BThe appellant is ordered to pay the respondent costs of $15,000 together with the respondent’s reasonable disbursements as fixed by the Registrar.

REASONS
(Given by Gault J)
Introduction
[1]        Tiny Intelligence Ltd, the appellant, obtained judgment for liability against Resport Limited, the respondent, for infringement of copyright in artistic works, being designs for a toy sword and a toy trumpet. Reproductions of these works were sold to supporters of the Crusaders rugby team. In the High Court, John Hansen J granted a permanent injunction and ordered delivery up of the infringing copies and means for their production.[1] In a separate hearing on monetary relief the appellant elected an account of profits but sought also an award of “additional damages” under s 121(2) of the Copyright Act 1994 (the 1994 Act). On this second aspect John Hansen J, in a judgment delivered on 15 November 2006,[2] determined that additional damages could not be awarded when an account of profits is elected. He fixed the amount to be paid for profits at $50,000. That decision was upheld in the Court of Appeal in a judgment delivered on 5 August 2008.[3]
[1]Tiny Intelligence Ltd v Resport (unreported, High Court, Christchurch, CIV-203-409-352, 21 November 2005, John Hansen J).
[2]     Tiny Intelligence Ltd v Resport Ltd [2007] 2 NZLR 263 (HC).
[3]Tiny Intelligence Ltd v Resport Ltd [2008] NZCA 281, CA 270/06, 5 August 2008 (William Young P, Hammond and Ellen France JJ).
[2]        Leave was granted to the appellant to appeal to this Court on the issue:
Whether the Court of Appeal was correct to decide that “additional damages” under s 121(2) of the Copyright Act 1994 cannot be awarded when the plaintiff elects as its principal relief an account of profits.

[3] Relief in civil proceedings in respect of infringement of copyright is provided for in ss 120, 121 and 122 of the 1994 Act. We are concerned only with the first two of those sections that read:
120 Infringement actionable by copyright owner
(1)An infringement of copyright is actionable by the copyright owner.
(2)In proceedings for infringement of copyright, all such relief by way of damages, injunctions, accounts, or otherwise is available to the plaintiff as is available in respect of the infringement of any other property right.
(3)This section has effect subject to the following provisions of this Part of this Act.

121 Provisions as to damages in infringement proceedings
(1)Where, in proceedings for infringement of copyright, it is proved or admitted that at the time of the infringement the defendant did not know, and had no reason to believe,…

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.

Continue reading Tiny Intelligence Ltd v Resport Ltd

Details

AGLC: Tiny Intelligence Ltd v Resport Ltd [2009] NZSC 35
Case: [2009] NZSC 35
Decision Date: 8 April 2009

CaseChat Overview and Summary

In the Supreme Court of New Zealand, Tiny Intelligence Ltd (the appellant) appealed against the decision of the Court of Appeal that it was not entitled to additional damages for copyright infringement under s 121(2) of the Copyright Act 1994 when an account of profits was elected. The appeal was dismissed. The court found that additional damages under s 121(2) of the Copyright Act 1994 were not a separate and discrete form of relief available in addition to any other relief provided for in s 120. The court held that the expression "additional damages" in s 121(2) carries the same meaning as in the earlier s 17(3) and that under that earlier section "additional damages" were damages additional to, or an enhancement of, damages awarded under s 17(1). The court also held that the changes made in 1994 did not go far enough to bring about such a substantial change as would reverse the basic principle that the remedies of damages and an account of profits are inconsistent. The court further held that if the appellant's approach were correct, an award of additional damages would be available against an innocent infringer, which would fly in the face of the consistent protection for innocent infringers throughout the intellectual property statutes. The appeal was dismissed with costs to the respondent of $15,000 together with its reasonable disbursements as fixed by the Registrar.

Orders