Peterson v Lucas [2015] NZCA 627 (18 December 2015)

Last Updated: 20 January 2016

IN THE COURT OF APPEAL OF NEW ZEALAND
CA295/2015 [2015] NZCA 627
BETWEEN	CARL JAMES PETERSON Appellant
AND	WARREN GEOFFREY LUCAS Respondent

Hearing:	11 November 2015
Court:	Winkelmann, Courtney and Clifford JJ
Counsel:	Appellant in person J C Dickson and J N Cooke for Respondent
Judgment:	18 December 2015 at 1 pm

JUDGMENT OF THE COURT

1. The application for leave to adduce further evidence is declined.
2. The appeal is dismissed.

100. The appellant must pay the respondent costs for a standard appeal on a band A basis with usual disbursements.

____________________________________________________________________

REASONS OF THE COURT

(Given by Winkelmann J)

Introduction

[1] The appellant, Mr Peterson, has been involved in litigation with the respondent, Mr Lucas, members of the Lucas family, and Lucas-associated business entities since the late 1990s. The litigation has concerned intellectual property issues between the parties. Earlier this year, Fogarty J struck out a claim commenced by Mr Peterson on the grounds that it was an abuse of process, because it was an attempt to re-litigate issues and events that had already been considered and disposed of in earlier litigation.^[1] Mr Peterson appeals that judgment on the grounds that Mr Peterson’s new proceeding involved separate and independent causes of action not previously determined by the courts, and so should not have been struck out.

Background

Procedural context

[2] The procedural background to this appeal is lengthy, but provides a necessary backdrop to the issues for us to determine. We adopt the summary of part of the procedural history set out in the judgment of Fogarty J as follows:

[4] Mr Peterson and Mr Lucas have been litigating since the late 1990’s. The litigation began with Mr Lucas and his company claiming damages and infringement of a patent for portable sawmills on the part of Mr Peterson and his company. The Lucas family succeeded in the High Court,^[2] and in the Court of Appeal in 2005.^[3] Mr Peterson succeeded in the Supreme Court in 2006.^[4] The particular issue decided was whether Claim 7 of the New Zealand patent claim, the Lucas claim, was invalid on the grounds of lack of novelty and obviousness. The Court held it was so invalid.

[5] The litigation continued. In the wake of the Supreme Court judgment, the Lucas family made an application to amend their patent. Later they gave up and discontinued their proceeding against Mr Peterson and his company in July 2009. The judgment of Priestley J awarding some costs to Mr Peterson records:

To some extent his ultimate victory in the Supreme Court has turned to ashes. The second defendant’s vehicle for commercial activities went into liquidation. His financial losses are, I am sure, considerable.^[5]

[6] In November 2009, Mr Peterson commenced personal proceedings alleging infringement of copyright by the defendants. The Lucas family sought security for costs based on Mr Peterson’s likely insolvency. They failed before Associate Judge Doogue but succeeded in the judgment of Woodhouse J reviewing the Associate Judge’s decision. He made an order for security of costs of $10,000.^[6]

[7] The matter came again before the High Court in March 2012, based on a dispute as to an alleged settlement agreement arising out of a telephone call between Mr Warren Lucas and Mr Peterson in the afternoon of 3 October 2011. Mr Lucas made the call to endeavour to persuade Mr Peterson to drop those copyright proceedings. Following that call, a settlement agreement was signed. But Mr Peterson regretted the settlement.

[8] As a result, the Lucas family applied to strike out the plaintiff’s claim on the grounds that the parties had entered into a settlement. There was also related litigation in the Court of Appeal on the subject of the security for costs.

[9] The issue on the strike out application was whether or not there had been a settlement. One of the arguments against the enforceability of the settlement discussion was a contention of Mr Peterson that there was a threat to take legal proceedings against him which constituted duress.^[7]

[10] There is no real dispute between the parties as to the substance of the telephone call and its sequel. Mr Warren Lucas called Mr Peterson. The call lasted about an hour. Mr Lucas said he tried to talk Mr Peterson out of pursuing the claims Mr Peterson was making against him. Mr Peterson told him he had nothing to lose and everything to gain by continuing litigation. Mr Lucas said he asked Mr Peterson if he was familiar with the patent for the Stubbe sawmill (a US sawmill). Mr Peterson said he was. Mr Lucas said he told Mr Peterson that one of his companies owned the worldwide copyright associated with the Stubbe sawmill. He told Mr Peterson that if Mr Peterson ceased legal action on both the copyright and patent fronts, then he, Mr Lucas, would not take action against Spectrum Innovations Limited, a company run by Mr Peterson and his son, which manufactured a sawmill called the Turbo saw, which it is acknowledged shared some aspects of the Stubbe sawmill. There was then a discussion about a payment of money to resolve matters. In short, a sum was agreed. It was later converted to New Zealand dollars.

