Enforcement

DFAT ACTA information sessions

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Victoria Police use Facebook to serve intervention order

The Police’s own press release.

All papers, including the interim intervention order, the extract, explanation and contacts were transcribed was typed out into private messages and sent to the respondents account.   A video was recorded of Leading Senior Constable Walton reading the Interim order to the accused, as if the Respondent was being directly spoken to – and served.

It sounds like the order was for substituted service, after all other attempts to serve proved fruitless.

Watch the video (and be served) (after the ad).

Is an accepted practice developing? In an IP practice, why not ex parte orders, interlocutory injunctions …?

Lid dip @lods1211 and @idealaw

Victoria Police use Facebook to serve intervention order Read More »

Anti-counterfeiting Down Under

The Feds (aka the Australian Federal Police in co-operation with Customs) executed 21 search warrants on 14 September and apparently

Thousands of counterfeit goods were seized, including counterfeit computer software, CDs, DVDs and luxury items such as bags and jewellery.

Lid dip: Marine Guillou. The AFP issued their own Media Release.

In typically timely fashion, Stephen Stern will be giving a Tech IP Seminar:

Australian Customs And Border Protection Service – How To Access This Service To Protect Trade Marks And Stop Replica Products At The Border

in Melbourne on 12 October.

Steve has probably forgotten more about this subject than I’ve learned so, if you act for a brand owner who could be exposed, you should get yourself along to find out more.

Anti-counterfeiting Down Under Read More »

The penalty for contempt

Previously, I had noted that the remedy for breaching an injunction is proceedings for contempt of court.

Tracey J, having found various respondents in contempt arising from breaches of injunctions made in 2004 not to infringe Ugg Australia’s copyright and trade marks in connection with the manufacture and sale of ugg boots, has now handed down the punishments:

  • One of the individual respondents, a Mr Vladimir Vaysman, was sentenced in the No. 8 proceeding to 3 years’ imprisonment for the most serious contempt
  • A second principal contemnor, Mr Josef Vaysman (the father of Vladimir) has been sentenced to 18 months imprisonment, with a minimum of 6 months to be served and the balance suspended for 2 years, in the No. 9 decision,
  • a third principal, Victoria Vaysman (the daughter of Josef, and sister of Vladimir) received a sentence of 12 months, with a minimum of 2 months to be served and the balance suspended for 2 years in the No. 8 decision;
  • all also received other, shorter terms of imprisonment for lesser breaches to be served concurrently.

It would appear that copyright owners over in the UK have secured their first imprisonment for ‘camming‘, although that seems to be for a criminal offence rather than contempt.

Deckers Outdoor Corporation Inc. v Farley (No 9) [2010] FCA 1007

Deckers Outdoor Corporation Inc. v Farley (No 8) [2010] FCA 657

The penalty for contempt Read More »

Electronic filing / service in the Office (IP Australia)

Patentology looks at the problems that arise with serving documents in Opposition proceedings before the Commissioner / Registrar (i.e. IP Australia) (a) electronically and (b) outside business hours.

Obviously (well, not so obviously when you’re used to dealing with the pragmatic approach of the Federal Court), if the material is served outside business hours, it is not served until the next business day, but it may be even more complicated if you are trying to effect service electronically.

All very quaint and so 19th century, but fatal!

The rules are rather different than, for example, the postal rules which apply in a contractual relationship; but it isn’t really a contractual relationship.

Where personal service is not required, the Federal Court Rules (O7 r4 and 4A) permit service by document exchange, facsimile or email, however, they (O7 r7) require that the party on whom service is to be effected to have specified the facsimile number or email address to have been specified in a Notice. O7 r4 and 4A also make provision for the time of service. I suspect, however, that these are deemed times of service which would be displaced if one could prove an earlier time of service.

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Taking genuine steps to resolve before going to court -corrected

The Commonwealth Attorney-General introduced the Civil Dispute Resolution Bill 2010 into Parliament today which, if enacted, will require:

  1. applicants in civil proceedings in the Federal Court and the Federal Magistrates Court to file a genuine steps statement before the hearing date specified in the Application when the application is filed (thanks, Tim);
  2. respondents to file a genuine steps statement before the hearing date stating whether or not they agree with the applicants’ statements; and
  3. lawyers to advise people who are required to file genuine steps statements of the requirement and to assist them in complying with their obligations.

A genuine steps statement will not be required where the proceeding relates wholly to “excluded proceedings”: clauses 15 – 17 provide lists of excluded proceedings and a power for regulations to prescribe further proceedings.

An applicant’s genuine steps statement must set out the steps that have been taken to try to resolve the dispute before commencing proceedings or why no such steps were taken.

The Bill does recognise, however, that what will constitute “genuine steps” in any particular case will depend on the circumstances of that case. The EM states in relation to cl. 4:

The Bill does not prescribe specific steps to be undertaken. Rather, it is intentionally flexible to enable parties to turn their minds to what they can do to attempt to resolve the dispute. This is to ensure that the focus is on resolution and identifying the central issues without incurring unnecessary upfront costs, which has been a criticism of compulsory pre-action protocols.

