Sony Computer Entertainment Aust Pty Ltd v Jakopcevic [2001] FCA 1520 | Case summary

Sony Computer Entertainment Aust Pty Ltd v Jakopcevic [2001] FCA 1520 | Case summary | Zoe

introduction and general 1 The present proceeding is one for infringement of two trade marks. There was originally also a claim for contravention of sections 9, 10 and 12 of the Fair Trading Act 1999 (Vic) but it is not pursued. The third respondent has not been served and the applicants sought leave to discontinue against him, which I have granted. A solicitor once appeared on the record for the first and second respondents but has ceased to act. I was satisfied that the first, second and fourth respondents knew that the proceeding was listed for final hearing yesterday and, being called outside the Court, did not appear. Accordingly, the final hearing proceeded in their absence. 2 The first applicant, Sony Computer Entertainment Australia Pty Limited ("Sony Computer Australia") is, through Sony Computer Entertainment Europe Limited, a wholly owned subsidiary company of the second applicant, Kabushiki Kaisha Sony Computer Entertainment ("KKSCE"). KKSCE is incorporated in Japan and is the manufacturer and a distributor of the Sony "PlayStation" computer game console and the owner of the following Australian registered trade marks in class 9 for computer game players combined with CD-ROM drives and software for them: · Registered trade mark No 642678 which is the word mark "PlayStation"; · Registered trade mark No 642679 which is a device mark consisting of a stylised vertical letter "P" and a stylised horizontal letter "S" intertwined. 3 I will call the registered trade marks "the Sony Trade Marks". Sony Computer Australia is the distributor of the Sony "PlayStation" computer game console and associated hardware and software in Australia and is the authorised user of the Sony Trade Marks in Australia. 4 The case sought to be made is one of the selling of CD-ROMs containing software for use with computer game players, which bear, or in which are stored electronically, representations of marks, or by reference to marks, that are identical or substantially identical with, or deceptively similar to, the Sony Trade Marks, and, in consequence, use of one or more of the Sony Trade Marks in relation to goods in respect of which the Sony Trade Marks are registered. 5 The applicants' case is that the first respondent (to whom I will, without any intended discourtesy, refer as "Barry") and the second respondent (to whom I will, without any intended discourtesy, refer as "Dominique") are husband and wife and have conducted a substantial enterprise of making and distributing CD-ROMs bearing counterfeits of the Sony Trade Marks at and from their home at 10 Grace Street, Cranbourne, Victoria. Their case is that the third respondent, Christian Fabre, is the father of Dominique and made some of the deliveries of the counterfeit CD-ROMs to which I will refer. The applicants' case is further that the fourth respondent, Anthony "Frank" Guthrie (to whom I will, without any intended discourtesy, refer as "Frank"), was involved with Barry and Dominique in the selling of the counterfeit Sony CD-ROMs. 6 There were six separate purchases proved in the evidence. Each was made by Wayne Gladman, a private inquiry agent and director of Wayne H Gladman & Associates Pty Limited. Evidence was also given by Barrie Bishop, a further private inquiry agent, who was engaged by Mr Gladman to assist in the making of observations and the recording of the activities he observed on video tapes which are in evidence. 7 The six purchases by Wayne Gladman are as follows. (There are minor discrepancies in the numbers within Mr Gladman's affidavit.) · 4 June 2000 - 3 CD-ROMs delivered to Mr Gladman at "Red Rooster", South Gippsland Highway, Cranbourne, Victoria; · 20 October 2000 - 20 CD-ROMs delivered to Mr Gladman at 18 Lansell Court, Rowville, Victoria; · 26 October 2000 - 18 CD-ROMs delivered to Mr Gladman at "Red Rooster" store, corner Ferntree Gully Road and Stephensons Road, Mt Waverley, Victoria; · 15 November 2000 - 19 CD-ROMs delivered to Mr Gladman at "Red Rooster", corner Ferntree Gully Road and Stephensons Road, Mt Waverley, Victoria; · 3 January 2001 - 19 CD-ROMs, delivered to Mr Gladman at "Red Rooster", corner Ferntree Gully Road and Stephensons Road, Mt Waverley, Victoria; · 5 February 2001 - 16 CD-ROMs delivered to Mr Gladman at corner of Princes Highway and South Gippsland Highway, Dandenong, Victoria. 8 In some cases two copies of the one CD-ROM game were purchased by Mr Gladman. 