[11] There followed an exchange of emails, sent by the Lucas family’s solicitors, setting out the terms of a settlement which were eventually accepted by Mr Peterson on 4 October 2011. The High Court was advised that the parties had reached an agreement to settle. Shortly after, Mr Peterson advised he did not intend to settle and that was on 12 October 2011. That became the context of the issue before Associate Judge Bell as to whether or not there had been a settlement.

[3] We pick up the narrative again at this point. Associate Judge Bell granted an application to strike out Mr Peterson’s claim in the proceeding (the Peterson copyright proceeding), on the grounds that the parties had entered into a settlement. Mr Peterson had resisted the application. He argued he was not bound by the settlement as his agreement to it was vitiated by duress applied by Mr Lucas in the form of a false and therefore illegitimate threat of taking copyright proceedings. Mr Peterson said that Mr Lucas knew he had no right to bring such proceedings, and so the implicit threat constituted a misrepresentation.
[4] The Associate Judge rejected this argument. He said that the law recognises, generally, that one party is entitled to raise the threat of legal proceedings as a basis for negotiating an agreement.^[8] He construed Mr Peterson’s argument as an allegation that Mr Lucas was acting dishonestly by making a bogus threat. As to that the Associate Judge said:^[9]

If Mr Peterson wants the court to take allegations of dishonesty seriously, he has to put before the court something more substantial than what he has done in this proceeding. On the evidence before the court, I cannot see here that there was any dishonesty on the part of Mr Lucas in negotiations on 3 October 2011.

[5] Mr Peterson applied to review this decision. The application for review was heard and dismissed by Gilbert J.^[10] Before Gilbert J Mr Peterson argued the Associate Judge had been wrong to conclude summarily, without hearing all of the evidence, that Mr Lucas genuinely believed that he was entitled to bring copyright proceedings, and his threat to do so was therefore legitimate. The Judge said that on the basis of the evidence before the Associate Judge he agreed that Mr Peterson had not made out an arguable case that Mr Lucas’ threat was illegitimate in the sense that he did not genuinely believe that he had a right to bring such a proceeding.^[11] He then reviewed additional evidence that Mr Peterson had filed on this point and said of this argument:^[12]

The difficulty with this is that Mr Peterson’s own evidence supports Mr Lucas’ contention that he was entitled to bring the proceedings. Mr Peterson acknowledges that there are similarities between the Stubbe sawmill and the Turbo sawmill and that Mr Lucas “might have a real cause of action” although he believes that this is “extremely remote”. Even accepting Mr Peterson’s evidence at face value, the Court could not infer that Mr Lucas did not genuinely believe that he was entitled to bring the proceeding and that his threat to do so was illegitimate

[6] The Judge observed that even if the threat was illegitimate, it did not necessarily follow that Mr Peterson was arguably entitled to avoid the settlement agreement on the grounds of duress.^[13] Mr Peterson would also have to establish that the threat had coerced him into settling. The Judge said that in light of uncontested facts, Mr Peterson’s assertion that he was coerced into accepting the settlement by the threat of proceedings was untenable.^[14]
[7] Mr Peterson’s application to appeal this decision to the Court of Appeal was declined.^[15] Mr Peterson then sought special leave of the Court of Appeal to bring that appeal and that application was also declined.^[16] He then applied to the Court of Appeal to vacate its judgment and/or for a stay of the judgment and for leave to adduce new evidence. This Court treated the application to vacate as an application for recall. It dismissed both applications.^[17] The reasons given for dismissing the applications are relevant to the present issues before the Court today, and we repeat them here:

[3] As we read Mr Peterson’s application, his primary submission is that the judgment should be recalled because there are two relevant provisions to which our attention was not drawn. It is well established that a judgment will only be recalled on this basis where the provision that has not been referred to is of “plain relevance”.^[18]

[4] The first of the provisions on which Mr Peterson now relies is s 34 of the Designs Act 1953. The second provision to which he now refers is art 5 of the Berne Convention for the Protection of Literary and Artistic Works.^[19]

[5] Section 34(1) of the Designs Act provides that where any person threatens another with proceedings for infringement of the copyright in a registered design, the person aggrieved by the threat may bring an action for relief as set out in s 34(2). Section 34(2) provides that unless, in an action brought under this section, the defendant proves that “the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of the copyright in a registered design the registration of which is not shown by the plaintiff to be invalid”, the plaintiff is entitled to the relief specified. The available relief includes a declaration that the threats are unjustifiable and damages.

