mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Foxtel Management Pty Ltd v Mod Shop Pty Ltd [2007] FCA 463 ; (2007) 72 IPR 1
Outcome: referred to
for Deckers invites a comparison of the circumstances of the present case with a large number of other cases in which both compensatory and additional damages have been awarded for copyright infringement. Attention was also directed to the quantum of the damages awarded in those cases. They include Aristocrat Technologies , Microsoft Corporation v Glostar Pty Ltd (t/as Downtown Technology Centre) (2003) 57 IPR 518 ; Vivid Entertainment LLC v Digital Sinema Australia Pty Ltd (No 3) [2007] FMCA 748 ; Microsoft Corporation v Ezy Loans Pty Ltd [2004] FCA 1135 ; (2004) 63 IPR 54 ; Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 578; Zero Tolerance Entertainment Inc v Venus Adult Shops Pty Ltd [2007] FMCA 155 ; Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 64 IPR 18 ; Bailey v Namol Pty Limited [1994] FCA 1401 ; (1994) 53 FCR 102 ; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 24 IPR 461 ; Foxtel Management Pty Ltd v Mod Shop Pty Ltd [2007] FCA 463 ; (2007) 72 IPR 1 ; Australasian Performing Right Association Ltd v Monster Communications Pty Ltd (2006) 71 IPR 212 ; and Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) (2009) 8 IPR 378. These authorities are of limited assistance. They emphasise the unfettered nature of the discretion conferred on the Court in fixing an appropriate measure of additional damages. They demonstrate that, depending on the circumstances of the case, a significant award of additional damages can be made even though compensatory damages are fixed at a nominal sum; and that additional damages are often fixed at a lower sum than that awarded for compensatory damages. They make it plain that there is no recognised practice of awarding additional damages in an amount equal to or lower than compensatory damages: cf Raben Footwear at 104 (per Tamberlin J).
Case: Gates v The City Mutual Life Assurance Society Limited [1986] HCA 3 ; (1986) 160 CLR 1
Outcome: applied
purpose of an award of damages in a tort action is to compensate the applicant for loss suffered as a result of the tort: see Haines v Bendall [1991] HCA 15 ; (1991) 172 CLR 60 at 63. The same principle operates in relation to damages for breach of copyright: see Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd [2007] FCAFC 40 ; (2007) 157 FCR 564 at 568. The principle will also have application in determining many (but not all) cases arising from contraventions of consumer protection provisions in legislation such as the TP Act and the FT Act: see Gates v The City Mutual Life Assurance Society Limited [1986] HCA 3 ; (1986) 160 CLR 1 at 13.
Case: Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82
Outcome: referred to
each of these provisions, it is necessary for the Court to assess whether the conduct of Hepbourne was likely to mislead potential customers, whether they be astute or gullible, intelligent or lacking in intelligence, well educated or poorly educated: .au Domain Administration Ltd v Domain Names Australia Pty Ltd [2004] FCA 424 ; (2004) 207 ALR 521 at 527. It is not necessary for Deckers to establish that anyone was actually misled or deceived: see Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44 ; (1982) 149 CLR 191 at 198. Conduct is likely to mislead or deceive if, on an objective assessment, there is a real and not remote possibility that it will do so. It is not necessary for an applicant to establish that the degree of likelihood exceeds 50 per cent: see Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 87.
Case: Gordon Grant and Grant Pty. Ltd., Re [1983] 2 Qd R 314
Outcome: cited
471B of the Corporations Act does not prescribe criteria which condition the exercise of the Court's power to grant leave to a person to begin or proceed with a proceeding against a company in liquidation. Although there is extensive case law on applications made under s 471B and its predecessors, no attempt has been made to identify exhaustively the circumstances in which it might be appropriate for leave to be granted: see Re Gordon Grant and Grant Pty. Ltd. [1983] 2 Qd R 314 at 317. The case law has recently and helpfully been summarised by Gilmour J in Swaby v Lift Capital Partners Pty Ltd [2009] FCA 749 at [22] - [32] .
Case: Haines v Bendall [1991] HCA 15 ; (1991) 172 CLR 60
Outcome: cited
purpose of an award of damages in a tort action is to compensate the applicant for loss suffered as a result of the tort: see Haines v Bendall [1991] HCA 15 ; (1991) 172 CLR 60 at 63. The same principle operates in relation to damages for breach of copyright: see Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd [2007] FCAFC 40 ; (2007) 157 FCR 564 at 568. The principle will also have application in determining many (but not all) cases arising from contraventions of consumer protection provisions in legislation such as the TP Act and the FT Act: see Gates v The City Mutual Life Assurance Society Limited [1986] HCA 3 ; (1986) 160 CLR 1 at 13.
