New Zealand Nouvelle-Zélande Neuseeland. Report Q194. in the name of the New Zealand Group

Transcription

1 New Zealand Nouvelle-Zélande Neuseeland Report Q194 in the name of the New Zealand Group The Impact of Co Ownership of Intellectual Property Rights on their Exploitation Questions I) The current substantive law 1) Groups are invited to indicate whether, in their countries, the statute of co ownership of IP rights is uniformly organised or if each IP right has its own regulation concerning co ownership, particularly as far as their exploitation is concerned. What options are left for co owners to regulate their co ownership relationship: are the statutory rules mandatory, or do they apply only in case of the absence of a contractual regulation of co ownership between the parties? General All New Zealand statutes governing IP rights include provisions for joint ownership but the coowner s ability to exclusively exploit the IP right varies, depends on the IP right in question. The statutes that govern IP rights in New Zealand include: The Act 1953; The Designs Act 1953; The Act 2003; The Copyright Act 1994; The Layouts Designs Act 1994; and The Plant Variety Rights Act Copyright The rights of respective co-owners to deal with a copyright work are not defined under the Copyright Act 1994 and it is left to co-owners to self regulate their rights by contract. The definition of copyright owner in the Copyright Act makes it clear however that it is possible that co-owners may be entitled to different aspects of the overall copyright in a work. Each co-owner then would be entitled to deal with their exclusive aspect of the copyright work independently from the other co-owners. If there is no clear contractual provision stating who owns what aspect of the copyright work, then it will be decided according to common law. The default common law position is that coowners must always operate with the consent of other co-owners, even if they are considered tenants in common in the copyright work and thus have distinct shares in the work. Thus without a specific agreement to the contrary, co-owners cannot exercise their copyright, or authorise others to do so, without the consent of the other co-owners. 1

2 Designs, Layout Designs and Plant Variety Rights Co-ownership rights are not defined under the Designs Act 1953, the Layouts Designs Act 1994 or the Plant Variety Rights Act 1987, and it is therefore up to the parties to self-regulate these by contract. Under section 33 the Act 2002 two or more persons may make a joint application if either or any of those persons is entitled to use the trade mark only on behalf of both or all of them, or in relation to goods or services with which both or all of them are connected in the course of trade. Section 11 of the Act 2002 provides that the rights of joint owners are to be exercised as if they were the rights of a single person. Hence, consent from all the owners of the mark is needed in order for a co-owner to use the registered trade mark, authorise others to use the trade mark, assign or transmit the trade mark and give valid receipts for any consideration for any such assignment or transmission. The Act 2002 applies only to trade mark applications and registrations. Unregistered trade marks are governed by contracts between co-owners. Section 63 of the New Zealand Act 1953 governs the rights of co-owners of New Zealand patents. Section 64 gives the New Zealand Commissioner of the power to give directions as to the sale or lease of the patent, or in the interest therein, as well as the grant of licences and the exercise of any other rights. The New Zealand Patent Act 1953 governs the rights of co-owners of patents in New Zealand, but this is subject to any agreement to the contrary between the co-owners. 2) Groups are invited to explain who has the right to exploit an IP right which is co owned by two or more persons: may each co owner exploit the right freely and without any consent from the other co owners or is this exploitation subject to conditions? Even if this exploitation by only one co owner is permitted by the national law, shall the co owner who exploits a right pay any compensation to the other co owners. Finally, in case compensation is required by the legal rule, how is the amount of compensation determined? As indicated above, the Copyright Act 1994, the Designs Act 1953, Layouts Designs Act 1994 and Plant Variety Rights Act 1987 do not provide for any form of exploitation of the IP right by a co-owner. Specific contractual agreement between the co-owners is therefore required to regulate exploitation by a co-owner of the IP right. Such an agreement may include specific provisions relating to compensation of co-owners of the IP right. Under the Act 2002, IP rights of co-owners must be exercised as if they were the rights of a single person. Therefore a co-owner needs the consent of all the other owners to exploit any IP right. Under section 63 of the New Zealand Patent Act, each owner of a patent shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in the patent. Each of the owners of the patent shall be entitled to make, use, exercise, and vend the patented invention for his own benefit without accounting to the other owner or owners. The 2

