Burden v ESR Group (NZ) Limited - [2021] NZHC 597

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV 2014-404-2456

[2021] NZHC 597

UNDER the Copyright Act 1994 and the Fair Trading Act 1986

IN THE MATTER

Of alleged infringement of Copyright and breach of the Fair Trading Act 1986

BETWEEN

IAN JAMES BURDEN

First Plaintiff

AND

PLANTATION GROWN TIMBERS (INTERNATIONAL) LIMITED

Second Plaintiff

PLANTATION GROWN TIMBERS (VIETNAM) LIMITED

Third Plaintiff

Continued over

Hearing: 11 June 2020

Appearances:

A H Brown QC & JRE Wach for Plaintiffs J G Miles QC & A J Pietras for Defendants

Judgment:

23 March 2021

COSTS JUDGMENT OF DUFFY J

This judgment was delivered by me on 23 March 2021 at 2.30 pm pursuant to
Rule 11.5 of the High Court Rules.

Registrar/ Deputy Registrar

BURDEN & ORS v PLANTATION GROWN TIMBERS (INTERNATIONAL) LIMITED & ORS [2021] NZHC 597 [23 March 2021]

Continued ….

ESR GROUP (NZ) LIMITED
First Defendant

MORROW MARKETING MANAGEMENT LIMITED
Second Defendant

CRAIG MORROW
Third Defendant

GALAXY HOME (VIETNAM) LIMITED
Fourth Defendant

CHIEF EXECUTIVE OF NEW ZEALAND CUSTOMS
Fifth Defendant

[1] The present matter for determination is essentially about the quantum of costs and disbursements to be awarded to plaintiffs who enjoyed success in this Court and a measure of success in the Court of Appeal.

Background

[2] ESR imported and sold furniture in New Zealand. The plaintiffs alleged this furniture was a secondary infringement of their copyright and a breach of the Fair Trading Act 1986. On 7 July 2016 I delivered a judgment finding that the first plaintiff, Mr Burden, was successful in his claim against ESR for infringement of copyright.1 I also found that the Custom’s notice Mr Burden and the third plaintiff had issued under s 136 of the Copyright Act 1994 (CA) was valid, and that the imported furniture was therefore pirated goods that were lawfully detained by Customs under s 140 of the CA. I dismissed the balance of Mr Burden’s claims and those brought by the second and third plaintiffs. ESR appealed and all plaintiffs cross appealed against the judgment.

[3] The Court of Appeal upheld some findings made in this Court, but set aside others.2 It found the second and third plaintiffs (hereafter the plaintiffs) were the owners of the copyright and therefore entitled to enforce the copyright. It upheld other findings as follows: ESR was liable for secondary infringement of the plaintiffs’ copyright in technical drawings of the Irish Coast range of furniture; the s 136 Customs notice and the determinations of the chief executive of Customs (the chief executive) that followed were valid; ESR’s counterclaim against the validity of the s 136 notices and the detention of the pirated goods under part 7 of the CA was correctly dismissed. However, the Court set aside this Court’s findings in respect of liability for the preliminary drawings and the first importation.3

[4] The Court of Appeal ordered that costs should lie where they fell. This was in part because both parties made…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2021] NZHC 597
Decision Date: 23 March 2021

CaseChat Overview and Summary

The case of Burden v ESR Group (NZ) Limited [2021] NZHC 597 involved a dispute between the plaintiffs, who alleged copyright infringement and breach of the Fair Trading Act 1986 by the defendant, ESR Group (NZ) Limited. The plaintiffs sought various forms of costs and disbursements, including storage costs incurred under the border protection measures of the Copyright Act 1994. The legal issues included whether the storage costs were recoverable as special damages, costs, or disbursements, and the appropriate quantum of costs to be awarded.

The Court held that the storage costs incurred by the plaintiffs due to the statutory border protection measures were not recoverable as special damages, as they were too remote from the infringement and were instead a consequence of the plaintiffs' decision to enforce their rights. The Court also found that the storage costs could not be categorised as costs under the High Court Rules, as these typically refer to legal professional services. However, the Court determined that the storage costs could be claimed as disbursements, as they were expenses associated with the litigation process but exclusive of legal professional fees. The Court allowed the plaintiffs to recover the storage costs incurred from the commencement of the proceedings until the statutory detention ended, with leave to recalculate the amount.

Regarding the quantum of costs, the Court awarded scale costs of $89,089.00 to the plaintiffs. The Court found that neither party's conduct warranted an increase in the costs award, balancing the untidiness in both parties' cases. The plaintiffs' claims for increased or indemnity costs and interest were dismissed. The defendant's claim for costs was also dismissed. The erroneous inclusion of an order for storage costs in the sealed judgment was noted, but the Court concluded that no material harm had resulted from the error due to the substantive decisions made on the costs and disbursements issues.

Orders