Wednesday, April 17, 2013

Curtains for the Cinema

Vogelsang - Cinema #4: Curtain, 70s styleNew Zealand has a way of preventing cinemas from having to compete with different formats such as DVD, Blu-Ray, Pay-Per-View or Free-To-Air. The Copyright Act bans parallel importation of films into New Zealand for nine months from the international release date.

Government officials are likely to recommend removal of this mechanism. Does this mean curtains for the cinema?


Section 35(3) of the Copyright Act 1994 provides that a person infringes copyright in a film if that person:
  • imports a copy of the film into New Zealand within 9 months of first being made available to the public; and
  • knows or has reason to believe that the film is imported into New Zealand within 9 months of first being made available to the public; and
  • is not the licensee of the copyright in New Zealand; and
  • imports the film into New Zealand other than for that person's private and domestic use.
Government officials say the ban is there to:
'give sufficient time for the domestic film industry to profit from their investment in the distribution and exhibition of films before opening up the market to competition from retailers and other commercial users.'
In the late '90s an amendment to the Copyright Act did away with the ban. The United States Trade Representative (USTR) promptly placed New Zealand on the Special 301 Watch List, a register of countries that the USTR considers to have inadequate copyright protection laws. A press release from the US Embassy stated that:
'New Zealand was placed on the Watch List ... after the New Zealand Government passed an amendment to the Copyright Act abolishing the exclusive importation right for copyright owners. The law was of serious concern because it eroded the level of copyright protection available to right holders in New Zealand and made it more difficult to combat pirated goods'.
The Government at the time revived the ban with an amendment to the Copyright Act in 2003. New Zealand was then taken off the Watch List.

Time for a change

It is unlikely that the ban will be in place much longer.

Section 35(5) automatically repeals the ban on 31 October 2013. The Ministry of Business, Innovation & Employment (MBIE) is currently conducting a review of the ban to form a view on whether to allow the ban to lapse or continue the temporary ban. MBIE published a discussion document in February 2013 titled 'Review of Ban on Parallel Importation of Films'. Submissions on the discussion document closed last week.

The vibe of the discussion document suggests that the ban is going to be allowed to lapse. The introduction notes that:
'[a]llowing for parallel importing is generally thought to encourage the competitive supply of consumer goods such as copyright works. Previous reviews of parallel importing undertaken by the Ministry of Economic Development have shown a net benefit to New Zealand from allowing parallel importation of copyright works. Despite the temporary ban on films, the Act otherwise allows for the parallel importation of non-infringing copies of all other works into New Zealand'.
I'm not sure that many rights holders were aware of the review and therefore would not have made submissions. In the absence of strong arguments in favour of continuing the ban it is likely that Government officials will recommend the ban be allowed to lapse.

What's the effect?

It is hard to anticipate the effect of removing the ban. The Discussion Document points to a Law and Economics Consulting Group report that suggests 'there is no link between parallel importing and box office revenue'.

I think it is likely that commercial cinema complexes will continue to show new releases of blockbuster films. We are likely to see the New Zealand release date for such blockbusters closer to the international release date.

Less popular and art-house films will face competition with parallel imported copies of films as the New Zealand release date is likely to be much later than the international release date. Some of these films may prove to be financially risky to distribute in New Zealand. Distributors may choose not to bring them in at all.

So does this mean curtains for the cinema? I don't think so. Cinemas will still be around showing films to New Zealand audiences. It's just that the films will increasingly be blockbusters rather than art-house.

What is not clear to me is whether we are still operating under the same environment today as we were back in the late '90s. Back then the removal of the ban caused us to be placed on the USTR Watch List. Are we likely to face the same situation in October when the ban lapses?

It will be interesting to see the views of the submitters.

Update - The Government proposes to retain the ban for another three years. The period of the ban will be shortened to five months from the current nine. See Curtains for the Cinema - the sequel.

Photo courtesy of author AndiH under Creative Commons licence.

