New Zealand

Layout Designs Act 1994 (reprint as at 01 December 2002)

 

 


Reprint as at 1 December 2002

Layout Designs Act 1994

Public Act 1994 No 116 Date of assent 25 November 1994 Commencement see section 1(2)

Contents
Page
Title 3
1 Short Title and commencement 3
Part 1
Interpretation and application
2 Interpretation 3
3 Meaning of commercially exploited 6
4 Meaning of exclusive right 6
5 Meaning of making in relation to an eligible layout design 7
6 Meaning of original 7
7 Licence of owner of layout design rights 7
8 Eligible layout design includes substantial part of the 7
design
9 Reference to joint makers 8
10 Applicationtolayoutdesignsmadebeforecommencement 8
of this Act
11 Act to bind the Crown 8
Note

Changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in this reprint.

Ageneraloutlineofthesechangesissetoutinthenotesattheendofthisreprint,togetherwith other explanatory material about this reprint.

This Act is administered by the Ministry of Economic Development.

Part 2 Ownership and nature of layout design rights

12 Ownership of layout design rights 8 13 Nature of layout design rights 9 14 Infringement of layout design rights 9

Part 3 Exceptions

15 Innocent commercial exploitation 10 16 Copying for private use 10 17 Copying for research or teaching purposes 11 18 Evaluation or analysis 11 19 Commercial exploitation of eligible layout design 12

previously exploited under licence 20 Use for defence, security, and other purposes 13 21 Nature and scope of rights under section 20 13 22 Duty to inform owner 14 23 Owner of layout design rights entitled to remuneration 14 24 Appeal to High Court 14

Part 4 Remedies for infringement

25 Actions for damages 15 26 Injunctions 16 27 Application of sections 28 to 34 to exclusive licensee 16 28 Rights of exclusive licensee 16 29 Proceedings where concurrent rights exist 17 30 Defences in proceedings by exclusive licensee 17 31 Assessmentofdamageswhereexclusivelicencegranted 17 32 Apportionment of profits between owner and exclusive 18

licensee 33 Limitation on relief where separate proceedings relate to 18

same infringement 34 Liability for costs 19 35 Presumptions 19 36 Proof of certain facts 19

Part 5 Miscellaneous

37 Eligible countries 20 38 Prospective ownership of layout design rights 21 39 Assignments and licences of layout design rights 21 40 Groundless legal proceedings 22

2

Reprinted as at1 December 2002 Layout Designs Act 1994 Part 1 s 2
41 Amendments to Copyright Act 1962[Repealed] 22
42 Amendment to Commerce Act 1986 23

An Act to provide for the protection of layout designs for integrated circuits

1 Short Title and commencement

(1)
This Act may be cited as the Layout Designs Act 1994.
(2)
This Act shall come into force on 1 January 1995.

Part 1 Interpretation and application 2 Interpretation

(1) In this Act, unless the context otherwise requires,commercially exploited has the meaning set out in section 3 Copyright Tribunal means the Copyright Tribunal estab

lished under Part 10 of the Copyright Act 1994 Crown

(a)
meansHerMajestytheQueeninrightofNewZealand; and
(b)
includesaMinisteroftheCrown,adepartment,andan Office of Parliament; but
(c)
does not include
(i)
a Crown entity; or
(ii)
a State enterprise named in Schedule 1 of the

State-Owned Enterprises Act 1986 Crown entity has the same meaning as in section 2(1) of the Public Finance Act 1989

department meansanydepartmentorinstrumentoftheGovernment, or any branch or division thereof; but does not includeabodycorporateorotherlegalentitythathasthepower to contract, Public Trust, or the Export Guarantee Office

eligible country means an entity for the time being declared by an order under section 37(1) to be an eligible country for the purposes of this Act eligible layout design means an original layout design

(a)
themaker,orinrelationtoajointlymadelayoutdesign any 1 or more of the makers, of which was, at the time the layout design was made, an eligible person; or
(b)
that was first commercially exploited in New Zealand
or in an eligible country eligible person means
(a)
aNewZealandcitizenorapersondomiciledorresident in New Zealand:
(b)
a body corporate incorporated in New Zealand:
(c)
acitizenofaneligiblecountryorapersonwhoisdomiciled or resident in an eligible country:
(d)
a body corporate incorporated in an eligible country exclusive licence means a licence in writing, signed by or on behalf of the owner or prospective owner of layout design rights, authorising the licensee, to the exclusion of all other

persons, to do an act that, under this Act, the owner would, but for the licence, have the exclusive right to do exclusive right has the meaning set out in section 4 future rights means layout design rights that will come into

existenceatafuturetimeoronthehappeningofafutureevent integratedcircuitmeansacircuit,initsfinaloranintermediateform,inwhichtheelements,atleast1ofwhichisanactive element,andsomeoralloftheinterconnectionsareintegrally

formedinoronapieceofmaterialandthatisintendedtoperform an electronic function layout design means the three-dimensional disposition, how

