Remedies in Intellectual Property Law in Australia Post-Redbubble

Intellectual Property Society of Australia and New Zealand annual conference^[1]

Download RTF - 241 KB

I   Introduction

Earlier this year, the Full Court of the Federal Court of Australia delivered the decision of Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited (2024) 177 IPR 20; [2024] FCAFC 15 (Perram, Nicholas, Burley, Rofe and Downes JJ). That decision provides the background for this paper about remedies, because that appeal was primarily concerned with remedies which are available for trade mark infringement. It is relevant to observe that special leave to appeal to the High Court of Australia from this decision was refused with costs on 6 June 2024: [2024] HCASL 165.

The relevant facts of the case may be stated briefly.

The appellant is an Australian company, Redbubble Ltd (‘Redbubble’), which operates a website, www.redbubble.com. The website brings together creators of graphic designs who wish to make them available for sale to the public, consumers who wish to print the designs on merchandise (such as T-shirts, caps and mugs), suppliers who produce the merchandise imprinted with the graphic designs and shippers who transport the completed item to the consumer.

The creators open an account with Redbubble and upload their designs to their account, nominating the products to which the designs may be applied and providing titles, descriptions and ‘tags’ for the designs. Once that process is complete, creators can make their designs available for sale, at which point Redbubble will cause copies of the designs to be displayed on its website. Each uploaded design is assigned an individual page within the website.

The website operates in such a way that the designs can be made to appear on merchandise on the user’s device. However, these images are computer-generated and do not entail the existence of any actual merchandise. Designs that are uploaded are therefore depicted on a range of virtual merchandise such as T-shirts, coasters and face masks.

Consumers may browse the website pages and search for particular designs. Once a design is selected and the appropriate fee paid, the website enables the consumer to have the design printed on the chosen item. Redbubble arranges for a supplier to bring the item into existence with the design printed on it and it is then shipped to the consumer.

The problem with which the appeal was concerned arose when a creator uploads a design which infringes another person’s registered trade mark. Redbubble maintains content moderation procedures to detect occurrences of this kind but these systems are neither perfect nor instantaneous (and the evidence adduced at trial was to the effect that they could be neither of those things).

The imperfections in these systems brought Redbubble into contact with the Hells Angels. The Hells Angels are an international confederation of motorcycle clubs. In 1966, the members of the club voted to create a non-profit corporation to own, licence and protect Hells Angels’ intellectual property. A Californian company known as Hells Angels Motorcycle Corporation is a successor in title to that original entity. In the judgment, we referred to this entity as Hells Angels US. Hells Angels US is the registered proprietor of five Australian trade marks which are variously for the words ‘Hells Angels’ and/or varying images of a skull wearing a winged helmet.

Hells Angels US has entered into an exclusive licence to use the five trade marks in Australia with an Australian company known as Hells Angels Motorcycle Corporation (Australia) Pty Limited. In the judgment, we referred to the Australian entity along with Hells Angels US as Hells Angels unless it was necessary to distinguish between them. I will do the same in this paper.

The cause of the litigation was that various third parties had uploaded designs to the Redbubble website which contain images including the words ‘Hells Angels’ and/or a skull wearing a winged helmet.

Hells Angels sued Redbubble for trade mark infringement and was successful. The trial judge found that third parties had uploaded designs to Redbubble’s website which had features that were ‘substantially identical with, or deceptively similar to’ one or more of the five trade marks. Having found infringement, the trial judge awarded nominal damages of $8,250 and additional damages of $70,000, and granted declaratory and permanent injunctive relief. Redbubble appealed from the orders giving effect to these conclusions, and its appeal succeeded in many respects.

The decision of the Full Court on those questions has ramifications for remedies in intellectual property law in Australia, which will now be addressed.

