Tivo Inc v Vivo International Corporation Pty Ltd

IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 25 of 2011

AND: VIVO INTERNATIONAL CORPORATION PTY LTD (ACN 087 480 171)

JUDGE: DODDS-STREETON J DATE: 30 july 2013 PLACE: MELBOURNE

introduction 1 On 30 July 2013, I made the orders set out above for the reasons that follow. 2 By an interlocutory application dated 24 June 2013 and filed 26 June 2013, the applicants, TiVo Inc and TiVo Brands LLC ("collectively TiVo") sought an order that the first respondent, Vivo International Corporation Pty Ltd ("Vivo"), by an officer with sufficient knowledge, file and serve an affidavit setting out details of a number of matters referred to and defined in an affidavit sworn on 6 June 2013 by Fabio Grassia, the director of Vivo, annexing relevant documents and explaining certain issues. 3 The orders sought in the interlocutory application were as follows: 1. An order that the First Respondent (by an officer with sufficient personal knowledge of the affairs of the company) file and serve within 7 days of the date of this order an affidavit: (a) setting out details of: (i) how the Vivo Expenses (as defined in the Affidavit of Mr Fabio Grassia sworn 6 June 2013) as set out in paragraph 3 of Mr Grassia's Affidavit sworn 6 June 2013 were calculated and/or made up including, without limiting the generality of the foregoing, full and precise details of each class of expenses comprising the Vivo Expenses; (ii) the cost of goods sold of each of the goods comprising the Vivo Products (as defined in the Affidavit of Mr Grassia sworn 6 June 2013); (iii) each of the classes of expenses comprising the Vivo Expenses which the First Respondent believes are attributable to the sale or disposal of the Vivo Products; and (iv) why the First Respondent believes the Vivo Expenses, including the expenses mentioned in paragraph 1 (a)(iii) above, are attributable to the sale or disposal of the Vivo Products; and (b) annexing: (i) all documents evidencing the sale or disposal of the Vivo Products including, without limitation, all sales invoices and purchase order forms generated in respect of the Vivo Products; (ii) all documents evidencing the price at which the Vivo Products were sold or otherwise disposed of including, without limitation, all sales invoices, price lists and purchase order forms generated in respect of the Vivo Products; (iii) summary documents from the accounting records of the First Respondent, including, without limitation, accounting records, ledgers and profit and loss statements summarising or recording the details of the expenditure contained in each of the classes of expenses comprising the Vivo Expenses which it is said constitutes the cost to the First Respondent of all sales and disposals (including, without limitation, the cost of goods sold and any expenses attributable to such sales or disposals) of the Vivo Products; (iv) all documents from the accounting records of the First Respondent, including, without limitation, accounting records, ledgers and profit and loss statements recording or evidencing the profit (or loss) the First Respondent has made on the sale or disposal of the Vivo Products; and (v) all documents produced by or on behalf of the directors of the First Respondent and the First Respondent's auditor(s) existing as of the date of this Order that certify the accounting records, ledgers and financial statements produced in accordance with this Order are true and correct. 2. An order that the Respondents pay the Applicants' costs of and incidental to this Interlocutory Application. 4 The application was supported by: (a) the affidavit of Timothy Douglas Creek sworn on 25 June 2013; (b) the affidavit of Timothy Douglas Creek sworn on 12 July 2013; (c) the affidavit of Timothy Douglas Creek sworn on 18 July 2013; (d) written submissions dated 18 July 2013. 5 The application was opposed. The following documents were filed in opposition: (a) the affidavit of Sarina Roppolo sworn on 4 July 2013; and (b) written submissions dated 18 July 2013.

