It’s risky business bringing proceedings for IP infringement without proper legal advice. A self-represented Debra Crocker learnt this the hard way over a series of court proceedings, which saw her sentenced to time in prison for contempt of Court and prohibited from instituting proceedings in the Federal Court with limited exception.
Following these recent proceedings,[1] Justice Reeves of the Federal Court made orders restraining Ms Crocker from making further unjustified threats of infringement proceedings and repeating false, misleading or deceptive representations in contravention of ss 18 and 29 of the Australian Consumer Law (ACL).
Background
In the mid-90s, Ms Crocker operated a company that manufactured and supplied child car-safety restraints. When the company ceased trading in 1998, one of its customers, Infa Products, began manufacturing the child restraints itself, marketed as the ‘Securap’.
In 2006, Infa Products agreed to pay Ms Crocker a royalty, in the belief she held a patent over the Securap. However, it declined to make further payments, when it came to light that the patent had lapsed. The company (and its corporate successor, Infa-Secure) then continued to market the Securap until 2014.
In 2014, Ms Crocker commenced proceedings against Infa-Secure and three of its retail customers for trade mark infringement, copyright infringement, misleading or deceptive conduct and passing off.
Proceedings against Ms Crocker
Before discontinuing the proceedings against Infa-Secure, Ms Crocker sent a series of inflammatory emails to retailers of baby/children’s products, which included untrue representations that:
- Infa-Secure infringed Ms Crocker’s intellectual property (IP) by supplying the Securap
- Infa-Secure committed a criminal offence by supplying the Securap
- the addressees would commit a criminal offence by supplying the Securap
- retailers of the Securap would be liable to account to Ms Crocker for proceeds of the sales
- those trading in the Securap were liable to civil suit by consumers purchasing the Securap
- Ms Crocker was entitled to possession of Securaps in a trader’s possession
- Infa-Secure and the retailers acted in disregard of children’s welfare in trading in the Securap.
In response, Infa-Secure brought separate proceedings against Ms Crocker, claiming her representations were false, misleading or deceptive in contravention of ss 18 and 29 of the ACL. Infa-Secure sought an interlocutory injunction restraining Ms Crocker from repeating the representations and she gave undertakings to this effect. However, she was later found guilty of contempt of Court for breaching her undertaking[2] and was sentenced to a term of 13 weeks imprisonment (11 weeks of which were suspended).
Infa-Secure then sought a permanent injunction against Ms Crocker, restraining her from repeating the representations. It further sought a declaration under s 202 of the Copyright Act that Ms Crocker’s threats of action for copyright infringement were unjustifiable, together with an injunction against the repetition of such threats.
In May 2018, Justice Reeves found that Ms Crocker had contravened ss 18 and 29 of the ACL and that Infa-Secure was entitled to the above relief.
Look before you leap – always seek advice first
Ms Crocker’s various proceedings serve to highlight the importance of exercising self-restraint in alleging infringement of your IP. Tread carefully and always with legal advice, as certain representations may amount to false, misleading or deceptive conduct. Furthermore, threatened parties can apply to the Court for relief, including an injunction to prevent further threats and damages for loss suffered as a result of the threat.[3]
____
[1] Infa-Secure Pty Ltd v Crocker (No 3) [2018] FCA 605
[2] Infa-Secure Pty Limited v Crocker [2015] FCA 830
[3] See Trademarks Act 1995 (Cth) s 129, Patents Act 1990 (Cth) s 128, Designs Act 2003 (Cth) s 77 and Copyright Act 1968 (Cth) s 202
