Posts Tagged ‘injunction’

3 stripes v 4 stripes: the remedies

Monday, December 16th, 2013

4 stripes 3 stripes now the remedies

Following the decision a couple of months back that 3 of 12 Pacific Brands’s shoes had infringed adidas’ 3-stripes trade mark, Robertson J has now:

  1. made a declaration that Pacific Brands infringed;
  2. granted an injunction permanently restraining Pacific Brands from making or selling etc. 2 of the 3 shoes found to infringe;[1]
  3. awarded $20,000 damages; and
  4. ordered Pacific Brands to pay 30% of adidas’ costs.

The amount of damages was resolved between the parties. There are a couple of points of interest in the terms of the injunction and the costs order.

First, in relation to the injunction, adidas had sought an injunction which restrained Pacific Brands both in relation to the specific shoes found to infringe and also “from otherwise infringing” the 3-stripes trade mark. Robertson J refused this wider injunction. The practical reality of 9 styles either abandoned or found not to infringe served a telling warning against the injunction sought:

because, as these proceedings have shown, such an order would lack sufficient clarity and definition and the Court should not make an order in relation to conduct where a person would not readily know whether or not its proposed conduct breached the order. What is the appropriate relief must depend on the facts and on the underlying dispute and I do not derive much assistance from the form of relief granted in trade mark cases which concerned primarily words because infringements by words are generally clearer than by designs.[2]

His Honour also refused to include one of the 3 infringing styles in the order because the shoe had been taken off the market 7 years earlier and there was no sufficient risk of its reintroduction. While the other 2 infringing shoes had been taken off the market in 2009, an injunction was warranted. First, no unconditional undertaking had been given in relation to them. Secondly, while a broad undertaking had been given, his Honour considered the sale of these 2 styles after that undertaking was in place breached it. His Honour also considered that the evidence that Pacific Brands’ Global Trading division – the “division” which had sold the shoes – had been closed down was not “sufficiently cogent” to persuade him that there was no sufficient further risk of infringement.

Thirdly, the terms of the injunction extend also to authorising, directing or procuring other to make or sell the infringing shoes.

On the costs question, Robertson J considered the “old” rules which included an automatic one third reduction to the costs where less than $100,000 was recovered were applicable as the action started before the new, 2011, rules came into force. However, his Honour exercised his discretion not to apply that rule. The Federal Court was an appropriate forum to have brought the action in and damages were not the primary relief being sought. The costs were reduced, however, to reflect the degree of adidas’ success, particularly bearing in mind it had pursued 12 styles of shoe as part of an overall strategy to obtain broad injunctive relief. The little weight accorded to the survey having regard to the substantial amount of evidence it involved, in the face of Pacific Brands’ objections, was also a factor in the reduction of costs.

Adidas AG v Pacific Brands Footwear Pty Ltd (No 4) [2013] FCA 1335


  1. The terms of the injunction were:  ?

    The respondent, whether by its servants, agents or otherwise, be permanently restrained from:

    (a) manufacturing, procuring the manufacture of, importing, purchasing, selling, offering to sell, supplying, offering to supply or distributing footwear in the form depicted in any of Exhibits K or L in these proceedings, being the footwear depicted in Annexures B and C to these Orders;
    (b) authorising, directing or procuring any other company or person to engage in any of the conduct restrained by sub-paragraph (a).

  2. This may be contrasted with the typical injunction in a patent case that thou shalt not infringe the patent; leaving the infringer to run the gauntlet.  ?

Apple and Samsung in the High Court 3

Thursday, December 15th, 2011

As is well known by now, the High Court dismissed Apple’s application for special leave to appeal from the Full Federal Court’s dissolution of the interlocutory injunction against the Samsung Galaxy Tab 10.1. This means that Samsung can legitimately offer the Galaxy Tab 10.1 for sale in Australia pending trial and subject to an undertaking to keep full accounts.

The transcript of the High Court hearing (French CJ, Gummow and Bell JJ) is now up. In refusing special leave, French CJ said on behalf of the Court:

The organising principles upon which applications for interlocutory injunctions are determined are set out in O’Neill and, as is emphasised in those passages, the governing consideration is that the requisite strength of the probability of ultimate success depends upon the nature of the rights asserted by the plaintiff and the practical consequences likely to flow from the grant of interlocutory relief, the reference to “practical consequences” including the considerations which are present where the grant or refusal of an interlocutory injunction, in effect, disposes of the action in favour of the successful party on that application.

