Linda Chih Ling Koo and Another v. Lam Tai Hing
Read the full judgment text of HCA 3466/1986 on BabelCite. This High Court CFI judgment was delivered on 14 April 1992.
1. There is - and has for some time been - an exceptionally high incidence of lung cancer in Hong Kong and in certain communities abroad among women of certain Cantonese sub-dialect groups, including even those women who have never smoked. And when I say "lung cancer" I mean "primary" lung cancer, in other words, cancer which started in the lungs as opposed to cancer which started elsewhere and spread to the lungs as "secondary" lung cancer.
Cited by 3 cases · Cites 1 case
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HCA003466/1986 1986, No. A3466 --------------------- H E A D N O T E ---------------------- The plaintiffs conducted a case-control study of a certain phenomenon in respect of lung cancer. So did the defendant. They drew up a questionnaire for interviewing cases and controls. So did he. The court found : (9) that he had obtained their questionnaire surreptitiously; (ii) that there was sufficient objective similarity between his questionnaire and theirs for his to constitute an infringement of the copyright subsisting in theirs (there being the necessary causal connection); and (iii) that he had misused the confidential information contained in theirs. Accordingly, they were given judgment for infringement damages, conversion damages and damages for misuse of confidential information; to be assessed by a Master. As to misuse of confidential information, the court made the following observations -
1986, NO.A3466 IN THE SUPREME COURT OF HONG KONG HIGH COURT ------------------ BETWEEN
------------------------ Coram: Bokhary, J in Court Dates of hearing: 27-30 January, 10-14, 17-21, 24-28 February, 2-6, 9-13, 16-20, 23-27 March, 1-3, and 6-9 April, 1992 Date of delivery of judgment: 14 April 1992 ----------------------- J U D G M E N T ----------------------- 1. There is - and has for some time been - an exceptionally high incidence of lung cancer in Hong Kong and in certain communities abroad among women of certain Cantonese sub-dialect groups, including even those women who have never smoked. And when I say "lung cancer" I mean "primary" lung cancer, in other words, cancer which started in the lungs as opposed to cancer which started elsewhere and spread to the lungs as "secondary" lung cancer. 2. That phenomenon has been the subject of a good deal of medical research here and abroad, including that undertaken in Hong Kong by the plaintiffs, Dr Linda Koo and Prof. H.C. Ho, and by the defendant, Dr T.H. Lam. 3. Dr Koo and Prof. Ho have collaborated on such research since 1980. The research programme which they commenced then, 12 years ago, is continuing even now. It may or may not end this year. 4. Their research is by way of what is called a "retrospective" or "case-control" study. Female lung cancer patients are the "cases". Otherwise like but cancer-free women are the "controls". All are interviewed. The idea is to see if there is some difference or are some differences between the lifestyle of the cases as a group and that of the controls as a group which might reasonably account for the former contracting lung cancer while the latter remain free of cancer. Both possible risks and possible sources of protection are investigated. 5. During 1980 and 1981, Dr Koo and Prof. Ho drew up a questionnaire for use in interviewing the cases and the controls. 6. Dr Lam's research - which runs parallel to Dr Koo and Prof. Ho's research to the extent which I will indicate in due course - is also by way of a case-control study. And, for use in the same, he too has drawn up a questionnaire. 7. Shortly stated, Dr Koo and Prof. Ho's-case is that Dr Lam has, in preparing his questionnaire, drawn on theirs in such a way and to such an extent as to infringe their copyright in the same and, further or alternatively, make actionable use of confidential information of theirs embodied therein. 8. Injunctive relief was but is no longer sought. Nor am I concerned with the quantum of damages. The parties have invited me - and I have agreed - to determine liability leaving damages to be assessed by a Master in due course if liability is established before me. 9. Although I have referred to the two sides' questionnaires as if there were only one version of each, there are in fact 14 versions of Dr Koo and Prof. Ho's questionnaire and four versions of Dr Lam's questionnaire. 10. The 14 Koo-Ho versions fall into four stages of evolution. In the first stage we have four versions, which were referred to in the course of the trial as "KHla", "KHlb", "KHlc" and "KHld" respectively. Strictly speaking, they are not questionnaires as such, being in fact no more than lists, albeit fairly detailed ones, of topics. Each is headed - aptly in my view - "Interview Pattern". 11. Next, we come to the draft Koo-Ho questionnaires. There are six of them : three in the second stage and another three in the third stage. In the course of the hearing, the three second stage versions were referred to as "KH2a", "KH2b" and "KH2c" respectively, while the three third stage versions were referred to as "KH3a", "KH3b" and "KH3c" respectively. 12. Lastly, we came to the fourth and final stage. Here we have the Koo-Ho questionnaires which were actually used in interviewing the cases and controls. The "used" Koo-Ho questionnaires are four in number. They were referred to as "KH4a", "Mb", "KH4c" and "KH4d" respectively in the course of the hearing. KH4a was used by Miss Carol Tong, Dr Koo's first research assistant. KH4b was used by Miss Nancy Lee, who was Miss Tong's successor. KH4c is a translation into Chinese of KH4a. It is the only one of the Koo-Ho versions which is in Chinese, the other 13 being in English. KH4d is the version kept by Dr Koo herself. 13. Dr Lam's four versions were labelled "L1", "L2", "L3" and "L4" respectively. 14. Ll consists of Dr Lam's handwritten notes. L2 consists of his research assistant, Miss S.C. Wong's handwritten draft of Dr Lam's questionnaire. L3 is a typed draft. L4 is Dr Lam's questionnaire in its final form. It emerged in the course of Dr Lam's cross-examination that most of L2 came earlier in time than L1. That being so, it would have made more sense - had we all known it - to call Miss Wong's draft L1 and Dr Lam's notes L2 rather than the other way round. But, as so much evidence has been given on the basis of the original labelling before the revelation during Dr Lam's cross-examination, I propose to adhere to such labelling. 15. Except when it becomes necessary to make specific reference any of those versions, the 14 Koo-Ho ones and the four Lam ones, it will be convenient to deal with all the Koo-Ho versions as a single questionnaire and with all of the Lam versions as a single questionnaire. 16. At this stage, it would be useful to note the position and background of each of the parties. Prof. Ho is very much the senior man. He is in his seventies and easily old enough to be the father of the other two. He is, and has since 1983 been, Honorary Clinical Professor of Radiation Oncology at the University of Hong Kong in its Department of Surgery. He has long enjoyed a worldwide reputation in oncology and cancer research. 17. As they are less established than Prof. Ho - which is certainly no reflection upon them - I will deal with Dr Koo and Dr Lam at greater length. 18. Both are academics at the University of Hong Kong's Department of Community Medicine. She has been in that department since 1979 : first as an honorary lecturer; then as a temporary lecturer for a few months in early 1980; and as a lecturer since then. He has been in that department since 1976 : as a lecturer from 1976 to 1984; as a senior lecturer from 1984 to 1990; and as a reader since then. 19. Her initial training and qualifications were in anthropology - in which field she obtained, at Berkeley, her AB in 1972 and her MA in 1973. As she is a lady, I will - erring on the side of chivalry and apologising for any appearance of chauvanism - just mention that she is considerably younger than those dates might tend to suggest by ordinary standards. Her doctorate - obtained in 1976 and also at Berkeley - was in medical anthropology. Turning to Dr Lam, his MBBS in 1975 and MD in 1989 were obtained here. In between, he obtained two MSC degrees - one in sociology and the other in occupational medicine - in London. 20. Returning to the subject of questionnaires, it seems to me that in order to appreciate the significance of a case-control study questionnaire it is important to view it in the context of the research of which it is a tool. 21. Dr Koo and Prof. Ho started working on their research proposal and on their questionnaire in January 1980. The proposal was completed in October that year. In August the following year, the questionnaire was completed. Devising a questionnaire includes testing it. The interviews of the cases and the controls - 200 of each - commenced in July 1981 and continued into April 1983. From March 1982 to August 1983, a preliminary analysis and presentation was done in respect of 120 cases and 120 controls. From April 1983 to July 1984, coding and simple statistical analysis took place. 1984 was the year in which Dr Koo and Prof. Ho started to prepare a full data set in respect of their results. It is also the year in which they started to publish and present their findings. That they have done, and continue to do, in articles and at conferences. Since July 1984, they have been subjecting their results to complex analysis with the aid of a high-powered computer system. Some 52,000 pages have been thus generated so far; and the process is continuing. 22. Turning to Dr Lam's research, the research protocol which became something of a forerunner to his research project was prepared over the period from December 1980 to March or April 1981, while he was in London pursuing the second of the two MSc degrees which he obtained there. What followed were : his initial research proposal in October 1981; his final research proposal in April 1982; and the grant of funds for research in July 1982. Such funds having been granted, he embarked upon a further review of the relevant literature and the drafting of his questionnaire. 23. His questionnaire was completed in April 1983; and the field work for his research then commenced. 24. In 1986 he analysed his data, and then wrote his paper. That paper, which is entitled "Smoking, Passive Smoking and Histological Type in Lung Cancer in Hong Kong Chinese Women", appeared in the "British Journal of Cancer" in 1987. The summary given at the beginning of the paper reads :-
25. Having looked at that, it is useful to look at the same time at the summaries in two of Dr Koo and Prof. Ho's published papers. The summary which appears at the beginning of their paper entitled "An Analysis of Some Risk Factors for Lung Cancer in Hong Kong" which appeared in the "International Journal of Cancer" in 1985 reads :-
The summary which appears at the beginning of their paper entitled "Measurements of Passive Smoking and Estimates of Lung Cancer Risk Among Non-smoking Chinese Females" which appeared in the same journal in 1987 reads :-
