FEDERAL COURT OF AUSTRALIA
Maggie Sottero Designs LLC v Loner [2018] FCA 1151
File number: NSD 768 of 2017 Judge: NICHOLAS J Date of judgment: 3 August 2018 Catchwords PRACTICE AND PROCEDURE – application for default judgment – whether final injunction should be granted – whether indemnity costs should be awarded Legislation: Federal Court Rules 2011 (Cth), rr 5.22 and 5.23 Cases cited: Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2007] FCAFC 146
BJ International Limited v Ashgar (No 2) [2013] FCA 580
Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225
Engineered Thermal Systems Pty Ltd v Salmon, In the Matter of Salmon and Speck Pty Ltd (In Liq) [2012] FCA 1159
Re Wilcox; Exparte Venture Industries Pty Ltd (No 2) (1996) 72 FCR 151
Date of hearing: 19 July 2017 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Copyright and Industrial Designs Category: Catchwords Number of paragraphs: 19 Counsel for the Applicant: S L Ross Solicitor for the Applicant: Sparke Helmore Lawyers Counsel for the Respondent: The respondent did not appear ORDERS
NSD 768 of 2017 BETWEEN: MAGGIE SOTTERO DESIGNS LLC
Applicant
AND: JACK LONER
Respondent
JUDGE:
NICHOLAS J
DATE OF ORDER:
3 AUGUST 2018
THE COURT ORDERS THAT:
1.The respondent, whether by himself, his servants and agents or otherwise, be permanently restrained from:
(a)reproducing in a material form in Australia;
(b)communicating to the public in Australia; or
(c)authorising the doing of (a) or (b) above,
of the whole or a substantial part of each of the Maggie Sottero Photographs (as set out in Annexure B of the Statement of Claim) without the licence of the applicant.
2.The respondent, whether by himself, his servants or agents or otherwise, be permanently restrained from engaging in trade mark infringement by, without the consent of the applicant, using in Australia any trade mark that contains the words MAGGIE SOTTERO or SOTTERO & MIDGLEY and any other trade mark that is substantially identical with, or deceptively similar to, either of trade mark registration numbers 933317 or 1109342 (“the Trade Marks”), in respect of:
(a)bridal gowns or any of the goods for which the Trade Marks are registered (“the Goods”);
(b)goods of the same description as the Goods; or
(c)services that are closely related to the Goods.
3.The respondent, whether by himself, his servants or agents or otherwise, be permanently restrained from using the domain name maggiesotterodress.com (“the domain name”).
4.By 4.00pm on 9 August 2018, the respondent take all steps necessary to transfer the domain name to the applicant.
5.The respondent, whether by his servants or agents or otherwise, be permanently restrained from, in trade or commerce, making any false or misleading representation that:
(a)the respondent, or any business conducted by the respondent, is conducted by the applicant;
(b)the respondent, or any business…
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- Case
- [2018] FCA 1151
- Decision Date
CaseChat Overview and Summary
The court was required to determine whether the respondent had infringed on the applicant's copyright by reproducing the Maggie Sottero Photographs without a licence. The court also needed to consider whether the respondent had engaged in trademark infringement by using the Trade Marks in relation to the Goods, goods of the same description, or services closely related to the Goods. Additionally, the court had to determine whether the respondent had breached section 104(1)(a) of the Trade Marks Act 1995 by using the domain name maggiesotterodress.com and section 104(1)(b) of the Trade Marks Act 1995 by making false or misleading representations in trade or commerce.
The court found in favour of the applicant, holding that the respondent had infringed on the copyright of the Maggie Sottero Photographs by reproducing them without a licence. The court also found that the respondent had engaged in trademark infringement by using the Trade Marks in relation to the Goods, goods of the same description, or services closely related to the Goods. Furthermore, the court held that the respondent had breached section 104(1)(a) of the Trade Marks Act 1995 by using the domain name maggiesotterodress.com and section 104(1)(b) of the Trade Marks Act 1995 by making false or misleading representations in trade or commerce. The court issued a permanent injunction against the respondent, restraining them from reproducing the Maggie Sottero Photographs without a licence, using the Trade Marks in relation to the Goods, goods of the same description, or services closely related to the Goods, using the domain name maggiesotterodress.com, and making any false or misleading representations in trade or commerce.
The court further ordered the respondent to transfer the domain name maggiesotterodress.com to the applicant and pay the applicant's costs of proceeding on a party/party basis as agreed or taxed. The applicant was given the option to press its claim for pecuniary relief, with a deadline for notification and further affidavit evidence if the claim was pursued.
Orders
Orders of the court
1. The respondent, whether by himself, his servants and agents or otherwise, be permanently restrained from:
(a) reproducing in a material form in Australia;
(b) communicating to the public in Australia; or
(c) authorising the doing of (a) or (b) above,
of the whole or a substantial part of each of the Maggie Sottero Photographs (as set out in Annexure B of the Statement of Claim) without the licence of the applicant.
2. The respondent, whether by himself, his servants or agents or otherwise, be permanently restrained from engaging in trade mark infringement by, without the consent of the applicant, using in Australia any trade mark that contains the words MAGGIE SOTTERO or SOTTERO & MIDGLEY and any other trade mark that is substantially identical with, or deceptively similar to, either of trade mark registration numbers 933317 or 1109342 (“the Trade Marks”), in respect of:
(a) bridal gowns or any of the goods for which the Trade Marks are registered (“the Goods”);
(b) goods of the same description as the Goods; or
(c) services that are closely related to the Goods.
3. The respondent, whether by himself, his servants or agents or otherwise, be permanently restrained from using the domain name maggiesotterodress.com (“the domain name”).
4. By 4.00pm on 9 August 2018, the respondent take all steps necessary to transfer the domain name to the applicant.
5. The respondent, whether by his servants or agents or otherwise, be permanently restrained from, in trade or commerce, making any false or misleading representation that:
(a) the respondent, or any business conducted by the respondent, is conducted by the applicant;
(b) the respondent, or any business conducted by the respondent, is licensed, sponsored or approved by, or otherwise affiliated with the applicant; or
(c) the bridal gowns promoted, offered for sale or sold by the respondent are made by or with the licence or approval of the applicant.
6. With respect to the applicant’s claim for pecuniary relief:
(a) the applicant is to notify the Associate to Nicholas J by 4.00pm on 16 August 2018 whether it proposes to press its claim for pecuniary relief;
(b) if the applicant presses its claim for pecuniary relief then it must file and serve any further affidavit evidence upon which it proposes to rely in support of that claim by 16 September 2018;
(c) if the applicant presses its claim for pecuniary relief then the proceeding will be listed for a case management hearing on a date to be fixed.
7. The respondent is to pay the applicant’s costs of proceeding on a party/party basis as agreed or taxed.
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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