Format Limited v. Urban Council

Case No.HCA 3044/1984

Court

High Court CFI

Date—

Judge—

Case Document

100%Judiciary

HCA003044/1984

1984, No. 3044

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

____________

BETWEEN

	FORMAT LIMITED	Plaintiff
	and
	URBAN COUNCIL	Defendant
	_____________

Coram: Hon. Liu, J. in Chambers

Date of Hearing: 13th December 1985

Date of Delivery of Judgment: 13th December 1985

___________

JUDGMENT

___________

1. Part of this action involves copyright. On the assumption that the copyright in question subsists in the relevant works or drawings, the defence is, inter alia, that the defendant enjoys its proprietorship. That assertion of the defendant is made in paragraph 8 of the Defence which reads as follows: -

Further or in the alternative, if, which is denied, copyright subsists in the set works or drawings of the Plaintiff, the Defendant is the owner of any such copyright which is acquired by the Defendant under the said agreement between the parties or otherwise."

2. A request for Further and Better Particulars has been made and a reply sent. The present controversy stems from the Particulars furnished pursuant to that request for the last two words in paragraph 8 of the Defence, i. e. "or otherwise". It is perhaps not impertinent to have the specific request and the relevant Further and Better Particulars so furnished set out in full. The request was: -

"Of the words "or otherwise", specifying precisely each fact and matter which will be relied upon in support of the allegation that the defendant acquired ownership of the copyright, the subject matter of this action."

To that, the reply was: -

"A number of the Defendant's publications showing the Defendant's Bauhinia symbol were supplied to the Plaintiff to assist the Plaintiff in its designing work under the agreement as referred to in its Statement of Claim. The Defendant also gave instructions and suggestions to the Plaintiff in the course of the said designing work. It is clear from all these discussions and the surrounding circumstances that the 'Bauhinia' symbol and the copyright therein with or without the slight modifications, if any, made by the Plaintiff, would remain the property of the Defendant."

3. With these above Further and Better Particulars, the plaintiff is dissatisfied. On the 17th of October, the plaintiff's solicitors wrote to the Legal Department acting for the defendant in the following terms: -

"	(1)	Of the allegations that 'A number of the Defendant's publications showing the Defendant's Bauhinia symbol were supplied to the Plaintiff to assist the Plaintiff in its designing work under the agreement' specifying precisely: -
		(a)	Each of the Defendant's publication alleged to be supplied to the Plaintiff and whatever possible, furnish a copy of the same to the Plaintiff solicitors;
		(b)	The date on which each of the alleged Defendant's publication (sic) was supplied to the plaintiff;
		(c)	To whom and by whom each of the alleged Defendant's publication (sic) was supplied; and
		(d)	Whether each of the said Defendant's publication (sic) specified in (a) hereinabove was supplied at the request of the Plaintiff, and if so, when the request was made and whether the request was made orally or in writing, and if in writing, specifying precisely the document, if orally, specifying precisely the parties present and what was said on the said occasion."
"	(2)	Of the allegation that "the Defendant also gave instructions and suggestions to the Plaintiff in the course of the said designing work", specifying precisely: -
		(a)	The instructions alleged to be given to the Plaintiff;
		(b)	The date on which the alleged instructions was (sic) given to the Plaintiff;
		(c)	By whom and to whom the alleged instructions was (sic) given;
		(d)	Whether the alleged instructions was (sic) given orally or in writing, if in writing, specifying preciselythe document, if orally, specifying precisely the parties present;
		(e)	The suggestions alleged to be given to the Plaintiff;
		(f)	The date on which the alleged suggestions were given to the Plaintiff;
		(g)	By whom and to whom the alleged suggestions were given; and
		(h)	Whether the alleged suggestions were given orally or in writing, if in writing, specifying precisely the document, if orally, specifying precisely the parties present."
"	(3)	Of the words 'surrounding circumstances', specifying precisely each circumstance which will be relied upon in support of the allegation that the 'Bauhinja' symbol and the copyright therein with or without the slight modifications, if any, made by the Plaintiff, would remain the property of the Defendant."

4. To this letter of the plaintiff's solicitors, the defendant did not respond favourably. The matter finally came before the learned Master on the 21st of November, and it was held that the defendant had sufficiently complied with the plaintiff's request. From that decision of the Master, the plaintiff now appeals.

5. Right from the inception of the appeal, Mr. Xavier, Counsel for the plaintiff, wasted no time in conceding that paragraph 1(d) in the letter dated the 17th of October from those instructing him was insupportable. Mr. Xavier was equally ready to accept as being likewise unsustainable, the last part of paragraph 2(d) and 2(h) seeking a disclosure of the identity of "the parties present".