26. The Koo-Ho research involved longer interviews. The Lam research involved more cases and controls being interviewed. 27. This is a convenient point at which to turn to two other lung cancer studies. The first is one done in Singapore in 1972 and 1973 by a team headed by Dr Robert MacLennan. Dr MacLennan is one of the expert witnesses called by Dr Koo and Prof. Ho. The results of the 1972/73 Singapore study were published in an article entitled "Risk Factors for Lung Cancer in Singapore Chinese, a Population with High Female Incidence Rates" which appeared in the "International Journal of Cancer" in 1977. The summary at the beginning of the article reads :-
28. The second is one done in Hong Kong in 1976 and 1977, and is, in a sense, an extension of the 1972/73 Singapore study. Certainly it was something which Dr MacLennan wanted to see done and in which he greatly assisted. The 1976/77 Hong Kong study - which was referred to in the course of the hearing as "the CCFH study" - is the immediate precursor of both the Koo-Ho study and the Lam study. The letters "CCFH" are taken from the surnames, in alphabetical order, of the four persons who conducted the study. They are Dr W.C. Chan, a pathologist; Dr Michael Colbourne, who is one of the expert witnesses called by Dr Lam; Mr S.C.Fung, a statistician; and Prof. Ho himself. Their results were published in the "British Journal of Cancer" in 1979 as an article entitled "Bronchial Cancer in Hong Kong 1976-1977". The summary at the beginning of the article reads :-
The article concludes with the statement that the "... search for a cause of bronchial cancer in women who do not smoke certainly demands further study." 29. Dr Koo and Prof. Ho have undertaken such further study; so has Dr Lam; and in each instance Dr Colbourne played an important part in bringing that about. 30. What happened may be looked upon as one act with two scenes. Scene one is set in Hong Kong at the beginning of 1980. Dr Colbourne was less than a year away from his departure from these shores upon his retirement as Professor of Community Medicine at the University of Hong Kong. He wanted the work begun by the CCFH team continued. To that end, he took Dr Koo, who was then quite new to his department, to see Prof. Ho with a view to getting them to collaborate in continuing such work. As we know, he succeeded. 31. Scene Two is set in London at the end of that year, 1980. Dr Colbourne was back in London. Sharing his flat with him were Dr Lam and his wife. Dr Lam was pursuing his MSc in occupational medicine. Dr Colbourne had an abstract to prepare for a paper which he was to present in Edinburgh. As an exercise forming part of his MSc course work, Dr Lam had to prepare and submit a research protocol. Dr Colbourne's Edinburgh paper was to be on lung cancer in Hong Kong women. That was a subject which Dr Lam was considering for his research protocol. Not surprisingly, Dr Colbourne and Dr Lam discussed the former's upcoming presentation and the research protocol which the latter had to produce. In the result, Dr Colbourne got Dr Lam to help him with the Edinburgh abstract and, in due course, the Edinburgh paper. Such help must have been considerable because one sees that Dr Lam is included as a co-author of Dr Colbourne's when the Edinburgh paper was eventually published in 1982 as an article entitled "Bronchial Cancer in Women in Hong Kong" in the "Journal of the Hong Kong Society of Community Medicine". Together with the encouragement which he received from Dr Colbourne (who eventually gave him quite a lot of help with the research protocol itself) the publication in the "British Medical Journal" in January 1981 of the results of Dr Takeshi Hirayama's prospective study caused Dr Lam to select lung cancer in non-smoking Hong Kong women as his research protocol subject. 32. Dr Hirayama's article has a very positive title: "Non-smoking wives of heavy smokers have a higher risk of lung cancer; a study from Japan". He could afford to be positive. His was a cohort study conducted in 29 health districts in Japan in the course of which study no less than 91,540 non-smoking wives aged 40 and above were followed up for 14 years from 1966 to 1979. 33. It is true that Dr Lam's research protocol was one produced by way of a course exercise. But it is to be remembered that he had been told to select a subject which he had a real interest in investigating and not just any subject around which he could wrap a research protocol. 34. The phenomenon which the parties set out to investigate - "the mystery" as Dr Koo called it in evidence - is, as I said at the beginning of this judgment, an exceptionally high incidence of lung cancer among a certain group of persons, including even those of them who had never smoked. Setting this phenomenon or mystery in its context requires attention to what Dr Colbourne, in his report, termed "Historical Highlights of Research on Cancer of the Lung and Smoking" and described thus :-
35. Having noted that, it is also necessary to bear this in mind. Apart from tobacco inhaled voluntarily by active smokers and involuntarily by passive smokers, there are a great many other inhalants which may pose a risk of lung cancer. Nor does the matter end with inhalants. Ingestants too fall to be considered : it being thought that some may cause or contribute to the onset of cancer of even the lungs, while others may provided protection or some degree of protection against the same. 36. With that outline of the background, I can turn now to the case advanced on behalf of Dr Koo and Prof. Ho against Dr Lam, whom they sue for copyright infringement and misuse of confidential information, both of which he denies. 37. As I have indicated, it all arises out of the questionnaires. 38. As I perceive the essence of it, Dr Koo and Prof. Ho's case may be outlined thus. Naturally, they formed a view as to how most effectively to interview the cases and the controls. That view is the thought underlying their questionnaire. Then they spent a lot of time, exercising considerable skill, judgment and labour, in formulating their questionnaire as an expression of such thought. Their questionnaire is, therefore, an expression - originating from them - of thought. As such, it is a literary work in which copyright subsists, they, the authors, having been resident in Hong Kong throughout. In his questionnaire, Dr Lam reproduced a substantial part of theirs in a material form, there being sufficient objective similarity and causal connection between the two questionnaires. He has, therefore, infringed their copyright in their questionnaire. And he is also liable to them for misuse of confidential information for this reason. Their questionnaire contained confidential information in terms of thought and the form in which such thought is to be given expression. Dr Lam obtained their questionnaire surreptitiously. Having by such means made himself privy to their confidential' information embodied in their questionnaire, he made use of such information in drawing up his own questionnaire. 39. In addition to its importance to the parties themselves, this case may be of some general interest. It is not the first case concerning copyright and confidential information in a questionnaire. There is the Australian solicitors' questionnaire case, Interfirm Comparison (Austrialia) Pty Ltd v. Law Society of New South Wales (1977] RPC 137. But the present case appears to be the first one concerning copyright and confidential information in a scientific research questionnaire. 40. On each cause of action, the core allegation and complaint - strenuously advanced by Mr Daniel Fung, Q.C. for Dr Koo and Prof. Ho and equally strenously resisted by Mr Peter Garland for Dr Lam - comes down to this. There is to be found in Dr Lam's questionnaire a substantial measure of expression of thought which in truth originates not from him but rather from Dr Koo and Prof. Ho, from whose questionnaire he copied. 41. Before going any further, I feel that I ought to say this. Nobody likes seeing persons like these parties engaged in litigation rather than medical research. So it is only fair to Dr Koo and Prof. Ho, who bring this case, to state that their interest is, and has always been, not so much in recovering damages as in obtaining an acknowledgment by Dr Lam, to them and others, of an intellectual indebtedness to them. Of course, there is no reason why anyone in Dr Lam's position ought to make such an acknowledgment unless one is due. He says that none is due. We shall have to see. 42. As Dr Koo and Dr Lam are members of the University of Hong Kong's teaching staff, and Prof. Ho is an honorary professor at the University, I feel that I should say a word in answer to the question which some people may ask: why ever did the University not make peace between these parties? The short answer is that the University did its level best to do so. It behaved impeccably. Having done all that it could in lending its good offices to a reconciliation should one prove possible, it very properly refrained from putting any pressure on anyone to forego the right to pursue his or her remedy through the courts. 43. At this point, it would be useful to turn to the expert evidence before me. 44. Each side called two experts. Dr Koo and Prof. Ho called Dr MacLennan and Dr Malcolm Coulthard. Dr Lam called Mr Richard Peto and Dr Colbourne. 45. Dr MacLennan is a highly qualified cancer epidemiologist with long and wide experience in that field. At present, he is a Senior Principal Research Fellow with the Queensland Institute of Medical Research and an Adjunct Professor at the University of Queensland. 46. Dr Coulthard is a linguist. He too is highly qualified. His experience is also long and wide; and it includes experience, academic and practical, in forensic linguistics. That is a discipline I will not attempt to define. Its nature may be indicated by noting that it would come into play, for example, in an attempt to resolve, by reference to linguistic considerations, whether a disputed confessional statement came unpolluted from an accused person or was fashioned in whole or in part by the police. He is at present a Senior Lecturer in English Language at the University of Birmingham. 47. Mr Peto, trained and qualified in the natural sciences and statistics, has - by his association and work with Sir Richard Doll as well as his own interest in, aptitude for and efforts in cancer research - risen to his present position of Director of the Imperial Cancer Research Fund's Cancer Studies Unit at the university of Oxford. 48. Dr Colbourne, who qualified during the Second World War and was elected a Fellow of the Royal College of Physicians 20 years ago, is an epidemiologist of very long experience and a malariologist of world reknown. Now in semi-retirement, he was, from 1974 to 1980, the head of the department to which Dr Koo and Dr Lam belong. 49. Each of these experts have of course produced a report. It is possible - and convenient at this stage - to extract the overall view of each of them by quoting from his report.
