Legal Beagle by Graeme Edgeler

The power of the Speaker to exclude people from Parliament grounds, with the consequence that those who ignore the warning to leave can be arrested and charged, has been exercised lawfully on many occasions, but when that power was used to stifle political speech and peaceful assembly in 1997 it went too far.

The courts have remedied a real injustice.

I watched the protest, I then worked in the Labour Research Unit, and knew of the Speaker's refusal before it began. It was inexplicable. It was a political decision and a serious misjudgment by Kidd. Kidd's decision to refuse access was in stark contrast with earlier applications which had been approved (and very for similar protests). I'm friendly with the then NZUSA co-president Karen Skinner (who also now resides in Sydney) who led the protest. I'm sure she'll feel vindicated.

Thanks for that Graeme. It's fair to say I have an interest in the area of remixing political imagery, and that's not an angle that would have occurred to me.

Not as such, anyway. I did have the idea government agencies shouldn't ought to be suppressing that kind of thing. Even aside from the question of whether it does them any good.

The EEO may be taking this action because of the "defend it or lose it" provisions of the law surrounding trademarks. However, is the orange man actually trademarked? I looked at the elections website and saw nothing that answered the question. If he's not, then the issue doesn't even arise.
If he is there's still scope for a waiver for use, a la Linden Labs' issue of a "proceed and persevere" letter to the creator of Get a First Life.

On the copyright issue, well, yeah. NZ law is an ass in this regard, with the lack of protection for poking fun. You do raise a good point about the BORA coverage of free speech, and it's yet another annoying fillip of our copyright law that the Crown claims copyright over works produced in carrying out public functions. One of the aspects of the shambles that is US copyright law with which I have no disagreement is the well-known position of works of the Federal Government being public domain.

One would hope that should-a.com's disclaimer is sufficient to soothe any fevered legal brows, and end the matter. But, our archaic IP law surely won't make it so easy.

Graeme: Would you be of a mind to provide a precis of the progress of the matter through the Courts? I note the settlement was described as 'out-of-court' and that I can find only a few references online to Court proceedings.

As an aside, my recollection is that protests at Parliament were often allowed to proceed until shortly before nightfall (including one where students occupied the top of the main steps).

Graeme: Would you be of a mind to provide a precis of the progress of the matter through the Courts? I note the settlement was described as 'out-of-court' and that I can find only a few references online to Court proceedings.

The civil action for damages really never got much of a go in court. It was filed, and there were case management and settlement conferences - decisions about things like discovery (it was filed so long ago that the automatic rules around discovery weren't in place at the time), but nothing all that substantive. The greatest issue I think there was that was actually litigated was an application by the Crown to have Tony Ellis and Antony Shaw (the two lawyers doing most of the work) forbidden from representing the student protesters because they were potential witnesses for part of it.

Graeme - thanks for this. Very interesting.

Matthew:

However, is the orange man actually trademarked? I looked at the elections website and saw nothing that answered the question. If he's not, then the issue doesn't even arise.

Not quite correct. Even if he/she/it isn't formally registered, there is a certain amount of protection available just because the mark has been used enough within a certain context to become more or less instantly recognisable - people will immediately associate that mark with that application. The protection isn't as strong as formal registration, though.

there is a certain amount of protection available just because the mark has been used enough within a certain context to become more or less instantly recognisable

Plus he's got the logo on his tummy.

AFAIK there's been more high profile cases round here lately against parody use over trademarks than copyright. Perhaps one might hope for a parody exemption there one day, or is it not (or should it not be) an issue if you can show people wouldn't mistake you for the real thing?

Rich, yes you're right that there's some protection, but it's very hard to access. You have to go to court simply to determine that there is sufficient existing use. There's also no "defend it or lose it" requirement.

Lyndon, it's hard to know how the courts will rule. In the absence of a formal protection of parody, they've demonstrated a remarkable willingness to deny that it's not a desire to infringe for the purposes of trading on the existing holder's reputation. It's a lack that does deprive NZ of, I'm sure, some quite cutting repartee.

One thing I just thought of, could should-a claim the "current affairs" defence? After all, the site is making commentary on a newsworthy happening.

As an aside, my recollection is that protests at Parliament were often allowed to proceed until shortly before nightfall (including one where students occupied the top of the main steps).

If that's the 1996 bus trip, the students made the explicit decision to stay until after nightfall to challenge this convention. Nothing was done.

It was a particularly silly day. Once the students failed to get into the building it became an increasingly pointless protest and I took off for a few hours to go shopping and come back to see what happening in the evening. Did get my photo in the Herald though.

Rich, yes you're right that there's some protection, but it's very hard to access. You have to go to court simply to determine that there is sufficient existing use. There's also no "defend it or lose it" requirement.

My understanding is that the intial levels of protection or legal recourse wouldn't actually be all that hard to access.

If 'election dude' is a registered TM, the first thing the owners probably would have done was send a 'cease and desist' letter to the 'would-a' site.

