Crimson China Cultural Exchange Foundation Ltd v. Crimson Summer Exchange Ltd
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HCA 809/2007 IN THE HIGH COURT OF THE HONG KONG SPECIAL ADMINISTRATIVE REGION COURT OF FIRST INSTANCE ACTION NO. 809 OF 2007 ____________ BETWEEN
____________ Before: Deputy High Court Judge L. Chan in Chambers Date of Hearing: 13 July 2007 Date of Judgment: 13 July 2007 ______________ J U D G M E N T ______________ 1.This is an application for summary judgment in a passing-off-cum-copyright action. It arose out of a non-profit-making, educational and cultural exchange programme. The exchange programme was initially called Harvard Summer Exchange Programme (“HSE”). It was organised by the Harvard Club of Hong Kong Limited under the initiation of one Michelle Chen who was then the chairperson of Harvard Club and now the sole shareholder and director of the defendant. 2.The HSE in 2004 was a success, but the new committee of the Harvard Club did not want to continue with it. Miss Chen and a few of her fellow alumni then incorporated the plaintiff to continue the good work. The plaintiff was incorporated on 24 June 2005 and was given the charitable exemption by the Commissioner of Inland Revenue on 26 July 2005. The plaintiff then organised and hosted the exchange programme in July 2005 under the name Crimson Summer Exchange and its acronym “CSE.” It continued the Crimson Summer Exchange in 2006 and extended it to Shanghai, Wuhan and Dongguan of Guangdong. This year, they are going to do it in association with the University of Hong Kong in Hong Kong, the Peking University in Beijing and the University of Zhejiang in Hangzhou. 3.One of the key figures of the plaintiff in organising and running the Crimson Summer Exchange was Miss Michelle Chen. However, for reasons which I do not need to go into, she resigned from the plaintiff’s board of governors on 2 November 2006. 4.The defendant was incorporated on 28 November 2006 under the name of Crimson Summer Exchange Limited with Miss Chen as its sole shareholder and director. It also offered an educational and cultural exchange programme in summer 2007 by the same name of Crimson Summer Exchange and the acronym “CSE.” 5.Whilst organising, promoting and hosting the 2005 and 2006 programmes, the plaintiff has since July 2005 extensively and substantially promoted the programme under the name Crimson Summer Exchange, its acronym “CSE”, the logo with the acronym “CSE”, the plaintiff’s acronym “CCCEF” and the plaintiff’s shield with its acronym “CCCEF.” It did so by distribution of promotional materials to local schools. It also has a website accessible worldwide for dissemination of its information to the public. The Crimson Summer Exchange has also been reported in the local media and discussed amongst the young people on the internet. 6.It has also attracted donors and sponsors for its work. Some of the donors are entities and people who are often mentioned in the local media. 7.Despite all these, the defendant through Miss Chen argued that the plaintiff had not acquired any goodwill to the names and devices I have mentioned above, but Miss Chen has not provided any convincing evidence or reason to support the defendant’s case. 8.In the light of the above, I find that the plaintiff has acquired sufficient and valuable goodwill in the names and devices as mentioned above (see The Law of Passing-Off by Wadlow 3-54 and 8-12 to 8-13.) 9.The plaintiff also claims that it is the owner of the copyright subsisting in all the artistic works relating to its CCCEF shield. The artistic works were commissioned by the plaintiff from one Kenny Lee of Vision Guard and Mr Lee has assigned all the rights in those works to the plaintiff. 10.The alleged wrongful acts of the defendant were by and large carried out on the defendant’s website as its contents were almost an identical reproduction of the plaintiff’s website and contents at that time. The defendant’s website also claimed that the defendant was the organiser and host of the plaintiff’s CSE programmes. The defendant’s use of identical names and marks for identical programmes amounts to a misrepresentation to the public (Chelsea Man Menswear Limited v Chelsea Girl Limited [1985] FSR 567 at 571 to 572.) 11.There is therefore a real possibility of damage being done to the plaintiff (British Legion v British Legion Club (Street) Limited (1931) 48 RPC 555 at 563 and 564.) 12.The plaintiff has also exhibited evidence showing actual confusion by members of the public which was caused by the defendant’s use of the plaintiff’s names and devices. I therefore find that the plaintiff has succeeded in proving its case in passing-off. 13.On the copyright claim, the defendant has reproduced in its website the artistic works relating to the CCCEF shield almost in its entirety. It has therefore infringed the plaintiff’s copyright in this shield in a primary sense as in sections 23, 24 and 26 of the Copyright Ordinance, Cap. 528 and in a secondary sense as in section 31 of that ordinance. 14.The defendant cannot deny knowledge of the infringement as Miss Chen has claimed that she had on behalf of the plaintiff suggested to the designer Kenny Lee to use the acronym of the plaintiff, the ancient Chinese character (which now appears on the shield), and the form of a shield for use in designing the plaintiff’s shield. In fact, Miss Chen defended this claim on the ground that she had made these suggestions or instructions to the designer. However, she also admitted that she had done all these on behalf of and for the benefit of the plaintiff. There is no argument that it was the designer who had created the art works for the shield and had assigned the rights therein to the plaintiff. The plaintiff is thus the owner of the copyright. 15.I find that the defendant has not shown any triable issue to the plaintiff’s claims. I therefore give summary judgment to the plaintiff in terms of the plaintiff’s summons, but I do not order the defendant to pay the plaintiff any additional damages under section 108(2) of the Copyright Ordinance or any exemplary damages. I also order the defendant to pay the plaintiff the costs of this action including this application,
Mr Jonathan Chu, instructed by Messrs F Zimmern & Co., for the Plaintiff Mr Chan Kai Leung and Mr Raymond Ng, of Messrs King & Co. and Miss Michelle Chen, for the Defendant |