Burden v ESR Group (NZ) Ltd - [2020] NZCA 560

IN THE COURT OF APPEAL OF NEW ZEALAND

I TE KŌTI PĪRA O AOTEAROA

CA577/2019
[2020] NZCA 560

BETWEEN	IAN JAMES BURDEN First Appellant PGT-RECLAIMED (INTERNATIONAL) LIMITED Second Appellant PLANTATION GROWN TIMBERS (VIETNAM) LIMITED Third Appellant
AND	ESR GROUP (NZ) LIMITED Respondent

CA594/2019
BETWEEN	ESR GROUP (NZ) LIMITED Appellant
AND	IAN JAMES BURDEN First Respondent PGT-RECLAIMED (INTERNATIONAL) LIMITED Second Respondent PLANTATION GROWN TIMBERS (VIETNAM) LIMITED Third Respondent

Hearing:	23 September 2020
Court:	Kós P, Brown and Courtney JJ
Counsel:	A H Brown QC and J Oliver-Hood for Appellants in CA577/2019 and Respondents in CA594/2019 J G Miles QC and A J Pietras for Respondent in CA577/2019 and Appellant in CA594/2019
Judgment:	12 November 2020 at 11.00 am

JUDGMENT OF THE COURT

AThe appeal in CA577/2019 is allowed conditional upon the amendments specified in [50].

B The appeal in CA594/2019 is allowed.

C Costs lie where they fall.

____________________________________________________________________

REASONS OF THE COURT

(Given by Brown J)

Introduction

In the liability phase of this litigation[1] ESR Group (NZ) Ltd (ESR) was held liable[2] for secondary infringement of the copyright works of the Plantation interests[3] by the importation into New Zealand on 28 August and 5 and 12 September 2014[4] of a range of furniture known as the Roseberry Collection.[5] In addition to injunctive and declaratory relief, leave was reserved to pursue damages or an account of profits at a separate hearing in respect of the infringing Roseberry items.[6]
[1]CIV-2014-404-2456 (the 2014 proceeding).
[2]Burden v ESR Group (NZ) Ltd [2016] NZHC 1542 [Liability judgment]; and ESR Group (NZ) Ltd v Burden [2017] NZCA 217, (2017) 14 TCLR 590 [Appeal decision]. Leave to appeal to the Supreme Court was declined: ESR Group (NZ) Ltd v Burden [2017] NZSC 173.
[3]The second and third appellants in CA577/2019 and the second and third respondents in CA594/2019.
[4]Under s 35 of the Copyright Act 1994. A prior importation on 30 July 2014 (which was apparently assumed to be the first such importation by ESR) was held not to infringe, as ESR was not shown to have known or had reason to believe those goods were infringing copies.
[5]Together with one item (a shoe shine box) from another furniture range known as the Westbury Collection.
[6]Liability judgment, above n 2, at [309].
In the subsequent discovery process the Plantation interests realised that there had been earlier importations by ESR from May 2013. They also became aware of ESR having imported other infringing items, being the Roseberry shoe shine box and some furniture from the Westbury Collection. Hence on 17 December 2018 the Plantation interests filed a new proceeding[7] alleging both primary infringement (the issue of copies of their copyright works to the public by the offering for sale or sale by ESR of both the Roseberry and Westbury Collections in New Zealand)[8] and secondary infringement of copyright by ESR in respect of the Roseberry and Westbury Collections since at least 2013.
[7]CIV-2018-404-2775 (the 2018 proceeding).
[8]Under s 31 of the Copyright Act.
On 4…

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: [2020] NZCA 560
Decision Date: 12 November 2020

CaseChat Overview and Summary

In the Court of Appeal of New Zealand, the parties in this case were Ian James Burden, PGT-Reclaimed (International) Limited, and Plantation Grown Timbers (Vietnam) Limited (collectively referred to as the "Plantation interests") on one side, and ESR Group (NZ) Limited on the other side. The dispute involved allegations of copyright infringement by ESR through the importation and sale of furniture collections known as the Roseberry Collection and the Westbury Collection in New Zealand. The Court of Appeal heard two appeals: CA577/2019, where the Plantation interests appealed against the refusal to grant leave to amend the 2014 proceeding, and CA594/2019, where ESR appealed against the refusal to strike out the 2018 proceeding.

The primary legal issues before the Court of Appeal were whether the interests of justice required the amendment of the 2014 proceeding to include claims for primary infringement and secondary infringement prior to 28 August 2014, and whether the claim for primary infringement in the 2018 proceeding constituted an abuse of process.

The Court of Appeal allowed the appeal in CA577/2019, subject to certain amendments. The Court found that the interests of justice did require the amendment to the 2014 proceeding to include the claim for primary infringement based on section 31 of the Copyright Act, as the pleading was more explicit than previously understood and the topic of primary infringement was visited in the evidence, addressed in submissions, and included in the discovery order. The Court also allowed the appeal in CA594/2019, as the amendment of the 2014 proceeding rendered the 2018 proceeding unnecessary.

The Court of Appeal concluded that costs lie where they fall, as the outcome was cost neutral. The Plantation interests were granted leave to file an amended statement of claim in the 2014 proceeding, subject to specific amendments outlined in the judgment.

Orders