Konami Kabushiki Kaisha (Konami Corporation) and Another v. Info Power Ltd

DCCJ 2753/2006

IN THE DISTRICT COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

CIVIL ACTION NO. 2753 OF 2006

BETWEEN

Coram  :  Her Honour Judge Yuen in Chambers

Date of Hearing  : 15 September 2006

Date of Decision  :  15 September 2006

Date of handing down Reasons for Decision :  11 October 2006 

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REASONS FOR DECISION

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1.The plaintiffs prayed for summary judgment for injunction and damages to be assessed against the defendant for breach of copyright and/or for acts of passing off. 

2.The 1^st plaintiff is the manufacturer and publisher of video games and video games strategy guidebooks. Two of the games published by the 1^st plaintiff were ‘World Soccer Winning Eleven 9’ and ‘World Soccer Winning Eleven 10’ (hereinafter collectively called “the Video Soccer Games”).  In the plaintiffs’ pleading the plaintiffs contended the Video Soccer Games in question are artistic works produced by Japanese authors, the copyright of which belongs to the 1^st plaintiff.

3.The defendant was the publisher of video game review magazines which provide information on video games sold in the market.

4.In the plaintiffs’ averments, between the months of February 2006 and May 2006, the defendant infringed the 1^st plaintiff’s copyright in the Video Soccer Games by publishing in volumes 361, 362, 364 and 376 of the defendant’s complimentary magazine titled “Games Station” the following materials:-

(i)    articles in respect of the strategy guide of the Video Soccer Games; and

(ii)    images identical or substantially similar to the ones contained in the Video Soccer Games.

5.It was the plaintiffs’ case that the contents of the defendant’s publications in the “Games Station” magazines were calculated to deceive, to confuse and to lead members of the public into believing the strategy guides contained in the defendant’s “Games Station” magazine were the strategy guides published by the 1^st plaintiff.

6.The plaintiffs seek an order from Court to restrain the defendant from infringing the 1^st plaintiff’s copyright in the Video Soccer Games; from passing off the 1^st plaintiff’s strategy guides of the Video Soccer Games; to deliver all infringing articles and for damages to be assessed.

7.The 1^st plaintiff’s strategy guide as opposed to the Video Soccer Games did not come into existence until July this year, some 2 months after the publication of volume 376 of the defendant’s magazine “Games Station” in May 2006.  The strategy guide published by the 1^st plaintiff has never been exhibited in any of the affirmations in the present application.  The court is left in the dark about the actual contents in the published strategy guide of the 1^st plaintiff.

8.There is simply no material to indicate the articles published by the defendant in its “Games Station” magazine infringed the copyright of the plaintiffs’ strategy guide of the Video Soccer Games.

9.The 2^nd limb of infringement relied upon by the 1^st plaintiff was the defendant importation and use of the graphical images contained in the Video Soccer Games.

10.The plaintiffs provided this court with volume 361, 362, 364, 376 and 377 of the defendant “Game Station” magazines for the articles published by the defendant to be read in context.

11.On the aspect of importation of graphical images, the defendant accepts copyright subsisted in the artistic works contained in the video game software.  The defendant also agrees that it has used some of the graphical images contained in the video game in his magazine.  According to the defendant such graphical images were imported into the defendant’s magazine for the purposes of giving report, review and criticism of the Video Soccer Games.  The use of such graphical images does not constitute acts of infringement.

12.According to the defendant, it never intends to pass off the 1^st plaintiff’s trade name as the 1^st plaintiff’s ownership in those 2 games has been fully acknowledged in the defendant’s magazine.

13.Counsel on behalf of the plaintiffs submitted the defendant cannot possibly make out the defence of review or criticism, as the Chinese text accompanying the images showed the instructions in the defendant’s magazines were strategy guides given by the defendant for the purpose of teaching its readers ways to play the Video Soccer Games.