Case: Macteldir Pty Ltd v Dimovski (2005) 226 ALR 773
Outcome: cited
my opinion, Hepbourne has, by these contractual undertakings, bound itself not to prosecute a claim of the kind pursued in its cross-claim. These undertakings would be enforceable by the Court: cf Macteldir Pty Ltd v Dimovski (2005) 226 ALR 773 at 796 and the authorities there cited. The Court should not permit Hepbourne to prosecute a cross-claim of the kind presently attempted in breach of contractual undertakings. In particular, it should not do so in circumstances in which Deckers' defence stands unanswered. Judgment should be entered against Hepbourne and Mr Mykhalovskyi. By agreement, costs orders in the sum of $1,000,000 have already been made jointly and severally against Vladimir, Josef, Victoria and Polina Vaysman and companies associated with some of them. It is appropriate that Hepbourne and Mr Mykhalovskyi should also be jointly and severally liable for Deckers' costs to this extent. Orders to this effect should be made. I certify that the preceding one hundred and forty-six (146) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice TRACEY. Associate: Dated: 13 November 2009 Counsel for the Applicant: Mr E Heerey Solicitor for the Applicant: Middletons Date of Hearing: 24 September 2009 Date of Judgment: 13 November 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/1298.html
Case: Microsoft Corporation v Ezy Loans Pty Ltd [2004] FCA 1135 ; (2004) 63 IPR 54
Outcome: referred to
for Deckers invites a comparison of the circumstances of the present case with a large number of other cases in which both compensatory and additional damages have been awarded for copyright infringement. Attention was also directed to the quantum of the damages awarded in those cases. They include Aristocrat Technologies , Microsoft Corporation v Glostar Pty Ltd (t/as Downtown Technology Centre) (2003) 57 IPR 518 ; Vivid Entertainment LLC v Digital Sinema Australia Pty Ltd (No 3) [2007] FMCA 748 ; Microsoft Corporation v Ezy Loans Pty Ltd [2004] FCA 1135 ; (2004) 63 IPR 54 ; Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 578; Zero Tolerance Entertainment Inc v Venus Adult Shops Pty Ltd [2007] FMCA 155 ; Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 64 IPR 18 ; Bailey v Namol Pty Limited [1994] FCA 1401 ; (1994) 53 FCR 102 ; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 24 IPR 461 ; Foxtel Management Pty Ltd v Mod Shop Pty Ltd [2007] FCA 463 ; (2007) 72 IPR 1 ; Australasian Performing Right Association Ltd v Monster Communications Pty Ltd (2006) 71 IPR 212 ; and Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) (2009) 8 IPR 378. These authorities are of limited assistance. They emphasise the unfettered nature of the discretion conferred on the Court in fixing an appropriate measure of additional damages. They demonstrate that, depending on the circumstances of the case, a significant award of additional damages can be made even though compensatory damages are fixed at a nominal sum; and that additional damages are often fixed at a lower sum than that awarded for compensatory damages. They make it plain that there is no recognised practice of awarding additional damages in an amount equal to or lower than compensatory damages: cf Raben Footwear at 104 (per Tamberlin J).
Case: Microsoft Corporation v Glostar Pty Ltd (t/as Downtown Technology Centre) (2003) 57 IPR 518
Outcome: referred to
for Deckers invites a comparison of the circumstances of the present case with a large number of other cases in which both compensatory and additional damages have been awarded for copyright infringement. Attention was also directed to the quantum of the damages awarded in those cases. They include Aristocrat Technologies , Microsoft Corporation v Glostar Pty Ltd (t/as Downtown Technology Centre) (2003) 57 IPR 518 ; Vivid Entertainment LLC v Digital Sinema Australia Pty Ltd (No 3) [2007] FMCA 748 ; Microsoft Corporation v Ezy Loans Pty Ltd [2004] FCA 1135 ; (2004) 63 IPR 54 ; Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 578; Zero Tolerance Entertainment Inc v Venus Adult Shops Pty Ltd [2007] FMCA 155 ; Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 64 IPR 18 ; Bailey v Namol Pty Limited [1994] FCA 1401 ; (1994) 53 FCR 102 ; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 24 IPR 461 ; Foxtel Management Pty Ltd v Mod Shop Pty Ltd [2007] FCA 463 ; (2007) 72 IPR 1 ; Australasian Performing Right Association Ltd v Monster Communications Pty Ltd (2006) 71 IPR 212 ; and Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) (2009) 8 IPR 378. These authorities are of limited assistance. They emphasise the unfettered nature of the discretion conferred on the Court in fixing an appropriate measure of additional damages. They demonstrate that, depending on the circumstances of the case, a significant award of additional damages can be made even though compensatory damages are fixed at a nominal sum; and that additional damages are often fixed at a lower sum than that awarded for compensatory damages. They make it plain that there is no recognised practice of awarding additional damages in an amount equal to or lower than compensatory damages: cf Raben Footwear at 104 (per Tamberlin J).