50. With the addition which he made while in the witness-box, Dr Coulthard's report concludes thus :-
51. Secondly, on looking at both spoken and written texts we observe very clearly that, when asked to say or write the same thing on different occasions individuals encode differently. In other words when two texts have major similarities it is always because one has drawn on the other or because both have drawn on a third text. An examination of the earlier versions of the Koo/Ho Questionnaire shows some marked changes but one can always see that major portions have been copied verbatim from one version to the next. 52. Thus although Questionnaires KH4d and L4 are not in any sense versions of 'the same questionnaire' the similarities between them are too substantial to have occurred by chance; there are only three ways of accounting for such similarities:
What Dr Coulthard added in the witness-box are the words "or because both have drawn on a third source". The "Questionnaires used for comparative purposes, 3-7" referred to by Dr Coulthard are, as he lists them in his report, these :-
Number 3 is the questionnaire used in the CCFH study. In the course of the trial: number 4 was referred to as "Shimizu's questionnaire"; number 5 was referred to as "the Guanzhou questionnaire" or "Du's questionnaire"; number 6 was referred to as "the American Health questionnaire" or "the AHF questionnaire"; and number 7 was referred to as "Riboli's questionnaire". 53. I turn now to Dr Lam's experts. This'is how Mr Peto's report concludes :
54. The last two paragraphs of Dr Colbourne's report, paragraphs 18 and 19, give his view of the contribution made by Dr Lam to the understanding of the causes of lung cancer in non-smoking Chinese women in Hong Kong. It is in paragraph 17 that he summarises his conclusions in regard to the issues in this case, saying :-
55. In the course of his closing address, Mr Garland conceded that copyright subsists in the Koo-Ho questionnaire as a literary work. So subsistence is no longer in issue. 56. Ownership is in issue. Here, Mr Garland's argument runs along these lines. Prof. Ho's contribution to the Koo-Ho questionnaire was limited to an input of thought, and does not extend to any expression of thought. Therefore, he is not an author of the questionnaire. And that, in turn, means that he is not an owner of the copyright therein. Further, his not being an owner means, in the circumstances, that Dr Koo is not an owner either. For, although she is the author of the questionnaire, it was in the course of her employment with the University of Hong Kong that she devised it, so that it is the University, the employer, rather than she, the-employee, who owns the copyright in the questionnaire. Nevertheless - and here is the irony if the argument be right - she would have been an owner if she had been less than the sole author and Prof. Ho was a co-author of hers. For then, as co-authors of the questionnaire, they would be co-owners of the copyright therein, even if her participation in authorship was in the course of her employment with the University. But since Prof. Ho is not an author, she does not acquire any ownership in that way. And that is how his position affects hers. That is how Mr Garland's argument runs. 57. So the first question, on that argument, is whether Prof. Ho's contribution was limited in that way. That the question arises is a matter of law. The answer which it is to receive is a matter of fact and degree. On the evidence before me, I find that Prof. Ho's contribution was not limited to an input of thought. It extended, I find on the evidence before me, to the expenditure of much time and the exercise of much skill, judgment and labour, on his part as well as on the part of Dr Koo, in formulating their questionnaire as an expression of thought. 58. In due course, I will have to say more on my assessment of the witnesses whom I saw and heard. At this stage, I confine myself to saying that both Dr Koo and Prof. Ho impressed me as honest and reliable. Their evidence, which I accept, shows that once a week, week after week for the whole of the period over which their questionnaire was devised, they met to develop the same. That they did by going through successive drafts line by line. 59. Mr Garland invites me to reject Prof. Ho's evidence that he went through the drafts line by line. There are in them errors and omissions which, Mr Garland argues, Prof. Ho would have spotted if he had gone through them line by line. I do not accept that argument. In all the circumstances, I am of the view that those errors and omission could have been missed by Prof. Ho even going through the drafts line by line. While saying that he went through the drafts "line by line", he also said that he did not do so with, as he put it, "a fine comb". 60. The fact that it was Dr Koo's hand which held the pen does not mean that Prof. Ho was not an author. He says, and I accept, that he participated in the drafting. He also says, and I also accept, that what Dr Koo wrote down reflected their agreement after discussion. And that took place, as I have found, at meetings in the course of which successive drafts were gone through line by line. Clearly, the process was not confined to thinking and included expressing thought on paper. Certainly, it is of no significance that Dr Koo and Prof. Ho's study is called the "Koo-Ho" study rather than the "Ho-Koo" study even though Prof. Ho is by far the senior of the two. All that happened was this. Dr Koo recognised Prof. Ho's vast experience. She went to him for their meetings, treating him with the respect that was his due. He, for his part, recognised her exceptional enthusiasm and display of energy in gathering raw material, taking minutes at their meetings, organizing the typing and so on; and he allowed her name to come first. She having made him a curtsy, he returned a bow. Copyright subsists in their questionnaire; and it is the copyright of both of them. 61. As the whole argument advanced by Mr Garland in regard to ownership hinges on the contention that Prof. Ho is not an author, my conclusion that he is an author makes it, strictly speaking, unnecessary to decide whether what Dr Koo did in making the Koo-Ho questionnaire was done in the course of her employment. Nevertheless, it seems to me, in all the circumstances, desirable to deal with that question. In my view, it has not been shown that what she did in doing that was done in the course of her employment. That has not been pleaded. Nor was it put to her in cross-examination. There is no suggestion that she neglected her duties as a lecturer by spending on the questionnaire any time which she ought to have spent on those duties. Presumably, her weekends and evenings during the working week were her own. Moreover, there is no evidence before me on matters such as : what her normal working hours were; what flexibility she had in that regard; what breaks she had during a working day and so on. On the evidence before me, I am quite unable to hold that the prima facie position - which is that she, as author, is entitled to copyright - has been displaced. There is not even any evidence before me, I might add, that the University lays claim to any such entitlement. 62. Has Dr Koo and Prof. Ho's copyright been infringed? To that question I now turn. 63. There are similarities and dissimilarities between the Koo-Ho questionnaire and the Lam Questionnaire. 64. In no respect are the questionnaries identical. In every respect differences are, to a greater or lesser extent, to be found. All these differences must be weighed in the balance. But it is unnecessary and would greatly lengthen this judgment - to list all the differences which emerge from a comparison of the questionnaires. The differences aside. 65. Among the broad differences is this one. Dr Koo and Prof. Ho's questionnaire is essentially (although not exclusively) "open-ended", while Dr Lam's questionnaire is essentially (although again not exclusively) "close-ended". Dr Lam's questionnaire probably gathered data in a form which required less effort to feed into a computer than the data gathered under Dr Koo and Prof. Ho's questionnaire. 66. Certainly, I do not regard the expression "blind copying" - which is one used by Mr Fung in the course, I almost said "the heat", of his cross-examination of Dr Lam as apt, on any view, to describe Dr Lam's conduct. 67. But the matter does not by any manner of means end there, for "blind copying" is hardly the definition of copyright infringement, let alone misuse of confidential information. 68. I turn now to the- similarities. They, by their nature, have to be set out at greater length than the dissimilarities in order that my view of them be understood. 69. Where the issue is whether one questionnaire infringes the copyright in another, the sequence in which the topics which they cover are arranged can be of considerable significance. Certainly, that is so in cases like the present one. For here the questionnaires to be compared employ topic headings; such headings are designated by capital letters; and they are employed from beginning to end. The result is that the sequence in which the topics have been put: stands out; gives the impression of being the product of reasoned choice rather than caprice or mere chance; and is.material to the overall impression one gets upon looking at the questionnaires. 70. Now, the versions of the Koo-Ho questionnaire which Dr Lam had were KH3c and Md. And the headings in and topic sequence of KH3c is identical to the headings in and topic sequence of all the final Koo-Ho versions, KH4a to d. 71. The first matters dealt with in KH3c and KH4a to d are grouped under the heading "The Patient" and comprise: brief personal particulars; provisional diagnosis; and the basis of such diagnosis. L4 for cases begins by dealing with essentially the same matters albeit in much more detail, doing so under the headings "General", "Pathology" and "Medical History". The same is true of L4 for controls; except that instead of "Pathology" and "Medical History" it has a single heading "Morbidity Experience within One Month". 72. So far the parties' questionnaires are marching essentially in step. From this point, L4 for cases and L4 for controls follow the same sequence, so that there is no need to draw any distinction between them for the purpose of the present exercise. 73. The second topic in KH3c and KH4a to d is demography, dealt with under the heading "Patient's Demographic Background". Here the parties' questionnaries break step, for the next topic in L4 is "Past Medical History", dealt with under a heading so named; and that is the seventh topic in KH3c and KH4a to d dealt with under the heading "Medical History". The break is not a radical one however, for the topic which follows "Past Medical History" in L4 is demography, dealt with under the heading "Demographic History". 