ESR Group (NZ) Ltd v Burden - [2021] NZSC 22

IN THE SUPREME COURT OF NEW ZEALAND

I TE KŌTI MANA NUI

SC 105/2020
[2021] NZSC 22

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

Court:	William Young, Glazebrook and O’Regan JJ
Counsel:	J G Miles QC and A J Pietras for Applicant A H Brown QC and J Oliver-Hood for Respondents
Judgment:	11 March 2021

JUDGMENT OF THE COURT

AThe application for leave to appeal is dismissed.
BThe applicant must pay the three respondents one set of costs of $2,500.

____________________________________________________________________

REASONS

This application for leave to appeal arises out of a procedural imbroglio in a copyright dispute between the respondents (to whom we will refer collectively as Plantation) and the applicant (ESR).
In a proceeding commenced in 2014 (the 2014 proceeding), Plantation alleges infringement by ESR of copyright in technical drawings of furniture making up its “Irish Coast Collection”.
Following a trial in the High Court confined to liability, Duffy J held that ESR had on four occasions (30 July, 28 August and 5 and 12 September 2014) imported items of “Roseberry Collection” furniture which were infringing copies of the drawings.[1] She also held that the other elements of secondary infringement under s 35 of the Copyright Act 1994 had been established (including that ESR knew or had reason to believe that the furniture it imported consisted of infringing copies).[2] When it came to relief, she said:
[308] The relief I have granted is narrower than that sought by [Plantation] in the statement of claim. [It] sought declarations and injunctions that would cover other products that were a substantial reproduction of [its] copyright works, or that otherwise infringed [its] copyright works. I consider that language to be too general. Until such time as a judicial determination is made on whether products other than the infringing Roseberry products are a substantial reproduction of [its] copyright works my view is that [it] has no entitlement to legal orders that go so far.
[309] [Plantation] has acted promptly to protect [its] rights. I am satisfied that [it] is entitled to the relief sought in the statement of claim. Leave is reserved to [Plantation] (as requested) to come back to Court to pursue the relief by way of damages (including additional damages pursuant to s 121 of the Copyright Act) or an account of profits with interest should [it] choose to do so.
[1]Burden v ESR Group (NZ) Ltd [2016] NZHC 1542. There was also an item from a range known as the Westbury Collection.
[2]At [260]–[261].
The Judge made an order for discovery against ESR in the following terms:[3]
… an order that ESR makes and serves upon [Plantation’s] solicitor an affidavit:
(i) detailing quantities of the infringing Roseberry products that have been imported into New Zealand by itself or in concert with any other party, including but not limited to the second and third defendants; and
(ii) detailing the name, address and…

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] NZSC 22
Decision Date: 11 March 2021

CaseChat Overview and Summary

In the Supreme Court of New Zealand, the case of ESR Group (NZ) Limited v Burden involved a copyright dispute between the respondents (referred to collectively as Plantation) and the applicant (ESR). The dispute centred on the alleged infringement by ESR of copyright in technical drawings of furniture from Plantation's "Irish Coast Collection". Following a trial in the High Court, Duffy J found that ESR had imported infringing items on four occasions between 30 July and 12 September 2014. ESR appealed against this decision, and the Court of Appeal found that ESR had the requisite reason to believe by 28 August 2014 that the items it imported were infringing copies. This meant that ESR was liable for secondary infringement in respect of the importations on 28 August and 5 and 12 September 2014.

The primary issue before the Supreme Court was whether Plantation could prosecute primary infringement claims against ESR in respect of furniture imported before 28 August 2014. The Court of Appeal had allowed the proposed amendments to the 2014 proceeding and held that it would be an abuse of process to proceed with the December 2018 proceeding. However, Venning J had declined the proposed amendments and held that the primary infringement claims against ESR in the December 2018 proceeding ought not to be struck out. The Supreme Court found that while the approach of the Court of Appeal was arguable, it did not raise any question of general or public importance, or of commercial significance. The Court also saw no risk of a miscarriage of justice, and the concurrent conclusion reached by Venning J and the Court of Appeal was entirely consistent with the interests of justice.

The application for leave to appeal was dismissed, and ESR was ordered to pay the three respondents one set of costs of $2,500. The Court of Appeal's decision to allow the proposed amendments to the 2014 proceeding and strike out the December 2018 proceeding was upheld. The Court found that the interests of justice were best served by allowing the primary infringement claims in relation to infringing copies imported before 28 August 2014 to proceed in the 2014 proceeding.

Orders