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Damages or Profits? The Federal Court Forces Patentees to Choose

How long can a successful patentee delay the choice between damages and an account of profits?

In VMS v SARB (No 13) [2025] FCA 1078, Justice Burley confronted that very question — and ordered the patentee to make its election within 21 days.

The dispute

  • Vehicle Monitoring Systems (VMS) had succeeded on parts of its patent infringement case against SARB and the City of Melbourne.

  • The trial judge retired; the case was remitted for pecuniary relief.

  • VMS wanted to delay electing between damages and profits until after more evidence was in.

The ruling

  • Justice Burley held that while patentees should make an “informed choice”, that doesn’t mean indefinite delay.

  • Guided by Island Records v Tring and Australian cases (LED Builders, Australian Mud Company), the Court balanced:

    • Patentee rights: not forced to gamble in the dark.

    • Court efficiency: s 37M Federal Court Act requires just, quick, inexpensive resolution.

  • Result: VMS ordered to elect within 21 days.

Why it matters

  • For patentees: Don’t expect to hold off forever — the Court wants efficiency.

  • For infringers: Push for early election to limit procedural drag.

  • For practitioners: Timing of election is now firmly part of litigation strategy, not just an end-of-trial formality.

Takeaway

This case sharpens the line between informed choice and delay tactics.

The Court’s message is clear: patentees must choose their remedy earlier than many may have hoped.

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The Art of Disclaimers: Jacksons v Jackson’s Art Supplies (No 2)

When two businesses with nearly identical names lock horns, things usually come down to trade marks, passing off, and reputation.  But in Jacksons Drawing Supplies Pty Ltd v Jackson’s Art Supplies Ltd (No 2) [2025] FCA 1127, the real fight was over disclaimers, pop-ups, sticky banners, and user attention spans.

Yes, really. Welcome to the future of injunctive relief.

The Backdrop: Two Jacksons, One Internet

  • Jacksons Drawing Supplies (JDS) is the long-standing Australian art supply brand.

  • Jackson’s Art Supplies (JAS) is a UK giant with a strong online presence.

When JAS launched its Australia-specific subdomain (jacksonsart.com/en-au), it didn’t just sell paints and brushes — it displayed Australian flags, quoted in AUD, listed an Adelaide warehouse, and even had an Aussie phone number. To many customers, it looked like the local Jacksons.

The Court (in an earlier decision) held that this conduct contravened s 18 and s 29 of the ACL and amounted to passing off.

Round Two: The Relief Hearing

The question was: what form should the non-pecuniary relief take?

JDS wanted a sticky header disclaimer on every page (always visible). JAS wanted a one-off pop-up disclaimer (dismiss it once and never see it again).

The Federal Court, armed with expert evidence on digital attention, split the difference.

Attention Science Hits the Federal Court

This case is remarkable for its reliance on attention science experts:

  • Michael Simonetti (website developer & SEO expert)
    Warned about “banner blindness”: users ignore sticky headers and disclaimers that look like ads.

  • Dr Karen Nelson-Field (global expert on omnichannel attention science)
    Explained that pop-ups trigger active attention because they interrupt the browsing experience. Sticky headers, by contrast, fade into the background.

  • Professor Mingming Cheng (digital marketing & SEO)
    Highlighted that hyperlinking to JDS’s site could affect search engine algorithms and reinforce associations between the two brands.

The Court accepted that no disclaimer format guarantees it will be read, but opted for the solution most likely to cut through.

The Court’s Orders

Justice Jackson ordered that JAS can’t operate its Australia-specific site (or any site with Australian characteristics) unless it shows a disclaimer:

“Please note: this website is not affiliated with the Australian company Jacksons Drawing Supplies Pty Ltd or its website jacksons.com.au.”

The disclaimer must:

  • Pop up every time a user starts a new browser session, blocking the site until acknowledged.

  • Also appear at the bottom of each page (non-sticky, same size as body text).

  • Be clear, prominent, and legible.

  • Not include any hyperlink to JDS’s site (too much risk of SEO crossover and confusion).

