Vertical Leisure Limited & Anor v Skyrunner Pty Ltd & Anor  FCCA 2033 (5 September 2014)
The Respondents did not respond to the Originating Application and took no part in the proceeding. The Applicants alleged the Respondents had, since early 2010, been marketing and selling dance poles on various website platforms using the Applicant’s registered X-POLE trade mark shown below and reproducing the Applicants’ copyright in an instructional manual and DVD as well as in brochures and photographs without the authority of the Applicants. At least 160 counterfeit poles were involved at retail and wholesale levels.
The judge, Driver J was satisfied that, on the face of the Statement of Claim, there was a claim for the relief sought and that jurisdiction existed to grant this relief.
Much of the judgment was directed to the calculation of damages and the Applicants elected to just pursue damages for infringement of copyright. His Honour noted there can be no “double dipping” and, where damages are awarded under the Copyright Act, there can be no entitlement to damages for the same conduct for breaches of the Trade Marks Act, The Australian Consumer Law or passing off.
His Honour awarded damages totalling $394,800 comprising $94,800 as compensatory damages ($44,800 in lost profit and $50,000 for damage to reputation) and $300,000 additional damages as a punitive measure reflecting the flagrancy of the Respondents’ conduct. The Respondents were also ordered to pay interest at the rate of 8% up to judgment as well as the Applicants’ costs.