State of Escape Accessories Pty Limited v Schwartz [2020] FCA 1606

FEDERAL COURT OF AUSTRALIA

State of Escape Accessories Pty Limited v Schwartz [2020] FCA 1606 File number: VID 521 of 2018

Judgment of: DAVIES J

Date of judgment: 6 November 2020

Catchwords: COPYRIGHT – artistic works – whether applicant's neoprene tote bag is a "work of artistic craftsmanship" within the meaning of s 10(1) of the Copyright Act 1968 (Cth) (Copyright Act) – application of principles in Burge v Swarbrick [2007] HCA 17; 232 CLR 336 – neoprene tote not a work of artistic craftsmanship – no copyright subsists – copyright claim dismissed – consideration of whether infringement would have occurred if copyright subsisted – where respondent used images of applicant's neoprene tote bag as basis for designs and imported articles manufactured overseas – whether respondent's tote bag reproduced applicant's neoprene tote bag in a material form – originality of use of neoprene and sailing rope to produce applicant's neoprene tote bag – reproduction of the combination of materials constituted a qualitatively significant part of the neoprene tote bag – consideration of whether importation and sale of articles contravened ss 37 and 38 of Copyright Act – whether respondent knew or ought to have known that reproduction of the alleged work would have constituted contravention of copyright if reproduced in Australia – conduct would have infringed ss 36, 37 and 38 of Copyright Act if copyright subsisted – innocent infringement defence under s 115(3) of Copyright Act not established – award of additional damages under s 115(4) would not be warranted on facts of case CONSUMER LAW – misleading or deceptive conduct and false or misleading statements under ss 18(1) and 29(1)(a) of Australian Consumer Law (ACL) – whether respondent's conduct misleading or deceptive due to similarities of appearance of bags – where evidence established respondent's tote bag mimicked applicant's neoprene tote bag – where respondent's mark appeared clearly on bags and in trade channels – where price of product meant consumers would take care to assess product before purchase – misleading and deceptive conduct on basis of similarity of appearance not established – respondent admitted to making certain false and misleading statements – declaratory relief to be ordered and damages to be assessed – accessorial liability of director under s 236(1) of ACL – whether director "involved in" contravening conduct within the meaning of s 2(1) of ACL – whether director had actual knowledge of the "essential facts constituting the contravention" – director was party to the contravening conduct and knew of the underlying facts pointing to falsity or misleading nature of the statements in issue – director liable under s 236(1) of ACL TORTS – passing off – applicant's reputation in product not established – passing off not established – accessorial liability of company director not established – insufficient to attribute liability to director as joint tortfeasor merely on the basis that whilst acting in capacity as a director they caused or directed the company to engage in the unlawful act or acts