Mak Hau Shing v. Oriental Press Group Ltd and Others

IN THE COURT OF APPEAL

1996, No. 21
(Miscellaneous Proceedings)

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H E A D N O T E

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The court will refuse, on public policy grounds, to enforce copyright in photographs obtained by the exercise of duress or co-ercion against the subject, but will not do so in the absence of any evidence of overt acts constituting such duress or co-ercion; evidence that the photographs were or may have been taken without the subject's consent will not be sufficient.

IN THE COURT OF APPEAL

1996, No. 21
(Miscellaneous Proceedings)

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Coram : Hon. Litton, V.-P., Godfrey and Ching, JJ.A.

Date of hearing : 19 April 1996

Date of handing down judgment : 2 May 1996

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J U D G M E N T

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Godfrey, J.A. :

Introduction

1. This is, in substance, an application for an extension of time to appeal to this court from an order made by Leong, J. on 13 April 1994, the applicants being two of the defendants in the action in which the judge's order was made. (The application is, in form, an "appeal" from an order of Liu, J.A. made on 23 January 1996, refusing these defendants such an extension of time. But Order 59 rule 14(12) of the Rules of the Supreme Court provides that an appeal from such a determination by a single judge of this court is to be brought before this court by way of fresh application.)

The parties

2. It will be convenient, before setting out the history of the events which gave rise to the action, to describe the parties involved in it. I shall refer to the plaintiff as "the father". (He is the father of a girl born on 1 August 1975 who, in October/November 1990 when the story starts, was accordingly only 15; I shall refer to her as "the daughter".) The 2nd defendant is the publisher of a daily Chinese newspaper; I shall refer to it as "the newspaper". The 3rd defendant is the publisher of a weekly Chinese magazine; I shall refer to it as "the magazine". (The 1st defendant plays no material part in the story.) There remains to mention only the daughter's mother ("the mother") and the one other participant in the October/November 1990 events, a young man to whom I shall refer as "the photographer".

The history

3. In October/November 1990 (when the photographer was just beginning his career) the daughter went to his studio, twice, to pose for photographs. During the second session, the photographer took a number of photographs of the daughter in which the upper part of her body was exposed. (The circumstances in which the photographer came to take these photographs are in dispute and I shall return later in this judgment to consider that matter.) In 1993, the daughter entered as a contestant in a beauty pageant, held on 6 June 1993. Some of the photographs to which I have referred were published, in the newspaper on 7 June 1993, and in both the newspaper and the magazine on 8 June 1993, without the permission of either the daughter or the photographer. On 8 June 1993, the photographer assigned his copyright in these photographs to the father. The assignment included what was in effect an assignment of the right to claim damages in respect of antecedent infringements of the copyright. The next day the father instituted proceedings in which the newspaper and the magazine were later joined as defendants. On 23 March 1994, the father took out a summons for summary judgment against the newspaper and the magazine, claiming an injunction restraining further publication of the photographs in question, and damages for the antecedent infringements. On 13 April 1994, Leong, J. made the order I have already mentioned. It included an order restraining future breaches of copyright and an order for an inquiry as to damages (including "additional damages" under s.17(3) of the Copyright Act 1956). Neither the newspaper nor the magazine raised any objection to the making of this order. On 27 September 1995, a master embarked on the inquiry as to damages. On 29 September 1995, the daughter gave evidence in the inquiry, evidence now said by the newspaper and the magazine to demonstrate that the daughter had not posed voluntarily for the photographs in question, but had been "forced" into doing so by the photographer. At the conclusion of the hearing on 29 September 1995 the master adjourned the further hearing of the inquiry until 30 January 1996. But on 3 January 1996, the newspaper and the magazine applied to the single judge for an extension of time for them to appeal against Leong, J.'s order of 13 April 1994, notwithstanding that that order had been made well over a year ago and that neither of them had objected to its being made. The only material placed before the single judge (and before us) to justify so extraordinary an application is the daughter's evidence in the inquiry to which I have referred. The single judge having refused the extension of time for appeal against Leong, J.'s order for which the newspaper and the magazine had asked, they now make a fresh application for that relief to this court.