6. It would be more convenient for me to have the matters dealt with in the order as they are put in the said letter of the 17th October:

1(a) It was strenuously contended by Mr. Hui on behalf of the defendant that what needed to be spedified and particularized was the primary fact outlining the nature of the defence but not the mode in which it was sought to be established. Mr. Hui relied heavily on Duke & Sons v. Wisden & Co., 77 T. L. 67. Mr. Hui was fair enough to draw my attention to that portion of the judgment which reiterated the necessity for the supply of particulars as to dates. In Williams v. Wilcox 8 Ad. & E. 315, as long ago as 1838, the Lord Chief Justice, Lord Denman reminded the profession of the "elementary rule in pleading, that, when a state of facts is relied upon, it is enough to allege it simply, without setting out the subordinate facts which are the means of producing it, or the evidence sustaining the allegation." The question then in issue was whether a plea by way of justification of the premises being a highway, a plea to a claim in trepans, was sufficient. The pleader was spared from particularizing how the property in fact became a highway. The observation of the learned Chief Justice is true today after 147 years. If the defendant's allegation in paragraph (1) were not "A number of the Defendant's publications" but "All the Defendants' publications", the cardinal rule reasserted in Williams v. Wilcox, might apply. It is undeniable that the defendant could well possess a great variety of publications. Without identifying the alleged publications, it falls short of an assertaion of fact. It is either an incomplete assertion of a fact or perhaps better described as merely an outline of a course of action. In my view, it is necessary for the defendant to identify the publications in question so as to let the plaintiff knm what case it has to meet at the trial. The supply of these particulars on the Further and Better Particulars already provided by the defendant would not be tantamount to a revelation of subordinate facts or evidence. The last part of (1)(a) in the said letter dated 17th October also contains a request for copies to be furnished "whenever possible".That request cannot now be justified. Inspection of documents has to be postaponed until mutual discovery. Mr. Xavier was not pressing for their imminent production.

I turn next to paragraph (1)(b). Mr. Hui found it difficult to resist the particulars of dates by reason of the decision in Duke v. Wisden, but counsel invited the Court to infer from the second sentence of the Further and Better Particulars already given the time duration within which the material publications in this case were allegedly supplied. The second sentence, I repeat, reads as follows: -

"The defendant also gave instructions and suggestions to the plaintiff in the course of the said designing work".

Consequently, Mr. Hui contended that at least the plaintiff had been put on notice that the publications were shown before the completion of the plaintiff's design. Unless the defendant is unable to supply a precise or approximate date, an oblique reference to a period is, in my view, insufficient. The Plaintiff is entitled to know the time or times at which the defendant's publications were so allegedly supplied. At least, the plaintiff ought to be told what date the defendant would regard as the plaintiff's design completion date. Personal knowledge of a party would not excuse his opponent from the necessity of pleading his own case.

1(c) Mr. Hui relied on Duke v. Wisden again, but Mr. Xavier contended that that decision was distinguishable if only because identity of the parties was there irrelvant. Mr. Xavier submitted that it was of vital importance in this case for the plaintiff to be forewarned as to the identity of the personality by whom the publications were allegedly supplied, otherwise, so counsel explained, the plaintiff would be prevented from enquiring as to whether the personality involved had due authority to represent and bind the defendant. If in fact, the person who allegedly supplied the publications to the plaintiff had no proper authority to act on behalf of the defendant, the defendant's assertion would simply fail. Moreover, it is a matter of evidence to which the plaintiff is not, in my view, entitled to receive in advance. Mr. Xavier's contention was not presumably made with a view to seeking also particulars of the personality on the receiving end on behalf of the plaintiff. If counsel had so intended, I would have refused it for the same reasons.

Paragraph 1(d) has been conceded and I need to say no more.

Turning to paragraph (2), I should begin with 2(e). Mr. Hui suggested that the mere mention of instructions and suggestions in the Further and Better Particulars was adequate and that any further demand from the plaintiff would be, in substance, a request for subordinate facts and evidence. From the existing Further and Better Particulars, what immediately leaps to mind is: What instructions? What suggestions is the defendant referring to?" The tenor of these Further and Better Particulars leaves a reader in no doubt that the nature of the alleged instructions and suggestions is a material criterion affecting the finished product of the plaintiff or the manner in which the work was designed. That rmst be a relevant fact which should be pleaded. In my view, particulars ought to be further given on this aspect by the defendant.

Paragraph 2(b) and 2(f): My decision on those two paragraphs is to follow that given for paragraph 1(b). Counsel further argued that in the case of these alleged instructions and suggestions, it would go beyond inference or implication as the defendant had specifically averred that these instructions and suggestions were in fact given in the course of the said designing work. Counsel's submission did not, in my view, take the matter any further.

Paragraph 2(c) and 2(g): These again, I need say nothing more than adopt my reasoning given in support of my decision in relation to paragraph 1(c).

Paragraph 2(d) and 2(h): The end portion in each of them had been conceded by Mr. Xavier as insupportable. Mr. Hui suggested that the remainder was but an extention of paragraph 2(a) and paragraph 2(e). They certainly are part and parcel of the other two preceding paragraphs. The former relate to contents, and these relate to form. These two latter paragraphs raise a classical and legitimate request for the form of these alleged instructions and suggestions. In my view, they should be allowed.

7. Lastly, as to the words "surrounding circumstances", Mr. Hui informed the Court that that term meant "in the abovementioned circumstances". Mr. Xavier accepted counsel's statement, so did I. But I think Mr. Xavier is entitled to have the defendant reduce its allegation into writing so that it may be bound. It is one matter to offer an explanation for words pleaded. It is quite another in having that explanation put down in the pleading.

8. In conclusion, the defendant must further supply particulars in line with this my judgment. The appeal is therefore allowed to the extent delineated in my judgment with 4/5ths of the costs of this appeal and also 4/5ths of the costs before the learned Master for the plaintiff against the defendant.

(B. Liu)

Judge of the High Court

Representation:

Mr. A. Xavier instructed by M/S Stevenson Wong & Co. for the Plaintiff

Mr. D. Hui, Crown Counsel for the Defendant