The Pokemon Company International, Inc v Pokemon Pty Ltd (No 2) [2023] FCA 1507

Federal Court of Australia

The Pokémon Company International, Inc v Pokemon Pty Ltd (No 2) [2023] FCA 1507 File number: NSD 1125 of 2022

Judgment of: YATES J

Date of judgment: 1 December 2023

Catchwords: PRACTICE AND PROCEDURE – application for default judgment pursuant to r 5.23 of the Federal Court Rules 2011 (Cth) – where application and supporting material not yet served on third respondent – whether hearing of application should proceed

Legislation: Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) ss 18, 29 Federal Court Rules 2011 (Cth) rr 5.22, 5.23, 16.32

Cases cited: Chamberlain Group, Inc v Giant Alarm System Co, Ltd (No 2) [2019] FCA 1606

Division: General Division

Registry: New South Wales

National Practice Area: Intellectual Property

Sub-area: Copyright and Industrial Designs

Number of paragraphs: 17

Date of hearing: 28 November 2023

Counsel for the Applicant: Ms C Cunliffe

Solicitor for the Applicant: Corrs Chambers Westgarth

ORDERS NSD 1125 of 2022

BETWEEN: THE POKÉMON COMPANY INTERNATIONAL, INC. Applicant

AND: POKEMON PTY LTD First Respondent

XIAOYAN LIU Second Respondent

KOTIOTA STUDIO Third Respondent

order made by: YATES J DATE OF ORDER: 1 DECEMBER 2023

THE COURT ORDERS THAT:

1. Pursuant to r 10.24 of the Federal Court Rules 2011 (Cth) (the Rules), the applicant's interlocutory application for default judgment dated 24 October 2023, evidence in support (being paragraphs 7 to 10, 16, 17, 27, and 28 of the affidavit of David Gabriel Fixler affirmed on 19 December 2022 and Mr Fixler's affidavits affirmed on 20 December 2022 and 26 April, 11 July, 8 August, and 24 October 2023) and written submissions dated 21 November 2023 will each be taken to have been served on the third respondent upon the solicitors for the applicant emailing these documents to the email addresses: davidbush78@gmx.com; info@pokeworld.game; info@kotiota.com.au; OsheaHayes31@outlook.com; and pokemon.pty.ltd@outlook.com. 2. The applicant serve the material referred to in Order 1 together with these orders and the orders made on 3 October 2023 on the third respondent (in the manner contemplated by Order 1) on the date these orders are made. 3. The applicant file by no later than 4.00 pm on 4 December 2023 a further affidavit relating to the service contemplated by Orders 1 and 2. 4. Pursuant to r 5.23(2)(e) of the Rules, and subject to the applicant's compliance with Orders 1, 2, and 3, Orders 5, 6, and 7 take effect 21 days after the applicant's compliance with Order 3, unless within that period the third respondent files and serves on the applicant a notice of address for service, in which event Orders 5, 6, and 7 will not take effect. 5. Subject to Order 4 and pursuant to s 232 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL), the third respondent, whether by itself, its servants or agents, be restrained in trade or commerce from: (a) representing (in any manner whatsoever) that: (i) it is: a. licensed to develop Pokémon Games by or on behalf of the applicant or The Pokémon Company or Nintendo Co. Ltd (Nintendo) or to authorise others to do so; b. affiliated with, associated with, or otherwise connected in the course of trade with, approved by, or authorised by, the applicant or The Pokémon Company or Nintendo, (the Kotiota Representations); (ii) any Pokémon non-fungible tokens (NFTs) issued or offered by it are: a. licensed by the applicant or The Pokémon Company or Nintendo; b. affiliated with, associated with, or otherwise connected in the course of trade with, approved by, authorised by or connected with, the applicant or The Pokémon Company or Nintendo, (the NFT Representations); (iii) the virtual game PokeWorld (PokeWorld) is: a. licensed by the applicant or The Pokémon Company or Nintendo; b. affiliated with, associated with, or otherwise connected in the course of trade with, approved by, authorised by, or connected with, the applicant or The Pokémon Company or Nintendo, (the PokeWorld Representations); (b) using without the license or authority of the applicant, the Pokemon Company and Nintendo: (i) the words "Pokemon", "Pokémon", or "PokeWorld" or any name or word that is misleadingly or deceptively similar to any of those words, in the course of trade for a product or service; (ii) the words "Pokemon", "Pokémon", or 'PokeWorld" or any name or word that is misleadingly or deceptively similar to any of those words, or images of Pokémon characters or the names of Pokémon characters, to promote products or services of the third respondent or any other company or business associated with the third respondent (whether on the website located at the domain name kotiota.com.au or the website located at the domain name pokeworld.game, or on Twitter or on any other website); (iii) launching or allowing access to PokeWorld; and (iv) selling or otherwise making available Pokémon NFTs. 6. Subject to Order 4, and pursuant to s 21 of the Federal Court of Australia Act 1976 (Cth), it be declared that by making the Kotiota Representations, the PokeWorld Representations and the Pokémon NFTs Representations, the third respondent has: (i) engaged in conduct that is misleading or deceptive, or likely to mislead or deceive, in contravention of s 18 of the ACL; (ii) made false representations of sponsorship or approval, in contravention of s 29(1)(g) of the ACL; and (iii) made false representations of sponsorship, approval, or affiliation, in contravention of s 29(1)(h) of the ACL. 7. Subject to Order 4, the third respondent pay the applicant's costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.