The argument for an extension of time

4. The argument of the newspaper and the magazine, as I understand it, may be summarised as follows. First, even if (which is not conceded) copyright can subsist in photographs for which the victim has been "forced" into posing, the court, on public policy grounds, will not enforce the copyright, either at the suit of the original owner of the copyright (the photographer) or of any assignee from him of the benefit of the copyright. Secondly, the court will in particular refuse to do so where the photographs, as here, are photographs of a girl of only 15 and exposing the upper part of her body. Thirdly, even if the court will enforce the copyright by restraining future infringements, it will not award damages to the original owner of the copyright, the photographer who took the offending photographs. Fourthly, an assignee of the copyright, however innocent, cannot have a better right to sue for damages for antecedent infringements of the copyright than the original owner of the copyright and, accordingly, the father here can have no better right to damages, let alone "additional" damages, then the original photographer would have had. Fifthly, since the daughter's evidence upon which the allegation that she was "forced" into posing for the photographs in question is based was not given until 29 September 1995, it would be unjust to the newspaper and the magazine to hold it against them, for the purpose of considering whether or not they should have an extension of time in which to appeal, that they did not object, originally, to the making of the order for the inquiry as to damages; and that their delay from 29 September 1995 to 3 January 1996 (when they applied to the single judge for an extension of time in which to appeal) was not of such an order as to justify denying them this relief.

The daughter's evidence

5. Since the whole case for the newspaper and the magazine on this present application is based on the assertion that the daughter has averred, or admitted, that she was "forced" into posing for the photographs in question, we have to review that evidence. Of course, it is not for this court at this stage to decide the appeal. We are at this stage concerned simply with the question whether an extension of time in which to appeal ought to be granted to the newspaper and the magazine. If we grant an extension of time and the appeal proceeds, it will be for this court at that stage to decide whether or not the newspaper and the magazine ought to be granted leave to defend the action (it will be recalled that the judgment of Leong, J. of 13 April 1994 was given, not at the conclusion of the action, but on the application of the father for summary judgment). In considering the daughter's evidence, therefore, we have only to consider, at this stage, whether it demonstrates that the newspaper and the magazine, if they are given an extension of time in which to appeal, would have a reasonable chance of succeeding in the appeal; obviously, to give an applicant for an extension of time in which to appeal would be pointless if the proposed appeal cannot be shown to have a reasonable chance of success. It is with these considerations in mind that I turn to the daughter's evidence. I must set out in full two passages from the daughter's evidence (the first, of some considerable length). The first extract is as follows :

"Q. And you told my learned friend yesterday that on the second session there was no one present except you and Mr Wong?

A. Right.

Q. And you agreed during the second session to take off your clothes for this stranger?

A. I wasn't going to agree but I could see that I was in peril. I wasn't feeling safe. Originally I would have my private tutor, that is, his girlfriend, keeping me company while the photography was going on. But, when I rang her up she said she wasn't free. So, she told me to go there alone, and I brought along several sets of costumes. I arrived. I said to the photographer "I have brought along my costumes." So, I said "I suppose it would be just like the last time?" But, once I stepped inside he shut the door, locked it, shut the gate, locked it. And then he told me to do this and that. Could I say "No"?

Q. So, is it now your testimony that you were forced by Mr. WONG to pose for these photos in the semi-nude?

A. Yes.

Q. And did you ever tell anyone that you had been forced to pose for these photos?

A. He was not saying it. He was not putting it in so many words that, "If you do not, I will so on and so forth." No. He did not actually express it, but he has put forth a threat by his conduct.