ever expressed, of the elements, at least 1 of which is an active element, and of some or all of the interconnections, of an integrated circuit; and includes such a three-dimensional disposition prepared for an integrated circuit intended for manufacture

layout design rights means the exclusive rights specified in

section 13 in relation to an eligible layout design material form, in relation to a layout design, includes any form of storage or expression (whether visible or not) from which the layout design, or a substantial part of it, can be reproduced Minister meanstheMinisteroftheCrownwho,undertheauthority of anywarrantorwith the authorityofthe PrimeMinister,isforthetimebeingresponsiblefortheadministrationof this Act

prospective owner means,

(a)
inrelationtofuturelayoutdesignrightsthatarenotthe subjectofanagreementofthekindreferredtoin section 38(1) , the person who will be the owner of those rights when they come into existence; or
(b)
inrelationtofuturelayoutdesignrightsthatarethesubject of such an agreement, the person in whom those rights will vest under that subsection when they come into existence
protection period, in relation to an eligible layout design, means the period beginning on the day on which the layout design was made and ending,
(a)
if the layout design is first commercially exploited within5calendaryearsafterthecalendaryearinwhich the layout design was made, at the end of the tenth calendaryearafterthecalendaryearinwhichthelayout design was first commercially exploited; and
(b)
inanyothercase,attheendoftheperiodof15calendar yearsafterthecalendaryearin whichthelayoutdesign was made.

(2) In the case of an entity that is an eligible country but is not a State, part of a State, or a territory for whose international relations a State is responsible,

(a)
the reference in paragraph (d) of the definition of the term eligible person in subsection (1) to a body corporateincorporatedinan eligible countrymustberead as a reference to a body corporate incorporated under the rules of the entity:
(b)
thereferencein section37(2)(b) tothelawofaneligible country must be read as a reference to the rules of the entity.

Compare: Circuit Layouts Act 1989 s 5 (Aust)

Section 2(1) Copyright Tribunal : amended, on 1 January 1995, by section 236(1) of the Copyright Act 1994 (1994 No 143).

Section2(1)department : amended,on1March2002,bysection170(1)ofthe Public Trust Act 2001 (2001 No 100).

Section2(1)eligiblecountry : substituted,on14October1999,bysection2(2) of the Layout Designs Amendment Act 1999 (1999 No 123).

Section 2(1) Minister : inserted, on 14 October 1999, by section 2(2) of the Layout Designs Amendment Act 1999 (1999 No 123).

Section2(2): added,on14October1999,bysection2(3)oftheLayoutDesigns Amendment Act 1999 (1999 No 123).

3 Meaning of commercially exploited

For the purposes of this Act,

(a)
alayoutdesigniscommerciallyexploitedifthelayout design,acopyofthelayoutdesign,oranintegratedcircuitmadeinaccordancewiththelayoutdesign(whether or not the integrated circuit is incorporated in another thing) is
(i)
sold or hired or otherwise distributed by way of trade; or
(ii)
offeredorexposedforsaleorhireorotherdistribution by way of trade; or
(iii) imported for the purpose of sale or hire or other distribution by way of trade:
(b)
a copy of a layout design or an integrated circuit made inaccordancewithalayoutdesigniscommerciallyexploited if it is
(i)
sold or hired or otherwise distributed by way of trade; or
(ii)
offeredorexposedforsaleorhireorotherdistribution by way of trade; or

(iii) imported for the purpose of sale or hire or other

distribution by way of trade;and commercially exploiting and commercial exploitation have corresponding meanings. Compare: Circuit Layouts Act 1989 s 8 (Aust)

4 Meaning of exclusive right For the purposes of this Act, the exclusive right to do an act inrelationtoaneligiblelayoutdesign,oranintegratedcircuit madeinaccordancewithaneligiblelayoutdesign,includesthe

exclusive right to authorise a person to do that act in relation to that layout design or integrated circuit. Compare: Circuit Layouts Act 1989 s 9 (Aust)

5 Meaningofmakinginrelationtoaneligiblelayoutdesign

(1)
ForthepurposesofthisAct,butwithoutlimitingtheordinary meaning of the term making in relation to an eligible layout design,apersonwhousedacomputertomakeaneligiblelayout design is to be taken to have made the design.
(2)
ForthepurposesofthisAct,aneligiblelayoutdesignis made when it is first fixed in a material form. Compare: Circuit Layouts Act 1989 s 10 (Aust)

6 Meaning of original

ForthepurposesofthisAct,butwithoutlimitingtheordinary meaning of the word original in relation to a layout design, a layout design is not original if

(a)
itsmakinginvolvednointellectualeffortbythemaker; or
(b)
it was commonplace at the time it was made; or
(c)
in the case of a combination of elements and interconnections that are commonplace, the combination as a whole involved no intellectual effort by the maker.

