More contempts

Bob Jane and his trading companies were found to be infringing the BOB JANE and JANE FLEET trade marks and had, amongst other things, injunctions ordered against them to stop, to change the various company names and transfer two domain names.

They didn’t.

This time, Besanko J has imposed fines of $25,000 and $15,000 on Mr Jane for his contempts, $25,000 and $15,000 on Bob Jane Global Tyre Corporation (Hong Kong) Limited, $20,000 on Bob Jane Southern Motors Pty Ltd and $2,000 fines on corporate respondents for other contempts. The respondents were also ordered to pay 80% of the applicants costs on an indemnity basis.

Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 637

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

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