[6] Of the equivalent provisions in the United Kingdom,^[20] the Hon Sir Hugh Laddie noted that they arose from concerns in the second half of the nineteenth century that patent litigation was so “complicated and expensive that it was believed that the mere threat of it could seriously damage a competitor’s business”.^[21]

[7] The reference Mr Peterson now makes to s 34 seems to relate to his argument that the courts below were wrong not to consider the legitimacy of Mr Lucas’ threat to Mr Peterson to bring proceedings for breach of copyright. However, as we noted in our decision declining leave, Gilbert J did consider the position on the basis that it was not legitimate to threaten to bring such proceedings to force a settlement. But, the Judge concluded, Mr Peterson’s argument that this is what had occurred failed on the facts. He found that the threat did not coerce Mr Peterson into settlement. Reliance on s 34 cannot therefore alter the assessment that Mr Peterson’s proposed appeal does not meet the threshold for a second appeal. At the heart of Mr Peterson’s argument is a complaint about a factual assessment rather than a question of law.

[8] Article 5 of the Berne Convention provides, amongst other matters, that protection in the country of origin “is governed by domestic law”.^[22] We understand the potential relevance of this provision is to Mr Peterson’s argument that the threatened proceedings had no merit and were therefore illegitimate. Mr Peterson says that art 5 makes it clear he was able to draw assistance from s 74 of the Copyright Act 1994.

[9] Section 74 provides that the making of a three-dimensional object does not infringe copyright in a literary or artistic work in certain circumstances, for example, where the work or copy forms part of a patent specification open to inspection here in relation to a New Zealand patent. We do not see art 5 alters our conclusion on this aspect, namely that s 74 does not assist Mr Peterson’s case.^[23]

[10] None of the other matters raised by Mr Peterson meets the test for a recall. Ultimately, the matters raised are a “recasting [of] arguments previously given” or putting forward other arguments that “could have been raised at the earlier hearing but were not”.^[24]

[8] The Court then invited submissions from the parties as to various directions sought by the Lucas parties in relation to remaining appeals filed by Peterson interests.^[25] In a judgment issued in February 2014, this Court struck out all

remaining appeals in the proceeding between the parties.^[26] Its reasons for doing so were given shortly as follows:

[6] It is plain that these appeals all come within the scope of the settlement agreement entered into between the two sets of interests which was the subject of Gilbert J’s judgment. The effect of our judgment declining special leave to appeal from the judgment of Gilbert J is that the settlement agreement stands. Strike-out of these remaining appeals is accordingly appropriate and we make an order to that effect.

[9] In that judgment the Court also dealt with a further memorandum that Mr Peterson had filed with the Court after the first decision dismissing the application for recall. The Court said:

[9] Mr Peterson in his memorandum in response says he will continue to “press for damages under Section 34 of the Designs Act 1953 firstly to formally prove the illegitimacy of the Lucas threat, secondly on that basis to apply for a second recall of the present Court of Appeal ruling”, that is, the judgment of 30 September 2013 in CA768/2012. It is not clear to us whether Mr Peterson is making a further recall application. For completeness, we proceed on the basis that a further application for recall has been made. However, no good reason is advanced for us to depart from our earlier decision declining a recall. The further application for recall is accordingly dismissed.

The proceedings the subject of the present appeal

[10] In October 2014 Mr Peterson filed these fresh proceedings against Mr Warren Lucas, which for ease of reference, we refer to as the new proceedings. The statement of claim commences with the following allegation (by way of background facts):

(1) Mr Carl Peterson, the plaintiff, has been engaged with members of the Australian Lucas family and the Lucas family business for a number of years in litigation relating to groundless patent infringement claims against the plaintiff, alleged copyright infringement claims against the Lucas family members and Lucas family company, a patent revocation application against the Lucas New Zealand patent, and duress relating to a threat Warren Lucas made to the plaintiff to begin a new copyright infringement against the plaintiff and his own family members unless he discontinued all proceedings against the Lucas interests. The illegitimate nature of that threat lays the basis for the present claim against Warren Lucas.