Compare: Circuit Layouts Act 1989 s 11 (Aust)

7 Licence of owner of layout design rights

ForthepurposesofthisAct,anactisdonewiththelicenceof theowneroflayoutdesignrightsifdoingthatactisauthorised by a licence binding the owner. Compare: Circuit Layouts Act 1989 s 12 (Aust)

8 Eligible layout design includes substantial part of the design

In this Act,

(a)
a reference to doing an act (other than making) in relation to an eligible layout design includes a reference to doing that act in relation to a substantial part of the design:
(b)
a reference to a copy of an eligible layout design includes a reference to a copy of a substantial part of the design:
(c)
a reference to an integrated circuit made in accordance withaneligiblelayoutdesignincludesareferencetoan integratedcircuitmadeinaccordancewithasubstantial part of the design.

Compare: Circuit Layouts Act 1989 s 13 (Aust)

9 Reference to joint makers

Unlessthecontextotherwiserequires,areferenceinthisActto themakerofaneligiblelayoutdesignis,inrelationtoajointly madeeligiblelayoutdesign,areferencetoallthemakersofthe layout design. Compare: Circuit Layouts Act 1989 s 14 (Aust)

10 Applicationtolayoutdesignsmadebeforecommencement of this Act

This Act applies in relation to a layout design whether made before or after the commencement of this Act, but an action doesnotlieunder Part4 inrespectofanyactdonebeforethat commencement in relation to the layout design, a copy of the layoutdesign,oranintegratedcircuitmadeinaccordancewith the layout design. Compare: Circuit Layouts Act 1989 s 7 (Aust)

11 Act to bind the Crown

This Act binds the Crown.

Part 2 Ownership and nature of layout design rights

12 Ownership of layout design rights

(1)
Subject to this section, the person who makes an eligible layout design is the first owner of the layout design rights in the eligible layout design.
(2)
Wherealayoutdesignismadebyapersonunderthetermsof his or her employment by another person under a contract of
service or apprenticeship, that other person is the first owner of the layout design rights in the eligible layout design.
(3)
Where a person commissions the making of a layout design for valuable consideration, and the layout design is made in carrying out that commission, the person who commissioned the work is the first owner of the layout design rights in the eligible layout design.
(4)
Theapplicationofsubsection(2)andsubsection(3)tothelayout design rights in a particular eligible layout design may be excluded or modified by agreement.
(5)
Whereaneligiblelayoutdesignhasbeenmadejointlybypersons who are not all eligible persons, this section applies in relation to the design as if it had been made solely by those who were eligible persons. Compare: Circuit Layouts Act 1989 ss 16(1)–(3), 18 (Aust)

13 Nature of layout design rights The owner of the layout design rights in an eligible layout design has, during the protection period of the layout design, the following exclusive rights:

(a)
therighttocopythelayoutdesign,directlyorindirectly, in a material form:
(b)
the right to make an integrated circuit in accordance with the layout design or a copy of the layout design:
(c)
the right to commercially exploit the layout design in

New Zealand. Compare: Circuit Layouts Act 1989 s 17 (Aust)

14 Infringement of layout design rights The layout design rights in an eligible layout design are infringedbyanypersonwho,duringtheprotectionperiod,without the licence of the owner of the layout design rights does, or authorises another person to do, anything which, by virtue of section 13, is the exclusive right of the owner of the layout design rights. Compare: Circuit Layouts Act 1989 s 19 (Aust)

Part 3 Exceptions

15 Innocent commercial exploitation
(1) The layout design rights in an eligible layout design are not
infringed by a person who commercially exploits, or author
isesthecommercialexploitationof,anunauthorisedintegrated
circuitinNewZealand,beinganintegratedcircuitmadeinac
cordancewiththelayoutdesign,if,atthetimewhentheperson
acquired the integrated circuit, the person did not know, and
could not reasonably be expected to have known, that the in
tegrated circuit was unauthorised.
(2) Where a person referred to in subsection (1)
(a) hasin thatperson’spossessionor has contracted topur
chase an integrated circuit that is unauthorised; and
(b) becomesawareorcouldreasonablybeexpectedtohave
become aware that the integrated circuit is unauthor
ised,
thatsubsectioncontinues toapplyto anysubsequent commer
cial exploitation of the integrated circuit only, if the person
pays to the owner or exclusive licensee of the layout design
rights in the layout design such remuneration as is agreed, or
as is determined by a method agreed, between the person and
the owner or exclusive licensee or, in default of agreement, as
is determined by the Copyright Tribunal on application made
by either of them.
(3) In this section, unauthorised, in relation to an integrated cir
cuitmadein accordance with aneligiblelayoutdesign, means
made without the licence of the owner of the layout design
rights in the layout design.
Compare: Circuit Layouts Act 1989 s 20 (Aust); Law and Justice Legislation Amendment Act 1990 s 43 (Aust)
16 Copying for private use
(1) The layout design rights in an eligible layout design are not
infringed by the making of
(a) a copy or copies of the layout design; or
(b) an integrated circuit in accordance with the layout de
sign or with a copy of the layout design

solelyfortheprivateuseofthepersonwhomakesthecopyor copies or integrated circuit.