74. And the third topic - and heading - in KH3c and KH4a to-d is "Residential History", which happens to be a topic dealt with in L4 as the last item under the heading "Demographic History". 75. So, having started of essentially in step, and having then fallen out of step, the parties' questionnaires fall essentially back into step very quickly. And - as I am about to show - they then remain thereafter significantly more in than out of step. 76. "Smoking History" is the fourth heading in KH3c and KH4a to d. It deals with the interviewee's own smoking (if any) and her exposure (if any) to other people's tobacco smoke at home and at work. In L4 "Demographic History" is followed by two closely related headings and topics, "Tobacco Smoking" and "Family Smoking History". Between them they deal with the interviewee's own smoking (if any) and her exposure (if any) to other people's tobacco smoke at home but not at work, which exposure is dealt with under the next heading, "Occupational History and Smoking at Work". 77. And, interestingly as it happens, "Occupational History" is the very next i.e. fifth heading in KH3c and KH4a -to d. 78. The sixth heading in KH3c and KH4a to d is "Personal Habits and Hygiene". Here step is broken again because the main (although not exclusive) interest under that heading is in things apart from tobacco smoke which people may inhale, such as (although not limited to) the vapours from medicinal oils and the fumes from incense and mosquito coils; and those items are not dealt with in L4 until one comes to the last heading therein, "Others (Miscellaneous)". 79. The seventh heading in KH3c and KH4a to d is "Medical History", while the heading which follows "Occupational History and Smoking at Work" in L4 is "Family Medical History". Under "Medical History" KH3c and KH4a to d ask about the interviewee and her family. Under "Family Medical History" L4 asks about the interviewee's family. 80. The eighth and last heading in KH3c and KH4a to d is "Dietary History". Under that heading they ask about food, cooking oils, alcoholic and other drinks and whether rice is washed. The headings which follow "Family Medical History" in L4 are the last three therein. They are "Cooking History", "Dietary History" and "Others (Miscellaneous)". I have already dealt with the last of those three. Under "Cooking History" L4 deals with: whether the interviewee cooked (which is dealt with under "Occupational History" in KH3a and KH4a to d); her cooking methods (about which no specific question appears in KH3c or KH4a to d); cooking fuels (which is also dealt with under "Occupational History" in KH3c and KH4a to d) and cooking oils (which is dealt with under "Dietary History" in KH3c and KH4a to d). So, even ignoring where "Dietary History" comes in L4, there would still be an element, albeit not a large one, of being in step here. And of course one does not ignore that. Under "Dietary History" each side asks questions designed to probe the consumption of food which may be protective against cancer and of food which may pose a risk of cancer. The topic is important; and its place in the sequence of topics appears significant. 81. The deeper appreciation which one gets from the analysis which I have just performed can, I think, be usefully complemented by the broader view one gets from looking at lists of the headings in: first, KH4c and KH4a to d; secondly, L4 for cases; and, thirdly, L4 for controls. I would however make this proviso. One must not lose sight of content while looking at labels, for the actual similarity involved is, as we have just seen, greater than is apparent from the headings alone. Having said that, I turn to list those headings. In KH3c and KH4a to d they are:-
In L4 for cases they are:-
In L4 for controls they are-
82. Even though Dr Lam and Prof. Ho's interviewers did not always adhere to the questionnaire sequence when conducting interviews, the similarity of the topics and headings and of their sequence is striking. That emerges from what I have just pointed out. And, from what I am now going to point out, that is by no means all. 83. As far as KH3c is concerned, a copy was amongst the papers which Dr Lam himself kept. As far as KH4d is concerned, two copies - at the top of each of which Dr Lam, as he admitted under cross-examination, wrote "Koo & Ho" and in one of which he, as he likewise admitted, circled the questions on passive smoking - were found amongst the papers left behind by Dr Lam's research assistant, Miss S.C. Wong, after she had left that job. She - without any previous experience in epidemiology it would seem - prepared a draft questionnaire, L2. In doing so it appears probable - and I so find - that she drew on, among other things, KH4d. 84. Turning to matters of finer detail, it can be seen that in KH4 a to d data is gathered in tabular form for 8 items. For 7 of those 8 items, data is also collected in tabular form in L4 for cases and L4 for controls. The 7 items are: (i) type of accommodation; (ii) tobacco consumption over the years; (iii) passive smoking at home over the years; (iv) exposure to dust, chemicals and the like at work over the years; (v) cooking fuel use over the years; (vi) medical history of near relatives; and (vii) food frequently consumed. Item (i) is dealt with under Residential History in KH4 a to d and under Demographic History in L4 for cases and L4 for controls. Item (ii) is dealt with under Smoking History in KH4 a to d and under "Tobacco Smoking in L4 for cases and L4 for controls. Item (iii) is dealt with under Smoking History in KH4 a to d and under Family Smoking History in L4 for cases and L4 for controls. Item (iv) is dealt with under Occupational History in KH4 a to d and under Occupational History and Smoking at Work in L4 for cases and L4 for controls. Item (v) is dealt with under Occupational History in KH4 a to d and under Cooking History in L4 for cases and L4 for controls. Item (vi) is dealt with under Medical History in KH4 a to d and under Family Medical History in L4 for cases and L4 for controls. Item (vii) is dealt with under Dietary History in KH4a to d and under Dietary History in L4 for cases and L4 for controls. 85. The only item for which data is gathered in tabular form in KH4 a to d but not in L4 for cases or L4 for controls is household tasks performed over the years dealt with under Occupational History in KH4 a to d, which is an item not dealt with in any form in L4 for cases or L4 for controls. 86. As to items for which Dr Lam - but not Dr Koo or Prof. Ho - gathered data in tabular form, there are two such items common to L4 for cases and L4 for controls and one such item in L4 for controls only. The two common items are cooking oils used over the years dealt with under Cooking History and other food or dishes consumed frequently under Dietary History. The question on cooking oils in KH4 a to d comes under Dietary History, and reads: "Do you know what kind of oil you usually use for cooking? (peanut, vegetable, pork fat, corn, etc.)". The "other food" question in KH4d also comes under Dietary History, and reads : "Are there any kinds of processed, preserved, or manufactured foods that you particularly like and have been eating for many years on a regular basis?" The item in L4 for controls only is constituted by symptoms, diagnosis, action taken, duration and outcome under Morbidity. No such detail is sought by KH4a to d in tabular or any other form. 87. To summarise therefore: of the 8 tabular form questions in KH4 a to d, all but one are also to be found in L4 for cases and L4 for controls; and there are only three questions in that form in the L4 questionnaires which are not to be found in KH4 a to d. The position is the same when the comparison is made with KH3c save that in KH3c the question on passive smoking at home is not is in embryonic rather than fully-fledged tabular form. 88. Let us move on to the actual questions in the questionnaires to be compared. Here it can be seen that - as Dr Koo and Prof. Ho's experts have pointed out - there is in general a closer degree of similarity of substance, form and sequence between the parties' questionnaires than between what Dr Lam has drawn up and the documents which he has identified as his sources independent of Dr Koo and Prof. Ho. That cannot be simply brushed aside. It goes into the scales. However, this also goes into the scales. As the evidence of Dr Lam's experts has served to remind me, it is necessary here, and indeed throughout, to bear in mind always, in addition to the factor of pure coincidence, Dr Lam's own knowledge, experience and intellect. That point, and indeed all Dr Lam's points, are to be borne carefully in mind at all times however broad or narrow the aspect under consideration. 89. I do not propose to over-burden this judgment by rehearsing the contents of the questionnaires and other documents involved. Suffice it to say that, after taking everything into account, I am left of this view. In all the circumstances, it is of some significance that Dr Lam's actual questions are in general closer in substance, form and sequence to Dr Koo and Prof. Ho's actual questions than to what is to be found in his stated sources independent of them. That view is one which, I should make it clear, I form only after, as always, taking into account everything urged on Dr Lam's behalf, including the point that differences between the state of medical knowledge at different times must not be forgotten. 