[11] The next several paragraphs take the form of a narrative of procedural events leading up to the Court of Appeal’s refusal to recall its judgment. Mr Peterson then alleges:

(9) It is now clear to the plaintiff that a counter-claim for groundless threats of copyright infringement would have been appropriate at the time of the first High Court hearing. However, this was far from obvious at that time whereas there had been no or little damages affect which could be claimed until after the Peterson claims had been struck off, and Peterson’s duress counterclaim had failed.

(10) The landscape has now changed considerably. Mr Peterson has, at least temporarily, lost the right to his legitimate claims against groundless proceedings of patent infringement levelled against him, against Lucas copyright infringement of Peterson designs, and against the Peterson application to revoke the Lucas New Zealand patent. Mr Peterson may also have temporarily lost the right to begin new copyright infringement proceedings against the Lucas interests in Australia which may, arguably, be impacted in some way by the enforced settlement agreement.

[12] Mr Peterson then repeats the allegations regarding threats made by Mr Lucas as to the prospect of a copyright infringement proceeding, but comes to the nub of the claim in the new proceedings at paragraphs 12, 13 and 14 as follows:

(12) The Lucas threat to Mr Peterson is already a matter of the court record. Section 34 of the Design Act 1953 makes it clear that the onus now falls on Warren Lucas to prove the legitimacy of his threat or face the damages claim against him.

(13) Section 74 of the New Zealand Copyright Act 1994 mandates that an abandoned New Zealand published patent document cannot be copyright infringed in the making of a three dimensional model from that document. This follows the purpose and principle of patent law; that for a patent monopoly to be granted for the exclusive and time-limited use by the patentee, it must also be published so that the general public can make use of it once the monopoly ceases to be in force.

(14) Article 5 of the Berne Convention for the protection of literary and artistic works mandates that any claim for copyright protection or infringement must be tested under the laws of the country in which the claim is raised. Thus the United States Stubbe patent design, both published and abandoned in the United States, must surely fall under the gamut of s 74 of the New Zealand Copyright Act 1994. It is absurd to consider that a published and abandoned United States patent will be accorded special rights, powers or exemptions not available for local New Zealand art.

[13] Mr Peterson then seeks the following remedies:

• (a) a ruling that the Lucas threat of copyright infringement was a breach of s 34 of the Designs Act 1953.
• (b) an inquiry as to damages for various loss of opportunities which flow from the settlement agreement. The loss is said to flow from the lost opportunity to pursue the Lucas interests for:
  • (i) breach of copyright in the Peterson copyright proceedings;
  • (ii) asserting groundless copyright claims against Mr Peterson and his interests;
  • (iii) breach of copyright in Australia; and
  • (iv) the inability to challenge the continuation of the “illegitimate Lucas New Zealand patent numbered 282742 which has been ruled by the Supreme Court to be at least in part invalid”;
• (c) recall of the judgments of Associate Judge Bell and Gilbert J so that Mr Peterson’s various claims against the Lucas interests can be heard in their entirety on their merits;^[27]
• (d) in the alternative to recall of the judgments, damages resulting from a loss of opportunity in regards to those claims outlined in (b) above; and
• (e) Two global awards of damages each in the sum of $100,000. One for effort spent, compensation of costs, disbursements, mileage and emotional stress related to the more than three years during which Mr Lucas’ threat led Mr Peterson to understandably believe that the settlement agreement was unenforceable and vitiated by duress caused by the illegitimate threat. The other for loss of income during those three years in which he pursued proceedings.

High Court judgment the subject of this appeal

[14] Mr Lucas applied for summary judgment or in the alternative for an order striking out Mr Peterson’s claims. The summary judgment and strike-out applications were brought on the grounds that the claims against Mr Lucas could not possibly succeed. The application for summary judgment was brought on the additional ground that the new proceeding was an abuse of the processes of the court because Mr Peterson was seeking to re-litigate issues and disputes that had been finally determined in the judgments set out above, and moreover that had been finally settled in a binding agreement.
[15] Fogarty J struck out the new proceeding.^[28] He declined to consider the merits of Mr Peterson’s claim under s 34 of the Designs Act. He said:^[29]

All the arguments by all the contentions now pleaded by Mr Peterson either were or could have been argued in the litigation to date. It is not a ground for reopening argument that the litigant has a better understanding of the law and could have improved upon the case. Nor is there any basis for reopening the litigation in the High Court against the submission that previous decisions of the Court of Appeal in the same dispute were wrong.

