Peterson v Lucas
[2013] NZCA 641
•11 December 2013 at 3.30 pm
| IN THE COURT OF APPEAL OF NEW ZEALAND |
| CA768/2012 [2013] NZCA 641 |
| BETWEEN | CARL JAMES PETERSON PETERSON PORTABLE SAWING SYSTEMS LTD (IN LIQUIDATION) |
| AND | REX CAMERON LUCAS G W LUCAS & SONS PTY LTD |
| Court: | O’Regan P, Ellen France and Wild JJ |
Counsel: | C J Peterson in person |
Judgment: (On the papers) | 11 December 2013 at 3.30 pm |
JUDGMENT OF THE COURT
The applications for recall and stay are dismissed.
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REASONS OF THE COURT
(Given by Ellen France J)
Introduction
Mr Peterson has applied to vacate this Court’s judgment[1] declining to grant him special leave to appeal against a decision of Gilbert J[2] and/or for a stay of our judgment. The decision of Gilbert J was made on review of a decision of Associate Judge Bell.[3] Gilbert J struck out Mr Peterson’s claims in copyright on the basis that the parties had settled the claim. Gilbert J concluded that the parties’ settlement agreement was enforceable and in doing so rejected various arguments by Mr Peterson challenging the agreement. Those arguments included a submission that Mr Peterson entered into the settlement agreement under duress because of a threat he said Mr Warren Lucas made about bringing copyright infringement proceedings.
Process
[1]Peterson v Lucas [2013] NZCA 453.
[2]Peterson v Lucas Mill Pty Ltd [2012] NZHC 2398.
[3]Peterson v Lucas Mill Pty Ltd [2012] NZHC 1101.
We have treated Mr Peterson’s application to vacate as an application for recall. We are satisfied that this application and the application for a stay can be dealt with on the papers on the basis of the material submitted by Mr Peterson and that it is not necessary to seek submissions from the Lucas interests, the respondents.[4]
The recall application
[4]See discussion of the process to be followed where an application for recall has been made in Erwood v Maxted [2010] NZCA 93, (2010) 20 PRNZ 466 at [23] and Rabson v Gallagher [2012] NZCA 237, (2012) 29 FRNZ 23 at [4]. We deal with some other procedural issues arising in relation to this and other appeals involving the same parties in a minute of the same date as this judgment.
As we read Mr Peterson’s application, his primary submission is that the judgment should be recalled because there are two relevant provisions to which our attention was not drawn. It is well established that a judgment will only be recalled on this basis where the provision that has not been referred to is of “plain relevance”.[5]
[5]Horowhenua County v Nash (No 2) [1968] NZLR 632 (SC) at 633.
The first of the provisions on which Mr Peterson now relies is s 34 of the Designs Act 1953. The second provision to which he now refers is art 5 of the Berne Convention for the Protection of Literary and Artistic Works.[6]
[6]Berne Convention for the Protection of Literary and Artistic Works 1161 UNTS 30 (signed 9 September 1886, entered into force 4 December 1887).
Section 34(1) of the Designs Act provides that where any person threatens another with proceedings for infringement of the copyright in a registered design, the person aggrieved by the threat may bring an action for relief as set out in s 34(2). Section 34(2) provides that unless, in an action brought under this section, the defendant proves that “the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of the copyright in a registered design the registration of which is not shown by the plaintiff to be invalid”, the plaintiff is entitled to the relief specified. The available relief includes a declaration that the threats are unjustifiable and damages.
Of the equivalent provisions in the United Kingdom,[7] the Hon Sir Hugh Laddie noted that they arose from concerns in the second half of the nineteenth century that patent litigation was so “complicated and expensive that it was believed that the mere threat of it could seriously damage a competitor’s business”.[8]
[7]Registered Designs Act 1949, s 26.
[8]Hugh Laddie, Peter Prescott and Mary Vitoria The Modern Law of Copyright and Designs (4th ed, LexisNexis, London, 2011) vol 2 at [61.3].
The reference Mr Peterson now makes to s 34 seems to relate to his argument that the courts below were wrong not to consider the legitimacy of Mr Lucas’ threat to Mr Peterson to bring proceedings for breach of copyright. However, as we noted in our decision declining leave, Gilbert J did consider the position on the basis that it was not legitimate to threaten to bring such proceedings to force a settlement. But, the Judge concluded, Mr Peterson’s argument that this is what had occurred failed on the facts. He found that the threat did not coerce Mr Peterson into settlement. Reliance on s 34 cannot therefore alter the assessment that Mr Peterson’s proposed appeal does not meet the threshold for a second appeal. At the heart of Mr Peterson’s argument is a complaint about a factual assessment rather than a question of law.
Article 5 of the Berne Convention provides, amongst other matters, that protection in the country of origin “is governed by domestic law”.[9] We understand the potential relevance of this provision is to Mr Peterson’s argument that the threatened proceedings had no merit and were therefore illegitimate. Mr Peterson says that art 5 makes it clear he was able to draw assistance from s 74 of the Copyright Act 1994.
[9]Article 5(3).
Section 74 provides that the making of a three-dimensional object does not infringe copyright in a literary or artistic work in certain circumstances, for example, where the work or copy forms part of a patent specification open to inspection here in relation to a New Zealand patent. We do not see art 5 alters our conclusion on this aspect, namely that s 74 does not assist Mr Peterson’s case.[10]
[10]Peterson, above n 1, at [20].
None of the other matters raised by Mr Peterson meets the test for a recall. Ultimately, the matters raised are a “recasting [of] arguments previously given” or putting forward other arguments that “could have been raised at the earlier hearing but were not”.[11]
Stay application
[11]Faloon v Commissioner of Inland Revenue (2006) 22 NZTC 19,832 (HC) at [13].
Mr Peterson seeks a stay of our decision declining leave on the basis that he has now filed proceedings under s 34 of the Designs Act in the High Court.
Under r 12(3) of the Court of Appeal (Civil) Rules 2005, we can grant a stay pending determination of an application for leave to appeal or an appeal. The application in the High Court does not fall within either category. Accordingly, we have no jurisdiction to grant a stay. Further, it is not at all clear to us that there is in fact anything to stay. The judgment is not one requiring execution. Finally, we would not in any event have granted a stay.
Result
The applications for recall and stay are dismissed.
Solicitors:
Simpson Grierson, Auckland for Respondents
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