Wednesday, April 10, 2013

Ten years on

New Year's EveLast week I passed a significant milestone. I suddenly realised that I have spent ten years as an equity partner in an IP law firm. So what's changed over the last decade?

Social networking

One of the most significant changes is the emergence of social media tools. It seems strange to think back to a time when my LinkedIn and Twitter accounts and this blog were not part of my daily professional life.

The accessibility of social media means that good content reaches across geographic and industry sectors in a way that I could not have anticipated. It is not a substitute for traditional channels of communication. It is simply a set of tools that increases the reach of a good message. It also helps to raise a professional profile.

Social media has also changed the way that we use traditional channels of communication. At some point in the last few years I stopped getting my news from the traditional morning newspaper. I now look to social media, online publications and RSS feeds for anything that might be newsworthy.

A few years ago it was seen as rude to peck away at a smartphone during a presentation. Now it is almost encouraged. The emergence of live tweeting means that many of our key messages in presentations are designed to be shared in 140 character tweets by the audience.


Ten years ago our preferred channel for time-sensitive communication with our clients was the fax machine. Before that it was the telex. At some point over the last ten years our default channel for most clients changed to email. Other clients contact us by SMS text message, social media direct message, through our website or through sophisticated secure portals.

I guess we are still providing the same practical plain English advice we always have. It's just that the channels are different now.

Our interactions with the Intellectual Property Office of New Zealand (IPONZ) have changed too. It seems strange to think that ten years ago there was a late filing box in an industrial area on the outskirts of Wellington city. We used it to physically file time-sensitive applications and correspondence once the Intellectual Property Office of New Zealand (IPONZ) closed its doors for the day.

Most of our correspondence with IPONZ now is electronic. We still exchange physical documents but this tends to be the exception rather than the rule. Sometimes IPONZ systems are down. Sometimes the material in the documents is too sensitive or too large for IPONZ networks.

Virtual law firms

There is a trend in many professional service industries to work remotely from home or a virtual law office. The perceived benefit is to permit flexible work hours and foster a better work/life balance. Where you need to recruit specialist staff it can also widen the pool of available candidates.

Some of our work is now done out of the office on smartphones and tablets. However, most of our work continues to be done in a physical office surrounded by real workmates.

There hasn't been a big move here toward virtual law firms or working remotely from home. Maybe this is because our work/life balance is already pretty good. Maybe it is because our physical offices in Auckland, Wellington and Sydney are in desirable metropolitan areas where talent wants to live.

Alternate models

Patent attorney firms still have a monopoly on core patent attorney services. Section 103 of the Patents Act 1953 says that only patent attorneys can
  • apply for or obtain patents in New Zealand or elsewhere;
  • prepare specifications or other documents for the purposes of this Act or of the patent law of any country; and
  • to give advice other than of a scientific or technicial nature as to the validity of patents or their infringement.

Clients are able to seek assistance in other areas of the intellectual property field from professionals who are neither patent attorneys nor lawyers. Searching, filing, renewals management and commercialisation are examples.

Even Patent Offices are getting involved. IPONZ for example ran an SME Pilot Programme providing free services to the public. The intention was to provide
'an IP audit tool, pre-application searches, competitor profiles, information on licences and licensing, guide to international best practice, assistance with the on-line application process and model agreements [and] ... confidential consultation'.
Some of these organisations provide a useful cost effective service and have a place in New Zealand's innovation framework. Some do not. It is important for clients to know exactly what they getting and what they are not getting. And what remedy is available when things go wrong.

Multi-generational workforce

We have always had a multi-generational workforce. A healthy workplace has younger people joining and older people leaving what is essentially an otherwise stable environment.

Over the last 10 years we have seen our traditionalists (born 1927-1945) and baby boomers (born 1946-1964) give way to Generation X (born 1965-1980) and Generation Y (born 1981-1990). Pretty soon we will have Generation Z (born 1991-2012) knocking on our doors.

Each new generation of workers brings with them a different perspective on professional life, giving rise to new workforce dynamics and challenges. Bring it on.

Photo courtesy of author erin m under Creative Commons licence.

