In a first for Victoria, a man has been sentenced to 12 months imprisonment (although to be released after eight months) for possession of infringing discs of movies and computer games with intent to sell and exposure for sale of goods bearing infringing trade marks: Ly v The Queen  [2014] FCAFC 175 (17 December 2014).

Mr Ly was sentenced in the County Court of Victoria and unsuccessfully appealled his sentence to the Full Court of the Federal Court.  Australian Federal Police seized more than 61,000 discs from his premises, the overwhelming majority of which appeared to be counterfeit.  Mr Ly made an early guilty plea and consented to the destruction of the discs but did not give evidence to show that he was remorseful.  He had two prior convictions for similar offences.

The Country Court judge considered that he was motivated by “greed, not need”.  The Full Court emphasised that the need to deter IP infringers generally and to deter Mr Ly in particular, a repeat offender, as well as the seriousness of the offences were all important factors in justifying the prison sentence.

Imprisonment as a result of copyright and trade mark offences is very rare but is available in serious cases of counterfeiting.  This case shows that courts are willing to impose such sentences on offenders where large scale copying is involved and lesser penalties, such as fines, have not deterred an individual from flouting copyright and trade mark laws.