background 6 On 19 March 2012, I handed down judgment in this proceeding in which TiVo alleged, inter alia, that the "VIVO" trade mark, applied to televisions and similar goods, was substantially identical with or deceptively similar to the "TIVO" trade mark (owned by the second applicant) and registered in relation to, inter alia, televisions and similar goods. I found that the "VIVO" trade mark was deceptively similar to the "TIVO" trade mark. The "VIVO" trade mark did not, however, infringe the "TIVO" trade mark prior to 23 March 2012 as the "VIVO" trade mark was registered up until that date. On 23 March 2012 I ordered that its registration be cancelled and injoined Vivo from infringing the "TIVO" trade mark by using, in respect of the specified goods, the "VIVO" trade mark or any other mark substantially identical with or deceptively similar to the "TIVO" trade mark. 7 On 23 March 2012, the above orders were stayed for fourteen days, upon Vivo's undertaking to keep account of all sales of products bearing the "VIVO" trade mark and to abide by such order as the court may make in favour of TiVo for damages or an account of profits at its election in respect of those sales, in the event that either Vivo did not appeal or its appeal was unsuccessful. 8 On 5 April 2012, Vivo filed a notice of appeal and sought a further stay of the 23 March 2012 orders pending the hearing and determination of the appeal. On 19 April 2012, upon Vivo giving further undertakings, Jessup J granted the stay on 19 April 2013, to permit Vivo to dispose of a number of televisions it had already imported. 9 In consideration of the stay, Vivo undertook to keep an account of all sales of products bearing the "Vivo" trade mark and, notwithstanding s 122(1)(e) of the Trade Marks Act 1995 (Cth), to abide by such order as the Court may make in Tivo's favour for damages or an account of profits at its election in respect of such sales in the event that the appeal was unsuccessful. 10 The Full Federal Court dismissed the appeal on 14 November 2012. 11 TiVo, from 16 November 2012, on the basis that the orders of 23 March 2012 applied and no stay was in force, corresponded with Vivo's then lawyers seeking, among other things, that Vivo provide a copy of its accounts in accordance with the undertakings it had given. 12 Vivo did not provide a response to the request for such accounts by 23 November 2012 as it had indicated it would do. Further correspondence ensued in which Vivo's solicitor indicated that accounts would be provided. 13 On 11 December 2012, Vivo's solicitors emailed a copy of Vivo's account of sales for Vivo branded goods made between 23 March and 14 November 2012. On 12 December 2012, TiVo's solicitors requested details of the profit made on the sales, to enable it to assess whether to elect to seek an account of profits or damages. 14 On 14 December 2012, Vivo's solicitors sought, inter alia, details of the orders TiVo would seek in respect of its claim for monetary relief. TiVo provided proposed minutes of order seeking Vivo's consent. 15 After further exchanges Vivo did not consent. On 8 January 2013, Vivo's then lawyers ceased to act and Ms Roppolo of Kemp Strang lawyers assumed the conduct of the matter on Vivo's behalf. 16 On 16 January 2013, Ms Roppolo requested TiVo's lawyers to inform her of whether TiVo had elected to seek an account of profits or damages. TiVo's lawyers advised that election would not be possible until they had sufficient information about the profit Vivo had made on the sales of Vivo branded goods. 17 An impasse was reached, following which TiVo issued an interlocutory injunction dated 4 February 2013 which sought, inter alia, by paragraph 3: An order that the First Respondent (by its proper officer) file and serve within 14 days of the date of this order an affidavit setting out: (a) the total number of goods bearing the VIVO mark sold and otherwise disposed of by it in Australia on and from 23 March 2012 (Vivo goods); (b) the price at which each of the Vivo goods was sold or otherwise disposed of; (c) the cost to the First Respondent of the sale and disposal of the Vivo goods; (d) the approximate amount of profit the Respondent contends it has made by the sale or disposal of the Vivo goods; and (e) the steps or reasoning by which the approximate amount referred to in paragraph (d) above has been calculated, and annexing to the affidavit all documents relevant to matters referred to in paragraphs (a) to (e) (inclusive) above. 18 At the hearing of the interlocutory injunction before Allsop CJ on 24 April 2013, Vivo resisted TiVo's application for an order that an affidavit be sworn, contending that it would suffice if Vivo discovered certain categories of documents to enable TiVo to make an election. Vivo asserted that it had already provided a schedule of sales which sufficiently complied with its disclosure obligations. 19 Allsop CJ considered that Vivo should simply state its view of the profit made rather than simply providing source documents for assessment by independent experts. His Honour viewed Vivo's approach as inappropriate in commercial litigation such the present case. 20 His Honour did not accept that Vivo was precluded by various asserted complications from providing an affidavit to assist TiVo. His Honour ordered: (1) An order that the first respondent (by an officer with sufficient personal knowledge of the affairs of the company) serve within 28 days of 24 April 2013 an affidavit setting out the matters in (a) to (e) and annexing to the affidavit all documents relevant to the matters referred to in paragraphs (a) to (e). (a) the total number of goods bearing the VIVO mark sold and otherwise disposed of by it in Australia on and from 23 March 2012 (Vivo goods); (b) the price at which each of the Vivo goods was sold or otherwise disposed of; (c) the cost to the First Respondent of the sale and disposal of the Vivo goods; (d) the approximate amount of profit the Respondent contends it has made by the sale or disposal of the Vivo goods; and (e) the steps or reasoning by which the approximate amount referred to in paragraph (d) above has been calculated. (2) The Interlocutory Application dated 4 February 2013 (Interlocutory Application) be stood over, to the extent it is unresolved, to be heard by Dodds-Streeton J on a date to be fixed. (3) The parties have liberty to approach the associate to Dodds-Streeton J by joint correspondence seeking a day for the hearing of the application for order 1 of the Interlocutory Application. It is noted that order 2 of the Interlocutory Application is not pressed. (4) The costs of the interlocutory application to the extent that they deal with order 3 of the Interlocutory Application, be costs in the cause and the costs of the balance of the application be reserved to Dodds-Streeton J in her dealing with the application. Those costs to include the costs of today to the extent they relate to order 1 of the Interlocutory Application. 21 Vivo did not file and serve an affidavit by 22 May 2013 in accordance with the orders of Allsop CJ. Correspondence ensued in which Vivo's lawyer gave assurances that it would comply by 5 June 2013.

