Family operation lose to Sony in counterfeit PlayStation case

Australia

In Sony Computer Entertainment Australia Pty Ltd v Kasmara, the Federal Court of Australia has ordered a family group of traders that dealt in counterfeit PlayStation games to pay Sony for profits made on the sale of the games between 1998 and 2002.

Family company MJM 2000 Plus Pty Ltd imported, manufactured and sold counterfeit PlayStation games. Sony conducted an investigation into the group's activities and made 'trap' purchases of counterfeit items. Sony commenced proceedings in the Federal Court, alleging infringement of its marks PLAYSTATION, PS and PS2 by reason of the presence of electronic representations of the marks on the items.

Sony also applied for and was granted an Anton Piller order, which resulted in the seizure of a large number of games as well as sophisticated computer equipment from the respondents' premises.

At the hearing seeking final relief in the case - at which the respondents did not appear and were not represented - the court accepted Sony's evidence as to the nature and extent of the business conducted by the respondents. Justice Allsop said:

"On the evidence before me I am satisfied that the respondents […] were knowingly involved in the sales of [the infringing products] and that they are fully aware that they are carrying on infringing behaviour. The question of liability is, in my view, clear."

The judge held that the respondents' business appeared to have been "flourishing, continual and in existence for over five years". On the evidence, he concluded that there was a "knowing, dishonest, flagrant and continual breach of [Sony's] trademarks". Allsop ordered the respondents to pay A$200,000 for Sony's lost profits, and A$120,000 for costs.

For discussion of another case involving counterfeits of Sony products, see PLAYSTATION counterfeiters hit with heavy fines.

Peter Chalk, Blake Dawson Waldron, Melbourne

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