Lee Shek-tang v. The Queen

CACC000410/1979

-----------------

Coram: Leonard, J. in Court

Date of Judgment: 12 June 1979

-----------------

JUDGMENT

-----------------

1. I allowed these appeals against conviction and promised to give reasons. There were convictions on two charges:

Both charges were brought under section 5(1) of the Copyright Ordinance (Cap. 39). The work in which copyright subsists is not specified in the charges and there was no application for further and better particulars.

2. A New Zealand firm Tullen Industries Ltd. complained to the Trade Industry and Customs Department that Hung Sang Metal Plastic Factory was infringing its copyright of (according to the agreed evidence of Benson YEUNG Man-pun of that department) "its product 'Snips'" a scissor type hand tool. In consequence members of that department raided the premises of the factory on 6th March 1978 and there met the appellant. They found and seized 2,980 pairs of shears and two set of moulds one used for making blades and one used for making their handles. The appellant admitted that 2½ years before he bought a pair of shears from a local shop, used it to make the moulds from which he manufactured the shears in question. He had indeed been doing so since 1975.

3. A Mr. Hough, the managing director of Tullen Industries Inc. of Auckland N.Z. gave evidence to the effect that his company manufactured and sold a variety of scissors. His evidence was to the effect that a Mr. Newman Alfred Lock designed the product of Tullen which had been copied. Mr. Lock was a design engineer employed by Tullen Industries Inc. commencing from April or May 1973. He was a British citizen under a contract of service. Mr. Hough produced what was referred to as the "final product drawing" prepared by Mr. Lock and it was apparent that this was the document in which it was claimed copyright subsisted. It was not registered in New Zealand or elsewhere as a design. From that drawing 11 or 12 pressed tool drawings were prepared and in July 1973 a shipment of 40,000 of the articles in question were sent to Tilbury. Samples of the same type as those sent to Tilbury were in evidence. One of the articles seized from the appellant was distinguished by Mr. Hough from those made by his company in that its blades had not been hardened it being the special feature of the Tullen Article that a hardening process had been applied to the blades to enable them to fit together tightly so as to be capable of cutting steel although themselves blunt. To assist in this by giving reverse convexity and to give rigidity to the blades of the scissors there was on each a raised "rib" of an unusual shape and varying breadth running in part parallel to the cutting side of the blade and angled to do so where the blade curved to meet its handle. As might be expected the blades crossed one over the other and were held in place by a rivet, again of hardened steel. Below the rivet the blades had shafts to fit into plastic handles but the blades were so constructed as to hold in place a barrel shaped spring just above the shafts. The spring fitting into a "W" shape which was part of each unit or blade. This unit may perhaps be best described as a single piece of steel consisting of a blade which converged to a blunt point from a wide, curved, roughly circular base; on the blade portion was the rib which I have described; on the circular base was the rivet for the purpose of holding the two blades together; immediately behind the rivet were the indentations to hold the spring followed by the shaft for the handle.

4. The document in which it was claimed copyright subsisted I found to be a most complicated one, described in evidence by Mr. Hough as "a very detailed one". The difficulty I found in understanding it was not lessened by the fact that diagonally across it was very heavily pencilled the notation "Redrawn on A0 Size SHT #S3-101 AT - 1SS 'H'". My difficulty was not lessened by certain notes on the drawing one set on the lower left indicating that it had been drawn and checked by Mr. Lock for Tullen Industries on 12th June 1973 and was of a "blade #3 prior to cropping cutting edge and final form" and stating "the blade is shown prior to bending of cutting portion and also prior to cropping of cutting edge". On the upper right under the word "issue" were indications of alterations to the drawing, most of which were initialled by Mr. Lock, on dates varying between 24th August 1973 and 17th September 1974. The drawing as distinct from the notations I should have found quite impossible to begin to understand without assistance. With the assistance of Crown counsel I was able to discern a shape corresponding to the shape of the Tullen blade on articles of the type sent to Tilbury and corresponding to the shape of the blades on the shears seized from the defendant. Without that assistance I should have been unable to discern even this. Even with such assistance I am quite unable to say from a careful study of the plan that the blades of the various shears (including both the "Tullen" article and the shears seized from the appellant) in evidence were a reproduction of that drawing as it may have been in July 1973 when the product was first marketed or indeed at any time. As I have said the plan was complicated and, in addition to the shape discerned with the assistance of Crown counsel there were on it many curves, some eighty straight lines, over 50 sets of numbers some of which were qualified by the addition of the letters "rad" which I took to mean radii. There are also reference to "sections" to "blending out" and "blending" and to "embossing". In indicating the bewilderment I felt and, after a re-examination of the plan, still feel, I should acknowledge that I suffer from an "blind spot". I am not only not "expert in relation to objects" such as shears and plans for their construction but also suffer from an inability to appreciate unaided all engineering plans and indeed almost all plans other than maps. It will become apparent at a later stage in these reasons why I have dealt at such length on this plan and my personal reaction to it.