Affidavit of Mr Grassia sworn 6 June 2013 22 The affidavit of Fabio Grassia, the director of Vivo, was sworn, filed and served on 6 June 2013. 23 Mr Grassia annexed a spreadsheet detailing all Vivo brand products sold by Vivo from 23 March 2012 to 14 November 2012, said to generate revenue of $1,874,660. He deposed that the cost of sale and disposal of the Vivo products was $2,217,242, so that no profit was made. The expenses exceeded the revenue and Vivo had no further Vivo products in its possession. 24 The spreadsheet annexed to Mr Grassia's affidavit was merely a list of sales which provided no means of ascertaining how the Vivo expenses were calculated. Further, it was not disputed that the annexure was a version of a document that had been provided to TiVo six months earlier, save for some minor amendments which were not identified by Mr Grassia in his affidavit. 25 Unsurprisingly, further correspondence ensued in which TiVo indicated an intention to cross-examine Mr Grassia on his affidavit, on the ground that it did not comply with the order made by Allsop CJ. 26 On 19 June 2013, Vivo's lawyers advised that a further affidavit of Mr Grassia would be filed and served. TiVo forwarded a draft interlocutory application seeking that the anticipated further affidavit would address the relevant matters and would be promptly filed.

Affidavit of Mr Grassia sworn 24 June 2013 27 The affidavit of Mr Grassia sworn on 24 June 2013 annexed documents to support the statements made in his 6 June 2013 affidavit. Mr Grassia stated that the spreadsheet of sales activity was created by an (unnamed) accounts clerk employed by Vivo and he had checked it. He annexed profit and loss statements for Vivo for periods 23 March to 30 June 2012 and 1 July to 14 November 2012 stating the income earned by Vivo and expenditure it had incurred. 28 Mr Grassia stated that the revenue from Vivo products amounted to 44.09% of Vivo's total revenue for the period between 23 March and 14 November 2012 and Vivo's total expenses had been divided by that percentage to produce the expenses of the Vivo products. 29 On 24 June 2013, Vivo's lawyers served Mr Grassia's further affidavit and sought that the current interlocutory application be disposed of by consent.

