Legal Updates

Intellectual Property Law – Copyright Infringement – Trade Mark Law –  Trade Mark Infringement - Registered Designs – Infringement of Registered Designs – Internet Law - Sale to Other Jurisdictions - Playstation

The case of KK Sony Computer Entertainment and Another v Pacific Game Technology (Holding) Ltd [2006], concerned the infringement of copyright in computer games systems under the name of ‘PlayStation’. The first claimant was a Japanese company and the second claimant was its UK subsidiary. Both claimants were corporate incarnations of the well known Japanese electronics group, Sony.

One of Sony's products was the latest version of its highly successful family of computer game systems marketed under the name 'PlayStation' which the second claimant marketed and sold in over 100 countries, including countries within the European Economic Area (“EEA”). In respect of those computer game systems Sony owned:

§   Five Community trade marks;

§   One UK registered trade mark (those registrations included the word 'PlayStation');

§   Two registered designs (those being a UK registered design and a Community registered design); and

§   Several copyright works (including the computer program, the menu icons, the surface design of the box and the user manual).

The defendant was a company incorporated in Hong Kong which operated a website, The website had been set up to offer for sale a variety of commercial video games, consoles and accessories for playing music, video games and such items. The defendant also marketed and offered for sale from its website portable consoles (PSP consoles) and related games, movies and accessories.

The PSP consoles so offered were genuine products made by Sony for sale within the Japanese market only. The claimants' case was that by targeting customers in the EEA, in particular, the UK, the defendant had infringed Sony's intellectual property rights associated with the PSP consoles. They also submitted that the intellectual property rights in the items associated with the PSP (such as the packaging) had also been infringed. They sought appropriate injunctions, delivery up, disclosure of names, and an enquiry as to damages, or in the alternative, an account of profits and costs.

Following an unsuccessful application by the defendant for the court to decline to exercise its jurisdiction, the action continued undefended. The issues to be considered before the court were:

§   Whether the claimants had consented to have the relevant products sold in the EEA; and

§   Whether by offering the goods for sale on its website, the defendant had fallen within any of the acts which gave rise to infringement under the relevant statute.

The application was allowed.  The acts complained of had been perpetrated not in Hong Kong, but in the EEA, and without Sony's consent. Were these acts, complained of, committed physically within the EEA they would have been infringing acts. The electronic intermediary of a website which focussed at least in part on the EEA could not make them any less so. The claimants were therefore entitled to the reliefs sought.

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.




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