University Tutorial Press Ltd and Another v. Windflower Press (A Firm) and Others

HCA005586/1979

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

Action No. 5586 of 1979

-----------------

Coram: Mr. Commissioner Hooper in Chambers

Date of Judgment: 27th February 1980

-----------------

RULING

-----------------

1. This is an application by the above named Plaintiffs for an interlocutory injunction against all three Defendants to restrain them until judgment in this action or further order from selling by way of trade exposing or offering for sale and distributing for purposes of trade any copies of the Plaintiffs' literary work entitled "Advanced Level Pure Mathematics" or any part thereof. The Plaintiffs also ask for an order that the Defendants and each of them do forthwith upon the service of this order upon them deliver up to the bailiff of this Court all copies of work the use or sale of which by the Defendants or any of them would infringe the foregoing injunction. They also ask for an order that the Defendants and each of them should within three days of the service of the order make and file an affidavit and serve the same upon the Plaintiff's solicitors setting forth the names and addresses so far as it is known to that Defendant of all persons or companies to whom the Defendant has supplied the copies of the work etc.

FACTS OF THE CASE

2. Affidavits and affirmations have been put in by both sides but the following facts appear to be undisputed. A Mr. Allan Yung is the sole proprietor of the Youth Bookroom (2nd Plaintiff herein). On the 7th November 1979 Mr. Allan Yung instructed his solicitors, Messrs. Liu, Chan and Lam (hereinafter referred to as the Plaintiffs' solicitors) to write to University Tutorial Press Ltd (1st Plaintiff) with a view to obtain permission for the publication by the 2nd Plaintiff of a study guide to a text book called "Advanced Level Pure Mathematics (herein after referred to as "The Plaintiffs' Book"). On the 8th November 1979 a letter was duly sent in accordance with these instructions. This is the letter marked "A" attached to the affidavit of Allan Yung filed in this Court on the 28th January 1980. On the 19th November 1979 Mr. Allan Yung instructed Mr. Joseph Lee of the Plaintiff's solicitors aforesaid to speak to one Mr. J.B. Briggs, a director of the 1st Plaintiff and he was informed by the said Mr. Joseph Lee that Mr. J.B. Briggs confirmed that the 2nd Plaintiff could proceed to publish their study guide forthwith. However on the 23rd November 1979 a letter was prepared by Mr. M.D. Lee, Sales Manager of the 1st Defendant Messrs. Windflower Press, for circulation to schools and book shops informing the recipient that a new book by the Defendants entitled "Suggested Solution to Advanced Level Pure Mathematics (S.L. Green); Coordinate Geometry" was available for purchase. A copy of this letter is attached to the affidavit of Mr. Joseph Lee of the Plaintiff's solicitors filed herein on 6th February 1980. On the 29th November 1979 Mr. Au Yuet-mei, a shop assistant employed by the 2nd Plaintiff, purchased from the Yiu Kee Book Store a copy of this book "Suggested Solution to Advanced Level Pure Mathematics Coordinate Geometry", which is hereinafter referred to as "The Defendants' Answer Book". Accompanying "The Defendants' Answer Book" as an integral part of it was a booklet of questions, which booklet was given to Mr. Au Yuet-mei at the same time. This booklet of questions is hereinafter referred to as "The Defendants' Question Book". (copies of the first 10 pages of these two books were annexed to the affirmation of Mr. Au Yuet-mei filed herein on the 28th January 1980). On the same day, the Plaintiffs' solicitors (who were at that time the solicitors for the 2nd Plaintiff only) wrote to the 1st Defendant informing them that the use by them of the questions contained in the Coordinate Geometry part of the Plaintiffs' book was unauthorized and was an infringement of the 2nd Plaintiff's rights in them. The 1st Defendant was given notice that they should stop the publication and/or distribution of their book or in any other way infringe the 2nd Plaintiff's rights in the said questions. On the following day, namely the 30th November 1979, a letter was circulated by the 2nd Plaintiff to schools informing them that the 2nd Plaintiff's own study guide to the Plaintiffs' book was now available for sale in all bookshops. It informed the schools that the 2nd Plaintiff had the sole right to publish a study guide to all questions contained in the Plaintiffs' book and that the 2nd Plaintiff was then proceeding with legal action against another publisher (obviously the 1st Defendant) and requesting the cooperation of the schools not to enter into any business transaction with them. On the 10th December 1979 the 1st Defendant's solicitors (Messrs. Johnson, Stokes & Master) wrote to the Plaintiffs' solicitors to the effect that they were not satisfied that the Plaintiff had shown that they had been granted permission to use the questions referred to above. They also complained about the letter circulated to the various schools containing the allegations against the 1st Defendant and threatened to take action against the 2nd Plaintiff if a statement in a form approved by the 1st Defendant was not sent to the schools in question. In a letter dated 14th December 1979 the Defendants' solicitors wrote a further letter to the Plaintiffs' solicitors referring to their previous letter and noting that they had had no reply. In this letter they indicated that they were therefore assuming that the 2nd Plaintiff had no further evidence to show that they had "permission to use" the said questions and they were therefore advising their clients to take the appropriate action. However on the same day, namely the 14th December 1979, the Plaintiffs' solicitors sent a letter in reply to the previous letter of the 10th, informing the Defendants' solicitors that they were now acting for both the 1st and 2nd Plaintiffs. They informed the Defendants' solicitors that their client (the 2nd Plaintiff Herein) was a bare licence of the copyright proprietor and as such was entitled to sue for infringement of the copyright as long as the copyright proprietor was joined as a co-plaintiff. (Authority for this proposition is set out in Halsbury 4th Edition Vol. 9 Para. 880)

