ESR Group (NZ) Ltd v Burden - [2017] NZCA 217

IN THE COURT OF APPEAL OF NEW ZEALAND

CA387/2016
[2017] NZCA 217

BETWEEN

ESR GROUP (NZ) LIMITED
Appellant

AND

IAN JAMES BURDEN
First Respondent

PLANTATION GROWN TIMBERS (INTERNATIONAL) LIMITED
Second Respondent

PLANTATION GROWN TIMBERS (VIETNAM) LIMITED
Third Respondent

Hearing:	2 May 2017
Court:	Randerson, Harrison and Brown JJ
Counsel:	J G Miles QC and A J Pietras for Appellant A H Brown QC, A I K Franks and J R E Wach for Respondents
Judgment:	26 May 2017 at 10 am

JUDGMENT OF THE COURT

AThe application by the respondents to adduce the letter of 7 August 2014 on appeal is granted.
BThe appeal is allowed in part.
C    The cross-appeal is allowed.
DThe judgment in the High Court is partially set aside and amended in the following respects:
(i)     In respect of the technical drawings made up to 28 October 2003, judgment is entered for the second respondent in substitution for the first respondent.
(ii)     In respect of the technical drawings made after 28 October 2003, judgment is entered for the second and third respondents in substitution for the first respondent.
E    Costs in this Court are to lie where they fall.
F     Any remaining question of costs in the High Court is to be determined in that Court.

____________________________________________________________________

REASONS OF THE COURT

(Given by Randerson J)

Table of Contents

Para No

Introduction
The background facts and the findings in the High Court

The parties
Authorship and ownership of the copyright works
Copyright qualification
Copying
Secondary infringement
The importations and the Customs notice
Other conclusions in the High Court

Application to adduce further evidence on appeal
The issues on appeal
Was the Judge right to find Mr Burden was a joint author of the technical drawings?
Did the Judge correctly find that the technical drawings were original works for copyright purposes?
Do the technical drawings qualify for copyright under s 18(2) of the Act?
Was the Judge correct to conclude that neither Plantation International nor Plantation Vietnam owned or co-owned the copyright works?
When ESR imported its goods into New Zealand did it know or have reason to believe that the goods were infringing copyright and, if so, what was the earliest date on which the company had such knowledge or belief?
Did the Judge err in finding that the Customs notice and the subsequent determinations by Customs were valid?
Summary
Result

[1]
[4]
[4]
[6]
[14]
[17]
[20]
[22]
[27]
[29]
[34]

[35]

[47]

[51]

[53]

[57]

[66]
[78]
[79]

Introduction

The appellant (ESR) appeals against a judgment of Duffy J in which she found it had infringed the copyright of the first respondent (Mr Burden) by importing furniture into New Zealand in 2014.[1] ESR was found to be liable for secondary infringement under s 35 of the Copyright Act 1994 (the Act). This was on the basis that the imported furniture constituted an infringing copy of Mr Burden’s copyright work and that ESR knew or had reason to believe that the furniture was an infringing copy…

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: [2017] NZCA 217
Decision Date: 26 May 2017 at 10 am

CaseChat Overview and Summary

The appeal was heard by Randerson, Harrison, and Brown JJ. The appellant, ESR Group (NZ) Limited, challenged a judgment of Duffy J in the High Court that found it had infringed the copyright of the first respondent, Ian James Burden, by importing furniture into New Zealand in 2014. The second and third respondents, Plantation Grown Timbers (International) Limited and Plantation Grown Timbers (Vietnam) Limited, respectively, were joint plaintiffs with Mr Burden in the High Court but their claims to copyright infringement were not upheld. The appeal and cross-appeal by the respondents raised issues about the authorship and ownership of the alleged copyright works, the ability of the respondents to sue for infringement in New Zealand, and other issues relating to the seizure of ESR’s goods after their importation into New Zealand. The court found that Mr Burden was a joint author of the technical drawings, that the technical drawings were original works for copyright purposes, that the technical drawings qualified for copyright under s 18(2) of the Act, and that the High Court was wrong to find that Mr Burden was the owner of the copyright in the drawings and that neither Plantation International nor Plantation Vietnam were the owners of copyright. The correct position was that Plantation International was the copyright owner in respect of the technical drawings made up to 28 October 2003 and both Plantation International and Plantation Vietnam were co-owners in the copyright of the technical drawings made after 28 October 2003. The court concluded that Plantation International and Plantation Vietnam were both entitled to sue in New Zealand for infringement of copyright and that the High Court was correct to find that ESR was liable for secondary infringement in respect of the importation of its goods into New Zealand on 28 August and 5 and 12 September 2014 but not in respect of the importation of goods on 30 July 2014. The High Court was correct to find that the Customs notice of 20 May 2013 and the subsequent determinations made by the chief executive of Customs were valid. The appeal was allowed in part and the cross-appeal was allowed. The judgment in the High Court was partially set aside and amended. The costs of the appeal were to lie where they fell, and any remaining question of costs in the High Court was to be determined in that Court.

Orders