FEDERAL COURT OF AUSTRALIA
Acohs Pty Ltd v Ucorp Pty Ltd (No 5) [2013] FCA 1006
Citation: Acohs Pty Ltd v Ucorp Pty Ltd (No 5) [2013] FCA 1006 Parties: ACOHS PTY LTD (ACN 009 572 187) v UCORP PTY LTD (ACN 062 768 094) and BERNARD BIALKOWER File number: VID 873 of 2004 Judge: JESSUP J Date of judgment: 7 October 2013 Catchwords: INTELLECTUAL PROPERTY – Copyright – Remedies – Many infringing works in respondents’ database -
Whether order for deletion should be made – Damages – Additional damages – Whether respondents’ infringements flagrant – Whether respondents benefitted from infringements.DAMAGES – Copyright infringement – Whether actual loss proved – Additional damages – Whether respondents’ infringements flagrant – Whether respondents benefitted from infringements.
Legislation: Copyright Act 1968 (Cth), s 115
Federal Court Rules 2006 (Cth), O 35ACases cited: Acohs Pty Ltd v RA Bashford Consulting Pty Ltd (1997) 144 ALR 528
ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577
Acohs Pty Ltd v Ucorp Pty Ltd (2010) 86 IPR 492
Acohs Pty Ltd v Ucorp Pty Ltd (2012) 201 FCR 173
Acohs Pty Ltd v Ucorp Pty Ltd(No. 2) [2012] FCAFC 67
TS & B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) (2007) 158 FCR 444Date of hearing: 19 August 2013 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 52 Counsel for the Applicant: Mr G Dalton Solicitor for the Applicant: White Ellis Lawyers Counsel for the Respondents: Mr P Wallis Solicitor for the Respondents: Holding Redlich
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 873 of 2004
BETWEEN: ACOHS PTY LTD (ACN 009 572 187)
Applicant
AND: UCORP PTY LTD (ACN 062 768 094)
First RespondentBERNARD BIALKOWER
Second Respondent
JUDGE:
JESSUP J
DATE OF ORDER:
7 OCTOBER 2013
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.In the orders which follow, “copyright works” shall mean any of the material safety data sheets listed as “Authored by ACOHS” in Annexure A and Annexure A1 to the Amended Particulars of Copyright Ownership dated 31 August 2009.
2.The second respondent, whether by his servants, agents or otherwise, be restrained from, without the licence of the applicant:
(a) reproducing in a material form the whole or any substantial part of any of the copyright works;
(b) communicating to the public the whole or any substantial part of any of the copyright works; or
(c) authorising any other person to do any of the acts specified in paragraphs (a) or (b) hereof.
3.Within 21 days, the second respondent, in his personal capacity and on behalf of the first respondent, make, file and serve an affidavit:
(a) identifying by file name, Infosafe number and product name each copy of the copyright works stored on electronic storage devices in the respondents’ possession, custody or power other than –
(i) copies the subject of paras 14-20 of the reasons of the court published this day, and
(ii) (save to the extent…
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- Case
- [2013] FCA 1006
- Decision Date
CaseChat Overview and Summary
The court found that the respondents had infringed the copyright works by reproducing and communicating them to the public. The court determined that the applicants had proved actual loss caused by the infringements. Given the respondents' flagrant infringements and their benefit from them, the court awarded additional damages. The court found that an order for deletion was not necessary because the infringing works were already substantially inaccessible to the public. The court granted the applicants an injunction against the respondents from reproducing or communicating the copyright works to the public and ordered the respondents to pay additional damages of $22,500. The proceeding was to be listed for the parties' submissions on costs.
The court's orders included a permanent injunction against the respondents from reproducing or communicating the copyright works, an order for the respondents to identify and delete the infringing copies of the copyright works, and an order for the respondents to pay additional damages of $22,500 to the applicants. The application was dismissed in all other respects. The parties were to submit on costs at a later date.
Orders
Orders of the court
1. In the orders which follow, “copyright works” shall mean any of the material safety data sheets listed as “Authored by ACOHS” in Annexure A and Annexure A1 to the Amended Particulars of Copyright Ownership dated 31 August 2009.
2. The second respondent, whether by his servants, agents or otherwise, be restrained from, without the licence of the applicant:
(a) reproducing in a material form the whole or any substantial part of any of the copyright works;
(b) communicating to the public the whole or any substantial part of any of the copyright works; or
(c) authorising any other person to do any of the acts specified in paragraphs (a) or (b) hereof.
3. Within 21 days, the second respondent, in his personal capacity and on behalf of the first respondent, make, file and serve an affidavit:
(a) identifying by file name, Infosafe number and product name each copy of the copyright works stored on electronic storage devices in the respondents’ possession, custody or power other than –
(i) copies the subject of paras 14-20 of the reasons of the court published this day, and
(ii) (save to the extent necessary to comply with (c) below) any copy made pursuant to a request by a customer of the first respondent, being a request of which there was evidence led at the trial of this proceeding;
(b) identifying each such electronic storage device on which the said works are stored; and
(c) in the case of any copy for which the exception in (a)(ii) above is relied on, identifying by name the customer and the product or substance to which the copy related, stating the date of the request, (if the request was in writing or the subject of a memorandum) exhibiting that writing or memorandum, and specifying where in the record of evidence at trial the request was referred to.
4. Within 7 days of the filing and service of the affidavit required by order 3, the respondents permanently delete the copies referred to in order 3(a) above from all electronic storage devices in their possession, custody or power under the supervision and to the satisfaction of a representative of the applicant.
5. Pursuant to s 115(4) of the Copyright Act 1968 (Cth), the respondents pay to the applicant additional damages in the sum of $22,500.00.
6. Save as to costs, the application otherwise be dismissed.
7. The proceeding be listed at 2:15 pm on 19 November 2013 for the purpose of receiving the parties’ submissions on costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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