II   A “prima facie entitlement” to injunctive relief

One question that arose in Redbubble was whether, under Australian law, a party which succeeds on an infringement claim for an intellectual property right is “prima facie entitled” to injunctive relief. As to this question, the trial judge held that:

Discretionary factors as a matter of the law of remedies might mean that a remedy might not go for one reason or another in the face of infringing conduct, but once infringing conduct is made out, a remedy prima facie lies.^[3]

In its context, the Full Court read that statement as being concerned with the grant of the remedy of injunction. However, the members of the Full Court differed as to the correctness of this proposition.

The majority considered that “[p]roperly understood, the statement that a patentee who establishes infringement of a valid claim has a prima facie entitlement to a permanent injunction is both unexceptional and correct”.^[4] In doing so, the majority endorsed the approach taken in the United Kingdom.^[5]

Before considering Redbubble in more detail, the position under UK law will be addressed.

The Supreme Court decision of Lawrence v Fen Tigers Ltd [2014] AC 822; [2014] UKSC 13 is arguably the leading authority, although I note that this case concerned the law of private nuisance rather than infringement of intellectual property rights. Nevertheless, it gave rise to principles of general application regarding permanent injunctive relief that have since been applied in the intellectual property context. Lord Neuberger PSC emphasised that the discretionary power of the court to grant injunctive relief is a wide one. Yet, his Lordship stated that prima facie an injunction should be granted, and the legal burden is on the defendant to show otherwise. That is, of course, the language of a rebuttable presumption.

This proposition was adopted by the UK Supreme Court in Conversant Wireless Licensing SARL v Huawei Technolgies [2021] 1 All ER 1141; [2020] UKSC 37 (relevantly an appeal from Birss J, as his Lordship then was, in the Patents Court). In that decision, it was stated by the Court that “[i]n English law, once a patent owner has established that a patent is valid and has been infringed, it is prima facie entitled to prevent further infringement of its property rights by injunction.” That statement appears at [246] of the Redbubble decision.

The decision of Evalve Inc v Edwards Lifesciences Ltd [2020] EWHC 513 (Pat) was also a patent case and was cited at [247] of the Redbubble decision. This case concerned the award of permanent injunctive relief in circumstances where there were findings of infringement of the claims of two patents relating to medical devices used to treat mitral valve regurgitation. When considering the availability of damages in lieu of an injunction, Birss J stated:

Lord Neuberger’s judgment [in Lawrence]… makes it clear that the discretion is a wide one, albeit that this does not prevent the courts from laying down rules as to what can and cannot be taken into account. Lord Neuberger specifically held that prima facie an injunction should be granted, and the legal burden was on the defendant to show why it should not (at [121])…

I turn now to consider the Australian position as to the application of such a principle to infringement of intellectual property rights in light of Redbubble.

The Full Court in Redbubble considered the following passage of Cotton LJ in Proctor v Bayley (1889) 42 Ch D 390 at 398 (Court of Appeal):

Where a patent is infringed the patentee has a prima facie case for an injunction, for it is to be presumed that an infringer intends to go on infringing, and that the patentee has a right to an injunction to prevent his doing so.

The majority of the Full Court took the view, expressed in admirably concise reasons at [243]–[248]:

It has never been doubted that a permanent injunction is anything other than a discretionary remedy. However, in the intellectual property field, specifically in cases involving the protection of patent, copyright or trade mark owners’ statutory rights, a permanent injunction is usually granted as a matter of course against a respondent who is found to have infringed those rights, at least if there is a prospect that the respondent will engage in further acts of infringement. It is in that sense that it is sometimes said that the rights owner has a prima facie entitlement to a permanent injunction once infringement of its exclusive right is established.

This is what we understand Cotton LJ to mean in Proctor v Bayley (1889) 42 Ch D 390 at 398 when he said that “[w]here a patent is infringed the patentee has a prima facie case for an injunction, for it is to be presumed that an infringer intends to go on infringing, and that the patentee has a right to an injunction to prevent his doing so.” Fry LJ said at 401 “… an injunction is granted for prevention, and where there is no ground for apprehending the repetition of a wrongful act there is no ground for an injunction.” The English Court of Appeal set-aside an injunction where the infringing acts occurred more than four years before the proceeding was commenced and where there was no suggestion that they would be repeated.