9 The evidence included evidence associated with execution of an "Anton Piller order" I made in the proceeding on 9 February 2001. Execution of the order was attempted on 12 February 2001 without success but after I had, on that date, extended the period of the order, it was successfully executed on 13 February 2001. The testimony of those who attended, together with the CD-ROMs and documents seized, show that a very considerable business activity of selling counterfeit Sony CD-ROMs was taking place from the home of Barry and Dominique. The evidence also shows that on 12 February 2001, when it is clear that they were aware that trouble was afoot, they caused to be deleted many records of a business nature from their computer. Hundreds of counterfeit Sony CD-ROMs were recovered from their home when the Anton Piller order was executed on 13 February. 10 The evidence, which I will not summarise in detail, included the testimony of the two private inquiry agents and of Fiona Riley and Norman Napiza both of PricewaterhouseCoopers. That firm, together with Allens Arthur Robinson ("Allens"), the solicitors for the applicants, have been retained for some time to co-ordinate a campaign on behalf of the applicants to stamp out piracy of computer games for the "PlayStation" computer game console in Australia. The evidence before me included the testimony of solicitors from Allens also. 11 As I indicated, I do not think it necessary to give a detailed account of the evidence. A convenient starting point, however, is several advertisements which appeared in the Melbourne Trading Post on several occasions by which "PlayStation" computer games were advertised as being available for purchase. In all cases a telephone number was given and subsequent searches in respect of the person recorded as having placed the advertisement revealed that no such person existed at the address supplied to the Melbourne Trading Post. The telephone numbers were: Mobile No.: 0415 656 044 Mobile No.: 0419 137 986 Mobile No.: 0418 539 650 Mobile No.: 0408 564 718 (Mobile number 0418 137 986 was recorded as being the number of John Minks of 128 Ballarto Road, Cranbourne South: an entry "Brian Minks 128 Ballarto Rd Cranbourne 3977" appeared in "Finished Orders" which were seized from Barry's and Dominique's home at 10 Grace Street, Cranbourne on 13 February 2001 pursuant to the Anton Piller order.) 12 I will turn now briefly to the evidence relating to the six transactions.

4 June 2000 13 Mr Gladman telephoned mobile number 0415 656 044 and told a woman who answered that he wished to buy three CD-ROMs he named. She said that she would put him onto her "husband" because he was the one who made deliveries. Mr Gladman and the "husband" arranged for the delivery of the CD-ROMs at the "Red Rooster" on the South Gippsland Highway in Cranbourne, Victoria. Later the same day, Mr Gladman met the driver of a white Mazda 929 sedan, registered number ONJ 593 at the car park there. The three CD-ROMs were sold for $30 which Mr Gladman paid in cash. With the three CD-ROMs there was delivered a long list of games available. Two telephone numbers appeared on the list: Mobile No.: 0418 539 650 Mobile No.: 0415 656 044 (The mobile telephone number 0418 539 650 appeared in "order forms" which were seized at the home of Barry and Dominique on 13 February 2001 pursuant to the Anton Piller order.) The man told Mr Gladman to telephone either of those numbers if he had any problems. 14 In the case of this purchase, as in the case of all others, Mr Gladman subsequently sealed up what was delivered to him and sent the sealed envelope to PricewaterhouseCoopers in Sydney. 20 October 2000 15 On this occasion Mr Gladman telephoned 0419 137 986, a number which appeared in the Melbourne Trading Post,and subsequently spoke to a man who said he was called "John". The applicants' case is that this "John" was in fact Frank, the fourth respondent. After Mr Gladman made known his request, the man said he would have to check with his "boss" to see if it would be all right for him to meet Mr Gladman somewhere around Healesville, as Mr Gladman had requested. Subsequently, "John" rang back and he and Mr Gladman agreed to meet. Mr Gladman ordered 20 CD-ROM games. "John" said that in some cases he did not have the CD-ROMs available and would have to "make up" the CD-ROMs in those cases. 