3 only restriction on this is that licences under a patent should not be granted, and a share in a patent shall not be assigned, except with the consent of all persons who are registered as coowners. Under section 64 of the New Zealand Act, the Commissioner of may give directions as to the sale or lease of the patent or any interest in that patent. The Commissioner may also give directions as to the grant of licences under the patent. 3) The Groups are also invited to give an overview of their national Law in relation to the benefits which may result from the exploitation of an IP right which is co owned. In particular, the Groups are invited to indicate if their national Law provides any kind of obligation for a co owner who exploits personally its share of an IP right to pay any benefits to the other co owner wherever the second exploits or no the same IP right. If there is such an obligation, how the amount of money that should be paid to another co owner is determined? Where legislative provisions allow exploitation of an IP right by a co-owner (discussed above), no statutory obligation is imposed on the co-owner with respect to any compensation of other co-owners. Such compensation is regulated entirely by contractual agreements between co-owners, if at all. With regard to trade marks, co-owners are prohibited from exploiting their interest in an IP right and require consent from all other owners. There is no obligation placed on one co-owner of a patent to pay benefits to another coowner. This would be properly the subject matter of contractual agreement between the parties. There is however the restriction mentioned above in relation to obtaining consent from other co-owners in relation to the granting of licences or shares in the patent. Again, however, this is also subject to any contrary agreement between the parties. 4) The Groups are also invited to indicate if the co owner may grant a licence to third parties without any authorisation from other co owners, or if the granting of such a licence is subject to certain conditions? If such conditions exist, the Groups will have to specify their content. None of these IP rights have any statutory requirement that the consent of all co-owners must be obtained before any co-owner can grant a licence to a third party. The terms surrounding the granting of a licence by a co-owner to a third party or parties, including whether consent of the other co-owners is required, are therefore regulated purely by the contractual arrangements between the co-owners. In the absence of any contractual agreement, the arrangements will be governed by common law (see above). A co-owner may grant a licence to third parties, however, the co-owner will need consent from the other owners. A co-owner must obtain consent from all other co-owners before any licence to third parties can be granted. There are no specific conditions which must be met. 3

4 The Commissioner of may, however, give directions in relation to the grant of licences under the patent if requested to do so by one of the co-owners. 5) The question of the exploitation of an IP right interferes with the possibility of transferring such an IP right to third parties. The Groups should indicate the solution in theirs countries relating to the possibility of transferring a share of co ownership of an IP right to third parties: may such a transfer (by assignment) be carried out freely without any conditions or must it be offered firstly to the other co owners or is it specifically subject to the agreement of the other co owners? The Groups are invited to indicate the conditions to which such a transfer is subject. There are no statutory requirements for any of these IP rights with respect to the transfer a coowner s interest to a third party. The terms surrounding such transfers or assignments by a coowner to a third party or parties are regulated purely by the contractual arrangements between the co-owners. Again, in the absence of any contractual agreement, this will be determined according to common law. A co-owner may transfer a share of co-ownership of a registered trade mark; however, the coowner is required to get consent of all the other owners to do so. A co-owner may transfer a share in a patent but only with the consent of all other owners. This ability is subject to any agreement between the co-owners to the contrary. 6) IP rights may also serve as a guarantee for the investment which is necessary for their exploitation. The question then arises of whether a share in co ownership of an IP right can be used as such a guarantee and under what conditions. Is it necessary to obtain agreement from all the co owners in order to secure an IP right or can each co owner freely secure his own share of an IP right without seeking the consent of the other co owners? The Groups are invited to describe their legal systems on this question. Generally speaking, New Zealand IP rights are considered choses in action and are therefore a form of personal property. As such they can be used as a guarantee or form of security against the advance of investment monies provided for the exploitation of the IP rights. It should be noted, however, that the IP rights are not themselves guarantees or forms of security, but may have instruments taken over them. The conditions under which ownership of these IP rights can be used as a guarantee are not defined by statute and therefore fall to be determined by the contractual arrangements between the co-owners. With regard to trade marks, it is necessary for a co-owner to obtain consent form all the other owners before using the IP right as a guarantee. New Zealand patent rights are considered choses in action and are therefore a form of personal property. Therefore, subject to the limitations of section 63 (or to any agreements to the contrary) the rules of law applicable to the ownership and devolution of personal property, generally shall apply in relation to patents as they apply to other choses in action. 4