This appears to have been a case where the decision on the interlocutory application effectively would determine the outcome of the dispute, hence, as the Full Court emphasised, the requirement for a reasoned examination of the strength of Apple’s case. ….

That is, as both parties accepted the interlocutory injunction was effectively final relief in that the Galaxy Tab 10.1 would be well and truly superseded by the final resolution of the case (including any appeals), Apple needed to demonstrate a strong case for infringement.

While the High Court panel accepted the judge hearing an interlocutory injunction might not always be expected to forecast the outcome of the case at the interlocutory stage, the practical consequences in this case meant that was necessary. In undertaking that exercise, the Full Federal Court had made no error of principle (and, unsurprisingly, the High Court was certainly not going to engage, at this stage, in claim construction and reviewing the evidence).

Apple Inc & Anor v Samsung Electronics Co. Limited & Anor [2011] HCATrans 341

ISPs and filtering

Tuesday, December 6th, 2011

While we wait with bated breath for the High Court’s deliberations on Roadshow v iiNet (transcript of hearing here, here and here), it is worth noting that the CJEU (formerly the ECJ) has struck down an injunction against an ISP which required the ISP to monitor all its users’ traffic and filter (block) copyright infringing material.

SABAM, the Belgian authors’ collecting society (counterpart to APRA) obtained an interlocutory injunction against Scarlet, an ISP. SABAM contended that some of Scarlet’s customers were using its services to engage in peer-to-peer file sharing of copyright materials without authorisation. It obtained from the Belgian courts an order that Scarlet implement a system of filtering to ensure that its users were blocked or otherwise made it impossible for them to send or receive in any way, files containing a musical work using peer-to-peer software without the permission of the copyright owners.

It was common ground between the parties that this would require Scarlet to introduce a system for filtering:

–        all electronic communications passing via its services, in particular those involving the use of peer-to-peer software;

–        which applies indiscriminately to all its customers;

–        as a preventive measure;

–        exclusively at its expense; and

–        for an unlimited period,

which is capable of identifying on that provider’s network the movement of electronic files containing a musical, cinematographic or audio-visual work in respect of which the applicant claims to hold intellectual property rights, with a view to blocking the transfer of files the sharing of which infringes copyrigh

It was also common ground between the parties that such a system would require :

–        first, that the ISP (Scarlet) identify, within all of the electronic communications of all its customers, the files relating to peer-to-peer traffic;

–        secondly, that it identify, within that traffic, the files containing works in respect of which holders of intellectual-property rights claim to hold rights;

–        thirdly, that it determine which of those files are being shared unlawfully; and

–        fourthly, that it block file sharing that it considers to be unlawful.

That is, the ISP would have to monitor all the traffic across its network.

While the CJEU recognised that IP, in this case copyright, was a fundamental right. It also recognised that its protection needed to be balanced against the protection of other fundamental interests. It was necessary to strike a fair balance between the rights of copyright owners, ISPs and their customers. This injunction did not do that and so was incompatible with Community law (we would say “invalid”):

47      In the present case, the injunction requiring the installation of the contested filtering system involves monitoring all the electronic communications made through the network of the ISP concerned in the interests of those rightholders. Moreover, that monitoring has no limitation in time, is directed at all future infringements and is intended to protect not only existing works, but also future works that have not yet been created at the time when the system is introduced.

48      Accordingly, such an injunction would result in a serious infringement of the freedom of the ISP concerned to conduct its business since it would require that ISP to install a complicated, costly, permanent computer system at its own expense, which would also be contrary to the conditions laid down in Article 3(1) of Directive 2004/48, which requires that measures to ensure the respect of intellectual-property rights should not be unnecessarily complicated or costly.

49      In those circumstances, it must be held that the injunction to install the contested filtering system is to be regarded as not respecting the requirement that a fair balance be struck between, on the one hand, the protection of the intellectual-property right enjoyed by copyright holders, and, on the other hand, that of the freedom to conduct business enjoyed by operators such as ISPs.

50      Moreover, the effects of that injunction would not be limited to the ISP concerned, as the contested filtering system may also infringe the fundamental rights of that ISP’s customers, namely their right to protection of their personal data and their freedom to receive or impart information, which are rights safeguarded by Articles 8 and 11 of the Charter respectively.