No requirement for phone sales, social media, or ads — because the misrepresentation arose via the website itself.

No Sticky Business

JDS’s sticky header idea was rejected as:

  • Too intrusive, especially on mobile devices.

  • Likely to be ignored due to banner blindness.

  • Damaging to user experience with little benefit.

Pop-ups, despite being annoying, were judged the least-worst option.

Costs: Calderbank Offers Bite Back

The Court also tackled costs.

  • JDS was successful overall, but lost against the third and fourth respondents.

  • JAS had made Calderbank offers (including restricting sales into JDS’s “core markets” and paying a small sum).

  • The Court held JDS was not unreasonable to reject them — the offers didn’t resolve the cross-claim, lacked mutuality, and wouldn’t necessarily prevent consumer confusion.

The result?

  • JDS gets costs against the first and second respondents (with a 15% discount).

  • The third and fourth respondents get indemnity costs from a certain date.

Why This Case Matters

This decision is a practical playbook for how courts may deal with online misrepresentation and passing off in 2025 and beyond:

  1. Disclaimers must do more than exist — they must grab attention. Passive banners won’t cut it.

  2. User experience is relevant — remedies must be proportionate and fair, not ruin the site.

  3. Hyperlinks aren’t a free fix — they can create new risks of association in both consumers’ minds and search engine algorithms.

  4. Attention science is evidence — expert testimony on human behaviour online now shapes equitable relief.

  5. Calderbank strategy remains vital — but offers must be clear, mutual, and genuinely address the issues at stake.

Takeaways for Brand Owners

  • Global websites need local strategy. If you’re running an AU subdomain, check your disclaimers and branding.

  • Disclaimers aren’t window dressing. Courts will look at how they’re delivered, not just what they say.

  • Attention matters. Evidence from digital marketing and psychology can sway the outcome.

  • Settlement strategy is as important as trial strategy. Get your Calderbank offers right.

Bottom line: The Federal Court has signalled that in the age of pop-ups, banner blindness, and Google algorithms, effective remedies must be technologically and behaviourally savvy. For IP lawyers and brand managers, Jacksons v Jackson’s is a reminder that protecting reputation online requires more than just words — it requires understanding how consumers really pay attention.

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Whose Footage Is It Anyway? Game Meats v Farm Transparency Heads for the High Court

When animal rights collide with copyright law, sparks fly — and sometimes, whole new branches of doctrine get tested.

That’s exactly what’s happening in The Game Meats Company of Australia Pty Ltd v Farm Transparency International Ltd, a dispute that has already produced one significant Federal Court decision, a reversal on appeal, and now an application for special leave to the High Court.

Let’s unpack how a covert camera operation at a Victorian abattoir has turned into one of the most intriguing copyright–equity battles in years.

The Backstory: Covert Cameras at Eurobin

Game Meats Company (GMC) operates a halal abattoir in Eurobin, Victoria. Early in 2024, members of Farm Transparency International (FTI), an animal advocacy organisation, repeatedly trespassed onto the site. They crawled under fences at night, installed hidden cameras, and over several months captured more than 100 hours of footage of the abattoir floor.

From that material, FTI produced a 14-minute video highlighting what it claimed were instances of animal cruelty. The video was sent to government regulators, passed to Channel Seven (which reported but did not broadcast the footage), and later published by FTI online alongside a media release.

GMC responded immediately with proceedings in the Federal Court.

Round One: Damages but No Injunction

At trial, Justice Snaden held that FTI had committed trespass and was liable for damages — awarding GMC $30,000 in general damages and $100,000 in exemplary damages.

However, the judge refused GMC’s bid for a permanent injunction to restrain publication, and also rejected the argument that copyright in the footage should be held on constructive trust for GMC.

Why? The Court accepted that damages could compensate GMC for its losses, and held that the extraordinary remedy of imposing a trust over copyright was not justified. FTI remained the legal owner of the copyright — even though it was created through trespass.

Round Two: The Full Federal Court Steps In

GMC appealed, and in August 2025 the Full Federal Court (Burley, Jackman and Horan JJ) reversed key parts of the primary decision.

