Lee Yuen Housewares Co Ltd v. Star-target Industrial Development Ltd and Another

HCA 710/2007

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 710 OF 2007

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BETWEEN

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Before:  Hon Chung J in Chambers

Date of Hearing:  24 September 2009

Date of Decision:  24 September 2009

Date of Handing Down Reasons for Decision:  30 September 2009

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REASONS  FOR  DECISION

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Introduction

1.This is the plaintiff’s application for summary judgment.  At the end of the hearing, unconditional leave was given to the 1^st defendant (“Star-Target”) to defend the action.  The reasons are as follows.

2.The plaintiff commenced this action on 11 April 2007 claiming the two defendants infringed its copyright in the artistic work concerning 3 of its products:-

(a)  coffee/tea scoop with clip (“scoop”);

(b)  jumbo tea bag holder (“tea bag holder”);

(c)  double timer (“timer”).

At the hearing of this application, the plaintiff indicated it only wished to proceed against Star-Target in view the other defendant has earlier been adjudged bankrupt.

3.The defendants deny the claim and put forth various lines of defence in a defence and counterclaim filed on 14 June 2007.

4.For present purpose, I will only refer to those lines of defence of importance to this application (they are not to be taken as exhaustive in the action).

Scoop

5.The defence put forth is in gist that the scoop was an article which was already commonly available in the market before the date of the plaintiff’s alleged copyright (22 November 2002).

6.The plaintiff criticised this defence as a bare claim without documentary (or other evidential) support.  The plaintiff also contended that the law requires a defendant to condescend upon particulars.  In this connection, reliance was placed on the decision in Toy Major Trading Co. Ltd. v. Hang Shun Plastic Toys Ltd. [2007] 3 HKLRD 345.

7.The facts in that case are quite different from those involved in this application.  Toy animal and dinosaur figurines were involved in Toy Major.  There was unchallenged evidence the defendant there admitted it was a manufacturer.  The similarities in the products’ details and features (such as the numbers of scales and wrinkles on skin) excluded any possibility of accidental resemblance.  It was in such factual context the courts opined the defendant’s bare denial of having manufactured the offending goods was insufficient.

8.The factual context in this application is different:-

(1)  the evidence shows that Star-Target could well have been a trader, apart from being a manufacturer.  Therefore, its claim of having obtained the goods from another supplier is plausible;

(2)  in brief, the scoop is shaped like a spoon with a spring-loaded clip attached to its handle.  It also serves the function of a spoon and a clip.  Its shape is to a large extent dictated by function.  Such being the case, Star-Target’s claim that the scoop could easily be found in the market and was not the plaintiff’s design could not be said to be of no substance.

9.The plaintiff’s complaints summarized in para. 6 above have to be judged in the light of the above factual context.

Tea Bag Holder

10.The affirmation filed on Star-Target’s behalf says:-

“… the Plaintiff’s [tea bag holder] was merely an enlargement of Star Target’s Little Tea Bag Holder which Star Target owns the copyright and design of. …

The Little Tea Bag Holder is an original design made and owned by Star Target.  It is based on the concept of a teabag holder in a dish shaped like a teapot, with a separate mesh sift to drain the teabag. … ”.

11.The plaintiff disputed the above account by deposing to the following:-

“[Star Target] alleged that the Plaintiff’s [tea bag holder] was derived or copied from [Star Target’s] earlier product called ‘Little Tea Bag Holder’. … I … instructed my employees to check up the records of the Plaintiff and was eventually told that the design of the [tea bag holder] was actually derived from some earlier products of the Plaintiff. … The relevant drawings made by me have been lost and cannot be located” (emphasis supplied).

12.The plaintiff’s last-mentioned case suffers from the following:-

(a)  in an Ord. 14 application, the statement of claim must be complete and good in itself.  Only in exceptional circumstances will the court be prepared to give leave to amend the summons and the statement of claim at the hearing.  But the affidavit verifying the proposed amendments must have been served sufficiently long in advance to enable the respondent not only to appreciate the nature of the applicant’s revised case, but to meet it with appropriate evidence if he can: Hong Kong Civil Procedure 2009, Vol. 1, para. 14/1/5 to 14/1/6;

(b)    as Star-Target correctly pointed out, the artistic work as pleaded is different from what the plaintiff deposed to, namely, copyright subsisting even prior to November 2002 (see the passage quoted in para. 11 above);

(c)  further, because the original drawings have been lost, it is impossible to make a visual comparison between them and (i) the pleaded drawings, (ii) the tea bag holder and/or (iii) Star-Target’s product.

13.The plaintiff also relied on the fact that the product similar to the tea bag holder was absent from Star-Target’s catalogue.  It was said this shows Star-Target could not have offered the item for sale at the time as Star-Target alleged.  But the plaintiff cannot change its stance to suit its arguments: when it was pointed out the timer was also not shown in the plaintiff’s own catalogue, the plaintiff asked the court to attach no weight to that omission.

Timer

14.The defence put forth is that both parties were the joint owners of the copyright.

15.The facts said to give rise to the joint-ownership were set out in one of the affirmations filed on behalf of Star-Target:-

“Due to the fact that there was [the plaintiff’s] heaving reliance on Star Target at all stage of product development and manufacturing, both parties were of mutual understanding and agreement that all the copyright subsisting in the designs would be jointly owned.  Further, it was agreed that [the plaintiff] would have the first rights to sell the products exclusively until they no longer wished to exercise this option. …

The said arrangement can be demonstrated by the fact that for every collaborated design, Star Target only [charged] a small percentage of the total cost required to manufacture the tooling and moulds. … ”.

16.The partial payment for the moulds was undisputed.  The plaintiff’s affirmation says:-

“… In this industry, the contracted manufacturers usually bear at least part of the costs for the development of the toolings and moulds.  Sometimes, they will even bear the whole costs of the toolings and moulds. … ”.

The alleged agreement, however, was denied by the plaintiff.

17.In view of the plaintiff’s acceptance that the moulds were only partially paid for, the agreement contended for by Star-Target is believable.

18.During the hearing, the plaintiff argued that, even if Star-Target was the joint-owner of the copyright, an injunction order should still be granted against Star-Target.  The plaintiff relied on the decision in Robin Ray v. Classic FM plc [1998] FSR 622, 637-8:-

“… it is quite clear that, even if the defendant was joint author of the give documents and the catalogue, joint ownership could not without the consent of the plaintiff justify the making of copies for the purpose of exploitation of the copyright abroad”.

19.The commentaries in Hong Kong Civil Procedure 2009 (summarized in para. 12(a) above) are equally applicable here.  The plaintiff’s pleaded case was not premised on joint-ownership; neither was this application brought on that basis.  Star-Target has not been given sufficient notice of such change of case.  Consequently, the plaintiff should not be permitted to advance a different case at the hearing.

Mr Philips B F Wong, instructed by Messrs Chan Tang & Kwok, for the Plaintiff

Mr Lam Chin Ching, Gary, instructed by Messrs Tse & Associates, for the 1^st Defendant