CONTENTIONS
45 For the reasons set out in the review of the seven emails above, Infa-Secure claimed that each of those emails was:
(a) misleading and deceptive, or likely to mislead or deceive; and
(b) a false or misleading representation concerning the existence of a right or remedy within the meaning of section 29 of the Australian Consumer Law.
46 Infa-Secure submitted there was no basis for Ms Crocker to claim that any item of the Securap device was her property as the patent she had previously held with her husband had lapsed in 1998 when Maternally Yours ceased trading. Further it contended that Ms Crocker had done nothing by the way of marketing the Securap device for many years and she could not therefore claim any reputation in the marketplace with respect to it. It also submitted that the Securap device itself was not capable of attracting copyright as it did not fall within any of the categories set out in s 10 of the Copyright Act and there was no suggestion that Ms Crocker achieved a work of artistic merit, as distinct from a simple, functional device, relying on the High Court's decision in Burge v Swarbrick (2007) 232 CLR 336; [2007] HCA 17.
47 Infa-Secure submitted that all of the emails, whilst perhaps appearing to assert legal rights, were actually designed to injure a competitor in the marketplace, relying on a decision of the Full Court in Madden v Seafolly Pty Ltd (2014) 313 ALR 1; [2014] FCAFC 30 (Madden). It submitted that Ms Crocker's conduct arose from two commercial relationships, namely, the supply of the Securap device by Maternally Yours and the royalties arrangement between Ms Crocker and the predecessor company, Infa Products.
48 Although it claimed it was not necessary to demonstrate a risk of future contraventions of ss 18 and 29 of the ACL to obtain an injunction order under s 232, it contended that, if there were such a risk, that would affect the scope of any injunction the Court may order. Accordingly, it submitted that the threat of future contraventions justified the injunctive relief being granted in more general terms and relied on the following matters in support of this contention:
(a) Ms Crocker's contempt of the interlocutory undertaking she gave;
(b) [Ms Crocker] continuing to peddle the lie that she was confused as to the identity of Infa-Secure when she commenced QUD647/ 2014;
(c) [Ms Crocker] abusing the process of the Court by filing multiple interlocutory applications for the same summary relief;
(d) [Ms Crocker's] admissions to acting tactically to avoid legal consequences throughout this proceeding.
49 Infa-Secure submitted that, as Ms Crocker had no valid claim to ownership to any instance of the Securap device, nor any reason to assert that she had any right or action against the traders to whom she sent the seven emails set out above, the contents of those emails therefore constituted a groundless threat within the meaning of s 202 of the Copyright Act. In this respect, Infa-Secure also placed particular emphasis on an additional email Ms Crocker sent to Ms Chrysiliou, Infa-Secure's lawyer, dated 5 November 2014, which stated:
COPYRIGHT CEASE AND DESIST LETTER
…
I am writing to direct you immediately to cease and desist from reproducing, selling, advertising and distributing my copyright property Securap.
I am the sole owner of copyright in Securap and I am the developer of the same. As the sole owner of copyright for Securap, I hold the exclusive right to reproduce, modify, post, and distribute those materials and to grant others permission to exercise one or more of those rights.
Accordingly, Infa Secure Pty Ltd has no lawful right to copy, distribute, advertise, offer for sale and/or sell any material that copies, in whole or in part, or is based on my Securap product. I demand that you immediately:
1. Remove all products from your sales distribution.
2. Destroy copies of the Securap including any advertising materials.
3. Provide written assurances to me that you have complied with these directives and will not in the future accept for sale or sell any of my copyrighted materials.
Orders for costs and damages are to be pursued in the Federal Court of Australia. Retailers are to be served a copy of same letter addressed individually no later than Friday the 7th November 2014.
…
(Errors in original)
50 In its amended statement of claim, Infa-Secure claimed that, in this email, Ms Crocker had represented that she owned the copyright in the following items, and that in dealing with the Securap device, Infa-Secure was infringing that copyright:
(a) the name Securap and Secur-ap;
(b) packaging design for the [Securap device];
(c) user instructions for the [Securap device];
(d) slogans for the [Securap device]; and
(e) all promotional materials for the [Securap device].
In its submissions, Infa-Secure contended that "the language of [the above] email fits within [s 202]".
