James & Wells client Plantation Grown Timbers (PGT) designs and produces collections of furniture made from reclaimed timber and exports furniture into many markets including NZ. It is owned by Australian citizen, Ian Burden.
PGT, which manufactures its furniture in Vietnam, has claimed breach of copyright over furniture that was imported to NZ by a rival company last year. It has also made claims for misleading and/or deceptive conduct in breach of the Fair Trading Act.
PGT claims the imported furniture items infringe the copyright in its original design drawings. It has intellectual property rights notices in place with New Zealand Customs Service, which stopped the shipments in light of PGT’s copyright notice.
James & Wells Partner, Gus Hazel, says the case involves an aspect of NZ intellectual property law that makes it stand out from other countries.
“NZ has unique copyright laws which allow an author of an original work to enforce copyright rights in the drawings underlying 3D objects, even after they have been ‘industrially applied’,” he says.
In most countries such rights cannot be enforced after industrial application, which typically means the manufacture of 50 or more objects from the drawings.
Earlier this year the High Court declined an application by one of the defendants, namely the ESR Group, which runs the “Early Settler” chain of furniture stores, to have the detained items of furniture released by Customs.
The trial to determine the copyright and Fair Trading Act claims took more than three weeks but has now come to a close in the High Court. The plaintiffs are of course hoping for a positive outcome, and are pleased to have had an opportunity to tell their story. Given the complexity of the case and the large volume of evidence it may take some time for a decision from the court.
Hazel says NZ’s copyright laws offer important protections for companies such as PGT and its designs.
“A lot of time, skill and effort goes into designing furniture items, and winning market success, and so our clients wish to prevent others making unauthorised use of their original works and free-riding on their hard work,” he says.
“The more knock-offs there are in the market, the more the customer base and reputation is diluted.”
He added that he was particularly pleased to have worked closely with PGT’s primary Australian lawyer, Richard Stone of Stone Lawyers, who has a detailed knowledge of the industry and the key players. Stone was co-counsel over the course of the trial at Auckland.
“It’s another example of a great trans-Tasman working relationship to provide the best service to the client.”