Alleged deficiencies in Mr Grassia's affidavits 30 TiVo claimed that Mr Grassia's affidavits sworn 6 and 24 June 2013 failed to comply with Allsop CJ' orders in the following respects: (a) the affidavits failed to annex documents required by paragraph 1(a) of Allsop CJ's orders, such as: (i) sales invoices and purchase order forms, demonstrating the total number of Vivo goods disposed of by Vivo in Australia on and from 23 March 2012; and (ii) price lists, sales invoices and purchase order forms, demonstrating the price at which the Vivo goods were disposed of; (b) the affidavits failed to annex "all documents" relevant to Vivo's costs of sale and disposal of Vivo goods, as required by paragraph 1(c) of Allsop CJ's orders; and (c) the spreadsheet annexed to Mr Grassia's affidavit sworn 6 June 2013 while purportedly setting out the sales prices for each of the Vivo goods failed to breakdown the costs to Vivo of the sale of those goods on a product by product basis. 31 TiVo also pointed to a number of apparent discrepancies and inconstancies in Mr Grassia's 6 June 2013 affidavit, his 24 June 2013 affidavit, other material filed in the proceeding and other assertions previously made by Mr Grassia during the proceeding. 32 By way of example TiVo pointed to the following: (a) inconsistencies in the sales figures provided in the summary spreadsheet for the period 23 March to 30 June 2013 (annexure A to Mr Grassia's 24 June 2013 affidavit); (b) discrepancies as to the stock on hand as at 7 August 2012 based on Mr Grassia's earlier affidavits sworn 4 April 2012 and 19 September 2012 and Vivo's undertaking to the Court given on 19 April 2012 as compared against the summary spreadsheet (annexure A to Mr Grassia's 24 June 2013 affidavit); (c) a sudden and unexplained increase in sales of non-Vivo products in the two month period between 17 September and 14 November 2012 as compared to the previous six month period between 23 March and 17 September 2012; (d) inconsistencies between Mr Grassia's evidence that Vivo has suffered large losses throughout the period 23 March to 14 November 2012 as compared against assertions made by the respondents' former solicitor on 31 October 2012 that: It should also be obvious that whilst Vivo may not have the same level of sales in 2012 as it did in 2011, it also does not have the corresponding costs of sales as a liability. … Vivo's overheads are at a minimum, and therefore there is no reason for your clients to be concerned as to our clients' ability to satisfy any adverse costs order in the event that is required.

Interlocutory application 33 On 26 June 2013, TiVo filed its interlocutory application dated 24 June 2013. 34 On 28 June 2013, Mr Creek advised the Court and Vivo's solicitors that TiVo proposed to cross-examine Mr Grassia on his affidavits sworn 6 and 24 June 2013 at the hearing of their interlocutory application. 35 By an email dated 4 July 2013, Ms Roppolo advised the Court (and TiVo's solicitors) that Vivo would not read Mr Grassia's affidavits of 6 and 24 July 2013 at the hearing of the interlocutory injunction and stated that Mr Grassia would not attend for cross-examination unless ordered to do so. 36 By her affidavit sworn on 4 July 2013, Ms Roppolo deposed to various correspondence and annexed, inter alia, the affidavits of Mr Grassia sworn on 6 June and 24 June 2013. 37 On 6 July 2013, TiVo advised the court that it would not seek to cross-examine Mr Grassia. 38 By an affidavit sworn on 12 July 2013, Mr Creek annexed materials including three affidavits sworn by Mr Grassia on 5 April 2012, 10 April 2012 and 19 September 2012 in support of the stay applications.

