Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Limited

GREENWOOD J: 1 These proceedings are concerned with the orders to be made arising out of the judgment in the principal proceeding given on 15 March 2019: Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Limited [2019] FCA 355. These reasons must be read in conjunction with the reasons in the primary judgment in order to give contextual significance to the observations made in these reasons. 2 In that proceeding, the applicant was successful in relation to particular examples of infringement by the first respondent ("Redbubble") of particular trade marks of which the second respondent, Hells Angels Motorcycle Corporation, is the registered proprietor in Australia. The applicant was unsuccessful in relation to the copyright causes of action it pressed in the principal proceeding. 3 The parties have put on supplementary material in the form of an affidavit by Mr Bolam filed on 25 March 2019 and an affidavit of Mr Hansen filed on 12 April 2019 on behalf of the applicant and an affidavit of Mr Toy filed on 10 May 2019. The parties have also put on supplementary submissions going to the question of the relief to be granted. 4 In the principal judgment, a question arose as to whether the applicant was seeking any declarations as to any relevant matter. In particular, the Court had in mind and sought clarification about whether the applicant was seeking a declaration explanatory of any aspect of the relief to be granted in respect of causes of action in which it was successful. For example, the applicant was successful in aspects of its trade mark case. However, its standing to bring the proceeding was based upon its contention that it was at the relevant time, and is, an authorised user of the trade marks in suit for the purposes of the Trade Marks Act 1995 (Cth) (the "Act"). A declaration as to that matter would serve some utility in explaining an aspect of the relief the applicant seeks in relation to the trade mark infringements as found. 5 The applicant seeks a range of declarations in relation to matters concerning its copyright claims. There is no utility in making declarations about any of those matters. The applicant was unsuccessful in relation to those claims. The role of the Court is to quell the controversy before it and there is no utility in making declarations about aspects of fact finding (as the Court is encouraged to do) made concerning particular matters addressed in the course of the resolving the controversy where that particular matter has no bearing on the subject matter of the remedy to be granted. Moreover, declarations are not made to the world at large. A declaration which declares a position as between the parties to the controversy has utility if it goes to aspects of a matter relevant to the ultimate relief, as already mentioned. In the proceeding as originally framed, the applicant did not seek any declarations. However, it seems to me appropriate to make a declaration as to the standing of the applicant for the purposes of the Act in aid of the relief going to the trade mark infringements as found. 6 As to the trade mark infringements, I have had regard to the further affidavit of Mr Toy and I have had regard again to the observations contained in the primary judgment about Mr Toy's principal evidence. That discussion can be found at [248] to [293]. I have also had regard to the observations in the primary judgment about the evidence of Mr Hosking. In the evidence of Mr Toy, great weight and emphasis is attached to what I will generally describe as the "moderation" protocols adopted by Redbubble in order to address the concern of a trade mark owner in relation to his, her or its trade marks uploaded to the Redbubble website. Those trade marks are then subjected to the transactions, effected through the Redbubble website, as described in the primary judgment. Redbubble asserts that deploying these moderation protocols is a mechanism by which allegations of infringing use of a trade mark might be addressed. The applicant says that its entitlement to a remedy is conditioned by having established infringing conduct on the part of Redbubble. Although, as a question of remedial law, the grant of an injunction involves the exercise of a discretion, the applicant says that it should not be deprived of a remedy simply because Redbubble wants to operate its website (and its business model) on the footing that the applicant should be brought within Redbubble's moderation protocols which, in effect, would become the defining features of the scope of the applicant's right to prevent continuing infringement of its trade marks. 7 Apart from these matters, it should be noted that at no point has Redbubble offered an undertaking to the applicant not to use, as a trade mark in Australia, any of the Australian registered trade marks of Hells Angels Motorcycle Corporation ("HAMC") or a sign that is substantially identical with or deceptively similar to any of those trade marks in relation to any goods or services in respect of which any such trade mark is registered, without the licence or authority of HAMC. 8 Redbubble has not offered that undertaking because it says that giving effect to it would be particularly burdensome having regard to the vast number of items uploaded to the Redbubble website comprised of names, titles, logos and images. It also says that its moderation protocols are apt to quickly deal with any contentions of infringement or other improper use of a party's trade mark, and that the applicant, in effect, can find its utilitarian remedy by engaging with Redbubble's moderation protocols. It also says that being restrained from using the applicant's trade mark or a sign that is substantially identical with or deceptively similar to any of the applicant's trade marks, as a search tag in interrogating the website, would make it very difficult to find, on the website, any name, title or device which might give rise to a concern on the part of the applicant as to the use of its name, title, logos or signs. 