Not so Happy Valley

Solid Energy operates coal mines in New Zealand.  Save Happy Valley Coalition is an environmental group.  The parties have been involved in litigation in relation to Solid Energy’s proposed mine at Happy Valley in New Zealand for some time.

Solid Energy became aware of a mock report about its mining activities produced by Save Happy Valley and/or some of its members.  The mock report featured Solid Energy’s logo and name.  The mock report also copied parts of earlier Solid Energy reports.  The mock report was highly critical of Solid Energy.  Solid Energy filed proceedings for an interim injunction claiming infringement of its registered trade marks, infringement of its copyright and breach of the Fair Trading Act which prohibits misleading and deceptive conduct in the course of trade.

Solid Energy was careful to categorise this as a property rights case and not to be seen to be interfering with Save Happy Valley’s freedom of expression.  Solid Energy had earlier pleaded injurious falsehood and defamation but restricted the interim injunction application to intellectual property rights causes of action.

It was argued that Save Happy Valley’s mock report was a parody and the use of Solid Energy’s name and logo was designed to add an element of surprise to the parody. Under the Fair Trading Act the judge found no arguable case because Save Happy Valley was not doing anything in trade.  He did not, however apply the same reasoning to the Trade Marks Act.

The judge referred to section 10 of the Trade Marks Act which provides that the owner of the trade mark has the exclusive right to use the trade mark.  He deliberately chose not to consider the infringement provision, section 89. activities were in the course of trade or were for the same or similar goods or services, or whether there was likely to be confusion or deception. There was no consideration paid in the judgment to the dilution provision in the Trade Marks Act which provides relief for the owner of a well known mark in relation to dissimilar goods or services where such use is likely to damage the character or repute of the mark. 

In the circumstances, dilution would seem to have been the plaintiff’s strongest ground for getting home under the Trade Marks Act. Although it was an interim injunction application and the plaintiff only had to show an arguable case, the judge ignored the normal trade mark infringement requirements of use in the course of trade, similarity of goods or services, and likelihood of confusion or deception. The judge referred only briefly to copyright simply saying there was an arguable case that use of Solid Energy’s name and logo infringed its copyright without any discussion of whether the name or logo were original copyright works. 

While the logo may well have been an original copyright work it is very doubtful the words “Solid Energy” would qualify as a copyright work. The judge dismissed Save Happy Valley’s arguments that its copying was fair dealing simply saying that that was a matter for the trial. The judge also appeared to ignore the large time delay between the publication of the mock report and the hearing (five months) a factor which is often fatal to a plaintiff under the balance of convenience head in an interim injunction application. The matter will now proceed to trial unless it is settled before then.