mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Black &amp; Decker (Australasia) Pty Ltd v GMCA Pty Limited [2007] FCA 1623
Outcome: followed
approach which I ought to take in this application is, in my view, covered by what was said by Finkelstein J in Black &amp; Decker (Australasia) Pty Ltd v GMCA Pty Limited [2007] FCA 1623 at paragraphs 4 to 5. The principal considerations which I have to bear in mind is the prejudice, direct or indirect, to the defendants; the impact of the delay on the plaintiff's part on the conduct of these proceedings; and the reasons for the delay. I have already referred to the reasons for delay which entail commercial considerations as to what is now thought to be, on the plaintiffs' part, the reason for departing from the decision to pursue the warranty insurer. The prejudice to which the defendants point is that the matter, as originally constituted, was ready for a hearing date. A great deal of preparation had been undertaken and, when the matter was before me for directions on 26 February 2009, the parties should have been ready to take a hearing date. I accept Mr Jones' submission that the reality of the present position is that the claim involving YRB is nowhere near the state of preparation of the proceedings in their present form and that he cannot responsibly say that the case will be ready to take a hearing date this year. This is an unsatisfactory situation and has been brought about by the change of commercial course proposed to be taken by the plaintiffs. However, the course which I feel bound to follow has resulted from the approach to the matter taken by YRB. It has adopted an approach which means that one of the primary objects of a commercial court cannot be achieved. This object is the one to which Finkelstein J referred at paragraph 4 of his decision, namely that a commercial court should bring the litigant's dispute on for trial as soon as can reasonably and fairly be done. It seems to me that since this unsatisfactory state of affairs has come about because of the commercial considerations of the plaintiffs, stringent conditions ought to be imposed upon them for the grant of leave. One of the consequences of the approach that the plaintiffs have taken is that there will be need for further discovery. It appears that whilst I believed I had given close management to this proceeding, I may not have appreciated the scope of the discovery presently undertaken. Discovery is not granted as of right and is only granted with the leave of the Court. It appears that very substantial discovery has already been given. As I have said, this will need to be revisited. Equally, further discovery may be required as a consequence of the different damages claim which is now to be made. I will give very close attention to any further orders for discovery. Nevertheless, with some reluctance, I have come to the view that I ought to permit YRB to be joined and to permit Mr Leopold to amend his statement of claim accordingly.
Case: Colgate-Palmolive Company v Cussons Pty Limited [1993] FCA 536 ; (1993) 46 FCR 225
Outcome: referred to
have heard the parties on the question of the conditions to be imposed. Whilst I am, of course, mindful of the principles relating to an order for indemnity costs laid down in cases such as Colgate-Palmolive Company v Cussons Pty Limited [1993] FCA 536 ; (1993) 46 FCR 225 , it seems to me that this is an appropriate case to order that the costs thrown away be paid on an indemnity basis. I say this because the wastage of costs has come about as a result of the change of commercial course by the plaintiffs. A commercial decision ought to have commercial consequences and these, in my view, include an order for the payment of wasted costs on an indemnity basis. Whether I ought to order that these costs be paid forthwith is a more difficult question. It is true that the taxation of a claim for costs thrown away would be a difficult exercise to undertake before the ultimate hearing. However, it does seem to me that the exercise would be one that would have to be carried out no matter what the result of the case. In my view, it also follows from the fact that the present position has come about for commercial reasons that the plaintiffs ought not to have the benefit of awaiting the outcome of the proceedings before compensating the defendant for the costs thrown away. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson. Associate: Dated: 19 March 2009 Counsel for the Plaintiffs: Mr A. Leopold SC with Mr S. Lawrance Solicitor for the Plaintiffs: Deacons Counsel for the Defendants: Mr M. A. Jones Solicitor for the Defendants: Clayton Utz Date of Hearing: 19 March 2009 Date of Judgment: 19 March 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/254.html
Case: Adidas Salomon AG v Turner [2003] FCA 421
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: Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA 542 ; (1992) 24 IPR 461
