Khushbu Sundarji, Partner at Stewart Germann Law Office continues her series on intellectual property protection. This article discusses the protection of copyright. The first part in the intellectual property protection series looked at trade marks. You can view the article here.
In New Zealand any issues related to copyrights are governed by the Copyright Act 1994. Under this act, the labour, skill and judgment which an author, artist or creator has expended in the creation of an original literary, artistic, musical or dramatic work is protected. Copyright arises automatically in the work. It is not the ideas that can be protected but the tangible form the ideas take such as the manual, the logo or the advertising jingle.
Protection is in the form of a right to prevent anyone else from copying or reproducing the work or a substantial part of the work without the author’s permission.
In franchising the franchise agreements, Manuals and any policies are usually copyrighted material of the franchisor or licensor and those documents form a valuable part of the franchisor’s intellectual property.
Unlike trade marks which are registered and therefore easy to search and identify, asserting your copyright is slightly different. There is no copyright register in New Zealand; accordingly, the person must assert their copyright in the event of any infringement.
Overseas there have been cases regarding the assertion of copyright:
Adidas v Tom Browne
Adidas is known for its distinctive three stripe logo. Tom Browne, a British designer was known for his logo of four white block stripes. Tom Browne had recently branched into sportwear. However, Tom Browne was predominantly known for being a luxury clothing designer/ Despite the companies servicing different markets, Adidas sued Tom Browne for breach of copyright, alleging that he was intentionally imitating Adidas’s well known and well established brand.
Browne’s solicitor CPD referenced a prior agreement between Adidas and Browne, in which Adidas allowed him to use horizontal striped branding after he added a fourth stripe, as well as pointing out that the two brands were not competitors in the same market. The court agreed with Tom Browne.
Adidas is famous for suing for copyright infringement, having gone after Sketchers (having four horizontal stripes on their shoes) and H & M. The former was settled out of court and H & M triumphed in the latter, which the Court deciding that H & M’s two stripe design in their work out gear did not infringe Adidas’s copyright.
Copyright infringement cases are also common in the music industry:
- Vanilla Ice was sued by David Bowie and Queen. Vanilla Ice’s song ‘Ice Ice baby’ sampled the Queen/Bowie song ‘Under pressure’ without giving credit to Queen or David Bowie. Vanilla Ice tried arguing that as he added a different note to the riff, there was no infringement, but then agreed that he had infringed the copyright. Queen and David Bowie are now credited as writers on the song.
- Katy Perry was sued by rapper Marcus Gray in 2014, alleging she had infringed his copyright by an 8 note riff from his track Joyful Noise in her song Dark Horse. Although Gray was initially successful, in 2022 the Court overturned that verdict, saying that Gray was trying to claim an improper monopoly over musical building blocks.
If you are alleging infringement of copyright, you must set out why the other party has infringed your copyright. Accordingly, it is imperative that you establish copyright in all of your works at the outset.
This article was written by Khushbu Sundarji. If you have any questions, please contact SGL.
Khushbu is admitted as a Barrister and Solicitor in Auckland in 2010 and was admitted as a Barrister and Solicitor in Melbourne in 2011. She is experienced in the sale and purchase of property, sale and purchase of businesses and also has expertise in franchising and licensing and drafting commercial contracts. Khushbu worked in Melbourne prior to joining SGL in 2017.
Khushbu can be found on LinkedIn.
