Hundred Art and Creative Ltd v. Thai Relax Ltd and Another

HCIP 86/2025

[2026] HKCFI 5807

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO 86 OF 2025

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JUDGMENT

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Introduction

1.By an Originating Summons dated 8 December 2025 (“the OS”), P instituted these committal proceedings which concern Ds’ breach of an injunction order made by Hon S T Poon J dated 25 April 2025 (“the Order”) in an action under HCIP 2/2025 (“the Action”).

2.P commenced the Action for his claim for copyright infringement in respect of its original literary and artistic works (“P’s Copyright Works”) contained in its promotional materials for its Thai massage service business in Hong Kong. D1 carries on a similar business.  

3.The substantive hearing of the OS was fixed for 12 October 2026 with three days reserved. By their letters dated 16 September 2026, Ds indicated their admission of contempt.  In light of this change of position, it was directed that the parties should file relevant affirmations and written submissions for sentencing purposes and the hearing time should be curtailed to one day.

4.At this hearing, Mr Wong appeared for P and Mr Tse appeared for Ds.

Background facts

5.At all material times, P’s Thai massage business is carried on under the trade name of “Tora Massage 白虎巡按” and it has a website to promote its business. P’s Copyright Works appears in the website.

6.On the other hand, D1 is a locally incorporated company operating its Thai massage business under the trade name of “自在。泰 Me Thai” with its website at http://www.methai.hk (“the Website”).

7.D2 was the sole shareholder and director of D1 until she sold her entire interest in D1 to one Mr Jiang and resigned from the office in September 2026. 

8.P discovered that the promotional material in the Website was an infringement of its copyright in the Copyright Works (“the Old Offensive Works”) in December 2024 and hence commenced the Action by taking out the writ therein on 10 January 2025.

9.By an acknowledgement of service dated 23 January 2025, Ds indicated that they would contest quantum of damages only. 

10.On 25 March 2025, P issued a summons pursuant to O.27 r.3 (“the Admission Summons”) for judgment on admission against Ds.

11.S T Poon J heard the Admission Summons on 25 April 2025 and made the Order, which contains the following terms:

“1. The Defendants and each of them, in the case of the 1^st Defendant, whether acting by itself, its directors, officers, servants, employees, agents or any of them or otherwise howsoever, and in the case of the 2^nd Defendants whether acting by herself, her business, partners, servants, agents, or any of them or otherwise howsoever, be restrained and a permanent injunction is hereby granted against the Defendants and each of them from infringing the Plaintiff’s copyright subsisting in the Copyright Works as defined in paragraph 6 of the Statement of Claim filed on 18^th February 2025 ("Statement of Claim") and from directing, procuring, instigating, causing, enabling or assisting others in committing any of the aforesaid acts.

2. Without prejudice to the generality of Paragraph 1 above, the 1^st Defendant whether acting by itself, its directors, officers, servants, employees or agents or any of them or otherwise howsoever, and in the case of the 2^nd Defendant, whether acting by herself, her business, partners, servants, agents or any of them otherwise howsoever be restrained and a permanent injunction is granted against each of the 1^st and 2^nd Defendants without the consent of the Plaintiff, reproducing, using, issuing to the public, making available to the public, distributing, supplying and/ or otherwise dealing in or with the Infringing Materials as defined in paragraph 9 of the Statement of Claim.”

12.In or about September 2025, P discovered that new infringing materials (“the New Offensive Works”) appear in the Website.  

13.On 24 October 2025, P applied for leave to institute contempt proceedings against Ds with a Statement pursuant to O.52 r.2 (“the Statement”) filed on the same day. 

14.Hon Lok J granted leave to P on 24 November 2025 and hence the OS was taken out on 8 December 2025.  

15.Ds removed the New Offensive Works from the Website on or about 23 December 2025.

16.On the admission of Ds, I find that the allegations in the Statement and, thus, the contempt are proved.

The Breach and Ds’ explanation

17.Ds admit the breach of the Order by publishing the New Offensive Works at the Website from May to December 2025.

18.Mr Wong submits that the New Offensive Works bear an overall 92.8% resemblance to the Old Offensive Works and they are 91.5% similar to the Copyright Works.  Mr Tse does not demur.