Friday, April 5, 2013

The last of the patent attorneys

Patent attorneys are a rare breed in New Zealand. Under a new regulatory framework announced this week we are going to become even scarcer. Or maybe we are simply going to see fewer registered patent attorneys who do not do patent attorney work.

The Governments of Australia and New Zealand have announced an arrangement to give effect to a joint regulatory framework for patent attorneys to register and practice between Australia and New Zealand. The two governments are pursuing a Single Economic Market (SEM) agenda which aims to create a seamless trans-Tasman business environment.

The patent attorney profession is a small profession. Regulation of this profession is seen as low hanging fruit to demonstrate progress toward stronger relationships between Australia and New Zealand.

Patent Attorney Services

Under the new regime only registered patent attorneys will be able to provide 'patent attorney services' in Australia and New Zealand. The term 'patent attorney services' means the undertaking of any of the following services in Australia or New Zealand for gain-
  • applying for or obtaining a patent in Australia or New Zealand or elsewhere on behalf of another person;
  • preparing or amending specifications or other documents for the purposes of the patent law of Australia, New Zealand or any other country on behalf of another person; and
  • giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.

A patent attorney wishing to practice in Australia or New Zealand must be registered on a single register. There will no longer be separate registers for Australian patent attorneys and New Zealand patent attorneys.

We are not sure what the new register is going to be called yet. One name floating around is a 'trans-Tasman register', an obscure reference to the Tasman sea that separates the two countries.

Employment requirements

Under the current New Zealand system a prospective patent attorney needs three years employment by a patent attorney in New Zealand or by the Intellectual Property Office of New Zealand (IPONZ). It is not uncommon for New Zealand patent examiners to seek registration as a patent attorney.

The new regime requires a minimum of 2 years employment in a position or positions providing experience in:
  • searching patent records;
  • preparation, filing and prosecution of patent applications;
  • drafting of patent specifications; and
  • providing advice on interpretation, infringement and validity.

Employment by IPONZ may satisfy some but not all of the new employment requirements. We are therefore likely to see IPONZ producing fewer registered patent attorneys.

Academic qualification

Academic requirements in New Zealand are dictated by market forces rather than legislation. Registered patent attorneys who provide patent attorney services generally have a technical qualification.

Under the new regime there will be a legislative requirement to hold a tertiary qualification in a field of technology that contains potentially patentable subject matter.

New Zealand practitioners who do not provide patent attorney services (for example trade mark practitioners) do not usually hold technical degrees. Nevertheless, these practioners historically sought qualification as a registered patent attorney for career advancement. For example, in order to join a New Zealand patent attorney partnership you need to be a registered patent attorney yourself.

Under the new regime we will see fewer trade mark practioners qualify as patent attorneys due to the new academic qualification requirement.

Non-resident attorneys

There is no residency requirement for New Zealand patent attorneys. The New Zealand Patent Attorney Register shows that there are New Zealand patent attorneys resident not only in New Zealand but Australia, Germany, Hong Kong, Ireland, Singapore, Switzerland, the United Kingdom and the United States.

Most of these patent attorneys are New Zealand citizens who have worked for a patent attorney firm in New Zealand for the requisite 3 years before heading overseas.

There is no proposal to introduce a residency requirement in the new regime. However, there is a need to ensure that patent attorneys are properly trained by patent attorneys in Australia or New Zealand. It is possible that we will see a requirement for employment by a patent attorney in Australia or New Zealand. This is what is already in place in New Zealand.

What next?

It is difficult to predict when this framework will come into effect. The regulation of the profession is covered in the Patent Attorneys Bill which was divided out of the Patents Bill. The regulatory framework provisions were pulled out of the Patents Bill so that the Patents Bill would not be held up.

Ironically, we are now waiting for the Patents Bill to proceed before we can implement the legislation necessary for the regulatory framework. It is likely that we will see an amendment to the New Zealand Patents Bill to add the regulatory framework provisions back in.

Related Posts Plugin for WordPress, Blogger...