FEDERAL COURT OF AUSTRALIA

Sony v Reilly [1999] FCA 1694

TRADE MARKS – no question of principle

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOR v MALCOLM REILLY

N 490 of 1999

MADGWICK J

27 OCTOBER 1999

SYDNEY

THE COURT ORDERS THAT:

1.                  In the absence of the Respondent, the trial proceed generally.

2.                  The hearing and determination of liability take place before the hearing on all issues of damages.

THE COURT DECLARES THAT:

3.                  The Respondent has infringed the Second Applicant’s registered Trade Mark No. 642678.

4.                  The Respondent has infringed the Second Applicant’s registered Trade Mark No. 642679.

5.                  The Respondent has breached the undertakings given to the First Applicant dated 7 May 1999.

THE COURT ORDERS THAT:

6.         The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Second Applicant’s registered Trade Mark No. 642678 consisting of the mark “PlayStation” (the PlayStation mark) by:

(a)                without the licence of the Second Applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(b)               without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(c)                without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 6(a) or 6(b).

7.                  The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Second Applicant’s registered Trade Mark No. 642679 consisting of the mark “PS” (the PS mark) by:

(a)                without the licence of the Second Applicant, importing into Australia for sale or for use for the purpose or any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(b)               without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(c)                without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 7(a) or7(b).

8.                  The Respondent deliver up to the Applicants' solicitors, Allen Allen & Hemsley, within 28 days after service on him of a copy of this Order, any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation or PS marks or any mark substantially identical or deceptively similar to those marks.

9.                  The Respondent pay the Applicants' costs to date.

10.              The Respondent provide discovery, within 28 days after service on him of a copy of this Order, of all records in the possession, custody or power of the Respondent relating to his past importation, sale or offering for sale of any counterfeit copies of computer games for the Sony PlayStation^â computer game console.

11.              Within 28 days after service on him of a copy of this Order, the Respondent make, file and serve an affidavit which:

(a)                States the number of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console sold by the Respondent;

(b)               States the time period in which all such sales of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console were made;

(c)                States the gross sales of the Respondent of all counterfeit copies of computer games for the Sony PlayStation^Ò computer game console;

(d)               States the gross profit of the Respondent derived from sales of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console;

(e)                Annexes or exhibits copies of business records of the Respondent which record the calculation of the said gross profit;

(f)                 States the net profit of the Respondent derived from sales of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console;

(g)                Annexes or exhibits copies of business records of the Respondent which record the calculation of the said net profit.

12.              The proceedings be stood over to 9.30 am on 10 March 2000 before Madgwick J.

13.              The parties have liberty to apply on 3 days’ notice.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

(revised from transcript)

1                     This is an action seeking a declaration of the infringement of certain trademarks, an injunction to restrain any such future infringements, and for ancillary relief. 

2                     After being duly served with the initiating process the respondent wrote to the Court indicating that he was of very modest means and saying that he could not attend the hearing of the application.  He asked that an attached letter be taken into account "when the matter of costs etc is considered".  He attached a letter which made a number of admissions but which sought to put a complexion on the events in question that he was not a well organised trader in computer games on CD Roms which contained the infringed trademarks. 

3                     Earlier, in response to a letter from the applicant's solicitors, the respondent had undertaken to refrain from selling any counterfeit copies of the relevant kinds of computer games and to inform the solicitors of, among other things, details as to who had supplied him with the different counterfeit games and/or what revenue he had obtained from trading in the games and to whom he had sold them.  The statement of claim pleads as a cause of action breach of undertaking but I do not see that the undertaking amounts to a contract and it is not pressed.  I find against the respondent on that count.  Otherwise, the material in evidence amply proves the claims made and the applicants are entitled to judgment accordingly.

4                     I should add that the respondent has not been personally served with a notice of motion that in effect summary judgment would be sought.  This is not for want of trying on the part of the applicants.  Every reasonable effort was made to serve the applicant and there is evidence before the Court that he has given misleading information as to his whereabouts.  There is also evidence before the Court that the suggestion made, in his letter to the Court, that he was little more than an innocent dupe of somebody else is false.  An inference arises from all the circumstances that he is evading and would evade further attempts at service and I do not think it can be said that in the circumstances he has not had a fair opportunity to be heard in relation to the action.  Indeed, the inference from the correspondence he sent to the Court was that he did not wish to be heard except in relation to costs.  As to that last mentioned matter, the case has been presented with admirable economy and I cannot see that any costs other than a bare minimum have been incurred.  I can imagine no conceivable argument that might be put in relation to costs.  In any event, the respondent has, in my opinion, put himself (perhaps deliberately) in a position such that no better opportunity for him to be heard than presently exists can be afforded to him and I do not consider that he has not had an adequate opportunity to be heard on that question. 

5                     Accordingly, I order that:

(1)               In the absence of the Respondent, the trial proceed generally.

(2)               The hearing and determination of liability take place before the hearing on all issues of damages.

6                     Accordingly, I declare that:

(3)               The Respondent has infringed the Second Applicant’s registered Trade Mark No. 642678.

(4)               The Respondent has infringed the Second Applicant’s registered Trade Mark No. 642679.

(5)               The Respondent has breached the undertakings given to the First Applicant dated 7 May 1999.

7                     And I order that:

(6)       The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Second Applicant’s registered Trade Mark No. 642678 consisting of the mark “PlayStation” (the PlayStation mark) by:

(a)                without the licence of the Second Applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(b)               without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(c)                without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 6(a) or 6(b).

(7)               The Respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the Second Applicant’s registered Trade Mark No. 642679 consisting of the mark “PS” (the PS mark) by:

(a)                without the licence of the Second Applicant, importing into Australia for sale or for use for the purpose or any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(b)               without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(c)                without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 7(a) or7(b).

(8)               The Respondent deliver up to the Applicants' solicitors, Allen Allen & Hemsley, within 28 days after service on him of a copy of this Order, any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation or PS marks or any mark substantially identical or deceptively similar to those marks.

(9)               The Respondent pay the Applicants' costs to date.

(10)           The Respondent provide discovery, within 28 days after service on him of a copy of this Order, of all records in the possession, custody or power of the Respondent relating to his past importation, sale or offering for sale of any counterfeit copies of computer games for the Sony PlayStation^â computer game console.

(11)           Within 28 days after service on him of a copy of this Order, the Respondent make, file and serve an affidavit which:

(a)                States the number of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console sold by the Respondent;

(b)               States the time period in which all such sales of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console were made;

(c)                States the gross sales of the Respondent of all counterfeit copies of computer games for the Sony PlayStation^Ò computer game console;

(d)               States the gross profit of the Respondent derived from sales of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console;

(e)                Annexes or exhibits copies of business records of the Respondent which record the calculation of the said gross profit;

(f)                 States the net profit of the Respondent derived from sales of counterfeit copies of computer games for the Sony PlayStation^Ò computer game console;

(g)                Annexes or exhibits copies of business records of the Respondent which record the calculation of the said net profit.

(12)           The proceedings be stood over to 9.30 am on 10 March 2000 before Madgwick J.

(13)           The parties have liberty to apply on 3 days’ notice.

Associate:

Dated:              27 October 1999