90. There are two particular subjects investigated by Dr Koo and Prof. Ho and also by Dr Lam about which I should say more. The first subject is that of inhalants: particularly other people's tobacco smoke involuntarily inhaled by way of passive smoking. The second subject is that of ingestants: those which may be protective against cancer (including lung cancer) and those which may carry a risk of cancer (including lung cancer). Mr Fung submits that the treatment of both subjects in the Lam questionnaire (by which I mean here L4 for cases and L4 for controls) is strikingly similar in form to their treatment in the Koo-Ho questionnaire (by which I mean here KH4d). And he seeks to develop an argument on the basis that such similarity is especially significant for this reason. Those two subjects are, as Mr Garland accepts, the two most important subjects investigated by Dr Lam. But Dr Koo and Prof. Ho do not focus on them to nearly the same extent. Therefore, the fact that the extent to which both those subjects are, or least passive smoking is, probed by Dr Lam approximates to the extent to which they are, or at least passive smoking is, probed by Dr Koo and Prof. Ho is indicative of slavish copying on his part. The argument so developed is one which I reject. I reject it for the simple reason that I am quite unable to discern any subject investigated by Dr Koo and Prof. Ho which can be put on a par with those two, let alone be regarded as more important than them. 91. Mr Fung's alternative argument in regard to those two subjects rests on surer foundations. For it proceeds on the footing that those two subjects are also the two most important subjects investigated by Dr Lam and Prof. Ho. Therefore, the argument runs, the similarity in form between the treatment of those two subjects in Dr Lam's questionnaire and their treatment in Dr Koo and Prof. Ho's questionnaire is that much more significant for being similarity in respect of the two most important subjects investigated by each side: I can see that point, for throughout what really matters is, of course, quality rather than quantity. 92. What similarity is to be found here? As far as the less important inhalants are concerned, there are more dissimilarities than similarities. Dr Koo and Prof. Ho ask about many things about which Dr Lam does not ask, such as living near power plants, incinerators and air-polluting industries; hobbies which may expose one to inhalants; cosmetics composed of fine dust; insecticides; mothballs, camphor etc. for the storage of clothing; and deodorizers and air fresheners. Dr- Lam asks about cooking methods, while Dr Koo and Prof. Ho do not. None of that is to say that none of the less important inhalants are common to both questionnaires. As we have seen, both contain non-tabular questions on medicinal oils, incense and mosquito coils. As we have also seen, both gather information in tabular form on these two matters, which- seem fairly important in regard to inhalation even though less important than passive smoking exposure to dust, chemicals and the like at work over the years; and cooking fuel use over the years. 93. Coming to passive smoking, both questionnaires extract information in tabular form as far as the home is concerned; and both extract information in non-tabular form as far as work is concerned. The passive smoking at home tables are very much alike where essentials are conerned And it is to be noted that as far as passive smoking at work is concerned, both questionnaires seek to gauge the measure, of pollution by reference to how "smoky" the room was, rather than by a more objective yardstick such as the approximate size of the room and the approximate number of persons smoking inside it. 94. Turning to ingestants, the most significant similarity as to form between the two questionnaires lies in this fact. Each has a list of specific food items; each provides a frequency scale for measuring the consumption of such food items; and the scales are quite alike. 95. So, while the treatment which each questionnaire accords to the two most important subjects investigated are by no means identical, they are strikingly similar in form. And when it comes to inhalants, of which there are many, it is obvious that the degree of similarity is the greatest in regard to the most significant inhalant, namely, other people's tobacco smoke at home and at work. And, as I have pointed out, the passive smoking questions in KH4d are the ones which Dr Lam circled. on a somewhat different plane, there are two instances of linguistic oddity which have to be considered. 96. The first is one of a grammatical mistake in the Koo-Ho questionnaire being repeated in the Lam questionnaire. It consists of using the preposition "of" when the correct one to have used is "at". Under Patient's Demographic Background, KH4d asks about "age of marriage". Under Demographic History, both L4 for cases and L4 for controls ask about "age of (first) marriage". The information sought is the age at which the interviewee got married. 97. Dr Koo says - and I accept although her English is generally very good - that misusing "of" for "at" in such circumstances was, a mistake which she used consistently to make. Thus one finds a reference to "age of menarche" rather than one to "age at menarche" under Personal History in KHla. Prof. Ho says - and I accept - that he did not notice the misuses at the times when they crept in. 98. Dr Lam asserts that misusing "of" for "at" in such circumstances is a common one among Hong Kong Chinese. In support, he points to a census document in which that misuse occurs. However, as far as documents in respect of which he puts himself forward as the actual draftsman are concerned, his questionnaire is the only one in which he misuses "of" for "at". There is a report on family planning by a task force of 14 persons of which he is one in which report both "age at first marriage" and "age of first marriage" appears, even on the same page. Both in the Edinburgh article of which he is the second author and in his final report to the authority- funding his research, the correct preposition "at" is used when dealing with this very matter of marriage. The suggestion on behalf Dr Koo and Prof. Ho is that on the choice between "at" and "of" in these situations, Dr Lam does not get it wrong unless led into error, and that in his questionnaire he was led into error through copying theirs. 99. The second instance of linguistic oddity is somewhat more involved. 100. Under Dietary History in KH4d, Dr Koo chose the expression "pork fat" rather than "lard" when asking about cooking oils. And that got past Prof. Ho. Under Cooking History in L4 for cases and L4 for controls, Dr Lam also used the expression "pork fat" in connection with cooking oils. 101. But he says that he was not doing what Dr Koo had done: He says that he meant precisely what he said because he was asking about actual chunks of fat from the carcasses of pigs. His understanding, he says, is that it was usual for people to buy such chunks of fat in order to extract oil therefrom by themselves. And his interest, he says, is in exposure through inhaling the fumes generated during the rendering process as well as through ingesting the rendered substance in due course. 102. The fact remains, however, that in L4 for cases and L4 for controls the words "pork fat" are accompanied by Chinese characters next to them. And those characters are, as Dr Lam accepts, the characters for, literally, "pig oil". That would sit happily enough with "lard". It does not appear apt to cover what Dr Lam says was his interest and purpose. The term "pork oil" is the one employed in his final report in September 1986 to the body which funded his research. 103. So in relation both to the misuse r)f the preposition "of" and the odd choice of the term "pork fat", there remain these questions. Did Dr Lam duplicate eccentricity of expression on the part of Dr Koo? And, if he did, is that a straw in the wind on which Dr Koo and Prof. Ho could rely if need be? In all the circumstances, it seems to me that the answer to each question would be in the affirmative if Dr Lam's explanations are disbelieved. His explanations are not inherently beyond belief. But, for the reasons I have indicated, nor are they free of difficulty. The answers will turn, therefore, on the view I formed of Dr Lam's credibility having seen and heard him in the witness-box. I will come to the credibility of the witnesses a little later on. 104. Leaving similarity for the time being and turning to certain other matters, I come first to the confidentiality (if any) of questionnaires. I mean, of course, case-control study questionnaires. 105. Broadly speaking, two issues arise. The first is whether questionnaires in general are confidential. Essentially, it is Dr Koo and Prof. Ho's case that they are, while Dr Lam's case is that they are not. The second issue is whether the Koo-Ho questionnaire in particular was confidential. Essentially, it is Dr Koo and Prof. Ho's case that it was, while Dr Lam's case is that it was not. 106. As to questionnaires in general, the pioture I get, from such evidence placed me as I consider reliable, is one -along these lines. By and large, questionnaires are not published even when the results of the research in which they were used are published, let alone before. There is no practice under which researchers volunteer to show their questionnaires to other researchers. Nor is there even any practice under which researchers designing questionnaires ask other researchers for their questionnaires for reference, let alone any practice under which they are entitled to expect that any such request would inevitably or even usually be met. One collaborator or potential collaborator in research may well take the initiative to show the other his questionnaire or draft questionnaire, and is highly likely to do so upon request. On the whole, questionnaires in general are to at least some extent confidential. 107. Certainly, there is no rule of law under which a researcher can be ordered to hand a copy of his questionnaire to- another researcher just because that would be of assistance to that other researcher. That would be the legal position even if and when withholding the questionnaire would be churlish. But it is only fair to say that withholding a questionnaire would not inevitably be churlish. It depends on the circumstances. I need not illustrate that by examples here. What I mean will become abundantly clear when I deal with the second issue, to which I now turn. 108. For Dr Lam it is contended that, even if the Koo-Ho questionnaire were otherwise confidential, Dr Koo had chosen to treat it as other than confidential as far as Dr Lam and those collaborating with or assisting him were concerned. I will come to that contention, which is disputed by Dr Koo and Prof. Ho, in due course. But first I will consider the position leaving that contention to one side for the time being. 