(2) Forthepurposesofsubsection(1),acopyofaneligiblelayout design,oranintegratedcircuitmadeinaccordancewithaneligible layout design or with a copy of such a layout design, is nottobetakentohavebeenmadefortheprivateuseofapersonifthecopyorintegratedcircuitiscommerciallyexploited ordistributed otherwisethanbyway oftrade toanextent that will prejudice the interests of the owner of the layout design rights in the layout design. Compare: Circuit Layouts Act 1989 s 21 (Aust); Law and Justice Legislation

Amendment Act 1990 s 44 (Aust)

17 Copying for research or teaching purposes

The layout design rights in an eligible layout design are not infringed by the making of

(a)
a copy or copies of the layout design; or
(b)
an integrated circuit in accordance with the layout de

sign or with a copy of the layout designsolely for research or teaching purposes. Compare: Circuit Layouts Act 1989 s 22 (Aust); Law and Justice Legislation

Amendment Act 1990 s 45 (Aust)

18 Evaluation or analysis

(1)
The layout design rights in an eligible layout design are not infringed by
(a)
the making of a copy or copies of the layout design for the purposes of evaluating or analysing the layout design; or
(b)
the making of an original layout design based on an evaluationoranalysiscarriedoutwiththeuseofacopy or copies referred to in paragraph (a); or
(c)
the making of an integrated circuit in accordance with anoriginallayoutdesignreferredtoinparagraph(b);or
(d)
copyingorcommerciallyexploitinginNewZealandan original layout design referred to in paragraph (b).
(2)
The layout design rights in an eligible layout design are not infringed by
(a)
the making of an integrated circuit in accordance with the layout design, or with a copy of the layout design, for the purpose of evaluating or analysing the layout design; or
(b)
the making of an original layout design based on an evaluation or analysis carried out with the use of an integrated circuit referred to in paragraph (a); or
(c)
the making of an integrated circuit in accordance with anoriginallayoutdesignreferredtoinparagraph(b);or
(d)
copyingorcommerciallyexploitinginNewZealandan original layout design referred to in paragraph (b).

Compare: Circuit Layouts Act 1989 s 23 (Aust); Law and Justice Legislation Amendment Act 1990 s 46 (Aust)

19 Commercial exploitation of eligible layout design previously exploited under licence

(1) Where

(a)
an eligible layout design is commercially exploited, whether in New Zealand or elsewhere, by, or with the licence of, the owner of the layout design rights in the layout design; and
(b)
a person acquires a copy of the layout design, or an integrated circuit made in accordance with the layout design, as a result of that commercial exploitation,

it is notaninfringementof the layout design rights in thelayoutdesignifthepersoncommerciallyexploitsthecopyorthe integrated circuit in New Zealand.

(2) Notwithstanding sections 12(3), 35, and 36 of the Copyright Act1994totheextentthatthoseprovisionsapplytoimported articles, where the commercial exploitation of an integrated circuit containing a copy or adaptation of a work (being an integrated circuit made in accordance with an eligible layout design)isnot,underthissection,aninfringementofthelayout designrightsinthelayoutdesign,thatcommercialexploitation isnotaninfringementofthecopyrightinthatworkunlessthe makingofthatcopyoradaptationwasaninfringementofthat copyright.

(3) Expressions used in subsection (2) that are defined in the Copyright Act 1994 have the same meanings as they have in that Act. Compare: Circuit Layouts Act 1989 s 24 (Aust) Section19(2): amended,on1January1995,bysection236(1)oftheCopyright Act 1994 (1994 No 143).

Section19(3): amended,on1January1995,bysection236(1)oftheCopyright Act 1994 (1994 No 143).

20 Use for defence, security, and other purposes

(1) An act done by or on behalf of the Crown, or a person authorised in writing by the chief executive of a department, in relation to an eligible layout design is not an infringement of the rights in the layout if the act is done

(a)
forthedefenceornationalsecurityofNewZealand;or
(b)
for the purpose of assisting in a state of national emer gency declared under section 66 of the Civil Defence Emergency Management Act 2002,

and,beforedoingtheact,theCrown,ortheauthorisedperson, asthecasemaybe,havingtakenallreasonablestepstodoso, hasbeenunabletoobtainthelicenceoftheownerofthelayout design rights, on reasonable terms, to do the act.

(2) An authorisation may be given before or after the acts in respect of which it is given have been done. Compare: CircuitLayoutsAct1989s25(1),(2)(Aust);LawandJusticeLegis

lation Amendment Act 1990 s 47 (Aust)

Section 20(1)(b): amended, on 1 December 2002, by section 117 of the Civil Defence Emergency Management Act 2002 (2002 No 33).