applicable authorities 39 In Dr Martens Australia Pty Ltd v Bata Shoe Company of Australia Pty Ltd (1997) 75 FCR 230; 145 ALR 233 ("Dr Martens"), Goldberg J held that an applicant alleging infringement of a trade mark and/or passing off is not required to elect between the inconsistent remedies of an account of profits and damages before the end of the evidence in a trial where quantum and liability were not split, nor, on any view, unless and until the party could make an informed choice. 40 Goldberg J referred to Personal Representatives of Tang Man Sit v Capacious Investments Ltd [1996] AC 514; 2 WLR 192; 1 All ER 193, in which Lord Nicholls of Birkenhead (who delivered the judgment of the Privy Council (Hong Kong)) observed that there was nothing unfair about requiring the plaintiff to make an election when he knew "enough of the facts to assess where his best interests lie" ([1996] AC 514 at 521). 41 Lord Nicholls contemplated that the stage at which such a state of knowledge was reached could vary. His Lordship noted that a plaintiff may not know at the end of a trial how much money the defendant has made from the wrongful use of the property and it may be unreasonable to require the plaintiff to make his choice without further information, so that "the court may make discovery and other orders designed to give the plaintiff the information he needs, and which in fairness he ought to have, before deciding upon his remedy" (AC 514 at 521). 42 Goldberg J referred to LED Builders Pty Ltd v Eagle Homes Pty Ltd (No 3) (1996) 70 FCR 436; 36 IPR 293 where Lindgren J held, in the context of a split trial, that a plaintiff entitled to elect to have an inquiry as to damages or as to profits, must do so before any hearing on the quantum of monetary relief. 43 While Goldberg J did not accept that a plaintiff is obliged to elect only after the Court has delivered judgment and indicated what might be awarded for damages or profits, in contrast to Lindgren J, he concluded that an election could be made at the conclusion of an "all issues" hearing or at the second stage of a split hearing, and need not be made before, at least, the conclusion of the hearing of evidence on liability and quantum. 44 Goldberg J observed that although an applicant might elect at an earlier stage on an informed basis, he could not be compelled to do so and was entitled to delay at least until all the evidence was in. In a split trial, would not occur until after the determination of liability.

submissions of the parties 45 In the present case, TiVo submitted that, consonant with the principles stated by Goldberg J in Dr Martens, it was entitled at this stage to the orders sought, to enable it to make an informed election between damages and an account of profits and to recover what was due pursuant to the undertakings. Further, given the history of the matter to date, including Vivo's non-compliances and unsatisfactory conduct in the litigation and the inconsistencies (both internal and with previous evidence) of the material so far provided, an affidavit in the form sought was required in order to ensure accountability. 46 Vivo did not dispute that the applicants were not required to elect until they were in a position to make an informed choice but before me, renewed the submissions made before Allsop CJ that it should be achieved through discovery and, if appropriate, interrogatories. 47 Vivo submitted that the orders of Allsop CJ, were satisfied by the affidavits of Mr Grassia sworn on 6 and 24 June 2013. The information it had already provided enabled TiVo to make an election, as it knew that the Vivo contended that no profit was made. 48 Vivo submitted that what the applicants now sought more than Allsop CJ had ordered. It reiterated that any further information should be provided by way of discovery in categories, particularly as TiVo was likely to challenge its conclusions and discovery would almost certainly prove necessary in any event.