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: .au Domain Administration Ltd v Domain Names Australia Pty Ltd [2004] FCA 424 ; (2004) 207 ALR 521
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: Australasian Performing Right Association Ltd v Monster Communications Pty Ltd (2006) 71 IPR 212
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: Australian Woollen Mills Limited v F.S. Walton and Company Limited [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: referred to
findings also have relevance in the present context. There has been a deliberate attempt by those involved in the manufacture of the counterfeit boots (including Hepbourne and Vladimir Vaysman) to persuade potential purchasers that they would be purchasing what were described as "genuine UGG australia" products. Vladimir Vaysman so informed those involved in the marketing of the footwear including Ms Farley and Ms Sommer. In these circumstances, and in the absence of any contrary evidence, the inference may comfortably be drawn that Hepbourne, Vladimir Vaysman and the other Respondents who were involved replicated or substantially replicated Deckers' get-up in an attempt to convince potential purchasers that they were acquiring the genuine Deckers' product. As Weinberg and Dowsett JJ said in Sydneywide Distributors at 388: "Without wishing to labour the point unduly, we again point out that where a trader, having knowledge of a particular market, borrows aspects of a competitor's get-up, it is a reasonable inference that he or she believes that there will be market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was "fitted for the purpose and therefore likely to deceive or confuse"...". See also Australian Woollen Mills Limited v F.S. Walton and Company Limited [1937] HCA 51 ; (1937) 58 CLR 641 at 657 per Dixon and McTiernan JJ.
Case: Bailey v Namol Pty Limited [1994] FCA 1401 ; (1994) 53 FCR 102
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: Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: cited
three core concepts of the tort, shortly stated, are reputation, misrepresentation and damage. They have been referred to as "the classical trinity": see Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355-6 and Consorzio del Prosciutto di Parma v Marks &amp; Spencer plc (1989) 16 IPR 117 at 123. The tort is intended to prevent and compensate for commercial dishonesty which prejudices competitors of the infringing party and customers.
Case: Consorzio del Prosciutto di Parma v Marks &amp; Spencer plc (1989) 16 IPR 117
Outcome: cited
three core concepts of the tort, shortly stated, are reputation, misrepresentation and damage. They have been referred to as "the classical trinity": see Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355-6 and Consorzio del Prosciutto di Parma v Marks &amp; Spencer plc (1989) 16 IPR 117 at 123. The tort is intended to prevent and compensate for commercial dishonesty which prejudices competitors of the infringing party and customers.
Case: Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 ; (2006) 156 FCR 380
Outcome: cited
it may readily be concluded that Hepbourne, acting through Vladimir Vaysman, authorised the infringing conduct in the sense as provided for in s 36(1A) of the Copyright Act . Hepbourne had control of the Moorabbin factory. It could have, had it wished to do so, prevented the manufacture and distribution of the infringing articles by refusing entry to those who were involved in the infringing conduct. Vladimir Vaysman's knowledge of the fact that the infringing conduct was taking place in the factory may be attributed to Hepbourne. There is no evidence to suggest that Hepbourne took any steps to prevent or avoid the infringing conduct which took place at the Moorabbin factory. The contrary is true. Hepbourne, acting through Vladimir Vaysman and others recruited by him, undertook, procured and oversaw the infringing conduct. His conduct therefore passed well beyond "mere inactivity or indifference": he clearly sanctioned, approved and countenanced the infringement of Deckers' rights: see The University of New South Wales v Moorhouse [1975] HCA 26 ; (1975) 133 CLR 1 at 12 (per Gibbs J), 20 (per Jacobs J); Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 ; (2006) 156 FCR 380 at 408, 410-1 (per Kenny J). Passing-Off / Misleading Conduct
Case: Deckers Outdoor Corporation Inc v Farley [2008] FCA 1514
Outcome: referred to
Deckers Outdoor Corporation Inc v Farley [2008] FCA 1514 I made declarations that Mr Mykhalovskyi had: I ordered that Mr Mykhalovskyi be restrained from performing further acts which infringed Deckers' intellectual property rights. I further ordered that Mr Mykhalovskyi deliver up any counterfeit footwear, any advertising material relating to the counterfeit footwear and any items used to manufacture such footwear. Costs orders were also made. It remains to consider what, if any, damages Mr Mykhalovskyi should be ordered to pay Deckers in respect of the infringing and tortious conduct for which he has been found to be liable to Deckers.