5. It was an artistic work within sections 3 and 48 of the Copyright Act. The learned magistrate found that it was original (this finding is also challenged). The learned magistrate found that the drawing was published in July 1973 "upon the shipment of examples made from it" to Tilbury. This finding cannot be entirely accurate if the drawing was altered in August and September 1973 as appears from the face of it - no point was raised as to this and I accept that the plan in its essentials was then so published. At the time of publication Mr. Lock was a British subject. Copyright, then, subsisted in it if it was original. Having made these findings the learned magistrate went on to find that on 6th March 1978 the defendant had in his possession 2,980 pairs of shears of "identical design". He does not say with what they were identical. I consider he must have meant that they were identical with the genuine Tullen shears the subject of the shipment to Tilbury. I say this because they could not have been identical with the plan which was for blades only, and second because when discussing the question of originality he compares the Tullen product with those seized from the appellant and does not compare what is on the plan with those seized, although he does refer to the Tullen products as the "product from the plan".

6. There was evidence from which he could find that the Tullen product was from the plan because the undisputed evidence was that they were made from it. Other questions arise - was the Tullen product "a reproduction" of the plan and were the appellant's products "reproductions". Certainly one set of moulds was not i.e. those relating to the handles. The plan is for blades only. The Copyright Ordinance under which the appellant was charged has as its object "to modify the Copyright Act 1956 as amended by the Design Copyright Act 1968 in its application to Hong Kong". and to make further provision with respect to copyright law in Hong Kong". Section 5 of the Ordinance provides:

"Without prejudice to section 21 of the Act (i.e. the Copyright Act 1956 as amended by the Design Copyright Act 1968), any person who for the purposes of trade or business has in his possession any infringing copy of a work or other subject matter in which copyright subsists under the Act or this Ordinance shall, unless he proves to the satisfaction of the Court that he did not know and that he had no reason to believe that it was an infringing copy of any such work or other subject matter, be guilty of an offence."

Successfully to prosecute under this section therefore it is for the Crown to prove of any copy found in the possession of a putative offender that

The words "under this Ordinance" must, so far as I can see refer to section 9 of the Ordinance which reads:

shall, if it complies with subsection (3), be admitted without further proof in any proceedings under the Act or this Ordinance.

There was no such affidavit before the learned magistrate and it was therefore for the Crown to prove that the 2,980 shears seized were infringing copies of the drawing and that copyright subsisted in the drawing. The drawing being an artistic work by definition (sections 48 and 3 of the Act) it is subject to the general exceptions from protection of artistic works contained in section 9 of the 1956 Act. This section was not drawn to the attention of the learned magistrate. Section 9(8) reads:

"The making of an object which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that descriptions, to be a reproduction of the artistic work."

Pedantically speaking a drawing must be said to exist in three dimensions but this subsection must necessarily apply to drawings. This is to be deduced from the Act generally as distinct from the subsection. I say this because under section 3(5) of the Act the acts restricted by the copyright in an artistic work are (a) reproducing inter alia the work in any material form. "Reproduction" is defined in the case of an "artistic work" as including "a version produced by converting the work into a three-dimensional form, or if it is in three dimensions, by converting it into a two dimensional form". By section 3(1) what is defined as artistic work must have solidity.

7. In any event section 9(8) has been held to apply to drawings (or plans which by definition are drawings) on a number of occasions. In Dorling v. Honnor Marine Ltd.⁽¹⁾ boat plans were involved, the defendant having published photographs not of the plaintiff's plans but of articles made from the plaintiff's plans. The defendants sought to rely on what Danckwerts L.J. referred to as the "extraordinary provision in section 9(8)". He observed:

"It may be that the section was intended to prevent claims of infringement except in obvious cases. But the section presents the court with a very difficult, if not impossible, task. The Courts are well used to matters depending on the evidence of experts, whose opinion can thus be readily obtained, even if they are not often in agreement. But how is the impact of the appearance of an object on a non-expert (perhaps 'the man on the Clapham bus') to be ascertained?"

There the trial judge

"who said he knew nothing whatever about boats or plans of boats, appears to have considered that he was, therefore, a qualified non-expert for the purposes of s.9(8)."

held

"that some of the parts - sufficient together to constitute a substantial part of the whole boat - would have appeared to a non-expert, who did not know that they were in fact based on the plans to be reproductions of the corresponding drawings on the plans .." (my emphasis)

Danckwerts L.J. while tending to disqualify himself as a non-expert but applying in mind to the problem as best he could, agreed. In the result s.9(8) afforded no defence.

