Sony Computer Entertainment Australia Pty Ltd v Busselmann - [2000] FCA 805

FEDERAL COURT OF AUSTRALIA
Sony Computer Entertainment Australia Pty Ltd v Busselmann [2000] FCA 805
SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOTHER v NICK BUSSELMANN
N 1201 OF 1999
HELY J
9 JUNE 2000
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1201 OF 1999

BETWEEN:

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOR
APPLICANT

AND:

NICK BUSSELMANN
RESPONDENT

JUDGE:

HELY J

DATE OF ORDER:

9 JUNE 2000

WHERE MADE:

SYDNEY

THE COURT DECLARES THAT:
1.The respondent has infringed the second applicant’s registered Trade Marks Nos 642678 and 642679.

THE COURT ORDERS THAT:
1.Judgment be entered in favour of the second applicant on the claims made in the statement of claim.

2.The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s registered Trade Mark No 642678 consisting of the mark “PlayStation” (“the PlayStation mark”) by:

(a)without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(b)without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(c)without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 2(a) or 2(b).

3.The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s registered Trade Mark No 642679 consisting of the mark “PS” (“the PS mark”) by:

(a)without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(b)without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically…

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: [2000] FCA 805
Decision Date: 9 JUNE 2000

CaseChat Overview and Summary

The case of Sony Computer Entertainment Australia Pty Ltd v Busselmann involved a dispute between the plaintiff, Sony Computer Entertainment Australia Pty Ltd, and the defendant, Mr. Busselmann. The plaintiff sought an injunction against the defendant to prevent him from infringing the plaintiff's registered trademarks “PlayStation” and “PS”. The trademarks in question were registered by the plaintiff and are associated with a line of computer game consoles and related software. The Federal Court of Australia was tasked with determining the plaintiff's claims.

The primary legal issues that the court had to decide were whether Mr. Busselmann had infringed the plaintiff's trademarks by importing, selling, and offering for sale computer game software for the PlayStation console without authorisation. The court also needed to consider whether Mr. Busselmann had misrepresented the origin of the software and whether he had acted in a manner that was likely to deceive or cause confusion among consumers. The central question was whether Mr. Busselmann's actions constituted trademark infringement under the Trade Marks Act 1995 (Cth).

The court found that Mr. Busselmann had indeed infringed the plaintiff's trademarks. The evidence showed that Mr. Busselmann had imported, sold, and offered for sale computer game software for the PlayStation console without the plaintiff's permission. The court determined that the software contained representations of the PlayStation mark and was sold in a manner that was likely to cause confusion among consumers regarding its origin. The court concluded that Mr. Busselmann's actions constituted trademark infringement, and it granted the relief sought by the plaintiff. The court issued an injunction against Mr. Busselmann, ordering him to cease his infringing activities and deliver up all infringing software to the plaintiff's solicitors.

In light of the findings, the court also ordered Mr. Busselmann to provide detailed financial information regarding his sales of the infringing software. This included the number of copies sold, the sales period, gross and net profits derived from these sales, and supporting business records. The court reserved the issues of account of profits and damages, allowing the plaintiff to elect whether to pursue these claims at a later date. The matter was stood over for further directions, with a subsequent hearing set for 31 July 2000 to address the reserved issues and provide further directions.

Orders

Orders of the court

1. Judgment be entered in favour of the second applicant on the claims made in the statement of claim.

2. The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s registered Trade Mark No 642678 consisting of the mark “PlayStation” (“the PlayStation mark”) by:

(a) without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(b) without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing such software, which bears or in which is stored electronically any representation of the PlayStation mark or any mark substantially identical with or deceptively similar to the PlayStation mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation mark is otherwise used;

(c) without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 2(a) or 2(b).

3. The respondent, whether by himself, his servants or agents or otherwise, be restrained from infringing the second applicant’s registered Trade Mark No 642679 consisting of the mark “PS” (“the PS mark”) by:

(a) without the licence of the second applicant, importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(b) without the licence of the second applicant, supplying or offering to supply in Australia any computer game player or any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PS mark or any mark substantially identical with or deceptively similar to the PS mark or in relation to which any mark substantially identical with or deceptively similar to the PS mark is otherwise used;

(c) without the licence of the second applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 3(a) or 3(b).

4. The respondent deliver up to the second applicant’s solicitors, Allen Allen & Hemsley, within 28 days after service on him of a copy of this Order, any software, including any CD-ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the PlayStation or PS marks or any mark substantially identical or deceptively similar to those marks.

5. The respondent pay the second applicant’s costs of the proceedings to date.

6. The respondent provide discovery within 28 days of service on him of the copy of this order, of all records in the possession, custody or power of the respondent relating to his past importation, sale or offering for sale of any copies of computer games for the Sony PlayStation® computer game console which bears, or in which is stored electronically a representation of registered Trade Mark No 642678 or 642679, or any mark substantially identical with or deceptively similar to those marks.

7. Within 28 days after service on him of this order, the respondent make, file and serve an affidavit which:

(a) states the number of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console sold by the respondent;

(b) states the time period in which all such sales of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console were made;

(c) states the gross sales of the respondent of all copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console;

(d) states the gross profit of the respondent derived from sales of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console;

(e) annexes or exhibits copies of business records of the respondent which record the calculation of the said gross profit;

(f) states the net profit of the respondent derived from sales of copies of the computer games referred to in paragraph 6 for the Sony PlayStation® computer game console;

(g) annexes or exhibits copies of business records of the respondent which record the calculation of the said net profit.

8. The issues of account of profits and damages be reserved and stood over until 31 July 2000, by which the second applicant can elect which, if either, of those avenues it wishes to pursue.

9. The matter be stood over for further directions until 9:30am on 31 July 2000.

10. Notice of these orders and of that adjournment be given to the respondent.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

HELY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HELY J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1201 OF 1999

BETWEEN:	SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOR APPLICANT
AND:	NICK BUSSELMANN RESPONDENT
JUDGE:	HELY J
DATE OF ORDER:	9 JUNE 2000
WHERE MADE:	SYDNEY