Layout Designs Act 1994

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.
1: Interpretation and application
2: Interpretation
1: In this Act, unless the context otherwise requires,— commercially exploited section 3 Copyright Tribunal Part 10 Crown
a: means Her Majesty the Queen in right of New Zealand; and
b: includes a Minister of the Crown, a department, and an Office of Parliament; but
c: does not include—
i: a Crown entity; or
ii: a State enterprise named in Schedule 1 Crown entity section 2(1) department Public Trust eligible country section 37(1) eligible layout design
a: the maker, or in relation to a jointly made layout design 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
a: a New Zealand citizen or a person domiciled or resident in New Zealand:
b: a body corporate incorporated in New Zealand:
c: a citizen of an eligible country or a person who is domiciled or resident in an eligible country:
d: a body corporate incorporated in an eligible country exclusive licence exclusive right section 4 future rights integrated circuit layout design layout design rights section 13 material form Minister prospective owner
a: in relation to future layout design rights that are not the subject of an agreement of the kind referred to in section 38(1)
b: in relation to future layout design rights that are the subject of such an agreement, the person in whom those rights will vest under that subsection when they come into existence protection period
a: if the layout design is first commercially exploited within 5 calendar years after the calendar year in which the layout design was made, at the end of the tenth calendar year after the calendar year in which the layout design was first commercially exploited; and
b: in any other case, at the end of the period of 15 calendar years after the calendar year in which the layout design 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 corporate incorporated in an eligible country must be read as a reference to a body corporate incorporated under the rules of the entity:
b: the reference in section 37(2)﻿(b) Circuit Layouts Act 1989 s 5 (Aust) Section 2(1) Copyright Tribunal amended 1 January 1995 section 236(1) Copyright Act 1994 Section 2(1) department amended 1 March 2002 section 170(1) Public Trust Act 2001 Section 2(1) eligible country substituted 14 October 1999 section 2(2) Layout Designs Amendment Act 1999 Section 2(1) Minister inserted 14 October 1999 section 2(2) Layout Designs Amendment Act 1999 Section 2(2) added 14 October 1999 section 2(3) Layout Designs Amendment Act 1999
3: Meaning of commercially exploited
For the purposes of this Act,—
a: a layout design is commercially exploited
i: sold or hired or otherwise distributed by way of trade; or
ii: offered or exposed for sale or hire or other distribution 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 in accordance with a layout design is commercially exploited
i: sold or hired or otherwise distributed by way of trade; or
ii: offered or exposed for sale or hire or other distribution by way of trade; or
iii: imported for the purpose of sale or hire or other distribution by way of trade;— and commercially exploiting commercial exploitation Circuit Layouts Act 1989 s 8 (Aust)
4: Meaning of exclusive right
For the purposes of this Act, the exclusive right Circuit Layouts Act 1989 s 9 (Aust)
5: Meaning of making in relation to an eligible layout design
1: For the purposes of this Act, but without limiting the ordinary meaning of the term making in relation to an eligible layout design, a person who used a computer to make an eligible layout design is to be taken to have made
2: For the purposes of this Act, an eligible layout design is made Circuit Layouts Act 1989 s 10 (Aust)
6: Meaning of original
For the purposes of this Act, but without limiting the ordinary meaning of the word original in relation to a layout design, a layout design is not original
a: its making involved no intellectual effort by the maker; 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. Circuit Layouts Act 1989 s 11 (Aust)
7: Licence of owner of layout design rights
For the purposes of this Act, an act is done with the licence of the owner of layout design rights if doing that act is authorised by a licence binding the owner. 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 with an eligible layout design includes a reference to an integrated circuit made in accordance with a substantial part of the design. Circuit Layouts Act 1989 s 13 (Aust)
9: Reference to joint makers
Unless the context otherwise requires, a reference in this Act to the maker of an eligible layout design is, in relation to a jointly made eligible layout design, a reference to all the makers of the layout design. Circuit Layouts Act 1989 s 14 (Aust)
10: Application to layout designs made before commencement 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 does not lie under Part 4 Circuit Layouts Act 1989 s 7 (Aust)
11: Act to bind the Crown
This Act binds the Crown.
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: Where a layout design is made by a person under the terms of 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: The application of subsection (2) and subsection (3) to the layout design rights in a particular eligible layout design may be excluded or modified by agreement.
