Sky King Machinery Engineering Ltd v. China Harbor Engineering Company Ltd

HCIP 45 /2019

[2023] HKCFI 1516

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 45 OF 2019

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J U D G M E N T

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A.  INTRODUCTION

1.This is a claim for copyright infringement with respect to a series of construction drawings for public fill sorting facilities (“PFSF”). Pursuant to the order for split trial made on 14 August 2020, the trial before this Court was concerned with the issue of liability only.

2.Public fill is inert construction and demolition materials generated from activities such as building, excavation, renovation, demolition and road works, comprising rocks, concrete, asphalt, rubbles, bricks, stones and earth. Since these materials would not decay or decompose, they are used for reclamation or site formation works.

3.The Government has set up 2 public fill banks at Tseung Kwan O Area 137 (“TKO137”) and Tuen Mun Area 38 (“TM38”) respectively for storage of public fill, each of which are equipped with temporary sorting facilities, comprising tracks of land with basic infrastructure like temporary access roads.  The contractor would have to procure the necessary equipment and set up its own PFSF there.  In the case of TKO137, where the sorting area is substantial in size, at any given time there may be more than one PFSF there, operating side-by-side in areas designated for different contractors. Construction and demolition materials would be transported to these sorting sites, where they would be sorted by the PFSF, and the public fill thereby generated would then be transported to the land reclamation site for use.

4.The Plaintiff is a company which carries on the business of construction and engineering contracting.  In 2003, it was the sub-sub-contractor responsible for the TKO137 PFSF portion of the Government works project known as “Penny’s Bay Reclamation Stage 2”, whereby some 60 hectares of land were reclaimed for the expansion of Hong Kong Disneyland (“PB Project”).  The main contractor of the PB Project was Gammon Skanska Limited (“Gammon”). The PB Project had another PFSF portion, at TM38, which the Plaintiff was not involved in.

5.The Plaintiff says that in the course of its TKO137 PFSF work under the PB Project, construction drawings for PFSF were created (“SF 2003 Plans”) based on the drawings and ideas of its employee, Mr Wong Tung Ping (“TP Wong”), and the PFSF installation was built based on the SF 2003 Plans and in some instances with modifications directed by TP Wong to reflect the situation on the ground (“P’s Installation”), and that copyright subsists in both the SF 2003 Plans and P’s Installation and belongs to the Plaintiff.

6.The PB Project had a subsequent phase of PFSF work in 2005 which the Plaintiff was not involved in.  For this subsequent phase, a number of contractual drawings were generated (“SF 2005 Plans”), without the Plaintiff’s involvement but said to be with the assistance of Mr Wong Chi Wai (also known as “Dee”, “Dee Wong”), who was the foreman in the TM38 PFSF for the PB Project and later became associated with Sharon Asia Waste Sorting Engineering Limited (“Sharon”). The Plaintiff says that while it was not involved in the creation of the SF 2005 Plans, the SF 2005 Plans were created by copying the SF 2003 Plans and the as-built P’s Installation, and so its copyright continues to subsist in the SF 2005 Plans.

7.The Plaintiff claims that in 2012, when the Defendant was appointed main contractor for another Government project, the reclamation of land and construction of an artificial island for “Hong Kong-Zhuhai-Macau Bridge and Hong Kong Boundary Cross Facility” (“HZMB Project”), the Defendant engaged Sharon as sub-contractor of the PFSF portion of the works, and the construction drawings prepared by Sharon (with the assistance of Dee Wong) (“MS Plans”) copied the SF 2003 Plans and the SF 2005 Plans.  Accordingly, the Plaintiff brings this claim against the Defendant for copyright infringement. 

8.Not long after the Plaintiff commenced this claim against the Defendant in May 2014 (then under High Court Action No. 924 of 2014), the Defendant issued a third party notice against Sharon in July 2014. Sharon actively defended the third party proceedings until 28 June 2022, when its solicitors ceased to act and Sharon indicated it would not attend trial.  In the end, Sharon’s witnesses were subpoenaed by the Defendant to give evidence at trial, and after conclusion of the trial, the Defendant obtained leave to discontinue the third party proceedings against Sharon on 20 December 2022.  

B.   THE FACTS

9.Most of the facts relevant for present purpose are not controversial.  There are disputes over specific aspects relevant to some of the issues to be determined, which will be addressed separately under each of the issues to which these disputes pertain.

10.As mentioned above, the PB Project was to reclaim land in Penny’s Bay for the expansion of Hong Kong Disneyland.  Part of the specifications for the PB Project works (under PS Appendix 6.2, “PS” stands for “particular specifications”) is for the contractor to design, construct, install, operate, maintain and eventually remove the PFSF on designated areas in TKO137 and TM38.

11.It is convenient to provide a brief description of the PFSF. As mentioned above, the purpose of the PFSF is to sort and remove materials that are not appropriate for land reclamation, like metals. 　At a high level of generality, the PFSF is a combination of sorting equipment and conveyor belts formed of steel truss, and it operates in the following manner.  Trucks carrying construction and demolition materials would decant them into the PFSF, whereby the materials would be transported by the (covered) conveyor belts and pass through different pieces of sorting equipment, which may include vibrating grizzly feeder (“VGF”), screen feeder, magnetic separator, blower, as well as manual picking by workers stationed on picking platforms, to remove materials exceeding the desired size or are otherwise unsuitable.  The public fill thereby generated would be placed in a temporary stockpile on the PFSF site, to be transported to the land reclamation site. 

12.In the case of TKO137, which is along the coast with sloping seawalls, transportation to land reclamation sites is by sea, through barges.  Given its topography, at TKO137 (i) further conveyor belts have to be constructed from the bottom of the stockpile extending all the way out to sea where the barges are berthed, which involves constructing a “barging conveyor” belt (ie part of the conveyor belt is “hanging” as it needs to extend out to and over the sea for about 30 meters to deposit the sorted public fill directly on to the barges); and (ii) temporary berths have to be constructed, extending out from the sloping seawalls, to enable the barges to berth.

13.Going back to the PB Project, PS Appendix 6.2 sets out detailed functional requirements such as the minimum production capacity, the size of the public fill post-sorting, the components that the PFSF must include (eg the need to have primary and secondary sorting processes; interlinking conveyors between processes; marine barging points and storage areas for sorted materials); but the design of the PFSF was left to the contractor, and such design was required to be checked and certified by an independent engineer at the contractor’s cost (PS Appendix 6.2 clause 6.2.4; Special Conditions of Contract clause 18). 

14.Gammon submitted a bid for the PB Project in December 2002, which included 7 tender drawings for PFSF, 3 of which specifically concerned TM38, 3 specifically concerned TKO137, and one was for “typical details" of PFSF showing cross section of access ramp, picking platform, conveyor support structure and cover, and cross-section of conveyor truss (“Gammon Tender Plans”).　 The layout for the TKO137 PFSF in the Gammon Tender Plans showed 2 sorting lines, running in complete parallel.

15.Gammon won the bid and was appointed main contractor of the PB Project on 17 April 2003. The commencement date of the PB Project was 23 April 2003.

16.Around this time, Win Hing Civil Engineering Limited (“Win Hing”), which was interested in bidding for the sub-contract for the TKO137 PSFS portion of the PB Project from Gammon, liaised with the Plaintiff to locate someone who had the necessary expertise to assist in the PFSF.  The Plaintiff then found and engaged TP Wong.

17.For the purpose of bid, the Plaintiff (through TP Wong) put together a method statement for the TKO137PFSF, including some hand-drawn plans showing the schematic and layout of the PFSF, which revealed a design with 2 sorting lines, with one line running in a “loop”.

18.On 23 June 2003, the Plaintiff submitted a quotation to Win Hing.  The Plaintiff’s quotation set out the following:-

(1)  “To install a PFSF plant as specified by the attached method statement” (emphasis added).  It then went on to identify the different components and the number of units of equipment the plant comprised of.

(2)  There were terms for operation of the PFSF, which are not material for present purpose.

(3)  There was also a handwritten term inserted – “*For the avoidance of doubt, the sub-contractor should carry out the sub-contract works in accordance with specifications and requirements of the Main Contract, including but not limited to – 1. P.S. clause 7.07 & 6.74  2. P.S. Appendix 6.2   3.  SCC18”.

19.By a letter of acceptance dated 27 June 2003, Gammon accepted Win Hing’s bid for the TKO137 PFSF works in the PB Project.  The letter stated that the conditions of sub-contract shall be in substantially the same form as Gammon’s standard form of sub-contract but subject to amendments as are necessary to reflect the requirements in respect of the PFSF works in Gammon’s main contract, and that until a formal sub-contract was executed, the letter would constitute a binding contract  between Gammon and Win Hing.  No sub-contract was ever executed between Gammon and Win Hing.

20.On the following day (28 June 2003), Win Hing issued a letter of acceptance to the Plaintiff (attention TP Wong) confirming acceptance of the Plaintiff’s quotation for the TKO137 PFSF works.  This letter contained statements identical to that in the Gammon letter of acceptance on the execution of a sub-contract.  Like Gammon-Win Hing, no sub-sub-contract was ever executed between Win Hing and the Plaintiff.

21.I should point out that by then, there was already some slippage with respect to the PFSF, for PS Appendix 6.2 clause 6.2.4(1) required that the system, design, operation and maintenance details of the PFSF, together with certification by the independent engineer, to have been submitted to Gammon’s engineer within 45 days of the commencement of the PB Project (ie by mid-May 2003).  This provided the context, which does not appear to be disputed, that there was some urgency in getting the PFSF design and works going.

22.The Plaintiff says that around this time, TP Wong reflected on and improved the layout of the PFSF, and set that out in another hand-drawn layout plan (“Hand Drawn Plan A”)[1], which was one of the 7 hand-drawn drawings for the TKO137 PFSF the Plaintiff relies on in this action (collectively “Hand Drawn Plans”).  The Hand Drawn Plans included (i) Hand Drawn Plan A (layout); (ii) a conveyor elevation drawing showing the 2 sorting lines up to the stockpile (“Hand Drawn Plan B”)[2]; (iii) a berthing fender elevation drawing (“Hand Drawn Plan C”)[3]; and (iv) 4 drawings showing the barging conveyor and some of its details (“Hand Drawn Plans D[4], E[5], F[6], A144[7]” respectively).  There is a dispute over when the Hand Drawn Plans were created, which I will return to below.

23.Meanwhile, the Plaintiff (through TP Wong) engaged Kin Tat Engineering Survey Company (“Kin Tat”) to prepare a set of digitized (ie computer) drawings for the TKO137 PFSF (“KT Plans”), which the Plaintiff paid for on 7 July 2003, and Win Hing submitted to Gammon on 8 July 2003.  Some of the KT Plans are strikingly similar to the Hand Drawn Plans.  It is the Plaintiff’s case that Kin Tat was involved because TP Wong did not know how to create computer drawings, and the KT Plans were prepared based on the Hand Drawn Plans as well as instructions given by TP Wong.  Kin Tat acknowledges that copyright in the KT Plans belongs to the Plaintiff.

24.Since late July 2003, a series of digitized construction drawings for the TKO137 PFSF were created by Lambeth Associates Limited (“Lambeth”), an entity within the Gammon group, which bore the prefix “SF” and were used for the assembling of the TKO137 PFSF (ie the SF 2003 Plans).

(1)  There is a dispute over the role of Lambeth in the creation of the SF 2003 Plans.  The Plaintiff’s case is that as the Plaintiff did not want to continue to engage Kin Tak at its own expense and given the tight timetable, the Plaintiff requested Gammon, and Gammon agreed, to direct Lambeth, Gammon’s in-house engineering consultancy, to assist the Plaintiff in creating digitized plans suitable for submission and use on site; and Lambeth’s role was one of an amanuensis who prepared the SF 2003 Plans based on the instructions and directions given by TP Wong. 

