Intellectual Property highlights for 2017
What happened in the land of intellectual property in 2017?
There were some legislative developments, which can be unusual in intellectual property in an election year.
Geographical Indications (Wine and Spirits) Registration Act 2006
The Geographical Indications (Wine and Spirits) Registration Act 2006 came into force on 27 July 2017.
The Act allows wine and spirit makers (but does not cover food like feta cheese and parma ham) to register their “geographical indication” provided they can show that their products have particular characteristics that are attributable to that region.
Registration of a geographical indication is different to a trade mark in that anyone can use the geographical indication provided they can demonstrate their products meet the criteria set out in the geographical indication registration.
The geographical indications register is managed by the Intellectual Property Office of New Zealand (IPONZ) and so far 25 applications have been made, including Waiheke Island, Marlborough, Central Otago, Napa Valley, Prosecco, Scotch Whisky and Cognac.
Review of the Copyright Act 1994
In June 2017 the National-led government announced a review of the Copyright Act 1994. One of the main aims of the review is to ensure that the Act adequately deals with advances in technology, particularly the digital environment.
Kris Faafoi is now the minister responsible for the review and has signalled his support for it to continue. The Ministry of Business, Innovation and Employment is preparing an issues paper, which is likely to be released for public consultation in the first half of 2018. A three-month consultation period will follow.
2017 was dominated by procedural and interlocutory cases in the intellectual property realm – applications for further and better discovery, applications to amend pleadings, confidentiality, extensions of time and what “extraordinary circumstances” for obtaining an extension means, varying interim injunction orders and orders to remove counsel on the basis of conflicts of interest – to name some of the issues.
A bad year for trade mark owners
In the trade mark world, it was a bad year for trade mark owners. National Mini Storage, an Auckland-only storage company, was unable to stop National Storage, an Australian company, entering the New Zealand market as National Storage (National Mini Storage Ltd v National Storage Ltd  NZHC 1775 (31 July 2017)).
Omega, the maker of watches, and owner of this trade mark , was unable to prevent registration of this trade mark (Omega SA (Omega AG) (Omega Ltd) v Guru Denim Inc  NZCA 81 (27 March 2017)).
MAN Truck and Bus, the owner of the following trade mark , was unable to prevent registration of the next trade mark for trucks (Man Truck & Bus AG v Shaanxi Heavy-Duty Automobile Co. Ltd  NZHC 2821 (20 November 2017)).
Monster Energy, the owner of the UNLEASH THE BEAST trade mark was unable to prevent the registration of the trade mark (Monster Energy Company v Ox Group Global Pty Ltd  NZHC 2393 (29 September 2017)).
The intellectual property case that captured the most media attention in the past 12 months was the decision in Eight Mile Style, LLC v New Zealand National Party  NZHC 2603 (25 October 2017). This was a tough time for the National Party with the High Court issuing its ruling against it within 10 days of the coalition talks concluding and Labour, New Zealand First and the Greens forming a government.
The High Court ruled that the National Party’s theme music from a television advertisement in the 2014 election infringed the copyright related to Eminem’s Lose Yourself song. The two pieces were considered “strikingly similar”. The National Party has appealed to the Court of Appeal.
Resmed and Fisher & Paykel Healthcare
What is likely to be a theme for 2018 is the litigation between medical device market leaders Resmed and Fisher & Paykel Healthcare. These two rivals currently have proceedings on foot in the United States, Germany, the United Kingdom, Australia and New Zealand. The litigation mostly concerns patents protecting masks used for obstructive sleep apnea therapy.
Resmed also filed proceedings at the United States International Trade Commission asking the trade body to investigate and stop Fisher & Paykel Healthcare importing its sleep masks into the US. Resmed withdrew the proceedings in 2017. It is thought that Resmed will re-file the proceedings.
In December 2017 Fisher & Paykel Healthcare extended the litigation to Australia by filing against Resmed for infringing patents covering flow generators, ventilators, tubing and humidifiers.
Sky and TVNZ, MediaWorks and NZME
Another dispute that was set to dominate the law reports in 2018 was that between Sky and TVNZ, MediaWorks, Fairfax and NZME over the reproduction of material for the purpose of reporting on current events. The claim was initially filed as an interim injunction against Fairfax in relation to news reporting on the 2016 Olympics, the question being how much can you reproduce as reporting when you are not the rights holder to the content, known as “fair dealing”. Sky alleged that TVNZ, MediaWorks, Fairfax and NZME used too much content in their reporting, Sky having the exclusive coverage rights from the International Olympic Committee. Sky lost its interim injunction, but it did force news reporters to change how much content they were showing. A practical victory for Sky at least. A confidential settlement with MediaWorks and Fairfax has been announced. The substantive proceedings against TVNZ and NZME are still on foot and due to be heard this year.
We are also likely to see more from the courts in relation to Kim Dotcom. The latest is the High Court decision Dotcom v District Court at North Shore  NZHC 3158 (15 December 2017). The long history of this case is that the District Court first executed warrants in January 2012 on request from the United States in a bid to extradite Mr Dotcom and his business partners to face copyright claims over the file sharing website megaupload.com. Ever since Kim Dotcom has opposed his extradition.
In 2015 the District Court ruled that the entrepreneur should be extradited. Mr Dotcom unsuccessfully appealed that decision to the High Court. He has appealed that decision and it is due to be heard in the Court of Appeal in early February 2018.
The most recent decision from the High Court relates to a strike out application by the United States for seven of the eight causes of action in judicial review proceedings brought by Mr Dotcom.
The judicial review proceedings are largely focused on the original warrants issued by the District Court. The Supreme Court has already ruled the warrants valid. The United States sought strike out on the basis that the causes of action disclose no reasonably arguable cause of action or are an abuse of process, largely because the issues have been dealt with by the Supreme Court or are the subject of the appeal to the Court of Appeal.
The High Court agreed with the US. The judicial review proceedings were said to be seeking to relitigate matters determined by the Supreme Court already, or on appeal to the Court of Appeal. The judicial review proceeding remains live in relation to just the eighth cause of action and is listed for mention in early February 2018.
2018 looks set to be an interesting year for intellectual property train-spotters, assuming the Copyright Act review and the on-going litigation between Resmed and Fisher & Paykel Healthcare, Sky and TVNZ, MediaWorks, and NZME and the National Party and Eight Mile Style move with reasonable pace. We will no doubt see many of the interlocutory cases that dominated the reports in 2017 result in substantive decisions.
Last updated on the 2nd February 2018