19.D2 has proffered an explanation for the breach in her 2^nd Affirmation and it is summarised by Mr Tse as follows:

(a)  D2 left matters concerning the Website to her husband’s elder brother Mr Chim whom she trusted and relied on completely.

(b)  After being served with the Statement of Claim in the Action in February 2025, she specifically instructed Mr Chim that the new content must not reproduce or copy the materials in the Old Offensive Works and must be materially different from the Copyright Works.  She also told Mr Chim that the Website must not be made available to the public until she had reviewed it to which Mr Chim said he understood. 

(c)  From February 2025 onwards, D2 left the redevelopment of the Website entirely to Mr Chim, on the footing that nothing would be published until she had approved it.  As nothing had been brought to Ms Chu for approval, she assumed that nothing had been published and that Mr Chim was still redeveloping the Website.

(d)  After being served with the Order on 28 May 2025, D2 reminded Mr Chim again that the Website after redevelopment must not reproduce or copy the materials in the Old Offensive Works. However, Mr Chim did not tell Ms Chu that the Website had already been published and she does not know why Mr Chim did not tell her at the time.  

(e)  She only first learned of the New Offensive Works when she was served with the papers in these proceedings on 23 December 2025. She immediately contacted Mr Chim and he apologised and informed her that he had used an AI tool called “POE” to assist in rewriting the contents for the new website and (erroneously) concluded that it was sufficiently different from the Copyright Works.

(f)  The Website has since been taken down and remains inaccessible to the public.

Applicable sentencing principles

20.Both Mr Wong and Mr Tse refer to the often-cited decision of Au Yeung J in Arboit v Koo Siu Ying (No.2) [2016] 3 HKLRD 154 in which the learned judge set out the general principles of sentencing in contempt proceedings as follows (with citation of authorities omitted):

“2. The starting point is to acknowledge that contempt of civil court orders is a serious matter and that court orders are made to be obeyed. A prime consideration of the court in sentencing contempt is to “signal importance of demonstrating to litigants that the orders of these courts are to be obeyed”. By “litigants”, it is clearly referring to litigants in general and not just the contemnor himself…

3. The object of the sentence is both to punish conduct in defiance of the court’s order and to serve a coercive function by holding out the threat of future punishment as a means of securing the protection which the order was primarily there to do…

4. The sentence for contempt may range from a fine to a term of imprisonment.  The UK Contempt of Court Act 1981 imposes a maximum term of 2 years’ imprisonment but Hong Kong does not have that statutory limit…

5. Imprisonment should be regarded as a sanction of the last resort. Any custodial sentence should be as short as possible consistent with the circumstances of the case…

6. The court may suspend a term of imprisonment for such period or on such terms as the court deems fit [under O.52 r.7 of the Rules of the High Court. This is an “absolute discretion” but it would be difficult to think of circumstances where a suspended order should be made when nothing further remains to be done to comply with the order…

7. The court will consider if there are:

(a) Aggravating factors;

(b) Mitigating Factors; and

(c) Acts to purge the contempt, ie acts to atone for a contempt, eradicate it or cleanse it of its previous ill-effect which, in the case of a mandatory order, may be fulfilled if the contemnor thereupon does the act or causes it to be done.

8. Relevant factors (which are not exhaustive) include:

(a) The nature of the order and breach in question, and the extent of the breach;

(b) Whether the contempt was contumacious or unintentional, the reasons, motives and state of mind;

(c) Whether the claimant has been prejudiced by virtue of the contempt and whether the prejudice is capable of remedy;

(d) Whether the contemnor appreciates the seriousness of the deliberate breach;

(e) Whether the contemnor has cooperated.

21.Mr Tse further draws my attention to Solar System International Company Ltd v Unison-Watch Manufacturing Ltd & Wong Chung Kan (unreported, CACV3523/2001, 7.2.2002) in which Rogers VP held (at §24) that once the court has reached the conclusion that a contempt was not deliberate or not contemptuous, it would be in very rare circumstances that a sentence of imprisonment would be appropriate.

