Sony Computer Entertainment Australia Pty Ltd v Kasmara - [2003] FCA 1496

FEDERAL COURT OF AUSTRALIA
Sony Computer Entertainment Australia Pty Ltd v Kasmara [2003] FCA 1496
SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD AND ANOR v ANDY KASMARA AND ORS
N 1241 of 2002
ALLSOP J
11 DECEMBER 2003
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1241 of 2002

BETWEEN:

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD
(ACN 077 583 183)

FIRST APPLICANT

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT
SECOND APPLICANT

AND:

ANDY KASMARA
FIRST RESPONDENT

JENNY ANGGRAINI
SECOND RESPONDENT

RONNY KURNIAWAN
THIRD RESPONDENT

PAULINA HALIM
(ALSO KNOWN AS “PAULINA KASMAI”)
FOURTH RESPONDENT

MJM 2000 PLUS PTY LTD
(ACN 086 644 386)

FIFTH RESPONDENT

JUDGE:

ALLSOP J

DATE OF ORDER:

11 DECEMBER 2003

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.Each of the Respondents has infringed the Second Applicant’s registered Trade Mark No. 642678 (the PlayStation Trade Mark).
2.Each of the Respondents has infringed the Second Applicant’s registered Trade Mark No. 642679 (the PS Trade Mark).
3.Each of the Respondents has infringed the Second Applicant’s registered Trade Mark No. 800713 (the PS2 Trade Mark).

THE COURT ORDERS THAT:
4.Each of the Respondents, whether by himself, herself or itself, his, her or its servants or agents or otherwise, be restrained from infringing the PlayStation Trade Mark by:
(a)without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any computer software or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PlayStation Trade Mark or any mark substantially identical with or deceptively similar to the PlayStation Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation Trade Mark is otherwise used;
(b)without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 4(a).

5.Each of the Respondents, whether by himself, herself or itself, his, her or its servants or agents or otherwise, be restrained from infringing the PS Trade 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 computer software or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS Trade Mark or any mark substantially identical with or deceptively similar to the PS Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS Trade Mark is otherwise used;
(b)without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 5(a).

6.Each of the Respondents, whether by himself, herself or itself, his, her or its servants or agents or otherwise, be restrained from infringing the PS2 Trade Mark by:
(c)without the licence of the Second Applicant,…

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: [2003] FCA 1496
Decision Date: 11 DECEMBER 2003

CaseChat Overview and Summary

Sony Computer Entertainment Australia Pty Ltd, the owner of the PlayStation and PS2 trade marks, filed a lawsuit against Kasmara for infringing its trade marks by distributing and selling unlicensed PlayStation games in Australia. The case was heard in the Federal Court of Australia. The primary dispute centred around whether Kasmara had violated Sony's trade mark rights by importing, supplying, and offering to supply computer game players and software that either bore or contained representations of Sony's PlayStation and PS2 trade marks or marks that were substantially identical or deceptively similar.

The court had to determine whether Kasmara's actions constituted infringement of the PlayStation and PS2 trade marks. It also needed to assess whether the respondents had imported or supplied computer game players or software that bore representations of the PlayStation or PS2 trade marks, or marks that were substantially identical or deceptively similar. Furthermore, the court considered whether the respondents had procured or induced any other person to undertake such activities without the requisite licence from Sony.

The court ruled in favour of Sony, finding that Kasmara had indeed infringed Sony's trade marks. The court issued orders that restrained Kasmara from further infringing the PlayStation, PS Trade Mark, and PS2 Trade Mark. It also ordered Kasmara to deliver up to Sony all items that had been removed from its premises during an execution of Anton Piller orders, for destruction or disposal at Sony's discretion. Additionally, the court ordered Kasmara to account to Sony for profits of $200,000, including interest, and to pay Sony's costs of the proceedings. The court also noted that Sony would not take any steps to destroy or dispose of the items delivered up for a period of three months following the service of these orders on Kasmara.

Orders

Orders of the court

4. Each of the Respondents, whether by himself, herself or itself, his, her or its servants or agents or otherwise, be restrained from infringing the PlayStation Trade Mark by:

(a) without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any computer software or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PlayStation Trade Mark or any mark substantially identical with or deceptively similar to the PlayStation Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PlayStation Trade Mark is otherwise used;

(b) without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 4(a).

5. Each of the Respondents, whether by himself, herself or itself, his, her or its servants or agents or otherwise, be restrained from infringing the PS Trade 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 computer software or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS Trade Mark or any mark substantially identical with or deceptively similar to the PS Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS Trade Mark is otherwise used;

(b) without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 5(a).

6. Each of the Respondents, whether by himself, herself or itself, his, her or its servants or agents or otherwise, be restrained from infringing the PS2 Trade Mark by:

(c) without the licence of the Second Applicant, supplying or offering to supply in Australia any computer game player or any software, including any computer software or packaging containing any such software, which bears, or in which is stored electronically, any representation of the PS2 Trade Mark or any mark substantially identical with or deceptively similar to the PS2 Trade Mark or in relation to which any mark substantially identical with or deceptively similar to the PS2 Trade Mark is otherwise used;

(d) without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraph 6(a).

7. Each of the Respondents be taken to have delivered up to the solicitors for the Applicants upon the making of the Orders, for destruction or disposal at the Applicants' discretion all items removed from the Respondents' premises at 2/38 Park Street Hawthorn (the Respondents' Premises) during execution of the Anton Piller orders on 22 November 2002 as described in the list which comprises Exhibit MAS-1 to the Third Affidavit of Miriam Anne Stiel sworn 5 August 2003 and tendered 4 December 2004.

8. The Respondents jointly and severally account to the Applicants for profits in the sum of $200,000 including interest under section 51A of the Federal Court of Australia Act 1976 (Cth).

9. There be judgment for the Applicants against the Respondents jointly and severally in the sum of $200,000.

10. The Respondents pay the Applicants' costs of the proceedings in the sum of $120,000 being a gross sum pursuant to Order 62 rule 4(2)(c) of the Federal Court Rules.

THE COURT NOTES THAT:

11. For a period of 3 months following service of these Orders on the Respondents, the Applicants will not take any steps to destroy or dispose of the items delivered up pursuant to Order 7.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

ALLSOP J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: ALLSOP J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1241 of 2002

BETWEEN:	SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183) FIRST APPLICANT KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT SECOND APPLICANT
AND:	ANDY KASMARA FIRST RESPONDENT JENNY ANGGRAINI SECOND RESPONDENT RONNY KURNIAWAN THIRD RESPONDENT PAULINA HALIM (ALSO KNOWN AS “PAULINA KASMAI”) FOURTH RESPONDENT MJM 2000 PLUS PTY LTD (ACN 086 644 386) FIFTH RESPONDENT
JUDGE:	ALLSOP J
DATE OF ORDER:	11 DECEMBER 2003
WHERE MADE:	SYDNEY