Act; and

(f)    whether Infa-Secure has established goodwill in the Securap device and, if so, whether a declaration should be made to that effect.

It should be noted that it is not in dispute that Ms Crocker sent the seven emails to the persons or entities named as recipients in them, nor that they were received by those persons or entities.

CONSIDERATION

(a)    In trade or commerce

58    As to the first issue above, in Madden, the Full Court held that a publication on a Facebook page alleging Seafolly had engaged in improper conduct constituted conduct in trade or commerce. The critical factor was that the author had “sought to influence the attitudes of customers and potential customers” of the applicant. The Court endorsed the following observations made at first instance in Seafolly Pty Ltd v Madden (2012) 297 ALR 337; [2012] FCA 1346 per Tracey J (at [81]–[83]):

81    The reach of provisions such as ss 52 and 53(a) of the TP Act is limited by the use of the preposition “in”. In Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594 at 604; 92 ALR 193 at 197; 17 IPR 39 at 43, Mason CJ, Deane, Dawson and Gaudron JJ said that:

What the section is concerned with is the conduct of a corporation towards persons, be they consumers or not, with whom it (or those whose interests it represents or is seeking to promote) has or may have dealings in the course of those activities or transactions which, of their nature, bear a trading or commercial character. Such conduct includes, of course, promotional activities in relation to, or for the purposes of, the supply of goods or services to actual or potential consumers, be they identified persons or merely an unidentifiable section of the public.

82    [T]he making of statements which are intended to have an impact on trading or commercial activities, even if made by a person not engaged in the relevant industry, may bear the necessary trading or commercial character: see, for example, Fire Watch Australia Pty Ltd v Country Fire Authority (1999) 93 FCR 520; [1999] FCA 761.

83    In the present case, Ms Madden was the principle of White Sands, a trade competitor of Seafolly. Her statements related to the manner in which Seafolly conducted its business. She alleged that Seafolly had engaged in conduct which was improper to the detriment of her own business. She thereby sought to influence the attitudes of customers and potential customers of Seafolly. In these circumstances, I consider that her statements were made “in trade or commerce”.

59    In this matter, Ms Crocker’s emails were directed to retailers who were existing, or potential, customers of Infa-Secure. Her main purpose in sending the emails was to influence those retailers with respect to their trade in the Securap device. Ms Crocker sought to apply that influence by variously asserting that she was the owner and inventor of the device; that she owned the intellectual property rights in the device; that she, and not Infa-Secure, was the only person lawfully entitled to wholesale the device; that she should be paid “unpaid royalties”; that Infa-Secure and the retailers were infringing her intellectual property rights by trading in the device; and that Infa-Secure and the retailers were acting unlawfully by trading in the device. I therefore consider that Ms Crocker’s various statements in the emails were made in trade or commerce.

(b)    Did Ms Crocker make the representations alleged?

60    Whether or not conduct amounts to a representation is “a question of fact to be decided by considering what [was] said and done against the background of all surrounding circumstances”: Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45; [2000] HCA 12 at [100] per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ, quoting Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202 per Deane and Fitzgerald JJ. The conduct concerned must be viewed as a whole and “where the conduct complained of consists of words it would not be right to select some words only and to ignore others which provided the context which gave meaning to the particular words”: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 199 (“Parkdale”) per Gibbs CJ.

61    It is important, however, to note that s 18 of the ACL is not confined to representations, but proscribes “conduct” that is misleading or deceptive: see Butcher v Lachlan Elder Realty Pty Limited (2004) 218 CLR 592; [2004] HCA 60 at [103] per McHugh J. Nonetheless, in this case, the representations were all in writing, that is they were contained in the seven emails set out above.

62    Having regard to the contents of the emails as set out above (at [18]–[39]), I consider Infa-Secure has accurately described the gist of the relevant representations that Ms Crocker made in each of those emails (email 1 at [19], email 2 at [22], email 3 at [25], email 4 at [28], email 5 at [32], email 6 at [35] and email 7 at [38]).

