Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 784

FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 784 SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOR v KAREN STIRLING

N 1233 OF 2000 EMMETT J 15 JUNE 2001 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 1233 OF 2001

BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183)

FIRST APPLICANT

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT

SECOND APPLICANT

AND: KAREN STIRLING

RESPONDENT

JUDGE: EMMETT J

DATE OF ORDER: 15 JUNE 2001

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. In the absence of the respondent, the trial proceed generally. 2. The hearing and determination of liability take place before the hearing on all issues of pecuniary relief.

THE COURT DECLARES THAT:

3. The respondent has infringed the second applicant's registered trade mark number 642678. 4. The respondent has infringed the second applicant's registered trade mark number 642679. 5. The respondent has breached ss 9, 10 and 12 of the Fair Trading Act 1999 (Vic).

THE COURT ORDERS THAT:

6. The respondent, whether by herself, her servants or agents or otherwise, be restrained from infringing the second applicant's registered trade mark (no. 642678) consisting of the mark "PlayStation", by selling or offering for sale CD ROMs containing software for use with computer game players, which bear or in which are stored electronically, representations of marks, or by reference to marks, that are identical with, substantially identical with, or deceptively similar to, registered trade mark number 642678. 7. The respondent, whether by herself, her servants or agents or otherwise, be restrained from infringing the second applicant's registered trade mark (no. 642679) consisting of the mark "PS", by selling or offering for sale CD ROMs containing software for use with computer game players, which bear or in which are stored electronically, representations of marks, or by reference to marks, that are identical with, substantially identical with, or deceptively similar to, registered trade mark number 642679. 8. The respondent, whether by herself, her servants or agents or otherwise, be restrained from representing in trade or commerce that: (a) the CD ROMs containing software for use with computer game players offered or supplied by the respondent are manufactured by the first or second applicants; (b) the respondent has the sponsorship, approval or affiliation of the first or second applicants; (c) the CD ROMs containing software for use with computer game players offered or supplied by the respondent have the sponsorship, approval or affiliation of the first or second applicants; and (d) the CD ROMs containing software for use with computer game players offered or supplied by the respondent are of the same standard and quality as the CD ROMs containing software for use with computer game players offered or supplied by the first or second applicants. 9. Within 28 days after service on her of a copy of the Orders made on 15 June 2001, the respondent make, file and serve an affidavit which: (a) states the quantity of all computer software, including any CD ROM, which bore, or to which was otherwise applied: (i) any representation of the second applicant's registered trade mark (no. 642678) consisting of the mark "PlayStation" ("the PlayStation mark"); or (ii) any representation of the second applicant's registered trade mark (no. 642679) consisting of the mark "PS" ("the PS mark"); or any mark substantially identical with, or deceptively similar to, the PlayStation or PS marks or in relation to which any mark substantially identical with or deceptively similar to the PlayStation or PS marks was used ("the infringing software") sold by the respondent: (A) up until 10 December 1999; and (B) after 10 December 1999; (b) states the time period in which all such sales of infringing software were made; (c) states the gross sales of the respondent of all infringing software for the period: (i) up until 10 December 1999; and (ii) after 10 December 1999; (d) states the gross profit of the respondent derived from sales of infringing software for the period: (i) up until 10 December 1999; and (ii) after 10 December 1999; (e) annexes or exhibits copies of business records of the respondent which record the calculation of the said gross profit; (f) states the net profit of the respondent derived from sales of infringing software for the period: (i) up until 10 December 1999; and (ii) after 10 December 1999; (g) annexes or exhibits copies of business records of the respondent which record the calculation of the said net profit. 10. Within 28 days after service on her of a sealed copy of the Orders made on 15 June 2001, the respondent deliver up to the applicants' solicitors, Allen Allen & Hemsley, all infringing software in her possession, custody, or control by sending such infringing software by registered mail to GPO Box 50, Sydney 2000 marked to the attention of Miriam Stiel. 11. The respondent provide discovery, within 28 days after service on her of a copy of this Order, of all records in the possession, custody or power of the respondent relating to her past sales or offering for sale of any infringing software. 12. The respondent pay the applicants' costs of the proceeding up to and including 15 June 2001. 13. The applicants serve a copy of this Order, together with a notification of the terms of Order 35 Rule 7 of the Federal Court Rules, on the respondent within 14 days. 14. Liberty be granted to the applicants to apply on 3 days' notice. 15. The proceeding be listed for directions in relation to the outstanding issues at 9.30am on 7 September 2001. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.