Of course, if the evidence showed that there was no risk of a repetition of the infringing conduct, then the respondent might avoid an injunction. In Proctor v Bayley it was apparent from the circumstances in which the proven infringement was found to have occurred that the risk of further infringement was negligible. Even then, much may depend upon the degree to which the court can be confident that there will be no repetition of the infringing conduct. But generally speaking, unless the court is persuaded that there is no significant risk of further infringement occurring, or unless there exists some other discretionary reason for refusing the remedy, a final injunction will usually be granted against a party that is found to have infringed.

It is well established in the United Kingdom that once a patentee has established that its rights have been infringed, it has a prima facie entitlement to prevent further infringement of those rights by injunction. The United Kingdom Supreme Court said in Huawei Technologies Co Ltd v Conversant Wireless Licensing SARL [2020] UKSC 37 at [3]:

In English law, once a patent owner has established that a patent is valid and has been infringed, it is prima facie entitled to prevent further infringement of its property rights by injunction.

In the United Kingdom a general injunction to restrain future infringements is the normal remedy for the successful patentee and it is for the defendant to show why such an injunction should not be granted: Evalve v Edwards Lifescience (No 2) [2020] EWHC 513 (Pat); [2020] RPC 30 at [73]. We do not consider the law in Australia is in that particular respect different from that of the United Kingdom.

Properly understood, the statement that a patentee who establishes infringement of a valid claim has a prima facie entitlement to a permanent injunction is both unexceptional and correct. In our opinion, the statement of Burley J (in the patent context) in Merck Sharp & Dohme Corp v Wyeth LLC (No 4) [2020] FCA 1719; (2020) 157 IPR 1 at [8] was correct as was the primary judge’s statement (in the trade mark context) at [138] of his reasons. We do not agree that recognition of the rights owner’s prima facie entitlement to an injunction upon proof of infringement has the potential to expand the scope of the rights owner’s statutory monopoly or that the discretionary nature of the remedy is inconsistent with any prima facie entitlement to the remedy. The scope of the monopoly is defined by the Act rather than by the scope of relief granted, and a final injunction should not by its operation provide the rights owner with any wider protection than that to which it is entitled under the Act.

By contrast, Perram J and I construed the statement from Proctor as relevant only to its specific context, that being a discussion of the risk of repetition of infringing conduct. As such, we did not consider Proctor to be authority supporting the primary judge’s conclusion that a prima facie entitlement to injunctive relief lies in a finding of infringement.

Our key reasons are found in [201]–[203]:

…For the reasons we have given, in our view the correct position is that on proof of infringement a plaintiff is generally entitled to an injunction.

We have spent some time labouring what might appear to be a very slight semantic difference. However, the question is important for at least two reasons. First, the use of the prima facie standard increases the scope of the statutory monopoly which has been granted and elevates it above that enjoyed by other property rights which can be protected by a final injunction. In particular, it is apt to encourage a perspective of these property rights which distracts attention from the discretionary nature of the remedy. Whilst we accept of course that in the case of intangible property rights the courts must be astute to ensure that they are given continued vitality by injunctive relief, that important end is adequately catered for by equity’s acceptance that in this area damages are not an adequate remedy. We do not think it would be appropriate or necessary further to privilege this set of property rights by erecting a prima facie entitlement to injunctive relief on proof of infringement.

The second reason is practical and relates to the first. The idea that there is a prima facie entitlement to a final injunction carries with it the risk of distracting courts and practitioners alike from the discretionary nature of the remedy. In the case of the former, the use of the expression can engender the kind of confusion evident in Colgate Palmolive. In the case of the latter, the suggestion that there is a prima facie entitlement to an injunction is likely to engender unnecessary debate. The remedy is discretionary and language which distracts from that should, in our respectful opinion, be eschewed.