16 Agreement was reached for the sale of 20 CD-ROMs for $100. Delivery took place at 18 Lansell Court, Rowville, the same afternoon. The person who made the delivery appeared to Mr Gladman to be approximately 55 years old, about five feet ten inches tall, of a medium build with greying, collar-length dark hair, of Indian or sub-continental descent, with a slight accent and wearing thick prescription glasses. In his affidavit Mr Gladman refers to this person as "the First Man" and I will do likewise. (It is the applicants' case that in fact the First Man was Mr Fabre, the third respondent.) 17 After delivering the CD-ROMs and taking payment in cash of $100, the First Man told Mr Gladman that he was also supposed to make another delivery of goods to the address of 18 Lansell Court, Rowville, but no-one was home. The First Man asked to use Mr Gladman's mobile telephone to call them. The First Man went to his car, a brown car, registered number FYH 959 ("the Brown Car"), opened the door and took out a white card bearing the name "Dean" and the telephone number 9759 7232. He asked Mr Gladman for permission to telephone his "boss" and Mr Gladman observed him dial 5996 5175 and heard him say: "Hello Barry. I'm here at Lansell Court. Wayne is here but there is no-one home ... can you hurry, I'm ringing on Wayne's phone ... Okay, I'll wait for a few minutes." (The applicants' case is that Mr Fabre was telephoning his son-in-law, Barry, the first respondent.) 18 There followed a further conversation between the First Man and Mr Gladman in which Mr Gladman complained that there was no list in the boxes of CD-ROMs. The First Man told him that he should "talk to Barry or Brian" who "should be able to get you all the games you want". The conversation continued: "Gladman: 'Actually, don't worry, I'll catch up with him next time. I'm down next week. I'm from Yea and I'm going to get games from him and sell them up there. There's no one up there selling them.' First Man: 'Yeah, that should be great. Just talk to Barry or Brian they should be able to get you all the games you want.' Gladman: 'Actually I rang John today'. First Man: 'That's okay. Just ring John on the number you rang. They're all part of the same group'. Gladman: 'Okay, I'll give John a call'." 19 Mr Gladman then got back into his car and drove away. Again, he placed the CD-ROMs in plastic cases which he had received from the First Man into envelopes which he sealed and sent to PricewaterhouseCoopers in Sydney. 26 October 2000 20 On 25 October Mr Gladman telephoned mobile number 0419 137 986 and recognised the person who answered as "John", with whom he had conversed previously. Mr Gladman placed an order for 18 CD-ROMs. Mr Gladman asked for a list of the games available and "John" promised to ensure that a list was included. The following day, 26 October, Mr Gladman again telephoned mobile number 0419 137 986 and spoke to "John". Ultimately a meeting was arranged. 21 During the conversation, Mr Gladman heard the voice of a woman in the background, saying: "I don't know, Frank. Brian, we need your help in here!" 22 On this occasion the CD-ROMs were delivered at the "Red Rooster" establishment at the corner of Ferntree Gully Road and Stephensons Road, Mt Waverley, Victoria. Before the delivery took place, Mr Gladman received a call on his mobile telephone from a person whose voice he recognised as being that of the First Man. The number displayed on his mobile telephone indicated that the call had come from mobile number 0418 389 686. The First Man said he was stuck in traffic and would arrive in about ten or fifteen minutes' time. 23 The First Man arrived in the same Brown Car. With the CD-ROMs there was delivered a lengthy list of available "PlayStation" games inside one of the boxes. After the transaction was completed and Mr Gladman drove away. Subsequently, he placed the CD-ROMs and the list in envelopes which he sealed and sent to PricewaterhouseCoopers in Sydney. 15 November 2000 24 On 14 November Mr Gladman telephoned mobile number 0419 137 986 and spoke to "John". Mr Gladman referred to his having bought CD-ROMs from "John" "a few weeks ago" which "John" acknowledged. Mr Gladman placed an order for 19 CD-ROMs. "John" confirmed that he already held Mr Gladman's contact number, 0407 507 694. 