Hoho Medical Ltd v. Hong Kong Platinum Health Medical Co Ltd and Another

HCIP 9/2022

[2024] HKCFI 2078

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 9 OF 2022

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BETWEEN

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REASONS FOR JUDGMENT

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1.In the hearing on 31 July 2023, I granted summary judgment in favour of the Plaintiff against the Defendants. I now give my reasons.

2.In this action, the Plaintiff claims against the Defendants for infringing its alleged copyright subsisting in 2 artistic works and 7 literary works relating to the promotional materials of wheelchairs (“the Plaintiff’s Works”).

3.The legal principles governing summary judgment applications are trite and I do not intend to repeat the same here.

4.Since the Defendants published the alleged infringing materials (“the Defendants’ Works”)  on the website, this is a case of primary infringement.  Knowledge is therefore a non-issue.

5.The 2^nd Defendant is and was the sole director and shareholder of the 1^st Defendant, and has been responsible for the management decisions, operations and conduct of the 1^st Defendant, including the acts complained of in this action.  The 2^nd Defendant has not put forward any evidence to dispute his role as joint tortfeasor in the event that the Plaintiff’s case against the 1^st Defendant is established.

6.There is no question about the ownership and subsistence of copyright in respect of the Plaintiff’s Works.  The Plaintiff has adduced detailed evidence explaining how the authors came to create those works through the exercise of independent and substantial skill, labour and judgment.  In addition, the Plaintiff has also adduced documentary evidence showing the date of creation of the Plaintiff’s Works.  As all the works were created by the respective authors in the course of their employment with the Plaintiff, the Plaintiff is and was at all material times the owner of such copyright. Apart from the Defendants’ allegation that it was the Plaintiff who copied the Defendants’ Works, which I will deal with in the later part of this Judgment, there is no issue about the ownership and subsistence of copyright.

7.There is also no serious dispute that the copying is flagrant. The Plaintiff’s Works and the Defendants’ Works are substantially similar, and it is simply impossible for the Defendants’ Works to have been created independently without copying the Plaintiff’s Works.  Further, it is common ground that the Defendants have reproduced the Defendants’ Works and published the same on the Defendants’ website.  Again, apart from the Defendants’ allegation that it was the Plaintiff who copied the Defendants’ Works, there is no issue about copying.

8.The Defendants have filed and relied on two short affirmations made by the 2^nd Defendant.  The only defence put forward by the Defendants is that they claim the Defendants’ Works were provided by their Mainland manufacturer.  The Defendants claim that the employees of the Mainland manufacturer “created” those materials before the Plaintiff created the Plaintiff’s Works.  As such, the Defendants contend that it was the Plaintiff who copied from the Defendants’ Works “created” by the Mainland manufacturer.

9.In support of such contention, the Defendants produced various self-serving statements allegedly signed by the authors of the Defendants’ Works.

10.I agree with Mr Wong, counsel for the Plaintiff, that the Defendants have failed to establish an arguable defence to the Plaintiff’s claim.

11.First, none of the statements allegedly signed by the authors of the Defendants’ Works were made on oath.  None of the 4 alleged authors have come forward and give evidence in support of the Defendants’ case.  There is no explanation as to the absence of such evidence.  This is so despite the express challenge by the Plaintiff on the point.  In the circumstances, these self-serving statements should be given no weight at all.

12.Second, very surprisingly, such self-serving statements allegedly made by the staff of the Mainland manufacturer are not supported by any other documentary evidence.  As submitted by Mr Wong, unlike the Plaintiff who has adduced evidence in support of the creation dates, there is not a shred of evidence showing the creation date of the Defendants’ Works.  There is equally no evidence showing how the Defendants’ Works were allegedly created and supplied to the Defendants before the creation dates of the copyright works.

13.Third, upon seeing the Defendants’ defence, the Plaintiff had made enquiries with the Mainland manufacturer.  One Mr Peter Wong (“Wong”), the marketing director of the Mainland manufacturer, expressly told the Plaintiff that he could not confirm that the Defendants’ Works were originally created by the staff of the Mainland manufacturer.  He even suggested that he was not sure whether the Defendant had altered the contents of the statements.  The conversation with Wong in WeChat has been produced as evidence.

14.In response to the above evidence adduced by the Plaintiff, the Defendants responded by saying that: (i)  they do not admit that Wong is a staff of the Mainland manufacturer; and (ii)  the 2^nd Defendant was “orally told” by someone (not identified)  that the statements allegedly issued by the Mainland manufacturer are valid.

15.I agree with Mr Wong that such bare assertions have no merit at all.  First, there is documentary evidence showing Wong’s title on the website of the Mainland manufacturer.  Second, in discharging the burden of establishing an arguable defence, one would expect the Defendants, given the gravity of Wong’s assertions, to ask the Mainland manufacturer to provide some written rebuttal or response.   There is no evidence that the Defendants have ever made that request or why there is no such evidence produced in response.

