PLAYSTATION counterfeiters hit with heavy fines


In Sony Computer Entertainment Australia Pty Ltd v Nguyen (Case 1242/2002), the Federal Court of Australia has issued an order restraining the defendants from infringing the plaintiff's registered trademarks, and from engaging in misleading and deceptive conduct. It also ordered the defendants to pay in the region of A$760,000 in damages and costs.

Sony Computer Entertainment Australia Pty Ltd (SCE Australia) and its Japanese parent company Sony Computer Entertainment Inc (SCE Inc) brought a civil action against two individuals named Tony Nguyen and Ashley Nguyen. Both were involved in an extensive piracy ring that manufactured, sold and distributed counterfeit computer games marked with SCE Inc's famous PLAYSTATION mark. They used mobile phones and neutral locations to conduct sales in an attempt to avoid detection by investigators.

In November last year, SCE Australia obtained and executed an Anton Piller order (the civil equivalent of a search warrant) against Tony Nguyen. When lawyers for SCE Australia gained access to his premises, they found:

  • a large amount of computer apparatus, including equipment involved in the copying of discs and CD-ROMs;

  • more than 30,000 pieces of printed matter depicting, without authorization, SCE Inc trademarks; and

  • catalogues of the games offered for sale by Nguyen.

All of the above were seized and used as evidence in the proceedings.

Ashley Nguyen was served with court documents during a 'sting' operation involving a purchase of counterfeit games.

At trial, the Federal Court of Australia ordered that both defendants account to SCE Inc for profits totalling A$558,000 and pay around A$125,000 in costs. It also made orders restraining them from infringing the PLAYSTATION and other registered trademarks, and from engaging in misleading and deceptive conduct.

These proceedings were part of SCE Inc's extensive anti-piracy campaign in Australia, which has involved more than 110 civil proceedings and 30 criminal prosecutions. The amount awarded to SCE Inc in the case at hand, brings the total sum in judgments handed down by the Federal Court in relation to counterfeit PLAYSTATION-marked material to over A$1.8 million.

Claudia Wallman and Sally Box, Allens Arthur Robinson, Sydney

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