109. On that footing, I note that Dr Koo and Dr Lam, while colleagues and fellow researchers, were - by the standards of the real world as opposed to an ideal one - also rivals. They were rivals for promotion within the department in which they both worked. That is obvious. And in the result, he has had much more cause for satisfaction as far as promotion is concerned than she has had. As we have seen, she remains a lecturer to this day, while he became a senior lecturer and then a reader. They were also rivals as young scientists seeking recognition. Prof. Ho's appreciation of the vulnerability of young persons starting out on the long, hard road up struck me as more perceptive than that displayed by Mr Peto. 110. Further, Dr Koo and Prof. Ho, on the one hand, and Dr Lam, on the other hand, were also rivals in this sense. He went into an area of research which they had entered first. Prof. Ho says, and I accept, that in all the circumstances - which includes the fact that Dr Koo and Dr Lam were in the same department and a very small one at that - his entry might well cause people to wonder if there was some lack of faith somewhere in what they were doing. Even Dr Lam's own witness, Dr J.W.L. Kleevens, who was then the head of the department to which he and Dr Koo belonged, was not pleased when first confronted with the prospect of Dr Lam entering the area of research which Dr Koo and Prof. had already entered (although he, Dr Kleevens, later so overcame any reservations which he may have had that he became Dr Lam's epidemiological consultant). 111. Much as one would like - and in an ideal world expect - to see the fullest possible co-operation between all researchers, and much as one is pained by the spectacle of these researchers engaged in a bitter dispute such as this, I am unable to say that there is in law any general requirement that researchers share the unpublished fruits of their labours. To what I have already said, I would add this. Researchers are heavily dependent on funding. For the same they have to make application, competing against other applicants. Some of these they may respect. Some of these they may not respect. So refusal to help a rival may not involve any self-interest. But even where it does, it is necessary that I do not permit my admiration for those who are wholly self-sacrificial to lead me into condemnation of those who think also of themselves. Here, I should mention, the parties were funded by different bodies : Dr Koo and Prof. Ho by the University of Hong Kong's Committee on Research and Conference Grants, and Dr Lam by the International Development Research Centre, which has its headquarters in Canada. 112. The view which I have formed on the evidence before me is this. Quite apart from the confidentiality of questionnaires in general, Dr Koo and Prof. Ho were entitled to regard their questionnaire as especially confidential as far as Dr Lam and those collaborating with and assisting him were concerned. That was their entitlement in law; and it is with such entitlement that I, sitting here, am concerned. Having stated their position by reference to law, I should not however be taken to imply that I regard their position as different by reference to morals. 113. Considerable skill, judgment and labour on the part of Dr Koo and Prof. Ho went into, I am satisfied, the drawing up of their questionnaire. They had to decide what to ask and what not to ask. And they had to work out how to ask what they decided to ask. I am satisfied that the information which their questionnaire contains was of a confidential nature. And, in coming to that conclusion, I have applied the test laid down by Lord Greene, MR in Saltman Engineering Co. Ltd v. Campbell Engineering Co. Ltd [19481 65 RPC 203, and reiterated by Megarry, J in Coco v. A.N. Clark (Engineers) Ltd [1969) RPC 725. The Master of Rolls put it like this (at p.215) -
And this is how Megarry, J put it (at p.47) :
114. I turn now to Dr Lam's contention that Dr Koo did not treat her questionnaire as being confidential as far as he and his team were concerned. 115. At this point it becomes necessary to turn to my assessment of the witnesses of fact. I pause only to say this of the expert witnesses. As experts, they - in keeping with what one would expect of men of their calibre - all did their best to assist me. And each of them has, to some extent, enabled me to see things more clearly and from as many angles as possible, the better to answer the questions which I have to answer. I am grateful to them. 116. As far as the witnesses of fact are concerned, I of course watched as well as listened to them with care, for the manner as well as the matter of their testimony must be weighed. And I have weighed the same. 117. Dr Koo and Prot. Ho impressed me as honest and reliable. Their answers were always straightforward. They were never evasive. 118. Dr Kleevens did not impress me as reliable on matters of controversy. From the things which he said and the way in which he said them, I formed the view that his memory of those matters is unreliable. In respect of some of them he admitted as much. And even where he asserted a confident recollection, his demeanour was suggestive of far less confidence than his words alone would convey. 119. For a professional man, or indeed anyone, who is being sued and against whom serious allegations are made, giving evidence, especially in the course of a long and searching cross-examination, is likely to be a great strain whatever there may or may not be in those allegation. Due allowance for such strain must be made in Dr Lam's favour. But even having done that throughout, I am, having seen and heard him in the witness-box, left with an unfavourable impression of Dr Lam as a witness. My impression of him is the opposite of my impression of Dr Koo and Prof. Ho. I wish that I could - but I do not think that I can - avoid saying this : I do not think that Dr Lam's testimony was full or frank. 120. I return now to the matter of confidentiality. 121. There is a suggestion coming from Dr Lam that at a presentation made to her departmental colleagues, at which presentation he says that she illustrated her point by way of three over-lapping circles, Dr Koo made some disclosure of things which she now says was confidential. She denies making any such disclosure, saying that those three circles did not feature in the presentation which she made at the time spoken of by Dr Lam. I accept her evidence and reject his evidence on this issue and on all other issues on which their evidence conflict. 122. I find as a fact that Dr Koo as well as prof. Ho kept their questionnaire and their data collected thereby confidential from Dr Lam and his team. Neither Dr Koo nor Prof. Ho gave, or caused or authorised anyone to give, any version of their questionnaire to Dr Lam or anyone on his team. 123. The first time that Dr Koo and Prof. Ho suspected that something was amiss was in the spring of 1986. As a result of something said to her, Dr Koo took a look at some of Dr Lam's data which was lying around where his and her research assistants sat. What she saw caused her to believe that Dr Lam has gotten hold of or seen her and Prof. Ho's questionnaire or their data collected thereby. 124. She went and tackled him. He said he would look into the matter. He did so. And then he went to her, saying that he found that he did have her questionnaire but that she had given it to him. 125. By a letter dated March 29, 1986, she wrote to him thus :-
His reply, which is dated April 7, 1986, reads :-
126. Having seen and heard them, I reject Dr Lam's suggestion that Dr Koo gave him the Koo-Ho questionnaire, and accept her denial of having done anything of the kind. 127. Dr Kleevens, having given evidence that Dr Koo gave him a copy of KH3c, eventually reached the point when he disavowed any confident recollection of her having done so. But he made no such retreat from his account of a chance meeting with her in the department pantry in 1981 or 1982 when they discussed the last question in KH3c, which is whether the interviewee had made a practice of washing rice over the years. One can see the relevance of such evidence, if true. Had such a discussion really taken place, it would show that Dr Koo must have been aware back then that her and Prof. Ho's questionnaire was in the hands of, or at least had been seen by, persons who were not on their team. And that would lend support to the suggestion that she had given it to Dr Lam or Dr Kleevens. But I reject Dr Kleevens's evidence that such a discussion took place between him and Dr Koo, and accept her evidence that none had. His evidence of such a discussion was what I was referring to when I said earlier that even where Dr Kleevens asserted a confident recollection, his demeanour was suggestive of far less confidence than his words alone would convey. Dr Koo's evidence denying that any such discussion had even taken place was cogent. 128. There is some suggestion that Dr Koo's research assistant, Miss Nancy Lee may have given KH3c and KH4d to Dr Lam's research assistant, Miss S.C. Wong. But there is no evidence of that. Nor, for that matter, is there any evidence that miss Lee would have had any authority - whether express, implied or apparent - to do anything of that kind. Finally and in any event, as far as KH4d is concerned, I accept Dr Koo's evidence that only she, Dr Koo, had the same. 129. I now leave the facts for the time being. Before returning to the same, I propose to examine the jurisdiction of the courts to restrain the misuse of confidential information and to award compensation in respect of such misuse as has taken place. 130. Certainly, there are two situations in which it is well-established that such jurisdiction arises. Are they the only situtations in which it arises? 131. The first well-established situation in which it arises is where the party to be restrained or ordered to make recompense is fixed with an obligation of confidence by contract. The second is where he is fixed with such an obligation by-the operation of equity, which so operates whenever information of a confidential nature has been imparted in circumstances importing an obligation of confidence. But is the jurisdiction confined to those two situations? The answer which I give - both on principle and authority - is : no, the jurisdiction is not thus confined. A moment's thought will show that it cannot be. For if it is, then it would not arise even in cases in which the confidential information was extracted by menaces or even physical force. 132. As far as the authorities are concerned, I begin my survey of them by examining the famous case of Prince Albert v. strange (in which the original proceedings before the Vice-Chancellor in 1848 - 1849 are reported at 64 ER 293 and the review proceedings before the Lord Chancellor in 1849 are reported at 41 ER 1171). The case, as is well-known, concerns drawings and etchings made by Queen Victoria and Prince Albert of their children and other subjects of interest to the Royal Family. That said, the facts may be taken from the headnote of the report of the proceedings before Knight Bruce, V-C (at p.193) :-
So the plaintiff succeeded before the Vice-Chancellor. 133. He was equally successful before the Lord Chancellor upon review. The headnote of the report of the review proceedings (at p.1171) reads :-
One notes the reference to the "right or property of an author".