(2)  Mr Wong Kwok Leung Jacky (“Jacky Wong”) of Lambeth, who gave evidence on behalf of the Defendant at trial, denies that Lambeth was a mere scribe.  Jacky Wong’s name appeared on all of the SF 2003 Plans, at the box at the bottom right-hand corner, described as either the one who “checked” or “approved” (or both at times) of these plans. There were other staff of Lambeth stated to have “drawn” or “designed” the SF 2003 Plans thereon.

(3)  There is another feature of the SF 2003 Plans which I will have to return to in due course.  At the top right-hand corner of all of the SF 2003 Plans is a box containing the following statement “This document and the copyright in it is the property of [Gammon]. [Gammon] shall forthwith take all appropriate action against any infringer of its copyright” (“Gammon Copyright Statement”).

25.From around August 2003, the PFSF (with 2 sorting lines) was constructed and operated at TKO137.  Such PFSF as constructed is P’s Installation.  

26.The Plaintiff says that in the course of constructing the TKO137 PFSF, there were aspects of it that required revision in light of the conditions on the ground, and TP Wong also accepts there was a weakness in his design of the conveyor belt support which had to be remedied on the ground when the PFSF was in operation.  Some of those modifications were reflected in revisions to a number of the SF 2003 Plans.  Counsel for the parties are content not to differentiate between the different revisions of the same SF 2003 Plan, and propose that I should consider the earliest version in determining subsistence, and the last version in determining the issue of infringement.  I will proceed on that basis accordingly. 

27.It is common ground that in 2005, a third sorting line for PFSF was constructed and operated by Gammon immediately next to the PFSF operated by the Plaintiff at TKO137, without the involvement of the Plaintiff.  Gammon constructed and operated this third sorting line with the assistance of Dee Wong, who at the time was the foreman of Ho Hon Construction and Engineering Limited, the sub-contractor for the TM38 PFSF of the PB Project.

28.It appears that this third sorting line was brought into existence for 2 reasons.  The first is that the production capacity of the PFSF operated by the Plaintiff did not meet the projected capacity, due to the fact that the construction and demolition materials delivered on site included mud when they were not supposed to, and some of the equipment used in the PFSF were not designed to process mud.  The second, and probably more compelling, reason is that as Win Hing was withholding payment to the Plaintiff, since late August 2005 the Plaintiff had stopped work at the PFSF altogether.  Win Hing was eventually placed in insolvent liquidation in 2006.  This is consistent with the fact the majority of the SF 2005 Plans were only created in or after September 2005.  In other words, it appears that while Gammon was beginning to work on the idea of building a third sorting line in June or July 2005 due to the production capacity issue, it was only after the Plaintiff stopped work in late August 2005 that Gammon really got down to putting together and operating a third sorting line.

29.For this third sorting line, a further set of construction drawings, also bearing prefix “SF”, was created by Lambeth (ie the SF 2005 Plans).  Not all of the components of this third sorting line had their own SF 2005 Plan; in other words, the third sorting line was built based on both the SF 2003 Plans and SF 2005 Plans.

30.With respect to the SF 2005 Plans:-

(1)  The Plaintiff says that while it was not involved in preparing the same, they essentially copied the SF 2003 Plans and P's Installation, which the Plaintiff was aware of (since the third sorting line was constructed immediately next to the first and second sorting lines) and did not object to (probably because of the matters in §28 above), and its copyright continues to subsist in the SF 2005 Plans.

(2)  The Defendant, relying on the evidence of Dee Wong whom it has subpoenaed, says that the design in the SF 2005 Plans were substantially originated from Dee Wong’s design for the TM38 PFSF.

31.It appears that the PFSF works at TKO137 for the PB Project were completed in 2006, and the Plaintiff returned to site to dismantle the PFSF in 2007.

32.Moving forward in time, in around 2011 the Defendant was appointed the main contractor of the HZMB Project, which included a PFSF portion at TKO137.  In January 2012, Sharon was appointed the sub-contractor for the PFSF portion, and Sharon in turn engaged Dee Wong as its team leader for such works.

33.The area in TKO137 designated for the PFSF portion of the HZMB Project overlapped completely with, but was larger (almost double in size) than, the area designated for the PFSF portion of the PB Project.

34.Under its sub-contract Sharon was responsible for designing the PFSF works.  To that end, the MS Plans were prepared, based on the design of Dee Wong.  The PFSF for the HZMB Project at TKO137 had 4 sorting lines.  Dee Wong accepts that he used the design of TM38 and the SF 2005 Plans in the HZMB Project.  He also claims that the design he used in the HZMB Project was substantially different from that in the SF 2003 Plans.   

35.I should also mention, for completeness, that the Plaintiff has previously brought proceedings against another contractor in another government works project for breach of copyright in the 2003 SF Plans. The project in question was the “Wan Chai Development Phase II – Central-Wan Chai Bypass Wan Chai East” project in 2010, which main contractor was Chun Wo-CRGL Joint Venture (“Chun Wo”) and sub-contractor for the PFSF works was Kwan Shing Engineering Co., Ltd.  Dee Wong was a consultant for such sub-contractor at the time.  In 2013, the Plaintiff commenced proceedings in HCA No. 1918 of 2013 against Chun Wo, which proceedings were eventually settled.  Given the Chun Wo proceedings were concluded by settlement, I do not consider that I should place weight on it.

C.  THE SF 2003 PLANS

36.In its Amended Statement of Claim the Plaintiff advanced its claims with respect to 32 of the SF 2003 Plans, grouped into 9 categories. By the end of the trial, the number of SF 2003 Plans the Plaintiff relied on was reduced to 25 (6 categories).  The plans that the Plaintiff no longer pursues concern (i) the covered tunnel under the stockpile; (ii) a number of plans for the steel truss; (iii) the picking platform; and (iv) the equipment schedule.  

37.The SF 2003 Plans that the Plaintiff continues to pursue are:-

	SF 2003 Plan No.		SF 2003 Plan No.
	Layout		Barging conveyor
1	SF101	14	SF167
2	SF102	15	SF168
3	SF103	16	SF169
4	SF104	17	SF170
5	SF105	18	SF171
	VGF structure	19	SF172
6	SF106		Berthing fender
7	SF107	20	SF146
8	SF110	21	SF147
9	SF111	22	SF148
10	SF112		Conveyor support structure
11	SF113	23	SF161
	Vibrating screen structure	24	SF163
12	SF120	25	SF165
13	SF121	--	--

38.The SF 2003 Plans above are construction drawings, and can be briefly described as follows:-

(1)  Layout – these comprise of a drawing showing the aerial view of the overall layout of the PFSF, and a number of elevation drawings showing the flow of the PFSF, from the decanting point to the stockpile, and the stockpile through the barging conveyor to the barge.

(2)  VGF structure – the VGF is a piece of sorting equipment that the Plaintiff had to acquire from the manufacturer, but the VGF had to be fixed onto the PFSF, and these are drawings showing the elevation and cross-section on construction details and construction sequence of the retaining wall, drawings (aerial and elevation) for the construction of the steel structure on which the VGF would be mounted, and drawings on the VGF connection details (where one can find 5 or 6 details presented in elevation and cross-sectional manner on the same drawing).

(3)  Vibrating screen structure – likewise, the Plaintiff has to acquire the vibrating screen from the manufacturer, and these are drawings showing how the structure on which the screen was to be mounted should be constructed, with aerial, elevation and cross-sectional depictions, as well as drawings on the connection details.

(4)  Barging conveyor – as mentioned, this is a conveyor belt built of steel truss that is “hanging” and extend from land to and over sea, and the drawings show the aerial, elevation and cross-sectional plans for its construction, including that of different parts of the conveyor and connection details.

(5)  Berthing fender – these are drawings showing how the temporary steel berths were to be constructed, with its base anchored on land, and with a drop in elevation as the steel bar extended out to sea (to cater for the sloping seawall and the difference in height of the barges during high and low tides).

(6)  Conveyor support structure – these are drawings on how the support frame for the conveyor belts (which were mostly elevated and at different heights) should be constructed, with connection details.

D.  THE ISSUES

39.It is common ground that to establish its claim for copyright infringement, the Plaintiff bears the burden to prove the following 4 issues:-

(1)  copyright subsists in the plans and installation relied upon by the plaintiff which forms the basis of this action;

(2)  the plaintiff owns the copyright in these plans and installation;

(3)  the defendant’s plans constitute infringing copies of the plaintiff’s copyright works; and

(4)  the defendant has committed the infringing acts.

See Fossil Inc v Trimset Ltd [2003] 3 HKLRD 11, §7.

40.At closing, Mr Liao SC, counsel for the Defendant, informed the Court that:-

(1)  The Defendant accepts the MS Plans basically followed the SF 2005 Plans, so that if the SF 2005 Plans were a substantial reproduction of the SF 2003 Plans, infringement would be established; and

(2)  the Defendant no longer pursues the defences, relevant to the fourth issue, that it did not authorize Sharon to copy or that the Plaintiff has to prove it was a joint tortfeasor together with Sharon.  

41.In the circumstances, it is unnecessary to deal with the fourth issue in §39 above; the MS Plans were indisputably put forward by the Defendant as its own plans.

42.However, there is an additional issue, raised by Mr Liao for the first time on behalf of the Defendant in his written opening, that P’s Installation was not “a work of architecture” within the meaning of “artistic work” in section 5 of the Copyright Ordinance (Cap. 528) (“Cap. 528”) and hence did not attract copyright protection.  Although I would have expected such an issue to have been raised fairly and squarely at the outset, this being a question of law and Mr Chain, counsel for the Plaintiff, was prepared and able to deal with it, I allowed the point to be taken and will address that in Section G below.

43.In light of the Defendant’s position in §40 above, the following issues fall to be considered in this case:-

(1)  Did the SF 2003 Plans satisfy the threshold of originality for copyright to subsist (Section F below);

(2)  Did P’s Installation constitute artistic works under section 5 of Cap. 528 (Section G below);

(3)  Did the Plaintiff own the copyright in the SF 2003 Plans and P’s Installation (Section H below);

(4)  Did the SF 2005 Plans copy a substantial part of the SF 2003 Plans and/or P’s Installation (Section I below).

E.   THE EVIDENCE AND THE WITNESSES

44.A substantial volume of documentary evidence was adduced at trial, and 5 witnesses gave evidence, namely TP Wong (on behalf of the Plaintiff), Jacky Wong, Chan Ho Kin (both witnesses for the Defendant), and Dee Wong and Yu To Shui Peter (both provided witness statements on behalf of Sharon, and subpoenaed by the Defendant to give evidence at trial).

45.Before I address the evidence and testimony I should mention that there were a number of late attempts by the Defendant to expand the scope of evidence.  These included attempts to (i) subpoena Gammon for documents and witness (Mr Hau Chi Chiu, “Hau”) to give oral testimony; (ii) disclose 2 further documents concerning structural design calculation standards, to make the point that TP Wong was not professionally qualified to undertake structural design calculations; and (iii) seek a direction for substantive examination-in-chief of the Defendant’s witnesses (but without identifying, through a supplemental witness statement or otherwise, what the top-up evidence was).  The reason given for these late applications was essentially the Defendant’s counsel team was engaged late.  Upon considering submissions from both sides, on Day 1 I dismissed the applications in (i) and (iii) with costs, and allowed the application in (ii) given they were public documents and the relatively low threshold for discovery, in each case with oral reasons.  I should mention that late engagement of legal team is rarely, if ever, an adequate reason for changing the scope of evidence at the eve of the trial, in particular when the trial was a substantial one fixed for 16 days and the case itself has some history, and there was no information or clarity as to the scope or extent of the new evidence sought to be introduced.

46.Going back to the evidence before the Court, I bear in mind that in the fact-finding exercise, the credibility of a witness should be assessed by reference to contemporaneous documentation where it exists, or to its absence where one would expect it to be created, as well as inherent probabilities having regard to all the facts that are known: Esquire (Electronics) Ltd v Hong Kong and Shanghai Banking Corporation Ltd [2007] 3 HKLRD 439, §135.