Other than Redbubble and the decision of Burley J in Merck Sharp & Dohme Corp v Wyeth LLC (No 4) (2020) 157 IPR 1; [2020] FCA 1719 which is referred to in Redbubble at [198]–[201] and [248] and which latter case supported the notion of a prima facie entitlement, there is scant (and conflicting) reference in the Australian authorities to a “prima facie entitlement” to a permanent injunction. Thus, Redbubble, by reason of its status as a Full Court decision, has cemented the proposition of prima facie entitlement in Australian law.

The earliest reference to a prima facie entitlement to an injunction appears in Need v J.H. Coles Proprietary Limited (1931) 46 CLR 470 – a case concerning the use of a company’s registered trade name. In that case, Dixon J (as his Honour then was) (in dissent) said (at 485), “the Company possesses a trade reputation to which its trade names attach, and prima facie it is entitled to the protection of an injunction restraining any unauthorised use of the names”.

Some decades later, in Australian Associated Motor Insurers Ltd v Australian Automotive Motor Inspection Centre Pty Ltd (2003) 60 IPR 92; [2003] FCA 1088 – a case concerning the award of an interlocutory injunction in a trade mark infringement case – Heerey J referred (at [34]) in obiter to (but did not appear to endorse) the proposition in Meagher, Gummow and Lehane’s Equity: Doctrines and Remedies that “a plaintiff became entitled to an injunction prima facie if he proved infringement of his patent or copyright.”

Perhaps the most substantive consideration of this issue was given by Finkelstein J in Louis Vuitton Malletier SA v Knierum [2004] FCA 1584.^[6] In that case, his Honour considered whether, in intellectual property cases, a successful plaintiff should be entitled to an injunction “as of right”. Finkelstein J analysed the English decision of Colgate Palmolive Limited v Markwell Finance Limited [1990] RPC 197.^[7] In this case, Falconer J said (at 200) that:

It is a well-settled principle, supported by an abundance of authority that, in respect of property rights, in particular intellectual property rights … a person whose right has been infringed is entitled to come to court to have his rights pronounced upon and vindicated and to an injunction against the infringer.

In Finkelstein J’s view (expressed at [14]), Falconer J’s words taken literally suggest that a plaintiff in an intellectual property case may obtain an injunction without first establishing that his rights will be infringed in the future; in other words, that a plaintiff is prima facie entitled to an injunction against the infringer. However, Finkelstein J disagreed with Falconer J’s statement of the principle and rejected the applicant’s contention that an entitlement to injunctive relief exists prima facie in intellectual property law, having regard to various other authorities including, relevantly, Proctor v Bayley. His Honour stated at [15] that:

The true position is this. The basis for the grant of an injunction in an intellectual property case is in every respect the same as in any other case. The plaintiff must show that there is a risk that the defendant will engage in infringing conduct in the future. If the plaintiff is unable to make good that proposition, he will not obtain an injunction.

In other Australian cases, the Court has engaged in an evaluative process of discerning whether permanent injunctive relief ought to be awarded having regard to the well-established discretionary considerations relevant to the grant of injunctions: see, for example, Truong Giang Corporation v Quach (2015) 114 IPR 498; [2015] FCA 1097 (Wigney J); QS Holdings Sarl v Paul’s Retail Pty Ltd (No 2) [2011] FCA 1038 (Kenny J) . These considerations include whether the infringing party has given any undertakings not to infringe in the future; whether it has ceased or continued the infringing conduct; the scale of the infringing conduct; and the infringing party’s conduct generally and in the proceedings. Each of these factors appear to fall within the broader, overarching consideration as to the risk that the infringing conduct will be repeated or continued in the future.

Although the decision of Redbubble confirms that there is a rebuttable presumption in favour of the grant of a permanent injunction to a party which establishes infringement of an intellectual property right (patent, trade mark and copyright), a party seeking a permanent injunction should prepare to adduce evidence relevant to any discretionary considerations which might be raised by the infringer and which tell against such relief being granted.

A party opposing the grant of a permanent injunction will certainly need to consider adducing such evidence if they wish to avoid an injunction being granted.