5 7) The enforcement of IP rights plays an important role in their exploitation. Such enforcement is mainly achieved by means of legal proceedings that may be filed by the owner of an IP right in order to penalise the infringement of his right by third parties. The question arises of whether such a legal action must be filed by all of the co owners of an IP right or whether it can be filed by only one of the co owners. The Groups are therefore invited to specify the legal solutions and procedural exigences in their countries in relation to the possibility of one of the co owners of an IP right filing an infringement action. There are no statutory requirements imposed on co-owners of these IP rights with respect to whether legal proceedings for enforcement of the IP rights may be filed by an individual coowner, or must be filed jointly be all co-owners. This will depend therefore on the contractual arrangements between the parties and the nature of the interest in the IP right in respect of which the proceedings are brought. If the coowners hold their rights as joint tenants (and thus have undivided equal shares), then proceedings should properly be brought in the name of all co-owners. If the co-owners hold their rights as tenants in common (and thus have distinct, divided shares in the overall IP rights), then each co-owner would be entitled to bring proceedings individually, but their claim would logically be limited to infringement of their distinct share of the overall IP rights, and damages would be apportioned according to the respective interests of the co-owners. The Act 2002 does not specify whether joint owners of a trade mark hold as joint tenants or tenants in common. However, it is likely that New Zealand follows Australia in viewing co-owners as joint tenants so that the co-owner of a trade mark may not sue for infringement of that trade mark without joining the other co-owner as a party. If there was an agreement between the co-owners to the contrary, the agreement would take priority. Co-owners of patents hold an equal undivided share in patent subject to any agreement to the contrary. Each owner is entitled to make, use, exercise, and vend the patented invention for his own benefit without accounting to the other or others. Therefore, each co-owner is entitled to bring proceedings individually but claims could be limited as discussed above. 8) The exploitation of the IP rights depends also upon the existence of these rights and, more specifically, upon the capacity of their owner to ensure the continuity of the existence of these rights. Now, the decision on maintaining patents or trademarks by the payment of the renewal fee, may vary according to the legal system of organization of co ownership. The Groups are therefore invited to tell how the question of the decision making process of the maintaining or renunciation of the patents or trademarks is organized in their national law. Under sections 58, 59 and 60 of the Act 2002, a trade mark registration may be renewed at ten year intervals dating from the date of registration. There is no limit upon the number of times a registration may be renewed, and may be renewed for further periods of 10 years at a time. After renewal, the expiry date continues to be the ten-year anniversary of the original deemed date of registration date, for as long as the trade mark is renewed. Any owner can apply to renew a trademark registration. 5

6 Conditions of renewal will be subject to agreement between the co-owners, although any owner may maintain the patent in force. 9) The Groups are also invited to describe their national rules of international private law in relation to conflicts of law relating to the co ownership of the IP rights and conflicts of jurisdiction in order to enforce these rights. More specifically, the Groups are requested to indicate if their international private law rules accept that the statute of ownership of an IP right co owned in different countries be regulated by one law. In this case, what law is applicable for determining the statute of co ownership? What is the criteria for seeking the proper jurisdiction in cases of conflict between the co owners concerning their rights? In New Zealand all of the principal IP rights are created by statute and are jurisdictional in nature (ie, limited in effect to New Zealand). Accordingly, even where one or more joint owners of a New Zealand IP right are foreign nationals the rights and obligations arising from that IP right are governed by the relevant New Zealand statute. By default, any dispute or conflict between co-owners will, consequently, be determined in accordance with New Zealand law by application of the principles set out in the relevant New Zealand statute. However, in general, where co-ownership rights are not specifically regulated by the relevant New Zealand statute the parties may define the co-ownership arrangements between them by contract. This may include contractual provisions specifying the applicable law according to which any disputes between the co-owners will be decided. Hypothetically therefore, disputes as to ownership could be decided under a different law to questions of infringement or other rights arising under the relevant New Zealand statute, if the parties have so agreed by contract. 10) Finally, the Groups are invited to indicate what other specific solutions or problems relating to the question of the exploitation of IP rights co owned by two or more persons are raised in their respective countries. II) As stated above, the way in which co-owned IP rights are dealt with in New Zealand is governed by a combination of the provisions of the specific IP statute concerned, the contractual arrangements between the co-owners and the subsequent interpretation of those statutory provisions by the courts applying the usual rules relating to the dealing with or disposition of personal property. No specific solutions or problems have been raised in New Zealand in relation to exploitation of co-owned IP rights. Proposals for future harmonisation The Groups are also invited to formulate theirs suggestions in the framework of an eventual international harmonisation of national/regional intellectual property rights or, at least, an improvement or completion of the existing solutions. 1) In particular, the Groups are requested to indicate if they consider that the principle of freedom of contracts should apply to allow the co owners to determine the statute of the rights and the conditions for their exercising or if the rules governing co ownership of IP rights should be mandatory. The New Zealand Group considers that: the principle of freedom of contracts is paramount in the case of the co-ownership of IP rights; and 6