47.Given the issues in dispute, the testimony of TP Wong (said to be the source of the design and depictions in the SF 2003 Plans), Jacky Wong (of Lambeth) and Dee Wong (involved in the creation of both the SF 2005 Plans and the MS Plans) were the most relevant.

TP Wong

48.TP Wong was (indisputably) involved in the TKO137 PFSF for the PB Project for the Plaintiff.  He has a mechanical engineering background, with a Bachelor of Science degree in Mechanical Engineering from the University of Hong Kong in 1982 and a Master of Science degree from the City University of Hong Kong in 2005.  Since 1982 he has worked in various companies with quarry operations.  By 2003 he had accumulated 30 years of experience in handling and managing quarry operations and related equipment, including sorting earth and rock materials.

49.TP Wong was cross-examined extensively for 3 full days in Punti.  Most of the questions asked of him did not really depend on credibility of witness testimony but involved looking at or commenting on documents.  He gave evidence directly and calmly; and though there were a few instances when he became frustrated and argumentative or said he did not want to answer the question, this happened only after he was subject to protracted cross-examination on the same topic with repetition of the same question even after he has answered them; upon being informed that he must answer questions put to him he did proceed to answer them.  I do not consider these few instances in any under way undermine his credibility.  He also readily gave answers which he must have understood to be unfavourable to the Plaintiff’s case, eg his admitting that he had been provided with the Gammon Tender Plans which he had looked at, and his concession that he copied the covered tunnel and truss plans from the Gammon plans in other earlier projects.  Overall I consider his testimony to have held up despite extensive cross-examination, and was credible and genuine.

50.Mr Liao criticized TP Wong’s testimony as unreliable on the basis that TP Wong only mentioned (i) he had attended meetings with Hau of Gammon before the Plaintiff formally submitted a bid, and (ii) Gammon having supplied TKO137 plans to him which he used to prepare Hand Drawn Plans A and D in the course of cross-examination.  I do not accept this.  These are matters of fine details of a nature that one would not expect them to be included in the witness statement, and would only be “teased out” in cross-examination when the witness was asked to recall matters which were on their face not material such that the witness could be expected to focus his mind on when preparing his witness statement.  In any event, TP Wong’s answers on these matters were not in any way inconsistent with the facts and chronology he has already deposed to in his witness statements or supported by the documents and objective facts.

Jacky Wong

51.Jacky Wong was an assistant design manager of Lambeth in 2003 to 2004.  Thereafter he left Lambeth for a period of time but has since re-joined, so at the time of trial he was in the employ of Lambeth. He was the design team manager at Lambeth for the TKO137 PFSF of the PB Project.

52.Jacky Wong prepared a witness statement for Chun Wo in the Chun Wo proceedings (§35 above) on 3 August 2017 (“2017 WS”). In this action, he simply adduced the 2017 WS as his witness statement.

53.I do not find Jacky Wong to be a satisfactory or credible witness.  He is obviously a sophisticated person, and understood the scope of the dispute between him and TP Wong (namely, who came up with the design and depictions in the SF 2003 Plans).  However he was extremely coy; he has carefully crafted his evidence and answers to focus on his responsibility over the “structural system” and structural calculations of the PFSF, when the real and only issue in dispute and the questions put to him (which he must have understood) concerned the SF 2003 Plans and in particular the visual depictions therein. 

54.Further, his answers in cross-examination were inconsistent in material respects with the 2017 WS, and he was unable to give any credible answer for that.  The more salient examples are:-

(1)  In his oral evidence he repeatedly denied having ever met TP Wong, which is inconsistent with (i) the 2017 WS, in which he deposed that TP Wong was part of the operation team, and while he denied that the SF 2003 Plans were drawn up “entirely based on [TP Wong’s] instructions and directions”, TP Wong was “part of the operation team only provided feedback from an operational point of view”; and (ii) the fact that TP Wong has in his possession Jacky Wong’s name card with Jacky Wong’s (admitted) handwritten address of Lambeth’s Shenzhen office on it.  When (ii) was put to him Jacky Wong was unable to provide any explanation for that.

(2)  Despite having admitted in the 2017 WS that he received the Hand Drawn Plans from Hau (of Gammon), he tried to retract from that in his oral testimony by saying that he signed the 2017 WS very quickly without reading its contents or exhibits with care, and when the Hand Drawn Plans were shown to him he refused to say (and insisted that he could not be sure) whether he has seen any of them before.

(3)  Not only did he refuse to give a clear answer, when he was shown Hand Drawn Plan A144, which (admittedly) bears his handwriting on its face, he went so far to suggest it might have been drawn by him and then given to the operation team at site.

55.Moreover, he gave outright denials of having ever received the KT Plans, even though (i) they were indisputably provided to Gammon; (ii) he accepted that if Gammon had received them it would unlikely have withheld them from Lambeth; and (iii) even though he admitted he never asked his team in Lambeth, he insisted that they never received the KT Plans.

56.In light of the above, I do not find Jacky Wong to be a credible witness, and to the extent that there are conflicts between his testimony and that of TP Wong’s, I would prefer TP Wong’s evidence over his.

57.That is in fact consistent with the approach submitted by Mr Liao.  Mr Liao’s position is that the evidence of TP Wong and Jacky Wong are completely opposite, and even though there are many plans they are all part and parcel of the same allegation that TP Wong was the person who designed the PFSF for the PB Project, so if I accept one version I must necessarily reject the other.  I agree with his submission.

Dee Wong

58.Dee Wong was (i) the foreman of the sub-sub-contractor responsible for the TM38 PFSF of the PB Project; (ii) the one who assisted Gammon in constructing and operating the third sorting line in the TKO137 PFSF in 2005 (for which the SF 2005 Plans were created); (iii) the consultant of the sub-contractor for the Chun Wo Wanchai project (§35 above); and (iv) was engaged by Sharon to work on the PFSF for the HZMB Project.

59.Dee Wong filed 2 witness statements, the bulk of which concerned whether the SF 2003 Plans were similar to or based on other earlier drawings and whether the SF 2005 Plans were similar to the SF 2003 Plans, which are questions for this Court. 

60.Dee Wong gave evidence in a straight forward manner.  I find him to be a generally credible witness.  However, his evidence is only material in 2 respects:-

(1)  The first is his role in the creation of the SF 2005 Plans.  As observed by Mr Chain, it became clear in the course of his oral testimony that, contrary to the impression created in his witness statements that Dee Wong was the one who came up with the design and gave instructions for the creation of the SF 2005 Plans, Dee Wong only had involvement in one plan (which was not even a SF 2005 Plan), namely the layout of the third sorting, which he drew on a piece of paper to show Hau during a casual chat with him.  He was not responsible for, and admittedly could not and did not draw or create, any of the SF 2005 Plans, which he said were all done by Lambeth.

(2)  The second is his admission that he had a complete set of the SF 2005 Plans in his possession, which he used when the MS Plans were created for the HZMB Project.

Other witnesses

61.As for Chan Ho Kin (of the Defendant) and Yu To Shui Peter (of Sharon), I find Chan Ho Kin to be an honest witness and Yu To Shui Peter a less satisfactory one, given he would give answers to create the impression of proximity or distance from the MS Plans as it suited him (or his perception of whether the question would indicate Sharon’s liability). In any event, it is clear that neither of their testimony has direct bearing on the issues to be determined in this case, and I do not place much weight on them.

62.Finally, I should mention that Mr Liao in his closing criticized the Plaintiff for failing to call witnesses from Gammon, Win Hing and Kin Tat, and invited me to draw an adverse inference against the Plaintiff.  I do not accept this submission.

(1)  An adverse inference can only be drawn from a failure to testify where there is a need to meet an established prima facie case.  This means that the person seeking to draw the adverse inference would have to demonstrate that (i) a prima facie case has already been raised by the evidence adduced; and (ii) the party against whom the case is established has evidence (including witness testimony) available which could displace the prima facie case and which it omits to call: Nina Kung v Wang Din Shin (2005) 8 HKCFAR 387, §§367-369; Ip Man Shan Henry v Ching Hing Construction Co Ltd (No 2) [2003] 1 HKC 256, §155.

(2)  Thus, adverse inference has no place in the plaintiff’s discharge of his prima facie case – either the plaintiff has adduced sufficient evidence to prove a prima facie case, or he has not.  If the evidence relied upon by the plaintiff already discharges his prima facie burden, the fact that he has not called certain persons as witnesses is irrelevant.

(3)  In any event, when asked to what issue such “missing” witness(es) testimony relates to, Mr Liao was only able to identify Hau of Gammon, whom he said could have given evidence on the meetings between TP Wong and Gammon between April and June 2003 (ie the matters in §50 above).  However, as explained in §50 above, such evidence is by no means material, and in any event I accept TP Wong’s testimony on the same.

F.  SF 2003 PLANS – ORIGINALITY

63.The Defendant does not dispute that the SF 2003 Plans are “artistic works” under Cap. 528 section 5 and is capable of attracting copyright protection.  This must be correct, given:-

(1)  “artistic work” is defined in Cap. 528 section 5 to mean (inter alia) “a graphic work, photograph, sculpture or collage, irrespective of artistic quality”, and “graphic work” is further defined to “include … (a) any painting, drawing, diagram, map, chart or plan”; and

(2)  it is well recognized in case law that industrial or engineering drawings are “artistic works” within the broad meaning of that expression in Cap. 528: Interlego AG v Tyco Industries Inc [1989] 1 AC 217, 256D. Thus, a drawing showing a profile of an extruded aluminium frame with ledges enabling the frame to be held together by means of cleats can be an original drawing entitled to copying protection as an artistic work: Ultra Marketing (UK) Ltd v Universal Components Limited [2004] EWHC 468 (Ch), §51.

64.The battle lines between the parties are as follows:-

(1)  The Plaintiff says that the SF 2003 Plans, though digitally generated by Lambeth, were the original works of TP Wong, as evidenced by the Hand Drawn Plans and the KT Plans, and Lambeth was a mere amanuensis to TP Wong.

(2)  The Defendant’s case is that (i) Lambeth was solely responsible for designing the entire structural system of the TKO137 PFSF for the PB Project and Jacky Wong personally came up with the design solution; and (ii) in any event there was no originality in the SF 2003 Plans because PFSFs have been designed in this manner by participants in the construction industry for many years, and the design was dictated by the site constraints.

65.Thus, I will have to (i) identify the legal principles applicable to the issue of originality; (ii) make findings of fact on the genesis of the SF 2003 Plans, and (iii) set out my conclusions on originality or otherwise in each of the SF 2003 Plans the Plaintiff relies on.

(F.1)  The law on originality

66.The locus classicus of “originality” in the concept of copyright can be found in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, 608-609:-

“The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought … The originality which is required relates to the expression of the thought. But the Act does not require the expression must be in original or novel form, but that the work must not be copied from another work – that it should originate from the author.”

67.“Originality” involves 2 interconnecting strands – first, the work must originate from the author, in the sense that it must not be slavishly copied from another work; and second, what is required is the expenditure of more than negligible or trivial effort or relevant skill in the creation of the work; there is no requirement of novelty, usefulness, inventiveness, aesthetic merit, quality or value; in other words, the threshold is a low one: Copinger and Skone James on Copyright, 18^th ed., Vol. 1, §§3-186, 3-191.