A failure to provide a genuine steps statement would not automatically invalidate the application or defence/response.  However, in exercising its powers in relation to the proceeding, by cl. 11 the court may have regard to whether a genuine steps statement was filed (when required) and whether genuine steps were in fact taken. In addition to referall of the dispute to ADR, the EM at [45] gives as examples of ways the power may be exercised:

  • setting time limits for the doing of anything, or the completion of any part of the proceeding
  • dismissing the proceeding in whole or in part
  • striking out, amending or limiting any part of a party’s claim or defence
  • disallowing or rejecting any evidence, and
  • ordering a party to produce to it a document in the possession, custody or control of the party.

The NADRAC report contemplated that courts might use this information in various ways such as tailored orders for the provision of necessary information without requiring or fostering costly discovery processes. This, and other measures contemplated, are already within the courts’ powers so, at least this far, the bill seems to be an instrument to encourage cultural change. Indeed, this is made explicit in relation to cl. 12 – the court’s powers to award costs:

The court may also have regard to whether a genuine steps statement was filed (when required) and whether genuine steps were in fact taken when exercising its powers to award costs.

Furthermore, the court may order costs personally against a lawyer who fails to comply with his or her duties.

The EM states that these provisions are intended “to bring about a cultural change in the conduct of litigation so that parties are focused on resolving disputes as early as possible.”

Clause 14 seeks to preserve the “without prejudice” privilege for negotiations to settle.

So far as IP goes, “ex parte” applications are within the definition of “excluded proceedings”, so some Anton Piller and Mareva situations will not be affected. IP litigation is usually preceded by letters of demand. This (and the resulting rejection) may well fall within, if suitably drawn, the first two or three examples given in cl 4:

  1. notifying the other person of the issues that are, or may be, in dispute, and offering to discuss them, with a view to resolving the dispute;
  2. responding appropriately to any such notification;
  3. providing relevant information and documents to the other person to enable the other person to understand the issues involved and how the dispute might be resolved.

The discussion of these matters in the NADRAC report identifies a tension perceived in the UK between reducing some court backlogs while imposing onerous costs obligations on parties before the litigation commences.

Civil Dispute Resolution Bill 2010 (html) (pdf)

EM (html) (pdf)

Press release

Some further background and consideration of the thinking behind the legislation may be found in the NADRAC report

Taking genuine steps to resolve before going to court -corrected Read More »

Served by Facebook 2 – updated with link

The press is reporting that a Federal Magistrate has allowed a child support application to be served on a “Mr Howard” by Facebook.

Following service, “Mr Howard” shut down his Facebook and MySpace accounts.

See the Age, Sydney Morning Herald.

The reports say the judgment was published last month; but I haven’t found a link to it yet.

Byrne & Howard [2010] FMCAfam 509

with thanks to David Starkoff (possibly better known as “Inchoate”).

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DFAT ACTA consultations

DFAT (the Department of Foreign Affairs and Trade) will be holding “whole of government” consultations on the draft ACTA text on 11 June 2010 in Canberra, commencing at 10.00a.m.

If you’re a stakeholder wanting to be consulted, register by COB 9 June.

For the contact “co-ordinates”, here.

For the draft ACTA text and other interesting ACTA-tidbits, here.

DFAT ACTA consultations Read More »

Urgent interlocutory and declaratory relief

Many IP agreements contain a clause referring disputes about the subject matter to mediation and/or arbitration instead of reliance on court action. There is often, however, an exception permitting court action in the case of “urgent interlocutory and declaratory relief”.

So, when one party to the agreement rushes off to Court to enforce some position instead of arbitration, the court case often becomes as much about whether the Court has jurisdiction or the action should be stayed while the parties go off to mediation and/or arbitration. Correspondingly, before you rush off to Court, it is important to know whether the expense will be wasted because you should have gone to mediation/arbitration.

In a case concerning a dispute about the terms of a charter party (and not IP), the Victorian Court of Appeal has ruled that the word “urgent” in such a clause applies to both “interlocutory relief” and “declaratory relief” distributively. That is, a party cannot apply to the courts for a declaration, the declaration must “urgent”.

The Court endorsed the view of Lord Woolf LCJ that “interim declarations” can be granted, and continued:

[24] Even if it were accepted that an interlocutory or interim declaration is not available in Australia, this would not, in our opinion, exclude the possibility of a declaration of rights in the course of interlocutory proceedings where the declaration finally determines an aspect of matters in dispute and does not operate only as a declaration for the interim.9 In our opinion a declaration of this type could sensibly be described as “urgent”.

[25] In the context of an arbitration agreement this is likely to be the type of urgent declaratory relief contemplated, as the authorities indicate difficulty in enforcing awards that do not finally determine a matter in dispute, even though the award may only be a partial award with respect to the totality of matters in dispute.10

Apparently, whether or not the matter is urgent is to be determined objectively and the party seeking relief must have formed a reasonable opinion that the relief (ie., the declaration) was necessary for the protection of its rights.

AED Oil Limited & Anor v Puffin FPSO Limited [2010] VSCA 37

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Not complying with an injunction

IP disputes often involve the (alleged) infringer providing undertakings or being subjected to injunctions to stop infringing the IP in the future. The sanction for non-compliance being (potentially) contempt of court.

The long running Deckers litigation has now reached the point where Tracey J has found a number of the respondents in contempt of court for breaching undertakings and injunctions from litigation in 2003, 2004 and 2007.

His Honour’s reasons provide a useful guide to prove the contempt(s). Unfortunately, it looks like there will need to be another hearing to establish the penalty.

Deckers Outdoor Corporation Pty Ltd v Farley (No 6) [2010] FCA 391

Not complying with an injunction Read More »