Disney Enterprises, Inc v Australian Exim Company Pty Ltd [2009] FCA 719 (2 July 2009)

Last Updated: 7 July 2009

FEDERAL COURT OF AUSTRALIA

Disney Enterprises, Inc v Australian Exim Company Pty Ltd [2009] FCA 719

DISNEY ENTERPRISES, INC. and THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029) v AUSTRALIAN EXIM COMPANY PTY LTD (ACN 093 674 072), RAJESH JAVERI and NELIA SERRANO
NSD 574 of 2009

GRAHAM J
2 JULY 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 574 of 2009

BETWEEN:

DISNEY ENTERPRISES, INC. First Applicant THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029) Second Applicant

AND:	AUSTRALIAN EXIM COMPANY PTY LTD (ACN 093 674 072) First Respondent RAJESH JAVERI Second Respondent NELIA SERRANO Third Respondent

JUDGE:	GRAHAM J
DATE OF ORDER:	2 JULY 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. Pursuant to s 137(5) of the Trade Marks Act 1995 (Cth), that the 53 lunch boxes, 216 tracksuits, 19 cushions and 162 T-Shirts, seized by the Australians Customs Service on 27 May 2009, not be released by the Chief Executive Officer of the Australian Customs Service to the first respondent.
2. Pursuant to s 135AF(3)(b) of the Copyright Act 1968 (Cth), that the 54 tracksuits described as “Hannah Montana” items and 108 lunch boxes and 164 t-shirts described as “High School Musical” items, seized by the Australians Customs Service on 27 May 2009, not be released by the Chief Executive Officer of the Australian Customs Service to the first respondent.
3. That the applicants notify the respondents of these orders and the reasons for judgment delivered on 2 July 2009 by sending a copy of the orders as entered and a transcript of the reasons for judgment by prepaid post to each of the respondents at the addresses given in the application filed 16 June 2009.
4. That the applicants notify the Chief Executive Officer of the Australian Customs Service of these orders by facsimile or other electronic means no later than 5 July 2009 and subsequently provide a copy of the transcript of the reasons for judgment delivered on 2 July 2009 and the orders as entered as soon as those documents become available to the applicants’ solicitors.
5. That the question of costs of the application on 2 July 2009 be reserved.
6. That the matter stand over to 29 July 2009 at 9:30 am before the Docket Judge.
   

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 574 of 2009

BETWEEN:

DISNEY ENTERPRISES, INC. First Applicant THE WALT DISNEY COMPANY (AUSTRALIA) PTY LIMITED (ACN 003 471 029) Second Applicant

AND:	AUSTRALIAN EXIM COMPANY PTY LTD (ACN 093 674 072) First Respondent RAJESH JAVERI Second Respondent NELIA SERRANO Third Respondent

JUDGE:	GRAHAM J
DATE:	2 JULY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. These proceedings were commenced by an Application filed 16 June 2009 along with a Statement of Claim filed on the same date. The Application relates to alleged infringements by the first respondent of a trade mark ‘Hannah Montana’ number 1112567 in respect of goods and services within classes 3, 9, 16, 20, 21, 25, 28, 30, 32 and 41 and alleged infringements of copyright in artistic works that appear in Disney motion pictures entitled ‘High School Musical’, ‘High School Musical 2’ and ‘High School Musical 3’ together with a Disney television program ‘Hannah Montana’ and a Disney motion picture ‘Hannah Montana: The Movie’.
2. On 15 May 2009 the Chief Executive Officer of Customs by his delegate issued a ‘NOTIFICATION OF SEIZURE TO OBJECTOR’ to the first applicant under the Copyright Act 1968 (Cth) in respect of the seizure of certain goods at an address in Brisbane, Queensland under s 135(7) of the Copyright Act 1968 (Cth). The seized goods were said to comprise:

‘Hannah Montana items as follows, one hundred (100) pillow cases, twenty (20) quilt covers, one hundred and twenty-six (126) blankets, eighty-five (85) paper inserts and eighty (80) doona’s.

High School Musical items as follows, one hundred (100) pillow cases, twenty (20) quilt covers, two hundred and fifty (250) blankets, ninety (90) advertising paper inserts and eighty (80) doonas bearing marks substantially identical with or deceptively similar to that belonging to Disney Enterprises, Inc Copyright.’

3. On 27 May 2009 the Chief Executive Officer by his delegate issued a ‘NOTICE OF SEIZURE TO OBJECTOR’ under the Trade Marks Act 1995 (Cth) (the ‘Trade Marks Act’) and a ‘NOTIFICATION OF SEIZURE TO OBJECTOR’ under the Copyright Act 1968 (Cth) (the ‘Copyright Act’).