68.Thus, where a work makes use of materials obtained by the author from pre-existing sources, a distinction has to be drawn between the materials upon which one claiming copyright has worked, and the product of the application of his skill, judgment, labour and learning to those materials. To secure copyright for the latter it is necessary that labour, skill and capital should be expended sufficiently to impart to the product some quality or character which the raw material did not possess, and which differentiates the product from the raw material. The question is not whether the materials which are used are entirely new, or have never been used before, or have never been used before for the same purpose; the true question is whether the same plan, arrangement and combination of materials have been used before for the same purpose or for any other purpose. If they have not, then the plaintiff is entitled to copyright, although he may have gathered hints for his plan and arrangement, or parts of his plan and arrangement, from existing and known sources.  He may have borrowed much of his materials from others, but if they are combined in a different manner from what was in use before he is entitled to copyright: Macmillan & Co Ltd v Cooper (1924) 40 TLR 186, 188-189, citing with approval Emerson v Davis (1845) 3 Story’s US Report 768, 778-779.

69.In the case of an artistic work, its essence is that which is visually significant: Interlego 266A.

70.With respect to drawings, given what is important is visual significance:-

(1)  A drawing may qualify for copyright protection because of originality which lay in the way a number of features, which had no originality in themselves, have been arranged or collocated. The question is whether the plaintiff’s work as a whole is original and protected by copyright; it is not correct to subdivide the plaintiff’s work into component parts and ask whether copyright attached to the individual parts: Henkel KGaA v Holdfast New Zealand Ltd [2007] 1 NZLR 577, [40].

(2)  The re-drawing of an existing drawing with a few minimal visual alterations does not make it an original artistic work, however much labour and skill may have gone into the process of reproduction or however important the technical significance of the verbal information that may be included in the same document by way of information or instruction: Interlego 258E-F.  Thus, in Interlego, even though the 1976 drawing (on which copyright was claimed) involved 8 points of alterations from the 1968 drawing which were technically important to the manufacture of the new “Lego” bricks, since they involve no substantial alteration to the drawing and the outline of the object depicted was virtually identical save for minute differences, the 1976 drawing was not an original artistic work: Interlego 258C-F.

(3)  Ultimately, it is a question of fact and degree to be determined on the facts on the particular case: Fossil §12.

(F.2)  Findings of fact on how SF 2003 Plans came to be created

71.In this section I will focus on the findings of fact on the chronology lead to and the respective roles of TP Wong and Jacky Wong in the creation of the SF 2003 Plans.  In particular, I take into account and assess (i) the 3 sets of plans (the Hand Drawn Plans, the KT Plans and the SF 2003 Plans) and (ii) TP Wong and Jacky Wong’s testimony on how they came to create the SF 2003 Plans.

72.In this case, there are 3 sets of plans on the TKO137 PFSF, which came into existence chronologically as follows:-

(1)  the Hand Drawn Plans, which according to TP Wong were created by him (and in the case of Hand Drawn Plan C, by Lai Chi Wai of Chung Wai Engineering Company on his instructions) between May or June 2003 to around August 2003;

(2)  the KT Plans, which were created between 30 June and 7 July 2003, and provided by Win Hing to Gammon on 8 July 2003; and

(3)  the SF 2003 Plans, the first of which was created on 24 July 2003.

The Hand Drawn Plans

73.Before I proceed further, I should deal with the question of the time of creation of the Hand Drawn Plans, for Mr Liao suggested in cross-examination that they were only created much later in time, after the SF 2003 Plans (in the case of Hand Drawn Plan A) and the SF 2005 Plans (in all other cases). In other words, it is said that they were created ex post facto, to give the impression of originality pre-dating the SF 2003 Plans.

74.This is a serious allegation, and as Mr Chain pointed out, has never been pleaded or raised by the Defendant before. This is so notwithstanding the existence and the Plaintiff’s reliance on the Hand Drawn Plans had been pleaded in the original Statement of Claim dated 26 May 2014 (in paragraph 8(v)(b)), copies had been disclosed in the Plaintiff’s Answers to the Request for Further and Better Particulars on 4 November 2014, and in those Answers the Plaintiff had provided a time period of between July 2003 and February 2004 (request 2) during which it said the Hand Drawn Plans were provided to Lambeth (request 4).

75.For the following reasons, I do not consider the Defendant should be allowed to raise such an allegation so late, and in any event, I do not find there is any substance in the allegation that the Hand Drawn Plans were created at the later times suggested by Mr Liao.

76.First, I do not consider the Defendant should be allowed to make such an allegation so late.

(1)  Mr Liao argues there was no need for the Defendant to give notice to dispute the authenticity of the Hand Drawn Plans, because (i) the Plaintiff bears the burden to strictly prove the same; and (ii) he is only taking issue with the dating of the Hand Drawn Plans, and since the Hand Drawn Plans were not dated, this is not a challenge against authenticity, relying on Gotland Enterprises Ltd v Kwok Chi Yau (No 2) [2013] 3 HKLRD 490 and Chan Chi Wah v Chan Albert Koon Keung, HCA 128/2011 (unrep., 13 June 2014).

(2)  I cannot see how these authorities support Mr Liao’s contentions. In Chan Chi Wah, the court refused to accept the defendant’s contention that the sum in dispute was a loan to the plaintiff by reference to a board minutes purporting to record the same, on the basis that such minutes was inconsistent with the other contemporaneous documents including the company’s own accounts. There was no suggestion that the board minutes was not signed by the named directors on the date it bore, so neither timing nor authenticity was in issue.

(3)  Gotland §15 in fact makes it very clear that if a party has sound reason to believe documents disclosed by the other side are not genuine, it should file a notice to dispute authenticity. Here, Mr Liao is suggesting that the Hand Drawn Plans were created much later than the time stated by the Plaintiff.  This is a challenge going to genuineness, and should have been raised properly and much earlier.

77.Second and in any event, I do not accept that the Defendant has established a sufficient factual foundation to challenge TP Wong’s evidence on the timing of the Hand Drawn Plans. 

(1)  TP Wong’s evidence is that:-

(a)  He was first approached by Win Hing through a long-time acquaintance, Kenny Ho, to assist in the TKO137 PFSF in early 2003.

(b)  Thereafter he had a few meetings with Win Hing and Gammon to discuss his experience and proposal, and he then prepared a method statement together with (inter alia) a hand-drawn layout plan (§17 above). 

(c)  After he submitted the same, he reflected on the layout and decided that a number of features could be improved (eg the trucks should decant at the same location so the VGFs should be placed side-by-side, and conveyor belt C26 was too long and costly to build so its length should be reduced), so he prepared Hand Drawn Plan A, which was shown to Win Hing and Gammon. 

(d)  As for Hand Drawn Plans C, D, F and A144, they were created later, around August 2003, when it became clear (consequent upon negotiations with the PB Project employer) that the PFSF (i) must include a weighing hopper at the beginning of the barging conveyor; and (ii) nothing could be erected on the seabed or attached to the seawall to act as support to the barging conveyor, so that the latter’s design would have to cater for that.

(2)  First, TP Wong’s evidence is consistent with the (undisputed) timing of the KT Plans.  In particular, KT Plans 001 and 002 (both dated 30 June 2003) were clearly digitized versions of Hand Drawn Plans A (layout) and B (elevation).

(3)  Second, Hand Drawn Plan D (barging conveyor) had at one end a hand-drawn weighing hopper on it.  This is consistent with the undisputed fact that it was only in or after August 2003 that the PB Project employer insisted the weigh hopper could not be dispensed with. I also note that in the first version of the relevant SF 2003 Plan for the elevation view of the barging conveyor (SF167) in August 2003 there was no weighing hopper, but a weighing hopper was added back in the September 2003 revision of it.

(4)  Third, the inherent probabilities do not support the Defendant’s contention – Mr Liao has not been able to suggest any reason why TP Wong would have created the Hand Drawn Plans after August 2003 or 2005, when at that time there was nothing to suggest that there might be litigation over the copying of plans.

(5)  Fourth, I do not find Mr Liao’s arguments on the specific Hand Drawn Plans convincing.  Mr Liao’s arguments:-

(a)  relied on the lack of credibility in TP Wong’s evidence, on the basis that TP Wong did not say previously that Hand Drawn Plan C (berthing fender) was drawn by Lai Chi Wai on his instructions or that he had received some TKO137 area layout plan from Gammon which he used as a “base” for Hand Drawn Plan D (the printed part) and superimposed on it his hand drawn parts – I have already addressed this in §§50 and 62(3) above and I do not find this challenge made out;

(b)  contended that Hand Drawn Plan A144 contained references to steel members and dimensions which only appeared in the SF 2005 Plans and not the SF 2003 Plans – but as the on-site photographs of P’s Installation show, those steel members and dimensions were used in P’s Installation (which was constructed in the latter half of 2003), even though they were not reflected in the SF 2003 Plans and were only recorded in the SF 2005 Plans; and

(c)  alleged that Hand Drawn Plan C could not have been created in June 2003 – when TP Wong’s testimony was that it was created around August 2003.

(6)  Fifth and finally, as explained above I found TP Wong to be a credible witness and I accept his evidence, in particular having regard to his ability to provide detailed explanation on how the Hand Drawn Plans came about.

78.The Defendant devoted a considerable amount of its closing submissions to attacking the credibility of the Hand Drawn Plans.  As explained below, I do not consider that this assists the Defendant, given the KT Plans which were indisputably created in late June and early July 2003, to which I now turn.

The KT Plans

79.There are 13 KT Plans in evidence. They are as follows:-

KT Plan	Description
001	Layout
002 (2)	Elevation of 2 sorting lines
003	Covered tunnel (*not relied upon)
004	Conveyor truss detail (*not relied upon)
010	Elevation of VGF platform
011	Front elevation of VGF platform
012	Support for VGF
020	Support for vibrating screen
021	Details of support for vibrating screen
101	VFG retaining wall
201	Covered tunnel (*not relied upon)
202

80.TP Wong explained that there was no KT Plan for the barging conveyor or berthing fender because in late June and early July 2003 there were still uncertainties concerning the 2 issues in §77(1)(d) above.