Thus, the filtering injunction did not strike a fair balance between the protection of IP and the rights of ISPs and their customers.

Case C-70/10 Scarlet Extended SA v SABAM, 24 November 2011.

IPKat has the text of the CJEU’s Summary and as they point out, the CJEU’s ruling has some interesting implications for the filtering injunction ordered by Arnold J in Newzbin 2.

Of course, in Australia, we do not labour under a Charter of Rights. Section 116AH(2) of the Copyright Act 1968 does, however, place some limits on a “carriage service provider’s” obligations to monitor:

(2)  Nothing in the conditions is to be taken to require a carriage service provider to monitor its service or to seek facts to indicate infringing activity except to the extent required by a standard technical measure mentioned in condition 2 in table item 1 in the table in subsection (1),

which is a rather more anodyne protection. Also, under the Telecommunications Act, carriers and carriage service providers have prohibitions on disclosing information related to communications (which is not the same thing as a prohibition on monitoring), but there are important exceptions including disclosures authorised by or under law. Cf  e.g. ss 276 and 280.

 

Apple v Samsung in the High Court 2

Monday, December 5th, 2011

Apple’s application for special leave to appeal from the Full Federal Court’s decision to discharge the interlocutory injunction granted by Bennett J will be heard on Friday, 9 December 2011 in Sydney.

In granting the stay on the Full Federal Court’s orders, Heydon J pointed out that the fact that 2 experienced patent judges had reached opposition conclusions, in circumstances which his Honour characterised as the appeal court not disturbing Bennett J’s findings of fact, indicated Apple’s case was not without some prospects of success.

Perhaps more interesting at the level of tea leaf reading, Heydon J expressed his personal concern that no expedited final hearing was ordered in this case:

Secondly, to my mind at least, it is deeply troubling that there was no expedited final hearing in this case. Precisely why there was not, on my perhaps limited acquaintance with the materials, is a somewhat murky question. But why it is that no expedited final hearing took place and how the courts below dealt with the fact that no expedited final hearing took place is a matter of some public interest in the sense in which Ms Howard was using that expression and is a matter which may be thought worthy of close investigation on the special leave hearing.

The Full Federal Court appeared to discount Samsung’s resistance to an expedited hearing.

Apple Inc v Samsung [2011] HCATrans 326

Apple and Samsung in the High Court

Friday, December 2nd, 2011

The High Court has extended the stay on the Full Federal Court’s dissolution of the injunction against Samsung’s Galaxy Tab 10.1 for another 7 days.

Samsung gets Oz injunction discharged

Wednesday, November 30th, 2011

The Full Federal Court (Dowsett, Foster and Yates JJ) has allowed Samsung’s appeal from Bennett J’s decision and discharged the interlocutory injunctions against the Galaxy Tab 10.1.

On a first read, it looks like a “close run” thing. It also appears the grant of (interlocutory) injunctions for patent infringement in Australia may well be increasingly influenced in the future by the sorts of issues highlighted by the US Supreme Court in KSR v Teleflex (although that case was not referred to).

A factor which appears to have played high importance in the Full Court’s thinking was the recognition (by both parties) that the awarding of the interlocutory injunction in this case was effectively final relief:

49.   In the present case the parties accept that the orders made below are effectively final in that the commercial viability of the Galaxy Tab 10.1 in the Australian market will be lost. We doubt whether the grant of interlocutory relief in the present case avoids frustration of the Court’s process. When one keeps in mind that the Court must seek to do justice to both parties, such a consequence for Samsung can hardly be described as other than a frustration of the Court’s process. In our view, the task facing her Honour was not simply to grant or refuse an injunction. The task was to protect the Court’s process from frustration, as best as could be done in the circumstances, following the guidelines laid down by the High Court in the cases to which we will refer in the next section of these reasons. An “all or nothing” outcome was unlikely to produce that result.

Followed at [50]:

In this case, given the primary judge’s findings as to the merits of both parties’ cases and the even weighting attributed by her Honour to the relevant factors under consideration in her assessment of the balance of convenience, an arrangement which shared the risk of loss was the best that could be done to avoid frustration of the Court’s process, at least in the absence of any conduct by either party which effectively made it the author of its own misfortune. The question, then, was whether Samsung’s conduct in refusing an early trial on the conditions offered, together with whatever may be made of the “eyes wide open” factor and the fact that Apple relies on two patents rather than one leads to the conclusion that Samsung should be denied a trial on the merits. …. (emphasis supplied)

then [51]:

…. Where the merits and the question of convenience are fairly evenly balanced, there will be no injustice in requiring that the party seeking relief demonstrate good prospects of success before imposing almost certain prejudice on the other side.