[16] The Judge found that Mr Peterson’s latest claim arose out of precisely the same events that had been addressed in earlier litigation. He said that the principle of issue estoppel applied as there were decisions against Mr Peterson on the critical issues.^[30] He was satisfied the proceeding was an abuse of process in light of the important common law principle that there is a community interest in the finality of litigation.

Appellant’s arguments

[17] Mr Peterson says that the Judge was wrong to view this claim as a mere repetition of earlier claims and as giving rise to an issue estoppel. The Judge failed to take into account that the new proceeding is not between the same parties who were involved in earlier litigation. It is a claim against Mr Warren Lucas only. The other six defendants in the Peterson copyright proceeding are not joined as parties, and will not formally be involved unless and until this Court, after having reviewed the additional evidence Mr Peterson now has, decides that the judgments in the Lucas and Peterson copyright litigation should be recalled in the interests of justice.
[18] Moreover Mr Peterson says the claim made in the new proceeding is different. It is narrower in scope than issues considered in earlier proceedings, and based upon a different sequence of facts. Its essence is Mr Peterson’s claim that he suffered loss because of his belief that the threat was illegitimate from its conception. Because of that belief he expended most of his settlement proceeds and a large amount of time, energy and substantial disbursements on resisting the Lucas’ claim that the settlement was binding. He acknowledges that Gilbert J made a finding that he was not coerced by Mr Lucas’ threats into settling. But even if that is correct, it does not follow that the illegitimacy of what Mr Lucas did, did not entice him into resisting the settlement. He says it is resisting the settlement which caused him the loss.
[19] Further distinguishing the claim is that the loss he now claims did not materialise until the final discontinuance of the various longstanding claims. Up until that point Mr Peterson claims to have had reasonable prospects of recovering his costs and damages as part of a global award arising from successful litigation.
[20] Mr Peterson argues that Fogarty J erred in not going into the merits of his claim under s 34 of the Designs Act. If he had, he would have seen that the implicit threat made by Mr Lucas when referring to the Stubbe sawmill patent during the telephone conversation prior to the October 2011 settlement agreement was a breach of s 34 of the Designs Act. In the absence of consideration of the merits of the claim in the new proceeding, his decision striking out the claim was an abuse of Mr Peterson’s rights under the New Zealand Bill of Rights Act 1990.
[21] Mr Peterson also seeks leave to adduce fresh evidence in the form of an affidavit from his daughter, Kerris Tasha Browne. Mr Peterson says that the affidavit clearly establishes “the facetious, illegitimate, and fraudulent nature of the Lucas threat, and the Lucas motive for making the threat”. Mr Peterson says that this is fresh evidence. Although it was relevant to the strike-out application in the new proceeding, he could not have adduced it at that time. He was estranged from his daughter, and their reconciliation has only recently occurred.

Analysis

Application to adduce further evidence

[22] The evidence of Ms Browne is to the effect that in mid2010, a year before the settlement, Mr Warren Lucas telephoned her and invited her to share in the purchase of the Stubbe intellectual property embodied in an abandoned United States Stubbe patent. This was at a time she was also in dispute with Mr Peterson. Mr Lucas said he was doubtful of being able to utilise the Stubbe intellectual property in his own litigation battle with Mr Peterson, and was not confident of pursuing it by himself.
[23] Ms Browne says she responded that she did not need the Stubbe patent as it was abandoned and now in the public domain. She claims Mr Lucas seemed to indicate he did not have any valid claims of his own against Mr Peterson.
[24] Her explanation for the timing of the affidavit is that she has been estranged from her father for many years following an employment disagreement, but due to some level of reconciliation occurring she is now prepared to come forward with this information.
[25] The application is governed by the provisions of r 45 of the Court of Appeal (Civil) Rules 2005. In order to admit additional evidence under r 45, the Court must usually be satisfied the evidence is fresh, credible and cogent.^[31]
[26] We do not consider that the evidence is fresh. Ms Browne filed an affidavit for her father in the Peterson copyright proceedings in the context of the dispute about the enforceability of the settlement agreement. In that affidavit, dated 4 December 2012, she referred to conversations with Mr Peterson that took place in October and November 2011. Even if Mr Peterson and Ms Browne were estranged until recently, it is clear Ms Browne was prepared to provide affidavit evidence to assist her father during the course of that estrangement, and in fact did so. The estrangement was not therefore so complete that Ms Browne would not assist her father with his dispute with Mr Lucas. It follows that this information was available to Mr Peterson well in advance of the hearing before Fogarty J.
[27] We also do not view the evidence as cogent, because it is not relevant to any issue arising on this appeal. Ms Browne’s evidence relates to Mr Peterson’s claims, already argued and disposed of in earlier proceedings, that the threats made by Mr Lucas preceding the settlement agreement were illegitimate.
[28] We therefore have decided to decline the application for leave to adduce this evidence.