81.With respect to the relevant KT Plans:-

KT Plan	SF 2003 Plan	Findings
Layout and elevations
001	SF101	(1)  The SF 2003 Plan is strikingly similar to the KT Plan. The presentation of the layout, the dimensions, the angles, the use of shapes to represent certain equipment and the stockpile, the numbering of the conveyor belts, and even down to the depiction of the gate, the terrain and the presence of 2 barges berthing, are the same.  The SF 2003 Plan has more pictorial details with respect to each item (eg the barges were drawn with more details and the berthing fenders were also graphically represented), but there can be no doubt that the depiction in the SF 2003 Plan was based on and copied from the KT Plan.
002	SF102 SF103	(2)  KT Plan 002 as 2 elevations, one for conveyor belts C11 to C13, and the other for conveyor belts C21 to C23, both leading to the stockpile. SF102 contains the elevations of C11 to C13, and C21 to C22. SF103 contains the elevations of C23, as well as that of C24 to C26. (3)  SF102 is again strikingly similar to the KT Plan. The way the conveyor belts are laid out, how the conveyor belts are drawn, how their supports are drawn, the depiction of a retaining wall and the VGF at the beginning of the sorting line, the use of triangles to depict the angle of elevation, and the use of parallelograms to depict the vibrating screen, and even the markings to denote the ground, are the same. Again, the SF 2003 Plan contains more and finer pictorial details, including drawing the hopper between the conveyor lines, but these do not detract from the fact that the depiction in the SF 2003 Plan was based on and copied from the KT Plan. (4)  As to SF103, the top elevation concerning conveyor C23 was again copied from KT Plan 002 (the portion on conveyor C23), for the reasons in (3) above.
VGF structure and retaining wall
010	SF111	(5)  KT Plan 010 should be considered alongside the “section A-A” and “section B-B” drawings in SF111. Again, I have no doubt that these sectional drawings are copied from the KT Plan, given their depiction of the whole structure (save for one aspect, namely the use of a centre steel bar support in the SF 2003 Plan as opposed to a V-shape one in the KT Plan) is identical. That includes not only the VGF (which Jacky Wong said was based on the VGF catalogue, which I address in Section F.3 below), but the way the reinforced concrete foundation was depicted, the conveyor belt and even the drawing of the drum in the support structure.
011		(6)  KT Plan 011 is to be compared to the “front elevation” in SF111.  It is clear that this part of the SF 2003 Plan was copied from the KT Plan – the overall layout (eg where the retaining wall is vertically and horizontally) is the same, the depiction of the reinforced concrete foundation, the VGF, the elevation view of the structures that fasten the VGF on the frame, the description of “inside liners”, and the space between the 2 sets of VGF are all identical.  There are some additional details in the SF 2003 Plan, but again I do not consider they detract from the clear conclusion that this part of the 2003 SF Plan was copied from the KT Plan.
012	SF110	(7)  KT Plan 012 should be compared against “plan at level +8.5” in SF106. They are substantially the same – from the location of the retaining wall vis-à-vis the 2 VGFs, the depiction of the steel bars forming the support structures, the depiction of the conveyor (square in dotted line with a cross), and even the way and where the measurements are set out and depicted are the same.
101	SF106	(8)  The relevant comparison is between the KT Plan and “section 1-1” in SF106.  While they both present a sectional view on how the retaining wall is supposed to be anchored (through the use of screws and wires in earth-filled ramps), I do not consider that they can be said to be so visually similar that one is a copy of the other. The concept is similar, but the visual representation is not. This, however, is not necessarily an answer to who created SF106, and I will return to this below.
Vibrating screen structure
020	SF120	(9)  Each of these plans contained 5 drawings. Their description (“plan on top”, “section A-A” etc) are identical, their depiction is either identical (“foundation plan” and “section A-A”) or substantially the same, in the latter case SF120 contained more details but without detracting in a visually meaningful way from the similarities. (10)  Although the 5 drawings are arranged differently on the KT Plan and the SF 2003 Plan, each of them are identical or substantially similar in the manner described above; and since these of these drawings are self-contained, the spatial arrangement does not impact upon the visual similarity. (11)  Accordingly I find that this SF 2003 Plan was copied from the KT Plan.
021	SF121	(12)  KT Plan 021 contains 9 design details for the steel support structure of the vibrating screen, while SF121 contains 8 details. (13)  Visually I find that only 4 of the details in SF121 (Detail 2 “elevation”; Detail 3 “section c-c” and “elevation”; Detail 4) are visually similar to the KT Plan. Again, the fact that I do not find all of SF121 to have been copied from the KT Plan is not a complete answer to who created SF121.

82.Although Jacky Wong denies that he or Lambeth had ever received the KT Plans, given (i) there was a letter dated 8 July 2003 showing the KT Plans had been submitted by Win Hing to Gammon, and (ii) the substantial similarities between the KT Plans and some of the SF 2003 Plans identified above, I reject his evidence (see also §§53 to 56 above).  I find that the KT Plans had been provided to Lambeth, and that Lambeth had copied them in generating the SF 2003 Plans above.

TP Wong’s and Jacky Wong’s evidence

83.While the KT Plans are an important factual anchor to the question who created the SF 2003 Plans, not all of the SF 2003 Plans in issue has a counterpart in the KT Plans. Therefore I now turn to consider the testimony of TP Wong and Jacky Wong on how the SF 2003 Plans were said to have been created.

84.I have already set out TP Wong’s background and experience in §48 above.  

(1)  He clearly has extensive experience in sorting materials, the equipment involved, how to create a process and also build the structure for it. While he has no professional qualification as a structural engineer, I accept his testimony that through his many years of experience he has a good working understanding of conveyor trusses and steel members and what loading they can support such that he was able to determine what should be used to create structures to cater for specified loading.

(2)  Significantly, he is able to provide documentary evidence, namely the method statement, the Hand Drawn Plans and the KT Plans, showing the genesis and development of his design and how that design was graphically represented.

(3)  Further, he is able to supplement the documentary evidence with detailed explanations on how he came up with each of the components in the PFSF identified in §37 above in his witness statements and oral testimony.

(4)  As to communication with Lambeth, (i) there is documentary evidence showing the KT Plans had been provided to Lambeth; (ii) Jacky Wong’s 2017 WS admitted that the Hand Drawn Plans were provided to him; (iii) TP Wong was able to produce Jacky Wong’s name card with Jacky Wong’s handwritten address of Lambeth’s Shenzhen office; and (iv) in his 2017 WS Jacky Wong admitted to have received instructions and directions from TP Wong (§85(2) below).

85.As to Jacky Wong’s on the SF 2003 Plans:-

(1)  I have already dealt with the overall lack of credibility in Jacky Wong’s testimony in §§53 to 56 above.

(2)  Moreover, when one looks at the 2017 WS closely, it is clear that Jacky Wong (i) admitted TP Wong (as part of the “operation team”) provided input and instructions on the SF 2003 Plans (he stated that he did not agree the SF 2003 Plans “were drawn up entirely based on [TP Wong’s] instructions and directions”, emphasis added); (ii) stated that Lambeth’s role was that of “designing the entire structural system”; (iii) he received information from Hau on the specific information on design, height, capacity and equipment, as well as the Hand Drawn Plans.

(3)  What the “structural design” meant only became clear in his oral testimony.  Evan though Jacky Wong never gave his answers directly, when one go through all of his answers it became clear that he was referring to the structural calculations (which were required to be prepared under PS Appendix 6.2.4 and submitted to the independent certification engineer to certify), as he confirmed that (i) he could not do layout and he was given the layout which he then drew “to scale”; (ii) he had no idea as to the process (or “flow”) of materials through the PFSF; (iii) he did not know what should be the conveyor length or height; (iv) he did not know anything about the functional details of the equipment and even got the name wrong (he referred to jaw crusher which he admitted to be a mistake); (v) he knew nothing about how the equipment should be placed and at what angle and had to rely on others (he claims to be Hau) to tell him.

(4)  Structural calculations are different from, and not part of, the SF 2003 Plans. The structural calculations for the TKO137 PFSF were not in evidence (since TP Wong and the Plaintiff were not involved in their preparation) but the ones for the TM38 PFSF were, and these were calculation sheets done by the consultancy that prepared the construction drawings for TM38 PFSF, demonstrating through formulae how particular structures could sustain particular loading.

(5)  In the 2017 WS, there was only one paragraph (§11) on how Jacky Wong came up with the design of the structural system of TKO137 PFSF. However, other than general assertions that he came up with the design, he only made reference to the barging conveyor and the berthing structure, but in each case he just gave a description of their physical appearance, as opposed to how he came up with the design.

(6)  Nor was Jacky Wong able to give relevant evidence in his oral testimony.

(a)  For the barging conveyor, he (i) accepted that its length and width were bespoke and related to production capacity, and both (as well as the steel members chosen) were provided to him by the “operation team”; (ii) he did not know why a weighing hopper was installed (which affected the angle of the barging conveyor); (iii) he claimed that the 2 wire ropes on the barging conveyor was “his job” but he did not know that a total of 4 wires were installed in P’s Installation or why.

(b)  For the berthing fender, he gave inconsistent explanation for the change from the initial straight-line design to the cantilever (bent) design – in the 2017 WS he explained that it was due to his being told by Hau that nothing could be fastened to the sloping seawall; in his oral testimony he said the cantilever design was to cater for the difference in level of the barges depending on whether full or empty load and high or low tide, and in any event he claimed there was no difference in design concept whether the fender is straight or bent. 

(7)  Thus, it is clear that despite his general assertions of being the one who came up with the design, Jacky Wong has not been able to condescend on particulars as to how he came up with the design at all.

(8)  I bear in mind that there being no dispute that Lambeth generated the (digitized) SF 2003 Plans, the ultimate question I have to consider is whether Lambeth just followed TP Wong’s directions and instructions, or that it was at liberty to change things as it liked or saw fit.  However, there is simply no evidence from Jacky Wong that there were aspects of the design or depiction communicated to him which he did not agree with and ignored and replaced with his own design.  As Mr Liao submitted, Jacky Wong’s evidence was all-or-nothing – he said he created the (structural) design and his team executed it.  As such, my rejection of his evidence means that there is no factual foundation to say that he or the Lambeth team had a creative role in some aspect of the SF 2003 Plans.

86.In the premises, I find that the SF 2003 Plans were created based on TP Wong’s designs and depictions, communicated to Lambeth through the Hand Drawn Plans and the KT Plans, meetings between TP Wong and the Lambeth team in Shenzhen, as well as comments and feedbacks from TP Wong on draft plans produced by Lambeth.

(1)  As to the SF 2003 Plans in §81 above which I have found to have been copied from the KT Plans, clearly those were the work of TP Wong and Lambeth’s role was no more than one of scribe.

(2)  For the remaining SF 2003 Plans in §37 above:-

SF 2003 Plan	Findings
Layout and elevations
SF104	(1)  This shows the elevation of conveyor belts through the covered tunnel. The numbering of conveyor belts, depiction of conveyor belts and placement of conveyors and hopper are consistent with layout plan designed by TP Wong. Taking into account also the matters in §§84 to 85 above, I find that this was created on the instructions of TP Wong.
SF105	(2)  This is the elevation of the barging conveyor, but again the numbering of conveyor belts, depiction of conveyor belts and placement of conveyors and hopper are wholly consistent with layout plan designed by TP Wong.  Taking into account also the matters in §§84 to 85 above, I find that this was created on the instructions of TP Wong.
VGF structure and retaining wall
SF112 SF113	(3)  These are details of the reinforced concrete foundation and connection points for the VGF support structure (SF110 and SF111) which I have already found to have been copied from the KT Plans.  These details necessarily follow from the design and dimensions of the support structure. They also bear visual similarities to the foundation drawing and connection drawings in the KT Plans. In the premises, I find that they were created on the instructions of TP Wong.
SF106 SF107	(4)  These are drawings showing the construction sequence and details on how the sheetpile retaining wall at the decanting point was to be secured against the earth-filled ramp.  Given (i) these details must necessarily follow from the design and dimensions of the support structure, which were created by TP Wong and (ii) the matters in §§84 to 85 above, I find that they were created on the instructions of TP Wong.
Vibrating screen structure
SF121	(5)  I have already found that SF120 (elevation and foundation) as near identical to the KT Plans, and in SF121 a number of connection details are similar to that in the KT Plans (§81(9)-(13) above).  For the remaining connection details, taking into account (i) these details must necessarily follow from the design and dimensions of the support structure, and (ii) the matters in §§84 to 85 above, I also find that they were created on the instructions of TP Wong.
Barging conveyor
SF167	(6)  This includes 2 drawings, an elevation view and an aerial view of the barging conveyor. Taking into account (i) Hand Drawn Plans D, E and F (which depict TP Wong’s design of the barging conveyor), including, at the bottom of Hand Drawn D, an aerial view of the barging conveyor with the walkway depicted immediately above it; and (ii) the matters in §§84 to 85 above, I find that this was created on the instructions of TP Wong.
SF168 SF169 SF170 SF171 SF172	(7)  These are drawings on the sectional view of the conveyor support frame, conveyor truss fabrication plans and details of the connection points on the barging conveyor.  These details necessarily follow from the design and dimensions of the barging conveyor. They also bear visual similarities to the connection drawings in the KT Plans. I also take into account the matters in §§84 to 85 above. Accordingly, I find that they were created on the instructions of TP Wong.
Berthing fender
SF146	(8)  The elevation drawing in SF146 is visually very similar to Hand Drawn Plan C, not just in the overall shape but how many different segments and where one finds the sign for the connection points (“I”). The aerial and sectional drawings on SF146 necessarily follow from this design. I also take into account the matters in §§84 to 85 above. I find that SF146 was created on the instructions of TP Wong.
SF147 SF148	(9)  These are details of the connection points on the berthing fender.  These details necessarily follow from the design and dimensions of the berthing fender. They also bear visual similarities to the connection drawings in the KT Plans. I also take into account the matters in §§84 to 85 above. I find that these were created on the instructions of TP Wong.
Conveyor support structure
SF161 SF163  SF165	(10)  These are (i) cross section of the typical conveyor truss; (ii) elevation plans of the typical conveyor support frames and (iii) connection details for (ii).  In light of my finding in (7) above, I also find that they were created on the instructions of TP Wong.

