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Facton Ltd & Ors v Remmy Cardin Pty Ltd [2014] FCCA 627 (4 April 2014)

Last Updated: 11 April 2014

FEDERAL CIRCUIT COURT OF AUSTRALIA

FACTON LTD & ORS v REMMY CARDIN PTY LTD


Catchwords:
COPYRIGHT – Infringement – default judgment – assessment of damages.


Legislation:
Competition and Consumer Act 2010 (Cth), ss.80, 138A, Sch.2; 18 and 29
Copyright Act 1968 (Cth), ss.36, 37, 38, 115, 131D, Part V
Trade Marks Act 1995 (Cth), ss.120, 191A
Federal Circuit Court Rules 2001(Cth), rr.13.03A(2), 13.03B(2)


Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (in liq) [2007] FCAFC 40; (2007) 157 FCR 564
Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433
Australian Competition and Consumer Commission (ACCC) v Albert [2005] FCA 1311
Bailey v Namol Pty Ltd [1994] FCA 1401; (1994) 53 FCR 102
Commonwealth v Amann Aviation Pty Ltd [1991] HCA 54; (1991) 174 CLR 64
Eagle Rock Entertainment Ltd v Caisley [2005] FCA 1238
Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2009] FCA 633
Enzed Holdings Ltd v Wynthea Pty Ltd [1984] FCA 373; (1984) 57 ALR 167
Facton Ltd and Ors v Dash Industries Pty Ltd and Anor [2010] FMCA 709
Facton Ltd v Erdogan (No 1) [2012] FCA 924
Facton Ltd v Rifai Fashions Pty Ltd [2012] FCAFC 9
Interfirm Comparison (Aust) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445
International Credit Control Ltd v Axelsen [1974] 1 NZLR 695
Lady Anne Tennant v Associated Newspapers Group Ltd [1979] FSR 298
Microsoft Corporation & Anor v Atifo Pty Ltd & Ors (1997) 38 IPR 643
Microsoft Corporation & Ors v Goodview Electronics Pty Ltd & Ors (2000) 49 IPR 578
Nichols Advanced Vehicle Systems Inc & Ors v Rees & Ors [1979] RPC 127
Placer (Granny Smith) Pty Ltd v Theiss Contractors Pty Ltd (2003) 196 ALR 257
Prior v Lansdowne Press Pty Ltd [1977] VicRp 6; [1977] VR 65
Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74
Review Australia Pty Ltd v New Cover Group Pty Ltd & Ors [2008] FCA 1589; (2008) 79 IPR 236
Sony Computer Entertainment Aust Pty Ltd v Stirling [2001] FCA 1852
Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323
Wellington Newspapers Ltd v Dealers Guide Ltd [1984] 2 NZLR 66
Williams v Settle [1960] 2 ALL ER 806
First Applicant:
FACTON LTD

Second Applicant:
G-STAR RAW C.V.

Third Applicant:
G-STAR AUSTRALIA PTY LTD
(ACN 084 011 852)

Respondent:
REMMY CARDIN PTY LTD
(ACN 097 684 145)

File Number:
MLG 1269 of 2013

Judgment of:
Judge Hartnett

Hearing date:
23 December 2013

Delivered at:
Melbourne

Delivered on:
4 April 2014


REPRESENTATION

Solicitor appearing for the Applicants:
Mr J Feder

Solicitors for the Applicants:
K&L Gates

Counsel for the Respondent:
The Respondent did not appear


ORDERS

PENAL NOTICE TO THE RESPONDENT:

IF YOU

A. REFUSE OR NEGLECT TO DO ANY ACT WITHIN THE TIME

SPECIFIED IN THIS ORDER FOR THE DOING OF THE ACT; OR

B. DISOBEY THE ORDER BY DOING AN ACT WHICH THE ORDER

REQUIRES YOU TO ABSTAIN FROM DOING,

YOU WILL BE LIABLE TO IMPRISONMENT, SEQUESTRATION OF

PROPERTY OR OTHER PUNISHMENT.