Case: Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 578
Outcome: referred to
for Deckers invites a comparison of the circumstances of the present case with a large number of other cases in which both compensatory and additional damages have been awarded for copyright infringement. Attention was also directed to the quantum of the damages awarded in those cases. They include Aristocrat Technologies , Microsoft Corporation v Glostar Pty Ltd (t/as Downtown Technology Centre) (2003) 57 IPR 518 ; Vivid Entertainment LLC v Digital Sinema Australia Pty Ltd (No 3) [2007] FMCA 748 ; Microsoft Corporation v Ezy Loans Pty Ltd [2004] FCA 1135 ; (2004) 63 IPR 54 ; Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 578; Zero Tolerance Entertainment Inc v Venus Adult Shops Pty Ltd [2007] FMCA 155 ; Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 64 IPR 18 ; Bailey v Namol Pty Limited [1994] FCA 1401 ; (1994) 53 FCR 102 ; Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 24 IPR 461 ; Foxtel Management Pty Ltd v Mod Shop Pty Ltd [2007] FCA 463 ; (2007) 72 IPR 1 ; Australasian Performing Right Association Ltd v Monster Communications Pty Ltd (2006) 71 IPR 212 ; and Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) (2009) 8 IPR 378. These authorities are of limited assistance. They emphasise the unfettered nature of the discretion conferred on the Court in fixing an appropriate measure of additional damages. They demonstrate that, depending on the circumstances of the case, a significant award of additional damages can be made even though compensatory damages are fixed at a nominal sum; and that additional damages are often fixed at a lower sum than that awarded for compensatory damages. They make it plain that there is no recognised practice of awarding additional damages in an amount equal to or lower than compensatory damages: cf Raben Footwear at 104 (per Tamberlin J).
Case: Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 ; (2005) 148 FCR 310
Outcome: referred to
Norm Engineering v Digga Australia [2007] FCA 761 ; (2007) 162 FCR 1 at 79, Greenwood J summarised the principles which have been developed in relation to the exercise of the Court's powers under s 115(4): "The principles influencing an assessment of damages under the section are these... [f]lagrancy is not an essential pre-requisite for an award of additional damages; it is sufficient if the court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established ( Raben Footwear Pty Ltd v Polygram Records Inc (1997) 75 FCR 88 at 93 per Burchett J; at 103 per Tamberlin J and at 104 per Lehane J; Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 at 575 per Lockhart J; Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 215 ALR 788 at [158] per Jacobson J); additional damages under s 115(4) may be assessed having regard to principles derived from awards of aggravated and exemplary damages at common law ( Autodesk Inc v Yee (1996) 68 FCR 391 at 394 per Burchett J; Lamb v Cotongo [1987] HCA 47 ; (1987) 164 CLR 1 at 9-10 per Mason CJ, Brennan, Deane, Dawson and Gaudron JJ at pp 9, 10); one objective of an award is deterrence; an element of penalty is an accepted factor ( Autodesk v Yee 68 FCR at 384); the accrual of benefit by reason of the infringement to the respondent is a further factor and the notion of "benefit" suggests a pecuniary benefit to the respondent in excess of the damages otherwise payable ( Ravenscroft v Herbert [1980] RPC 193 (per Brightman J) at 208; the benefit need not be pecuniary ( Polygram v Golden Editions Pty Ltd 76 FCR at 576 per Lockhart J); and there need not be any proportionality between the amount of compensatory damages awarded pursuant to s 115(2) and the amount of additional damages awarded pursuant to s 115(4) ( Raben Footwear v Polygram Records 75 FCR at 93, 103 and 104; Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 ; (2005) 148 FCR 310 at 409, 410 per Conti J); and the assessment of the amount to be awarded is necessarily an imprecise exercise ( Bailey v Namol Pty Ltd 53 FCR at 114 per Burchett, Gummow and O'Loughlin JJ)."