25 On 15 November Mr Gladman telephoned mobile number 0418 389 686, which I am satisfied was Barry's number, and spoke to a woman who, I am satisfied, was Dominique. She asked how Mr Gladman had obtained their telephone number. Mr Gladman replied that it had come up on his mobile telephone when he had been contacted previously. Dominique told Mr Gladman that "John" had not picked up the games yet. 26 Later, on the same day, Mr Gladman telephoned mobile number 0419 137 986 and recognised the voice of "John". After further telephone calls, the 19 CD-ROMs were delivered by the driver of a Mitsubishi Magna station wagon, registered number FBV 285, which entered the car park at the "Red Rooster" establishment at the corner of Stephensons Road and Ferntree Gully Road, Mt Waverley. The driver appeared to Mr Gladman to be about 50 years old and about 5 feet 7 inches tall, of slim build with brown hair and tanned complexion and with a moustache. He was wearing sunglasses. The applicants' case is that this was "John", that is, Frank. 27 The 19 CD-ROMs were delivered for a price of $100 which Mr Gladman handed over in cash. In the course of the conversation between the two men, Mr Gladman said that he had been re-selling to friends and contacts and "John" said: "Yeah you've got to be careful. It's illegal after all". 28 The two men had a lengthy conversation in which "John" told Mr Gladman much about the business, using the pronoun "we". For example, he said: "Actually we supply to a lot of the dealers. We sell to them for $5 and then they put a cover on it and sell for $10. We've got a good product. All our games come off a 'RAF' file, they are not copies of copies of games like some are". He said that the business had been operating for five or six years. 29 The next day, 16 November 2000, Mr Gladman put the CD-ROMs in plastic cases and a list document headed "PlayStation Games" which he had received from "John" in a yellow envelope which he sealed and sent to PricewaterhouseCoopers in Sydney. 3 January 2001 30 Mr Gladman telephoned number 5996 5175. The telephone was answered by a female, who, I am satisfied, was Dominique. Mr Gladman asked if "Barry" was there and was told he was asleep. Mr Gladman said he was "Wayne from Yea" and had bought "PlayStation" games from them previously. He said he had been trying to telephone "John" but his mobile telephone was not answering and he (Mr Gladman) was wondering if the woman had another number for "John". She asked how Mr Gladman had their number because "we don't normally sell games on this number". Mr Gladman explained that "your" courier had telephoned Barry from his (Mr Gladman's) phone when the courier made a delivery a couple of months earlier and he (Mr Gladman) had just kept the number. (Clearly the reference was to the First Man's telephone call to his "boss" on 20 October 2000.) Mr Gladman said he normally rang "John" on 0419 137 986 but could not raise him. Dominique said she would get Barry. A short time later Mr Gladman heard a male voice and I am satisfied that this was Barry. Barry told Mr Gladman he would get "John" to telephone him. 31 Later the same day Mr Gladman received a telephone call on his mobile telephone and the number displayed indicated that the call originated from telephone number 5996 2120. Mr Gladman recognised the voice of "John". Mr Gladman placed an order for CD-ROMs and they agreed upon a delivery at "Red Rooster" at the corner of Stephensons Road and Ferntree Gully Road, Mt Waverley. 32 Yet later on the same day Mr Gladman received a call on his mobile telephone from mobile number 0418 389 686. The caller said that he was the courier. Later the same day in the car park of the "Red Rooster" store, the Brown Car arrived and Mr Gladman recognised the driver as the First Man from whom Mr Gladman had made the purchases on 20 October and 26 October. Delivery was effected and Mr Gladman handed over $100 in cash. 33 As on previous occasions Mr Gladman placed the CD-ROMs and accompanying list of "PlayStation" games into an envelope, which he sealed and sent to PricewaterhouseCoopers in Sydney. 5 February 2001 34 Mr Gladman telephoned mobile number 0419 137 986 and recognised the voice of "John". A purchase was arranged. The order was for 16 CD-ROMs. 35 Later, on the same day, Mr Gladman telephoned the same number and spoke to "John" who told him the courier had just left and would give him (Mr Gladman) a call. Mr Gladman's other mobile telephone rang at this time and he ceased his conversation with "John". The number display on Mr Gladman's mobile telephone indicated that the call was from mobile number 0414 653 635. The caller said he was the courier and was on his way. Later the same day, at the intersection of Princes Highway and South Gippsland Highway, Dandenong, Mr Gladman observed the First Man standing on the footpath outside the Brown Car. The two men met and completed their transaction for a price of $100. 36 Again, Mr Gladman subsequently placed the CD-ROMs in an envelope which he sealed and, on this occasion, despatched to Allens.