21 Nature and scope of rights under section 20

(1)
The right to use an eligible layout design pursuant to section 20
(a)
is both non-exclusive and non-assignable; and
(b)
is limited to the purpose or purposes specified in that section; and
(c)
is subject to the terms of any authorisation under that section; and
(d)
does not permit sale of the layout design to the public; and
(e)
is limited to use of the layout design predominantly in New Zealand.
(2)
An act done under section 20 in relation to an eligible layout design is not to be taken into account in calculating the protection period of the layout design.
(3)
Whereanexclusivelicenceisinforceinrelationtoanylayout design rights, sections 20,22, and23 apply as ifreferencesto the owner of the layout design rights were references to the exclusive licensee. Compare: Circuit Layouts Act 1989 s 25(6), (7) (Aust)

22 Duty to inform owner

(1)
Whereanacthasbeendoneunder section20 inrelationtoan eligiblelayoutdesign,theCrownorthechiefexecutiveofthe department, as the case may be, shall, as soon as practicable, inform the owner of the layout design rights in the layout designthattheacthas beendoneand givetheowner suchinformationaboutthe act as the owner from time to timerequires.
(2)
Nothing in subsection (1) requires the Crown or the chief executive, as the case may be, to inform the owner or disclose information to the owner if doing so would, or might reasonably be expected to, prejudice the defence or security of New Zealand. Compare: Circuit Layouts Act 1989 s 25(3) (Aust)

23 Owner of layout design rights entitled to remuneration Whereanactisdoneundersection20 inrelationtoaneligible layout design, the Crown shall pay such remuneration to the owner of the layout design rights as may be agreed or determined by a method agreed, as the case may be, between the Crown and the owner or, in default of agreement, as is determined by the Copyright Tribunal on the application of either of them. Compare: Circuit Layouts Act 1989 s 25(4) (Aust)

24 Appeal to High Court

(1) Any person who is aggrieved by

(a)
any act done by or on behalf of the Crown or a person authorisedbythechiefexecutiveofadepartmentunder section 20; or
(b)
any authorisation given by the chief executive of a department under that section; or
(c)
adeterminationbytheCopyrightTribunalunder section

23 may appeal to the High Court and the High Court may make such determination or order as it thinks fit.

(2) On any such appeal,

(a)
the Crown; and
(b)
wheretheappealisagainstanauthorisationbythechief executive of a department, the chief executive; and
(c)
with the leave of the High Court, any other personis entitled to appear and be heard.

Part 4 Remedies for infringement 25 Actions for damages

(1)
A court of competent jurisdiction may, on the application of the owner of layout design rights in an eligible layout design, if it is satisfied that the rights have been infringed,
(a)
make an order for the payment of damages against the person by whom the rights were infringed; or
(b)
requireanaccountofprofitstobetakenasbetweenthe owner of the rights and the person by whom the rights were infringed.
(2)
Where, in proceedings for an infringement of layout design rights,
(a)
it is established that an infringement was committed; but
(b)
at the time of the infringement the defendant was not aware,anddidnothavereasonablegroundsforsuspecting,thattheactconstitutingtheinfringementwasaninfringement,

the court shall not make any order for the payment of damages against the defendant in respect of the infringement, but may order an account of profits to be taken in respect of the infringement, whether any other relief is granted or not.

(3) Where,inproceedingsinrespectofaninfringementoflayout design rights,

(a)
an infringement is established; and
(b)
the court is satisfied that it is proper to do so, having regard to
(i)
the flagrancy of the infringement; or
(ii)
any benefit shown to have accrued to the defendant because of the infringement; or

(iii) any other relevant matters,the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances. Compare: 1962 No 33 s 24(1)–(3); Circuit Layouts Act 1989 s 27 (Aust)

26 Injunctions A court of competent jurisdiction may, on the application of the owner of layout design rights in an eligible layout design, grantaninjunctionrestrainingapersonfromengaginginconduct that constitutes, or would constitute, an infringement of those rights.

27 Application of sections 28 to 34 to exclusive licensee Sections 28 to 34 apply to an exclusive licensee of layout de sign rights under a licence that is in force at the time the conduct constituting an infringement of those rights takes place. Compare: 1962 No 33 s 26(1); Circuit Layouts Act 1989 s 29 (Aust)

28 Rights of exclusive licensee

(1)
Subject to subsection (2), an exclusive licensee has the same rights and remedies as the owner of the layout design rights hasunder sections25 and 26 asifthelicenseeweretheowner.
(2)
Therightsandremediesoftheexclusivelicenseeareheldconcurrentlywiththeownerbut maynot beexercisedagainst the owner. Compare: 1962 No 33 s 26(2); Circuit Layouts Act 1989 s 30 (Aust)

29 Proceedings where concurrent rights exist

(1) Where

(a)
proceedings are brought by the owner of layout design rights or by the exclusive licensee under section 25 or section 26; and
(b)
the proceedings relate, wholly or partly, to an infringement in respect of which the owner and the licensee have concurrent rights under that section,

theownerorlicensee,asthecasemaybe,isnotentitled,except with the leave of the court, to continue those proceedings, in sofarastheyrelatetothatinfringement,unlessthelicenseeor owner, respectively, is joined as a party to the proceedings.

