Damages - breach of copyright, passing off and misleading or deceptive conduct - whether a claim for exemplary damages should be allowed - whether fraud established in the context of passing off - evidence lacking in definition of actual damage suffered - damages for loss of goodwill and reputation and diminution in value of copyright.

Counsel for the First Mr J.M. Ireland QC and Mrs I. Ryan

Judgment for the First Applicant against the First and Third Respondents in the sum of $12,136.50.

Judgment for the First Applicant against the First Respondent in the sum of $3,625.00.

Judgment for the Second Applicant against the First and Third Respondents in the sum of $3,625.00.

Judgment for the Second Applicant against the First Respondent in the sum of $5,800.00.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

In these proceedings, the applicants, Star Micronics Pty Limited (Star Australia), a company incorporated and carrying on business in Australia, and Star Micronics Co Limited (Star Japan), a company incorporated and carrying on business in Japan, sought relief in respect of alleged breaches of the Copyright Act 1968 (Cth), of the Trade Practices Act 1974 (Cth) and in respect of passing off.

2. The question of liability has earlier been considered and judgment was given on 9 October 1990 (reported (1990) 18 IPR 225). At the commencement of the hearing on liability, counsel for the second respondent, All Data Australia Pty Limited ("All Data"), gave certain undertakings and the proceedings against All Data were resolved by consent. Liability was, however, contested by Five Star Computers Pty Limited ("Computerfair") and by its managing and principal director, Mr G.P. O'Neill.

3. Star Japan is the manufacturer in Japan of a wide range of computer equipment including printers, which it distributes under the name of "Star" or "Star Micronics". Under a Distributorship Agreement dated 18 December 1986, Star Australia was granted by Star Japan the exclusive right in Australia to distribute Star products, one of which, the Star NX-1000 printer, is the subject of these proceedings. Star Australia ceased to distribute the printer under the name "NX-1000" about the end of 1989, although it continued to distribute the same or an equivalent printer under another title.

4. Star Japan produced several different models of its NX-1000 printer, one being designed for distribution in countries such as Australia which have a 240v electricity supply, another model for Hong Kong, Singapore and other countries which have a 220v power supply and another model for countries which have a 110v power supply. The printers distributed by Star Australia were the 240v models. For each area, different printers were produced for printing in black alone or in several colours.

5. All Data wrongly imported into Australia some 220v Star NX-1000 printers, both mono printers and colour printers. Apparently, All Data purchased the printers from a source in Hong Kong, which source was not authorised to sell in Australia. All Data sold 71 printers to Computerfair, 65 of which Computerfair sold to members of the public.

6. Computerfair carried on business as a retailer of computers and associated products. It is not suggested that Computerfair was the principal retail outlet for the 220v printers which were imported from Hong Kong. The evidence shows merely that Computerfair acquired 30 mono and 41 colour printers from All Data, the last 21 colour printers being acquired in August 1989 after these proceedings had commenced.

7. In November 1988, Computerfair obtained 50 240v colour printers from Star Australia. A further order for 100 colour printers was placed with Star Australia on or about 3 December 1988. Star Australia was, however, short of sufficient printers and supplied 25 only in January 1989. In the meantime, in December 1988, Computerfair ordered and received another 20 colour printers from Star Australia. It ordered another 50 colour printers from Star Australia in April 1989, but Star Australia refused supply.

8. One matter contributing to bring about the termination of business between Computerfair and Star Australia was that Computerfair was tardy in payment. Thus, total payment for amounts debited in November and early December 1988 was not received until early March 1989 and the goods delivered on 5 January 1989 were not paid for until payment was insisted upon in April 1989 That payment was made when Mr B.S. Elliott of Star Australia insisted that certain goods ordered in April 1989 would only be delivered in exchange for a cheque. Mr Elliott considered that Computerfair had not complied with Star Australia's credit terms, namely, payment within 30 days of invoice.

9. The purchases which Computerfair made from All Data of the 220v Star NX-1000 printers may have contributed to bringing the business relationship to an end, though Mr Elliott denied this. Star Australia first became aware of Computerfair's involvement with 220v printers when, in late February, Computerfair sent such a printer to Star Australia for repair under warranty, which Star Australia refused to do. But no action was then taken by Star Australia against Computerfair.