7 that any statutory provisions dealing with the creation, maintenance and disposition of co-owned intellectual property rights should be subject to the agreement of all co-owners concerned. that, in the absence of agreement between co-owners, provision should be made to allow rights to be maintained and used subject to imposed conditions. 2) The Groups are also requested to indicate if a statutory rule should give equal rights to all co owners to individually exploit the IP rights or, without the authorisation of others co owners, to grant the IP rights to third parties or whether, due to the exclusive character of an IP right, such exploitation can only take place with the agreement of all co owners. Should this requirement of the agreement of all co owners apply to all acts of exploitation and acts in defence of IP rights, or only to the acts of disposal of IP rights for the benefit of third parties, such as licensing or transferring to a third party? As a matter of fairness and equality, each co-owner of an intellectual property right should be able to exploit that right for their own benefit without the authorisation of other co-owners provided doing so does not negatively impact on the interests of the other co-owners, or the other co-owners ability to exploit the IP rights themselves. Given the extent to which licences or other dispositions to third parties have the potential to negatively impact upon the other co-owners, it seems reasonable therefore that co-owners should not have the right to grant licences to third parties or otherwise encumber the right concerned without the consent of all other co-owners, unless the parties have agreed otherwise. 3) The Groups are also invited to give their preference as to the possibility of an enforcement action for infringement being initiated by all co owners or only by some of them. Subject to agreement between the parties, in the case of the enforcement of a co-owned intellectual property right one or more co-owners of that right should be able to issue legal proceedings for the enforcement of that right even without the consent of all other co-owners. This is provided, however, that the non-consenting co-owners may be joined as parties to the enforcement proceeding and that any monetary remedy or other benefit flowing to the IP right owners as a result of the enforcement proceedings flows solely to those co-owners who consented to and initiated the enforcement proceeding. By parity of reasoning, in those countries where the conduct of litigation may carry adverse costs consequences if unsuccessful, any non consenting IP right co-owner should not be compelled to pay any share of an adverse costs order should the enforcement proceeding commenced by the other coowners be unsuccessful. Summary In New Zealand intellectual property rights are created by statute. These statutes govern the manner in which ownership, including joint ownership, of those rights arises and is conducted, but the coowner s ability to exclusively exploit the IP right is limited to a varying degree, depending on the IP right in question. Compensation resulting from the exploitation of an IP right by a co-owner is regulated entirely by contractual agreements between co-owners. New Zealand IP rights are choses in action and are considered a form of personal property and as such, can be licensed, assigned and used as a guarantee or form of security against the advance of investment monies provided for the exploitation of the IP rights. 7

8 Any dispute between co-owners will be determined in accordance with the provisions of the relevant intellectual property statute, unless and to the extent that the parties are able to limit those statutes by contract. The principle of freedom of contracts is paramount and any statutory provisions dealing with the creation, maintenance and disposition of co-owned intellectual property rights should be subject to the agreement of all co-owners concerned. 8