The strength of Apple’s case

Apple argued that Samsung’s importation and sale of the Galaxy Tab 10.1 would infringe:

Claim 6 provided:

6. A touch panel having a transparent capacitive sensing medium configured to detect multiple touches or near touches that occur at a same time and at distinct locations in a plane of the touch panel and to produce distinct signals representative of a location of the touches on the plane of the touch panel for each of the multiple touches, the transparent capacitive sensing medium comprising:
a first layer having a plurality of lines that are electrically isolated from one another and formed from a transparent conductive material; and
a second layer spatially separated from the first layer and having a plurality of lines that are electrically isolated from one another and formed from a transparent conductive material, the second conductive lines being positioned transverse to the first conductive lines, the intersection of transverse lines being positioned at different locations in the plane of the touch panel, each of the conductive lines being operatively coupled to capacitive monitoring circuitry,
wherein the first layer and the second layer are disposed on two sides of an optically transmissive member.

On this part of the case, the question was whether or not either or both of 2 layers in the Galaxy Tab 10.1′s screen (described as layer D and layer E) satisfied the requirement of “an optically transmissive member”.

While not finally deciding the point, the Full Court considered that Apple’s case on this point was unlikely to succeed:

121.  It is sufficient for us to express the view that, on the present state of the evidence, there is a real and substantial prospect that the importation into and supply in Australia of the Galaxy Tab 10.1 will not infringe claim 6 of the Touch Screen Patent. We have referred to a number of difficulties that confront Apple in making good its case on infringement. It may well be that, on a final hearing, Apple will meet these difficulties. But difficulties they are. Whilst we would not be prepared to say that Apple’s case on infringement is not open to be argued, the difficulties to which we have referred do affect the assessment at the present time of the probability that, if on a final hearing the evidence remains the same, Apple will be found to be entitled to final injunctive relief for infringement of that claim. If Apple has established a prima facie case at all (which we doubt), it is founded upon a construction argument which, if the evidence remains as it is, is unlikely to succeed at trial.

On the other hand, Samsung’s case on the alleged invalidity of claim 6 equally fell short (of course, Samsung would not be liable for infringement if it holds the line on Apple’s positive obligation to prove the infringement):

  1. It is not necessary at this point to resolve the debate between the parties as to whether the reference in the Leeper Article about detecting the presence of “multiple fingers” is to multiple fingers at multiple locations or multiple fingers at a single contact point. It is enough to say that there is some reasonable degree of uncertainty about what the Leeper Article actually discloses in that regard. Moreover, even if one were to assume that the article is referring to the detection of multiple touches or near touches that occur at the same time and at distinct locations in a plane of the touch panel – which on the present state of the evidence would be a generous assumption – there is, importantly, no apparent disclosure in the Leeper Article that the ClearPad is configured to produce distinct signals for each of the multiple touches that are representative of the location of each of those touches.
  2. In our view it follows from that state of affairs that Samsung has not established a prima facie case that the Leeper Article anticipates the touch panel claimed in claim 6 of the Touch Screen Patent.

Samsung’s case on the “Mulligan patent application” was equally suspect: esp. [149] – [150].

The Heuristics patent:

1. A computer-implemented method, comprising:

at a computing device with a touch screen display,
detecting one or more finger contacts with the touch screen display,

applying one or more heuristics to the one or more finger contacts to determine a command for the device; and

processing the command;
wherein the one or more heuristics perform the functions of:

determining that the one or more finger contacts correspond to a one- dimensional vertical screen scrolling command rather than a two-dimensional screen translation command based on an angle of movement of the one or more finger contacts with respect to the touch screen display; and
determining that the one or more finger contacts correspond to a two dimensional screen translation command rather than a one-dimensional screen translation command, based on an angle of movement of the one or more finger contacts with respect to the touch screen display.

and

55. A computer-implemented method of any one of claims 1 to 26, wherein
the one or more finger contacts correspond to a finger gesture with an initial movement and a subsequent movement, and wherein
the function of determining that the one or more finger contacts correspond to a one-dimensional vertical screen scrolling command rather than a two-dimensional screen translation command includes identifying the entire finger gesture as the one-dimensional vertical screen scrolling command and basing the determination on the angle of movement of the initial movement of the finger gesture, and wherein
the function of determining that the one or more finger contacts correspond to a two-dimensional screen translation command rather than a one-dimensional vertical screen scrolling command includes identifying the entire finger gesture as the two-dimensional screen translation command and basing the determination on the angle of movement of the initial movement of the finger gesture.