10. In the reasons for judgment given on the issue of liability on 9 October 1990, I held that the sale of the 220v printers breached the copyright owned by Star Japan of which Star Australia was the licensee, the copyright subsisting in the ROM in the printer. I held that there was knowledge on the part of Computerfair and of Mr O'Neill, not actual knowledge but knowledge for the purposes of s.38 of the Copyright Act, and that the sales by Computerfair of the 65 printers breached s.38 of the Copyright Act.

11. At the hearing on liability, three customers of Computerfair, Mr S.v Harrison, Mr G. Watmore and Mr G.J. Angel, each gave evidence respecting the purchase which he made from Computerfair. Each gave evidence that he had seen in the premises of Computerfair dodgers for the Star mono printer and for the Star colour printer. Each of the dodgers, which had been put out by the Star organisation and had the address and telephone number of authorised distributors printed thereon, had had stamped on it the name "Computerfair" and Computerfair's address and telephone number. Mr Harrison and Mr Watmore gave evidence that, at the time of purchase, they were informed by Mr Smith of Computerfair that the printer was covered by warranty. This evidence established false representations as to warranty and a false representation implied from the dodgers and the circumstances surrounding the sales that the printers sold had been produced for use with Australia's 240v power supply. The use by Computerfair of the Star dodgers and the placement of Computerfair's name thereon were also found to be representations that the goods sold by Computerfair were goods with which Star Australia was associated. Mr Harrison, Mr Watmore and Mr Angel dealt with Computerfair during the months March to May 1989. There was no other evidence as to the period when the dodgers were on display.

12. The third respondent was found to be personally liable in respect of the passing off and certain of the breaches of s.52 of the Trade Practices Act. On 26 November 1990, in addition to the undertakings which were given to the Court by the respondents, the following orders were made:-

"2. DECLARE that the second applicant is the owner of

copyright subsisting in a computer program the object code

of which is contained in the read only memory ("ROM")

embodied in the machines known as 220 volt "Star" NX-1000

computer printers.

3. DECLARE that the first respondent has infringed the

said copyright by selling, offering for sale, exposing for

sale and exhibiting in public by way of trade 220 volt

"Star" NX-1000 computer printers.

4. DECLARE that the first respondent has contravened

s.52, s.52(a) (sic), s.53(aa), s.53(c), s.53(d), s.53(g) of

the Trade Practices Act 1974 by:

a) Falsely representing to Mr Harrison

in or about March 1989 that a

printer sold to him by the first

respondent carried a warranty by the

first applicant or the second

applicant.

b) Falsely representing to Mr Harrison

in May 1989 that a printer sold by

the first respondent to Mr Harrison

carried a warranty by the first

applicant or the second applicant.

c) Falsely representing to Mr Watmore

on about 22 March 1989 that a

printer sold by the first respondent

to him carried a warranty given or

authorised by the first applicant or

the second applicant.

d) Falsely representing to Mr Watmore

on or about 22 March 1989 that a

printer sold to him by the first

respondent was designed and

manufactured for use with a 240 volt

power supply.

e) Falsely representing to Mr Angel on

or about 3 May 1989 that a printer

sold to him was covered by a

warranty provided by the first

applicant or the second applicant.

f) The use of brochures or dodgers

prepared for the first applicant in

connection with the sale or proposed

sale by the first respondent of 220

volt "Star" NX 1000 computer

printers so as to represent that

those printers were distributed by

or associated with the first

applicant.

5. DECLARE that the third respondent is

pursuant to s.75B of the Trade

Practices Act a person involved in

the contraventions set out in

paragraphs 4(d) and 4(f) above.

6. DECLARE that the first respondent

and third respondent has passed off

220 volt "Star" NX-1000 computer

printers as goods distributed in

Australia by the first applicant.

7. DECLARE that the first respondent

and third respondent has passed off

220 volt "Star" NX-1000 computer

printers as computer printers which

the second applicant has produced

for and made available for

distribution in Australia when in

fact they were not so produced or

made available.

