FEDERAL COURT OF AUSTRALIA Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261 Citation: Facton Ltd v Mish Mash Clothing Pty Ltd (No 2) [2012] FCA 261 Parties: FACTON LTD, G-STAR RAW C.V. and G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) v MISH MASH CLOTHING PTY LTD (ACN 120 628 140) and ILHAMI YILDIRIM File number: VID 833 of 2010 Judge: JESSUP J Date of judgment: 9 March 2012 Legislation: Copyright Act 1968 (Cth) s 37 Trade Marks Act 1995 (Cth) s 120 Federal Court Rules 2011 r 22.03 Date of hearing: 9 March 2012 Place: Melbourne Division: GENERAL DIVISION Category: No Catchwords Number of paragraphs: 4 Counsel for the Applicants: Mr T Cordiner Solicitor for the Applicants: Middletons Counsel for the Respondents: Mr L Merrick Solicitor for the Respondents: Banki Haddock Fiora IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 833 of 2010 BETWEEN: FACTON LTD First Applicant G-STAR RAW C.V. Second Applicant G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) Third Applicant AND: MISH MASH CLOTHING PTY LTD (ACN 120 628 140) First Respondent ILHAMI YILDIRIM Second Respondent JUDGE: JESSUP J DATE OF ORDER: 9 MARCH 2012 WHERE MADE: MELBOURNE THE COURT DECLARES THAT: 1. By offering for sale and selling jeans bearing the following labels as trade marks: (a) (Black Label Mark); and (b) (White Label Mark); the first respondent has infringed Australian registered trade mark No. 883618 pursuant to section 120 of the Trade Marks Act 1995 (Cth). 2. By importing for the purposes of sale: (a) jeans bearing the Black Label Mark and the White Label Mark; and (b) shirts bearing the following label: (the MISH MASH Label); the first respondent has infringed pursuant to section 37 of the Copyright Act 1968 (Cth) the second applicant's copyright in the following work: THE COURT ORDERS THAT: 3. By 4:00 pm on 20 March 2012, the first respondent deliver up to the first and second applicants (or their nominated agent): (a) any garments in its possession, power, custody or control or the possession, custody or control of its officers or employees, which bear either the Black Label Mark, the White Label Mark or the MISH MASH Label; and (b) any brochures, pamphlets, advertising materials, labels, swing tags, promotional or marketing materials in its possession, power, custody or control or the possession, power, custody or control of its officers or employees, which bear the Black Label Mark, the White Label Mark or the MISH MASH Label. 4. The first respondent, whether by itself, its director, employees, servants, agents or otherwise howsoever, be restrained from: (a) manufacturing, importing, marketing, promoting, advertising, exhibiting in public, offering for sale, selling or supplying clothing bearing the White Label Mark; (b) disposing of or dealing with the items identified in order 3 above in any other way than in accordance with order 3 above; and (c) authorising, causing, procuring or inducing any other person to do any of the acts referred to in paragraph (a) of this order. 5. Save as aforesaid, the proceeding be dismissed. 6. Rule 22.03 of the Federal Court Rules 2011 (Cth) not apply with respect to paragraph 8 of the applicants' Notice to Admit dated 24 August 2011. 7. The first respondent pay 75% of the first and second applicants' costs, not including costs incurred only – (a) in prosecuting their case against the second respondent; or (b) on behalf of the third applicant. 8. The applicants pay the costs of the second respondent, not including costs incurred jointly with the first respondent. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 833 of 2010 BETWEEN: FACTON LTD First Applicant G-STAR RAW C.V. Second Applicant G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) Third Applicant AND: MISH MASH CLOTHING PTY LTD (ACN 120 628 140) First Respondent ILHAMI YILDIRIM Second Respondent JUDGE: JESSUP J DATE: 9 MARCH 2012 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 In my reasons for judgment published on 27 January 2012, I held that the importation of garments bearing the labels set out in paras 7-9 of those reasons gave rise to an infringement of copyright in the applicants' work under s 37 of the Copyright Act 1968 (Cth). I made no finding under s 37, one way or the other, with respect to the label set out in para 10. 2 Orders are yet to be made to give effect to my reasons, and the applicants have sought that any decisions of copyright infringement, and any corresponding declarations, include the label set out in para 10. Counsel for the respondents did not resist my now taking account of that label, and deciding the copyright matter on its merits. That label was part of the applicants' copyright case, but no specific attention was given to it at trial, the parties focussing their attentions on the matters that were more controversial as they perceived them. 3 I would apply the observations and findings which I made in paras 32-40 of my reasons of 27 January 2012 also to the label set out in para 10 of those reasons. Although not so conspicuously derived from the applicants' work as the labels set out in paras 7-9, this label nonetheless bears sufficient marks of derivation as to compel the conclusion, in the absence of evidence from the respondents, that it was copied, directly or indirectly, from the applicants' work. A substantial part has been taken, constituted by the central band bearing the word "ORIGINALS" and the oblong shape in the lower, right-hand, quadrant over which the word "DENIM" appears. Although accounting to only about half of the total, the part of the copyright work so taken was substantial in the qualitative sense of being a striking, distinctive, visual feature of the work. 4 For those reasons, I would extend my original copyright conclusions to the label set out in para 10 of my reasons of 27 January 2012. I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jessup. Associate: Dated: 27 March 2012