Monday, 24 May 2021

Commonwealth Director of Public Prosecutions v Citigroup Global Markets Australia Pty Ltd [2021] FCA 511

I was having a look at this LPP privilege and waiver case and it reminded me of how we used to do things in my team at the ACCC.

We often had a designated note taker for meetings who was the only person who would take notes, particularly meetings with witnesses. There was nothing worse than a bunch of ACCC officers attending a meeting and all of them taking notes of what the witness said, which ended up all being slightly different. Later on if those notes had to be handed over to the other side you have just given the respondents / defendants a field day in terms of seeking to exploit prior inconsistent statements purportedly made by your witness.

Even better why take notes at all - just audio record the interview so as to avoid any mistakes or misinterpretations about what the witness said.

Another option I liked was to not write anything down at all once we were in litigation unless absolutely necessary. It was much easier and safer to just pick up the phone and have a chat rather that firing off an email.

Nothing worse than cruelling your own witnesses!

Australian Company Loses Ugg Trademark Battle

Unfortunately, we lost our appeal to the US Court of Appeal for the Federal Circuit - see the attached article from the New York Times.

The strangest part was that after the argument and the Court saying it would reserve its decision, it then issued a decision without providing any reasons. This was particularly surprising given Judge Chen's statements at the hearing about the doctrine of foreign equivalents:

"Is there any earthly reason why we would have a different rule for an English-speaking foreign nation than a foreign speaking foreign nation when you’re taking words out of that respective country’s dictionary and using them here for a United States trademark for the very goods that the term is used for in that foreign country?"

We suspect we did not get a written decision as such a decision would have created a circuit split on the primary significance test. It is very disappointing that the Court of Appeal seems to have dodged dealing with both the primary significance test and the problems with the doctrine of foreign equivalents.

We are now exploring our propects of appealing to the US Supreme Court.

Telstra to pay $50m penalty for unconscionable sales to Indigenous consumers

I was talking to a former ACCC colleague Alex Malik on LinkedIn recently about this matter and whether $50m was going to achieve any specific deterrence.

I remember many years ago when I was at the ACCC I jumped in a lift in the Federal Court in Sydney with a lawyer and his client, an executive from a major Australian company, just after the company had agreed to pay $5 million in penalty and costs by consent for an ACCC competition law breach. Both looked at me and must have concluded that I was not associated with the ACCC but rather just some nosey poorly dressed court watcher. The executive then turned to the lawyer with a look of relief and said "Well that was pretty painless!"

I never had the heart to tell the ACCC officers running that case what the executive said in the lift after parting with a cool $5 million (back in the day (1996) when $5 million was a lot of money!)

I just wonder what the guys at Telstra were chatting about in the lift in the Federal Court in Melbourne yesterday after agreeing to pay $50m to close this matter off?

ACCC v Google

I was having a look at the recent ACCC against Google about location data. There was an interesting quote from Professor List from the University of Chicago who gave evidence for Google.

In discussing the traditional economic models of decision making, List described the characterstics of the archetypal rational consumer in the following, admittedly extreme, terms:

...unswervingly rational, completely selfish, analytical, reliable, and (able to) effortlessly and costlessly solve even the most difficult optimization problems (at para 52).  

...and to think our system of competition regulation is based largely on the supposed existence of large numbers of these types of individuals.

Ugg Case

We are extremely pleased with how the appeal went yesterday before the US Court of Appeals for the Federal Circuit. The Court appeared to accept our argument that the doctrine of foreign equivalents should apply to any foreign word regardless of whether the term was an English or non-English word.

The Court was less impressed with Deckers’ argument that the doctrine should only apply to foreign non-English generic terms. As stated by the Court to Deckers’ lawyer:
"Is there any earthly reason why we would have a different rule for an English-speaking foreign nation than a foreign speaking foreign nation when you’re taking words out of that respective country’s dictionary and using them here for a United States trademark for the very goods that the term is used for in that foreign country?”
When Deckers’ lawyer failed to address the question asked, the Court reiterated its earlier question in somewhat more emphatic terms:
“Sir, all I am trying to figure out is, is there any sensible reason why there should be a different rule for a generic word from an English speaking foreign nation than a generic word from a foreign speaking foreign nation?

The US Court of Appeals has reserved its judgment. We expect a favourable decision within the next two to three months.

Ugg Boot appeal

 VIDEO: Aussie company fights for survival against US footwear giant Decker over UGG boot trademark

Ugg boot case appeal

Our appeal to the US Court of Appeals for the Federal Circuit is to be heard later today at 10 am in Washington DC (or 12 midnight Australian time) .

It's pretty much an all or nothing case for both parties - if our client, Eddie Oygur, loses he will be up for $A3.5 million in damages and Deckers' attorneys fees and if Deckers Outdoor loses the appeal their UGG trademark will be deregistered, which will be game over for Deckers given UGG products contribute about 80% of their annual sales.

Eddie is being represented by Nick XenophonMark Bagley and myself.

Australian Competition and Consumer Commission v Smart Corporation Pty Ltd (No 3) [2021] FCA 347

I was having a look at the A4WD case and noted the following customer service gems:

* Your verbal diarrhoea is completely ignorant and lacking of any sense or meaning whatsoever.

* This type of blatant stupidity is not something we take lightly and we will happily progress to legal action if necessary.

* Your email is complete nonsense, and we are very confident that our fact based stance will hold up over your whinging in any court.

* We have had a good laugh reading through your verbal diarrhea, as your stupidity amazes us.

* We have never come across someone so utterly stupid and unaware of their obligations under the contract and you are delusional if you think that we are going to make any exceptions for a customer like you.

* We look forward to you continuing to make a fool of yourself in court.

* Get a lawyer so I can sue your ass of you moron

...and my person favourite - an email to a customer (who was incidentially employed as a NSW Magistrate) which read, in its entirety:

* F##K Off

Sounds like they received their customer service training at Trump University.

Australian Business Law Review, Vol 49, Part 1

The latest ABLR is out and features four excellent articles:

* “Culture” Is Key – An Analysis of Culture-focused Techniques and Tools in the Regulation of Corporations and Financial Institutions – Vicky Comino

* Security for Workers in an Insecure World of Work: Establishing Freedom of Association and Collective Bargaining as Fundamental Rights for Australian Workers – Nicholas Saady

* COVID Conundrum: The Influence of Regulatory Regimes on Cross-Border Mergers and Acquisitions in Australia and India – Zubin Bilimoria

* Business Interruption Insurance and the COVID-19 Pandemic – Samuel Walpole and William Isdale

I would like to encourage prospective authors to consider submitting their articles to the ABLR. One significant advantage of seeking to publish your article in the ABLR is our much quicker turnaround times compared to other leading legal journals. We aim to publish practical business law articles on topical issues in a timely manner, which means we have to operate on shorter time frames.

Recent work - Thermomix (The Mix Australia Pty Ltd)

Just completed the third and final independent review of Thermomix's Australian Compliance Program.

It has been fantastic working with Thermomix over the last three years - a highly professional and innovative organisation with a very strong culture of compliance.

In particular, it was amazing to see how they quickly and effectively they were able to adjust their business model to respond to the challenges presented by COVID-19.