Abuse of process issue

[29] We see no reason to differ from the findings made by Fogarty J when striking out the new proceeding as an abuse of process. As the Judge found, the principle of issue estoppel applies in this case. In earlier proceedings between Mr Peterson and Mr Lucas and other parties, Mr Peterson challenged the legitimacy of the threat made by Mr Lucas and by that means challenged the enforceability of the alleged settlement of that proceeding. It does not matter that the parties are not identical across all of the proceedings. Mr Peterson and Mr Lucas were parties to the Peterson copyright proceedings and it was within the context of that proceeding that the issues regarding the enforceability of the settlement agreement were resolved.
[30] Through the vehicle of s 34 Mr Peterson again seeks to challenge the legitimacy of Mr Lucas’ threat of action, and, as his Statement of Claim makes clear, also seeks to revive his ability to pursue the very claims which were earlier held to be settled.
[31] Mr Peterson now says that he did not argue before Associate Judge Bell and Gilbert J the allegation he seeks to advance that the threat involved a breach of s 34 of the Designs Act. The answer to this proposition is that set out in Fogarty J’s judgment:^[32]

[32] One of the deep-seated principles of the law is that parties must bring their whole case before the Court so that all aspects of it may be finally decided once and for all. The leading decision is that of Henderson v Henderson.^[33] Henderson v Henderson has been discussed in many cases. It is sufficient to refer to Asher J’s decision in Rafiq v Secretary for Department of Internal Affairs of New Zealand.^[34]

[32] In Rafiq v Secretary for Department of Internal Affairs of New Zealand Asher J said:^[35]

A party cannot bring a case relating to a certain party, certain sequences of conduct, and a certain timeframe, and then when it fails bring another case raising another similar complaint relating to the same party, the same sequence and the same timeframe. Parties must bring their whole case to the Court so there can be finality of litigation.

[33] We note that Mr Peterson raised the effect of s 34 of the Designs Act in support of one of the applications he made for recall of this Court’s judgment in the Peterson copyright proceeding. This Court said:^[36]

[7] The reference Mr Peterson now makes to s 34 seems to relate to his argument that the courts below were wrong not to consider the legitimacy of Mr Lucas’ threat to Mr Peterson to bring proceedings for breach of copyright. However, as we noted in our decision declining leave, Gilbert J did consider the position on the basis that it was not legitimate to threaten to bring such proceedings to force a settlement. But, the Judge concluded, Mr Peterson’s argument that this is what had occurred failed on the facts. He found that the threat did not coerce Mr Peterson into settlement. Reliance on s 34 cannot therefore alter the assessment that Mr Peterson’s proposed appeal does not meet the threshold for a second appeal. At the heart of Mr Peterson’s argument is a complaint about a factual assessment rather than a question of law.

[34] Mr Peterson says however that he raises a fresh point in the new proceeding. He no longer argues that the damage caused to him by the illegitimate threat was his agreement to settle obtained under duress. Rather, the damage is that the illegitimacy of the threat caused him to resist being bound by the settlement agreement, an attempt to which he devoted three years of his life and considerable wasted expenditure. There is a fatal illogicality in this argument. If the settlement agreement is legally enforceable against Mr Peterson, as it has repeatedly been found to be, he cannot seek damages for loss caused by his own actions in resisting the validity of that agreement. To the extent Mr Peterson points to s 34 of the Designs Act to bolster his claim that the threat was illegitimate, he then simply restates the same argument as had been considered and disposed of by this Court.
[35] The circuitous nature of the allegations in the new proceeding and in the argument presented in support of the appeal make plain that the new proceeding is an abuse of process. So too does the relief Mr Peterson seeks. It is clear that the new proceeding is yet another attempt to re-open issues between Mr Peterson and the Lucas interests which have already been the subject of proceedings, and disposed of by the courts.