8. In I.M.I. Developments Ltd. v. F.C. Harrison Ltd.⁽²⁾ it was argued that because no evidence was filed on the point it was impossible for the court to come to a conclusion on whether the defendant's water taps (admittedly copies of the plaintiff's water taps) would or would not appear to persons who were not experts in relation to objects of that description to be a reproduction of the drawing. It was held that evidence was not necessarily required and that from looking at the drawings the body of the defendant's tap (if not the cross-top of it) was a prima facie infringement of the plaintiff's drawings. Whitford J. observed at page 301:

The difficulties presented by this particular subsection have been dealt with in judgments delivered in the case of Dorling v. Honnor .... Counsel for the defendants .. suggested that in the absence of any ... evidence, it was in substance impossible for the court to come to a conclusion one way or the other."

This argument he rejected and he too tended to disqualify himself as a non-expert but

"setting aside all such experience as I may have in that particular regard, I am satisfied from looking at the drawings that at least the body of the tap .... should be held to be prima facie an infringement .... I am not satisfied that the cross top or, as it is referred to in the drawings the hand wheel ... is prima facie an infringement ..."

In Merchant Adventurers Ltd. v. M. Grew & Co. Ltd.⁽³⁾ Graham J. having referred to section 9(8) as an extraordinary provision agreed that the upshot was that the question remains one of fact

"and the court must do the best it can to put itself into the position of a non-expert ..."

He disposed of an argument that no sectional drawings could ever be infringed by a three dimensional object constructed from those sections by saying that the matter was one of degree

"many drawings whether sectioned or not are so simple that any reasonably intelligent person can visualize what they represent in three dimensional form."

In Temple Instruments Ltd. v. Hollies Heels Ltd.⁽⁴⁾ he again commented on the difficulties in which the court was placed by the section

"particularly in the absence of evidence as to what the non-expert would think."

In Sifam v. Sanganio Weston Ltd.⁽⁵⁾ reported in the same volume he repeated the same observations but did not

This observation is indicative of the benefits flowing from specialization. To Graham J. engaged as he so constantly is with commercial copyright and with patent law, familiarity with engineering and similar drawings must come naturally. I find the observation not a little embarrassing but I am heartened by the submission made by Mr. Julian Jeffs Q.C. to Walton J. in E. Gomme Ltd. v. Relaxeteze Upholstery Ltd.⁽⁶⁾ that the

"genesis of this provision lies in the difficulty of understanding and interpreting engineering drawings." (see page 389)

In Solar Thomson Engineering Co. Ltd. & Another v. Barton⁽⁷⁾ the circumstances were remarkably similar to those in the present case although, of course, that, like the other cases I have cited, was a civil case. Drawings were not used by the maker of the offending article. Buckley L.J. said at page 558

9. Here, too, we had a reconstruction of a three dimensional reproduction of the drawing - the logic of these observations is inescapably applicable to the facts of the present case. This however is a criminal case and the word "exempted" seems to me to be inappropriate to it. The onus of proving infringement is on the Crown. The subsection contains three negatives but this does not relieve the Crown from the duty of proving its case - of proving in other words that the subsection does not afford relief to the appellant.

10. The defendant does not have to prove this as he would, for example, have to prove the existence of a licence.

11. The result of Buckley L.J.'s reasoning is that proof of reproduction of a three dimensional reproduction of a drawing is not enough. That need not be taken to infringe indeed it "shall not be taken to infringe if the object would not appear" to the inexpert "to be a reproduction of the artistic work".

12. What then is the position? This question was not considered by the learned magistrate. Indeed I am satisfied from my perusal of the record that section 9(8) was in no one's mind in the court below. No direct comparison was made by the learned magistrate between the drawing and the shears made by the appellant. For my part, I am too highly qualified as a non-expert to do it justice but doing the best I can and using such assistance as counsel has given me in explanation of the drawing I am not satisfied that a layman "having some faimilarity with engineering and similar drawings" and not a "particularly stupid or ill-informed person" would regard the defendant's shears as a reproduction of the drawing exhibited in this case. I allowed the appeal on this ground.

13. There was a further ground of appeal namely that originality in the drawing itself had not been proved. In view of what I have said on the first ground of appeal it is unnecessary for me to decide this point.

14. I would finally remark that I have been reluctant to come to the decision to which I have come. This was flagrant copying of a kind that must be stopped. I am relieved that my decision need not stand in the way of future prosecutions. Section 9 of our Copyright Ordinance is there to be used in appropriate cases.

Representation:

Mr. Anthony Rogers (Lau, Wong & Chan) for appellant.

Mrs. P.J.E. Jewkes, C.C. for Crown/respondent.

(1) (1964) 1 All E.R. 241.

(2) (1970) R.P.C. 299.

(3) (1973) R.P.C. 2.

(4) (1973) R.P.C. 15.

(5) (1973) R.P.C. 899.

(6) (1976) R.P.C. 377.

(7) (1977) R.P.C. 537.