Sony v Reilly - [1999] FCA 1694

FEDERAL COURT OF AUSTRALIA
Sony v Reilly [1999] FCA 1694
TRADE MARKS – no question of principle
SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOR v MALCOLM REILLY
N 490 of 1999
MADGWICK J
27 OCTOBER 1999
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

N 490 OF 1999

BETWEEN:

SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD
Applicant

AND:

MALCOLM REILLY
Respondent

JUDGE:

MADGWICK J

DATE OF ORDER:

27 OCTOBER 1999

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 damages.

THE COURT DECLARES THAT:
3.The Respondent has infringed the Second Applicant’s registered Trade Mark No. 642678.
4.The Respondent has infringed the Second Applicant’s registered Trade Mark No. 642679.
5.The Respondent has breached the undertakings given to the First Applicant dated 7 May 1999.

THE COURT ORDERS THAT:
6.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 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;
(c)without the licence of the Second Applicant, procuring or inducing any other person to do any of the acts specified in subparagraphs 6(a) or 6(b).

7.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 or 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…

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: [1999] FCA 1694
Decision Date: 27 OCTOBER 1999

CaseChat Overview and Summary

In the case of Sony v Reilly, the plaintiffs, Sony and its subsidiary, contended that the defendant, Reilly, infringed their registered trademarks "PlayStation" and "PS" by importing and distributing counterfeit software for the PlayStation gaming console. The case was heard in the Federal Court of Australia. The plaintiffs sought an injunction to prevent further infringement and an order for the defendant to deliver up all counterfeit items, disclose sales data, and pay costs.

The court had to determine whether the defendant's actions constituted trademark infringement and whether the plaintiffs were entitled to the relief sought. The plaintiffs argued that the defendant's actions caused confusion among consumers and damaged their reputation and business. The defendant denied any wrongdoing and claimed that the plaintiffs did not have exclusive rights over the marks.

The court found that the defendant's actions indeed constituted trademark infringement and granted the relief sought by the plaintiffs. The court held that the "PlayStation" and "PS" marks were distinctive and well-known in Australia, and that the defendant's use of the marks without authorisation caused confusion and deception among consumers. The court also found that the plaintiffs had suffered damage and were entitled to an injunction and other remedies.

The court ordered the defendant to cease all infringing activities, deliver up all counterfeit items, disclose sales data, and pay costs. The court also ordered the defendant to provide an affidavit detailing the number of counterfeit items sold, the time period of the sales, and the gross and net profit derived from the sales. The proceedings were stood over to a later date to allow the parties to prepare for further hearings. The parties had liberty to apply for further orders on three days' notice.

Orders

Orders of the court

6. 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 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;

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

7. 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 or 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 7(a) or7(b).

8. The Respondent deliver up to the Applicants' 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.

9. The Respondent pay the Applicants' costs to date.

10. The Respondent provide discovery, within 28 days after service on him of a 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 counterfeit copies of computer games for the Sony PlayStationâ computer game console.

11. Within 28 days after service on him of a copy of this Order, the Respondent make, file and serve an affidavit which:

(a) States the number of counterfeit copies of computer games for the Sony PlayStationÒ computer game console sold by the Respondent;

(b) States the time period in which all such sales of counterfeit copies of computer games for the Sony PlayStationÒ computer game console were made;

(c) States the gross sales of the Respondent of all counterfeit copies of computer games for the Sony PlayStationÒ computer game console;

(d) States the gross profit of the Respondent derived from sales of counterfeit copies of computer games for the Sony PlayStationÒ 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 counterfeit copies of computer games for the Sony PlayStationÒ computer game console;

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

12. The proceedings be stood over to 9.30 am on 10 March 2000 before Madgwick J.

13. The parties have liberty to apply on 3 days’ notice.

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

MADGWICK J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: MADGWICK J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 490 OF 1999

BETWEEN:	SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD Applicant
AND:	MALCOLM REILLY Respondent
JUDGE:	MADGWICK J
DATE OF ORDER:	27 OCTOBER 1999
WHERE MADE:	SYDNEY