Q. Prior to today, had you told anyone that this Mr. WONG had put forward a threat by his conduct.

A. Yes. I told my private tutor, and then some 2 years after these photographs I told mum and dad, and now I am telling you.

Q. But you never told your father's lawyers?

A. That is right, I did not.

Q. Miss MAK, it is a very serious allegation you are making. It is a very serious matter. Why did you not tell your father's lawyers?

A. Well, "why"? You see, when I was talking to my dad's lawyers, he asked me to tell them the whole story behind the taking of these photographs. So, I told them, and I thought I have told them a very detailed story as to how my original intention was that a different kind of appearance or photograph would come out and not these ones. It is really very hard to say why, but I think maybe because I haven't gone so far as to tell the lawyers that I was locked in.

Q. It is your evidence you did tell your mother, did you?

A. After the photographic session, in fact I have told mum that he shut the door and the gate and locked them. So, I could not find any way to leave the place. I was locked in. That I have told my mother.

Q. And did you tell your father?

A. When I told mum, dad was present.

Q. When was it that you told your parents?

A. Came the 7th June, and these photographs in the newspaper. And then in the end my mother came to me and I could see that she had quite a few photographs, hard copies, in her hand. So, she asked me. She has been asking me and I was trying -- I was still trying, I was still thinking that I could withhold it from her because I thought these photographs were so very embarrassing. It was such a huge shame that you would never even want to think about it, not to mention talk about them or explain it to other people. You know what mum said to me? She said "Silly girl, if you don't talk, we are going to see more and more and more nude photos of you in tomorrow's and the day-after-tomorrow's newspapers, and it will go on forever."

So, mum's advice made me really think about it and, in the end, I thought I'd better come clean with the whole story.

Q. So, you told your parents on the 7th June that you had been forced by Mr. WONG to take these photos, to pose for these photos?

A. Yes.

Q. Yet, throughout these proceedings no one has ever suggested that you were forced to pose for these photos?

A. I agree.

Q. And even yesterday, when your mother was testifying, she said that she had been advised by Mrs. MA to go and find out whether you had been forced to pose for these photographs. Even then your mother never mentioned that you had told her that you had been forced?

A. That is right. My mum did not say that.

Q. Miss MAK, I put it to you that you are just making this up as you go along?

A. Well, I was my complete self when I was walking up to that photographic studio. I brought along costumes, and you know that I wasn't paid for posing so that photographs could be taken by Mr. WONG. I wasn't expecting that, as a result of these photos, anything substantial would come about. If you are accusing me of cooking up stories, telling lies, why should I do so now? And why am I -- what has made me stand through all these troubles so that I can come into a Court of law and tell a pack of lies? If I were to tell lies, I could just stick to the simple, straightforward story. And, if I were to tell you that I have refused, you just need think and you can see that there must be a reason behind my refusing. And, yet, in the end out came these semi-nude photos. Isn't it plain -- you know, isn't it just plain that you don't change your mind after the photographer has asked you once or twice more. If I had refused in the beginning, there must have happened something which is powerful enough to change my mind.

Q. Miss MAK, the fact is that you did not refuse, did you? And you are only today suddenly saying that you were forced to do it?

A. Because it is only now that I see that I have the chance to say it.

Q. Miss MAK, you have seen your father's lawyers, no doubt, on many occasions. You did not tell them and you did not tell them then?

A. I did. On the contrary.

Q. Now you say you told your father's lawyers as well?

A. I did. And I did. I told my father's lawyers all of it, such as the photographer shutting the door, locking the gate and the door, and then he tried to talk me into it. I said many times "No, I am not going to", and he said "Well, don't worry. Go ahead. I will take care. I know how to frame it" or he did it, and I said "No, I am too young. I am still at school." But he had shut the door. So, he said it many times and, in the end, I thought I just could not say "No".

So, I have told my father's lawyers all about it. But I would think that it would be for the lawyers to decide what to put in or what to put forward in the presentation of the case.