What I see in that are the foundations for this. A man's entitlement to keep his confidential information confidential, and to recover compensation if such information is misused, is not confined to what can be achieved under contract or through the intervention of equity where the information was imparted trusting the recipient to keep the same confidential. There is a proprietary interest in confidential information; and there is jurisdiction in the courts to intervene to preserve such interest or award compensation for harm done to it. 134. Such jurisdiction is, I think, the jurisdiction exercised by Buckley, J in The Exchange Teleyraph Company (Limited) v. Howard (1906) 22 TLR 375, a case to which I drew to counsel's attention and on which I invited and, have of course received, their assistance. The facts of that case emerge from these two sentences in the headnote (at p.375) :-
135. Buckley, J begins his judgment by saying this (also at p.375) :-
Although he was unable to discover the means by which the defendants were obtaining the plaintiffs' confidential information, Buckley, J was satisfied that they were surreptitiously obtaining and making use of the same. And (as one sees at p.378) he granted the plaintiffs an injunction "... restraining the defendants, their servants or agents, and each and every of them from surreptitiously obtaining or copying any cricket or other news collected by the plaintiffs for the purpose of transmission to their subscribers and from transmitting, communicating, or delivering to any person or persons by messenger, telegraph, telephone, or otherwise any cricket or other news so obtained by the dependants." 136. I am of course conscious of the fact that in A-G v. Guardian Newspapers (No.2) [1990] AC 109 - "The Spycatcher Case" - Lord Goff of Chieveley (at p.281 F-H) deliberately avoided deciding whether confidential information may be regarded as property. 137. However, since there is here no contract or imparting of information, it seems to me that I ought to confront the question (even though Mr Garland concedes in any event that the courts have jurisdiction, however one describes that jurisdiction, to protect confidential information from being surreptitiously obtained and then misused). 138. In my view, the proprietary jurisdiction exists. I have already indicated why I think that, on principle, the jurisdiction to protect confidential information is not confined to cases in which there is a contract or has been an imparting. I have also already dealt with the statements made in Prince Albert v. Strange (supra) and the statements made, and the actual result arrived at, in The Exchange Telegraph Company (Limited) v. Howard (supra). 139. Turning in this connection to another two cases - both of them very well-known cases - which I have already looked at in a different connection, I come first to the more recent one, Coco v. A.N. Clark (Engineers) Ltd (supra). In that case Megarry, J did not exclude the possibility of some basis of jurisdiction other than contract and equity. One sees that (at p.47) he dealt with the three elements "normally" required if, contract apart, a breach of confidence claim is to succeed. 140. The other well-known case I have in mind is Saltman Engineering Co. Ltd v. Campbell Engineering Co. Ltd (supra). Delivering the leading judgment in the Court of Appeal, Lord Greene, MR accepted (at p.213) a proposition as wide as this :-
In the present connection, the formula "directly or indirectly obtained" are particularly to be noted. 141. A man's confidential information is his property. The courts have jurisdiction to protect such property from misuse. Such jurisdiction is not confined to cases in which . such information has been imparted in confidence or to cases in which an obligation to keep the same confidential arises under contract. Any use, including self-use by the wrongdoer, following any misappropriation - whether by force, menaces, trickery or stealth - is, in general, misuse which is liable to be restrained or made the subject of an order for damages or an account. 142. The conclusion that the proprietary jurisdiction exists is one at which I am happy to arrive. For I agree with Dr Francis Gurry when he says, at pp.55-56 of his book "Breach of Confidence" (1984), that
143. There is one more question of law with which I propose to deal before returning to the facts. 144. The question of law is whether detriment is an, essential ingredient of a misuse of confidential information claim. Mr Fung submits that it is not. Mr Garland submits that it is. In The S catcher Case (supra) Lord Goff of Chieveley chose (at p.281H) to leave the question open. 145. This is what Lord Keith of Kinkel said (at pp.225E - 256A) on the question in the same case :-
146. If it be - and I have no doubt that it is - the policy of the law to encourage people to respect confidential information imparted to them, then all the more must it be the policy of the law to discourage people from misappropriating and then misusing other people's confidential information. 147. Lord Keith of Kinkel went on to say this (at p.256) :-
148. What is true of someone who has imparted confidential information is, in my view, also true of someone who has had his confidential information taken from him surreptitiously. If someone wishes to keep his confidential information confidential, then it is, in general, sufficient detriment to him for the purpose of completing his cause of action in misuse of confidential information that, through the misuse by someone else of such information, he is denied his wish in the matter. 149. Returning to the facts of the present case, I can now come, at long last, to my conclusions on the issue of copyright infringement and misuse of confidential information. 150. I will deal with copyright infringement first. 151. The consistent use made of topic headings designated by capital letters, the sequence in which the topics thus headed are arranged, the frequent use of tabular form, the way in which subjects in general and the principal subjects of inhalants and ingestants in particular are pursued, the combination of all those things, and the context in they all appear in KH4d are - in terms of expression of thought - novel and striking features. They originate from their authors, Dr Koo and Prof. Ho, who created them through an exercise of skill and judgment and an investment of time and toil. And in L4 for cases and L4 for controls, they are striking and strikingly similar to the expression which they find in KH4d. 152. I do not think that pure coincidence, Dr Lam's own training and experience, common sources, any combination of the same or anything else innocent provide any plausible explanation for the degree of similarity which exists. Dr Lam had a copy of KH4d, which he marked as I have already indicated. 153. As to Dr Lam's possession of KH4d and KH3c, I have of course given the most anxious consideration to everything urged by his counsel on his behalf. And I have of course borne carefully in mind that the allegations against him are serious ones which have to be proved to a standard commensurate with their seriousness. Having said that, I must now say this. I do not believe that Dr Lam was ever given any copy of KH4c or KH4d. Nor do I believe that he ever believed that Dr Koo had given him, or was willing that he should have, a copy of either. Both KH4c and KH4d represent expressions of thought which went well beyond that represented by the interview pattern forming part of the research proposal which she gave him. Serious as the allegation that he surreptitiously obtained KH4d is, I find it proved. He had them. I do not believe his evidence as to how he got them. And, in all the circumstances, the inference that he obtained them surreptitiously is, in my view, the correct one. 154. Sufficient objective similarity is present; and the requisite causal connection has been proved. I find that Dr Lam, in drawing up his final questionnaire constituted by L4 for cases and L4 for controls, infringed Dr Koo and Prof. Ho's copyright in their literary work, their final questionnaire KH4d, by reproducing the same in a material form. 155. A defence of fair dealing has been raised. But my conclusion that Dr Lam had obtained KH3c and KH4d surreptitiously puts an end to that defence, as Mr Garland concedes that such defence could not succeed if Dr Lam had obtained them in that. manner. 156. That still leaves the question whether Dr Lam is liable in "infringement" damages under section 17 of the Copyright Act 1956 and "conversion" damages under section 18 of that Act. In the circumstances, he would be liable in both unless it is proved that at the time of the infringement he was not aware, and had no reasonable grounds for suspecting, that copyright subsisted in KH4d. 157. I do not find that proved. Even at that time he was, apart from being an intelligent man, already a highly qualified scientist and academic with some years' experience behind him. He obtained the infringed work surreptitiously. And he copied therefrom. I think that he knew full well - or, at the very least, had every reason to believe - that what he got through behaving in that way was the product of the skill, judgment and labour of the authors of the infringed work. Indeed, far from believing that he did not even have any reasonable ground for suspecting that copyright subsisted in KH4d, I believe that he was well aware that copyright subsisted in it. 158. The claim in copyright succeeds. 159. In my judgment, the misuse of confidential information claim also succeeds. Dr Koo and Prof. Ho's questionnaire KH4d contained confidential information of theirs. Dr. Lam obtained such questionnaire - and with it the confidential information it contained - surreptitiously. Having done that, he made use of such confidential information in drawing up his own questionnaire constituted by L4 for cases and L4 for controls. That use has been so considerable as to result in infringement of the copyright in the questionnaire containing that information, which questionnaire he obtained surreptitiously. Such use must be misuse. That is sufficient to dispose of the present case. But it should not be thought that I am of the view that use which falls short of copyright infringement cannot be misuse in the context of a misuse of confidential information claim. That is not my view at all. It is wrong to obtain other people's confidential information surreptitiously for one's own use. 160. No man may benefit by his own wrong. Naturally, I bear in mind the caution sounded by Lord Goff of Chieveley (at p.286c) in The Spycatcher Case (supra) against taking so general a proposition as providing "any sure guidance to the solution of a problem in any particular case". Nevertheless, it remains appropriate to ask oneself this question : would not permitting a man to make any self-use of any confidential information which he obtains from others by doing wrong be permitting him to benefit by his own wrong? Generally, if not inevitably, the answer would, in my judgment, have to be in the affirmative. So, why would the law permit such a thing? The answer, in my judgment, is that the law does not. The "problem" before the House of Lords in The Spvcatcher Case (supra) - or at least the principal problem before their Lordships - was whether or not to restrain publication of what had been secret but which, through the revelations of a former member of the Security Service, had become common knowledge. This is what Lord Goff of Chieveley said (at pp 286 E - 287 B) :-
