The importance of pleadings in copyright infringement cases

A recent New Zealand Supreme Court decision provides a very useful reminder of the importance of correct pleadings in copyright infringement proceedings. This necessarily involves clear and accurate identification of the copyright work.

In the case of Henkel KGAA v Holdfast New Zealand Limited1 , the appellant (Henkel) claimed that the respondent (Holdfast) had infringed its copyright in the design for Henkel's SuperAttak adhesive packaging when Holdfast designed the packaging for its UltraBonder adhesive.  The packaging comprised a
multi-coloured card on which the bottle of adhesive was contained in a clear plastic blister pack. 

In the High Court Henkel's claim was upheld but Holdfast was successful on appeal to the Court of Appeal in having the declaration and injunction made in Henkel's favour set aside.  In this proceeding Henkel appealed to the Supreme Court seeking to restore the Orders made in the High Court.

Background

By way of background Holdfast admitted to having obtained a sample of Henkel's SuperAttak adhesive packaging and to copying this packaging for an adhesive product which Holdfast called SuperBonder.  Henkel issued proceedings for copyright infringement and Holdfast agreed to cease using the copied packaging.  Holdfast redesigned its packaging and renamed its product UltraBonder.  Henkel maintained that the new Holdfast UltraBonder packaging was still an infringement of copyright in the drawing which underlay its SuperAttak product packaging.

Before the Supreme Court could examine the substantive issue of copyright infringement it was required to deal with a claim by Holdfast that Henkel could not rely on its drawings for its SuperAttak adhesive product.  In this case the Supreme Court agreed with Holdfast's argument.

In the first instance trial in the High Court Henkel had stated that it sold adhesives, including SuperBonder and Loctite in packaging consisting of a card and blister packaging incorporating what it called the "Blue Image Design".  There was a description of 20 separate features of the so called Blue Image Design.  The separately identified features were held by the Supreme Court to be common to Henkel's package generally and not to point clearly to the SuperAttak product.  Nor were these particulars descriptive of the so called Cipidue drawing which was identified as the drawing on which Henkel's SuperAttak product packaging was based.

Supreme Court's decision

The Supreme Court commented that nowhere in the relevant part of the Statement of Claim as a whole was there any reference to the Cipidue drawing and that the implicit reference to drawings was limited to drawings which underlay the packaging for Henkel's SuperBonder and QuickTite products.  The court concluded therefore that at best it was only those artistic works which could be relied on and not on a drawing or drawings which underlay the packaging for Henkel's product known as SuperAttak.
This decision highlights the need for statements of claim not to merely show the general nature of the claim but to give sufficient particulars to inform the court, and the party against whom relief is sought, of the plaintiff's cause of action.  In a case of copyright infringement this necessarily involves clear and accurate identification of the copyright work which the defendant is said to have infringed.  In the present case Henkel's failure to plead the copyright work on which it ultimately sought to rely resulted in its inability to rely on that work and accordingly Henkel's appeal to the Supreme Court was dismissed.

Additional comments on substantive claim

Although the decision on the pleadings determined these appeal proceedings, the Supreme Court took the opportunity to comment on the substantive copyright claim.

The court considered that to succeed in an action for breach of copyright the plaintiff has to establish two things:

• that it is the owner of a copyright work; and
  
  
• that the defendant has infringed that work.

Identifying copyright work

On the issue of ownership of copyright the court stated that the plaintiff must clearly and accurately identify the copyright work or works in respect of which it is claiming infringement.  This case was held to concern the sub-category of artistic works which is defined in section 14(1) of the Copyright Act 1994 as including a graphic work.  The court held that this was the type of artistic work within which the design drawing for the packaging would be included.

Work must be original

The court went on to say that once the plaintiff has identified the work for which it is claiming copyright, it must next establish that the work is an original work although there need be nothing novel in a work for it to qualify for copyright protection.  To be original for copyright purposes the work must originate from its author and be the product of more than minimal skill and labour.  The court commented that in general terms the greater the originality the wider the scope of protection will be under Copyright law.  In this case Henkel had to identify and prove that it had copyright in the graphic work from which it had derived the packaging said to have been copied by Holdfast and to prove that that work was original.  Had it been open to Henkel to make this argument based on the pleadings, Henkel would have had to prove that the Cipidue or other drawing(s) which underlay its SuperAttak packaging was an original graphic work and that it had ownership of the copyright work.  The court commented that this was a case which involved copyright deriving from a collocation or arrangement of features not original in themselves.  A graphic work could qualify for copyright protection because its originality lies in the way in which a number of features, which may have no originality in themselves, have been arranged or collocated.

Infringement

The court then went on to consider the second issue as to whether there had been infringement and stated that this can be usefully considered under two sub-headings:

(a)        Proof of copying, and

(b)        substantial part.

The court stated that proof of copying will seldom be direct and in most cases the court will rely on inference.  Clearly the closer the similarity between the two works the stronger the inference that one was copied from another.  Access to the copyright work and opportunity to copy by the infringer will also be taken into account subject to any evidence there may be that no copying actually took place.

On the issue of substantial part, the court commented that it was not necessary for a plaintiff to show that the defendant had copied the whole of the work or that the copying was exact.  It would be enough if the plaintiff demonstrated that the defendant copied a substantial part of the copyright work.  The court relied on the statement made by Justice Gault in Blenheim v. News Media (Auckland) Limited2 that what must have been copied is the essence of the copyright work.

Outcome

On the facts of the case in question, assuming Henkel had pleaded the Cipidue drawing underlying its SuperAttak packaging, the court stated that it would have had no difficulty in holding that Henkel owned copyright in that work as it was made by a combination of its employees and Cipidue on its commission.  Furthermore, the work clearly had sufficient skill and labour going into the arrangement of, admittedly unoriginal, features to qualify the work for copyright protection.

The next question therefore was whether Holdfast had indirectly copied Henkel's copyright work when it produced its UltraBonder packaging.  The Supreme Court considered the correct approach was to contrast Henkel's SuperAttak drawing and Holdfast's UltraBonder packaging.  They commented that a number of the features of Holdfast's UltraBonder packaging bore as much resemblance to its own earlier packaging as to Henkel's arrangement of features in its SuperAttak packaging.  The court concluded that there were sufficient dissimilarities between the packaging that they did not consider that Holdfast's UltraBonder packaging indirectly copied a substantial part of Henkel's SuperAttak drawing and that Holdfast's packaging could not be said to be a copy of the substantial part of Henkel's work. 

Accordingly, the Supreme Court did not consider infringement would have been established even if Henkel had been entitled to rely on the drawings lying behind its SuperAttak product packaging. 

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