New Zealand stands as one of the few countries that provides specific copyright protection against the reproduction of a copyright work in three dimensions (3D), providing an additional form of protection for new products. The duration of protection for 3D copyright in New Zealand is 16 years, commencing from the date of the first 50 units being produced anywhere in the world. This form of copyright protection is extended to creators from most parts of the world and is automatic.
Key considerations for copyright protection and infringement in New Zealand
- Existence and proof of copyright work
A copyright work (e.g. a drawing or model) must be able to be substantiated in the context of copyright infringement proceedings. This is different to registered design protection where proof is based on the records maintained by the New Zealand Intellectual Property Office (IPONZ). - Ownership of copyright
To initiate a copyright infringement action, the plaintiff must demonstrate ownership of the copyright in the work. The most effective form of evidence is a deed of assignment that includes the original work (e.g. drawings), which should be signed by the author or creator. - Derivation of the copy-product’s 3D shape
It is critical that the 3D shape of the copy-product has been derived from the copyright work. This derivation can be indirect; for instance, if the copy-product is copied from an existing product in the marketplace that is identical to the copyright-protected design. If the 3D copy is created independently, then there is no copyright infringement. This is not the case for registered designs. - Automatic copyright protection
Copyright protection in New Zealand is automatically granted once a work is created. There is no formal registration process for copyright in New Zealand. Under the Berne Convention, this automatic protection extends copyright protection in New Zealand for works created in 181 member countries. - Proof of copying
Unlike registered designs, copyright protection requires the plaintiff to prove that copying has occurred. - Substantial copying
For copyright to be infringed a “substantial part” of the 3D shape must have been copied. The law does not strictly define "substantial" by a percentage but instead focuses on the significance of what was copied. It is hence possible that even a small portion of the original work may constitute infringement if it captures the essence or core elements of the copyrighted design.
Comparison to registered design protection
In comparison, for infringement of a registered design, the copy-product must fall within the same class of product as the registered design. For example, if a registered design is for a "plant pot" and a copy-product is the same shape but is marketed as a "travel pillow," no infringement occurs under registered design law. This limitation does not apply under copyright law.
Enforcement options for copyright protection
Several avenues exist for enforcing copyright protection in New Zealand, depending on the severity of the infringement and the desired outcome:
- Cease and desist letters: A formal demand to halt the infringement.
- Civil court action: For larger claims, plaintiffs may pursue damages through the civil courts.
- Criminal prosecution: For instances involving large-scale commercial piracy, criminal action may be appropriate.
Comparison with Australian copyright law
Unlike New Zealand, Australian copyright law does not provide direct protection for the shape of mass-produced products. In Australia, a registered design is the primary means of safeguarding against the copying of 3D products. However, it’s important to note that visuals (e.g. patterns) applied to 3D products in Australia may still be covered by copyright, even if the 3D product shape itself is not.
Copyright protection in combination with registered designs
Relying solely on copyright protection in New Zealand is a legitimate and often-used strategy, particularly for creators who are concerned about infringement. However, if the likelihood of copy-products is high, it is advisable to file for registered design protection in addition to copyright. This dual-layered approach offers enhanced protection, with the registered design adding an extra layer of legal recourse should infringement occur.
Impact of lapsed patents or registered designs on copyright
It is important to note that if a New Zealand patent or registered design lapses (e.g. due to non-payment of renewal fees), it is a defence to copyright infringement to use the patent or design drawings for the purposes of making the 3D copy-product. Ironically, copyright in the 2D patent or design drawings does not lapse so running them through a photo copier is still an infringement of copyright. In any case, it is crucial for owners to stay on top of patent and design renewal requirements to avoid any unintended loss of copyright protection that may exist for their product. Termination of copyright protection in this way does not apply to the lapsing of a pending New Zealand patent or design. Only once registered.
If you have a product you want to protect, reach out to our professionals to assist you in determining the most suitable method for you.
