Sony Computer Entertainment Australia Pty Ltd v Stirling - [2001] FCA 784

FEDERAL COURT OF AUSTRALIA
Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 784
SONY COMPUTER ENTERTAINMENT AUSTRALIA
PTY LTD & ANOR v KAREN STIRLING
N 1233 OF 2000
EMMETT J
15 JUNE 2001
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 1233 OF 2001

BETWEEN:

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

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT
SECOND APPLICANT

AND:

KAREN STIRLING
RESPONDENT

JUDGE:

EMMETT J

DATE OF ORDER:

15 JUNE 2001

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.   In the absence of the respondent, the trial proceed generally.
2.   The hearing and determination of liability take place before the hearing on all issues of pecuniary relief.
THE COURT DECLARES THAT:
3.   The respondent has infringed the second applicant’s registered trade mark number 642678.
4.   The respondent has infringed the second applicant’s registered trade mark number 642679.
5. The respondent has breached ss 9, 10 and 12 of the Fair Trading Act 1999 (Vic).
THE COURT ORDERS THAT:
6.   The respondent, whether by herself, her servants or agents or otherwise, be restrained from infringing the second applicant’s registered trade mark (no. 642678) consisting of the mark “PlayStation”, by selling or offering for sale CD ROMs containing software for use with computer game players, which bear or in which are stored electronically, representations of marks, or by reference to marks, that are identical with, substantially identical with, or deceptively similar to, registered trade mark number 642678.
7.   The respondent, whether by herself, her servants or agents or otherwise, be restrained from infringing the second applicant’s registered trade mark (no. 642679) consisting of the mark “PS”, by selling or offering for sale CD ROMs containing software for use with computer game players, which bear or in which are stored electronically, representations of marks, or by reference to marks, that are identical with, substantially identical with, or deceptively similar to, registered trade mark number 642679.
8.   The respondent, whether by herself, her servants or agents or otherwise, be restrained from representing in trade or commerce that:
(a)the CD ROMs containing software for use with computer game players offered or supplied by the respondent are manufactured by the first or second applicants;
(b)the respondent has the sponsorship, approval or affiliation of the first or second applicants;
(c)the CD ROMs containing software for use with computer game players offered or supplied by the respondent have the sponsorship, approval or affiliation of the first or second applicants; and
(d)the CD ROMs containing software for use with computer game players offered or supplied by the respondent are of the same standard and quality as the CD ROMs containing software for use with computer game players offered or supplied by the first or second applicants.

9. Within 28 days after service on her of a copy of the Orders made on 15 June 2001, the respondent make, file and serve an affidavit which:
(a) states the quantity of all computer software,…

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: [2001] FCA 784
Decision Date: 15 JUNE 2001

CaseChat Overview and Summary

Sony Computer Entertainment Australia Pty Ltd and another v Stirling was a case heard by the Federal Court of Australia, concerning an infringement of registered trademarks. The plaintiffs, Sony Computer Entertainment Australia Pty Ltd and Sony Computer Entertainment Inc, sought an injunction against the defendant, Stirling, who was selling CD ROMs containing software for use with computer game players, that were infringing on the plaintiffs' registered trademarks "PlayStation" and "PS". The plaintiffs also sought an order for an account of profits, delivery up of the infringing software, and costs. The legal issues before the court included whether the defendant's use of the marks on the CD ROMs constituted an infringement of the plaintiffs' registered trademarks, and if the plaintiffs were entitled to an account of profits and delivery up of the infringing software. The court found that the defendant's use of the marks on the CD ROMs did constitute an infringement of the plaintiffs' registered trademarks, and that the plaintiffs were entitled to an account of profits, delivery up of the infringing software, and costs. The court also found that the plaintiffs were entitled to an injunction against the defendant from selling or offering for sale the infringing software, and from making certain misrepresentations in trade or commerce. The court ordered the defendant to deliver up all infringing software in her possession, custody or control, to provide discovery of all records relating to her sales or offering for sale of the infringing software, and to pay the plaintiffs' costs of the proceeding. The court further ordered that the plaintiffs serve a copy of the orders on the defendant, and granted liberty to the plaintiffs to apply on short notice.

