Lincoln International Ltd v. Eagleton Direct Exports Ltd

HCA005064/1981

Injunction; Infringement: Passing-off: Considerations in Hong Kong different from England.

Injunction: Rank Xerox Case: Applicability to Hong Kong distinguishable form England.

Infringement; Passing-off: Affidavits: Self-incrimination: Protection against.

Inter-pates injunction: Open Court of Chambers?

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Coram: The Honourable Mr. Justice Jackson-Lipkin in Court

Date of Judgment: 1st December, 1981 at 10.05 a.m.

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JUDGMENT

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1. This Action came before me in Chambers for certain orders set out in paragraphs 1, 2, 3, 4 and 5 of a Summons issued out of the Registry on the 19th of August of this year.

2. By a strange procedural quirk, secrecy surrounds all applications for injunctions in Hong Kong. They are all heard in Chambers, and, although many of them may affect the public and the public interest, they are still held, as it were, in secret. The same position pertained in England in the Queen's Bench Division; whereas, if there were a motion for an injunction in the Chancery Division, it was held in open Court. That secrecy has aroused a great deal of adverse comments recently in England from the Bar, from the Law Society and from legal correspondents and in the press. In Hong Kong much has been done to reduce the ill effects of secrecy by recent moves, initiated by the Chief Justice, for example, the publishing of names of all cases in Chambers, whereas before everything was concealed under a number. The procedure, however, is something that should be looked at again, because we do not have Divisions here, and there is absolutely no reason why inter-partes injunction proceedings should not be heard in open Court.

3. Be that as it may, the reason for my adjourning into open Court to give judgment in this case has nothing to do with the matters I have just mentioned. I mentioned them for general guidance, and I hope some note will be taken of them.

4. I have adjourned this Summons into open Court for judgment on paragraph 3 of the Summons, because certain points of very considerable general interest in this Colony arise, and I stress the words "in this Colony".

5. I do not need to go into the arguments presented to me at any length: I will confine myself to the solitary point on which I have adjourned into open Court. The reason for this is that, due to the Courtesy of the solicitors instructing Counsel in this matter, I have before me drafts of the Orders that they wish to make depending which way this judgment goes. These are Exhibit 1 and Exhibit 2, and it is apparent from a reading of those how the arguments have gone in this case.

6. Paragraph 3 of the Summons seeks an Order that the Defendant make and file an affidavit or affirmation and serve a copy on the Plaintiff's solicitors setting out the names and addresses of persons, firms or companies: From whom they have ordered; from whom they have been supplied with; to whom they have supplied; and from whom they have received orders for the goods alleged to be infringing of copyright and amounting to passing off.

7. As I say, I do not need to go into the facts of this matter. A point arose at the very early stage as to whether or not I am prohibited from making such an Order by the decision of the House of Lords in Rank Film Distributors ltd. & Ors. v. Video Information Centre ( A Firm) & Ors.⁽¹⁾

8. I do know that some Hong Kong Judges have made such Orders since the decision of the House of Lords in that case, but have coupled that with a direction to the applicants, generally the plaintiffs' solicitors, that they should warn the other side that they are not obliged to say anything that would incriminate them. That is an exercise in sophistry that I do not propose to indulge in, and I must now consider what I should do.

9. In the affirmation of Anissa Tang, which was affirmed on 24th of October, 1981, she invokes privilege against self-crimination in respect of paragraph 3.

10. In view of the way the arguments have proceeded, I will read her paragraph 7:

"In view of the fact that claims in respect of infringement of copyright have been made, I have been advised and verily believe that it is right and proper in any event for the 1st Defendant to claim privilege against any possibility of self-incrimination in respect of all matters relating to such claims and in the premises the 1st Defendant respectfully requests this Honourable Court to discharge the order made under paragraph 3 of the Order by the Honourable Mr. Commissioner Barnes on the 17th August 1981 and to refuse the prayer in paragraph 3 of the Summons herein."

11. As I observed in the course of argument, "The voice is Jacob's voice, but the hands are the hands of Esau" and a lot turns upon whether that voice is sounded in sufficiently clear terms to invoke the protection of the Rank case. I must now pass to the consideration of that and its origin.

12. Protection against self-incrimination goes back into the early part of the history of the law. It is so well established that I do not need to go through it today. So far as it is necessary to refer to certain cases, the first is Lamb v. Munster⁽²⁾ in which objection was taken to interrogatories in these terms:

"I decline to answer all the interrogatories upon the ground that my answer to them 'might' tend to criminate me".

That was held by the Divisional Court of the Queen's Bench to be sufficient answer. It matters not that that related to the possibility of prosecution for criminal libel: It matters not what the facts were: What is important is the principle that an answer such as that was held to be a sufficient response to a request for interrogatories.