16.Fourth, as pointed out by Mr Wong, the statements themselves are plainly unreliable and have been contradicted by objective and unchallenged documentary evidence:

(i)  In respect of the Plaintiff’s work as exhibited as “CKS-5(h)” to the Affirmation of Chan Ka Sing (“Chan’s Affirmation”), the photo was taken by Mr Chan Ka Sing (“Chan”)  of the Plaintiff himself, using his work phone.  The Plaintiff has adduced evidence showing the creation date of the photograph.  The Plaintiff has also adduced the work phone as evidence showing the date and time of the taking of the photograph.  On the other hand, the Defendants have not adduced any evidence showing the alleged creation date of the photograph.  As pointed out by Mr Wong, the Defendants cannot possibly adduce the original photograph (i.e. without the description box).  This is because the description box was subsequently added to the photograph before publishing on the Plaintiff’s website.  Accordingly, the original photograph (the one without the description box)  has not been published and the only published version is the one with the description box.  The Defendants would not have the original photograph and they could only copy the photograph with the description box.  Despite the express challenge by the Plaintiff, the Defendants are unable to produce the original photograph and there is no explanation on the absence of such evidence.  The Defendants’ work could not therefore be created on 4 July 2019 as alleged.

(ii)  In respect of the Plaintiff’s work exhibited as “CKS-5(i)” to Chan’s Affirmation, the Plaintiff has adduced documentary evidence showing the creation date of the work.  Indeed, Chan has changed the direction of the wheelchair from facing left to facing right in the said work due to a technical problem.  Because of such revision, the control handle appears unusually on the left hand side of the wheelchair in the said work.  I agree with Mr Wong that it cannot possibly be a coincidence that the Defendants’ work has the same feature.  Facing with such serious challenge, the Defendants have not adduced any evidence showing how and when the Defendants’ work was created.  In fact, the picture attached to the self-serving statement produced by the Defendants is different from the alleged infringing work of the Defendants.

(iii)  In respect of the Plaintiff’s work exhibited as “CKS-5(b)” to Chan’s Affirmation, the contents are very specific to the Plaintiff.  As pointed out by Mr Wong, the name of the Plaintiff appears a number of times in the article.  On the other hand, if one looks at the corresponding alleged infringing work of the Defendants, the position where the name of the Plaintiff should appear has been covered, making some awkward spaces.  In response, the Defendants contend that their work was created by one Mr Au (“Au”)  who was a former employee of a company called CMEDTEC Hong Kong.  The Defendants produced a document purportedly signed by Au in support of their case.  However, the relevant statement is not given on oath and there is no reason why Au could not come forward and make the statement on oath.  Further, Au has not been able to explain the awkward spaces left behind in the alleged infringing work.   Given the circumstances of the present case, it cries out for an explanation but neither Au nor the Defendants have provided any.  Au did not even deny copying from the Plaintiffs’ article in the statement.  The article clearly refers to the Plaintiff instead of CMEDTEC Hong Kong, whose business is stated to be “Health Food and related products trading” and not wheelchairs, which is another unexplained feature of the Defendants’ case.

(iv)  In respect of the Plaintiff’s work exhibited as “CKS-5(g)” to Chan’s Affirmation, the article relates to a product called Aerolite Smart Chair AL-610, which was only launched into the market in 2020.  The Defendants’ case is however that their work was created by one Mr Chow (“Chow”)  of another Mainland manufacturer “SWC” in or about June 2018.  I agree with Mr Wong that the Defendants’ case is absurd because the subject matter of the article was not yet available in the market in June 2018.  Further, SWC only became a distributor of Aerolite wheelchairs since 2021.  Accordingly, there is no way an alleged employee of SWC would have written anything about Aerolite back in June 2018.  Similar to the case of Au, the purported document allegedly signed by Chow cannot possibly assist the Defendants.  The statement was not made on oath and there is no explanation as to why Chow could not come forward and give evidence.

17.In respect of each of the other Plaintiff’s works and the alleged corresponding infringing works, the Defendants have equally completely failed to condescend upon particulars or provide documentary evidence in support of the creation dates of the alleged infringing works.  In contrast to the Plaintiff’s case which is supported by detailed explanation regarding the design process, the Defendants’ case is nothing more than bare assertions by third parties not given on oath.  The Plaintiff has warned the Defendants about its challenges, and yet all the Defendants can provide are some bare allegations.  Facing with the Plaintiff’s serious challenges as mentioned above, one would expect the Defendants to provide more materials to substantiate their case, such as sworn evidence from the alleged creators of the Defendants’ Works and the documents involved such as scripts and original photographs, or at the very least some more information on the background leading to the production of the Defendants’ Works.  Yet, the Defendants’ case is full of unexplained features.  Further, the Defendants’ counsel is quite unable to response to the Plaintiff’s aforesaid submissions on the unreliability of the “statements” relied upon by the Defendants.  Under these circumstances, even given the low threshold, the Defendants have failed to establish an arguable defence to the Plaintiff’s claim.

18.For the above reasons, I granted summary judgment against the Defendants.  Costs followed the event.  As the Plaintiff has made a sanctioned offer, I granted the costs after 31 May 2022 to the Plaintiff on an indemnity basis.

Mr Philips B F Wong, instructed by Benny Kong & Tsai LLP, for the Plaintiff

Mr Paul Wong, instructed by C K Chan & Co, for the Defendants