Then his Lordship turned (at p.288 C - D) to the position of the former Security Service officer himself, and emphasised that :-
161. So it was not a question of whether that gentleman was to be permitted to benefit by his own wrong. The liability of wrongdoers to account or pay damages was quite apart from what was being decided. 162. My view of the law is this. In general, unless the use is so trifling that the maxim "de minimis non curat lex" - the law does not concern itself with trifles - comes into play, any self-use of other people's confidential information obtained through wrongdoing is, practically by definition, misuse. In cases in which a claim in copyright infringement and one in misuse of confidential information are brought on the same facts, the latter may succeed even where the former fails for want of sufficient objective similarity. Even if the objective similarity between Dr Koo and Prof. Ho's questionnaire and Dr Lam's questionnaire was insufficient for the copyright infringement claim to succeed, the misuse of confidential information claim would still succeed. For the misuse here - even if, contrary to my view, it fell short of bringing about sufficient objective similarity for copyright infringement purposes - is far from trifling. As it is however, the point does not arise, since sufficient objective similarity exists. 163. As far as detriment is concerned, I have no doubt that both Dr Koo and Prof. Ho wished to keep their confidential information to themselves and that, by what he has done, Dr Lam has denied them their wishes in the matter, and benefitted himself at their expense. That is sufficient detriment to complete their cause of action. But, in fact, there is detriment to them beyond that. First of all, Mr Garland concedes that the injury to a plaintiff's feeling brought about by seeing that a rival has put to his own use confidential information which he has surreptitiously obtained from the plaintiff is sufficient detriment. And I find on the evidence that both Dr Koo and Prof. Ho have suffered at least detriment of that kind. Secondly, even that is not all. For I.accept that certain queries regarding the originality of the Koo-Ho questionnaire have been raised in certain quarters which matter in the aftermath of Dr Lam's conduct, and that Dr Koo and Prof. Ho's reputations have been adversely affected accordingly. 164. I give judgment for Dr Koo and Prof. Ho against Dr Lam for damages of be assessed by a Master for: infringement of their copyright in KH4d; conversion of any infringing copy thereof; and misuse of the confidential information therein. Whether additional damages under section 17(3)-of the 1956 Act are to be awarded will be decided by the Master. 165. Perhaps no assessment will prove necessary. Nobody would be so optimistic or, if you prefer, naive as to expect that the parties will now, like tired pugilists at the end of a bruising contest, drape their arms around each other's shoulders and leave the arena as friends. Nevertheless, I dare to hope that they will by now have had their fill of litigation, and are longing to get back to their useful work, so that perhaps some accommodation can be reached in regard to what would otherwise have to be fought out before the Master. Dr Koo and Prof. Ho have now removed any doubt which anybody may have entertained over the originality of their questionnaire. That is what I gather is - and has always been - the most important thing to them. 166. It only remains, before inviting counsel to address me on costs, to express my indebtedness to counsel and solicitors on both sides for the assistance which, by reason of their ability and industry, I have received throughout this by no means easy case, the hearing of which was estimated at eight working weeks, and which, through one . unexpected development or the other, has in fact occupied nine. As he has been present in court throughout, Dr Lam will not need to be told that Mr Garland has done everything which could be done on his behalf. And Mr Garland will, I am sure, appreciate this. I have listened with care and, if he will permit me to say so, admiration to all of his arguments. Each and every one of them has been worthy of, and has received, careful consideration, whether or not I have expressly dealt with it in the course of this judgment, which is long enough as it is, and comes now to an end. COSTS
167. There is no dispute that, subject of course to orders as to costs made at the interlocutory stage, Dr Koo and Prof. Ho are entitled to the general costs of the action. 168. But should I leave such costs to be taxed on a party and party basis? That is what Dr Lam asks. Or should I order some more generous basis of taxation? That is what Dr Koo and Prof. Ho ask. 169. And if I were to order some more generous basis, which one should it be? 170. If costs are left to be taxed on a party and party basis, then Dr Koo and Prof. Ho would be allowed all such costs as were necessary or proper for the attainment of justice or for enforcing their rights. That would follow from Order 62, rule 28(2). 171. And if taxation is to be on a common fund basis, which is more generous, then they would be allowed a reasonable amount in respect of all costs reasonably incurred. And the ordinary rules applicable on a taxation as between solicitor and client where the costs are to be paid out of a common fund in which the client is interested would be applied, even though the costs are not in fact to be so paid. That would follow from rule 28(4) of that order. 172. Finally, if taxation is to be on an indemnity basis, which is more generous still, then they would be allowed all costs save in so far as the same are of an unreasonable amount or have been unreasonably incurred. And any doubts which the taxing master may have as to whether the costs were reasonably incurred or were reasonable in amount would be resolved in their favour. That would follow from paragraph (4A) of that rule. 173. A lot of money is at stake. Mr Fung informs me that the costs incurred by Dr Koo and Prof. Ho come to $5.93 million. And the estimates which he puts forward on their behalf are these. They would recover: about $4.84 million on party and party taxation; between about $5.08 million and $5.33 million on common fund taxation; and almost all of their actual costs of $5.93 million on indemnity taxation. Mr Garland finds himself in no position to accept any of those figures. 174. My attention has been drawn to the following statement by Godfrey, J. in Overseas Trust Bank Ltd v Coopers & Lybrand [1991] 1 HKLR 177 at pp.182J-183C:-
175. Mr Fung submits that I ought to view the way in which the defence has been conducted in the present case as an affront to the court. In support, he has put forward 7 matters. 176. The first is the defendant's failure to concede subsistence of copyright until the 40th day of the hearing. 177. The second is his failure to concede ownership of copyright, and raising the defence that the University was the owner without pleading that, putting it to Dr Koo or Prof. Ho or adducing any evidence to prove it. 178. The third is his failure to admit pursuant to a notice to admit served on November 27, 1991, that he had seen HK4d when, as he admitted in cross-examination on the 32nd day of the hearing, he had not only seen it but had marked up a copy. 179. The fourth is his failure to date any but two of his draft questionnaires (which Mr Fung submits exemplifies his attempt to obfuscate at every turn of the proceedings). 180. The fifth is his going along with the labelling of his notes Ll and Miss S.C. Wong's draft L2 when, as he admitted in cross-examination on the 31st day of the hearing, most of L2 pre-dates L1. Mr Fung submits that such behaviour was an attempt to mislead the court. 181. The sixth is made up of his 26th, 28th, 67th and 70th answers to the interrogatories ordered by a master on June 20, 1990, the submission being that his answers were mendacious. 182. The seventh is his opposition - which was successful - to an interrogatory asking him who wrote "Koo and Ho" on a certain copy of KH4d when, as he admitted in cross-examination, he wrote that himself. 183. Lastly, Mr Fung relies upon the cumulative effect of all, or any combination of, the foregoing matters. 184. Mr Garland has challenged the premise and the effect of each of the points taken by Mr Fung. I have weighed everything urged on each side. And I have of course done so in the context of what I observed day after day in the course of the lengthy hearing before me. 185. All things considered, I feel unable to go so far as to brand the way in which the defence has been conducted as an affront to the court. 186. Nevertheless, I do regard this as a special or unusual case in that the way in which the defence has been conducted, particularly in regard to subsistence and sight of HK4d, has unreasonably added very considerably to the time - and therefore the costs - which had to be spent on its preparation out of court and hearing in court. 187. I order that Dr Koo and Prof. Ho's costs be taxed on a common fund basis if not agreed. Of course, that does not mean that the taxing master may not allow less than $5.08 million or more than $5.33 million. I would add only this. In E.M.I. Records v. Ian Wallace Ltd [1983] 1 Ch 59 at p.64A Sir Robert Megarry, V-C said that "... the practical result seems to be that taxation on the common fund basis is little more than a party and party taxation conducted 'on a more generous scale' ... In the present case, the common fund taxation should, in my judgment-, be at the very top of the scale, stopping short only where indemnity taxation begins. 188. As before, I conclude by thanking counsel and solicitors on both sides, and by expressing my hope that peace at least, even if not friendship, can now exist between the parties.
189. The costs of and incidental to this argument will be to Dr Koo and Prof. Ho, likewise to be taxed on a common fund basis.
Representation: Mr D. Fung, Q.C. and Mr C. Maxwell Lewis (instructed by Messrs Robin Bridge & John Liu) for the plaintiffs Mr P. Garland (instructed by Messrs Johnson, Stokes & Master) for the defendant |
Cases cited in this judgment