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
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