ANY OTHER PERSON WHO KNOWS OF THIS ORDER AND DOES

ANYTHING WHICH HELPS OR PERMITS YOU TO BREACH THE

TERMS OF THIS ORDER MAY BE SIMILARLY PUNISHED.

THE COURT DECLARES THAT:

(1) The Respondent has:-

THE COURT ORDERS THAT:

(1) The Respondent, whether by itself, its director, its employees, servants, agents or otherwise howsoever be restrained in trade or commerce from :-
(2) The Respondent, whether by itself, its director, its employees, servants, agents or otherwise howsoever deliver up to the Applicants:-
(3) The Respondent pay the Applicants $500 as compensation for loss of sales.
(4) The Respondent pay the Applicants $15,000 damages for loss of reputation.
(5) The Respondent pay the Applicants $25,000 additional damages pursuant to s.115 of the Copyright Act 1968 (Cth).
(6) The Respondent pay the Applicants’ costs of $13,293.19 plus interest.
(7) The Applicants serve a copy of these Orders on the Respondent as soon as is practicable.

FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT MELBOURNE

MLG 1269 of 2013

FACTON LTD

First Applicant

G-STAR RAW C.V.

Second Applicant

G-STAR AUSTRALIA PTY LTD
(ACN 084 011 852)

Third Applicant

And

REMMY CARDIN PTY LTD

Respondent


REASONS FOR JUDGMENT

  1. The Applicants commenced this proceeding in relation to an alleged breach of copyright, amongst other claims, on 13 August 2013 by filing an Originating Application and Statement of Claim (‘the documents’).
  2. The documents were served on the Respondent on 16 August 2013.[1]
  3. The proceeding was listed for a directions hearing on 14 October 2013. The Respondent failed to attend the directions hearing and the Respondent has failed to file and serve a notice of address for service.
  4. At the directions hearing, Orders were made for the Applicants to file any interlocutory application seeking default judgment against the Respondent by 1 December 2013, together with any affidavit material in support of that application.
  5. The Applicants filed an Interlocutory Application and supporting affidavits seeking default judgment against the Respondent on 29 November 2013. The Respondent was served with those documents.[2]
  6. The Applicants rely on the following affidavits in support of their application seeking default judgment against the Respondent:-

Default judgment

  1. Rule 13.03B(2) of the Federal Circuit Court Rules 2001 (Cth) (‘the Rules’) provides that:-
  2. Rule 13.03A(2) of the Rules defines when a respondent is in default, including the following types of default which are relevant in the present case:-
  3. The Respondent is clearly in default. It has not:-
  4. Given the documents filed on 13 August 2013, together with the default of the Respondent, r.13.03B(2)(c)(i) of the Rules applies. The Court does not require proof by way of evidence of the Applicants’ claim. Rather, it needs to be satisfied that on the face of the Statement of Claim there is a claim for the relief sought, and that the Court has the necessary jurisdiction.[3]
  5. I am satisfied on the face of the Statement of Claim that there is a valid claim for the relief sought. That is supported by the various affidavits relied upon by the Applicants in support of their application for default judgment (as set out in paragraph 6 of these Reasons). Whilst strictly speaking, the proofs needed to support the factual assertions made in the Statement of Claim filed 13 August 2013 are not necessary, I find they exist in admissible form in the affidavits relied upon by the Applicants. The Applicants have made out their case. I am satisfied also that this Court has the necessary jurisdiction to make the declarations sought by the Applicants and order the injunctions, delivery up and damages orders as also sought by the Applicants. The Applicants seek relief for the Respondent’s trade mark and copyright infringement, false representations in trade and commerce and for the conduct of passing off.