They also gave notice that they had now received instructions from the 1st Plaintiff to commence action against the Defendants. On the 13th December 1979 a formal memorandum of agreement was signed between the 1st Plaintiff (as proprietor) and the 2nd Plaintiff (as the buyer) in which inter alia the proprietor granted the buyer permission to use the questions referred to above in their study guide throughout Hong Kong and South East Asia. The Plaintiffs however still relied on the oral communication from Mr. J.B. Briggs in granting the licence. On the 15th December 1979 Mr. Yu Kwong-lam, a shop assistant with the 2nd Plaintiff bought another copy of the Defendants' Answer Book which was again accompanied by the "The Defendants' Question Book". On the 17th December 1979 the Defendants' solicitors again wrote to the Plaintiffs' solicitors noting that the Plaintiffs' solicitors had still not provided them with the information to show that the permission was granted to their clients. They reserved their right to show this correspondence to the Court on the issue as to costs. They also inter alia placed on record that their clients had ceased to sell and distribute the "The Defendants' Question Book".

3. There can be no doubt in this case that the questions set out in the first 50 pages of the plaintiff's book "Advanced Level Pure Mathematics by S.L. Green" are reproduced substantially in both the Defendants' "Question Book" and "Answer Book". and that if the plaintiffs could establish that a copyright subsisted in these questions as an original literary work under Section 2 Part I of the Copyright Act 1956, then the publication of both the Defendants' Answer Book and Question Book infringed that copyright (Section 2(5)(b)).

4. It was not disputed that a copyright could subsist in questions and there is a persuasive dictum in University of London Press Ltd v. University Tutorial Press Ltd (1916) 2 Ch. 601 at 613 to the effect that if an author produced a book of questions for the use of students another person could not with impunity republish the book with answers to the questions.

5. Although it would appear from the pre-action correspondence that the 1st Defendant was disputing the 2nd Plaintiff's right to take action against them, it is agreed that no issue was raised in the affidavit and affirmations filed on behalf of the Defendants disputing the Plaintiff's title. The Plaintiffs make it quite clear in their statement of claim filed herein that the 1st Plaintiff is sueing as owner of the copyright in a literary work entitled "Advanced Level Pure Mathematics" which was first published in 1954. They also make it clear that the 2nd Plaintiff is the owner of a licence granted by the 1st Plaintiff in respect of the copyright in this literary work. They bring this action against the 1st Defendant as publisher of the Defendants' "Question Book" and "Answer Book", and against the 2nd and 3rd Defendants as the joint authors of these two books. In the summons before me they make it clear that they want the Defendants to be restrained until judgment from selling copies of the Plaintiffs' literary work or any part thereof. They have always claimed to own a copyright in a literary work rather than a copyright in a published edition of a literary work. They have been primarily concerned with the reproduction of certain questions. It is clear therefore that the Plaintiffs are seeking to restrain acts of infringement in breach of a copyright in a literary work within the meaning of Section 2(1) of the Copyright Act of 1956 which applies to Hong Kong by virtue of The Copyright (Hong Kong) Order 1972.

