Trade Mark News & Information

Trademark Lawyers Australia – Federal Court – Dallas Buyers Club

Dallas Buyers Club LLC v iiNet Limited (No 4) [2015] FCA 838 (14 August 2015)

This is part of the ongoing efforts by Dallas Buyers Club (DBC) to obtain access to details of account holders who had been illegally sharing its film over the BitTorrent network.

Perram J had previously allowed this subject to being satisfied with the content of what DBC proposed to say to such account holders.

His Honour subsequently made it clear to DBC that he would not approve anything unless DBC indicated what money it sought to recover, or at least the methodology underlying its approach to the amounts it was going to claim.

The figures proposed by DBC cannot be published due to confidentiality, but it was seeking damages under four heads. Perram J did not have any difficulty with two of the four claims put by DBC. Basically, his Honour was prepared to allow claims for (a) the cost of an actual purchase of a single copy of the film for each copy of the film downloaded, and (b) damages arising from the amount of money it has cost DBC to obtain each infringer’s name. However, his Honour considered claims for an amount relating to each infringer’s uploading activities and further downstream infringements, as well as for additional (punitive) damages, were untenable.

Perram J indicated he would allow access, provided DBC gave a written undertaking only to use the information obtained for the purpose of seeking amounts for the two permissible claims. However, since DBC has no presence in Australia, his Honour also set a bond by way of bank guarantee in the amount of $600,000 to secure compliance with this undertaking.

His Honour also indicated that, in future cases where preliminary discovery is sought against persons such as ISPs with a view to contacting a large class of potential defendants, it will be essential for the prospective applicant to put on evidence of the nature of the demands or claims it proposes to make.