14.The affirmation in support of this O.14 application, however, did not give a description of the information contained in the software of the Video Soccer Games.  It is not known whether the Video Soccer Games contained built-in demonstration games which contain formulated skill or tactics of football playing, whereby a game would be demonstrated on the screen without the input or participation of a game player, or whether the software simply provides the player with a game for the player to acquire his own skill in playing the game.

15.It is not known whether the software programmes of the Video Soccer Games contained any strategy guide in a written or demonstrated form.

16.From a plain reading of the text in “Games Station” magazines distributed by the defendant, the articles contained therein gave different methods of playing football games and made comments on how to improve one’s playing skill.  To quote 2 examples: at page 6 of volume 377, the author was clearly making a comparison between its recommended playing methods to those contained in the Japanese Video games when the author wrote “…. the playing method suggested in the magazine… was not found in the Japanese strategy guide.”.  Again at page 8 of volume 361 of the defendant’s magazine the author gave his reason for the disadvantage of using 3 defenders as opposed to 4 defenders, for the utilization of 3 defenders failed to provide sufficient coverage at the rear. 

17.Firstly, without the information whether the plaintiff’s software contained a strategy guide or demonstration games, this court is simply not in a position to form a view whether the description given by the defendant in its magazine was a critique or review of the demonstration strategy guide or the demonstration games of the plaintiff’s modelled playing skill, or whether the author in the defendant’s magazine had simply put forward his playing tactics to enable its readers to score a higher score when playing the Video Soccer Games.

18.What were written on the image of the control panel were all written in the Japanese language.  This court cannot truly come to a conclusion that what was written in the Chinese text next to the control panel could not possibly have amounted to a review or criticism of the utilization of the control panel for the purpose of playing the game.

19.This court does have some difficulty in understanding what could have amounted to a review and critique by the defendant when the images imported were those of graphical images of the football players in the Video Soccer Games.  However, firstly, this court is not shown the actual corresponding images of the artwork in the Video Soccer Games in respect of the images imported by the defendant at pages 14 and 15 of the 377 edition of the defendant’s publication.  This court cannot positively say the defendant must have imported those images from the 1^st plaintiffs’ software. Secondly, the meaning of the Japanese text appearing together with those graphical images is not supplied.  The circumstances under which those graphical images were introduced in the Video Soccer Games were unknown.  What the defendant wrote at page 14 of its magazine to suggest its readers to alter the ‘Cagliar’ team players cannot be read in a meaningful context without the corresponding Japanese text being explained.  When the text together with the images cannot be read in a proper context, one cannot begin to form a view on the meaning of those images and the words accompanying the images, let alone a view on whether the text gave a comparison or was simply a direct importation from the original images.

20.With respect to passing off, there is no dispute the 1^st plaintiff’s strategy guide did not come into existence until July this year, some 2 months after the publication of the defendant’s magazine in May 2006.  A copy of the strategy guide published by the 1^st plaintiff has never been exhibited in any of the affirmations in the present application.  The court is left in the dark about the actual contents in the published strategy guide of the 1^st plaintiff.  There are triable issues as to whether the 1^st plaintiff can meet the 3 criteria of (i) whether the 1^st plaintiff having acquired a reputation or goodwill in the publication of a strategy guide before its publication; (ii) whether the magazines of the defendant misrepresented themselves to be strategy guides published by the 1^st plaintiff; and (iii) whether the plaintiffs have suffered damage or likely to suffer damage as a result of the defendant’s representations in its magazines. 

21.This O.14 application is dismissed with costs.  Certificate for counsel is granted in respect of today’s hearing.

Mr. Lin Feng instructed by Messrs. William Lam & Co. for the 1^st and 2^nd Plaintiffs.

Ms. Rita So instructed by Messrs. Michael Pang & Co. for the Defendant.

Plainitff's application for leave to appeal dismissed. Please refer to DCCJ2753/2006 dated 24 November 2006