Further evidence 37 The above account is sufficient to indicate the general nature of the six purchases. Evidence of what occurred subsequently satisfies me that all the CD-ROMs bought by Mr Gladman bore counterfeits of the Sony Trade Marks. 38 There was further evidence linking the individuals concerned with the home of Barry and Dominique at 10 Grace Street, Cranbourne. I will summarise that evidence from the written submissions of counsel for the applicants, which I accept. 39 A search of 10 Grace Street, Cranbourne revealed that Barry was its owner. 40 On 26 October 2000 the First Man visited 10 Grace Street, Cranbourne after delivery of the CD-ROMs and the white Mazda 929 registered number ONJ 593, which had been used in the 4 June 2000 delivery, was parked outside. 41 On 5 December 2000 the white Mazda 929 registered number ONJ 593 was driven from the 10 Grace Street, Cranbourne premises. 42 On 3 January 2001 the same white Mazda 929 was parked outside those premises and the First Man drove the Brown Car to make the delivery to Mr Gladman. 43 On 12 February 2001, when execution of the Anton Piller order was unsuccessfully attempted, the Brown Car registered number FYH 959 was driven past 10 Grace Street, Cranbourne. On the same day, within those premises, there was an attempt to delete business records from the computer files there, to which I refer in more detail below. 44 On 13 February 2001, when the Anton Piller order was successfully executed, Barry, after contact with his then solicitor, consented to the inspection of his home. Hundreds of CD-ROMs in plastic cases were seized there, together with other compelling evidence that a major business activity was being undertaken in the form of the production and selling of infringing CD-ROMs. The main hard-drives of the computers were seized. 45 Norman Napiza, a specialist in the field of "computer forensics", was subsequently able to recover computer files from analysis of an image taken of hard-drives which were recovered from the house at 10 Grace Street, Cranbourne on 13 February 2001. Included were deleted files relating to the use of an "ICQ messaging system", which is a free on-line messaging system which provides a method of communicating over the Internet, similar to e-mail messages or on-line 'chat-rooms', except that the messages are relayed from user-to-user directly, negating the need for the user to log into a chat-room service. According to Mr Napiza's affidavit, when a person installs an ICQ computer program on the person's computer and registers with the ICQ server, the person is allocated a Unique Identification Number ("UIN") which will appear as a prefix to any message sent by the user. Each message sent or received by the user on the ICQ system will also have a copy stored on an ICQ Message Log. In the message log, the exchange between each user is labelled by reference to the UIN of each user. Mr Napiza states that this log is integrated into the ICQ application and is usually viewed when the ICQ application is run. 46 In this instance the ICQ directory itself was deleted by a user of the computer on 12 February 2001 (while those concerned were outside the house awaiting entry to execute the Anton Piller order). Mr Napiza was able to use a program to extract the ICQ Message Log and create a spreadsheet of the data. The message log recorded the date, time, message type, from whom the message came and to whom it was directed and the text of the message. 47 Mr Napiza's spreadsheet showed numerous communications about what I infer were orders for various titles, quantities, delivery details and contact details of buyers. Details of incorrect packaging and of faulty product were also recorded. There were also messages regarding advertisements in "the Trading Post" and numerous references to "Frank". 48 On 1 March 2001 using a database of registered members on the ICQ server, Mr Napiza made a search of all of the UIN numbers that appeared as prefixes to the messages recorded in the ICQ Message Log. As the information entered was dependent on the person who was registering as a member, and often registration details were left blank or false details were entered, the results of his search were generally uninformative. 49 The following were some of the messages. (I have not corrected spelling errors or other solecisms.) 50 On 20 October 2000 at 1.42pm a message from UIN 92084541 stated: "Dom, the screen just appeared everything looks alright." At 7.26pm on the same day a further message from UIN 92084541 stated: "Wayne of Yoori Yallack said that he was going to do a business, so he is going to order a few more of the games, because there are nobody doing that overthere." It will be recalled that on 20 October 2000 Mr Gladman told the First Man that he (Mr Gladman) was from Yea and was going to buy more games to sell there and that no-one else was selling them at Yea yet. 51 On 27 November 2000 a message was sent from UIN 92084541: "Dom, There is an article on markets selling pirate games, they don't talk about people producing the games only markets selling, Sony is spending millions of dollars to sort out the markets. So I think you are safe for the moment." The search on UIN 92084541 yielded, inter alia, the name as "Chris Fabre", aged 72. 52 On 26 January 2001 a message was sent to UIN 12230127: "hey - my phone number is 59962120 & icq is 6747238 Frank" Mr Gladman had received a telephone call from "John" from this telephone number on 3 January 2001. The search on UIN 12230127 listed his or her name as "LatinoXL", of "complink" in the department of "Sales" with the position of "Order processor". 53 On 12 February 2001 at 10.26am those concerned to execute the Anton Piller order were outside 10 Grace Street, Cranbourne where they had been knocking, seeking entry. Meanwhile, inside, a great deal of communication by reason of the computer was taking place, as follows: "To 12230127 Where Busted [we're busted?] Delete Your Messages ok From 12230127 cheers dom I give u my word it wasent me u don't rat on friends. To 12230127 stay away haven't even opened the door yet From 12230127 am I allowed to come over or stay away? To 12230127 that's up to you To 12230127 ok delete me and I'm doing the same From 12230127 ie: buy some smokes and walk by ur place see whos there. From 12230127 im gonna pass by now with a smoke. To 12230127 ok bye From 12230127 yeh already ahead of ya frank told me.. delete all your hdd's and throw them on the floor they can recover all deletes. U have to break them u have no choice."

Sony Computer Entertainment Aust Pty Ltd v Jakopcevic

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Judgment (26 paragraphs)

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