8. ORDER that the quantum of damages

recoverable by the applicants

against the first respondent or the

third respondent or either of them

in consequence of the above findings

of copyright infringement, passing

off and contravention of the Trade

Practices Act be fixed for hearing

before Davies J. on 13 and 14 March

1991."

13. On 12 March 1990, the following particulars of the damages sought had been filed:-

"1. Damages for loss of profits

71 printers @ $200 $ 14,720.00

(This figure is subject to amendment in the

event that the Applicants ascertain that

additional printers have been sold.)

2. Compensation pursuant to the Trade Practices Act for:

(i) costs of printers replaced by the

First Applicant;

2 printers @ $350 $ 700.00

(ii) estimated cost of corrective

advertising to advise the public

that 220 volt "Star" Computer

Printers are not covered by the

"Star" Warranty and

are not intended for use in Australia; $ 20,000.00

(iii) the costs of time involved and

inconvenience suffered by the First

Applicant and its employees in

answering enquiries regarding 220

volt "Star" Computer Printers

purchased from the First Respondent

and advising

purchasers accordingly;

200 hours @ $50 per hour $ 5,000.00

3. Loss of reputation $100,000.00"

14. Liability having been determined, I again, on 26 November 1990, ordered that the applicants file and serve on or before 22 January 1991 particulars of the damages claimed. On 25 February 1991, the solicitors for the applicants wrote to the solicitors for the respondents to say that the applicants intended to rely on the particulars which had been filed in March 1990. On 27 February 1991, upon request, the solicitors for the applicants sent to the solicitors for the respondents a copy of the particulars filed in March 1990.

15. The trial of the issue of damages was first set down for hearing on 13 and 14 March 1991 but those dates were vacated. When the matter later came on for hearing on 17 July 1991, counsel for the applicants sought to amend the particulars of the damages claimed in two important respects, in addition to correcting the figures of $14,720 to $14,200 and $5,000 to $10,000. The first was to claim under the head of passing off the items already appearing in paragraphs 2 and 3 of the particulars filed on 9 March 1990. I allowed this course to be pursued as the respondents were in no way taken by surprise and as the findings on liability included findings with respect to passing off.

16. The amended particulars also sought to claim additional damages under s.115(4) of the Copyright Act and exemplary damages for passing off. I refused to allow such a claim to be made at that late stage. No particulars had been given of the matters which were to be relied upon to constitute the claim for the additional or exemplary damages. The particulars which had been delivered on 9 March 1990 during the course of the hearing on liability had been produced after the Court had ordered that they be filed and served so that both the Court and counsel for the respondents would understand the total ambit of the claim. The particulars were filed and served after some delay and after reminders that they were required so that the Court and counsel for the respondents would understand what were all the issues in the proceedings and their significance.

17. The applicants elected to stand by these particulars rather than to file further particulars and did not file particulars as authorised by the Court's order of 26 November 1990. In the result and in the light of the issues of which notice had been given, the respondents, who had elected not to call oral evidence at the trial, filed no affidavits intended to be relied upon at the hearing on damages.

18. In these circumstances, it would have been unfair to Computerfair and to Mr O'Neill to allow an allegation that their conduct was flagrant to be put forward and for that issue to be determined against them by inference from the evidence which the applicants had adduced.

19. Furthermore, the applicants' evidence did not disclose the general circumstances surrounding the importation of the 220v printers into Australia. The applicants resolved their claim against All Data but gave no evidence as to the quantum of the wrongful importations and practically no evidence putting into context the significance of Computerfair's sales. The evidence does disclose that Star Australia had complaints or inquiries about the 220v printers coming to it from all over Australia. In the absence of better evidence about the matter, it is impossible to put the conduct of Computerfair into context to determine whether it formed part of a common pattern of trade or involved individual wrongdoing which should be reflected in an award of exemplary damages. No notice having been given of the issue, it was not explored in the evidence.

20. I allowed a claim to be put under s.115(4), but only insofar as it reflected the matters of which notice had already been given, and not as raising the issue of flagrant conduct on the part of Computerfair and Mr O'Neill. The claim for damages is therefore limited to items in respect of which compensatory damages are sought.