Merits of the claim

[36] Mr Peterson complains that the Judge was wrong not to consider the merits of his Designs Act argument. In our view the Judge was quite correct to take that approach in view of the principle in Henderson v Henderson as set out above.^[37] We do not see that this engages considerations under s 27 of the New Zealand Bill of Rights Act. The procedures involved in the hearing and disposition of the application to strike out the new proceeding complied fully with the requirements of natural justice. Mr Peterson has no absolute entitlement to continue to pursue his claims in court. Access to the courts is subject to common law principle and rules of civil procedure which prevent the courts’ processes being abused.
[37] The point we have reached therefore is that we agree with Fogarty J that Mr Peterson’s new proceeding is an abuse of process because he is attempting to revisit claims and issues already settled in earlier proceedings. Even if there were no abuse of process issue affecting his claim under the Designs Act, we have concluded that for the following reasons the claim nevertheless had no prospect of success and was amenable to strike out on that ground also.
[38] The new proceeding focuses upon the allegation that Mr Peterson had a claim under s 34(2) of the Designs Act. Section 34 of the Designs Act provides:

34 Remedy for groundless threats of infringement proceedings

(1) Where any person (whether entitled to or interested in a registered design or an application for registration of a design or not) by circulars, advertisements, or otherwise threatens any other person with proceedings for infringement of the copyright in a registered design, any person aggrieved thereby may bring an action against him for any such relief as is mentioned in subsection (2).

(2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of the copyright in a registered design the registration of which is not shown by the plaintiff to be invalid, the plaintiff shall be entitled to the following relief, that is to say:

(a) a declaration to the effect that the threats are unjustifiable; and

(b) an injunction against the continuance of the threats; and

(c) such damages, if any, as he has sustained thereby.

(3) For the avoidance of doubt it is hereby declared that a mere notification that a design is registered does not constitute a threat of proceedings within the meaning of this section.

[39] Before the possibility of a claim under s 34(2) arises, it must first be shown that there has been a threat to bring proceedings for infringement of the copyright in a registered design. In deciding this issue the question is whether the language of the alleged threat would convey to any reasonable person that the person making the alleged threat intended to bring proceedings for infringement against the recipient of the threat.^[38] A mere threat to bring proceedings for breach of copyright is not enough. It must be a threat to bring proceedings for breach of copyright in a registered design.^[39]
[40] Mr Peterson argues that Mr Lucas’ agreement not to bring copyright infringement claims against him based on the Stubbe sawmill should be construed as incorporating a promise by Mr Lucas not to bring a claim for infringement of copyright in a registered design. He points out that Associate Judge Bell made clear in his judgment of 12 March 2012 that the promise not to bring copyright infringement proceedings was part of the settlement agreement.^[40] Mr Peterson says this must include a promise not to bring proceedings for breach of copyright in a registered design. It follows he says, there was an implicit threat to bring such proceedings.
[41] It is possible that an agreement to settle all copyright disputes could be construed as preventing Mr Lucas from bringing a claim for breach of copyright in a registered design. But that is not the issue before us. Even if that is a proper construction of the agreement, agreeing to a global settlement of all claims between the parties is not the same as threatening to bring a claim for breach of copyright in a registered design.
[42] Mr Peterson also argues that the threat to bring a copyright infringement claim could only have been a threat to sue for breach of registered design as all other copyright claims were barred by s 74 of the Copyright Act and Art 5 of the Berne Convention. We do not address the merits of the argument that s 74 and the Berne Convention barred the possibility of other copyright claims because, even if we assume that to be the legal position, there is no implication which flows from the threats made by Mr Lucas that would convey to a reasonable person that he intended to bring proceedings for breach of the copyright in a registered design.
[43] Mr Peterson calls in aid of his argument the agreement for assignment of intellectual property from Stubbe to Lucas Mill International Pty Limited. This is the agreement by which Mr Lucas acquired the intellectual rights to the Stubbe sawmill. In that agreement the intellectual property assigned is defined to include:

... all trademarks (including logos, and trade dress), domain names, copyright, patents, registered designs, petty patents, utility models, rights and inventions, confidential information, ... anywhere in the world now or in the future, and all rights of action, powers and benefits in respect of the same.

[44] Mr Peterson says that this is evidence that Mr Lucas was asserting rights to registered designs. However we view the content of this agreement as irrelevant to Mr Peterson’s claim. There are difficulties with Mr Peterson’s reliance upon this document. He does not claim he was given a copy of the assignment agreement at the time that the settlement was negotiated. It follows that its contents can play no part in determining what would be conveyed to a reasonable person by what Mr Lucas said to Mr Peterson. And then, even if the assignment agreement had been provided to Mr Peterson before the settlement was reached, there is no statement in that document to the effect that the rights assigned included a New Zealand registered design.
[45] For these reasons Mr Peterson’s claim under the Designs Act against Mr Lucas had no prospect of success.
[46] Finally, we note that in the course of argument Mr Peterson contended that there were errors in the factual findings of Gilbert J. However this is not an appeal from that decision. Such arguments are beyond the scope of this appeal.