Case: Norm Engineering v Digga Australia [2007] FCA 761 ; (2007) 162 FCR 1
Outcome: cited
Norm Engineering v Digga Australia [2007] FCA 761 ; (2007) 162 FCR 1 at 79, Greenwood J summarised the principles which have been developed in relation to the exercise of the Court's powers under s 115(4): "The principles influencing an assessment of damages under the section are these... [f]lagrancy is not an essential pre-requisite for an award of additional damages; it is sufficient if the court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established ( Raben Footwear Pty Ltd v Polygram Records Inc (1997) 75 FCR 88 at 93 per Burchett J; at 103 per Tamberlin J and at 104 per Lehane J; Polygram Pty Ltd v Golden Editions Pty Ltd (1997) 76 FCR 565 at 575 per Lockhart J; Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 215 ALR 788 at [158] per Jacobson J); additional damages under s 115(4) may be assessed having regard to principles derived from awards of aggravated and exemplary damages at common law ( Autodesk Inc v Yee (1996) 68 FCR 391 at 394 per Burchett J; Lamb v Cotongo [1987] HCA 47 ; (1987) 164 CLR 1 at 9-10 per Mason CJ, Brennan, Deane, Dawson and Gaudron JJ at pp 9, 10); one objective of an award is deterrence; an element of penalty is an accepted factor ( Autodesk v Yee 68 FCR at 384); the accrual of benefit by reason of the infringement to the respondent is a further factor and the notion of "benefit" suggests a pecuniary benefit to the respondent in excess of the damages otherwise payable ( Ravenscroft v Herbert [1980] RPC 193 (per Brightman J) at 208; the benefit need not be pecuniary ( Polygram v Golden Editions Pty Ltd 76 FCR at 576 per Lockhart J); and there need not be any proportionality between the amount of compensatory damages awarded pursuant to s 115(2) and the amount of additional damages awarded pursuant to s 115(4) ( Raben Footwear v Polygram Records 75 FCR at 93, 103 and 104; Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 ; (2005) 148 FCR 310 at 409, 410 per Conti J); and the assessment of the amount to be awarded is necessarily an imprecise exercise ( Bailey v Namol Pty Ltd 53 FCR at 114 per Burchett, Gummow and O'Loughlin JJ)."
Case: Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293
Outcome: referred to
is not, therefore, a case in which the applicant has been in a position to adduce evidence which would assist the Court in assessing damages but has not done so: cf Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257 at 266. It falls into the class of a case in which, as Black CJ and Jacobson J held in Aristocrat Technologies , "damages should be liberally assessed, in the sense that inferences will be more readily drawn against [the wrongdoers], but the object remains to compensate [the applicant], not to punish the respondent": at 569. See also Adidas Salomon AG v Turner [2003] FCA 421 and Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 at 300.
Case: Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44 ; (1982) 149 CLR 191
Outcome: cited
each of these provisions, it is necessary for the Court to assess whether the conduct of Hepbourne was likely to mislead potential customers, whether they be astute or gullible, intelligent or lacking in intelligence, well educated or poorly educated: .au Domain Administration Ltd v Domain Names Australia Pty Ltd [2004] FCA 424 ; (2004) 207 ALR 521 at 527. It is not necessary for Deckers to establish that anyone was actually misled or deceived: see Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44 ; (1982) 149 CLR 191 at 198. Conduct is likely to mislead or deceive if, on an objective assessment, there is a real and not remote possibility that it will do so. It is not necessary for an applicant to establish that the degree of likelihood exceeds 50 per cent: see Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 87.
Case: Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257
Outcome: referred to
is not, therefore, a case in which the applicant has been in a position to adduce evidence which would assist the Court in assessing damages but has not done so: cf Placer (Granny Smith) Pty Ltd v Thiess Contractors Pty Ltd [2003] HCA 10 ; (2003) 196 ALR 257 at 266. It falls into the class of a case in which, as Black CJ and Jacobson J held in Aristocrat Technologies , "damages should be liberally assessed, in the sense that inferences will be more readily drawn against [the wrongdoers], but the object remains to compensate [the applicant], not to punish the respondent": at 569. See also Adidas Salomon AG v Turner [2003] FCA 421 and Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 at 300.
Case: Reckitt and Colman Products Ltd v Borden Inc (1990) 17 IPR 1
Outcome: referred to
elements of a cause of action in passing-off were identified by Lord Oliver in Reckitt and Colman Products Ltd v Borden Inc (1990) 17 IPR 1 at 7. In Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369, the Full Court approved and summarised the elements to be derived from Reckitt : "(1) that the trader's get-up, including any brand name, is recognised by the public as distinctive specifically of the plaintiff's goods; (2) that there has been a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods offered by the defendant are the plaintiff's goods (whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods is immaterial, provided they are identified with a particular source, eg by means of a brand name which is in fact the plaintiff's); (3) that the plaintiff suffers or, in a quia timet action is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods is the same as the source of those offered by the plaintiff". See also TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43 at 50.
Case: Ricegrowers Ltd v Real Foods Pty Ltd [2008] FCA 639 ; (2008) 77 IPR 32
Outcome: applied
trader's reputation can be established even though purchasers of the goods do not know its name or have its name in mind when they purchase the goods. If the applicant's get-up has acquired a distinctive reputation, a respondent's use of the name or get-up conveys the misrepresentation that the goods are the applicant's, thereby harming the applicant's goodwill: Ricegrowers Ltd v Real Foods Pty Ltd [2008] FCA 639 ; (2008) 77 IPR 32 at 44-45.