The Court:

  • Declared a constructive trust: copyright in the footage was to be held on trust for GMC.

  • Ordered assignment: FTI had to execute a written assignment of copyright, with the Registrar empowered to do so if FTI refused.

  • Granted a permanent injunction: restraining FTI from publishing the material, other than to regulators.

  • Ordered deletion: FTI was required to permanently delete its copies of the footage and swear affidavits confirming destruction.

In doing so, the Full Court leaned heavily on dicta from ABC v Lenah Game Meats (2001) 208 CLR 199, where the High Court floated — but did not apply — the idea that copyright created through unlawful conduct might be held on constructive trust.

Two decades later, that possibility became a reality.

The Key Legal Issue: Equity Meets Copyright

At the heart of this case is whether copyright — a statutory right conferred automatically on the maker of a film — can be stripped away by equity when the film was created through trespass or other unlawful means.

  • Statutory law: Under the Copyright Act 1968 (Cth), FTI owned copyright in the footage the moment the cameras recorded it.

  • Equity: The Full Court held it was “inequitable and against good conscience” for FTI to assert ownership against GMC, given the trespass. Equity could therefore declare FTI a constructive trustee and compel assignment.

It’s a bold move. Courts have long imposed constructive trusts over physical property obtained unconscionably. Applying the same logic to intangible IP rights is legally elegant — and potentially disruptive.

What’s at Stake in the High Court?

FTI has now applied for special leave to appeal to the High Court. No hearing date is set yet, but the case is primed for the nation’s top court.

The issues are weighty:

  • Limits of equity: Can equity truly override the statutory scheme of copyright ownership?

  • Freedom of communication: Does restraining publication of the footage unduly burden the implied freedom of political communication, given FTI’s advocacy role?

  • Activism vs. property rights: Should activists lose IP rights in their material because of unlawful methods, or does that chill legitimate public interest advocacy?

Why It Matters

For copyright lawyers, this case is a doctrinal turning point. For animal rights advocates and agribusiness, it’s a test of how far covert activism can go before the law snaps back.

If the Full Court’s reasoning stands, companies may be able to use IP and equity as powerful tools against activists: not only recovering damages for trespass, but also stripping activists of copyright and controlling the very footage they created.

If the High Court takes a different path, we may instead see limits on equity’s reach, preserving copyright ownership even where the work was created unlawfully — with important implications for journalism, whistleblowing, and advocacy.

IP Mojo Takeaway

This case is far more than a goat-abattoir dispute. It’s about whether copyright is truly absolute, or whether conscience can trump statute. With special leave now sought, the High Court will soon have the chance to answer.

Watch this space — the ghost of Lenah Game Meats is back in Canberra.

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Epic Won the Battle. Now Developers Want Their Refunds.

When Epic Games went head-to-head with Apple, the Federal Court found that Apple misused its market power by locking iOS developers into the App Store and its payment system. That was big. But the Anthony v Apple class action takes it a step further: what if Apple has been overcharging Australian developers and consumers for years?

From liability to dollars

In Epic v Apple [2025] FCA 900, Justice Beach held that Apple’s restrictions substantially lessened competition in two markets:

  1. iOS app distribution; and

  2. iOS in-app payment solutions.

That case was about liability — whether Apple broke the law.

In Anthony v Apple Inc [2025] FCA 902, the Court applied those findings in the context of a class action by developers and users. This time, the question wasn’t just “did Apple misuse its power?” but “what should Apple have charged if competition had been allowed?”

The counterfactual commission

Apple famously takes up to 30% of in-app revenue. The class action alleges that this cut was inflated by Apple’s anti-competitive restrictions.

Justice Beach accepted that the key issue was whether commissions exceeded the “counterfactual” level — i.e. the rate that would have prevailed in a competitive market.

That’s not just a legal puzzle. It’s an economic modelling exercise: estimating what rival app stores and payment processors would have charged, and how Apple’s fees distorted prices across the app ecosystem.

Why this matters

  • Developers: If successful, they may recover damages for inflated commissions they’ve paid over years. That could mean real money back into the hands of Australian app makers.