Q. Miss MAK, just about 5 or 10 minutes ago you were telling the Court that you had not told your father's lawyers.

MASTER O'DONNELL : To be fair, what she did say was, as I wrote it down, in fact she did tell her father's lawyers about it but did not tell them that the photographer had locked her in. That is what she specifically said. She is saying something very different now.

MR. JOHN YAN : Yes.

Q. Miss MAK, you are just making all this up as you go along, isn't it?

A. No. I am telling you every bit of the truth.

Q. It is quite plain, Miss MAK, that you have been lying, and I don't think I need press on with this any further."

6. The second extract is as follows :

"Q. So there were some photos taken at the second session when you were dressed?

A. Yes.

Q. So some time halfway through this session you started to pose in the nude or semi-nude?

A. Yes.

Q. Did Mr. WONG, according to you, lock the door as soon as you got there, or halfway through, or what?

A. Once after I stepped inside.

Q. Miss MAK, all these photos you posed for, you in fact posed for these photos in many different postures, didn't you?

A. Yes.

Q. Despite the fact that you were, according to your evidence, an unwilling party to this photo session, you were prepared to pose in all these different postures?

A. That was because he told me to. He gave all kinds of suggestions and talked me into putting up these poses and I was quite certain, almost entirely sure, that when the photographs came out they would show me bearing my breasts, but he would have me believe that nobody would see them. He would have me believe that he would be careful so that light would be thrown on to the private parts so that when the photographs came out that would be in shadow or in the shade.

Q. Did you believe him?

A. What else or what other options did I have if I were not to accept his words at face value?"

What does this evidence demonstrate?

7. As indicated earlier, what this court has to consider is whether this evidence demonstrates that the newspaper and the magazine would have a reasonable chance of success in their proposed appeal to this court. I have to say that I am wholly unpersuaded of that. Clearly, the daughter's experience of posing for these photographs caused the daughter some embarrassment and even distress. But, for my part, I cannot see any court holding, on this evidence, that the daughter was "forced" in any material sense into posing for the photographs in question. There is no evidence whatever of any overt act on the part of the photographer which could possibly be said to amount to coercion. The nearest one gets to this is the daughter's evidence that once she stepped inside the photographer's studio "he shut the door, locked it, shut the gate, locked it". But those are acts which procured security for the session; they are not acts which made her take off her clothing. It is obvious that she took off her clothing because she was persuaded by the photographer to do so. But that is not such coercion as could possibly justify a refusal by any court, on the grounds of public policy (which is the only ground asserted) from refusing to enforce the copyright in the photographs. I should add that it is a fact of life (perhaps embraced with more enthusiasm by the publishers of newspapers and magazines, and, sometimes, by their readers, than by the victims) that people are subjected to the attention of press photographers not only without their consent but often in face of their vehement opposition. The photographer's copyright in his photograph is not affected by the lack of consent of the victim to the taking of the photograph. It may be that, in this connection, the law requires reform; certainly the proponents of legislation to restrain infringements of privacy often so urge. But that is not a matter with which we are concerned. We are concerned with an argument that the court should, on public policy grounds, refuse to enforce the photographer's copyright in photographs such as were taken here. It is not suggested the photographs here were indecent or obscene or otherwise of a grossly immoral tendency; certainly, on public policy grounds, the law will not enforce copyright in photographs of that nature. But to suggest that copyright should be denied to a photographer simply on the ground that he has locked the room in which he takes photographs of his subject, however embarrassed the subject may be at the nature of the photographs, seems to me to be ludicrous. The daughter here was torn, no doubt, between remorse and temptation, and, like Lord Byron's Julia :

"A little still she strove, and much repented

And whispering 'I will ne'er consent' - consented."