51 Infa-Secure also relied upon another email which, it submitted, evidenced a groundless threat within the meaning of s 202. That email was sent by Ms Crocker to Mr Van Der Westhuizen, Ms Chrysiliou, Ms Lynne Milham and Mr Matthew Horsfall on 1 June 2017. In it, Ms Crocker stated:
…
[Y]ou will have my affidavit on Monday outlining the entire history of fact which the Court cannot ignore or deny and an outline of all Commonwealth Acts offences including trademark, patent, copyright, corporations, statutory declarations, bankruptcy and so on.
I envisage that your clients application will be dismissed entirely at which time I will investigate criminal proceedings against all persons who have assisted the fraud and seek immediate remedy of the Court for the harm your clients fraudulent application has done.
I remind you that in 12 days time I am free to take this public and will be.
(Errors in original)
52 With respect to the declaration Infa-Secure sought that it had obtained goodwill or reputation in the Securap device, Infa-Secure submitted that "it was Maternally Yours which traded in the [Securap device] until … 1998" and there was "no evidence that Ms Crocker has separately traded in the product at all". It also pointed to the fact that, in her proceeding (QUD 647 of 2014), Ms Crocker had claimed that Infa-Secure had infringed her common law trademark and had therefore accused it of passing off, and contended that the declaration it sought was necessary to resolve this dispute. Further, it submitted that there was "no prospect of Ms Crocker establishing a current reputation in the [Securap device]" and that any claim for passing off would fail according to the test in Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196 at 204. As has already been noted above, these submissions contended that Ms Crocker had no reputation in the device rather than advancing Infa-Secure's claim that it held that reputation in it.
53 Finally, Infa-Secure submitted that it had suffered loss as a result of the false and misleading representations made by Ms Crocker. In support of this submission, it relied on an affidavit by Mr Matthew Horsfall where he stated that:
Many of Infa's customers were concerned by representations made to them by Ms Crocker … In order to allay some of those concerns, Infa recalled stock of the [Securap device] from several retail customers of Infa. The value of the recalled stock amounted to $22,448.72 (wholesale, excluding GST). Infa credited its customers from whom stock was recalled with the purchase price of the stock and destroyed the stock.
Additionally, Mr Horsfall stated that in early 2015, "Infa sent several sales of its staff to meet with … retailers … to discuss the representations made by Ms Crocker" including "Toys 'R' Us (Australia) Pty Ltd, Baby Factory, BabyCo, Baby Zone/My Baby Warehouse, Sydney Baby Kingdom, Baby Mode and Baby Bunting." As well, Infa-Secure staff were obliged to spend extra time discussing Ms Crocker's claims with its customers and allaying concerns relating to them.
54 In her defence, Ms Crocker claimed that Infa-Secure was unknown to her and consequently it was not possible for her to have made any representations about it. Ms Crocker claimed that her dispute was with a company of a similar name, namely Infa Products. She also claimed that all of the email communications involved a proper assertion of her intellectual property rights and that she had not made any false or deceptive representations about those rights. She also claimed that the dispute relating to her intellectual property rights was governed by the Copyright Act and not by the ACL.
55 In her written and oral submissions, Ms Crocker advanced numerous discursive contentions. They included claims that this proceeding was really directed towards obtaining a ruling to override previous decisions of this Court, as well as the Delegate of the Registrar of Trademarks, and was designed to obstruct her right to justice. She also claimed that this proceeding was tainted by fraud; that any commercial restraint placed on her would mean that she would have to remove her existing products from the market; that a Horsfall entity had successfully locked her out of the market by duplicating the Securap device; that Infa-Secure had failed to file correctly; that Infa-Secure's lawyers were not "filed as representing lawyers"; and that Infa-Secure had breached certain provisions of the Corporations Act 2001 (Cth).
56 Further, Ms Crocker claimed that Infa-Secure had no reputation in the Securap device and, to the extent that its predecessor did, that reputation was gained through false attribution. In this respect, she claimed Infa-Secure had admitted it knew that she was the inventor of the Securap device, but was under the impression that she had abandoned it and had thereafter begun producing the device in its own right. Additionally, Ms Crocker claimed that the transfer of intellectual property rights from Infa Products, the predecessor company to Infa-Secure, did not occur until 2015. As well, Ms Crocker claimed that Infa-Secure's lawyers had threatened her with groundless legal actions, which constituted misrepresentations on their part. Finally, Ms Crocker claimed that her correspondence was privileged as she sent the emails in the context of the commencement of legal proceedings.