Case: Sony Entertainment (Australia) Ltd v Smith [2005] FCA 228 ; (2005) 64 IPR 18
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)." Counsel 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).