G-Star Raw C.V. v Jeanswest Corporation (New Zealand) Ltd

[2013] NZHC 2172

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2011-404-003243 [2013] NZHC 2172

UNDER

the Copyright Act 1994

IN THE MATTER

of copyright infringement

BETWEEN

G-STAR RAW C.V. First Plaintiff

G-STAR AUSTRALIA PTY LIMITED Second Plaintiff

AND

JEANSWEST CORPORATION (NEW ZEALAND) LIMITED

First Defendant

Hearing:	26 August 2013
Appearances:	D L Marriott and I Finch for Plaintiffs C Elliott QC for Defendant
Judgment:	26 August 2013

ORAL RESULTS JUDGMENT OF VENNING J

Solicitors:           James & Wells, Auckland

Martelli McKegg, Auckland

Copy to:            D L Marriott, Auckland

C Elliott QC, Auckland

G-STAR RAW C.V. v JEANSWEST CORPORATION (NZ) LIMITED [2013] NZHC 2172 [26 August 2013]

[1]      This is an application for leave to join two additional defendants Jeanswest Wholesale Pty Ltd and Jeanswest Corporation Pty Ltd to these proceedings.   It is opposed.  It is accepted that if the application for joinder is granted then the existing fixture scheduled for 23 September 2013 will have to be vacated.

[2]      The existing statement of claim, which is the second amended statement of claim, pleads that the defendant Jeanswest Corporation (New Zealand) Limited has, without licence or authority of the plaintiffs, imported, possessed in the course of business, distributed, offered for sale and/or sold through the Jeanswest chain of retail  stores,  a  style  of  jeans  named  “Dean  Biker  Slim”,  which  infringes  the plaintiffs’ copyright.

[3]      The defendant admits to importing, distributing and selling various jeans in New Zealand including the jeans named “Dean Biker Slim”.  It denies that the “Dean Biker Slim” jeans are copies of the plaintiffs’ jeans and says that it imported and distributed the jeans in good faith and neither knew nor had reasonable grounds to know they were infringement copies.

[4]      It now appears and is confirmed by Mr Norbury’s affidavit, a solicitor acting for the defendant in Melbourne, Australia and who also acts for the two proposed additional defendants, that the jeans were designed by Jeanswest Corporation Pty Ltd.

[5]      Some time ago, and well after the fixture was allocated, it must have been apparent to the plaintiffs when unredacted documents were supplied to them on 29

May 2013 of the involvement of the proposed second and third defendants in relation to the design of the jeans.

[6]      The plaintiffs wanted to advance matters by seeking resolution at ADR but first sought informal discovery from Jeanswest Corporation Pty Ltd and Jeanswest Wholesale Pty Ltd.   In correspondence of 25 June they noted that if those parties resisted the request for informal discovery then they were instructed to make a formal application for joinder.

[7]      As discussed with counsel I consider the appropriate way forward at that stage would have been for an application for non-party discovery rather than to threaten joinder in the event disclosure was not forthcoming.

[8]      In any event the Court is now faced with this application for joinder at a late stage in the proceedings.  If the joinder is granted it will lead to vacation of the trial date, which has been allocated for some time.  It will also lead to an expansion of the issues that will need to be determined at trial.

Result

[9]      For reasons which I shall go into more detail in the reasons judgment, I am not prepared to accede to the request for joinder at this late stage.  The application for joinder will be and is declined.

[10]     In declining joinder and maintaining the fixture date I take into account the offer that has been made through Mr Norbury and confirmed by Mr Elliott QC for further discovery on behalf of the proposed additional defendants at least, Jeanswest corporation Pty Ltd and note that that discovery can be made available by tomorrow.

Directions

[11]     To maintain the fixture I make the following directions largely in accordance with the draft memorandum circulated by counsel:

(a)      The parties are to exchange on a voluntary basis further and more complete   lists   of   relevant   documents   to   the   extent   that   such documents exist and to make copies available for inspection no later than 5.00 pm, Tuesday 27 August 2013 (with the exception of, in the case of the plaintiffs, the state of art documents).

(b)From   the   plaintiffs’  perspective   additional   discovery   from   the defendant  is  to  include  copies  of  correspondence  to  and  from Jeanswest Corporation Pty Ltd together with documents relating to the design (and given the content of Mr Norbury’s affidavit, manufacture)

and supply of the “Dean Biker Slim” product, the subject of these proceedings and documents illustrating the existing state of the art and the trends of fashion as at 2009 in relation to jeans similar to those in dispute.

(c)      From  the  defendant’s  perspective  additional  discovery  from  the plaintiffs should include documents relating to the design and supply of the Elwood product, the subject of these proceedings to the extent such documents exist and documents illustrating the existing state of the art and the trends of fashion as at 2009 in relation to the Elwood product.  As noted in relation to the state of the art documents to be supplied by the plaintiffs the date for that is extended to Friday 6

September 2013.

(d)      The plaintiffs’ briefs of evidence are to be exchanged on Monday 9

September 2013.

(e)       The defendant’s briefs of evidence are to be exchanged on Wednesday

18 September.

(f)       The plaintiffs are to be responsible for preparing the common bundle of   documents   based   on   documents   identified   in   the   witness statements.

(g)      The plaintiffs’ opening bundle and chronology are to be filed and

served by Friday 20 September 2013.

[12]     I note provision  will  need  to  be made for at  least  one of the plaintiffs’

witnesses, Piet Poelmann, to give evidence by way of video link.

[13]     I record counsel have agreed to confer as to whether aspects of the plaintiffs’

or defendant’s evidence can be taken as read.

Costs

[14]     I consider that both parties have had a hand in contributing to the way the matter has developed.  Costs are to lie where they fall on this particular application.

[15]     As I say I will provide more detailed reasons shortly but that is the outcome.

Venning J