Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd - [1999] FCA 1315

Autocaps (Aust) Pty Ltd, A S Daly Nominees Pty Ltd and Devuzo Pty Ltd v Pro-Kit Pty Ltd and Steve Zaarour [1999] FCA 1315
Copyright - Design

Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd [1999] FCA 1315

AUTOCAPS (AUST) PTY LTD, A S DALY NOMINEES PTY LTD AND DEVUZO PTY LTD V PRO-KIT PTY LTD AND STEVE ZAAROUR

VG 452 OF 1997

JUDGE: FINKELSTEIN J

DATE: 24 SEPTEMBER 1999

PLACE: MELBOURNE

COPYRIGHT - infringement - trade catalogues - whether sufficient skill, judgment and labour - defences - whether equitable defences available

DESIGN - infringement - obvious imitation - fraudulent imitation - defences

Copyright Act 1968 (Cth) s 115(3)

ColbeamPalmer Ltd v Stock Affiliates Pty Ltd (1968) 42 ALJR 209 cited

Collis v Cater, Stoffell & Fortt Ltd (1898) 78 LT 613 applied

Dart Industries Inc v Decor Corporation Pty Ltd (1989) 15 IPR 403 applied

De Bussche v Alt [1878] 8 Ch D 286 applied

Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 22 IPR 551 referred to

Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23 referred to

Firmagroup Australia Pty Ltd v Byrne & Davidson Doors (Vic) Pty Ltd (1987) 180 CLR 483 applied

Fisher & Paykel Healthcare Pty Ltd v Avion EngineeringPty Ltd (1991) 22 IPR 1 applied

Football League Ltd v Littlewoods Pools Ltd [1959] 1 Ch 637 applied

Hollinrake v Truswell [1894] 3 Ch 420 applied

InternationalScientific Communications Inc v Pattison [1979] FSR 429 referred to

Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 84 FLR 101 referred to

Ladbroke (Football) Ltd v William Hill (Football)Ltd [1964] 1 WLR 273 applied

The Lindsay Petroleum Co v Prosper Armstrong Hurd, Abram Farewell & John Kemp (1874) LR5PC 221 applied

Macmillan & Co Ltd v Cooper (1923) 40 TLR 186 applied

Malleys Ltd v J W Tomlin Pty Ltd (1961) 180 CLR 120 applied

Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) 85 FCR 436 cited

Pauling's Settlement Trusts; In re [1962] 1 WLR 86 applied

Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd (1955) 72 RPC 89 distinguished

S W Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 referred to

Shaw v Applegate [1977] 1 WLR 970 referred to

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY VG 452 OF 1997

BETWEEN: AUTOCAPS (AUST) PTY LTD,
A S DALY NOMINEES PTY LTD and
DEVUZO PTY LTD
Applicants
AND: PRO-KIT PTY LTD and
STEVE ZAAROUR
Respondents
JUDGE: FINKELSTEIN J
DATE: 24 SEPTEMBER 1999
PLACE: MELBOURNE

REASONS FOR JUDGMENT

1 The first applicant, Autocaps (Aust) Pty Ltd, owns and operates a business that trades under the name CPC Auto Components. The business is commonly referred to as CPC. The business involves the manufacture and supply of parts for trucks and motor vehicles. The parts with which this case is concerned are fuel tank caps and radiator caps. CPC is the largest manufacturer and wholesaler of fuel tank caps and…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1999] FCA 1315
Decision Date: 24 SEPTEMBER 1999

CaseChat Overview and Summary

The case of Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd was heard in the Federal Court of Australia. The applicants, Autocaps (Aust) Pty Ltd, A S Daly Nominees Pty Ltd and Devuzo Pty Ltd, sought relief in respect of the alleged infringement of copyright in catalogues and registered designs by the respondents, Pro-Kit Pty Ltd and Steve Zaarour. The applicants claimed that the respondents had infringed copyright by copying the catalogues in which they listed the fuel tank caps and radiator caps that they offered for sale and by reproducing the part numbers from those catalogues in their own catalogues. The applicants also claimed that the respondents had infringed registered designs in relation to fuel tank caps. The respondents denied the claims and raised a number of defences, including laches, acquiescence, and delay. Justice Finkelstein found that the applicants had established that copyright subsisted in the catalogues and that the respondents had infringed that copyright by copying the catalogues and adopting the part numbering system. The judge also found that the respondents had infringed the registered designs. The respondents' defences were rejected. The applicants were awarded an injunction and damages or, at their option, an account of profits. The judge did not make an order for delivery up of the infringing catalogues.

Orders