Orders

Orders of the court

6. The respondent, whether by herself, her servants or agents or otherwise, be restrained from infringing the second applicant’s registered trade mark (no. 642678) consisting of the mark “PlayStation”, by selling or offering for sale CD ROMs containing software for use with computer game players, which bear or in which are stored electronically, representations of marks, or by reference to marks, that are identical with, substantially identical with, or deceptively similar to, registered trade mark number 642678.

7. The respondent, whether by herself, her servants or agents or otherwise, be restrained from infringing the second applicant’s registered trade mark (no. 642679) consisting of the mark “PS”, by selling or offering for sale CD ROMs containing software for use with computer game players, which bear or in which are stored electronically, representations of marks, or by reference to marks, that are identical with, substantially identical with, or deceptively similar to, registered trade mark number 642679.

8. The respondent, whether by herself, her servants or agents or otherwise, be restrained from representing in trade or commerce that:

(a) the CD ROMs containing software for use with computer game players offered or supplied by the respondent are manufactured by the first or second applicants;

(b) the respondent has the sponsorship, approval or affiliation of the first or second applicants;

(c) the CD ROMs containing software for use with computer game players offered or supplied by the respondent have the sponsorship, approval or affiliation of the first or second applicants; and

(d) the CD ROMs containing software for use with computer game players offered or supplied by the respondent are of the same standard and quality as the CD ROMs containing software for use with computer game players offered or supplied by the first or second applicants.

9. Within 28 days after service on her of a copy of the Orders made on 15 June 2001, the respondent make, file and serve an affidavit which:

(a) states the quantity of all computer software, including any CD ROM, which bore, or to which was otherwise applied:

(i) any representation of the second applicant’s registered trade mark (no. 642678) consisting of the mark “PlayStation” (“the PlayStation mark”); or

(ii) any representation of the second applicant’s registered trade mark (no. 642679) consisting of the mark “PS” (“the PS mark”);

or any mark substantially identical with, or deceptively similar to, the PlayStation or PS marks or in relation to which any mark substantially identical with or deceptively similar to the PlayStation or PS marks was used (“the infringing software”) sold by the respondent:

(A) up until 10 December 1999; and

(B) after 10 December 1999;

(b) states the time period in which all such sales of infringing software were made;

(i) up until 10 December 1999; and

(ii) after 10 December 1999;

(d) states the gross profit of the respondent derived from sales of infringing software for the period:

(i) up until 10 December 1999; and

(ii) after 10 December 1999;

(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 infringing software for the period:

(i) up until 10 December 1999; and

(ii) after 10 December 1999;

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

10. Within 28 days after service on her of a sealed copy of the Orders made on 15 June 2001, the respondent deliver up to the applicants’ solicitors, Allen Allen & Hemsley, all infringing software in her possession, custody, or control by sending such infringing software by registered mail to GPO Box 50, Sydney 2000 marked to the attention of Miriam Stiel.

11. The respondent provide discovery, within 28 days after service on her of a copy of this Order, of all records in the possession, custody or power of the respondent relating to her past sales or offering for sale of any infringing software.

12. The respondent pay the applicants’ costs of the proceeding up to and including 15 June 2001.

13. The applicants serve a copy of this Order, together with a notification of the terms of Order 35 Rule 7 of the Federal Court Rules, on the respondent within 14 days.

14. Liberty be granted to the applicants to apply on 3 days’ notice.

15. The proceeding be listed for directions in relation to the outstanding issues at 9.30am on 7 September 2001.

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

EMMETT J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: EMMETT J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1233 OF 2001

BETWEEN:	SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183) FIRST APPLICANT KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT SECOND APPLICANT
AND:	KAREN STIRLING RESPONDENT
JUDGE:	EMMETT J
DATE OF ORDER:	15 JUNE 2001
WHERE MADE:	SYDNEY