The issue here is whether or not the Galaxy Tab 10.1 employs gestures based on “the angle of movement”. According to the Full Court, there was no factual dispute between the parties about how gestures worked (or for those familiar with the “other” system, don’t):

155 There seems to be no dispute that, in the Galaxy Tab 10.1, the process for determining the relevant command is as follows. A first user contact on the screen is detected and an X (horizontal) channel and a Y (vertical) channel are generated around the touch point. The touch panel logic then identifies the location of the user’s second touch point at a pre-defined period of time after the first contact is detected. The location of the second touch point is then compared with the locations of the X and Y channels previously generated by the first touch. The software then interprets this as an instruction for screen movement, relevantly a one-dimensional screen scrolling command or a two-dimensional screen translation command, and then processes the command accordingly.

The Full Court considered it was “difficult to discern” Apple’s reading of its claims in this and so concluded that Apple had not established a prima facie case on infringement: [160].

Balance of convenience factors

The factors considered here were

  • whether Samsung had unreasonably refused a proposal for an early trial;
  • whether Samsung’s conduct in entering the market with its “eyes wide open” to the potential for infringement were disentitling; and
  • Apple’s reliance on 2 patents instead of 1.

As to the proposal for an early trial, the Full Court considered that the various proposals were too shifting, too limited and ultimately too unclear to be operative:

190.  …. Had the offer been of a final hearing on all issues, and had the time for preparation been reasonable, the position may have been otherwise. In the circumstances of this case we cannot see how Samsung’s conduct in refusing the offer of an early trial could properly be weighed in the balance of convenience. In those circumstances we consider that her Honour erred in principle by taking into account that irrelevant consideration.

The Full Court gave careful consideration to the “eyes wide open” contention, but concluded her Honour was right to give it little weight:

196.  …. Finally, in the present case, the most compelling features are the assessments of the strengths and weaknesses of the respective cases and the equality of likely detriment. Other considerations pale into insignificance beside those matters.

The Full Court could not see how asserting 2 patents rather than 1 put Apple in any better position (it might be interpolated: both with the issues identified above).

Samsung Electronics Co. Limited v Apple Inc. [2011] FCAFC 156

Lid dip: Peter Clarke

 

Apple v Samsung

Thursday, October 20th, 2011

Belated link to Bennett J’s reasons for granting the interlocutory injunction against Samsung’s Galaxy Tab:

Apple Inc. v Samsung Electronics Co. Limited [2011] FCA 1164

It has now been reported that Samsung has appealed, with Gerry Harvey in support.

Samsung is also reported to be bringing claims of patent infringement against Australia and Japan, although the patents it is asserting in Australia are apparently counterparts to the ‘frand’ patents which a Dutch court refused to grant injunctions for. For the ‘frand’ issue in ND California.

How wide should an injunction be?

Wednesday, September 14th, 2011

Having granted summary judgment against Paul’s Retail for infringement of a range of fashion brands trade marks and copyright, Kenny J has now made orders for the remedies flowing from the infringements. One point of general interest was the dispute about the scope of the injunctions.

Her Honour accepted that injunctions were a conventional remedy for intellectual property infringement and were appropriate for grant in this case, largely because it appears the respondents did not offer undertakings and continued to engage in infringing conduct after they had claimed to have ceased it.

The applicants sought broad injunctions in terms typically granted in patent cases (where the order is often as broad as “thou shalt not infringe the patent” – expressed in modern plain English of course). The respondents argued such wide injunctions would travel well beyond the pleaded and proved infringements. Kenny J referred to cases identifying the Court’s concerns against overly broad injunctions, especially as they carried with them the risk of contempt.