As to the factors which might be addressed by such evidence (whether for or against an injunction), Australian courts have considered a non-exhaustive list of discretionary factors in deciding whether to award a permanent injunction. These include:

(1) the risk of repetition of infringement;

(2) the nature of the prior infringing conduct, such as flagrancy, duration and proximity in time; and

(3) whether the infringer has offered an undertaking, including a “without admission” undertaking, either to the intellectual property right owner or the court.

As to (1), Australian courts have generally refused to grant a permanent injunction where there is no risk of any repetition of infringement: see, for example, Sporte Leisure Pty Ltd v Paul’s International Pty Ltd (No 3) (2010) 275 ALR 258; (2010) 88 IPR 242; [2010] FCA 1162 at [138] (Nicholas J). It is yet to be seen whether Redbubble will alter this position.

III   Form of injunction

Notwithstanding the prima facie entitlement, the Court may decide to mould the form of any permanent injunction to do justice in a case’s particular circumstances, as occurred in Redbubble.

While Perram J and I did not consider that an injunction should be granted, the majority considered that one should be granted, stating at [252]–[254] as follows:

There are two concerns that have been raised by Perram and Downes JJ concerning the alternative form of injunction proposed by Redbubble. The first is that an injunction in that form would require Redbubble to comply with its existing content moderation protocols in circumstances where there is no suggestion that it will cease doing so in the future. The second concern is that by granting an injunction in those terms the court would be giving its imprimatur to Redbubble’s content moderation protocols.

The proposed injunction does not require Redbubble to maintain the surveillance system used by it to monitor for, and detect, potentially infringing content. However, by maintaining such a system Redbubble lessens the burden and the risk that it might otherwise face if the restraints imposed by paras 1 and 2 of the proposed orders were left unqualified. This approach resembles that which has been successfully adopted when making “site blocking” orders under s 115A of the Copyright Act 1968 (Cth) against internet service providers: see, for example, Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503; (2016) 248 FCR 178. The orders usually made under that provision enable the respondent to know precisely what steps it may take in order to ensure that it complies with the site blocking order.

As to the second concern, the fact that the court considers the injunction proposed by Redbubble is more appropriate than an injunction in general form restraining infringement of the registered marks does not prevent another applicant in a different case seeking injunctive relief in the general or some other form. What injunctive relief (if any) should be granted at the suit of a different applicant who establishes that its rights have been infringed by Redbubble will depend on the right infringed (eg. copyright or trade mark), the circumstances of the infringement and the evidence, including any evidence of the surveillance and moderation policies and practices followed by Redbubble at the time any such proceeding is heard. In that regard, we did not understand Hells Angels to contend that there would be no utility in the injunctive relief proposed by Redbubble, even though its primary position was that there should be a general injunction. Clearly, the injunction proposed by Redbubble has significant advantages for Hells Angels in that it will require Redbubble to take prompt steps to remove infringing material that escapes the notice of its surveillance system, but which is brought to its attention by Hells Angels.

As a consequence, the Full Court granted a permanent injunction in the following terms:

1. Subject to orders 3 and 4 below, the Appellant, by itself, its servants or agents, and without the licence of the First Respondent or the Second Respondent, be restrained from:

(a) using Examples 1, 5, 7, 8, 9, 10 or 11 as a trade mark in Australia in relation to the goods or services in which trade marks 526530, 723219, 1257992, 723463 and 1257993 are registered, and insofar as those trade marks remain registered;

(b) using Example 2 as a trade mark in Australia in relation to the goods or services in which trade marks 723219 and 1257992 are registered, and insofar as those trade marks remain registered;

(c) using Example 4 as a trade mark in Australia in relation to the goods or services in which trade marks 723463 and 1257993 are registered, and insofar as those trade marks remain registered;

(d) using Examples 3 and 6 as a trade mark in Australia in relation to the goods or services in which trade marks 723219, 1257992, 723463 and 1257993 are registered, and insofar as those trade marks remain registered.

2. Subject to orders 3 and 4 below, the Appellant, by itself, its servants or agents, and without the licence of the First Respondent or the Second Respondent, be restrained from infringing trade marks 526530, 723219, 723463, 1257992 and 1257993 in Australia in relation to the goods or services in which they are registered, insofar as those trade marks remain registered.

