TiVo successful in contempt proceeding against Vivo for breach of court orders

TiVo successful in contempt proceeding against Vivo for breach of court orders

TiVo successful in contempt proceeding against Vivo for breach of court orders

TiVo Inc v Vivo International Corporation Pty Ltd [2013] FCA 1340

On 12 December 2013, the Federal Court upheld allegations of contempt made by TiVo Inc and TiVo Brands, LLC (collectively, TiVo) against Vivo International Corporation Pty Ltd, its then director, Fabio Grassia, and two of its related companies, Red 88 Pty Ltd and Viano Corporation Pty Ltd.  The contempt proceeding arose from allegations made by TiVo that Vivo had failed to comply with orders arising from earlier findings of trade mark infringement.  As part of those orders, the Court had issued an injunction restraining Vivo from using its “Vivo” mark.  Vivo had also consented to an order cancelling two domain name registrations which incorporated the Vivo mark.

TiVo’s allegations of contempt

TiVo alleged that Vivo had failed to cancel the domain names as required by the consent orders and that Mr Grassia and Red 88 were complicit in that failure.  TiVo also alleged that Vivo had breached the injunction by including Vivo product manuals relating to Vivo branded televisions on the website www.vianotv.com operated by Viano, and that Mr Grassia, Viano and Red 88 were complicit in that breach.

Vivo failed to cancel domain names

Vivo submitted that, to be in contempt, its breach of the Court’s order had to be wilful and contumacious in the sense of a “deliberate defiance of a court order”.1 Vivo argued that TiVo had not established beyond reasonable doubt that the failure was wilful and contumacious because Mr Grassia genuinely forgot to cancel the domain names by the due date.  Justice Pagone held that “confusion, other obligations and forgetfulness” were not sufficient excuses for non-compliance with an existing order2 and that “carelessness, neglect and dereliction of duty will not be a sufficient answer to a charge of contempt”.3

Accordingly, his Honour held that Vivo was guilty of contempt for failing to cancel the domain names by the due date.  For the same reasons, his Honour found that Mr Grassia was guilty of contempt, even though he was not personally bound by the consent orders.4

Display of Vivo product manuals on the Viano website

His Honour also held that all allegations of contempt in relation to the display of the Vivo product manuals on Viano’s website were made out.  Justice Pagone found that Mr Grassia, who was at the relevant time the director of Vivo, had authorised the placing of Vivo product manuals on the website.  The charges against Red 88 (as the registrant of the www.vianotv.com website) and Viano (as the operator of the website) were also made out.  Mr Grassia was also a director of both companies at the relevant time.

Justice Pagone made declarations that the relevant allegations of contempt had been made out.  His Honour also awarded indemnity costs to TiVo.  In doing so, his Honour noted the respondents’ “inexcusable dereliction” of their obligations under the Federal Court of Australia Act 1976 (Cth) by failing to respond to a request by TiVo’s lawyers to cancel the domain names and remove the Vivo product manuals and to notify them once the respondents had done so.

Davies Collison Cave Law acted for TiVo in this proceeding.

Endnotes

  1. TiVo Inc v Vivo International Corporation Pty Ltd [2013] FCA 1340 [8].
  2. Ibid [20].
  3. Ibid.
  4. See discussion of liability of third parties at [25].