07 July 2016

Copyright: Burden v. ESR Group

Former business associates Australians Ian Burden and Craig Morrow duked it out in a legal dispute over copyright in Burden’s Irish Coast line of distressed furniture.  ESR Group importing Morrow’s competing Roseberry Collection had its imports blocked by Customs as “pirated” copies of Irish Coast.  The High Court ordered ESR Group to disclose names of its customers previously buying or ordering items of the seized furniture.
Irish Coast retails as rustic tongue and groove furniture assembled from recycled timber.  Just over 1800 units were sold in New Zealand over the last six years.  In 2013 Mr Burden filed a copyright notice with Customs claiming Copyright Act rights in respect of his product line: Irish Coast. Acting on this notice, Customs seized an ESR Group Ltd importation of Roseberry Collection as potentially pirated product.  High Court litigation followed.
Evidence was given that Mr Burden drew on the history of Irish furniture-making in naming his product line.  In times of timber shortage, furniture was constructed out of driftwood, offcuts and recycled timber.  To accommodate timbers of different densities and moisture levels, construction uses tongue and groove fitting with components secured by jointed end pieces.  Irish Coast furniture is manufactured in Vietnam using technical drawings based on Mr Burden’s original drawings.  Staff from Vietnam gave evidence that they saw similar furniture being offered for sale in Vietnam under the brand Roseberry Collection.  
Mr Burden claimed copyright in his original drawings, alleging Roseberry Collection is a three-dimensional representation of his copyright.  Both New Zealand and Australia are parties to an international copyright convention allowing Australian citizens to sue in New Zealand courts to enforce copyright.  Justice Duffy ruled there was an element of originality in the construction, appearance and detailing of Irish Coast furniture to support copyright in the original drawings.  Mr Burden and Mr Morrow were business associates in Vietnam at the time Mr Burden was developing his Irish Coast collection.  During the High Court hearing, Mr Morrow was present in New Zealand to give evidence on behalf of importer ESR Group.  He left the country, without giving evidence, the day he was expected in court.  Justice Duffy said this sudden departure counted against ESR Group in trying to explain why its imported product line looked so similar to Irish Coast.
Justice Duffy ruled items of the Roseberry Collection furniture seized by Customs are pirated copies of Mr Burden’s product and ordered ESR Group to disclose the volumes of furniture it had imported and to identify all purchasers.
Burden v. ESR Group – High Court (7.07.16)
16.106