CONSIDERATION 49 In my opinion, TiVo was entitled to the orders it sought. 50 There is, in my opinion, no immutable principle or predisposition favouring discovery or interrogatories as the mechanism to provide an applicant with sufficient information to make an election. 51 Irrespective, however, of whether such means are usually preferred, the court has power to order alternative means in appropriate cases. In the present case, Allsop CJ ordered Vivo to provide an affidavit disclosing specified details and annexing relevant documents, as that course would be less costly and more efficient, thus serving the overarching purpose and ideals of modern commercial litigation. 52 Contrary to Vivo's submissions, the affidavits of Mr Grassia sworn on 6 and 24 June 2013 did not comply with the orders of Allsop CJ for several reasons. First, the affidavit of 6 June 2013 was filed and served a considerable time after the date fixed in the orders. The delay was not satisfactorily explained. More significantly, the contents of the affidavit were, on any view, materially deficient. The affidavit set out the particular matters specified in paragraphs 1(a) to (e) globally, in respect of all Vivo goods collectively. The single spreadsheet annexed was not only, broadly speaking, a version of a spreadsheet already provided but was, as a matter of substance, uninformative. 53 As TiVo submitted, compliance with Allsop CJ's orders also required the annexure of documents evidencing the total number of Vivo branded goods sold or disposed in Australia and the prices obtained, such as, sales invoices, purchase order forms and price lists. 54 Further, order 1(c), of Allsop CJ's orders specifying the annexure of all documents relevant to the costs of sale and disposal, imported a requirement to annex such accounting records as would show the unit costs of any attributable to each of the Vivo goods (as distinct from other goods). 55 The annexure to Mr Grassia's affidavit sworn on 6 June 2013 did not break down Vivo's costs on a product by product basis, although Allsop CJ ordered that the affidavit give the sale price for each of the Vivo goods. It was thus not possible to calculate the profit per unit. 56 While Mr Grassia's affidavit of 24 June 2013 provided additional information and annexures, it did not identify to what the asserted cost of goods related. There was no spreadsheet setting out the cost of goods or the direct expenses of the goods, as opposed to general costs. 57 I was satisfied that what was provided in the affidavits did not enable TiVo to know what would be in its best interests and to make an informed election. 58 While there may be argument over the extent of non-compliance in particular respects, the information provided did not, as a matter of substance, fulfil the purpose contemplated by the orders of Allsop CJ. Although the applicants were notified that Vivo would assert that there was no profit, the orders required not merely the provision of documents on which TiVo could make its own assessment but required Vivo, in order to minimise expense and effort to interpret and assess to some extent the material in the relevant documents. A mere assertion of Vivo's position, unsupported by appropriate documents and demonstrated reasoning, was not a sufficient compliance. A degree of assessment by Vivo was required, which must implicitly be sufficiently consistent, comprehensive and detailed to support an informed election. 59 As TiVo asserted Mr Grassia's affidavits of 6 June and 24 June 2013 contained many material discrepancies and apparent inconsistencies both internally, and when compared with earlier affidavits of Mr Grassia affirmed in relation to the stay applications, including inconsistent sales figures, inconsistent amounts of stock on hand, the apparently sudden increase in sales of non-Vivo products and disparities between Vivo's solicitors' assertions on 31 October 2012 of Vivo's profitability with the large loss Vivo now asserted. 60 The apparent discrepancies and inconsistencies, taken alone, indicated that Vivo had not placed TiVo in a position to make an informed election by the means ordered. Moreover, the context and history of the matter justified concern as to the reliability of the information which Vivo had provided or may in future provide. 61 In response to TiVo's asserted intention to cross-examine Mr Grassia, the Vivo asserted that it did not read Mr Grassia's affidavits which was, in my view, irreconcilable with its reliance on the same in its submissions before me. (In its written submissions, Vivo contended that Mr Grassia's affidavits of 6 and 24 June 2013 complied with Allsop CJ's orders and gave sufficient information to make an election). 62 If the affidavits are not read, there would, in my view, be nothing to answer Allsop CJ's orders. Vivo's entitlement to withdraw affidavits which were filed pursuant to his Honour's order was in any event doubtful. As the affidavits were filed pursuant to the order and the Vivo relied on their contents, there was no cogent basis for the deponent's immunity from cross-examination, albeit leave would be required in an interlocutory application. The annexure of Mr Grassia's affidavits to that of Ms Roppolo appeared designed to avoid both cross-examination and sanction for non-compliance with the order of Allsop CJ. 63 TiVo did not allege contempt. It was accordingly unnecessary to resolve the status of Mr Grassia's affidavits or the precise extent or further consequences of Vivo's non-compliance. In my opinion, the circumstances fully justified the orders for the additional affidavit and protections sought by TiVo in its current interlocutory application.

costs 64 I also considered that Vivo should pay the costs of the interlocutory application on a solicitor and client basis. 65 Vivo's approach to compliance with orders and its obligations as a litigant was at best cavalier and deficient. On one view, it was manipulative and devious. On any view, it was ill advised and reflected poorly on those responsible. 66 To contend that on the one hand that Vivo had complied with the order that it file and serve an affidavit deposing to specified matters and annexing specified documents whilst on the other hand contending that the affidavit (and the supplementary affidavit) were not read was contradictory. It ignored Vivo's fundamental reliance on the contents of the "unread" affidavits to comply with Allsop CJ's orders and to satisfy TiVo's need for adequate information. The annexure of Mr Grassia's affidavits to the affidavit of Vivo's solicitor was contrived. The associated submission that the filing of the affidavits sufficiently complied with the order (irrespective of the truth of their contents) was sophistical. 67 The present application was necessary only because Vivo consistently failed conscientiously and satisfactorily to comply with previous orders aimed at achieving the same substantive relief as that sought by the present application. TiVo was obliged, in essence, to repeat its previous successful application. 68 In such circumstances, an order for solicitor and client costs reflecting disapprobation of Vivo's approach was, in my view, appropriate. I certify that the preceding sixty-eight (68) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dodds-Streeton.