Jurisdiction

  1. The Court has jurisdiction with respect to Australian Consumer Law claims under Schedule 2 of the Competition and Consumer Act 2010 (Cth) (‘the Competition and Consumer Act’)[4] and may grant injunctions as deemed appropriate.[5]
  2. The Court has jurisdiction to hear and determine civil copyright matters under the Copyright Act 1968 (Cth) (‘the Copyright Act’), as amended by the  Copyright Amendment (Parallel Importation) Act 2003  (Cth). Relevantly, the Court can deal with matters arising under  Part V  of the Copyright Act.[6]
  3. The Court also has jurisdiction under the Trade Marks Act 1995 (Cth) (‘the Trade Marks Act’) in relation to infringement actions.[7]
  4. The Court’s power to grant declaratory relief is discretionary. It is appropriate on the facts of this case to grant declaratory relief in the terms as sought by the Applicants which is set out in Annexure A of the Applicants’ Outline of Submissions for Default Judgment filed 20 December 2013.
  5. The Applicants also seek injunctive relief restraining the Respondent from further breaches of the same type. I adopt the reasoning of Murphy J in Facton Ltd v Erdogan (No.1) [2012] FCA 924 at [15] which is equally apposite to the facts in this case:-

The relevant facts

  1. The Second Applicant (‘G-Star Raw’) designs, manufactures, distributes and sells G-Star products (as defined in paragraph 4 of the Statement of Claim filed 13 August 2013) throughout the world. The First Applicant (‘Facton’) licenses the use of the G-Star Trade Marks (as defined in paragraph 6 of the Statement of Claim filed 13 August 2013) to G-Star Raw for use on the G-Star products on an exclusive basis and the Third Applicant (‘G-Star Australia’) is the exclusive wholesaler and distributor of the G-Star products in Australia.
  2. G-Star Raw and its predecessors in business have advertised and promoted the “G-Star” brand and the G-Star products since 1989. G-Star Raw owns and operates the G-Star Website.
  3. G-Star Raw sells the G-Star products through “G-Star” branded stores and independent retailers in 70 countries. G-Star Australia sells the G-Star products to:-
  4. G-Star Australia also owns and operates G-Star Outlet Stores in Australia.
  5. G-Star Australia advertises and promotes the “G-Star” brand in Australia in a number of ways including:-
  6. Further advertising is conducted through social media including Facebook, Twitter and YouTube. G-Star Raw has spent a substantial amount of money advertising and promoting the “G-Star” brand in Australia.
  7. As deposed by Mr Poelmann in his Affidavit sworn on 28 November 2013, G-Star Australia is able to charge the prices that it does for the G-Star products for the following reasons:-[8]
  8. This evidence establishes, as submitted by the Applicants, that the G-Star products, the G-Star Trade Mark, the Copyright Works and the “G-Star” brand per se have a substantial reputation amongst actual and potential customers of “G-Star” branded products in Australia.

Damages

  1. The Applicants seek damages for trade mark and copyright claims in respect of lost sales, loss of reputation and additional damage pursuant to s.115(4) of the Copyright Act. Section 115 of the Copyright Act relevantly provides:-
  2. The Applicants acknowledge that in receiving damages pursuant to the Copyright Act they are not entitled to also receive damages for breaches of the Trade Marks Act, the Australian Consumer Law claim and the Respondent’s conduct which constitutes the tort of passing off. That is, the Court will not allow the Applicants to ‘double dip’ in circumstances where damages are received for copyright infringement.
  3. As s.115(2) of the Copyright Act does not allow the Applicants to obtain both damages and an account of profits, the Applicants have elected to seek an award of damages, rather than an account of profits.[9]