(c)    Were the representations false, misleading or deceptive?

63    Determining whether or not the conduct, here the representations, is false, misleading or deceptive “generally requires consideration of whether the impugned conduct viewed as a whole has a tendency to lead a person into error” and “involves consideration of a notional cause and effect relationship between the conduct and the state of mind of the relevant person or class of persons”: Campbell v Backoffıce Investments Pty Ltd (2009) 238 CLR 304; [2009] HCA 25 (Campbell) at [25] per French CJ.

64    The Chief Justice added at [26] that the test is “necessarily objective” and where the conduct occurs in dealings between individuals, that:

Characterisation may proceed by reference to the circumstances and context of the questioned conduct. The state of knowledge of the person to whom the conduct is directed may be relevant, at least in so far as it relates to the content and circumstances of the conduct.

65    Finally, in Campbell at [32], his Honour elaborated upon the task of properly characterising the conduct as follows:

It is important in considering whether conduct is misleading or deceptive to identify clearly the conduct to be characterised. If the conduct is said to consist of a statement made orally or in writing, the first question to be asked is what kind of statement was made. Was it a statement of historic or present fact made on the basis that its truth was known to its maker? Was it a statement of opinion? That is to say was it a statement of “judgment or belief of something as probable, though not certain or established”? The term “estimate” itself, used as a verb, means the “act of valuing or appraising” or an “approximate judgement of the number, quantity, position, etc, of something”.

(Footnotes omitted)

66    Having regard to the principles set out above, and without rehearsing Infa-Secure’s contentions on this issue, I generally agree with those contentions insofar as they identify the false, misleading or deceptive character of the representations Ms Crocker made in her seven emails (email 1 at [20], email 2 at [23], email 3 at [26], email 4 at [29], email 5 at [33], email 6 at [36] and email 7 at [39]). Insofar as the various representations contained statements of belief on Ms Crocker’s behalf about her ownership of the intellectual property rights in the Securap device; or to the effect that the Securap device was unsafe or posed a risk to children; or that any of the retailers had committed any unlawful act or crime; I do not consider she had any reasonable basis for stating that belief.

67    Accordingly, I consider Ms Crocker contravened ss 18 and 29 of the ACL by making the representations described above in the seven emails she sent in December 2014.

(d)    The likelihood of similar contraventions in the future and whether an injunction should issue against Ms Crocker

68    Section 232(4) of the ACL provides:

The power of the court to grant an injunction under subsection (1) restraining a person from engaging in conduct may be exercised:

(a)    whether or not it appears to the court that the person intends to engage again, or to continue to engage, in conduct of a kind referred to in that subsection; and

(b)    whether or not the person has previously engaged in conduct of that kind; and

(c)    whether or not there is an imminent danger of substantial damage to any other person if the person engages in conduct of that kind.

Despite the provisions of s 232(4)(a) above, the likelihood of future repetition is, as Infa-Secure submitted, a factor relevant to the exercise of the Court’s discretion to issue an injunction (see, for example, Australian Competition and Consumer Commission v Vanderfield Pty Ltd [2009] FCA 1535 at [40] per Dowsett J and Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd (2007) 161 FCR 513; [2007] FCAFC 146 at [108] per Moore, Dowsett and Greenwood JJ). In this matter, I consider there is a likelihood that Ms Crocker may repeat some of the representations she made in her emails and that an injunction should therefore issue to prevent her doing so in the future. I have reached that conclusion based on her conduct throughout this proceeding as generally described above (at [11]–[16]); from the contents of her defence; and from the various claims she made in her closing submissions at the trial as summarised above (at [54]–[56]).

(e)    Did Ms Crocker contravene s 202 of the Copyright Act?