(F.3)  Findings on originality

87.In light of my findings in Section F.2 above, the only remaining issue to consider before I reach a final view on originality is the Defendant’s contention that with respect to a number of SF 2003 Plans, they were based on earlier drawings and hence not original.

88.In approaching this issue, I remind myself that originality in this context focuses on the visual significance (as opposed to concepts or ideas), and the threshold is a low one of expending more than negligible or trivial effort or relevant skill in the creation of the work (Section F.1 above).

89.The specific SF 2003 Plans the Defendant challenges and my findings thereon are as follows:-

SF 2003 Plan	Prior Plans	Findings
SF102 SF103 SF104 SF105	Gammon Tender Plans	(1)  These depict the flow of the PFSF process. However, the flow depicted is different, the graphic representation is very different (eg it was a straight line up for the conveyor belts all the way from decanting point to top of stockpile). Plainly the SF 2003 Plans did not copy them, whether in terms of process or graphic depiction.
	K Wah quarry plan	(2)  The elevation drawings in the K Wah plans show the flow of quarry process through a series of conveyor belts with equipment or stockpile in between. However, not only is the flow different, graphically or pictorially each of the components are also depicted in a completely way than the SF 2003 Plans. I do not accept the SF 2003 Plans copied from this.
SF 106 SF 107	Gammon Tender Plans	(3)  These concern the details on how to secure the sheetpile against the earth-filled ramp.  What the Gammon Tender Plans show is the concept (use tie bar to hold down the sheetpile and anchor the end of the tie bar at fixed points inside the ramp); as found in §86(4) above SF106 and SF107 (which are concerned with details) necessarily followed the detailed design of the VGF structure. I do not find that they copied from the Gammon Tender Plans.
SF111	Equipment installation drawing	(4)  These catalogue drawings only show the VGF in front and side elevation view, which is just one part of SF111 and does not touch on the design depiction of the structure frame. In any event, even the graphic representation of the VGF in the catalogue drawing is different from that in the SF 2003 Plans (which are identical to the KT Plans)
SF120	Equipment installation drawing	(5)  This catalogue drawing only shows the vibrating screen side elevation view, which is just one part of SF120 and does not touch on the design depiction of the structure frame. In any event, even the graphic representation in the catalogue drawing is different from that in the SF 2003 Plan (which is identical to the KT Plan).
SF167	Equipment sales brochure	(6)  The brochure only shows a conveyor belt elevated on one end secured by wires. It is visually very different from SF167.
	Gammon Tender Plan	(7)  The Gammon Tender Plan presents a rudimentary concept of an overhanging conveyor secured by 2 wires. However the alignment, the detail items (eg the pre-cast blocks) and even the conveyor belts are graphically very different. The similarity (if any) between the 2 exists in concept, not visual presentation.
SF169 SF170	MTRC 612 drawing	(8)  The shapes used in the MTRC drawing are common (rectangle divided into smaller squares with diagonal lines across), and TP Wong admits that the KT Plan on typical truss details were copied from the MTRC drawing. However, as found in §86(7) above SF169 and SF170 (which are concerned with fabrication details) necessarily followed the detailed design of the barging conveyor; in any event the visual appearance of SF169 and SF170 (as opposed to the shapes they are made up of) is similar to that of the MTRC drawing.

90.In the circumstances, I find the SF 2003 Plans were created on the instructions of TP Wong, and they satisfied the threshold of originality for copyright to subsist.

G.  P’S INSTALLATION

91.The issue of P’s Installation arises because it is said that there are some additional or different features in in some of the SF 2005 Plans, rendering them different from the SF 2003 Plans, and the Plaintiff says that those differences fully reflected P’s Installation as built, even though they had not made their way into further revisions of the 2003 SF Plans. 

92.First and foremost, having compared the photographs of the TKO137 PFSF with 2 sorting lines as built in 2004, and I find that P’s Installation was constructed as per the SF 2003 Plans, subject to §§93 and 94 below.

93.The differences that the Defendant relies on are as follows:-

	SF 2003 Plans	SF 2005 Plans	Difference
(1)	SF101	SF101 rev.7	There is an additional vibrating screen in sorting line 1 between conveyor belts C12 and C13.
(2)	SF102 SF103	SF109	The barging conveyor is depicted after the stockpile in the elevation drawing of the sorting line.
(3)	SF111	SF116	Depiction of a hopper immediately above the VGF.
(4)	SF167	SF191	Depiction of (i) an additional counterweight and (ii) 4 sets of wires for the barging conveyor, with (iii) portion of the conveyor overlapping with the weighing hopper removed.
(5)	SF168	SF192	“Section b-b” footing for the conveyor support frame changed from pipe pile to steel member.
(6)	SF172	SF196	Changed from 2 to 4 sets of wires for the barging conveyor

94.Two questions arise for consideration.  The first is whether, on the facts, the features identified in §93 above were part of P’s Installation as built.  Having considered the photographs of P’s Installation in 2004 I am satisfied that each of the above features existed in the as-built P’s Installation.

95.The second question is a legal one, namely whether P’s Installation falls under Cap.528 section 5 and is capable of attracting copyright protection.

96.The only candidate in section 5 is “a work of architecture being a building or a model for a building” (item (b) under “artistic work”), which “building” is further defined as “includes any fixed structure, and a part of a building or fixed structure”.

97.Mr Liao argues that P’s Installation did not fall within the aforesaid definition for 2 reasons:-

(1)  P’s Installation was a temporary structure, as defined in main contract for the PB Project; and

(2)  “work of architecture” on its proper construction imports a requirement of artistic quality, which P’s Installation did not possess.

98.I do not accept Mr Liao’s first argument.  The relevant consideration is whether P’s Installation was a “fixed structure”. “Fixed structure” is not defined in Cap.528.  Mr Liao submits that a building or structure must be of such a character as is usually erected upon, or constructed under, the ground and that in each case it involves something of substance, with an element of permanence: Copinger §§3-149-3-150.  I accept that submission.  P’s Installation clearly had the necessary degree of substance and permanence (contrast that with, for example, a marquee or a tent).  It is not disputed that P’s Installation was constructed and remained on TKO137 between 2003 and 2007, when it was dismantled.  How the PB Project main contract chose to define the PFSF is not relevant to the interpretation of Cap. 528.

99.As to Mr Liao’s second argument, he relies on Copinger §§3-148 and 3-152 and Beazley Homes Ltd v Arrowsmith [1978] 1 NZLR 394, 400 to contend that a “work of architecture” (item (b) of “artistic work” in Cap. 528 section 5) requires artistic quality.

100.Dealing firstly with Copinger:-  

(1)  The 18^th edition §3-148 contains a statement that “While drawings are protected ‘irrespective of artistic quality’, the omission of these words in respect of architectural works maintains, in effect, the requirement under the 1911 Act that such works, in order to be architectural works, must have some artistic character.”

(2)  Mr Liao’s research showed that this statement went back to the 13^th edition of Copinger (1991) §2-26, which contained an assertion “However, it is thought that omission of such words in the 1956 Act did not produce any substantial alteration in the law. While drawings and plans are protected ‘irrespective of artistic quality’, the omission of these words in respect of architectural works maintains, in effect, the requirement under the 1911 Act that such works in order to be architectural works, must have some artistic character or design.” No authority had been cited for that proposition. That statement was carried over into all subsequent editions of Copinger.

(3)  It appears that the Copinger statement was based on construing “work of architecture” in item (b) against “graphic work, photograph, sculpture or collage” in item (a), which is expressly stated to be “irrespective of artistic quality”.

(4)  However, I accept Mr Chain’s submission that this statement in Copinger wholly ignored the legislative history of the UK Copyright Act, which is of course part of the context against which any statutory interpretation exercise should be carried out.

(5)  The relevant legislative history of the UK Copyright Acts could be found in George Hensher Ltd v Restawile Upholstery (Lancs.) Ltd [1976] AC 64, 77G-78B, 80D-H, 85D-G, 89C-91C and Lucasfilm Ltd v Ainsworth [2012] 1 AC 208, §§14-26.  In short:-

(a)  In the Copyright Act 1911, section 35 conferred copyright protection on “architectural work of art”, which was defined as any building or structure having an artistic character or design, and there was an express proviso that protection should not be extended to processes or methods of construction.  In the same Act, paintings, drawings, sculpture, engravings and photographs were protected whether they had any artistic character or not.

(b)  In the Copyright Act 1956, section 3(1)(a) made explicit the works to which it referred need have no artistic quality, and section 3(1)(b) removed the need for any artistic character or design in buildings, but section 3(1)(c) preserved the limitation and required artistic craftsmanship.  This definition was adopted in and became the items (a), (b) and (c) in the definition of “artistic work” in Cap. 528 section 5.

(c)  The definition in the 1956 Act was carried over into the Copyright, Designs and Patents Act 1988.

(6)  When one examines the legislative history, it is clear that with respect to “work of architecture”, there was a deliberate decision to remove all references to and requirement for “art” or “artistic character” in the 1956 Act, which was simply carried over to the 1988 Act and our Cap.528.

(7)  Accordingly, it would be wrong to simply construe item (b) against item (a), and say that because item (a) stipulates “irrespective of artistic quality” and such words are absent in item (b), it must follow that item (b) requires artistic quality. On the contrary, the legislative history of item (b) shows that the words used mean exactly what they say; that is, there is no requirement for artistic quality in a work of architecture.

101.As to Beazley Homes, I also do not think it assist the Defendant’s argument. 

(1)  In that case, the court was not focusing on whether a work of architecture needs to have artistic quality; rather it was concerned with the meaning of “work of architecture” itself (which in the New Zealand Act had a different and narrower definition, namely “being either buildings or models for buildings”), and held that a work of architecture must be a work in the design of which some skill is apparent, in that it must be the product of some skill or experience in design or construction, otherwise it would be a work without architectural content: 400:33-52.

(2)  In that case, which concerned low-cost housing, the court held on the facts that to design group houses at low cost to give essentially a rectangular box an individuality and pleasing appearance as a house met the threshold for a degree of architectural content.  That was a finding of fact, and the court did not (as Mr Liao seeks to do) elevate “pleasing appearance” into a requirement for work of architecture.

(3)  Applying the test in Beazley Home, I am satisfied that the TKO137 PFSF was the product of some skill or experience in design or construction, and hence qualified as a work of architecture.

102.Finally, Mr Liao invites me to borrow from Lucasfilm and find that one can look at the purpose of the structure, and if the fundamental point of the purpose is functional and not pleasing to the eye, then it would not qualify as a work of architecture. I do not accept that argument, because Lucasfilm is concerned with the meaning of the word “sculpture” and in particular its natural and ordinary meaning. The exercise is a fundamentally different one from construing “work of architecture” and I do not consider the Supreme Court’s reasoning could be transposed into the present construction exercise.

103.In the premises, I find that P’s Installation was a “work of architecture” and was thus protected under Cap. 528 section 5.

104.I should mention that with respect SF191 and SF192 (§93(4)(5) above), the is a further argument by the Defendant (which was not pursued with any vigour) that the as-built changes were not original. Given my findings on originality of the SF 2003 Plans, and the low threshold for originality, I fail to see how the aforesaid changes, which were directed or instructed by TP Wong, would not have met that low threshold. Accordingly I find that the aforesaid aspects of P’s Installation satisfied the threshold for originality.

H.  SF 2003 PLANS – OWNERSHIP

105.Given my findings in Section F.2 above, this issue can be disposed of relatively quickly.

106.First, section 13 of Cap. 528 provides that the author of a work is the first owner of any copyright in it, subject to sections 14, 15 and 16.  Author, in relation to a work, is defined in section 11(1) to mean the person who creates it.  Here, I have found that TP Wong was the person who created the SF 2003 Plans and P’s Installation.