Assessment of compensatory damages – lost sales profits

  1. The purpose of an award of damages is to compensate the Applicants for the loss which they have suffered “as a result of the Respondent's breach,”[10] including by compensating the Applicants for the depreciation to the value of the copyright as a chose in action arising from the introduction of “G-Star” branded goods into the marketplace.[11]
  2. In particular, it is well established that a plaintiff in an intellectual property infringement case may prove an entitlement to compensatory damages on the basis that it lost the sales made by the defendant which would otherwise have been made by the plaintiff.[12]
  3. The Applicants must prove their loss on the balance of probabilities and with as much precision as the subject matter reasonably permits.[13] lf a Court finds that damage has occurred it must do its best to quantify the loss, even if some degree of speculation and guesswork is involved.[14]
  4. In the absence in these proceedings of any evidence by the Respondent demonstrating the total gross sales of the counterfeit products (or any evidence at all), the Applicants cannot adduce precise evidence of what has been lost. Otherwise:-
  5. However, the Applicants submit that given that a counterfeit “G-Star” product was purchased from the Dandenong Store in November 2013, the Respondent must have had and must have sold counterfeit “G-Star” products on other occasions. Thus, there would be more than one infringing garment sold.
  6. The Applicants, in seeking compensation for lost sales, accept that the Court may only award a nominal amount in damages as there is little evidence of lost sales. The profit the Applicants would have received on the sale of one pair of genuine G-Star jeans is approximately $57. Given the failure of the Respondent to participate in these proceedings, the Court can only engage in some degree of speculation as to the exact amount suffered by the Applicants in lost sales. The selling of counterfeit G-Star products gives rise to some measure of loss, though that is unable to be precisely quantified by the Court. The Respondent however should not benefit from its lack of co-operation and lack of participating in these proceedings. In all the circumstances, I am prepared to award the Applicants $500 under this heading.

Assessment of compensatory damages – loss of reputation

  1. The Applicants also seek general damages on the basis that, as a result of counterfeit “G-Star” branded goods being made available in the marketplace by the Respondent, there was damage to the reputation and goodwill generated by the Applicants in the G-Star Trade Marks, the Copyright Works, the G-Star brand per se and the Applicants’ “exclusivity” in the marketplace. This is a serious matter.
  2. The Applicants rely on the authority of Kenny J in Review Australia Pty Ltd v New Cover Group Pty Ltd & Ors [2008] FCA 1589; (2008) 79 IPR 236 at [54] – [62] and Jessup J in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74. In each of those decisions, the Court made an award of damages on the basis that the infringement of a registered design resulted in a diminution in the value of the design as a chose in action because the infringement resulted in some diminution in the commercial value of the design in respect of its future use. Furthermore, the Court found the infringing conduct was likely to have had some adverse effect on reputation and exclusivity of design.
  3. The singularity, distinctiveness, quality and commercial value of the Applicants’ reputation are claimed in the Statement of Claim filed 13 August 2013 and supporting affidavits relied upon. The Applicants have established substantial, exclusive and valuable reputation in Australia in relation to their trade mark brands and goods.
  4. It is not easy to identify the value of the loss of reputation by the Applicants in monetary terms but the Court is required to do so. “It is a matter of judgment as to the loss of value in a party’s reputation.”[15]
  5. According to the evidence as contained in the Affidavit of Mr Poelmann, the activities of the Respondent in selling counterfeit G-Star products at the prices which it sells these products for, causes significant damage to the Applicants’ business and their reputation for the following reasons:-[16]
  6. Mr Poelmann further deposes that the activities of the Respondent in selling counterfeit G-Star products is damaging to the Applicants and the “G-Star” brand per se as:-[17]
  7. Finally, Mr Poelmann deposed that by simply affixing the G-Star Trade Marks and the Copyright Works to products entirely unconnected to the Applicants, distributors of these counterfeit goods are able to charge a premium on what they could otherwise charge for such garments, and in that way, they are getting a “free ride” on the basis of the long and substantial investment by the Applicants in promoting their goods sold by reference to the G-Star Trade Marks, the Copyright Works and the “G-Star” brand.[18]
  8. As for compensation for damage to reputation, the Applicants submit that an award of $15,000 is justified. I consider it proper to make an award, in the sum sought, accepting there would have been some damage to the Applicants’ reputation.