Kenny J accepted, on the basis of those cases, that an injunction could in appropriate cases be framed in terms of the statutory command and need not necessarily be tied to prescribe specific conduct. Nonetheless, her Honour considered:

23 As noted above, in Universal Music Branson J stated that it may be permissible to incorporate in an injunction the terms of a statutory prohibition. It does not follow from this, however, that it is permissible to include in injunctions prohibitions against forms of infringing conduct that have not been proven, let alone alleged: compare Microsoft Corp v Goodview Electronics at 592. Bearing these considerations in mind, I propose to grant injunctions in terms incorporating the statutory language but substantially designed to guard against the infringing conduct that has been proven.

Thus, the specific terms of the injunctions granted differed according to the nature of the infringing conduct.

For example, instead of granting an injunction to restrain the respondents from infringing copyright [or the applicant's copyright in a particular work], Kenny J granted an injunction:

Pursuant to section 115(2) of the Copyright Act 1968 (Cth), the first respondent be permanently restrained from:

(a) reproducing or authorising the reproduction of the whole or a substantial part of any of the Ug Manufacturing Copyright Works without the licence or authority of the fifth applicant;

(b) publishing and communicating to the public or authorising the publication and communication to the public of the whole or a substantial part of any of the Ug Manufacturing Copyright Works without the licence or authority of the fifth applicant;

(c) selling, offering for sale, supplying, offering to supply, importing or distributing any articles bearing any Infringing Ug Manufacturing Copyright Works (such Works being a copy of the whole or a substantial part of any of the Ug Manufacturing Copyright Works which has not been made or applied by or with the licence or authority of the fifth applicant);

(d) authorising, directing or procuring any other company or person to engage in any of the conduct sought to be restrained by sub-paragraphs (a), (b) and (c).

Apparently, the injunctions against the proven trade mark infringements were also tailored more narrowly.

QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038

 

How wide should injunctions be

Thursday, May 26th, 2011

Following on from his ruling that Idameneo’s use of its trade mark breached its contractual obligation not to use a trade mark capable of being confused with Symbion’s trade mark, Jessup J has granted an injunction:

The Respondent be permanently restrained, whether by itself or through its subsidiaries from using the Respondent’s Mark.

Three aspects for comment:

First, Symbion sought and his Honour refused to grant an injunction that Idameneo not use its trade mark or “any trade mark, device, brand or logo which is similar to or capable of being confused with” Symbion’s trade mark (i.e., reflecting the terms of the contractual obligation).

In support of that application, Jessup J was referred to a number of cases proclaiming that the usual form of order for infringement of an intellectual property right was an order restraining the respondent from infringing the applicant’s [intellectual property right]. His Honour pointed out, however, that none of those cases established that such an order should be made in the case of breach of contract as a matter of principle.

Jessup J accepted that such a wide injunction might be an appropriate exercise of discretion in a particular case. However, there was nothing in this case which warranted that course:

here is nothing in the facts – or in the dynamics – of the present case which would provide any basis for the suspicion that, if it were precluded from using its present mark, the respondent would devise some artful similarity of the applicant’s mark, or would “sail close to the wind” as it is occasionally said.  If the orders which I made on 13 May 2011 stand, the respondent will be obliged to rebrand its business, its sites and its stationery.  Nothing suggested by the applicant, and nothing which otherwise occurs to me, would give reason to suspect that the respondent would have the slightest interest in adopting a new logo or image which was confusingly similar to the applicant’s mark.  If, contrary to this expectation, the respondent were to do so, it is true that the applicant would be obliged to bring fresh proceedings, but I have little doubt but that the court would not then be readily forgiving of the respondent for failing to keep a sufficient distance between its own new mark and that by reference to which the applicant succeeded in this proceeding.

Secondly, despite the terms of the injunction, Jessup J supplemented it with a further order to:

remove and destroy all signage, corporate stationery, flyers, posters, leaflets, brochures and any other promotional, advertising and marketing materials (whether in hard copy or electronic format) and garments which bear the Respondent’s Mark and which are in the possession, power, custody or control of the Respondent or its subsidiaries

and to deliver up an affidavit confirming all that mayhem has taken place.

Finally, his Honour granted a stay of the injunction – for 6 months or, if Idameneo appealed, for 6 months from the date the appeal was concluded. There is no discussion of the reasons for the stay, so it appears to have been uncontroversial between the parties.

Symbion Pharmacy Services Pty Ltd v Idameneo (No 789) Limited (No 2) [2011] FCA 531

Thirdly,

The penalty for contempt

Monday, September 20th, 2010

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