  • Consumers: If commissions were inflated, those costs were often passed on through higher app and in-app purchase prices. Compensation claims could extend to end users.

  • Apple (and Google): The damages bill could be eye-watering. Liability findings are one thing; being ordered to pay back billions is another.

A coordinated strategy

Justice Beach emphasised that his reasons in Anthony v Apple should be read together with Epic v Apple and Epic v Google. This isn’t three random cases — it’s a coordinated litigation front against the app store model.

First, establish liability (Epic).
Then, pursue compensation (Anthony).
Finally, broaden the net (Epic v Google).

The bigger picture

Globally, regulators and courts are converging on the same theme: Apple and Google can’t use security or convenience as a shield for overcharging.

Australia’s twist? Class actions have a way of turning abstract competition law into concrete refunds.

⚖️ The takeaway

Epic v Apple broke open the wall. Anthony v Apple asks whether Apple should hand back the gold it’s been collecting inside.

This isn’t just another round in the same fight — it’s the damages phase of the app store wars. And it could hit closer to home for Australian developers and users than anything Epic ever fought for.

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No Proof, No Profit: The Perils of Chasing an Account in Trade Mark Cases

When you win a trade mark infringement case, the natural instinct is to go after the other side’s profits. After all, why should the infringer keep any benefit from piggybacking off your brand? But as Kretchmer Enterprises Pty Limited v AMR Manufacturing Pty Limited [2025] FedCFamC2G 1394 shows, that’s often easier said than done.

Background: “All Lift” confusion

Kretchmer Enterprises (KEPL) trades as All Lift Forklifts, with a suite of registered marks in Class 37 and others. Its competitor, AMR Manufacturing (run by director Michael La Greca), began using All Lift Material Handling and Construction and related names.

Liability was not in issue. The respondents consented to declarations of infringement and permanent injunctions. That left the big question: what remedy? KEPL pushed for an account of profits, seeking to strip out AMR’s gains from the infringing conduct.

The problem with profits

On paper, an account of profits sounds straightforward: the infringer must disgorge what they wrongfully earned from misusing the mark. In practice, it’s fraught.

Here, KEPL argued that “Sundry GST-Free Payments” appearing in AMR’s cashflow documents (produced under a notice to produce) represented profits. KEPL’s calculation put those figures at around $137,000.

Judge Manousaridis wasn’t convinced. Three strikes sank the claim:

  1. Implausible categorisation: The “Sundry GST-Free Payments” were more likely linked to equipment purchases or financing, not net profits.

  2. Failure to attribute: KEPL treated all of AMR’s income as if it was attributable to the “All Lift” brand, rather than identifying which sales were actually driven by the infringing use.

  3. Notice timing: There was no evidence AMR knew of KEPL’s marks before 30 October 2023. Any account could only run from that date — further cutting back the claim.

The director angle

KEPL also tried to rope in Mr La Greca personally, arguing he was jointly and severally liable for any profits. The Court flatly rejected this. Since no such declaration had been pleaded, and liability was admitted only in AMR’s corporate capacity, there was no personal exposure.

The takeaway

This case is a reminder that:

  • Evidence is everything. If you’re seeking an account of profits, you need invoices, ledgers, and clear links between infringing sales and the trade mark. Broad-brush assumptions won’t cut it.

  • Attribution matters. Not every dollar earned by an infringer is profit from the brand misuse. The court will only strip out the gain attributable to the wrongful use of the mark.

  • Timing counts. Accounts run only from when the infringer knew (or was put on notice) of the rights.

  • Directors aren’t automatically liable. Unless properly pleaded, personal exposure is off the table.

Final word

The sting in the tail for KEPL: despite a clean win on infringement, its claim for profits was dismissed entirely.

The lesson for brand owners and their lawyers? Sometimes it’s smarter to seek damages — or statutory additional damages under s 126(2) — rather than chasing an elusive account.

In trade mark litigation, victory on liability doesn’t always translate to money in the bank. As this case shows: no proof, no profit.