Conclusion

8. I am therefore of the opinion that the proposed appeal, based as it is on public policy grounds, has no reasonable chance of success and that, accordingly, we ought to dismiss this application for an extension of time in which to lodge it. I should make it clear, for the sake of completeness, that had I been satisfied that the newspaper and the magazine had had a reasonable chance of persuading this court that there was material here to justify the assertion that the daughter really had been "forced" into posing for these photographs, I would have been in favour of granting the newspaper and the magazine the extension of time in which to appeal for which they have asked. I would accept the proposition that the court would, on public policy grounds, refuse to enforce copyright in any photograph to the taking of which the victim was really co-erced; and, had this been such a case, I would not have held the delay between 29 September 1995 (when the daughter's evidence was given) and 3 January 1996 (when the newspaper and the magazine applied to the single judge for an extension of time in which to appeal) against the newspaper and the magazine. But, for the reasons I have already given, I am satisfied that the proposed appeal would have no reasonable chance of success, and that therefore the present application, for an extension of time for appeal, made by the newspaper and the magazine ought to be refused. I would only add this, that the copyright cannot possibly be held, as the newspaper and the magazine seemed at one point to be disposed to contend, to be good in parts, like the curate's egg. It was suggested that it could be good as to future infringements, but bad as to past infringements. No authority was cited was cited for this astonishing proposition and it is, in my judgment, obviously incorrect.

Ching, J.A. :

9. I have had the advantage of reading in draft the judgments of Litton, V.P., and Godfrey, J.A. I am just persuaded that this application for an extension of time within which to appeal must be refused. My reason is that there is insufficient evidence of any duress or coercion. It may well be that the girl felt, in the circumstances, compelled to submit but that is not enough. It may be that although the photographer did not threaten her explicitly his acts and his attitude induced the feeling of compulsion but there is insufficient evidence of that.

Litton, V.-P.:

Introduction

10. The matter before us is unusual. The process in this court began with an application dated 3rd January 1996 for an extension of time for serving a notice of appeal relating to Leong J's order dated 13th April 1994. Although it comes to us in the form of an appeal against Liu JA's order of 23rd January 1996, refusing the application for extension of time, it is in fact a fresh application: see Order 59 Rule 14(12) of the Rules of the Supreme Court. What is sought is the exercise of our discretionary powers to grant an extension of time, to enable the defendants now to lodge a notice of appeal to set aside Leong J's order of 13th April 1994.

The defendants' grounds for the application

11. In support of their application for an extension of time, the defendants say, in effect, as follows: If Miss Mak was telling the truth on 29th September 1995 in the course of giving evidence before Master O'Donnell, it means that the photographs were taken by coercion on the part of the photographer Mr Wong; public policy would have prevented Mr Wong from recovering damages against the defendants for breach of any copyright which he might have had in those photographs; since the plaintiff derives his right to sue by assignment of copyright from Mr Wong, it follows that the plaintiff would have no right to claim damages against the defendants either.

12. Since the discretionary powers of this court are being invoked, it is necessary to look at the matter in the round, and to see what the consequences might be if we were to accede to the application. If the defendants succeed on the present application, they will lodge their notice of appeal seeking an order that Leong J's order of 13th April 1994 be set aside and that they be granted unconditional leave to defend the action. The ground of appeal will be this: Since Miss Mak has stated in the course of her evidence on 29th September 1995 that the photographs were taken by force or duress and this fact has been known to the plaintiff prior to the assignment of copyright in the photographs, and since the way the photographs were taken constitute "immoral acts", this deprives the photographer claiming copyright in those photographs of any protection in law. The defendants rely on public policy grounds for saying that the court should not lend its aid to enable an action to proceed based on an "immoral" act: All this can be gathered from the draft notice of appeal exhibited as "JJB-3" to the affidavit of Mr Bartlett made on 28th December 1995 in support of the application.

Prospect of success

13. What are the prospects of the defendants succeeding in overturning Leong J's order of 13th April 1994? As is clear from the material before the court, the defendants are not putting forward a positive case. It was their case, put through counsel in cross-examining Miss Mak, that Miss Mak was lying; that she had posed for the photographs quite willingly (as the photographs themselves, on their face, seem to suggest).