6. Although it is common ground that the Defendants have not raised the issue of ownership of a copyright, Miss Cheung for the Defendants has advanced for the first time at the hearing of the summons an argument based upon the contention that the evidence produced on behalf of the Plaintiffs is self-defeating, in that it indicates that the 1st Plaintiff is not the owner of a copyright under Section 2 Part I of the Act, but rather of a copyright in a published edition under Section 15 Part II of the Act. It is perhaps worth mentioning at this stage that the minimum time a copyright under Section 2 Part I of the Act subsists is the life time of the author of the literary work plus a further 50 years after his death (Section 2(3)). On the other hand a copyright in a published edition of a work under Section 15 Part II subsists only for a period of 25 years from the date of the 1st publication (Section 15(2)).

Furthermore the Act restricted in respect of this type of copyright is the making, by any photographic or similar process, of a reproduction of the typographical arrangement of the edition (Section 15(3)). If therefore the Plaintiffs were owners only of a Section 15 copyright in a published edition of a literary work, the 25 years would have expired on the 1st January 1980, and there could be no infringement after this date. Further there could have been no infringement before this date because there was no reproduction by any photographic or similar process of the typographical arrangement of the edition.

7. I agree with Mr. Lee that there is no merit in this submission. It is clear that the Plaintiffs are alleging an infringement of the Section 2 Copyright in the original work. The Statement of Claim specifically refers to the literary work, which it describes as being first published in 1954. Since it is admitted by Miss Cheung that the Defendants have not raised the issue of ownership, there is a presumption under Section 20 of the Act that this copyright subsists and that the 1st Plaintiff is the owner of this copyright.

8. Section 20 provides -

9. It is clear that the 1st Plaintiff is claiming to be owner of the copyright under Section 2, and it is clear that the Defendants did not put in issue the question of their ownership. Furthermore the fact that the 1st Plaintiff is a limited liability company does not render it incapable of being an owner of a copyright under. Section 2 Part II as Miss Cheung appeared to suggest. Such ownership could be effected by assignment. There is also force in Mr. LEE's argument that the Plaintiffs would hardly have entered into the Memorandum of Agreement involving a substantial sum of money on the 13th December 1979 if the copyright was due to expire in January 1980.

10. I therefore rule against the Defendants on this point and rule that it is presumed under Section 20 that the 1st Plaintiff is the owner of a Section 2 Copyright, and that the 2nd Plaintiff is by virtue of a licence (though not an exclusive licence) granted to them by Mr. J.B. Briggs of the 1st Plaintiff entitled to join with the 1st Plaintiff in bringing this action against the Defendants. The presumptions under Section 20 are absolute if the issues are not raised. (see paragraph 584 Copinger & Skone James on Copyright 11th Edition at page 253). Mr. Lee does however say that the Plaintiffs could file a further affidavit to clarify the position but that is unnecessary.

11. On the merits the Plaintiffs are clearly entitled to an injunction to restrain breaches of their copyright. They are in a considerably stronger position than for instance a plaintiff who could merely show that there was a serious issue to be tried within the meaning of the American Cyanamid Company Case⁽¹⁾. In my view on the affidavits and affirmations there is no defence to the Plaintiffs' claim and this is a proper case for the grant of an interlocutory injunction. Leonard J. had little hesitation in granting an interlocutory injunction in a clear case in J.L. Penney Co. Inc. and Punjabi Marath trading as Penneys Fashion⁽²⁾. The balance of convenience is clearly in favour of granting the application.

12. I therefore hold that the Plaintiffs are entitled at this stage to an interlocutory injunction to prevent infringement of their said copyright.

13. Miss Cheung has taken a technical objection to the specific terms of the injunction set out in the summons. She has submitted that the Plaintiffs are asking for an injunction to ask the Defendants to stop selling the Plaintiffs' work and not other work and that if this Court should feel that an injunction should be granted, then certain amendments should have to be made to the proposed order. With respect to Miss Cheung I cannot agree with this submission. The terms of the order sought make it clear that what the Plaintiffs want is an order preventing the Defendants from selling etc. copies of the Plaintiffs' literary work or any part thereof. The words "or any part thereof" would cover the reproduction of any questions or substantial parts of the questions contained in the Plaintiffs' book.

14. I therefore on the Plaintiffs giving the usual undertaking as to damages grant this application and make an order in terms of the application and that the Plaintiffs are entitled to the cost of this application.

Representation:

Mr. Joseph Lee of Liu, Chan, Lam & Co. for the Plaintiffs.

Miss Stephaines Cheung of Johnson, Stokes & Master for the Defendants.

(1) American Cyanamid Co. v. Ethicon Ltd. (1975) 2 W.L.R. 316 HL

(2) 1978 HKLR 199