3. The Appellant will not be in breach of orders 1 or 2 if:

(a) it maintains a system involving the surveillance of its website at www.redbubble.com (the Website) and the removal of images that might infringe the marks referred to in orders 1 and 2 above which is no less rigorous than that which it had in place as at 24 August 2022 and is referred to in the affidavit of Mr Joel Barrett of that date as "Proactive Moderation"; and

(b) within seven days of an image to which orders 1 or 2 above refers being identified on the Website by the Appellants or its servants or agents, the Appellant removes the image from the Website.

4. Notwithstanding Order 3, the Appellant will be in breach of order 1 or order 2 if, on the First Respondent or the Second Respondent or both of them becoming aware of an image to which such order refers being available on the Website, and notifying the Appellant of the image by sending an email to legal@redbubble.com (or such other email address as notified by Appellant in writing from time to time):

(a) with the subject field 'Hells Angels Complaint';

(b) identifying the image by reference to the location of the image on the Website in the form http://www.redbubble.com/people/[username] /works/[work number and name]; and

(c) stating that the First Respondent and/or the Second Respondent considers that the image would breach Order 1, Order 2 or both,

the Appellant fails to remove the image or images from the Website within seven days of such email.

In light of Redbubble, practitioners acting for a party against whom a permanent injunction is sought should consider whether their client should contend that an injunction in general terms would be disproportionate (and adduce evidence to demonstrate this) and that a more flexible form of injunction should be granted that more accurately balances the competing interests (and propose such an injunction, as occurred in Redbubble).

IV   Damages

The Redbubble appeal involved a substantive consideration of key issues concerning damages, namely the award and quantification of nominal and additional damages for trade mark infringement. Compensatory or general damages were not in issue in Redbubble, because the primary judge’s decision to award nominal damages in lieu of compensatory damages was not challenged on appeal. For that reason, compensatory damages will not be addressed in this paper.

Nominal damages

In cases where there is a finding of infringement of an intellectual property right, but where loss or damage cannot be established on the evidence to justify an entitlement to compensatory damages, courts often award damages in a nominal amount in order to formally recognise the infringement of an exclusive proprietary right.

In Redbubble, the trial judge awarded nominal damages of $8,250. While the Full Court agreed with the decision to award nominal damages, on the basis that loss or damage sufficient to result in compensatory damages was not established on the evidence, we took issue with the quantum of $8,250 as not being nominal. Instead, we awarded nominal damages of $100.^[8] The Court emphasised that nominal damages are awarded as a “token sum” which is “not necessarily minimal, but it must be small”.^[9] While we recognised that the quantification of nominal damages is inherently discretionary, the “critical point” is that the figure should be nominal.^[10] Nominal damages in the intellectual property context are typically awarded in the amount of $10–$100.

Additional damages

Depending on the intellectual property right in question, the entitlement to an award of additional damages is established by s 115(4) of the Copyright Act, s 122(1A) of the Patents Act and s 126(2) of the Trade Marks Act. The factors that the court considers when determining whether to award additional damages are set out under each of these provisions, namely: the flagrancy of the infringement; the need to deter similar infringements; the conduct of the infringing party after the act constituting the infringement or after the party was informed that it had allegedly infringed; any benefit shown to have accrued to the infringing party because of the infringement; and all other relevant matters. In the copyright context, the court also has regard to whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analog form into a digital or electronic machine-readable form.

By reference to the relevant factors, practitioners should turn their mind to the type of evidence which their clients can and will adduce at a trial on relief, and the steps which they will otherwise take, to obtain or avoid an award of additional damages, and which will affect the quantum of such damages.

