02 July 2010

Prison for Infringement of IP Rights in Australia!

Deckers Outdoor Corporation Inc. v Farley (No 8) [2010] FCA 657 (24 June 2010)

Contempt - Power of the court to punish contempt - whether disobedience of court order constitutes contempt of court

With only a small number of exceptions (mostly related to copyright), infringement of intellectual property rights is not generally a criminal offence in Australia.  However, this recent decision of Justice Tracey in the Federal Court of Australia demonstrates that injunctions against continuing infringement can have very sharp teeth!

Over a number of years, Deckers Outdoor Corporation Inc, the present owner of the UGG Australia brand (well-known for sheepskin boots, right, although we do not guarantee that these are the genuine article) has been engaged in litigation to prevent ongoing infringement of its trade marks, copyrights, and other elements of brand identity.  During this time, the Federal Court has issued a number of injunctions restraining various parties from continuing infringement.  A number of those parties have flagrantly ignored the court's orders.

As a result, the court has now sentenced three of the restrained parties to terms of imprisonment, in one case for three years!  The penalties are for contempt of court, on the basis of disobedience of the earlier injunctions.

Although Deckers is not a patent case, we can see no reason why the same principles would not apply to a party that flagrantly disobeyed an injunction in respect of patent infringement.

1 comment:

Peter Groves said...

Given the controversy surrounding the "privatisation" of the word UGG by Deckers - to my mind, an egregious case of corporate avarice - this is particularly depressing.

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