Crudely speaking, the other options available to the owners (if it isn't a registered mark) would be:

- Passing off (common law right).

- false representation under the fair trading act (S13 is probably the most applicable).

- Copyright infringement.

But the first step would be the same for any of, or any combination of, these steps - a 'cease and desist'-type letter.

If (purely hypothetically) 'should-a' had ignored these warning shots (in most cases the nasty letter is sufficient), 'orange dude's' owners would still have had to go to court and make their arguments, whether or not he was registered.

Yes, tehy would have had an eaiser job of it is he was registered, but i don't think it's actually that hard to access if he isn't.

I would have thought that, as with intellectual property in the private sector, an employee has no right to anything they create whilst working for their employer.
That said, is not the public the employer of government? and in so being, the owner of the property?

I would have thought that, as with intellectual property in the private sector, an employee has no right to anything they create whilst working for their employer.
That said, is not the public the employer of government? and in so being, the owner of the property?

Depends on the contract, and also what the duties of the job are.

If you clean floors in the beehive to make ends meet while you wait for your band to make their big breakthrough, the government won't be getting any royalties from your first album sales, for example.

But if you're a graphic artist specifically contracted or employed to come up with nifty logos for government departments, your contract will probably have a clause in it stating that you have an obligation to assign ownership of the copyright to your employer.

So, as the public are the emplyers of Government, we own Orange Guy. Yes?.

Yes, tehy would have had an eaiser job of it is he was registered, but i don't think it's actually that hard to access if he isn't.

In every case it's down to the courts. If he's registered, they need only prove that the use is infringing on their mark. That could actually be sticky in this case, since the misuse of the mark is not in relation to enrolment of electors or the conduct of an election, but the risk of confusion is present and the courts would likely find it an infringing use.

Without registration, the hurdle is to prove that the character is widely recognised as their mark and is not utilised by others for similar purposes. "Prove" in this situation is more than just "Yeah, everyone knows it, y'ronner. Even you recognise him, right?"

Is it easy to get it before the courts? Certainly. To get an injunction? In this case it could be tricky, because there's no money changing hands and there are freedom of speech issues. A judge would likely want a hearing before injuncting, and potentially the A-G (S-G?) would have to be involved because of the BORA implications.

So, as the public are the emplyers of Government, we own Orange Guy. Yes?.

Yes the government (or their subsidiary, the electoral office) own Orange Guy.

No we're not the employers of the government, no we don't own Orange Guy. We're taxpayers and citizens.

Further to the employee question...

At the same time Tizard announced the satire and parody exemption review which has, I assume, been buried, she set in train a repeal of the 'commissioning rule'.

Which appears to still be in train, even if I don't quite know what it is.

I understand that your boss/hirer would then have to explicitly take the copyright in contract if they wanted it?

set in train a repeal of the 'commissioning rule'.

Which appears to still be in train, even if I don't quite know what it is.

I understand that your boss/hirer would then have to explicitly take the copyright in contract if they wanted it?

The important part of the bill is here. In short, it reduces the default first copyright ownership positions from the current muddle to two. If a work is produced in the course of one's employment, it is the property of their employer. In all other cases, including works-for-hire, it is the property of the author.
At present some classes of works-for-hire default to the commissioner, others default to the author. The law simplifies things greatly. I'm not sure I agree with the outcome, but the sentiment is well-placed.

In every case it's down to the courts. If he's registered, they need only prove that the use is infringing on their mark. That could actually be sticky in this case, since the misuse of the mark is not in relation to enrolment of electors or the conduct of an election, but the risk of confusion is present and the courts would likely find it an infringing use.

Without registration, the hurdle is to prove that the character is widely recognised as their mark and is not utilised by others for similar purposes. "Prove" in this situation is more than just "Yeah, everyone knows it, y'ronner. Even you recognise him, right?"

Is it easy to get it before the courts? Certainly. To get an injunction? In this case it could be tricky, because there's no money changing hands and there are freedom of speech issues. A judge would likely want a hearing before injuncting, and potentially the A-G (S-G?) would have to be involved because of the BORA implications.

Yes, that's what I was driving at. The first stage in the process (cease/desist) is more or less the same, and as easy, whether there is registration or not.

As you've pointed out, the next stages (court) are harder if there is no registration.

But in most cases (and as seems to be the case with 'should-a'), the ceast/desist threat is enough by itself.

Um, wouldn't false representation/passing off require that a reasonable person could be misled?

For instance, if I made leaflets that looked like electoral office ones and stated that the upcoing referendum had been cancelled, that would reasonably be actionable.

An obvious parody wouldn't.

Um, wouldn't false representation/passing off require that a reasonable person could be misled?

Probably. But I'm afraid that your free 1/2 hr consultation period has expired.

I will be happy to carry out further investigation into the relevant case law at my standard rate of $300 p/h.

Where shall I send the invoice?

Can I barter it for advice on how to get your WiFi to connect?