107.Second and as mentioned above, section 13 is subject to sections 14 to 16, which concern employee works (section 14), commissioned works (section 15) and Government and Legislative Council copyright (section 16).

(1)  Section 14(1) provides that where an artistic work is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to (inter alia) any agreement to the contrary.  Here, there is no dispute that TP Wong created the SF 2003 Plans in the course of his employment and there being no suggestion of any agreement to the contrary, the Plaintiff should be the first owner.

(2)  However, section 15(1) goes on to provide that:-

“Where a work is made on commission of a person and there is an agreement between the author and the commissioner of the work which expressly provides for the entitlement to the copyright, copyright in the commissioned work belongs to the person who is entitled to the copyright under the agreement.”

(3)  The purpose of Cap. 528 sections 14 and 15 is that copyright should vest in the entity for whom the work was created and who paid for it: Mei Fields Design Ltd v Saffron Cards and Gifts Ltd [2018] ECDR 26, §42.

(4)  In this case, there is an issue on whether copyright should vest in the Plaintiff or Gammon pursuant to the contractual arrangements in §§13, 18 to 20 above.  In the Amended Statement of Claim pleaded the various contracts and sub-contracts (§5), that the Plaintiff had the contractual responsibility to design (§6), and the Plaintiff is the sole owner of the copyright subsisting in the SF 2003 Plans (§8).  The Defendant joined issue on the same, and pleaded that the SF 2003 Plans and copyright therein were the property of Gammon by reason of the Gammon Copyright Notice (§8.2).

(5)  Accordingly, I do not think Mr Liao could complain (as he did in closing) that the Plaintiff could not invoke section 15 before it was not pleaded.  First, it is not necessary to plead law; and second, the issue has been squarely raised in pleadings by both sides.

(6)  As to the substance of the argument, it is a matter of contractual interpretation.  For the reasons below, I find that under the series of contracts and sub-contracts, ownership of the copyright in the SF 2003 Plans and P’s Installation vests in the Plaintiff.

(a)  Under the main contract for the PB Project (as between the Government and Gammon), Special Conditions of Contract clauses 10(1), (2)(a), (10)(a) and (13)(a) and (c) show that Gammon was  responsible for design of the works[8], and intellectual property rights in the design were owned by Gammon, or (if owned by one other than Gammon) Gammon should procure the grant of a licence for use in the PB Project.  PS Appendix 6.2 clause 6.2.1 expressly provides that Gammon (as contractor) shall design the PFSF.

(b)  The sub-contract between Gammon and Win Hing was with respect to the TKO137 PFSF only.  The sub-contract was acknowledged to be a back-to-back contract and expressly provided that its terms would fully reflect the requirements “in respect of the [PFSF] works as contained in the [main] contract”.  Mr Liao argued that since SCC 10(1) only concerns “permanent works” (see footnote 8) it was not incorporated into the Win Hing sub-contract, because the PFSF was defined as “temporary works” under the main contract. I reject that submission. The italicized wording above clearly shows that all of the main contract provisions which were relevant to the PFSF were incorporated into the sub-contract. This must include not only the Particular Specifications pertain to the PFSF (PS Appendix 6.2) but also the corpus of provisions in the General and Special Conditions of Contract (including SCC 10) insofar as they are relevant to the execution of the PFSF works. In this case, SCC 10 was clearly relevant, as it governs (inter alia) the responsibility for the design, the preparation of drawings, and changes to the design in the course of the works.  Thus, under the terms of the sub-contract, and responsibility for the design and the copyright associated with it vested in Win Hing.

(c)  Going then to sub-sub-contract between Win Hing and the Plaintiff, (i) as can be seen from the Plaintiff’s quotation (§ above), its responsibility included “to install a PFSF plant as specified by the attached method statement” (emphasis added), which included various hand-drawn plans showing the design thereof, thus showing that the Plaintiff’s proposal and the price it quoted included the design; (ii) the hand-written note on the quotation expressly indicated that all of the relevant “specifications and requirements of the Main Contract” would be applicable; and (iii) the letter of acceptance from Win Hing also expressly stated that the sub-sub-contract terms would fully reflect the requirements “in respect of the [PFSF] works as contained in the [main] contract”.  I therefore find that under the sub-sub-contract, the responsibility for the design of the TKO137 PFSF and the copyright associated with it vested in the Plaintiff.

108.Third, as to the Defendant’s reliance on the Gammon Copyright Notice, Mr Liao submitted that under section 115(2) and (4) of Cap. 528, in an artistic work the person whose name appears on the works purporting to be the author or the publisher (if no name for author) is presumed to be the author or the owner of the copyright, until the contrary is proved.  I do not see how this avails the Defendant, since this is only a presumption and consequent upon my findings in Section F.2 and also above, the contrary has been proved.

109.For completeness:-

(1)  Although the Plaintiff has pleaded an alternative case of joint authorship between the Plaintiff and Lambeth (Cap. 528 section 12 and Martin v Kogan [2020] ECDR 3, §31), given my findings in Section F.2 above (in particular §85(8)) this does not fall to be considered.

(2)  Although the Defendant tried to raise an issue based on “computer generated works” in Cap.528 in oral opening, Mr Liao has since confirmed that he no longer pursues that point.

I.   SF 2005 PLANS

110.The gravamen of the Plaintiff’s claim is that the Defendant has infringed its copyright by the MS Plans as well as the PFSF constructed for the HZMB Project (defined as the “Infringing Installation” in the pleadings).  The relevant plans are:-

	SF 2003 Plan	SF 2005 Plan	MS Plan
	Layout
1	SF101	SF101 rev.7-8	MS/001 MS/003 MS/004
2	SF102	SF109	MS/002
3	SF103
4	SF104
5	SF105
	VGF structure
6	SF106	SF190	MS/011
7	SF107		MS/012
8	SF110	SF115	MS/021
9	SF111	SF116	MS/005 MS/022
10	SF112	SF117	MS/023
11	SF113	SF118	MS/024
	Vibrating screen structure
12	SF120	--	MS/025
13	SF121	--	MS/026
	Barging conveyor
14	SF167	SF191	MS/007 MS/041
15	SF168	SF192	MS/042
16	SF169	SF193	MS/043
17	SF170	SF194	MS/044
18	SF171	SF195	MS/045
19	SF172	SF196	MS/046
	Berthing fender
20	SF146	--	MS/051
21	SF147	--	MS/052
22	SF148	--	MS/053
	Conveyor support structure
23	SF161	SF161 rev.4 & 7	MS/061
24	SF163	SF163 rev.3 & 5	MS/062
25	SF165	SF165 rev.2 & 3	MS/063

111.Seven sets of plans are marked in bold and underline above. With respect to those plans the Defendant does not dispute that the relevant MS Plans were a substantial reproduction of the corresponding SF 2005 Plans and (in the case of those for the berthing fender) of the corresponding SF 2003 Plans (since no SF 2005 Plan had been created in respect of that).  I also refer to Mr Liao’s concession in §40(1) above.  Thus:-

(1)  With respect to #11, #20, #21 and #22 in §110 above, the Defendant concedes that the relevant MS Plans were a substantial reproduction of the relevant SF 2003 Plans, and makes no submissions with respect to #11.  Given my findings that copyright subsists in the SF 2003 Plans and vests in the Plaintiff and the Defendant’s concession, I will make a finding in favour of the Plaintiff on liability with respect to #11, #20, #21 and #22.

(2)  As to #23, #24, #25, although Mr Liao indicated in his written closing that he did not contest they were substantial reproduction, in light of (i) his concession in §40(1) above which was made later and (ii) the lack of clarity as to the scope of his first concession, I will still determine the question of reproduction between the SF 2003 Plans and the SF 2005 Plans with respect to these items.

(3)  With respect to #12 and #13, because there were no corresponding SF 2005 Plans, the assessment will be done as between the relevant SF 2003 Plans and MS Plans.

112.On the SF 2005 Plans and the MS Plans, I repeat §60 above. The position is that:-

(1)  The SF 2005 Plans were produced by Lambeth.  Dee Wong confirmed that he was not involved in their creation, save to the extent of drawing out the layout on a rough piece of paper and showing that to Hau during a casual chat.

(2)  Dee Wong had a complete set of the SF 2005 Plans in his possession, and he admitted that he used them when preparing the MS Plans.

(I.1)  The law on substantial reproduction

113.An action for infringement of artistic copyright is not concerned with the appearance of the defendant’s work but with its derivation. The copyright owner does not complain that the defendant’s work resembles his; his complaint is that the defendant has copied all or a substantial part.  The reproduction may be exact or it may introduce deliberate variations, involving altered copying or colourable imitation. Even where the copying is exact the defendant may incorporate the copied features into a larger work much and perhaps most of which is original or derived from other sources. But while the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendant’s work – thus the overall appearance of the defendant’s work may be very different from the copyright work, but it does not follow that the defendant’s work does not infringe the plaintiff’s copyright: Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, 2425C-E.

114.The question of infringement involves a two-stage inquiry.

115.First, one must identify those features of the defendant’s design which the plaintiff alleges have been copied from the copyright work.

(1)  The concept of reproduction consists of 2 elements: (i) a sufficient resemblance between the copyright drawing and the alleged infringement, and (ii) a causal connection between the two.  Neither element is sufficient.

(2)  One starts with a visual comparison of the 2 designs, noting the similarities and the differences, the purpose of which is to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence.

(3)  The inquiry is directed to the similarities rather than the differences. Differences in the overall appearance of the 2 works due to presence of features of the defendant’s work about which no complaint is made are not material.

(4)  Similarities may be disregarded because they are commonplace, unoriginal or consist of general ideas.

(5)  On the other hand, resemblances in inessentials, and the small, redundant and even mistaken elements in the copyright work, carry great weight, because they are least likely to have been the result of independent design.

(6)  Proof of copying in most cases is a matter of inference.  The closer the similarity between the 2 works, the stronger the inference is likely to be that the one was copied from the other.  If the alleged infringer has had access to, and therefore an opportunity to copy, the copyright work, and the similarity between the works supports an inference of copying, it may well be appropriate for the court to conclude, on the balance of probabilities, that there was indeed copying.

(7)  If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features which he alleges have been copied (as per above), and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the court that, despite the similarities, they did not result from copying.

See Designers Guild 2425E-2426A; Billhöfer Maschinenfabrik Gmbh v T H Dixon & Co Ltd [1990] FSR 105, 107, 123.

116.Second, once it is found the defendant’s design incorporates features taken from the copyright work, the question is whether what has been taken constitutes all or a substantial part of the copyright work: Cap.528 sections 22(3) and 23; Designers Guild 2426A-B.

(1)  Whether a part is substantial must be decided by its quality rather its quantity: Ladbroke (Football) Ltd v William Hill (Football) Ltd[1964] 1 WLR 273, 293.

(2)  In the type of case where an identifiable part of the whole, but not the whole, has been copied, the question whether the copying of the part constitutes an infringement depends on the qualitative importance of the part that has been copied, assessed in relation to the copyright work as a whole.  Since substantiality depends on the relationship between what has been copied on one hand and the original work on the other, similarity is no longer relevant: Designers Guild 2431H.

(3)  To that end:-

(a)  In the case of an artistic work, the question is whether the defendant had taken a substantial part of “that which is visually significant”: Rose Plastics GmbH v William Beckett & Co (Plastics) Ltd (unreported) 2 July 1987, cited with approval in Interlego 266A-B.

(b)  Industrial drawings often consist of shapes copied from earlier drawings (unoriginal shapes) combined with new shares (original shapes). Where a person takes an unoriginal part from a work in which copyright subsists and uses that part in a similar context and way as it was used in the copyright work, the person takes not only the unoriginal part, but also a part of the work of the author that provided the originality; in such a case the amount taken would be likely to amount to a substantial part of the work, because the copier has taken not only the unoriginal part but also much of the work of the author in deciding how and in what way the unoriginal shape should be combined with the original shape: Biotrading & Financing Oy v Biohit Ltd [1998] FSR 109, 122.