Analysis

22.Mr Wong submits that the explanation given by D2 is dubious and is not supported by any corroborative evidence of Mr Chim.  He also highlights that D2 was not very frank with her relationship with Mr Chim and it was only disclosed subsequently that Mr Chim was her brother-in-law.  Mr Wong submits that even if this court accepts her explanation, the breach was contemptuous and a sentence of imprisonment is still appropriate.

23.Mr Wong further submits that the apology made by D2 in her 2^nd Affirmation was late and her remorse was not genuine.

24.That said, Mr Wong fairly accepts that the purge of the contempt albeit late remains a strong mitigating factor. 

25.Mr Tse places heavy emphasis on the purge of the contempt and the genuine remorse displayed by D2 in her full and unreserved apology to both this court and P in her 2^nd Affirmation (“the Apology”). He goes on to say that there is no realistic risk of further breach of the Order given D2’s departure from D1. Lastly, Mr Tse submits that any prejudice caused to P by the publication of the New Offensive Works can be remediable financially.

26.In sentencing, I take into account the following matters in addition to the submissions of counsel.

27.Right from the outset, Ds admitted their infringement of P’s copyright in the Copyright Works and their admission led to the making of the Order only 4 months after the Action was commenced.

28.Shortly after being served the Order, the Old Offensive Works were replaced by the New Offensive Works. This shows that Ds did take a step to comply with the Order. Whether the step was enough is another matter. 

29.I am inclined to accept D2’s account that she had delegated to Mr Chim the task of complying with the Order. Mr Chim failed miserably to carry out the instructions with the New Offensive Works, however.

30.Whether Mr Chim himself personally committed a contempt is beside the point.

31.It is unreasonable for Ds to rely on Mr Chim entirely without themselves checking whether the Website, contrary to the report of Mr Chim, was still in operation and continued to contain any offensive works in breach of the Order. The Order is made against them and Ds must be alarmed and should have made an all-out effort to avoid any non-compliance. Ds have been legally represented throughout and they should be aware of the serious consequences that would follow if they are in breach of the Order. They needed not spend much time and effort to find out whether the Website still contained anything which might constitute a breach of the Order.

32.I do not accept that Ds intentionally breached the Order. I accept that D2 fully relied on Mr Chim to comply with the Order though she should not have done so. However unwise Ds were, I do not think that Ds breached the order contemptuously.  

33.Ds’ purge was made in a timeously manner. This is indeed a strong mitigating factor.

34.I further accept that the Apology was bona fide and shows the genuine remorse of Ds.

35.Ds’ admission of contempt, though could have been made earlier, further shows their remorse. It has saved considerable judicial resources.

36.Mr Wong is right in his submission that in intellectual property actions, injunctions are of paramount importance for the protection of the plaintiffs’ interests. Ds’ breach of the Order is a deprivation of an important protection afforded to P and it must be a serious matter.

37.I do not accept the submission of Mr Tse that an indemnity costs order is already a heavy penalty to D2. Whilst D2 is likely to be hit hard financially if she is ordered to pay indemnity costs to P, such a costs order is only compensatory and not punitive in nature. These contempt proceedings were necessitated wholly by their breach of the Order and there is no reason why Ds should not fully compensate P for their legal costs. 

38.For D1, I believe that a substantial fine could adequately reflect its culpability. There is no credible evidence of the current financial condition of D1 and the unaudited balance sheet shows that it is in the red. I order that D1 should pay a fine of HK$100,000 within 28 days from the date of this order.

39.D2 is very close to the prison gate given the gravity of the breach. Nevertheless, I believe that the mitigating factors identified above can justify a suspension of the imprisonment term pursuant to O.52 r.7. I order that D2 shall be sentenced to 14 days’ imprisonment to be suspended for 12 months.

40.Ds sensibly agree to pay indemnity costs to P. Accordingly, I order that costs of and occasioned by the OS including all costs reserved be paid by Ds to P on an indemnity basis, to be taxed if not agreed.

41.Lastly, I thank Mr Wong and Mr Tse for their helpful assistance.

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

Mr William Tse, instructed by Messrs Yung, Yu, Yuen & Co, for the 1^st and 2^nd Defendants