Assessment of additional damages

  1. The Applicants seek an award of additional damages under s.115(4) of the Copyright Act in the sum of $50,000 for the following reasons, as submitted by them:-
(a) the Respondent’s infringement was flagrant. Flagrancy entails a calculated disregard for the plaintiff's rights, a cynical pursuit of benefit,[19] conduct that is deliberate, deceitful and/or serious[20] or the infliction of loss difficult to compensate and assess in the normal course.[21] The counterfeit G-Star products imported and sold by the Respondent featured exact reproductions of the Copyright Work. Furthermore, the Respondent was put on notice of the Applicants’ copyright rights by reason of a letter of demand sent on 17 August 2012 and it still continued to sell counterfeit G-Star stock in complete disregard of the Applicants’ copyright rights;
(b) there needs to be a general deterrent to prevent similar infringements of copyright, a deterrent that is known and understood in the marketplace. The documents produced by Customs under subpoena reveal that the Respondent was well aware of the law of trade marks and despite this awareness it continued to import clothing products which infringed the trade marks of well-known brands. The documents also show that the Respondent imported large commercial quantities of goods. Furthermore, the Respondent was a Respondent in a Federal Court proceeding in which allegations of trade mark infringement were proved against it and injunctive orders were made against the Respondent. Despite these Orders, the documents produced by Customs show that the Respondent continued to import clothing products which infringed the trade marks of the Applicant in that case, New Era, as well as a number of well-known brands. There is also a general need to deter other traders from engaging in similar infringements;
(c) despite being put on notice of the Applicants’ intellectual property rights by letter dated 17 August 2012, the Respondent continued to sell “G-Star” branded clothing via its Dandenong Store with a trap purchase being made in November 2013. In Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 Jessup J awarded additional damages in a design infringement case where the Respondent continued to sell the infringing product after being put on notice of the Applicant's design rights and his Honour noted at [55] that “The continued making of sales, even on this fairly modest scale, is not the conduct of traders which, having been specifically informed of the Applicant's registered design, were conscientious to observe their legal obligations”. Similarly, Justice Gordon in Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2009] FCA 633 awarded additional damages in a copyright infringement case on a similar basis;
(d) Kenny J in Review Australia Pty Ltd v New Cover Group Pty Ltd & Ors [2008] FCA 1589; (2008) 79 IPR 236 at [54] to [62] took the approach that in the absence of any evidence from the respondents as to the commercial benefit obtained in selling the infringing garments, the Court could infer that they made profits from the infringement. In the present case, the evidence is that the Respondent sold at least one “G-Star” branded item of clothing therefore a benefit has been shown to accrue to the Respondent as a result of its infringing conduct; and
(e) Kenny J in Review Australia Pty Ltd v New Cover Group Pty Ltd & Ors [2008] FCA 1589; (2008) 79 IPR 236 also awarded additional damages against a respondent on the basis that there were deficiencies in the respondent’s discovery, response to notice to produce, and evidence of New Cover Group Pty Ltd/ Maco Collection Pty Ltd which indicated that there was a very strong possibility that the extent of the infringement had been underestimated. Her Honour made an award of additional damages of $50,000. In this case, the Respondent has taken no active role in the proceeding. The Applicants also note that the importation documents for the Imported Products do not disclose the brands of the items imported.[22] Therefore, the Applicants submit that it is likely that the Respondent brought in other importations of “G-Star” branded product which went undetected by Customs as the importation documents would not have disclosed that the goods were “G-Star” branded.
  1. The damages contemplated in s.115(4) of the Copyright Act are of a punitive kind. Financial gain is unnecessary. Section 115(4) of the Copyright Act may be engaged where the owner is entitled only to nominal damages under s.115(2).[23] It is appropriate here that additional damages be awarded to “mark the Court’s recognition of the opprobrium attached to the defendants conduct.”[24] Taking into account all of the circumstances of this case and accepting the engagement of the factors listed above, as submitted by the Applicants, I consider it proper to make an appropriate award of additional damages of $25,000.
  2. There will be an order for costs in the amount claimed which is a reasonable sum with reference to this Court’s costs schedule as set out in the Rules.

