OVERHAUL OF IP LEGISLATION FOR NEW ZEALAND

After a prolonged period of review, New Zealand has seen a flurry of activity relating to IP legislation leading up to the government election which took place on 8 November 2008.

All Bills on the Order Paper lapsed when government were dissolved, including:

• The Copyright (Commissioning Rule) Amendment Bill, which proposes to remove the rule that the commissioner of certain works in the first owner of any copyright subject to agreement to the contrary;
• The Copyright (Artists' Resale Right) Amendment Bill, which proposes to allow visual artists to receive a royalty payment each time their original artwork is resold;
• The Trade Marks (International Treaties and Enforcement) Amendment Bill, which would enable NZ to accede to a number of international treaties including the Nice Agreement, the Singapore Treaty and the Madrid Protocol, in addition to granting greater enforcement powers for customs officers and creating new enforcement officers under the Copyright Act and Trade Marks Act; and
• The Patents Bill, which undertakes a long awaited substantive review of the Patents Act 1953. The new government is yet to confirm which Bills will be restored to the Order Paper.

The draft Plant Variety Rights Amendment Bill has still not been introduced to Parliament, as the decision was made in 2005 that introduction of the Bill should be delayed until the Treaty of Waitangi "Wai 262" claim was resolved (a draft report in response to the claim by six indigenous tribes to exclusive and comprehensive rights to flora, fauna and other cultural treasures is expected to be released in 2009).

One Bill that was passed before Parliament dissolved was the Copyright (New Technologies) Amendment Act 2008. The Act is intended to ensure that New Zealand's copyright legislation keeps pace with developments in digital technology and is consistent with international standards.

Key aspects of the Act include:

• Introduction of a technology neutral category of "communication works", to replace the terms "broadcasts" and "cable programs";
• In light of the copyright owner's new exclusive right to communicate the work, introduction of a new section in relation to internet service provider liability (ISP);
• Clarification of certain exceptions to a copyright owner's exclusive rights, particularly those relating to fair dealing, library, archival and educational use, and introduction of new exceptions in relation to transient or incidental copying, and format or time shifting;
• Introduction of new enforcement provisions in relation to technological protection measures ("TPM") (measures designed to prevent copying) and copyright management information ("CMI") (information that identifies content protected by copyright and the terms and conditions of use); and
• Introduction of two new offence sections (each carrying a penalty of a fine not exceeding $150,000 or a term of imprisonment of up to five years, or both) for commercial dealing in devices, services, or information designed to circumvent TPMs and for commercial dealing in works where the CMI has been removed or altered.

The majority of the Act came into force on 31 October 2008. Section 92A (relating to ISP liability, which is still the subject of much discussion) is expected to come into force in February 2009 and provisions relating to public playing or showing of a communication work (ss87, 87A, 188, 188A and 188B) are expected to be repealed by the Trade Marks (International Treaties and Enforcement) Amendment Bill (see above).

2008 was therefore a good year for getting IP review onto the government agenda. However, in light of the current economic climate, it will be interesting to see which (if any) of the IP Bills will be make it back into the running given the new government's focus on money matters.

Rachel Dawson, Senior Solicitor, James & Wells Intellectual Property