21. The applicants did not seek an account of the profits made by Computerfair, presumably because, taking 65 sales at an assumed profit of $150 per sale, the resultant claim would amount to only $9,750.

22. Counsel for Computerfair submitted that no damages should be awarded for the passing off, for it was not shown that the steps taken by Computerfair were fraudulent. It is not necessary for me to discuss the authorities which have been examined by Gummow J. in 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 at 319-323, and in "The Law of Passing Off" by Wadlow, paras 4-07, 7-12 and 7-13. If a trader takes or persists in taking the action that constitutes a passing off when he has knowledge of the other trader's rights or claims, damages may be awarded. The taking of such action which benefits the one trader and which is detrimental to the other is, in the context of notice, sufficient fraud for this purpose. Thus, the giving of notice has been thought to be a touchstone of an award of damages. See e.g. C.G. Vokes Ltd v Evans (1932) 49 RPC 140 and United States Surgical Corporation v Hospital Products International Pty Ltd (1983) 2 NSWLR 157 at 251-9. Moreover, communication from or a warning by the applicant is not required if the respondent knew or ought to have known of the applicant's position. Thus, in Edward Young and Co Ltd v Holt (1947) 65 RPC 25, Wynn Parry J. allowed damages in the context that, although the defendant had not done anything consciously dishonest, nevertheless he must be regarded as having had a closed mind throughout the relevant period and to have been "careless whether or not there was any other brand name." See also English and Scottish Mercantile Investment Co. Ltd v Brunton (1892) 2 QB 700 at 707-8.

23. In the present case, Computerfair was a retailer of computer equipment. The Star brand was well known and the name and address of the Australian distributor, Star Australia, could have been obtained readily. Computerfair must have known, even when it made the first purchase of Star NX-1000 printers from All Data, that it was not purchasing from an authorised source and that the 220v printers were not the printers which Star Australia distributed in Australia. When in October 1988, Computerfair purchased from All Data and resold 30 220v printers, it acted fraudulently, in the sense I have explained. Certainly no evidence has been adduced on behalf of Computerfair that its actions were innocent. During 1989, of course, Computerfair was well aware of Star Australia's position. In these circumstances, damages may and should be awarded.

24. Counsel for the respondents submitted that the award of damages for breach of copyright should be limited to the dealings between Computerfair and Messrs Harrison, Watmore and Angel. However, orders 4(f), 5, 6 and 7 were not so limited. The findings of passing off, the subject of orders 6 and 7, were founded on the distribution by Computerfair of the Star NX-1000 220v printers and the circumstance that Computerfair displayed and handed out the official Star dodgers on which Computerfair had stamped its own name.

25. The evidence shows that these dodgers were seen by Messrs Harrison, Watmore and Angel during March to May 1989. The evidence gives no further information; but it seems likely and I draw the inference that Computerfair probably obtained the dodgers when it commenced to deal with Star Australia, that is in November or December 1988. As Mr Angel purchased on 3 May 1989 a mono 220v printer from Computerfair, and as that must have been one of the printers which Computerfair acquired from All Data in October 1988, I draw the inference that the great majority of the subject sales made by Computerfair in late 1988 and in the first half of 1989 should be treated as being within those orders, 4(f), 5, 6 and 7. There is no evidence as to the circumstances of the sales made in and after August 1989. However, in the absence of evidence to the contrary, I draw the inference that Computerfair continued to trade as previously it had done. These sales therefore also fall within the orders.

26. Counsel for the respondents submitted that the award of damages against Mr O'Neill should be limited to the sales to Messrs Harrison, Watmore and Angel, in respect of which he was a person involved in the contravention of the Trade Practices Act. However, the findings against him were more extensive. A finding was made that Mr O'Neill was personally involved in such of the contraventions of the Trade Practices Act as involved the display of and handing out of the Star dodgers and the sale of the Star 220v printers without distinguishing them from the 240v printers distributed by Star Australia. There was also a finding that Mr O'Neill was personally liable in respect of passing off. Orders 4(f), 5, 6 and 7 therefore apply to him.