In Redbubble, the Court engaged with each of the factors which were relevant to additional damages in the trade mark context. We noted that determining the quantum of additional damages involves “an overall synthesis of the relevant factors”.^[11] Consideration was given to whether the size of an award of compensatory or nominal damages is a “relevant matter” in both the award and subsequent quantification of additional damages, and concluded that it was relevant to both questions.^[12] That is because the need for deterrence is one factor that must be considered when making an award of additional damages, and in our view, “it is difficult to see how the Court can assess what specific deterrence requires without having regard to the size of any award of compensatory damages.”

We concluded that the factors in s 126(2)(a), (c), (d) and (e) of the Trade Marks Act (to the extent that it related to the failure of Hells Angels to notify Redbubble that it had detected the infringing works) all told against an award of additional damages. As to s 126(2)(b), we considered that we could not identify a presently plausible need for specific deterrence and that, while the needs of general deterrence did mildly favour an award of additional damages, overall, the matters referred to in s 126(2) were “preponderantly against such an award” such that no additional damages were awarded.^[13]

V   Rethinking the utility of declaratory relief

Declarations are a form of final relief frequently awarded in intellectual property cases. The Court’s ability to make a declaration and define its terms is a “wide discretionary power” under s 21 of the Federal Court of Australia Act 1976 (Cth): Nasib Baik Pty Ltd v Sydney Ridelender Pty Ltd [2022] FCA 301 at [50] (Markovic J). For a declaration to be made, there must be some utility in making the declaration and it must be able to be expressed with precision: E & J Gallo Winery v Lion Nathan Australia Pty Ltd (No 2) [2009] FCAFC 47 at [2] (Moore, Edmonds and Gilmour JJ). The Court must also be satisfied that the question is real, not hypothetical or theoretical, that the applicant has a real interest in raising the issue, and that there is a proper contradictor: Nasib Baik at [50].

The authorities indicate that satisfaction of the utility requirement is generally linked to the remedial purpose of declaratory relief in the intellectual property context. In the trade mark infringement case of Truong Giang Corporation at [87], Wigney J observed that “[d]eclarations relating to contraventions of legislative provisions are likely to be appropriate where they serve to record the court’s disapproval of the contravening conduct and vindicate the applicant’s claim that the respondent contravened the provisions”. In this regard, see also QAD Inc v Shepparton Partners Collective Operations Pty Ltd (2021) 159 IPR 285; [2021] FCA 615 at [130] (Thawley J) (copyright infringement case).

The utility requirement for declarations arose squarely in Redbubble. In that case, we refused to grant declaratory relief on the basis that “the only purpose it would serve would be to vindicate the fact that the trade marks have been infringed.” In our view, given that vindication had already been marked by an award of nominal damages, there was no utility in any further grant of declaratory relief.^[14]

This finding in Redbubble speaks to the overlapping effect of two remedies which are typically sought in intellectual property disputes, being declaratory relief and nominal damages. Central to this overlap is the fact that both remedies share the same fundamental purpose, being the vindication of an intellectual property right.

Before Redbubble, there is little by way of Australian authority which addresses the overlapping purposes of nominal damages and declarations.

In the High Court decision of Lewis v Australian Capital Territory (2020) 271 CLR 192 – which was not an intellectual property case but rather a case concerning damages for false imprisonment – Gordon J recognised the similarities between declaratory relief and an award of nominal damages. Her Honour made the following observation at [119]:

“… a declaration may itself have a vindicatory purpose and effect. And, as has been explained, so too does an award of nominal damages, which can sit alongside the declaration, or finding, of unlawful conduct as part of the appropriate relief.”

In light of Redbubble, it follows that, if nominal damages and declaratory relief achieve the same purpose of vindicating an intellectual property right (as Redbubble recognises), a party is likely to find it difficult to establish that there is utility in obtaining declaratory relief in circumstances where nominal damages are also sought by it.

VI   Conclusion

The Full Court decision of Redbubble is an important decision for practitioners in intellectual property law in Australia insofar as it concerns the grant of permanent injunctions (and the form of such injunctions) and the lack of utility of granting both declaratory relief and nominal damages. When determining the relief to be sought by their client, and gathering evidence to seek or oppose the grant of any such relief, practitioners should be aware of the ramifications of this decision.