Copyright: suing in New Zealand for breach of foreign intellectual property rights - Sony Computer Entertainment v van Veen

The High Court has held that Sony Computer Entertainment was entitled to sue in the New Zealand Courts for breaches of the copyright legislation of England and Hong Kong.  This is potentially a significant case for those seeking to enforce their rights against global infringers.

In an important decision for intellectual property and conflict of laws practitioners, MacKenzie J has held that foreign copyright laws (and therefore foreign intellectual property rights), may be enforced in New Zealand in certain circumstances.

The case involved the enforcement of the anti-circumvention device provisions of the Copyright Act 1994 (NZ) (i.e. those which are aimed at devices which can be used to circumvent copy-protection measures on such things as DVDs and CDs), but as the anti-circumvention device in question had been sold internationally on a commercial basis, Sony Computer Entertainment also sought to have the New Zealand Court find the defendant (van Veen) liable under the equivalent provisions of the Copyrights, Designs and Patents Act (UK) and the Copyright Ordinance (HK).

This required the court to consider whether these foreign causes of action were justiciable in the New Zealand Courts.

In a careful and considered judgment, MacKenzie J held that these causes of action were justiciable in New Zealand.  In doing so, he disagreed with a prior decision of Tipping J which held the contrary (Atkinson Footwear Ltd v Hodgskin International Services Ltd (1994) 31 IPR 186).

MacKenzie J was clearly persuaded to do so by the reasoning of the English Court of Appeal in Pearce v Ove Arup Partnership Limited [1999] 1 All ER 769.

This decision is an important one and may allow plaintiff's to sue in New Zealand for infringements which have taken place in other jurisdictions.

However, there are limitations on the High Court's willingness to deal with foreign intellectual property rights.  For instance, it will not do so where the validity of those rights is in issue.  Forum non coveniens issues will also be relevant.

Enquiries and information

For more information on copyright or any other intellectual property issues please email Garry Williams or call Garry on 64 9 916 8661.