Sony Computer Entertainment Australia Pty Ltd v Turner [2002] FCA 142

FEDERAL COURT OF AUSTRALIA

Sony Computer Entertainment Australia Pty Ltd v Turner [2002] FCA 142 PRACTICE AND PROCEDURE – trade mark infringement – no defence proffered – relief sought – whether orders to provide details of gross and net profits permissible

Trade Marks Act 1995 (Cth) s 120 Fair Trading Act 1999 (Vic) ss 9,10,12

Sony Computer Entertainment Australia Pty Ltd v Hinson [2000] FCA 1290 referred to Sony Computer Entertainment Australia Pty Ltd v Reilly [1999] FCA 1694 referred to Sony Computer Entertainment Australia Pty Ltd v Busselmann [2000] FCA 805 referred to Sony Computer Entertainment Australia Pty Ltd and Kabushiki Kaisha Sony Computer Entertainment v Stirling [2000] FCA 784 referred to LED Builders Pty Ltd v Eagle Homes Pty Ltd (1996) 70 FCR 436 considered SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED and KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT v DARREN TURNER N 983 of 2001 CONTI J 22 FEBRUARY 2002 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N 983 OF 2001

BETWEEN: SONY COMPUTER ENTERTAINMENT AUSTRALIA PTY LIMITED

APPLICANT

KABUSHIKI KAISHA SONY COMPUTER ENTERTAINMENT

SECOND APPLICANT

AND: DARREN TURNER

RESPONDENT

JUDGE: CONTI J

DATE OF ORDER: 22 FEBRUARY 2002

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. Within 28 days after service on him of a copy of this order, 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 number 642678 consisting of the mark "PlayStation" (the PlayStation mark); or (ii) any representation of the Second Applicant's registered trade mark number 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 otherwise used (infringing software) sold by the Respondent to date; (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; (d) States the gross profit of the Respondent derived from sales of infringing software; (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; (g) Annexes or exhibits copies of business records of the Respondent which record the calculation of the said net profit. 2. Within 28 days after service on him of a sealed copy of this order, the Respondent deliver up to the Applicants' solicitors, Allens Arthur Robinson, on oath for destruction of all infringing software in his 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. 3. The Respondent provide discovery, within 28 days after service on him of a copy of this Order, of all records in the possession, custody or power of the Respondent relating to his past sales or offering for sale of any infringing software. 4. The Respondent pay the Applicants' costs of this proceeding to date on a party and party basis. 5. The provisions of Order 62 rule 36A of the Federal Court Rules do not apply. 6. Pursuant to Order 62 rule 3(2) of the Federal Court Rules, the Applicants have leave to tax the costs the subject of this Order, such costs to be paid forthwith after taxation. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.