Burden v ESR Group (NZ) Ltd - [2019] NZHC 1546

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2018-404-002775 CIV-2014-404-002456

[2019] NZHC 1546

UNDER THE Copyright Act 1994 and Fair Trading Act 1986

IN THE MATTER OF

Infringement of copyright and breach of the Fair Trading Act 1986

BETWEEN

IAN JAMES BURDEN

First Plaintiff

PGT-RECLAIMED (INTERNATIONAL) LIMITED

Second Plaintiff

PLANTATION GROWN TIMBERS (VIETNAM) LIMITED

Third Plaintiff

AND

ESR GROUP (NZ) LIMITED

First Defendant

ELISA NORAH MCLENNAN

Second Defendant

Hearing: 14 June 2019

Appearances:

A Brown QC and J Oliver-Hood for Plaintiffs J Miles QC and A Pietras for Defendants

Judgment:

3 July 2019

JUDGMENT OF VENNING J

This judgment was delivered by me on 3 July 2019 at 2.15 pm, pursuant to Rule 11.5 of the High Court Rules.

Registrar/Deputy Registrar

Date……………
Solicitors: James & Wells, Auckland
AJ Pietras & Co, Lower Hutt in 2456

Counsel: A Brown QC, Auckland
J Miles QC, Auckland in 2456

BURDEN & Ors v ESR GROUP (NZ) LIMITED & Ors [2019] NZHC 1546 [3 July 2019]

Introduction

[1] The plaintiffs in CIV-2014-404-2456 (the 2014 proceedings) seek leave to amend the third amended statement of claim in those proceedings.

[2] The defendants in CIV-2018-404-2775 (the 2018 proceedings) apply to strike out the plaintiffs’ claim against them.

[3]Both applications are opposed.

Parties

[4] Mr Burden is an Australian citizen and managing director of both Plantation Grown Timbers (International) Limited (Plantation International) and Plantation Grown Timbers (Vietnam) Limited (Plantation Vietnam), (together the Plantation interests). At material times the Plantation interests undertook the design and manufacture of furniture in Vietnam and produced and sold ranges of furniture, including the Irish Coast Collection.

[5] ESR Group (NZ) Limited, (ESR) is a New Zealand company which carries on the business of furniture importer and retailer. It imports and sells furniture under the style Roseberry and Westbury collections. Ms McLennan is the managing director of ESR. The remaining defendants in the 2014 proceedings are not relevant to the present applications.1

The High Court proceedings

[6] In the 2014 proceedings the Plantation interests sued ESR alleging breach of copyright. The copyright claim raised issues of authorship, ownership of the copyright works, copyright qualification, copying, secondary infringement, the effect of the importations and the notice issued by Customs. The Plantation interests also alleged ESR had breached the Fair Trading Act 1986.

1 There was an issue as to whether Mr Morrow and the Morrow interests had been properly served. The plaintiffs only went to trial against ESR. Customs was named as a defendant for the purposes of binding it to any particular orders the Court may make.

[7] Duffy J determined that Mr Burden owned the copyright in the relevant goods.2 In general terms she granted the following relief:3

(a)a declaration that ESR had infringed Mr Burden’s copyright by reproducing his copyright works;

(b)a declaration that ESR’s infringing products reproduced Mr Burden’s copyright works and therefore each was a pirated copy imported other than for private and domestic use;

(c)an injunction restraining…

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: [2019] NZHC 1546
Decision Date: 3 July 2019

CaseChat Overview and Summary

In the High Court, the plaintiffs sought leave to amend their third amended statement of claim in the 2014 proceedings, alleging primary infringement of copyright by the defendants. The defendants applied to strike out the plaintiffs’ entire claim in the 2018 proceedings, arguing it was an abuse of process and insufficiently particularised. The court held that while the plaintiffs could not amend the 2014 proceedings to plead a claim for primary infringement, as it was a distinct cause of action, they could pursue such a claim in the 2018 proceedings. The court dismissed the application to strike out the claim for primary infringement in the 2018 proceedings, but struck out the causes of action for breach of the Fair Trading Act and secondary infringement, as well as the claim against the second defendant, as an abuse of process. The ESR interests were awarded costs on one application and the hearing on a 2B basis, together with disbursements as fixed by the Registrar.

Orders