TVBO Production Limited v Digilink NZ Limited [2013] NZHC 2809 (23 October 2013)

Last Updated: 22 November 2013

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2013-404-004523 [2013] NZHC 2809

BETWEEN TVBO PRODUCTION LIMITED First Plaintiff

WORLD TV LIMITED Second Plaintiff

AND DIGILINK NZ LIMITED First Defendant

CARLTON HUAFANG SU Second Defendant

Hearing: 23 October 2013

Counsel: A Gilchrist for Plaintiffs

No appearance for Defendants

Judgment: 23 October 2013

_{JUDGMENT OF ASHER J}

Solicitors/Counsel:

Sargent Lawyers, Auckland.

A Gilchrist, Auckland.

TVBO PRODUCTION LTD v DIGILINK NZ LTD [2013] NZHC 2809 [23 October 2013]

[1] This is an interim injunction application on notice seeking a variety of orders effectively stopping the first and second defendants from selling or leasing decoder boxes which enable New Zealand residents to access programmes owned or subject to the exclusive licence of the plaintiffs. The programmes are produced by the first plaintiff which is a significant creator and broadcaster of television programmes in Hong Kong. These programmes are popular with the Chinese community in New Zealand.

[2] The causes of action are based on breach of copyright and breach of the Fair Trading Act. There is on the papers a serious question to be tried. I have already addressed a similar issue involving the same plaintiffs in my judgment TVBO Production Ltd v Zhou.¹

[3] I have an affidavit as to service of proceedings on the first defendant. Proceedings have been served on the registered office of the first defendant being RPL Accountants Ltd at Level 1, VTR House, 24 Manukau Road, Epsom. Mr Ben Lim, who was the person served at that accounting firm, has written a letter to Mr Gilchrist who appears for the plaintiff stating:

We refer to your letter of 21/10/13 concerning injunction proceedings served on the First Defendant.

We understand that the director of the company has been overseas in China on a business trip since 12/10/13.

With great regrets, we are unable to inform the First Defendant of the proceedings recalled on Wednesday, 23 October 2013.

[4] Mr Gilchrist fairly acknowledges that it may well be that no one in Digilink NZ Ltd is actually aware of the proceedings given that Mr Su is overseas. He has asked me nevertheless to make the orders sought against Digilink NZ Ltd, or else adjourn the matter.

[5] I am prepared to make an interim injunction order against Digilink NZ Ltd. The affidavits fairly make out a case against Digilink NZ Ltd. If it chooses not to set

_{up a chain of communication whereby service on the registered office is}

¹ TVBO Production Ltd v Zhou [2013] NZHC 1715.

communicated to officers of the company, then it cannot complain if in an urgent situation service on that registered office is treated as sufficient.

[6] For the reasons I have already set out when I granted an interim injunction in similar circumstances earlier this year against a different defendant, the matter has an element of urgency. It is the type of claim where an interim injunction is the only way to stop further damage, the quantification of which could be most difficult to assess.

[7] Given the difficulties he is having with service, Mr Gilchrist could well have chosen against that background to have sought a without notice application. Although he has not taken that step it seems to me that given the case made out against Digilink NZ Ltd and Mr Su, and Mr Su’s absence overseas and the lack it would seem of any forwarding telephone number, I am entitled to treat it in a way similar to the way in which a without notice would be treated.

[8] I therefore propose making the orders sought. Given the distinct possibility however that no one at Digilink NZ Ltd knows about this, I provide express provision for the defendant to be able to apply to set the order aside.

Result

[9] I make the following orders:

Pending further order of this Court, there is an interim injunction restraining the first defendant (either by itself, its servants, agents, or howsoever):

(a) From broadcasting and/or installing any decoder or similar, equipment capable of broadcasting, on any television or television network within New Zealand, any programming, film or broadcast of any programming by or emanating or originally sourced from:

(i) TVBO Production Ltd; (ii) World TV Ltd.

(b) From advertising or installing decoders or other electronic devices or similar equipment capable of receiving programming, filming or broadcast material emanating or sourced from:

(i) TVBO Production Ltd; (ii) World TV Ltd.

(c) Providing to persons the means to access and receive communication works of the plaintiffs by selling, offering for sale, advertising for sale or for hire, or letting for hire, any apparatus or device, including for the purposes of enabling persons to receive communication works of the plaintiffs.

(d) Infringing the copyright of the plaintiffs by copying the communication works of the plaintiffs.

(e) Importing into New Zealand or possessing in the course of business, or in the course of business or otherwise, selling, or letting for hire, or offering, or exposing for sale or hire, an object or device designed or adapted for the making of copies of the communication works of the plaintiffs.

(f) Transmitting or enabling or authorising others to transmit the broadcasts of the plaintiffs by means of the reception in New Zealand of transmissions of the plaintiffs’ broadcasts.

(g) Importing, selling, or letting for hire, any apparatus or device designed or adapted to enable or assist persons (being customers of the defendants) to receive programmes or other transmissions being communication works of the plaintiffs when such customers are not entitled to do so.

(h) Publishing information, including advertisements, flyers or other material calculated to enable or assist customers of the defendants to

receive programmes or other transmissions being communication works of the plaintiffs when such customers are not entitled to do so.

(i) Providing to customers, any apparatus or device for the purposes of enabling customers to access communication works of the plaintiffs.

[10] The first defendant may apply on three days’ notice for an order setting aside the application. If that step is taken the issues would be determined de novo with the plaintiffs having to make out their case in the usual way for an interim injunction. However, assuming no such application is made and an order setting aside the injunction the present orders will stand against the first defendant.

[11] As to Mr Su, I adjourn this matter to the Duty Judge list on Monday,

4 November 2013 to give the plaintiffs more opportunity to serve Mr Su. Mr Gilchrist has observed that the accountants for Digilink NZ Ltd actually have a telephone number for Mr Su, which is the telephone number he uses when advertising the connection boxes. He has indicated that if he is frustrated in his efforts to serve or contact Mr Su he will seek substituted service on the registered office of Digilink NZ Ltd.

[12] Costs are reserved.

...................................

Asher J