Result

[47] The application for leave to adduce further evidence is declined.
[48] The appeal is dismissed.
[49] The appellant must pay the respondent costs for a standard appeal on a band A basis together with usual disbursements.

Solicitors:
Simpson Grierson, Auckland for Respondent

---

^[1] Peterson v Lucas [2015] NZHC 721 [The new proceeding].

^[2] Lucas v Peterson Portable Sawing Systems Ltd [2003] 3 NZLR 361 (HC).

^[3] Peterson Portable Sawing Systems Ltd v Lucas CA64/03, 4 March 2005.

^[4] Peterson Portable Sawing Systems Ltd (in liq) v Lucas [2006] NZSC 20, [2006] 3 NZLR 721.

^[5] Lucas v Peterson Portable Sawing Systems Ltd (in liq) HC Auckland CIV-2001-404-3668, 2 December 2009 at [58].

^[6] Peterson v Lucas Mills Pty Ltd HC Auckland CIV-2009-404-7762, 23 December 2010 at [53].

^[7] Peterson v Lucas Mill Pty Ltd [2012] NZHC 1101 at [42] [The Peterson copyright proceeding].

^[8] The Peterson copyright proceeding, above n 7, at [46].

^[9] At [49].

^[10] Peterson v Lucas Mill Pty Ltd [2012] NZHC 2398.

^[11] At [32].

^[12] At [34].

^[13] At [35].

^[14] At [42].

^[15] Peterson v Lucas Mill Pty Ltd [2012] NZHC 2830.

^[16] Peterson v Lucas [2013] NZCA 453.

^[17] Peterson v Lucas [2013] NZCA 641.

^[18] Horowhenua County v Nash (No 2) [1968] NZLR 632 (SC) at 633.

^[19] Berne Convention for the Protection of Literary and Artistic Works 1161 UNTS 30 (signed 9 September 1886, entered into force 4 December 1887).

^[20] Registered Designs Act 1949, s 26.

^[21] Hugh Laddie, Peter Prescott and Mary Vitoria The Modern Law of Copyright and Designs (4th ed, LexisNexis, London, 2011) vol 2 at [61.3].

^[22] Article 5(3).

^[23] Peterson v Lucas above n 16, at [20].

^[24] Faloon v Commissioner of Inland Revenue [2006] NZHC 303; (2006) 22 NZTC 19,832 (HC) at [13].

^[25] Peterson v Lucas CA 40/2010, 21 June 2013 and 11 December 2013.

^[26] Peterson v Lucas [2014] NZCA 6. This involved striking out the appeals in CA40/2010, CA651/2011, CA766/2012 and CA767/2012.

^[27] The Peterson copyright proceeding, above n 7; Peterson v Lucas, above n 10.

^[28] The new proceeding, above n 1.

^[29] At [30].

^[30] At [31].

^[31] Rae v International Insurance Brokers (Nelson Marlborough) Ltd [1998] 3 NZLR (CA) at 192; Aotearoa International Ltd v Paper Reclaim Ltd [2006] NZSC 59, [2007] 2 NZLR 1 at [6], n 1; and Erceg v Balenia Ltd [2008] NZCA 535 at [15].

^[32] The new proceeding, above n 1.

^[33] Henderson v Henderson [1843] EngR 917; (1843) 3 Hare 100, 67 ER 313 (Ch).

^[34] Rafiq v Secretary for the Department of Internal Affairs of New Zealand [2014] NZHC 2064.

^[35] At [21].

^[36] Peterson v Lucas, above n 17.

^[37] Henderson v Henderson, above n 35.

^[38] U and I Global Trading (Aust) Pty Ltd v Tasman Warajay Pty Ltd [1995] FCA 1581, (1995) FCR 26 at 31; Best Buy Co Inc v Worldwide Sales Corpn Espana SL [2011] EWCA Civ 618, Bus LR 1166 at [18].

^[39] T & A Textiles and Hosiery Ltd v Halan Textile UK Ltd [2015] EWHC 2888 at [80].

^[40] The Peterson copyright proceeding, above n 7, at [40].