Chung Fat Engineering Ltd. v. Yung Chung t/a Kong Ngai Engineering Co. (A Firm)

HCA008037/1997

HCA 8037/97

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. A8037 OF 1997

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Coram: Deputy Judge Chu in chambers

Dates of Hearing: 3 Febraury 2000

Date of Ruling: 3 February 2000

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RULING

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1. At the close of the cross-examination of the first witness for the plaintiff, the plaintiff applied to re-re-amend its Statement of Claim. After hearing arguments, I dismissed the application in so far as it relates to the addition of a new paragraph 6A. The other proposed amendments to paragraph 14 and paragraph (5) of the prayer were allowed as they were not opposed by the defendant. I had given oral reasons for the refusal to amend and I now reduce them into writing.

2. The proposed re-re-amendment falls briefly into 2 parts. The first is to add a new paragraph 6A which reads as follows :

"In the further premises, the plaintiff is and at all material time since 1 July 1991 has been the owner of the copyright subsisting in original artistic works in respect of clothes drying stands as particularised by photos and catalogues in the Schedule 14 herto."

3. The other part of the proposed re-re-amendment is to substitute references to section 17(3) of the Copyright Act 1956 with references to section 108 of the Copyright Ordinance, cap. 528. This affects paragraph 14 and paragraph (5) of the prayer. By consent, this part of the proposed amendment is allowed. The Re-Re-Amended Statement of Claim is to be filed as soon as practicable, but service is dispensed with.

4. As to the addition of the new paragraph 6A, that is opposed to on 2 basis. The first is that the plea is bad in law. The second is that there is prejudice to the defendant which cannot be compensated by costs.

5. The decision whether to allow an amendment to pleading involves the exercise of discretion. The general rule is that application for amendment ought to be made as soon as possible. There is however power to allow late amendment and even when it is as late as during the trial provided that the amendment is necessary to do justice between the parties, is useful for defining the issues and resolving the disputes between the parties and will not cause irreparable damages or prejudice to the other party.

6. There is no doubt that the present application is made very late in the day, being made in the middle of the re-examination of the principal witness for the plaintiff. The questions I have to decide are whether the proposed amendment serves any useful purpose and whether the defendant will be irreparably prejudiced by it.

7. Clearly, the new paragraph seeks to widen the basis and scope of the plaintiff's claim for breach of copyright. The plaintiff is seeking to claim that the infringement goes beyond the 12 Schedules of drawings originally pleaded in the Statement of Claim. No reason or explanation has been given for this late attempt to alter and enlarge the scope of the plaintiff's action. It is apparent from the Defence filed as early as in 1997 that the defendant contests that his products are 3-dimensional reproductions of the 12 Schedules or substantial parts of them. If the plaintiff wishes to base its claim not only on the 12 Schedules, but also on other drawings which allegedly were sold by the defendant to it under the 1991 agreement, there is ample opportunity for the plaintiff to do so and the plaintiff should not have waited until this late stage.

8. Furthermore, the proposed amendment is, in my view, bound to fail and is therefore futile. It is unclear even at the close of Mr. Lau's submission in reply as to what are the works relied upon by the plaintiff under this proposed amendment. On an initial reading of the proposed amendment, I was led to think that the works relied upon were the photos and catalogues in the proposed Schedule 14. It was then discovered that the photos were only taken yesterday in the course of the trial. It will not be possible for the plaintiff to own the copyright subsisting it them since 1991. Mr Lau then clarified the matter by submitting that the works relied upon were "the copyright in the products". As Mr Chan submitted, that cannot be right in view of the definitions in sections 2 and 5 of the Copyright Ordinance, cap. 528. In Mr Lau's submission in reply, it was said that the works relied upon were the original artistic works in some drawings which the plaintiff believed to be in existence. Leaving aside the question as to the basis for such belief, which must be speculative, it still begs the question of what are the drawings in question. Without identifying the drawings or works to be introduced by the proposed amendment, how can the plaintiff prove infringement ? Similarly, how can the defendant know what case to meet ?

9. Any late amendment will result in prejudice to the opposing party. In this case, the plaintiff is introducing a new foundation for its claim. If the amendment is to be allowed, it must be on the basis that the plaintiff pays the defendant all the wasted costs incurred up to the amendment. Even then, it will not be adequate to compensate the defendant. He has been led all the way through this action on the basis that the claim is based on the 12 Schedules, only to be told at the 11th hour that the plaintiff's claim is in fact on a wider basis. The injustice and prejudice is beyond compensation by way of an adjournment or payment of costs.

10. For the above reasons, the plaintiff's application to re-re-amend the Statement of Claim by adding a new paragraph 6A is refused.

Representation:

Mr E. Lau instructed by Messrs. Lau, Kwong & Hung for the plaintiff.

Mr K. Chan instructed by Messrs. K.P. Lam for the defendant.