9 Nevertheless, Redbubble has established a business methodology which encourages individuals to upload names, titles, artworks, images, logos and a wide range of such things. The risk in that business model is that one or more of those things might involve the exercise of the rights of others in the relevant subject matter. There is no particularly good reason why entities or individuals enjoying rights, according to law, should have those rights reduced to the business methodologies adopted by the entity enabling the conduct and, where relevant, engaging in conduct which infringes the rights of others. 10 Part of the difficulty the applicant has with Redbubble's self-regulation protocol in the form of its moderation protocols is illustrated in the discussion of Mr Toy's evidence in the principal judgment at the paragraphs earlier mentioned but, in particular, in relation to the matters at [276] to [293] of the primary judgment. I have also had regard to Mr Toy's further evidence on the moderation matters. 11 Redbubble ultimately does not oppose the making of an order framed in terms of restraints upon Redbubble from using particular examples of signs and images complained about by the applicant, as a trade mark, in relation to goods or services with respect to which the trade marks are registered. However, it seeks to qualify those restraints providing that they would operate "only if, and only to the extent that, [Redbubble] has not Proactively Moderated the Redbubble Website in respect of those examples in accordance with the Hells Angels Guidelines (as those terms are defined in paragraphs 38 and 70 of the affidavit of James Norman Toy affirmed 27 July 2017)". 12 I am not satisfied that the restraint ought to be qualified in that way having regard to the matters I have already mentioned. 13 Accordingly, I propose to make orders in these terms: (1) A declaration that Hells Angels Motorcycle Corporation (Australia) Pty Limited is an authorised user for the purposes of the Trade Marks Act 1995 (Cth), in Australia, of the registered trade marks in suit of Hells Angels Motorcycle Corporation being registered trade marks 723219, 1257992, 723463 and 1257993. (2) A declaration that Redbubble Limited, by using in Australia on a website identified as [www].redbubble.com (the "Redbubble website"), the sign "a Unisex T/shirt Hells Angels MC Virginia" identified in Attachment E to the Third Further Amended Statement of Claim ("FASOC") (Example 1), has infringed registered trade marks 723219, 1257992, 723463 and 1257993. (3) A declaration that Redbubble Limited, by using in Australia on the Redbubble website, the sign "1st Hells Angels T November 2015" in Attachment E to the FASOC (Example 3), has infringed registered trade marks 723463 and 1257993. (4) A declaration that Redbubble Limited, by using in Australia on the Redbubble website, the sign "Death before Dishonour Design" in Attachment E to the FASOC (Example 4), has infringed registered trade marks 723219, 1257992, 723463 and 1257993. (5) An order that Redbubble, by itself, its servants or agents, and without the licence of the applicant or the Second Respondent, be restrained from: (a) using Example 1 as a trade mark in Australia in relation to the goods or services in which trade marks 723219, 1257992, 723463 and 1257993 are registered, and insofar as those trade marks remain registered; (b) using Example 3 as a trade mark in Australia in relation to the goods or services in which trade marks 723463 and 2157993 are registered, and insofar as those trade marks remain registered; (c) using Example 4 as a trade mark in Australia in relation to the goods or services in which trade marks 723219, 1257992, 723463 and 1257993 are registered, and insofar as those trade marks remain registered. 14 I have given consideration to the question of whether a further injunction ought to be granted which restrains Redbubble from using, as a trade mark in Australia, any of the Australian registered trade marks of HAMC or a sign that is substantially identical with or deceptively similar to any of those trade marks, in relation to any goods or services in respect of which any of them is registered, without the licence or authority of HAMC. 15 However, the difficulty I have with an injunction framed in terms of the statutory language of the Act is that it begs the question ultimately of whether a particular example of use of a particular sign, complained of by the applicant, involves a contravention of the order and thus contempt. The applicant, having established infringement of the relevant trade marks in relation to particular examples of conduct, is entitled to orders framed in terms of the conduct. If there are either now, or later, examples of further use of particular subject matter which is said to infringe the rights of the applicant, the applicant would need to make that contention good, if it is, or remains, in controversy. Granting an injunction in terms of the statutory language will never avoid the controversy itself. 16 Accordingly, I propose to make orders in the terms described above. 17 The costs of the proceeding will be reserved. The parties are requested to conduct discussions with a view to establishing procedural orders for the filing and serving of submissions in relation to costs. The parties are requested to submit proposed orders for that purpose to my Associate. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.