5: Where an eligible layout design has been made jointly by persons 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. 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: the right to copy the layout design, directly or indirectly, 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. Circuit Layouts Act 1989 s 17 (Aust)
14: Infringement of layout design rights
The layout design rights in an eligible layout design are infringed by any person who, during the protection period, 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 Circuit Layouts Act 1989 s 19 (Aust)
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 authorises the commercial exploitation of, an unauthorised integrated circuit in New Zealand, being an integrated circuit made in accordance with the layout design, if, at the time when the person acquired the integrated circuit, the person did not know, and could not reasonably be expected to have known, that the integrated circuit was unauthorised.
2: Where a person referred to in subsection (1)—
a: has in that person's possession or has contracted to purchase an integrated circuit that is unauthorised; and
b: becomes aware or could reasonably be expected to have become aware that the integrated circuit is unauthorised,— that subsection continues to apply to any subsequent commercial 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 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 design or with a copy of the layout design— solely for the private use of the person who makes the copy or copies or integrated circuit.
2: For the purposes of subsection (1), a copy of an eligible layout design, or an integrated circuit made in accordance with an eligible layout design or with a copy of such a layout design, is not to be taken to have been made for the private use of a person if the copy or integrated circuit is commercially exploited or distributed otherwise than by way of trade to an extent that will prejudice the interests of the owner of the layout design rights in the layout design. 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 design or with a copy of the layout design— solely for research or teaching purposes. 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 evaluation or analysis carried out with the use of a copy or copies referred to in paragraph (a); or
c: the making of an integrated circuit in accordance with an original layout design referred to in paragraph (b); or
d: copying or commercially exploiting in New Zealand an 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 an original layout design referred to in paragraph (b); or
d: copying or commercially exploiting in New Zealand an original layout design referred to in paragraph (b). 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 not an infringement of the layout design rights in the layout design if the person commercially exploits the copy or the integrated circuit in New Zealand.
2: Notwithstanding sections 12(3) 35 36
3: Expressions used in subsection (2) that are defined in the Copyright Act 1994 Circuit Layouts Act 1989 s 24 (Aust) Section 19(2) amended 1 January 1995 section 236(1) Copyright Act 1994 Section 19(3) amended 1 January 1995 section 236(1) Copyright Act 1994
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: for the defence or national security of New Zealand; or
b: for the purpose of assisting in a state of national emergency declared under section 66 and, before doing the act, the Crown, or the authorised person, as the case may be, having taken all reasonable steps to do so, has been unable to obtain the licence of the owner of the layout 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. Circuit Layouts Act 1989 s 25(1), (2) (Aust) Law and Justice Legislation Amendment Act 1990 s 47 (Aust) Section 20(1)﻿(b) amended 1 December 2002 section 117 Civil Defence Emergency Management Act 2002
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
3: Where an exclusive licence is in force in relation to any layout design rights, sections 20 22 23 Circuit Layouts Act 1989 s 25(6), (7) (Aust)
22: Duty to inform owner
1: Where an act has been done under section 20
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. Circuit Layouts Act 1989 s 25(3) (Aust)
23: Owner of layout design rights entitled to remuneration
Where an act is done under section 20 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 authorised by the chief executive of a department under section 20
b: any authorisation given by the chief executive of a department under that section; or
c: a determination by the Copyright Tribunal under 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: where the appeal is against an authorisation by the chief executive of a department, the chief executive; and
c: with the leave of the High Court, any other person— is entitled to appear and be heard.
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: require an account of profits to be taken as between the 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, and did not have reasonable grounds for suspecting, that the act constituting the infringement was an infringement,— 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, in proceedings in respect of an infringement of layout 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. 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, grant an injunction restraining a person from engaging in conduct that constitutes, or would constitute, an infringement of those rights.
27: Application of sections 28 to 34 to exclusive licensee
Sections 28 to 34 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 has under sections 25 26
2: The rights and remedies of the exclusive licensee are held concurrently with the owner but may not be exercised against the owner. 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 section 26
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,— the owner or licensee, as the case may be, is not entitled, except with the leave of the court, to continue those proceedings, in so far as they relate to that infringement, unless the licensee or owner, respectively, is joined as a party to the proceedings.