69    Section 202 of the Copyright Act places an onus on Infa-Secure to prove that the alleged groundless threats were made, and it then places a persuasive onus on Ms Crocker to demonstrate that those threats were justified (see Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 86 FCR 154). Infa-Secure does not need to establish that it was the person threatened, merely that it is a “person aggrieved”, and that expression includes “[t]he supplier to the recipient of a threatening letter of the goods the subject of the threat, who loses sales or potential sales as a result of the letter” (see Cowan v Avel Pty Limited (1995) 58 FCR 157 at 164 per Wilcox J). In my view, Infa-Secure has established that Ms Crocker made groundless threats of legal proceedings in relation to copyright infringement as described above (at [49]–[51]) and Ms Crocker has not demonstrated that those threats were justified. Further, I consider Infa-Secure has established that it suffered loss as a result of those threats as outlined at [53] above. Accordingly, I consider Ms Crocker did contravene s 202 of the Copyright Act.

(f)    Goodwill in the Securap device and whether a declaration should be made

70    There is little doubt that this Court has a wide discretionary power to make declarations of right under s 21 of the Federal Court of Australia Act 1976 (Cth): see Forster v Jododex Australia Pty Ltd (1972) 127 CLR 421 (Forster) at 437–438; Ainsworth v Criminal Justice Commission (1992) 175 CLR 564 (Ainsworth) at 581–582 and Tobacco Institute of Australia Ltd v Australian Federation of Consumer Organisations Inc (No 2) (1993) 41 FCR 89 at 99. These authorities also identify a number of principles bearing on the exercise of that discretionary power. They include that it is necessary to ensure that the declaration sought is directed to determining a legal controversy and not to answering abstract or hypothetical questions. Further, the Court is required to ensure that the party seeking declaratory relief has a real interest in seeking that relief. And, finally, the Court has to ensure that there are sufficient consequences flowing from the declaration sought to make it appropriate to exercise the discretion to order it: see Forster at 437 and Ainsworth at 582.

71    In its amended originating application, Infa-Secure sought a declaration that it “has established goodwill in the child restraint device marketed by the applicant between 2011 and 2014 and known as Securap”. However, as has already been noted above, Infa-Secure did not really develop its claim to this declaration at trial, but rather focused on the absence of any reputation held by Ms Crocker in the device.

72    I do not therefore consider it has made out the factual basis for its claim. Even if it had, I do not consider it would have been appropriate to make this declaration. That is so essentially because I do not consider there are sufficient consequences flowing from the declaration to justify it being made. First, Infa-Secure has not traded in the Securap device since 2014 when it changed to the Securall device (see at [10] above). Secondly, and relatedly, with respect to Infa-Secure’s trading in the Securap device prior to 2014, I consider it will be sufficiently protected by the terms of the injunction I propose to order, as indicated above. Thirdly, and finally, the main reason advanced by Infa-Secure for making this declaration was to resolve the issue raised by Ms Crocker in her proceeding (see at [52] above). However, that proceeding was dismissed on 9 February 2017 at the election of Ms Crocker’s trustee in bankruptcy (see at [16] above). For these reasons, I do not consider Infa-Secure is entitled to the declaration it has sought with respect to its reputation or goodwill in the Securap device.

CONCLUSION

73    In conclusion, for the reasons set out above, I consider an injunction should issue under s 232(4) of the ACL to restrain Ms Crocker from repeating the conduct which constituted her contraventions of ss 18 and 29 of the ACL. I also consider Infa-Secure is entitled to the relief it has sought with respect to Ms Crocker’s contraventions of s 202 of the Copyright Act. Infa-Secure has not proposed a form of order for the latter and, for the following reasons (which are not exhaustive), I do not consider the form of the order it has proposed for the former (see at [40] above) is appropriate:

(a)    the word “suggesting” is too imprecise and broad;

(b)    the words “any retailer or consumer” are not sufficiently connected with Infa-Secure and the contraventions concerned;

(c)    the Securap device is not precisely defined;

(d)    the conduct described in subparagraphs (a) to (c) does not accurately and concisely describe the conduct constituting the contravening representations as outlined earlier in these reasons.

Accordingly, I will require Infa-Secure to submit a draft form of orders to reflect these reasons.

Associate:    

Dated:    3 May 2018