I certify that the preceding forty-four (44) paragraphs are a true copy of the reasons for judgment of Judge Hartnett

Associate:

Date: 4 April 2014

[1] Affidavit of Ben Regnard affirmed on 14 October 2013
[2] Affidavit of Renee Louise Backman affirmed on 17 December 2013
[3] Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 at [3] per Heerey J; Australian Competition and Consumer Commission (ACCC) v Albert [2005] FCA 1311 at [6] and [7] per Jacobson J; Facton Ltd and Ors v Dash Industries Pty Ltd and Anor [2010] FMCA 709; Facton Ltd v Erdogan (No 1) [2012] FCA 924
[4] Competition and Consumer Act 2010 (Cth), s.138A, Sch.2
[5] Competition and Consumer Act 2010 (Cth), s.80
[6] Copyright Act 1968 (Cth), s.131D
[7] Trade Marks Act 1995 (Cth), ss.120,191A
[8] Affidavit of Piet Poelmann sworn 28 November 2013 at paragraph 29
[9] Applicants’ Outline of Submissions filed 20 December 2013 at paragraph 48
[10] Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (in liq) [2007] FCAFC 40; (2007) 157 FCR 564 per Black·CJ and Jacobson J at [25]; Interfirm Comparison (Aust) Pty Ltd v Law Society of New South Wales (1975) 6 ALR 445 at [446], per Bowen CJ; Bailey v Namol Pty Ltd [1994] FCA 1401; (1994) 53 FCR 102 at [111], per Burchett, Gummow and O'Loughlin JJ
[11] See Sutherland Publishing Co Ltd v Caxton Publishing Co Ltd [1936] Ch 323; 336 per Lord Wright MR where his Lordship stated the distinction between conversion damages and general damages
[12] Aristocrat [2007] FCAFC 40; (2007) 157 FCR 564 at [37]; Sony Computer Entertainment Aust Pty Ltd v Stirling [2001] FCA 1852 per Emmett J at [8]
[13] Placer (Granny Smith) Pty Ltd v Theiss Contractors Pty Ltd (2003) 196 ALR 257 at 266 [37], per Hayne J, with whom Gleeson CJ, McHugh and Kirby JJ agreed; Commonwealth v Amann Aviation Pty Ltd [1991] HCA 54; (1991) 174 CLR 64 at [80], [83]-[84], per Mason CJ and Dawson J; at [138], per Toohey J; at [153], per Gaudron J; at [161], per McHugh J
[14] Aristocrat [2007] FCAFC 40; (2007) 157 FCR 564 per Black CJ and Jacobson J at [35]; Enzed Holdings Ltd v Wynthea Pty Ltd [1984] FCA 373; (1984) 57 ALR 167 at [183], per Sheppard, Morling & Wilcox JJ
[15] Facton Ltd v Rifai Fashions Pty Ltd [2012] FCAFC 9 at [29], per Lander and Gordon JJ
[16] Affidavit of Piet Poelmann sworn 28 November 2013 at paragraphs 30(b) to (e)
[17] Applicants’ Outline of Submissions for Default Judgment filed 20 December 2013
[18]Affidavit of Piet Poelmann sworn 28 November 2013 at paragraph 30(f)
[19] Prior v Lansdowne Press Pty Ltd [1977] VicRp 6; [1977] VR 65
[20] Microsoft Corporation & Anor v Atifo Pty Ltd & Ors (1997) 38 IPR at [648]; Microsoft Corporation & Ors v Goodview Electronics Pty Ltd & Ors (2000) 49 IPR 578 at [60]; Eagle Rock Entertainment Ltd v Caisley [2005] FCA 1238 at [31], per Tamberlin J
[21] Williams v Settle [1960] 2 ALL ER 806; Nichols Advanced Vehicle Systems Inc & Ors v Rees & Ors [1979] RPC 127; Lady Anne Tennant v Associated Newspapers Group Ltd [1979] FSR 298; Wellington Newspapers Ltd v Dealers Guide Ltd [1984] 2 NZLR 66; International Credit Control Ltd v Axelsen [1974] 1 NZLR 695 at 705
[22] see Annexure JAF-13 to the Affidavit of Jonathan Ariel Feder affirmed 2 December 2013
[23] Aristocrat Technologies Australia Pty Ltd v OAP Services (Kempsey) Pty Ltd [2007] FCAFC 40; (2007) 157 FCR 564
[24] Facton Ltd v Rifai Fashions Pty Ltd [2012] FCAFC 9 per Lander and Gordon JJ at [36]

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