13. The second case to which I wish to refer is that of Triplex Safety Glass Co., Ltd, v. Lancegaye Safety Glass (1934), Ltd. ⁽³⁾ at pp. 404/5. That was a case where interrogatories were administered. The persons to whom they were administered refused to answer on the ground that to the best of their knowledge, information, and belief, the answers would tend to criminate them. The Court of Appeal, consisting of Sir Wilfrid Greene, Master of the Rolls, Lord Justice du Parcq, and one other judge, held in an unanimous judgment, delivered by Lord Justice du Parcq, that the refusals to answer the interrogatories were justified and that neither a man nor a company could be compelled to answer a question directed to procuring his confession of a criminal act merely because it was unlikely he would be prosecuted.

14. That case found favour with the House of Lords in the Rank case to which I have referred. It found favour with the House of Lords in the Westinghouse case to which I will pass in one moment.

15. In Rio Tinto Zinc Corporation and Others and Westinghouse Electric Corporation⁽⁴⁾ question of privilege against self-incrimiation came before the House of Lords. I appreciate and take note of Mr. Riberio's point that this is a case dealing with letters rogatory, but there are certain passages in the speeches to which I must here refer.

16. At page 612 Lord Wilberforce, in upholding the plea, said this:

" I base that conclusion in part upon evidence which was before and considered by the High Court and the Court of Appeal and in part upon the proposition that the tendency to expose to a penalty would be increased if the documents in question were to be validated and connected with the R.T.Z. companies by sworn evidence, as opposed to being, as they are now, pieces of paper found in a file. The test of this proposition which was, in effect, and correctly applied by the Court of Appeal was that laid down in ..." -

the Triplex case - now there the Triplex case is being affirmed.

17. Lord Dilhorne in his speech said at page 627 at letter C; said

"It may be improbable that they" (proceedings) "will be taken, but nevertheless, if there is some risk of their being taken a real and appreciable risk - as distinct from a remote or insubstantial risk, then he should not be made to answer or to disclose the documents."

18. With these observations I respectfully agree.".

So there Lord Dilhorne is accepting and adopting the test of Lord Denning laid down in the Triplex case.

19. In the speech of Lord In the speech of Lord Praser of Tullybelton, at page 647, he said, at letter D: of Tullybelton, at page 647, he said, at letter D:

" Mr. Vinelott suggested that the Court of Appeal had applied the wrong test in judging whether production would tend to expose the companies to proceedings in that they had imposed too low an onus upon them. In my opinion that criticism was not justified. The test was stated in Triplex Safety Glass ..."

And there is a quotation then from the judgment of Lord Justice du Parcq at pages 403 - 4,

"Although the members of the Court of Appeal expressed themselves in various words they all purported to follow the decision in Triplex. The test is not a rigorous one. All that is necessary is that it should be reasonable to believe that production would "tend to expose" (not "would expose") the possessor of the documents to proceedings. I agree with the Court of Appeal that that test is satisfied in the present case.".

20. That was the state of the law before the House of Lords' recent decision in the Rank case, to which I now pass.

21. In so passing, I do stress that Lord Fraser of Tullybelton, who was also one of the Law Lords in the Rank case, said in express terms that the test is not a rigorous one. All that is necessary is "reasonable to believe the production would tend to expose".

22. The difficulty in this case, and the reason why I am giving this judgment in open Court, arises from two passages in the speeches in the Rank case.

23. At page 674, in the speech of Lord Wilnerforce, he said:

" However, it is only too clear (and I deliberately use the language of reluctance) that supply of the information and production of the documents sought would tend to expose the respondents to a charge of conspiracy to defraud. In the very nature of this activity, a number of persons are certain to be involved in it - in printing the master tapes, copying from the master tapes, seeking and accepting orders, and distributing the illicit copies. A charge of conspiracy to defraud, so far from being as it sometimes is, a contrived addition to other charges, is here an appropriate and exact description of what is being done. So far from it being contrived, fanciful, or imagined, it is the charge on which Mr. Dawson, who appears on the existing evidence to be closely connected with Mr. Lee and Ms. Gomberg, is to stand trial.".

24. At page 678, Lord Fraser of Tulybelton said this:

" But conspiracy to defraud is a different matter. It is a serious offence. The risk of those who deal in or manufacture illicit films being prosecuted for it is by no means remote or fanciful. Indeed the sixth respondent is now facing prosecution on that ground for the matters with which this appeal is concerned.".

25. I will return to that case later.

26. What Mr. Riberio says is this: Firstly, it must be a real and appreciable risk. It must not be fanciful, imagined, or remote. Secondly, he says; look at those two passages in the Rank case and you will see that the evidence there shewed that there was a very real risk. The Law Lords had pooh-phoohed, as it were, the idea of prosecution under the Copyright Act, and had been persuaded only because, on the evidence, there was in fact a prosecutior of Mr. Dawson and that something approaching that should be the test, for example, if there had been complaints made to the C.C.B. or the T.I.C.; if inquiries had been made by the C.C.B. or T.I.C.; if an associate had been the subject of inquiries; and so on. But he did accept it was not a question of mere formulae.

27. Now it is true in England that under the Copyright Act prosecutions are few and far between, rare and even petty.

28. The Copyright Act of course has been applied to Hong Kong by Order in Council: See The Copyright (Hong Kong) Orders 1972-1979.