(2) Nothing in subsection (1) applies to an application for an interiminjunctionbytheownerofthelayoutdesignrightsoran exclusive licensee. Compare: 1962 No 33 s 26(3); Circuit Layouts Act 1989 s 31 (Aust)

30 Defences in proceedings by exclusive licensee Inproceedingsunder section25orsection 26byan exclusive licensee,adefenceunderthisActthatwouldhavebeenavailabletoadefendantiftheproceedingshadbeenbroughtbythe ownerofthelayoutdesign rightsisavailabletothedefendant against the exclusive licensee. Compare: 1962 No 33 s 26(4); Circuit Layouts Act 1989 s 32 (Aust)

31 Assessment of damages where exclusive licence granted

(1)
Where,inproceedingstowhich section29 applies,theowner of the layout design rights and the exclusive licensee are not both plaintiffs, the court, in assessing damages in respect of the infringement, shall,
(a)
if the plaintiff is the exclusive licensee, take into account any liabilities (such as royalties) to which the licence is subject; and
(b)
whether the plaintiff is the owner of the layout design rights or the exclusive licensee, take into account any pecuniary remedy already awarded to the other party under section 25 in respect of that infringement or any rightof actionexercisableby the other partyunderthat section in respect of that infringement.
(2)
Inthissectionand sections33 and 34 ,theexpressiontheother party, in relation to the owner of layout design rights, means theexclusivelicenseeand,inrelationtotheexclusivelicensee, means the owner of the layout design rights. Compare: 1962 No 33 s 26(5), (9); Circuit Layouts Act 1989 s 33 (Aust)

32 Apportionment of profits between owner and exclusive licensee

Where

(a)
proceedings under section 25 relate, wholly or partly, to an infringement in respect of which the owner of thelayoutdesignrightsandtheexclusivelicenseehave concurrent rights of action under that section, whether or not they are both parties; and
(b)
anaccountofprofitsisdirectedtobetakeninrespectof

that infringement,the court shall, subject to any agreement of which it is aware by which the application of those profits is determined as between the owner of the layout design rights and the exclusive licensee,apportiontheprofitsbetweentheminsuchmanneras it considers just and shall give such directions as it considers appropriate for giving effect to that apportionment. Compare: 1962 No 33 s 26(6); Circuit Layouts Act 1989 s 34 (Aust)

33 Limitation on relief where separate proceedings relate to same infringement

In proceedings under section 25 brought by the owner of lay out design rights or by the exclusive licensee,

(a)
a judgment or order for the payment of damages in respect of an infringement of those rights shall not be given or made if a final judgment or order has been given or made in favour of the other party directing an account of profits under that section in respect of the same infringement; and
(b)
a judgment or order for an account of profits in respect of an infringement of those rights shall not be given or made if a final judgment or order has been given or made in favour of the other party awarding damages

or directing an account of profits under that section in respect of the same infringement. Compare: 1962 No 33 s 26(7); Circuit Layouts Act 1989 s 35 (Aust)

34 Liability for costs Where, in proceedings to which section 29 applies, whether broughtbytheowneroflayoutdesignrightsinaneligiblelayout design or by the exclusive licensee, the other party is not joined as a plaintiff, either at the commencement of the proceedingsorsubsequently,butisaddedasadefendant,theother party is not liable for any costs of the proceedings unless that party enters an appearance and takes part in the proceedings. Compare: 1962 No 33 s 26(8); Circuit Layouts Act 1989 s 36 (Aust)

35 Presumptions

In proceedings under section 25 or section 26,

(a)
layout design rights shall be presumed to subsist in the layout design to which the proceedings relate if the defendantdoesnotputinissuethequestionwhetherthose rights subsist in the layout design; and
(b)
where layout design rights are proved, or admitted, or presumed under paragraph (a), to subsist in a layout design, the plaintiff shall be presumed to be the owner oftherightsifitisallegedthattheplaintiffistheowner oftherightsandthedefendantdoesnotputin issue the question of ownership.

Compare: 1962 No 33 s 27(1); Circuit Layouts Act 1989 s 37 (Aust)

36 Proof of certain facts If,atthetimewhenaneligiblelayoutdesign,acopyofaneligible layout design, an integrated circuit made in accordance with an eligible layout design, or an article in which such an integratedcircuitisincorporated,asthecasemaybe,wasfirst commercially exploited, the layout design, the copy, the integrated circuit or a package containing it, or the article was clearlyandlegiblylabelledormarkedsoastoindicatethefollowing claims, namely,

(a)
that layout design rights subsisted in the layout design; and
(b)
thatthepersonnamedonthelabelormarkasthemaker ofthelayoutdesignwasthemakerofthelayoutdesign and any person named as an exclusive licensee of the owner was an exclusive licensee; and
(c)
that the layout design was first commercially exploited in the country and the year specified on the label or mark,
it shall be presumed in any proceedings under section 25 or section 26, in the absence of evidence to the contrary,
(d)
that at all material times any person dealing with the layout design, the copy, or the integrated circuit had knowledgeofeachoftheclaimsspecifiedinparagraphs
(a) to (c); and
(e)
that the layout design was first commercially exploited in the year specified.