27. No damages flowed from the representations as to warranty made to Mr Harrison, Mr Watmore and Mr Angel, which are the subject of orders 4(a), (b), (c), (d) and (e) of the orders of 23 November 1990. Messrs Harrison, Watmore and Angel understand what occurred and are happy with the treatment they received from Star Australia.

28. As to copyright, counsel for the respondents submitted that I should assess the loss of goodwill caused by the wrongful sales and that I should then apportion a percentage, say 30%, as being attributable to the part which the ROM in which copyright subsisted played in the printer. Counsel referred to Blackie and Sons Ltd v Lothian Book Publishing Co. Pty Ltd [1921] HCA 27; (1921) 29 CLR 396 at 404 and Meikle v Maufe (1941) 3 All ER 144. But while the latter part of that course could be undertaken were it logically persuasive, in the present case it would introduce a distinction which seems not to reflect a difference in damages.

29. Indeed, the evidence is so lacking in definition as to actual damage that I am left to assess some general amounts to reflect the loss of goodwill or reputation which probably the applicants suffered.

30. The applicants claimed loss of profits. It was proved that Computerfair had acquired 30 mono printers in about October 1988 from All Data, a further 20 colour printers in March 1989 from All Data and a further 21 colour printers in about August 1989, after Computerfair had been released from undertakings given shortly after these proceedings had been commenced. Of these 71 printers, 2 were used for tests undertaken for the purposes of these proceedings and a further 4 were used by Computerfair as parts for the repair of other printers. Sixty five of the printers were sold. Star Japan itself lost no sales, for the 220v printers were its printers.

31. The evidence did not prove with any degree of certainty that Star Australia lost any sales due to the activities of Computerfair. It is not shown that the activities of Computerfair reduced the sales of Star Australia. Computerfair's activities may have added to the volume of the sales of Star products in Australia. Certainly, in the first half of 1989, Star Australia either could not or did not wish to supply Computerfair with all the printers which Computerfair ordered. In December 1988, January and February 1989, Star Australia was short of stock and was unable to supply Computerfair with most of the colour printers which Computerfair had ordered in December. Star Australia overcame its stock problems in March 1989 but it did not supply Computerfair with the remaining goods which had been ordered in December 1988. Moreover, in April 1989, Star Australia ceased to deal with Computerfair because, according to Mr Elliott who was at the time Finance Controller for Star Australia, Computerfair was slow in making payment for the goods which it had already received.

32. Accordingly, we are not dealing with a situation where Computerfair sold goods which, had it not obtained them from All Data, it would have obtained from Star Australia. During 1989, Star Australia either could not or would not supply Computerfair.

33. Although counsel are agreed that, if there were a loss of profits on the part of Star Australia that loss would be $100 per printer, it is difficult to assess a specific sum for loss of profits. It is speculative what, if any, loss arose under this head. The best I can do is to conclude that it is likely that Computerfair took some sales from other distributors who were licensees or sub-licensees of Star Australia and, therefore, that Star Australia probably lost some sales. One could reason that, as Computerfair acquired 30 mono printers from All Data in October 1988 and 20 colour printers in March 1989 (at a time when Star Australia could not supply) and if one were to take one-half of these, i.e. 25 printers, that would provide a basis for estimating the sales lost by Star Australia. The resultant loss of profits would be $2500. However, that it is mere guesswork. It is not known whether Computerfair's sales added to the total sales of Star products or took sales away from other dealers in a limited market. On the whole, I prefer not to assess any specific amounts under this head but to take a generous approach to the assessment of damages under the heading of loss of reputation.

34. It is agreed that two printers were replaced at a total cost to Star Australia of $520. It is agreed that the cost of corrective advertising was one advertisement in a Melbourne newspaper at a cost of $350 and no objection is taken to the fact that the advertisement would have had little effect upon the residents of Sydney who had purchased from Computerfair.