(c)  Further, if an artistic work is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information (but not by how important that information may be which it conveys, as copyright does not protect ideas but only the actual forms in which the ideas are expressed): Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, 223, cited in Interlego 265F-G.  Hence, in the case of industrial drawings, the mere fact that a functionally important feature of the design has been copied does not necessarily make it “more potent” for demonstrating that a substantial part of the drawing had been reproduced; ultimately the question is whether the feature copied has substantial significance in the visual image of the artistic work: Johnstone Safety Ltd v Peter Cook (Intl) Plc (unreported) 13 July 1989, applied in Billhöfer 120, 121.

(d)  Moreover, whether the actual dimensions and spatial relationships visually depicted on the drawing are sufficiently important to be a substantial part depends upon their significance to the kind of person to whom the drawing is addressed; in other words, “visually significant” is not to be equated with significant to the layman: Billhöfer 122. This question is one of fact and degree: op.cit.

(4)  In the other type of case, where the copying has not been exact copying of the copyright work but a copying with modifications (sometimes referred to as “altered copying”), the question the court faces is whether this is a permissible borrowing of an idea or an impermissible piracy of the artistic creation of another.  In such a case, one asks whether the infringer incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work, and unlike the first type of cases (in (2) above), the extent and nature of the similarities between the altered copy and the original work play a critical and often determinative role.  In other words, if the similarities between the 2 works are so extensive and of such a nature as to justify a finding that, in the absence of acceptable evidence of an independent provenance the defendant’s work is copied from the copyright work, it follows that the defendant’s work incorporated a substantial part of the copyright work: Designers Guild 2431H-2432C, 2432G-H.

(I.2)  Findings on substantial reproduction

117.Given Lambeth generate the SF 2003 Plans there is no question of access. Accordingly, I would only need to consider if there was copying, and if so whether the copied part was a substantial part of the copyright work.

118.I now turn to the relevant plans:-

#	SF 2003 Plan	SF 2005 / MS Plan	Findings
	Layout
1	SF101	SF101 rev.7-8	(1)  The relevant comparison is between the third sorting line on SF101 rev.7-8 and the first sorting line (with conveyor belts C11 to C13 and C31 to C32). (2)  I am satisfied that the third sorting line copied the first sorting line (both in the SF 2003 Plan and P’s Installation).  The ordering and graphic depiction of each component of the sorting line is identical or near identical. The alignment of the third sorting line is substantially the same as the first sorting line, with the exception of conveyor C44 which is at angle of around 120o (as opposed to horizontal in the first sorting line), but that must have been dictated by the site constraints since there was not enough space for C44 to be fully horizontal. Further, the description of the equipment (“identical to existing [equipment]”) also indicates copying. (3)  The copying is basically all of the copyrighted first sorting line. I find substantial reproduction established.
2	SF102	SF109	(4)  SF109 clearly copied (i) the top drawing in SF102; (ii) the top drawing in SF103; (iii) SF104 (SF104 shows 2 sorting lines converging in the stockpile and SF109 fully copies one of those sorting lines since it is an elevation view which only needs to show one line). The only difference is that in (i), SF109 added some graphic representation of the steel supports for the conveyor belts. That, however, is an insubstantial dissimilarity and I find that there is near 100% copying of the above. (5)  As to SF105 (elevation of barging conveyor), I do not find that to be copied from SF105, but it was copied from the as-built P’s Installation, with 4 sets of wires installed. (6)  Although the copying in each case is not the whole of SF102, SF103, SF104 and P’s Installation, the copied parts are not only visually significant, but also qualitatively important to the SF 2003 Plans, since they graphically represent what the whole of the first sorting line looks like. I find the reproduction to be substantial.
3	SF103
4	SF104
5	SF105
	VGF structure
6	SF106	SF190	(7)  The “elevation” and “section 1-1” drawings in SF190 copy the corresponding drawings in SF106 in full, in each case with some very minor additions (a few lines have been added). (8)  Although there are 5 other drawings (on connection details) in SF106 which have not been copied, given the drawings copied are the most significant in terms of information conveyed (since they show the overall position on how the retaining wall is to be anchored to the earth-filled ramp), I consider substantiality to have been established.
7	SF107		(9)  SF107 shows the construction sequence of the anchors. I do not find SF190 to have copied it. (10)  However, when one looks at the corresponding MS/012, it is a near 100% copy of the whole of SF107. There are some very minor differences (eg the use of a curve behind the anchor points in SF107 but a line in MS/012) but they make no impact on the visual appearance, which was essentially identical. (11)  The copying in MS/012 is clearly substantial, given it is nearly 100%.
8	SF110	SF115	(12)  Both SF110 and SF115 contain 3 drawings. SF115 clearly copied one half of each of the drawings in SF110 (since SF110 shows 2 VGFs side by side whereas SF115 only shows one). Even the way the 3 drawings and the column schedule are positioned in SF115 is identical to that in SF110. (13)  The copying is substantial. The fact that SF115 has not copied both halves of each drawing in SF110 is irrelevant since the 2 halves are identical. SF115 has copied what is the most significant in terms of information conveyed.
9	SF111	SF116	(14)  The “front elevation” and “section A-A” drawings in SF116 copied from the corresponding drawings in SF111. Although the “front elevation” in SF116 only shows one VGF whereas that in SF111 shows 2, the half in the SF111 drawing is basically copied almost 100% in SF116. There are some very minor differences (eg SF116’s structure is a bit more elongated than that in SF111), but given the striking similarity in overall visual appearance and the identity in the details, I find that those drawings in SF116 were copied. (15)  Although the copying only concerns 2 of the 3 drawings on SF111, they are clearly substantial. I note that the drawing not copied is only another sectional view; in other words the most significant information to be conveyed by SF111 has already been copied. I find copying to be substantial.
10	SF112	SF117	(16)  The comparison is between the top left drawing in SF112 and SF117, which concerns the details (on reinforced concrete)  for the VGF. (17)  On copying, the shape is different – SF117 is a square whereas SF112 shows a rectangle. However, that is due to the fact that SF112 shows 2 VGFs side by side whereas SF117 only shows one. If one examines the details of the drawing, the lines used, the positioning, where measures are positioned, and even the description given to this drawing which are all identical or near identical, it is a case of copying. (18)  I have not found the question of substantiality to be easy here, given this is a rather simplistic drawing and uses very common shapes and lines. However, taking into account significance is to be assessed by reference to the kind of person to whom the drawing is addressed, and in this case the copied materials clearly convey information which would be considered important by the contractor or architect who views it, ultimately I conclude that substantiality has been established.
	Vibrating screen structure
12	SF120	MS/025	(19)  Each contains 5 drawings. I find MS/025 to have copied practically all of SF120, with the exception of the hopper in “plan on top”, the hopper in “elevation”, and the positioning of the conveyor belt in “elevation”. (20)  Given the extent of copying, substantiality is established.
13	SF121	MS/026	(21)  I find that SF121 has been copied 100% into MS/026. (22)  Although MS/026 has an additional “section d-d” under “detail 5”, that is not relevant for substantiality; given (21) above substantiality is clearly established.
	Barging conveyor
14	SF167	SF191	(23)  SF167 has been wholly copied into SF191, with the exception of the positioning of the hopper at the end of the barging conveyor. I find copying to have been established. (24)  SF191 contains 2 additional features that SF167 does not have, namely a counterweight, and 2 additional sets of wires.  These I have found to have been copyrighted work in P’s Installation. I find that for those features in SF191, they were copied from P’s Installation. (25)  Given the extent of the copying, substantiality is clearly established.
15	SF168	SF192	(26)  SF168 has been wholly copied into SF192 (“section a-a” and “section b-b”, there are Eve3 other drawings but that do not impact the issue of copying), with the exception that the pipe pile footing in “section b-b” in SF168 has been changed into steel footing in SF192. That however does not affect the finding on copying. (27)  The change in footing in SF192 is copied from P’s Installation (see §§93 to 94 above). (28)  Given the extent of copying, substantiality is clearly established.
16	SF169	SF193	(29)  SF193 is a 100% copy of SF169, even down to the misspelling of “segement”. The alignment and the graphic depictions of the different segments of the conveyor truss and the key plan are identical. SF193 has an additional elevation drawing of the barging conveyor, but that does not affect the question of copying in this case. (30)  Given the extent of copying, substantiality is clearly established.
17	SF170	SF194	(31)  Again, SF194 is a 100% copy of SF170, even down to the misspelling of “segement”. (32)  Given the extent of copying, substantiality is clearly established.
18	SF171	SF195	(33)  SF195 is a 100% copy of SF171, even down to the use of “Detail J” and “Detail H” (which do not follow as there are no Details A to I there). (34)  Given the extent of copying, substantiality is clearly established.
19	SF172	SF196	(35)  I find that (i) Detail A; (ii) Detail E; (iii) Detail x; (iv) “elevation” in Detail D; (v) “elevation” in Detail C in SF172 have been copied into SF196. In the case of (i), (ii) and (iii) the copying is 100%; in the case of (iv) and (v) the drawing in SF196 display some minor differences (mostly due to the fact that they are slightly wider), but the visual appearance as well as much of the details remain the same. (36)  As for “elevation” in Detail B in SF196, that is copied from the as-built P’s Installation, which had 4 sets of wires. (37)  Although not all of the drawings in SF172 have been copied, the copied parts convey important information to the target audience and hence constitute a substantial part of SF172. (38)  With respect to the copied part of P’s Installation, I consider that it conveys important information to the target audience and hence constitutes a substantial part.
	Conveyor support structure
23	SF161	SF161 rev. 4 & 7	(39)  SF161 rev. 4 is a 100% copy of SF161. As for rev.7, it wholly copies SF161 save for the “cross section of truss”. (40)  Given the extent of the copying, substantiality is clearly established.
24	SF163	SF163 rev. 3 & 5	(41)  SF163 rev. 3 & 5 are 100% copies of SF163. (42)  Given the extent of the copying, substantiality is clearly established.
25	SF165	SF165 rev. 2 & 3	(43)  SF165 rev. 2 & 2 are 100% copies of SF165. (44)  Given the extent of the copying, substantiality is clearly established.

119.Given the Defendant’s concession in §40(1) above, with respect to the corresponding MS Plans (as detailed in §110 above) I find that they have infringed the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation to the extent identified in §118 above.

120.The Plaintiff has pleaded, as one item of the infringing works, the PFSF erected by the Defendant for the HZMB Project in accordance with the MS Plans.  In answer to that plea the Defendant admitted that the PFSF was erected and installed at TKO137 and was operated by it, and pleaded that the design was that of Sharon (a case that it no longer pursues).  In other words, on the pleadings the Defendant does not appear to dispute that the PFSF installation for the HZMB Project was constructed as per the MS Plans.  There is also nothing in the evidence of the Defendant’s witnesses to suggest otherwise.  In the premises, I find that the Defendant’s PFSF for the HZMB Project had also infringed the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation to the extent identified in §118 above.

J.  CONCLUSION

121.To conclude, I find that the Defendant has infringed Plaintiff’s copyright in the SF 2003 Plans and P’s Installation by (i) the MS Plans and (ii) the Defendant’s PFSF installation in the HZMB Project to the extend identified in §§111(1) and 118 above.

122.As to costs, I make an order nisi with respect to the costs of the trial on liability in favour of the Plaintiff, with certificate for two counsel.

123.Finally, I wish to express my gratitude to counsel for their assistance in this case.

Mr Christopher Chain and Ms Stephanie Wong, instructed by Y.S. Lau & Partners, for the Plaintiff    

Mr Andrew Liao SC and Mr Leung Sze Lum, instructed by Wellington Legal, for the Defendant