This was an appeal from the ultimate disposition at first instance of Deckers’ successful copyright and trade mark infringement claims against various respondents in respect of their use of various UGG marks and the manufacture and sale of counterfeit UGG boots.
Tagged: Federal Court
The Halal Certification Authority has $10 in nominal damages for trade mark infringement against each of Scadilone, White Heaven and Quality Kebabs, but $91,015 additional damages against Quality Kebabs.
Successful patentee not required to amend patent to reflect adverse findings in respect of certain claims before obtaining relief for infringement
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from his Honour’s decision reported above, JAI Products asserted that, because the only patent claims upon which Damorgold succeeded were dependent on claims that had been found invalid, it was necessary for Damorgold to amend the patent pursuant to section 105 of the Patents Act before it was entitled to an order for injunctive relief. JAI Products plainly wished to argue that the Court should exercise its discretion not to amend the patent because of culpable delay or the like.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Case noted on Bugatti GmbH v Shine Forever Men Pty Ltd (No 2)  FCA 171.
Administrators establish power of sale over patent rights held in trust, but not without Court supervision
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. Following on from Neobev Pty Ltd v Bacchus Distilleries Pty Ltd (Administrators Appointed)  FCA 4, where the assignee of certain rights to an invention used to manufacture clean skin spirits obtained a declaration in the Federal Court that the registered proprietor of the corresponding patent held that patent on trust for itself and the applicant as co-owners in equity.
Pre-action discovery application difficult to stomach for potential respondent to patent infringement action
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. AstraZeneca is the patentee of a proton pump inhibitor marketed in Australia as NEXIUM as a treatment for gastric reflux and other stomach acid problems. In late 2013, it sought and obtained pre-action discovery of certain documents submitted by Alphapharm to the Therapeutic Goods Administration in relation to a product, NOXICID, that treats similar conditions. By the present application, AstraZeneca sought pre-action discovery of other documents submitted to the TGA and supporting documentation, and delivery of samples of various NOXICID products.
Respondent’s prior product demonstrations of a competing article sufficient to destroy novelty of most of the claims in the patent in suit
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. The applicants (Damorgold) were the owner and exclusive licensee of a patent for a spring assisted blind mechanism, which had a priority date of 25 August 1999. The issue of the licensee’s right to relief was stayed. Damorgold claimed that JAI Products had infringed a suite of claims of the patent and JAI Products asserted the patent was invalid. In the end, Middleton J found two claims infringed and valid.
Swimwear manufacturer’s use of prior copyright works for “inspiration” steps over the line into infringement.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. This was a claim of copyright infringement brought by Seafolly in respect of three artistic works printed on fabric used to manufacture various of Seafolly’s swimwear and beachwear. It alleged that certain artwork of a similar nature used by the respondent (trading as City Beach) on its products reproduced a substantial part of those works and that reproduction was not the result of independent creation.
Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. These were two appeals from decisions by delegates of the Registrar to allow registration by Telstra of the mark YELLOW in respect of, among other things, online and print phone directories. Each of the applicants (respectively PDCA and Yellowbook) was unsuccessful in opposing Telstra’s application before the Registrar. Yellowbook also appealed the delegate’s decision to allow Telstra’s opposition to Yellowbook’s own application for YELLOWBOOK for the same goods and services. Murphy J dismissed all three appeals.
Failure to comply with an injunction not to infringe someone’s intellectual property right is not only an infringement of that intellectual property right but also a contempt of court. The sanctions for contempt of court are many including, potentially, fines and imprisonment – even in intellectual property cases. The Full Federal Court has confirmed that imprisonment was the appropriate sanction for Mr Vladimir Vaysman’s repeated breaches of injunctions not to infringe trade mark and copyright, but reduced the sentence from 3 years to 2 years.
This case considers the requirements of procedural fairness in an arbitration.
Modified universalism: Full Federal Court protects the rights of a local creditor in a cross-border insolvency
The Full Federal Court has confirmed a “modified universalism” approach to cross-border insolvencies, and provided guidance on what is required for the “adequate protection” of rights of local creditors under the Model Law on Cross-Border Insolvency (‘Model Law’), as enacted in Australia by the Cross-Border Insolvency Act 2008 (Cth).
This case involved enforcement of a foreign award in Australia. Orders were made in aid of enforcement to prevent dissipation of shares in Australian companies owned by the award debtors. The award debtors were not permitted to re-agitate as a ground for resisting enforcement, a ground unsuccessfully agitated by them before the court at the seat of the arbitration to set aside the award.