FEDERAL COURT OF AUSTRALIA Sony Computer Entertainment Australia Pty Ltd v Johnston [2001] FCA 912 SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD & ANOR v CHAS JOHNSTON N 811 OF 1999 EMMETT J 19 JUNE 2001 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 811 OF 1999 BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183) FIRST APPLICANT KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT SECOND APPLICANT AND: CHAS JOHNSTON RESPONDENT JUDGE: EMMETT J DATE OF ORDER: 19 JUNE 2001 WHERE MADE: SYDNEY THE COURT DECLARES THAT: 1. The Respondent is guilty of contempt in that: (1) On 17 February 2001, the Respondent infringed the Second Applicant's registered trade mark no. 642678 (the PlayStation Trade Mark) by, without the license of the Second Applicant, offering to supply and supplying in Australia CD ROMS containing software in which are stored electronically a representation of marks that are substantially identical with the PlayStation Trade Mark. (2) On 17 February 2001, the Respondent infringed the Second Applicant's registered trade mark no. 642679 (the PS Trade Mark) by, without the license of the Second Applicant, offering to supply and supplying in Australia CD ROMS containing software in which are stored electronically a representation of marks that are substantially identical with the PS trade Mark. THE COURT ORDERS THAT: 2. The respondent pay the sum of $5000 by way of penalty for that contempt. 3. The respondent pay the applicants' costs of the motion filed on 6 April 2000 on a solicitor and own client basis. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY N 811 OF 1999 BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LTD (ACN 077 583 183) FIRST APPLICANT KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT SECOND APPLICANT AND: CHAS JOHNSTON RESPONDENT JUDGE: EMMETT J DATE: 19 JUNE 2001 PLACE: SYDNEY REASONS FOR JUDGMENT 1 On 8 December 1999, I made orders on the application of Sony Computer Entertainment Australia Pty Ltd and Kabushiki Kaisha Sony Computer Entertainment ("the Applicants"). I declared that the respondent, Chas Johnston, had infringed certain trade marks of the second applicant ("the Trade Marks"). I also ordered that the respondent be restrained from infringing the Trade Marks: · by importing into Australia for sale or for use for the purpose of any trade or business or keeping for sale any computer game or any software, including any CD ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the Trade Marks; · by supplying or offering to supply in Australia any computer game or any software, including any CD ROM or packaging containing any such software, which bears or in which is stored electronically any representation of the Trade Marks. 2 A sealed copy of the orders was served on the respondent on 16 February 2000. The orders contained a note that failure to comply with the order would render the respondent liable to imprisonment or sequestration of property for contempt of court. 3 On 17 February 2000 the respondent sold to one Wayne Gladman four CD ROMS, which contain representations of the Trade Marks stored electronically within them. That sale constituted an infringement of the Trade Marks and a contravention of the orders that I made on 8 December 1999. Accordingly, the Applicants charged the respondent with contempt of the order. The particulars of the charge are as follows: "(1) On 17 February 2001, the Respondent infringed the Second Applicant's registered trade mark no. 642678 (the PlayStation Trade Mark) by, without the license of the Second Applicant, offering to supply and supplying in Australia CD ROMS containing software in which are stored electronically a representation of marks that are substantially identical with the PlayStation Trade Mark. (2) On 17 February 2001, the Respondent infringed the Second Applicant's registered trade mark no. 642679 (the PS Trade Mark) by, without the license of the Second Applicant, offering to supply and supplying in Australia CD ROMS containing software in which are stored electronically a representation of marks that are substantially identical with the PS Trade Mark." 4 The statement of charge and a notice of motion seeking orders that the respondent be found guilty of contempt and be punished were served on the respondent. On the hearing of the motion today, the respondent appeared in person. He admitted the contempt and proffered an apology to the Court and to the applicants. While he gave no evidence, he asserted that he was tempted to engage in the conduct with which he has been charged because he had debts to pay. He accepts that it was "a stupid thing to do". He has given an assurance to the Court that such conduct will not occur again. 5 The respondent said that he had not appreciated, notwithstanding the terms of the order and the note on it, that failure to comply with the order could lead to the imposition of a fine. The respondent is an undischarged bankrupt. I have no information as to the circumstances that led to the sequestration order nor do I have any information concerning the assets and likely income of the respondent. He tells me, however, that he is unemployed. 6 The contempt is a serious one and it is one that requires punishment. The applicants do not ask for any custodial punishment, but suggest that a fine is appropriate. It is difficult to determine the amount that would be appropriate in the absence of any information concerning the circumstances of the respondent. I consider, however, that an appropriate fine would be $5000. Accordingly I find the respondent guilty of contempt of the orders made on 8 December 1999 in the particulars contained in the statement of charge filed on 6 April 2001. 7 There has been no suggestion that the respondent was unaware that his conduct was in breach of the orders that I made. The applicants have been put to the expense of coming to Court to uphold the Court's orders. They should not be out of pocket. Accordingly, their costs should be borne on a solicitor and own client basis. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett. Associate: Dated: 16 July 2001 Counsel for the Applicant: Mr S Finch Solicitor for the Applicant: Allens Arthur Robinson Counsel for the Respondent: In person Date of Hearing: 19 June 2001 Date of Judgment: 19 June 2001