2: Nothing in subsection (1) applies to an application for an interim injunction by the owner of the layout design rights or an exclusive licensee. 1962 No 33 s 26(3) Circuit Layouts Act 1989 s 31 (Aust)
30: Defences in proceedings by exclusive licensee
In proceedings under section 25 section 26 1962 No 33 s 26(4) Circuit Layouts Act 1989 s 32 (Aust)
31: Assessment of damages where exclusive licence granted
1: Where, in proceedings to which section 29
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
2: In this section and sections 33 34 the other party 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
b: an account of profits is directed to be taken in respect of 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, apportion the profits between them in such manner as it considers just and shall give such directions as it considers appropriate for giving effect to that apportionment. 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
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. 1962 No 33 s 26(7) Circuit Layouts Act 1989 s 35 (Aust)
34: Liability for costs
Where, in proceedings to which section 29 1962 No 33 s 26(8) Circuit Layouts Act 1989 s 36 (Aust)
35: Presumptions
In proceedings under section 25 section 26
a: layout design rights shall be presumed to subsist in the layout design to which the proceedings relate if the defendant does not put in issue the question whether those 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 of the rights if it is alleged that the plaintiff is the owner of the rights and the defendant does not put in issue the question of ownership. 1962 No 33 s 27(1) Circuit Layouts Act 1989 s 37 (Aust)
36: Proof of certain facts
If, at the time when an eligible layout design, a copy of an eligible layout design, an integrated circuit made in accordance with an eligible layout design, or an article in which such an integrated circuit is incorporated, as the case may be, was first commercially exploited, the layout design, the copy, the integrated circuit or a package containing it, or the article was clearly and legibly labelled or marked so as to indicate the following claims, namely,—
a: that layout design rights subsisted in the layout design; and
b: that the person named on the label or mark as the maker of the layout design was the maker of the layout design 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 section 26
d: that at all material times any person dealing with the layout design, the copy, or the integrated circuit had knowledge of each of the claims specified in paragraphs (a) to (c); and
e: that the layout design was first commercially exploited in the year specified. 1962 No 33 s 27A 1985 No 134 s 7 Circuit Layouts Act 1989 s 39 (Aust)
5: Miscellaneous
37: Eligible countries
1: On the recommendation of the Minister, the Governor-General may by Order in Council declare that any entity specified in the order (whether a State, part of a State, a territory for whose international relations a State is responsible, a political union, an international organisation, or any other entity) is an eligible 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: New Zealand and the entity are both parties to an international agreement or arrangement relating to the protection of layout designs; or
b: provision is or will be made under the law of or applicable to the entity giving reciprocal protection to layout designs—
i: made by persons referred to in paragraph (a) or paragraph (b) of the definition in section 2
ii: first commercially exploited in New Zealand.
3: An order under this section is secondary legislation ( see Part 3 The following table is small in size and has 3 columns that are grouped under the heading Legislation Act 2019 requirements for secondary legislation made under this section. Legislation Act 2019 requirements for secondary legislation made under this section Publication PCO must publish it on the legislation website and notify it in the Gazette LA19 s 69(1)﻿(c) Presentation The Minister must present it to the House of Representatives LA19 s 114 cl 32(1)﻿(a) Disallowance It may be disallowed by the House of Representatives LA19 ss 115 116 This note is not part of the Act. Section 37 substituted 14 October 1999 section 2(1) Layout Designs Amendment Act 1999 Section 37(3) inserted 28 October 2021 section 3 Secondary Legislation Act 2021
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 coming into existence, that person purports to assign the future layout design rights, wholly or partly, to another person (in this subsection called the assignee
2: Where, at the time when a layout design right comes into existence, the person who would be entitled to the right is dead, the right devolves as if, immediately before the person's death, 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. Circuit Layouts Act 1989 s 44 (Aust)
39: Assignments and licences of layout design rights
1: Layout design rights are personal property and, subject to this section, are capable of assignment and may pass by will or by 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 rights has the exclusive right to do (including a class of acts that is not separately specified in this Act as being comprised in layout design rights but falls within a class 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: An assignment of layout design rights, whether total or partial, 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 owner of the right binds every successor in title to the interest in the right of the grantor of the licence, except—
a: a purchaser in good faith for valuable consideration and without notice, actual or constructive, of the licence; or
b: a person deriving title from such a purchaser— to the same extent as the licence was binding on the grantor. 1962 No 33 s 56(4) Circuit Layouts Act 1989 s 45
40: Groundless legal proceedings
1: Subject to this section, where a person commences proceedings alleging an infringement of layout design rights in an eligible 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: make an order for the payment of damages for any loss suffered by the person against whom the proceedings were brought.
2: A court shall not grant relief under this section if the defendant 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: No proceedings may be commenced under this section against 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. Copyright, Designs and Patents Act 1988 s 253 (UK) Circuit Layouts Act 1989 s 46 (Aust)
41: Amendments to Copyright Act 1962
Section 41 repealed 1 January 1995 section 236(1) Copyright Act 1994
42: Amendment to Commerce Act 1986
(1), (2): Amendment(s) incorporated in the Act(s).