April 2015...In an earlier article written for the Otago Daily Times, I discussed the legal battle over the famous G-Star biker jean. The victor, G-Star successfully issued legal proceedings against Jeanswest alleging that Jeanswest had infringed its copyright in its biker jean design. This battle has gone another round in the Court of Appeal and Jeanswest has come out even worse off than before.
The G-Star biker jean is said to combine fashion with the functionality of motorcross trousers. The design has five distinctive features including oval shaped knee pads and a saddle pad.
Jeanswest imported a style of jeans named “Dean Biker Slim Straight” and sold 62 pairs in New Zealand. The Dean Biker jean bore four of the five distinctive features of the G-Star design; the only feature missing was the saddle pad. G-Star contended that the coincidence of features, coupled with the similarity of their arrangement amounted to copyright infringement of the original G-Star design.
The High Court found that Jeanswest had infringed G-Star’s copyright and awarded G-Star damages of just $325 equating to Jeanswest’s profit from the sale of the 62 pairs of jeans. Jeanswest appealed and G-Star cross appealed. Seven issues were canvassed in the Court of Appeal but in this article I focus on two: was there primary infringement, and should G-Star have been awarded additional damages?
Copyright exists in original works, such as literary works, musical works, films and artistic works including designs. The underlying design of the G-Star jean, including its five distinctive features, was the artistic work in issue.
The Court of Appeal agreed with the High Court that the Australian arm of Jeanswest had copied G-Star’s design. The question was whether Jeanswest NZ had infringed G-Star’s copyright.
Primary infringement occurs when a copyright work is copied and/or when infringing copies are issued to the public by someone who is not the owner of the copyright. Secondary infringement can occur when an infringing copy is imported to New Zealand provided that the person importing the infringing copy knows or has reason to believe the item is an infringing copy.
The High Court had found Jeanswest liable for secondary infringement because it had imported an infringing copy of the G-Star jean to New Zealand. Having found secondary infringement, the High Court considered that it was unnecessary to decide whether or not there was primary infringement. G-Star’s cross appeal required this point to be concluded.
The Court of Appeal looked to Jeanswest’s original pleadings where it was acknowledged that Jeanswest had imported, distributed and sold the product in New Zealand. That statement, coupled with the finding that the Jeanswest product was an infringing copy of G-Star’s jean lead the Court of Appeal to be satisfied that primary infringement had been established.
The Courts have discretion to award additional damages “as the justice of the case may require”. Relevant considerations include the flagrancy of the infringement and the benefit derived by reason of the infringement. Additional damages were not awarded by the High Court, where an alleged “sinister motive” by Jeanswest was dismissed and weight was given to Jeanswest’s ignorance of New Zealand copyright law.
The Court of Appeal adopted a different view, concluding that this was blatant copying by Jeanswest and therefore a flagrant infringement of G-Star’s copyright. Jeanswest was ordered to pay additional damages of $50,000 to G-Star. The Court of Appeal noted that although only 63 pairs of jeans were imported, this was intended to test the market with a view to further importations. Ignorance of New Zealand copyright law was viewed less favourably in the Court of Appeal, where it was noted that Jeanswest lacked an effective system for establishing whether the importation breached New Zealand copyright law.
The final paragraphs of the Court of Appeal judgment note that as a work which is “applied industrially” the G-Star jean is only entitled to copyright protection for 16 years, which expired in approximately March 2012. This leaves the followers of nineties fashion to wait and wonder, after all the legal proceedings and damages paid, will we still see Jeanswest biker jeans on shelves in New Zealand?
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