Compare: 1962 No 33 s 27A; 1985 No 134 s 7; Circuit Layouts Act 1989 s 39 (Aust)

Part 5 Miscellaneous 37 Eligible countries

(1)
OntherecommendationoftheMinister,theGovernor-General maybyOrderinCouncildeclarethatanyentityspecifiedinthe order (whether a State, part of a State, a territory for whose internationalrelationsa State isresponsible,apoliticalunion, aninternationalorganisation,oranyotherentity)isaneligible country for the purposes of this Act.
(2)
The Minister must not recommend the making of an order declaring an entity to be an eligible country for the purposes of this Act unless satisfied that
(a)
NewZealandandtheentityarebothpartiestoaninternational agreement or arrangement relating to the protection of layout designs; or
(b)
provisionisorwillbemadeunderthelawoforapplicable to the entity giving reciprocal protection to layout designs
(i)
made by persons referred to in paragraph (a) or paragraph(b)ofthedefinitionin section2 ofthe term eligible person; or
(ii)
first commercially exploited in New Zealand.

Section 37: substituted, on 14 October 1999, by section 2(1) of the Layout Designs Amendment Act 1999 (1999 No 123).

38 Prospective ownership of layout design rights

(1)
Where, by an agreement in relation to future layout design rights and entered into by or on behalf of the person who would, apart from this section, be the owner of the rights on their cominginto existence, that person purports to assignthe futurelayoutdesignrights,whollyorpartly,toanotherperson (in this subsection called the assignee), the rights, on coming into existence, shall, by virtue of this section, vest in the assignee or the assignee’s successor in title.
(2)
Where, at the time when a layout design right comes into existence, the person who would be entitled to the right is dead, therightdevolvesasif,immediatelybeforetheperson’sdeath, the person had been the owner of the right.
(3)
A licence granted in respect of future layout design rights by the prospective owner of those rights binds each of the prospective owner’s successors in title to the prospective interest in the rights to the same extent as the licence was binding on the grantor. Compare: Circuit Layouts Act 1989 s 44 (Aust)

39 Assignments and licences of layout design rights

(1)
Layoutdesignrightsarepersonalpropertyand,subjecttothis section,arecapableofassignmentandmaypassbywillorby operation of law.
(2)
An assignment of layout design rights may be limited in any way, including any 1 or more of the following ways,
(a)
so as to apply to 1 or more of the classes of acts that, by virtue of this Act, the owner of the layout design rightshastheexclusiverighttodo(includingaclassof acts that is not separately specified in this Act as being comprisedinlayoutdesignrightsbutfallswithinaclass of acts that is so specified):
(b)
so as to apply to part of the protection period of the layout design in which the layout design rights subsist.
(3)
Anassignmentoflayoutdesignrights,whethertotalorpartial, does not have effect unless it is in writing signed by or on behalf of the assignor.
(4)
A licence granted in respect of a layout design right by the owneroftherightbindseverysuccessorintitleto theinterest in the right of the grantor of the licence, except
(a)
apurchaseringoodfaithforvaluableconsiderationand withoutnotice,actualorconstructive,ofthelicence;or
(b)
a person deriving title from such a purchaserto the same extent as the licence was binding on the grantor. Compare: 1962 No 33 s 56(4); Circuit Layouts Act 1989 s 45 (Aust)

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40 Groundless legal proceedings

(1)
Subject to this section, where a person commences proceedingsalleginganinfringementoflayoutdesignrightsinaneligible layout design, a court of competent jurisdiction may, on the application of any person against whom the proceedings are brought, if it is satisfied that the proceedings are unjustified,
(a)
make an order striking out the proceedings:
(b)
makeanorderforthepaymentofdamagesforanyloss suffered by the person against whom the proceedings were brought.
(2)
Acourtshallnotgrantreliefunderthissectionifthedefendant proves that the acts in respect of which the proceedings were brought constituted, or if done, would have constituted, an infringement of the layout design rights concerned.
(3)
Noproceedingsmaybecommencedunderthissectionagainst a barrister or solicitor of the High Court of New Zealand in respect of any act done in his or her professional capacity on behalf of a client. Compare: Copyright, Designs and Patents Act 1988 s 253 (UK); Circuit Lay

outs Act 1989 s 46 (Aust)

41 Amendments to Copyright Act 1962

[Repealed]

Section 41: repealed, on 1 January 1995, by section 236(1) of the Copyright Act 1994 (1994 No 143).

