19 October 2012

A Meat Pie Anton Piller Order

A nice instance of the Anton Piller order in Australian Football League & Ors v Hard On Sports & Ors [2012] VSC 475 regarding trade marked sporting memorabilia.

The Court notes that
Australian football is one of the most popular sports in Australia, and attracts a very large number of supporters throughout the country who follow the AFL Competition and support a favoured AFL Club. 
The following may described as the relevant “meat-pie” statistics: in 2011, there were approximately 800,000 registered participants playing the sport in Australia. An additional 45,000 registered participants play Australian football in countries outside of Australia. In 2011, the national television audience of AFL matches was approximately 4.7 million each week. The AFL Grand Final is estimated to attract a worldwide broadcast audience of over 30 million people. An aggregate of 6.763 million people in 2005, 6.736 million in 2006, 7.05 million in 2007, 7.082 million in 2008, 6.985 million people in 2009, 7.147 million people in 2010 and 7.139 million people in 2011 attended matches conducted by the AFL.   
I accept that by reason of the popularity of Australian football, the AFL Competition and AFL Clubs, there is demand amongst AFL Supporters for memorabilia relating to the AFL Competition and AFL Clubs and their players (“AFL Players”), particularly memorabilia signed by AFL Players, including signed guernseys, shorts, football boots and other playing apparel, posters, prints, cards, photographs, lithographs and plaques, many of which are placed in frames for hanging on walls (“AFL Memorabilia”).
The AFL holds 278 registered trade marks relating to the AFL Competition and the AFL Clubs, including the word AFL, the full and shortened name of each AFL Club (eg Collingwood Fotball Club and Collingwood Magpies), the nickname of each AFL Club (eg Magpies) and images of the AFL premiership cup and the Brownlow Medal, each oregistered in respect of a broad range of goods and services that include paper, cardboard, posters, printed matter, albums, autograph books, photographs, mounted photographs, picture frames, works of art, signboards, display boards, display stands and show cases, clothing, leisure wear, sportswear, uniforms, shirts, sports shirts, jumpers, sweaters, guernseys, jerseys and associated wholesaling/retailing.

Hard On Sports [HOS] and its "controlling mind and will" Mr Sumiga are alleged to have engaged in sale of unauthorised AFL products. The Court noted claims that
The memorabilia market in Melbourne has a number of unlicensed suppliers of memorabilia that use AFL Images and AFL Trade Marks and engage directly with players or through their management companies to secure signatures outside of the conditions of the current AFL Commercial Operations Guidelines. The obtaining of these signatures is done without the knowledge or approval of the AFL. … 
HOS has 30,000 to 40,000 pieces of memorabilia on site. The Official AFL Memorabilia program only sells 7,000 to 10,000 pieces of year. While HOS also deals in memorabilia for other sports, its stock holding is 90% AFL products. … 
Australian football supporters who wish to purchase Official AFL Memorabilia knowing that the funds from their purchase will go back to the game and their AFL Club are misled when they purchase unofficial AFL memorabilia. He says on the other hand, no funds from unofficial AFL memorabilia go back to the AFL and by extension to the AFL Clubs. The funds are usually distributed to the players who sign the unofficial AFL memorabilia outside the terms of the official process, the person who arranged for the creation of the product and the retail outlet that distributes the product. [C]onsumers don't easily recognise the difference between Official AFL Memorabilia and unofficial memorabilia especially where they are designed to look the same.
Given concerns about loss or 'leakage' of the contested products in litigation involving claims of passing off, copyright infringement, trade mark breaches and other matters the Court made an Anton Piller order as follows -
Interlocutory injunction 
The Defendants and each of them, whether by themselves, their servants, agents or howsoever otherwise, be restrained until the trial of the proceeding or further order from procuring the creation of, keeping, distributing, offering for sale or selling memorabilia which is not authorised by the AFL, including:
(a) guernseys bearing AFL Trade Marks which were applied without the AFL’s consent; 
(b) guernseys, shorts, football boots and other playing apparel signed by current or former AFL Players placed in frames bearing trade marks which are substantially identical with or deceptively similar to AFL Trade Marks including “AFL”, AFL club names, club nicknames, club logos and/or images of the AFL premiership cup or Brownlow or Norm Smith medals; 
(c) posters, prints, cards, photographs, lithographs and plaques: (i) incorporating reproductions of substantial parts of AFL Photographs; and/or (ii) placed in frames bearing trade marks which are substantially identical with or deceptively similar to AFL Trade Marks including “AFL”, AFL club names, club nicknames, club logos and/or images of the AFL premiership cup and/or Brownlow and/or Norm Smith medals.
Search Orders (pronounced on 9 October 2012)
By 10 October 2012, the independent solicitors deliver to the Plaintiffs' solicitors:
(a) all of the things retained pursuant to undertaking (3) given by the independent solicitors in Schedule B to the search order of Justice Vickery made on 10 September 2012 (Search Order) save that the Plaintiffs shall return to the Defendants from who premises such goods were obtained any irrelevant documents, within 7 days of receipt of the above listed things; and 
(b) the keys to the locks to the storage unit rented by the independent solicitors at Kennards Self Storage located at 159 Racecourse Road, Flemington, Victoria (Storage Facility).
The independent solicitors be otherwise released from undertaking (3) given in Schedule B to the Search Order. 
The Plaintiffs' solicitors keep secure each thing delivered up to them pursuant to paragraph 1 of this order and they only use these things for the purposes of this proceeding. 
The Plaintiffs' solicitors are permitted to make copies of any documents or photographs of any things (as the case may be) and may disclose to the Plaintiffs any information that is acquired from reviewing these things and provide the Plaintiffs with copies of such documents or photographs. 
Until trial or further order of the Court, the Plaintiffs' solicitors are to retain the keys to the locks to the Storage Facility.