29. Section 21 of the Act deals with penalties and summary proceedings in respect of dealings which infringe copyright, and provides for various penalties, one is a fine of forty shillings and two months imprisonment, the others are fine of fifty pounds and two months imprisonment. And it does seem, as Mr. Rogers urged on me, that not only are there very few prosecutions under that section, but even if there are, they are so petty as not to impose a very real or very substantial fear in the mind of any person who might be asked to make discovery.

30. He says that I should disregard section 21 of the Act and look at section 5 of the Copyright Ordinance, because we are living in Hong Kong and in Hong Kong things are different.

31. When I look at section 5, I see that the equivalent of section 21(7) provides for a fine of $1,000.00 and imprisonment for twelve months; and the equivalent of section 21(B), that is our s. 5(2), provides for a fine of $50,000.00 and imprisonment for two years.

32. Further he says, and it is accepted by Mr. Riberio, and both of them tell me that I may take judicial knowledge of the fact, that in Hong Kong the Commercial Crimes Bureau and the Trade, Industry and Customs Department take passing off and infringement very much more seriously than the authorities take them in England. Indeed, there are special units in Hong Kong for seeking out infringers and passers-off and for prosecuting them.

33. I do take notice of it. It is well-known in the courts of this Colony that the Government takes a very serious view of such offences, and must do because the livelihood of the Colony depends upon our being able to shed the old image of "empire made" and the old image of imitators. It follows, therefore, that there is a genuine risk in Hong Kong that people - and I say "people" advisedly - will be prosecuted for infringing or passing off.

34. Mr. Justice Leonard in LEE Shek-tang v. Queen⁽⁵⁾, an unreported judgment delivered on the 12th of June, 1979, talked about "flagrant copying of a kind that must be stopped".

35. So it is quite clear that the courts of this Colony, in applying the Rank case, must approach the problem differently. They must approach it on the basis that, because of our Ordinance, as opposed to the Act - and in that respect I refer to pages 674, 676, 678, 680 and 681 of the Rank case - because of our Ordinance, and because of our peculiar circumstances a real and appreciable risk does exist, and the offences can by no means be considered petty, beyond the purview of the authorities, or ones to which authorities are willing to turn a blind eye; and, until those in charge of Law Reform do as England has done, and legislate to overcome the difficulties, we must apply the Rank case in all its strictness.

36. That leads me to the last two points in this matter.

37. I can dispose of the first one quite shortly.

38. It was suggested that I can make certain orders, or extract certain undertakings, which would protect the defendant. In that respect reference is made to certain passages in the speech of Lord Fraser of Tullybelton in the Rank Case at the bottome of page 678 and the top of 679; and reference was also made to the practice I have mentioned before, of warning the person against whom the order is made that he need not answer. Reference was also made to the inability of this court to bind criminal courts and to the passage at the bottom of page 675 and top of 676 in the speech of Lord Wilberforce.

39. Yes, it is perfectly true that I can make certain orders or extract certain undertakings, (certain undertakings where they are offered), whereby the plaintiffs undertake not to make use of the information, not to lend their names to prosecutions not to assist in prosecutions and so on. If, however, the C.C.B. or T.I.C. wish to take actions, those under - takings will become meaningless. They could not survive against a subpoena from a criminal court, and nor could any order that I make in this civil case. Similarly, if any member of the plaintiff's staff or any of its directors were to obstruct officers of the Police Force in the course of their investigations, they themselves would be guilty of an offence. It would be quite wrong of me to put them in that position, because I would then be faced with having to commit them for contempt of my Order merely because they were obeying orders of another court, or following the law in relation to criminal proceedings.

40. So I come to the last point and it is this: Is the plea raised by Miss Anissa Tang sufficient in this case?

41. Mr. Riberio accepts that this is not a question of semantics or formulae. I entirely agree. To argue otherwise would be merely to play with words.

42. What does a person need to do to invoke a plea of privilege against incrimination?

43. In my judgment, the words used in her affirmation are sufficient. They invoke the right of protection against self-incrmination and the actual wording is not of importance. She has invoked the plea by saying, in effect, "I have found that there is a real and appreciable risk in Hong Kong." It is a real and appreciable risk in Hong Kong, and, if she has invoked the privilege, then there is a real and appreciable risk within the meaning of the extracts from the speeches and the judgments that I have cited.

44. It follows, therefore, that I am not prepared, in the circumstances, to make an Order in the terms of paragraph 3 of the Summons, or to extract any undertakings in relation to it.

45. It also follows that I am precluded from making an Order under paragraph 3 by the rationes decidendi in the Rank case and the Westinghouse case and the others to which I have referred.

46. That disposes of the only contentious matter, and I will now go back into Chambers to deal with the Orders that I should make.

Court adjourns into Chambers.

Representation:

Deacons for the Plaintiff.

Lo & Lo for the Defendant.

(1) [1981] 2 W.L.R. 668

(2) (1882) 10 Q.B.D. 110

(3) [1939] 2 K.B. 395

(4) [1978] A.C. 547

(5) (1979) Cr. App. 410 of 1979