FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Ltd v Busselmann [2000] FCA 805

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOTHER v NICK BUSSELMANN

N 1201 OF 1999

HELY J

9 JUNE 2000

SYDNEY

THE COURT DECLARES THAT:

1.                  The respondent has infringed the second applicant’s registered Trade Marks Nos 642678 and 642679.

THE COURT ORDERS THAT:

1.         Judgment be entered in favour of the second applicant on the claims made in the statement of claim.

2.                  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 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 2(a) or 2(b).

3.                  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 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 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 3(a) or 3(b).

4.                  The respondent deliver up to the second applicant’s 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.

5.                  The respondent pay the second applicant’s costs of the proceedings to date.

6.                  The respondent provide discovery within 28 days of service on him of the 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 copies of computer games for the Sony PlayStation® computer game console which bears, or in which is stored electronically a representation of registered Trade Mark No 642678 or 642679, or any mark substantially identical with or deceptively similar to those marks.

7.                  Within 28 days after service on him of this order, the respondent make, file and serve an affidavit which:

(a)                states the number of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console sold by the respondent;

(b)               states the time period in which all such sales of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console were made;

(c)                states the gross sales of the respondent of all copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console;

(d)               states the gross profit of the respondent derived from sales of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® 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 copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console;

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

8.                  The issues of account of profits and damages be reserved and stood over until 31 July 2000, by which the second applicant can elect which, if either, of those avenues it wishes to pursue.

9.                  The matter be stood over for further directions until 9:30am on 31 July 2000.

10.              Notice of these orders and of that adjournment be given to the respondent.

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

REASONS FOR JUDGMENT

1                     I am satisfied that these proceedings have been served on the respondent.  I am also satisfied that, by letter of 9 February 2000, the respondent was notified of directions which I gave on 7 February 2000 which required a defence to be filed by the respondent to the statement of claim no later than 21 February 2000.

2                     The motion which is before me this morning is a motion pursuant to Order 10, rule 7(1)(b), for judgment in default of a defence.  It may also be characterised as an application under Order 20 for summary judgment on the claims made in the statement of claim.  I am not satisfied that there has been established in relation to the first applicant any entitlement on its part to relief.  It may be that the first applicant is a licensee of the second applicant of the trade marks in question, but that fact has not been established by the evidence. 

3                     I am satisfied that no defence has been filed to the statement of claim, either in accordance with my directions, or at all.  I am also satisfied that the second applicant is the registered holder of Trade Marks Nos 642678 and 642679 in relation to the PlayStation mark and the stylised use of the letters P & S.  I am also satisfied that the respondent has infringed each of those marks by using, as a trade mark, a sign or signs which are substantially identical to those marks without the licence or consent of the second applicant.

4                     Counsel for the applicants has handed up short minutes of order.  I make the following orders with reference to that document.  I direct that judgment be entered in favour of the second applicant on the claims made in the statement of claim.  I declare that the respondent has infringed the second applicant's registered Trade Marks Nos 642678 and 642679.  I make orders 5, 6, 7 and 8.

5                     Instead of order 9, I direct that the respondent provide discovery within 28 days of service on him of the 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 copies of computer games for the Sony PlayStation® computer game console which bears, or in which is stored electronically a representation of registered Trade Mark No 642678 or 642679, or any mark substantially identical with or deceptively similar to those marks.

6                     I make orders in accordance with paragraph 10 of the short minutes, but delete in each subparagraph the word “counterfeit” and insert after the expression “computer games” the words “referred to in paragraph 9”.

7                     Finally, I order that further consideration of the issues of account of profits and damages be reserved and stood over until a date to be fixed, by which the second applicant can elect which, if either, of those avenues it wishes to pursue.

8                     I stand the proceedings over for further directions until 9.30 am on 31 July 2000 and I direct that notice of these orders and of that adjournment be given to Mr Busselmann.

Associate:

Dated:              21 June 2000