Case: Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256 ; (2009) 176 FCR 33
Outcome: referred to
procedural history of the matter prior to 24 March 2009 is essayed in Deckers Outdoor Corporation Inc v Farley (No 2) [2009] FCA 256 ; (2009) 176 FCR 33 at 34-36. In that decision, declaratory and injunctive relief was granted to Deckers under s 31A of the Federal Court of Australia Act 1976 (Cth) for infringement of one of its registered trademarks. Hepbourne was one of the respondents against whom summary judgment was then granted. Deckers' application for summary judgment on claims arising under the Copyright Act 1968 (Cth) ("the Copyright Act "), the Trade Practices Act 1974 (Cth) ("the TP Act"), the Fair Trading Act 1999 (Vic) ("the FT Act") and for passing-off was refused. In April 2009 I dealt with an application by Deckers for summary judgment against Hepbourne and Mr Vladimir Vaysman. That application sought an order that Hepbourne and Mr Vaysman pay Deckers $150,000 pursuant to the terms of settlement which had been entered into between them (and other parties) on 10 June 2005. These terms of settlement compromised an earlier proceeding in which Deckers had alleged that Hepbourne and Vaysman (amongst others) had breached an earlier settlement agreement under which they had agreed to Orders which restrained them, inter alia, from manufacturing or advertising footwear or accessories which bore the words "UGG" or "UGG australia".
Case: Deckers Outdoor Corporation Inc v Farley (No 4) [2009] FCA 369
Outcome: referred to
gave summary judgment against Hepbourne and Vladimir Vaysman, holding that they were jointly and severally liable to pay Deckers the sum of $150,000. I did so, accepting submissions by Deckers that: "...[t]he infringing conduct involved the manufacture of sheepskin footwear at a factory in Moorabbin. Hepbourne was the registered proprietor of the factory. Vaysman was the sole director of Hepbourne at relevant times. The word "UGG" appeared on the soles of the footwear and on a cloth label which was attached to the heels. The footwear was marketed on the internet, at market stalls and otherwise. Vaysman was actively involved in the marketing of the footwear. Among other things he recruited sales assistants to sell the footwear using the internet and oversaw their packaging and freight-forwarding activities..." See: Deckers Outdoor Corporation Inc v Farley (No 4) [2009] FCA 369 at [6] . Since then, other respondents have settled with Deckers and agreed to orders being made against them. On 9 September 2009 judgment was entered by consent against Josef, Polina and Victoria Vaysman and two companies, one controlled by Victoria Vaysman, and the other by Josef Vaysman. Upon the making of those orders, no outstanding issues remained between Deckers and those respondents. On 24 September 2009 Vladimir Vaysman consented to orders being made against him. As he was, at relevant times, the sole shareholder and director of Hepbourne, the terms of those orders are significant in relation to the claims made against Hepbourne. Vladimir Vaysman consented to orders being made against him for $3,000,000 for general compensatory damages and a further $3,000,000 for additional damages for copyright infringement. No further relief is sought against Vladimir Vaysman.
Case: Elwood Clothing Pty Ltd (ACN 079 393 696) v Cotton On Clothing Pty Ltd (ACN 052 130 462) (2009) 8 IPR 378
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: Enzed Holdings Ltd v Wynthea Pty Ltd [1984] FCA 373 ; (1984) 3 IPR 619
Outcome: referred to
though the evidence may be deficient, the Court is, nonetheless, obliged to do the best it can to make a just and fair assessment of the quantum of damages. In Enzed Holdings Ltd v Wynthea Pty Ltd [1984] FCA 373 ; (1984) 3 IPR 619 at 637 the Full Court observed that: "The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law". See also: Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852 at [7] - [8] .