By ALLAN BOWIE AND ANTHONY HOSKING*
The United States Government announced last year that New Zealand was being included on its Special 301 watchlist.
The list is included in the annual report of the Office of the US Trade Representative, which comments on the adequacy and effectiveness of intellectual property
protection around the world.
This means we have joined nations such as Kazakhstan and Guatemala in being singled out as giving inadequate protection to intellectual property rights.
The office acknowledged that in 1999 New Zealand pledged to introduce legislation regarding a ban on imports of newly released copyrighted products (such as music, films, software and books) intended for sale outside the country, but the office said that by the end of 2001 the Government had not done so.
It urged New Zealand to act to correct the erosion of copyrights and to improve its enforcement against piracy and counterfeiting as soon as possible.
The introduction last December 17 of the Copyright (Parallel Importation of Films and Onus of Proof) Amendment Bill to the House of Representatives may help to address these concerns. Associate Minister of Commerce Judith Tizard has said that the bill is intended to:
* Prohibit the parallel importation of movies, including DVDs, VHS videos and video CDs, for nine months from a title's first international release. The ban will be implemented for five years from the date that the bill comes into effect.
* Reverse one aspect of the onus of proof so that the burden of proof is on the defendant to rebut the presumption that an imported work is an infringing copy.
* Introduce an objective knowledge requirement under which the plaintiff must prove that the defendant "knows or ought reasonably to know" that the imported work is an infringing copy.
* Protect legitimate parallel importers by providing that the court must not require the defendant to disclose information on sources of supply when it would be unreasonable to do so.
* Clarify existing provisions relating to rental rights where copyright works are parallel-imported.
The ban on parallel importing of videos and DVDs for nine months from the date of international cinema release addresses the concerns of organisations such as the Motion Picture Distribution Association.
It will support the windows system operated by film distributors which permits owners to control the intervals between theatrical, rental, video and television releases of films.
The bill will reverse the onus of proving copyright infringement in relation to imported copyright goods. At the moment, a rights holder who takes action against an importer must prove that the imported goods are not genuine.
Ms Tizard said the changes to the onus of proof were "targeted at those works that were most vulnerable to piracy - films, computer programs and sound recordings".
A further point is that the bill clarifies the existing provisions relating to rental rights where copyright works are parallel-imported.
These provisions were the subject of declaratory proceedings in 2001 over an importer's claim that rights holders could not control the rental of parallel-imported DVDs.
The court confirmed that copyright owners' rental rights under the Copyright Act 1994 did extend to parallel imports.
However, the fact that the act was sufficiently ambiguous to provoke the litigation appears to have prompted the Government to attempt to clarify the legislation through the proposed bill.
There have been further recent changes to New Zealand's intellectual property law that strengthen owners' rights against infringers.
As it is proposed, the Trade Marks Act 2002 will introduce criminal offences for counterfeiting of trade marks.
It will provide for terms of imprisonment for up to five years for piracy of copyright works.
The Department of Customs will also gain the power to seize pirated copyright works with the consent of importers, including pirated goods that are in transit through New Zealand.
The act is expected to be brought into force in six to nine months by order-in-council.
We must wait and see whether these changes will be sufficient to convince the US Government to remove New Zealand from the 301 Special Watchlist.
Irrespective of any such move, the bill is good news for stakeholders in the film industry.
* Allan Bowie, is a partner, and Anthony Hosking, senior associate, in the intellectual property team at Minter Ellison Rudd Watts.
By ALLAN BOWIE AND ANTHONY HOSKING*
The United States Government announced last year that New Zealand was being included on its Special 301 watchlist.
The list is included in the annual report of the Office of the US Trade Representative, which comments on the adequacy and effectiveness of intellectual property
AdvertisementAdvertise with NZME.