14. Miss Mak was a mere witness in the course of the inquiry. What she said was not binding on the plaintiff.

15. What did Miss Mak's evidence actually amount to? It is no more than this: that she was alone in the flat with the photographer when he locked the door and the gate; she felt uncomfortable about being photographed in the semi-nude and felt that she was being "forced": not an expression she herself used, but put in her mouth by counsel cross-examining. She made contradictory statements as to when she told her parents about the circumstances of the photographic session, and also equivocated as to whether she had told her father's lawyers about the incident.

16. There are, in the documents before the court, two statements taken from the photographer, one from each side. If he should testify in accordance with those statements, he will deny all suggestions of duress. He will say that he practised persuasion and nothing more, and that he too felt uncomfortable.

Public policy

17. If the defendants have any sort of defence to the plaintiff's claim for damages, it must be upon the basis of public policy: That copyright in a photograph cannot be acquired by the photographer taken through force and duress. No case has been cited to us which approaches such a situation. Glyn v. Weston Feature Film Co. [1921] Ch 261 does not help because there it was the material itself which was grossly immoral. Here there is no suggestion that the material - photographs of a young woman with bare breasts - is in any sense immoral. So it comes down to the circumstances under which the photographs were taken. Here, the court must proceed with caution. Many people make their living by photography, and some achieve fame in the process. Photographs are taken in a large variety of circumstances: circumstances which a court may find great difficulty in investigating, long after the event. Normally, the photographer is the "author" of the photograph and copyright belongs to him. To hold that he must be deprived of that right because of the circumstances under which the photograph was taken is not a proposition which can be lightly entertained.

18. Here, I do not think that the facts begin to establish a case of force or duress, sufficient to deprive the plaintiff of his rights. Mr Andrew Liao, QC says that all that the defendants seek at this stage is the opportunity to raise a defence to the plaintiff's claim: he does not need to go so far as to satisfy us that the defendants will necessarily win the action at the trial. The circumstances, says Mr Liao, plainly need investigation.

19. In my judgment there is nothing further to investigate. Miss Mak was cross-examined at great length and it is difficult to imagine that she could add any thing further to what she has already said; concerning an event which happened five-and-a-half years' ago, when she was 15 years old.

20. It matters not whether Miss Mak was, in the course of her testimony before the Master, "gilding the lily" in describing her feelings in the course of the photographic session. Her evidence does not amount to anything approaching acts or declarations on the part of Mr Wong constituting force or duress: and, in the absence of her evidence, there is nothing else for the defendants to rely on.

Merits of the case

21. In essence, what the defendants are doing is to try to turn the table on the plaintiff by the unexpected circumstance of Miss Mak's testimony. There is no merit in their case. It is not clear from the documents before us how they came to publish the photographs on 7th and 8th June 1993. They knew that they were publishing semi-nude photographs of a minor. Presumably, as responsible publishers, they made some investigation of the circumstances under which those photographs came to be taken before they published them. It hardly lies in their mouths to say that those photographs were taken under force and duress.

Conclusion

22. In my judgment, we should refuse the defendant's application: albeit for rather different reasons from those given by Liu JA.

23. The result is that the application for extension of time is refused. Pursuant to Order 42 r5B(6) we order that, unless within 14 days application is made to this court to vary this order, the costs of the plaintiff of the 2nd and 3rd defendants' applications to this court and to the single judge be taxed and paid by the 2nd and 3rd defendants to the plaintiff.

Representation:

Mr. Andrew Liao, Q.C. & Mr. John Yan (M/s. Carey & Lui) for 1st & 2nd Appellants/2nd & 3rd Defendants

Mr. Albert Yau (M/s. Fred Kan & Co.) for Respondent/Plaintiff