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Sean Investments Pty Ltd v MacKellar

Sean Investments Pty Ltd v MacKellar

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Case Copied 19 October 1981 25 min read

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Re: W.H. BRINE CO. and PAUL DOYLE
And: EANE RONALD WHITTON (Trading as ''SKOOLSPORTS EQUIPMENT'')
(1981) 55 FLR 440
VG No. 57 of 1981
Assessment of Damages - Damages

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Fox J.(1)

CATCHWORDS

Assessment of Damages - Several Heads - Trade Practices Act - Passing Off - Infringement of Copyright - Conversion - Inter-relation - Soccer Balls Carrying Marks Some Only of Which Were Property of Applicant - Reputation by Advertisement Only - Measure of Damages in Conversion.

Trade Practices Act 1974, Sects. 52, 55, 82

Copyright Act 1968 (Clth), Sects. 10, 115, 116

Copyright Act 1956 (Eng), Sect. 18

Copyright Act 1911 (UK), Sect. 7

Damages - Assessment - Unauthorized markings on soccer balls sold by respondent - Infringement of Copyright and Trade Practices Acts - Passing off - Conversion - What measure of damages - Trade Practices Act 1974 (Cth), ss. 52, 55, 82 - Copyright Act 1968 (Cth), ss. 10, 115, 116 (1) - Copyright Act, 1956 (Imp.), s. 18 - Copyright Act, 1911 (Eng.), s. 7.

HEADNOTE

The first-named applicant, W. H. Brine Co. (the applicant), was incorporated in the United States of America and manufactured, inter alia, soccer balls bearing distinctive markings of which it possessed the rights. It enjoyed a large market for these balls overseas. The respondent, a wholesaler in Australia of sporting goods including soccer balls, sold during 1980 a total of some 1,094 soccer balls bearing, inter alios, virtually the same markings as the soccer balls made by the appellant. The respondent had imported those balls from Korea where they had been manufactured by someone unconnected with the appellant. The identity of the markings was not discovered by the respondent until late 1980. In December 1980 the applicant became aware of the respondent's use of the markings in question but the appellant did not start to sell its soccer balls in Australia until May 1981. In April 1981 judgment was entered for the applicant for damages to be assessed under ss. 52, 55 and 82 of the Trade Practices Act 1974 and for infringement of copyright, conversion and passing off. The applicant later applied to the court for assessment of damages.

Held: (1) Damages for breaches of ss. 52 and 55 of the Trade Practices Act 1974 and for passing off must be minimal in the present case.

(2) The ball as a whole must be taken as the "infringing copy" within the meaning of that phrase in ss. 10 and 116 (1) of the Copyright Act 1968 (Cth) and the measure of damages for infringement of copyright and for conversion must be the value of the balls at the time of conversion.

Butler v. Egg and Egg Pulp Marketing Board (1966), 114 CLR 185; Healing (Sales) Pty. Ltd. v. Inglis Electrix Pty. Ltd. (1968), 121 CLR 584, applied.

Infabrics Ltd. v. Jaytex Ltd., (1981) 2 WLR 646, followed.

Caxton Publishing Co. Ltd. v. Sutherland Publishing Co.,…

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: [1981] FCA 174
Decision Date: 19 OCTOBER 1981

CaseChat Overview and Summary

Sean Investments Pty Ltd, a company engaged in the production and sale of soccer balls, brought an action against MacKellar, who had produced and sold soccer balls bearing marks similar to those owned by Sean Investments. The case came before the court, which had to determine whether MacKellar had infringed Sean Investments' copyright, engaged in passing off, and committed conversion. The court also needed to assess the appropriate measure of damages for these claims.

The court considered the nature of the marks on the soccer balls, whether they were protected by copyright, and if the reputation of Sean Investments was sufficiently established to support a claim for passing off. Additionally, the court had to decide whether the sale of soccer balls bearing marks partially owned by Sean Investments constituted conversion and how to measure the damages for this claim. The court noted that the reputation of Sean Investments was limited to advertising, and not widespread, which affected the passing off claim. However, the court found that MacKellar had indeed converted some of the soccer balls by selling them with partially infringing marks.

The court found in favour of Sean Investments, awarding damages of $16,488.00. The court held that the soccer balls sold by MacKellar, which bore marks only partially owned by Sean Investments, constituted conversion. The court also considered the interrelation of the several heads of damage and concluded that the measure of damages should reflect the partial infringement and the limited scope of Sean Investments' reputation. The court ordered MacKellar to pay the costs of the proceedings.

Orders

Orders of the court

1. Judgment be entered for the applicants for damages in the sum of $16,488.00.

2. The respondent pay the applicants' costs of these proceedings.

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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