Makhssian Trajan Vahe v. Cheerlord Investment Ltd t/a W Hong Kong

DCCJ 88/2017

[2018] HKDC 351

IN THE DISTRICT COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

CIVIL ACTION NO. 88 OF 2017

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DECISION

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1.This is the Defendant’s application under Order 18, Rule 19 of the Rules of the District Court for an order that the Plaintiff’s Statement of Claim be struck out.

The Plaintiff’s pleaded case

2.The Statement of Claim is a very short document.  It is pleaded that the Plaintiff is the copyright and intellectual property owner of the brand name “White Party”.  By allowing an event called “Return of White Party” to be carried out on its premises, the Defendant, the operator of W Hong Kong Hotel, was in breach of the Plaintiff’s copyright and intellectual property.  A sum of HK$800,000 is claimed for such breach.

The Defendant’s application

3.The Defendant seeks to strike out the Statement of Claim on the grounds that it discloses no reasonable cause of action or is otherwise an abuse of the process of the court.  In deciding on the former ground, the court will look at the Statement of Claim alone without reference to the affidavit evidence.

The principles

4.It is trite law that the claim must be obviously unsustainable, the pleadings unarguably bad and that it be impossible, not just improbable, for the case to succeed before a court will strike it out.  If the court does not think the matter to be clearly beyond doubt or is not satisfied that there is no reasonable cause of action or that the proceedings are frivolous or vexatious, then, there should be no striking out: The New China Hong Kong Group Ltd. & Anor v Ng Kwai Kai Kenneth HCA 519/2010, 11 February 2011, at §40.

Analysis

5.In the present case, although there is a general reference to intellectual property right, there is no plea that the Plaintiff owns any registered trade mark or design.  Nor does the Plaintiff rely on passing off as a separate cause of action.

6.To establish a cause of action for copyright infringement, a plaintiff needs to show: -

(1)   that copyright subsists in the relevant work;

(2)   that the plaintiff owes the copyright;

(3)   that the defendant’s product constitutes an infringing copy of the plaintiff’s work;

(4)   that the defendant has committed an act of infringement under the Copyright Ordinance (Cap.528): see Fossil Inc v Trimset Ltd. [2003] 3 HKLRD 11, at §§11-22.

7.Copyright subsists in, among others, original literary work, which means all work, other than a dramatic or musical work, which is written, spoken or sung (Copyright Ordinance, §§2 and 4).  For copyright to subsist, the artistic work must be “original” in the sense that the work must originate from the author.

8.In the present case, one can get no hint from the Statement of Claim as to why it is claimed that the title “White Party” is a work originated from the Plaintiff.  For this reason alone one can say that the Plaintiff’s claim does not start to take shape as a copyright claim.  Furthermore, it is clear law that generally there is no copyright in titles or names (see for instances Dicks v Yates (1881) 18 Ch.D. 76; Francis Day and Hunter v Twentieth Century Fox Ltd. [1940] AC 112; Rose v Information Services Ltd. [1987] FSR 254; Griggs Group Ltd. v Evans [2004] FSR 31).  Hence, in so far as the Plaintiff contends that copyright subsists in the name “White Party”, such contention is clearly misconceived.

9.Furthermore, the Plaintiff has not identified any infringing acts which are prohibited under the Copyright Ordinance.  I appreciate that the Plaintiff is not legally trained and his pleadings should be interpreted liberally.  However, no matter how liberal the court can be in interpreting his claim, it remains the Plaintiff’s job to identify the relevant work and the infringing acts.  The hosting of an event that shares a name similar to events of the Plaintiff can hardly be a secondary infringement within the meaning of s.33 of the Copyright Ordinance.  In the absence of any reference to any infringement (be in primary or secondary infringement) in the Statement of Claim, the Plaintiff’s claim is defective and liable to be struck out.

10.I make the following orders: -

(1)   The Statement of Claim be struck out;

(2)   The Plaintiff’s action be dismissed with costs of the action (including costs of this application) to the Defendant to be taxed if not agreed. There be certificate for counsel for the striking out application.

11.I thank Mr Wong for his assistance.

The Plaintiff, acting in person

Mr Philips B. F. Wong, instructed by Wilkinson & Grist, for the Defendant