35. The next claim is for the cost of the time involved and inconvenience suffered by Star Australia in answering inquiries respecting the 220v printers. Mr Elliott gave evidence that there had been 50 such inquiries but the only ones of which he had knowledge as relating to Computerfair were the complaints received from Mr Harrison and Mr Angel. There is also evidence that Mr Watmore contacted Star Australia. So there were three persons who contacted Star Australia. There is also evidence that, in late February, Computerfair sent a 220v printer to Star Australia for repair under warranty and that this was returned in early March with the note that the printer was not covered by warranty.

36. The claim made in the written particulars of July 1991 was a claim for 200 hours at $50 per hour, a total of $10,000. However, the evidence does not support this. No doubt, much time was spent with Messrs Harrison, Watmore and Angel; but much of that time was spent with a view to their assisting to obtain evidence against Computerfair and in the preparation of the statements on which their affidavits have been based. It is not shown that the conversations with Messrs Harrison, Watmore and Angel or any other purchaser from Computerfair or the time spent in sending back the 220v printer in March 1989 actually cost Star Australia anything. If any costs additional to the ordinary running of its business were incurred, they have not been proved.

37. I think this item indicates a reason for not being too strict in the assessment of damages under the heading of loss of reputation. But I would not allow any specific sum in respect of it.

38. Order 4(f) dealt with the use of the dodgers which were issued by the Star organisation and stamped by Computerfair with its name and distributed to its customers. This matter also can be considered under the heading of loss of reputation.

39. The case put for the applicants was that Computerfair sold in Australia goods other than those which Star Japan manufactured for use in Australia. These were not the printers which Star Australia imported and distributed and they were not machines which Star Australia authorised to be sold in Australia. Star Japan manufactured for sale in Australia printers which were specifically designed to operate on Australia's 240v electricity system. Accordingly, the sale of these printers by Computerfair would have tended to create confusion in the public's perception of Star Products.

40. The problems were compounded by the fact that Star Australia refused to service any 220v machines which had been returned to it. It did this because, having serviced a machine, its practice was to give an additional, though more limited warranty. Star Australia was not prepared to give a warranty as to the operation of any 220v printer.

41. I accept that the existence of a warranty and of adequate service is an important attribute in the development of goodwill in goods imported into Australia. But Star Australia does provide such a warranty for its goods. And it has established service centres through the Honeywell organisation. Warranty given at the time of sale is, for present purposes, of little significance, for the warranty period has long expired. Service in the future is, however, a factor which may affect the goodwill of Star Japan and Star Australia.

42. Counsel for the applicants submitted that I should draw the inference that the 220v printers were not as reliable as the 240v printers. But this allegation, which was put in a different way in the applicants' statement of claim, was not pursued on the hearing on liability. There was no finding on this. I am not prepared to draw any such inference for the purposes of the assessment of damages. The only inference from the evidence I am prepared to draw is that there were problems with servicing the printers so that Computerfair, which was not authorised to service Star printers, found it necessary or desirable itself to undertake the repair of some of the printers which it had sold. Nevertheless, there is no express evidence that the Honeywell organisation, which was authorised to and undertook the great bulk of the servicing of Star machines, would not service the 220v models. Nor is there any express evidence that the 220v printers purchased from Computerfair could not be repaired in Sydney. On all these aspects, the evidence is quite vague.

43. There is no express evidence that the sales of Star Australia fell because of the activities of Computerfair. Mr Elliott deposed that:-

"With some exception, Star Micronics has declined to repair these

(the 220v) printers. In these circumstances, purchasers of 220 volt

printers to whom I spoke have expressed dismay and disappointment.

On some occasions purchasers have said that they will never buy Star

Computer equipment again."

However, that evidence is not related specifically to the sales made by Computerfair. Computerfair may have been a minor or insignificant trader of 220v printers. The evidence does not establish the contrary, even as a matter of probability.

44. I am thus left to assess damages in the context that there is no evidence of any actual loss including loss of reputation, the category which founds the general claim.

45. The evidence disclosed that there was some fall in the sales by Star Australia of the 240v colour printers as between 1988/89 and 1989/90. But the relationship between this fall and the activities of Computerfair has not been shown.