42 Amendment to Commerce Act 1986

(1),(2) Amendment(s) incorporated in the Act(s).

Layout Designs Amendment Act 1999

Public Act 1999 No 123 Date of assent 14 October 1999 Commencement 14 October 1999

1 Short Title This Act may be cited as the Layout Designs Amendment Act 1999, and is part of the Layout Designs Act 1994 (“the principal Act”).

2 Eligible countries

(1)–(3) Amendment(s) incorporated in the Act(s).

(4) The substitution by subsection (1) of a new section 37 of the principalActfortheexistingsectiondoesnotaffectanyorder made under the existing section; and any such order may be amended or revoked by an order made under the substituted section.

Contents

1 General

2 Status of reprints

3 How reprints are prepared

4 Changesmadeundersection17CoftheActsandRegulations Publication Act 1989

5 List of amendments incorporated in this reprint (most recent first)

Notes

1 General

This is a reprint of the Layout Designs Act 1994. The reprint incorporates all the amendments to the Act as at 1 December 2002,asspecifiedinthelistofamendmentsattheendofthese notes.

Relevantprovisionsofany amending enactmentsthatcontain transitional, savings, or application provisions that cannot be compiled in the reprint are also included, after the principal enactment, in chronological order. For more information, see http://www.pco.parliament.govt.nz/reprints/ .

2 Status of reprints

Under section 16D of the Acts and Regulations Publication Act 1989, reprints are presumed to correctly state, as at the dateofthereprint,thelawenactedbytheprincipalenactment and by the amendments to that enactment. This presumption applies even though editorial changes authorised by section 17C of the Acts and Regulations Publication Act 1989 have been made in the reprint.

This presumption may be rebutted by producing the official volumes of statutes or statutory regulations in which the principal enactment and its amendments are contained.

3 How reprints are prepared

A number of editorial conventions are followed in the preparation of reprints. For example, the enacting words are not included in Acts, and

25

provisions that are repealed or revoked are omitted. For a detailed list of the editorial conventions, see http://www.pco.parliament.govt.nz/editorial-conventions/ or Part8ofthe Tables of New Zealand Acts and Ordinances and Statutory Regulations and Deemed Regulations in Force.

Changes made under section 17C of the Acts and Regulations Publication Act 1989

Section17C oftheActsandRegulationsPublicationAct1989 authorises the making of editorial changes in a reprint as set out in sections 17D and 17E of that Act so that, to the extent permitted, the format and style of the reprinted enactment is consistent with current legislative drafting practice. Changes thatwould alter the effect of the legislation are not permitted.

Anewformatoflegislationwasintroducedon1January2000. Changestolegislativedraftingstylehavealsobeenmadesince 1997, and are ongoing. To the extent permitted by section 17C of the Acts and Regulations Publication Act 1989, all legislationreprintedafter1January2000isinthenewformat forlegislationandreflectscurrentdraftingpracticeatthetime of the reprint.

In outline, the editorial changes made in reprints under the authority of section 17C of the Acts and Regulations Publication Act 1989 are set out below, and they have been applied, where relevant, in the preparation of this reprint:

omission of unnecessary referential words (such as “of this sectionand “of this Act”)

  • typefaceandtypesize(TimesRoman,generallyin11.5 point)
    • layout of provisions, including:
      • indentation
      • positionofsectionheadings(eg,thenumberand heading now appear above the section)
  • formatofdefinitions(eg,thedefinedtermnowappears in bold type, without quotation marks)
  • format of dates (eg, a date formerly expressed as “the 1stdayofJanuary1999”isnowexpressedas“1January 1999”)
  • positionofthedateofassent(itnowappearsonthefront page of each Act)
  • punctuation (eg, colons are not used after definitions)
  • Partsnumberedwithromannumeralsarereplacedwith arabic numerals, and all cross-references are changed accordingly
    • case and appearance of letters and words, including:
      • format of headings (eg, headings where each word formerly appeared with an initial capital letter followed by small capital letters are amended so that the heading appears in bold, with only the first word (and any proper nouns) appearing with an initial capital letter)
      • small capital letters in section and subsection references are now capital letters
  • schedules are renumbered (eg, Schedule 1 replaces First Schedule), and all cross-references are changed accordingly
  • running heads (the information that appears at the top of each page)
  • format of two-column schedules of consequential amendments, and schedules of repeals (eg, they are rearranged into alphabetical order, rather than chronological).

List of amendments incorporated in this reprint (most recent first)

Civil DefenceEmergency Management Act 2002 (2002 No33): section117 Public Trust Act 2001 (2001 No 100): section 170(1) Layout Designs Amendment Act 1999 (1999 No 123) Copyright Act 1994 (1994 No 143): section 236(1)

Wellington, New Zealand: Published under the authority of the New Zealand Government—2010

 

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