The goods seized under the Trade Marks Act were described as follows:

‘Hannah Montana items as follows, fifty-three (53) lunch boxes, two hundred and sixteen (216) tracksuits, nineteen (19) cushions and one hundred and sixty-two (162) T-shirts, bearing marks substantially identical with or deceptively similar to that belonging to Disney Enterprises, Inc Trademark.’

The goods seized under the Copyright Act were described as:

‘Hannah Montana items as follows, fifty-four (54) tracksuits.
High School Musical items as follows, one hundred and eight (108) lunch boxes, and one hundred and sixty-four (164) t-shirts, bearing marks substantially identical with or deceptively similar to that belonging to Disney Enterprises, Inc Copyright.’

4. The words ‘High School Musical’ are not the subject of a registered trade mark. The goods and services within the classes mentioned above in respect of which the trade mark ‘Hannah Montana’ is registered include cushions in class 20, lunch boxes in class 21, jogging suits in class 25 and T-shirts in class 25.
5. The first applicant filed Notices of Objection in respect of television programs and motion pictures as previously described and in each still image from those television programs and motion pictures. The Notices of Objection filed with the Australian Customs Service included a series of images in respect of which copyright was claimed.
6. Under s 137 of the Trade Marks Act an objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Chief Executive Officer of Customs. Section 137(1) provides:

‘137(1) An objector may bring an action for infringement of a notified trade mark in respect of seized goods and give notice of it to the Customs CEO:

(a) if paragraph (b) does not apply — within the period (“notified period”) of 10 working days specified in the notice given to the objector in respect of the goods under section 134; or

(b) if:

(i) the objector has, before the end of the notified period, applied in writing to the Customs CEO for an extension of the notified period; and

(ii) the Customs CEO, being satisfied that in the circumstances of the case it is fair and reasonable to do so, has extended the notified period for a number of working days not exceeding 10;

within that period as so extended by the Customs CEO.

7. Subsection 137(5) of the Trade Marks Act provides:

‘137(5) If, after 20 working days from the day on which the action was brought, there is not in force at any time an order of the court directed at the Customs CEO preventing the goods from being released, the Customs CEO must release the goods to their designated owner.’

8. As previously mentioned the Application for infringement of the Hannah Montana trade mark was filed on 16 June 2009, an application for extension of the time within which to bring that proceeding having been made by a letter to the Australian Customs Service dated 1 June 2009 which was granted by the Australian Customs and Border Protection Service by letter dated 16 June 2009, the relevant extension being up to 29 June 2009. Accordingly, the action for infringement of the trade mark, ‘Hannah Montana’, was commenced within the requisite period of time.
9. In my opinion it would be appropriate for an order to be made directed at the Customs CEO preventing the goods, the subject of the ‘NOTICE OF SEIZURE TO OBJECTOR’ under the Trade Marks Act, from being released in accordance with s 137(5) of the Act.
10. In relation to the ‘NOTIFICATION OF SEIZURE TO OBJECTOR’ dated 27 May 2009 under the Copyright Act the applicants seek similar relief under s 135AF(3)(b) of that Act. In my opinion it would be appropriate to make an order under that section preventing the release of the goods in respect of which copyright infringement is claimed, which were the subject of that ‘NOTIFICATION OF SEIZURE TO OBJECTOR’.
11. The ‘NOTIFICATION OF SEIZURE TO OBJECTOR’ dated 15 May 2009 under the Copyright Act falls into a slightly different category. Under s 135AC(2)(c) seized goods are to be released to the importer unless an action for infringement of copyright in relation to the copies is instituted by the objector within a specified period from the day specified in the notice and a written notice stating that the action has been instituted is given to the Chief Executive Officer of Customs within that period.
12. The period within which an action for infringement must be commenced under s 135AC may be extended if, before the end of the period specified in the notice for the purposes of s 135AC(2)(c)(i), a request for extension is made. In relation to the ‘NOTIFICATION OF SEIZURE TO OBJECTOR’ under the Copyright Act dated 15 May 2009 the prescribed ten day retention period was expressed to start from 19 May 2009. Whilst the Australian Customs and Border Protection Service purported to extend the retention period under s 135AC(6) by ten working days to expire on 16 June 2009 the application for a ten working day extension was not made until 1 June 2009 which was outside the period of ten days starting from 19 May 2009 referred to in the ‘NOTIFICATION OF SEIZURE TO OBJECTOR’.
13. As the proceedings were not commenced within the prescribed period of time the application presently made does not permit of an order under s 135AF(3)(b) precluding the Chief Executive Officer of Customs from releasing the goods the subject of the 15 May 2009 notification at this stage.
    

I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Graham.

Associate:

Dated: 6 July 2009

Solicitor for the First and Second Applicants:

L J King of Shelston IP Lawyers

Date of Hearing:	2 July 2009
Date of Judgment:	2 July 2009