Facton Ltd v Yuan - [2011] FMCA 266

FEDERAL MAGISTRATES COURT OF AUSTRALIA

FACTON LTD & ORS v YUAN

[2011] FMCA 266

COPYRIGHT – Contraventions by respondent of copyright and trade marks – passing off – respondent failing to participate in proceeding – matter proceeding undefended – declarations and orders for damages made.

Trade Marks Act 1995, ss.125, 190
Copyright Act 1968, s.115(2)
Fair Trading Act 1987
Evidence Act 1995
Federal Magistrate Rules 2001, O.13.03A(2)

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First Applicant:

FACTON LTD

Second Applicant:

G-STAR INTERNATIONAL B.V.

Third Applicant:

G-STAR AUSTRALIA PTY LTD
(A.C.N. 096 765 123)

Respondent:

HAIZHI YUAN

File Number:

MLG 1070 of 2010

Judgment of:

Burchardt FM

Hearing dates:

22 & 25 February 2011

Date of Last Submission:

25 February 2011

Delivered at:

Melbourne

Delivered on:

21 April 2011

REPRESENTATION

Counsel for the Applicant:

Mr J. Feder (on 22 February 2011) &
Ms Jayaweera (on 25 February 2011)

Solicitors for the Applicant:

Middletons

The Respondent:

No appearance

THE COURT DECLARES THAT:

The respondent has infringed the G-Star Trade Marks (as defined in paragraph 5 of the Statement of Claim) in breach of s.120 of the Trade Marks Act 1995 (Cth) (“Trade Marks Act”).
The respondent has infringed or authorised the infringement of the Copyright Works (as defined in paragraph 7 of the Statement of Claim).
The respondent has contravened s.42 and s.44 of the Fair Trading Act 1987 (NSW) (“FTA”).
The respondent has engaged in conduct which constitutes the tort of passing off.

THE COURT ORDERS THAT:

The respondent pay the applicants the sum of $5,000 for damages pursuant to s.115(2) of the Copyright Act.
The respondent pay the applicants the sum of $20,000 for damages for loss of reputation.
The respondent pay the applicants the sum of $30,000 for damages pursuant to s.115(4) of the Copyright Act.
The respondent pay the applicants’ costs fixed in the sum of $11,200.

FEDERAL MAGISTRATES
COURT OF AUSTRALIA
AT MELBOURNE

MLG 1070 of 2010

FACTON LTD

First Applicant

G-STAR INTERNATIONAL B.V.

Second Applicant

G-STAR AUSTRALIA PTY LTD (A.C.N. 096 765 123)

Third Applicant

And

HAIZHI YUAN

Respondent

REASONS FOR JUDGMENT

The applicants seek declaratory relief and damages against the respondent arising out of alleged contraventions of the Trade Marks Act 1995 (Cth) (“Trade Marks Act”), the Copyright Act 1968 (Cth) (“Copyright Act”), the Fair Trading Act 1987 (NSW) (“FTA”) and for passing off.
The applicants concede that there is a measure of overlap in the various claims and concede they should not be allowed to double-dip.
For the reasons that follow, I think that the applicants should have the relief they seek and I will assess the quantum of damages that they should receive.

History of the proceeding

It is not possible to address the matters in issue in these proceedings without…

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.

Continue reading Facton Ltd v Yuan

Details

AGLC: Facton Ltd v Yuan [2011] FMCA 266
Case: [2011] FMCA 266
Decision Date: 21 April 2011

CaseChat Overview and Summary

Facton Ltd brought a proceeding against Yuan in the Federal Circuit Court of Australia, alleging that Yuan had infringed their copyright. Facton Ltd claimed that Yuan had reproduced their copyrighted material without permission, which had caused them financial loss and damage to their reputation. The court was required to determine whether Yuan had indeed infringed upon Facton Ltd's copyright and, if so, what damages should be awarded.

The court found that Yuan had infringed upon Facton Ltd's copyright by reproducing their copyrighted material without authorisation. The court held that Yuan's actions had caused Facton Ltd financial loss and damage to their reputation. The court awarded Facton Ltd damages in the amount of $5,000 for the infringement of their copyright, $20,000 for the loss of reputation, and $30,000 for the infringement of their moral rights. The court also ordered Yuan to pay Facton Ltd's costs in the sum of $11,200. The court held that the award of damages was necessary to compensate Facton Ltd for the harm caused by Yuan's actions and to deter future infringements of copyright.

Orders

Orders of the court

The respondent pay the applicants the sum of $5,000 for damages pursuant to s.115(2) of the Copyright Act.

The respondent pay the applicants the sum of $20,000 for damages for loss of reputation.

The respondent pay the applicants the sum of $30,000 for damages pursuant to s.115(4) of the Copyright Act.

The respondent pay the applicants’ costs fixed in the sum of $11,200.

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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