Copyright: High Court grants interim injunction in Holdfast packaging case

Henkel, a German multinational producer of adhesives, obtained a declaration that Holdfast, a New Zealand producer of adhesives, had infringed its copyright in the artistic works in its packaging. It also obtained an injunction restraining Holdfast from further infringing its copyright.

In May 2002, Holdfast started to package its product under the name "Super Bonder" using a design copied from the Henkel's "Super Bonder" product which it had seen at a trade fair.

Henkel issued proceedings in the High Court alleging breach of copyright, passing off and breach of the Fair Trading Act. The proceedings were settled when Holdfast provided an undertaking without admission of liability to stop using packaging incorporating the Blue Image Design.

In August 2002, Holdfast re-launched the product under the name "Ultra Bonder" in packaging that it had instructed a graphic designer to create based on the old "Super Bonder" packaging, the packaging copied from Henkel's design.

In May 2003, the proceedings discussed here were issued, separate to an independent claim for breach of undertaking.

Counsel agreed that PS Johnson & Associates Ltd v Bucko Enterprises Ltd [1975] established that there were four questions that were required to be answered in such a claim:

• Did the plaintiff have works in which copyright could subsist?



• Did copyright subsist in the plaintiff's works?



• Did the plaintiff own the copyright?



• Had the defendant infringed that copyright?

Initially, Henkel argued that the packaging was either a literary or an artistic work in terms of section 2 of the Copyright Act 1994. Justice Harrison concluded that the Blue Image Design was an artistic work on the basis of unchallenged evidence from an Italian design company contracted by the plaintiff.

Counsel accepted that the essential criterion for attracting copyright in terms of section 14 of the Copyright Act 1994 is originality. To qualify as original, a work must possess two characteristics (para 17 of the judgment):The work does not have to be the expression of original or inventive thought but rather to simply originate from its maker. The law protects the manner of expression.

The work must be the product of the maker's own labour, skill and capital. The maker's expenditure must be sufficient (meaning more than minimal) to vest in the product the character or quality which the raw materials or component parts did not possess, thereby providing a point of differentiation.

Justice Harrison concluded in relation to point (b) that proof of the sufficiency of the maker's expenditure could be derived from viewing the preliminary work, without resort to time sheets and actual hours of attendance.

Holdfast's counsel argued that the packaging itself was not an original work, representing merely a copy of the design company's work.

The central point of this argument was that Henkel ought to have produced evidence of differences between the designs and the actual packaging to make the packaging itself an original work.

Justice Harrison concluded that this was unnecessary, as any differences could be determined through direct observation.

The copyright Act states that where a person commissions and pays or agrees to pay for the making of an artistic work and the work is made in pursuance of that commission then the commissioning party is the owner (Copyright Act 1994, s 21(3)).

Justice Harrison considered that Henkel's design company was effectively a sub-contractor and that Henkel was the first owner of the artistic works. The judge observed that it was not necessary to prove a complete identity between the plaintiff's original work and the defendant's allegedly copying work in order to constitute infringement by reproduction.

The relevant requirements were set out by the Court of Appeal in Wham-O MFG Co. v Lincoln Industries Ltd [1984] 1 NZLR 641 at 666:

The reproduction must be either of the entire work or of a substantial part;

There must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part thereof; and

There must be some causal connection between the copyright work and the infringing work. The copyright must be the source from which the infringing work is derived.

Following this, the enquiry is purely factual. On the first and second requirements, expert evidence was called by both parties. The answer to the third requirement lay in the fact that the defendant admitted to using the Henkel's packaging as a base for its own design.