Chow Wai Man, Vivian and Another v. Easy Finder Ltd.

HCA004042/1995

No. A4042 of 1995

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

__________

__________

Coram: the Hon Mr Justice Findlay

Dates of hearing: 25 and 26 July 1995

Date of handing down of judgment: 28 July 1995

____________

JUDGMENT

_________

Background

1. The defendant is the publisher of a magazine called "Easy Finder". It is published weekly and has a wide circulation in Hong Kong. In the issue of the magazine dated 27 April 1995, the defendant published an article, with Chinese text and photographs, concerning the first plaintiff, who is a singer and an actress. According to the English translation of the Chinese text, which Mr Wong accepts as sufficiently accurate for the purpose of the proceedings before me, the article describes, in some graphic detail, the computer readable images of photographs of the face of the first plaintiff attached, by means of computer technology, onto the nude or nearly nude bodies of other women. Copies of six of these images are reproduced in the magazine; one very prominently on the cover, and five others accompanying the text inside the publication. The article describes the purchase of these images on computer diskettes by a man, and how, after returning to his home, he put on a "show" for four or five of his friends on his computer.

2. I have been shown the photographs from which the face of the first plaintiff was taken to produce the images. It is conceded by the defendant that these were the photographs used. It is accepted by the defendant for the purpose of these proceedings that copyright subsisted in these photographs. It is also accepted that the first plaintiff was the owner of the copyright in one of these photographs, and the second plaintiff is the owner of the copyright in the others.

3. The plaintiffs obtained an interim injunction against the defendant on 27 April 1995, and commenced action the following day. By this action, the first plaintiff claims relief on the basis of libel, malicious falsehood and breach of copyright; the second plaintiff proceeds on the basis of copyright infringement alone. On 5 July 1995, the plaintiffs issued a summons claiming final judgment under Order 14 in respect of the copyright claims only. This summons is now before me.

Was There Substantial Reproduction?

4. If there was a substantial reproduction of the copyright material to produce the computer images and, consequently, the photographs in the defendant's magazine, it matters not that the defendant had not seen the original works or that it was unaware that there was copyright in them owned by the plaintiffs. Mr Wong argues, however, that there was no substantial reproduction of the copyright photographs. It is only, he says, that part reproducing the face of the first plaintiff that was taken from copyright photographs, and that part is protected only because of its collocation in the photograph; take away the collocation, there is no copyright protection. It is true that, although the first plaintiff's face, which is an attractive one, may be her fortune, as with the girl in the nursery rhyme, she does not have copyright in it. That artistic work was created outside this jurisdiction, and any copyright in it is not subject to any earthly law. But that does not mean that the plaintiffs do not have copyright in that part of the original photographs that reproduced her face if that part is substantial in relation to the creative process. Anyone looking at the original photographs can have no doubt, in my view, that they are very professional; the product of a skilled photographer. Of course, the photographer started with the advantage of having an attractive subject, but it is the face of the first plaintiff that is central to the photographs and it was his ability to capture a particular expression on that face that makes the photographs the original works of quality that they are. Two of the photographs, in particular, reproduce a wistful look that is most appropriate for the purpose for which they were used. Mr Wong says this is due solely to the skill of the first plaintiff as an actress. I do not accept this. The ability to produce the expression is that of the first plaintiff, but the skill, labour and judgment required to reproduce this look in an attractive photograph are those of the creator of the work. Accordingly, I hold that there has been a substantial reproduction of the works in which the copyright exists.

The Public Interest

5. Mr Wong also argues that, if the defendant did infringe the copyright, this was justified in the public interest because the article in the defendant's magazine disclosed a breach of the law. Assuming that such a defence exists and that it would be otherwise applicable in a case such as the one before me, it can, in my judgment, be used only when the infringement itself was so justified. It may well be that it was in the public interest that there should be a disclosure of the behaviour of the people who produced the computer images, but that disclosure did not necessarily involve the substantial reproduction of the copyright photographs. In other words, the public interest might have justified the disclosure of the conduct of producers of the images but not the disclosure of the images themselves. The defendant could easily have achieved its stated objective without infringing the copyright. It follows that I do not accept that there was any public interest that justifies the reproduction of the infringing material.

The Injunction

6. Finally, Mr Wong submits that, even if the defendant did infringe the plaintiff's copyright without justification, there is no basis in this case on which it can be said that an injunction is appropriate because there is no likelihood that the infringement will be repeated. At the very least, he argues, this is an issue that should go to trial. Mr Garland accepts that the infringement was probably "one-off". The defendant says that it has no intention of repeating the publication, and there is no reason to disbelieve this. In my view, in the circumstances of this case, it is exceedingly unlikely that the defendant will commit the infringement again. It would be very foolish to do so; such a step would aggravate damages greatly. Accordingly, in the exercise of my discretion, I decline to grant an injunction here.

The Order

7. There will be an order in terms of paragraphs 2, 3, 4 and 5 of the draft order, save that, by agreement, paragraph 3 (3) is to read - "an inquiry as to whether or not the plaintiffs are entitled to any additional damages, and, if so, the quantum;". Mr Wong suggests that it would be just and convenient if the inquiry into damages were to be conducted at, or immediately after, the trial in relation to the other claims. Mr Garland is prepared to go along with this as far as the first plaintiff is concerned, but he points out that the second plaintiff is concerned only with the claim on the basis of copyright. I order that the inquiries into damages and interest in relation to the first plaintiff be conducted at, or immediately after the trial of her other claims.

Representation:

Mr Peter Garland, QC, and Mr Osland Lam, instructed by Messrs Robert CK Tsui & Co, for the plaintiffs.

Mr Stewart KM Wong, instructed by Messrs Hau, Lau, Li and Yeung, for the defendant.