46. I accept that reputation is a very important but fragile asset and that any activity which might interfere with it ought not to be treated lightly. I accept also that, under this heading, I ought to include the aspects I have already mentioned so that the award of damages encompasses all aspects upon which no precise estimate can be made. But even so, Computerfair sold only 65 printers for a total value of $32,500, in the context that Star Australia's sales in Australia amounted to many millions of dollars per year. And as counsel for the respondents pointed out, if the applicants had replaced all the 65 220v printers with 240v printers, the cost would have been only $16,900.

47. It is worth noting that even when, in February 1989, Star Australia received a 220v printer from Computerfair for repair, it did nothing about the matter save return the printer without servicing it. If Star Australia had had dramatic concerns about Computerfair, it could readily have obtained the information that Computerfair was selling 220v printers, for Computerfair made no secret about that. According to Mr Elliott, the fact that Computerfair was suspected of selling 220v printers was not even a consideration which caused Star Australia to cease trading with Computerfair. Nevertheless, it is to be kept in mind that Computerfair's actions were the very type of conduct that was calculated to harm the reputation of the Star organisation.

48. I need not discuss the general principles upon which damages should be assessed. They were discussed, as to copyright, by Wilcox J. in Autodesk Australia Pty Ltd v Cheung (1990) 17 IPR 69 and, as to a breach of s.52 of the Trade Practices Act and passing off by Beaumont J. in Prince Manufacturing Inc v Abac Corporation Australia Pty Ltd [1984] FCA 356; (1984) 4 FCR 288. Both those cases are particularly pertinent. In Autodesk, specific evidence as to a diminution in the value of the copyright or in goodwill was absent. In Prince, there was no "specific material demonstrating a nexus between the respondents' actions and the decline in their (the applicants') Australian turnover". Yet, in each case damages were awarded. As Wilcox J. said in Autodesk at 75, "However unsatisfactory the course may seem, the court must treat the damages as being `at large' ...".

49. In undertaking this task, it is necessary to avoid doubling up. There are several grounds of claim, all of which contributed to the overall loss of reputation and goodwill.

50. So far as Star Australia is concerned, which suffered the more immediate impact from the respondents' actions, I assess damages in respect of passing off and breach of s.52 of the Trade Practices Act in the sum of $7500 against both Computerfair and Mr O'Neill. The items of $520 for replacement of 2 printers and $350 for the corrective advertisement should be added giving a total of $8370. Star Australia should also have judgment against Computerfair in the sum of $2500 in respect of a breach of copyright, giving damages overall of $10,870 in respect of the items of loss of goodwill and reputation and diminution of the value of the copyright. In arriving at these figures, I have taken into account the other aspects of the case I have earlier referred to.

51. Star Japan should have judgment against Computerfair for $4000 in respect of the diminution in the value of its copyright and the damage to its goodwill. Star Japan should also have judgment against both Computerfair and Mr O'Neill in the sum of $2500 in respect of the breach of s.52 of the Trade Practices Act and passing off.

52. The total of $17,370 appears to me adequately to reflect the overall damages to the Star organisation's goodwill and reputation arising from the sale by Computerfair of the 65 printers and the display and handing out of Star dodgers stamped as they were with Computerfair's name.

53. The applicants claim interest. Counsel for the respondents submitted that interest should not be awarded or should be reduced as this matter has dragged on for a long time. However, although the applicants have contributed to the delay, I am not prepared to find that they were responsible for it. The case has been complex and most issues have been the subject of vigorous contention. I am of the view that interest should be allowed.

54. It is difficult to determine a date when the respondents' activities began substantially to impact upon the position of the applicants. I think justice would be done if interest were to run from 1 July 1989. In accordance with usual practice, I would adopt the interest rates set out in Schedule J to the Rules of the Supreme Court of New South Wales.

1. Judgment for Star Australia against Computerfair and

Mr O'Neill in the sum of $12,136.50.

2. Judgment for Star Australia against Computerfair in

the sum of $3,625.00.

3. Judgment for Star Japan against Computerfair and Mr

O'Neill in the sum of $3,625.00.

4. Judgment for Star Japan against Computerfair in the

sum of $5,800.00.