Shun Hing Co v. Easey Garment Factory Ltd and Another
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CACV000124/1981
----------------- Coram: Sir Alan Huggins, V.-P., Yang & Barker, JJ.A. Date of Judgment: 21st December 1981. ----------------- JUDGMENT ----------------- Sir Alan Huggins, V.-P. : 1. We are now left with the appeal against the order made for the payment of costs by the Defendant. This was an action for breach of copyright and passing off and the three remedies with which we are concerned claimed in the writ were, first, an inquiry as to damages or alternatively damages in respect of the Defendant's acts of conversion and payment of all sums due; secondly, damages or an account of the profits of the Defendant from all acts of infringement and payment of all sums found due, and, thirdly, additional damages in accordance with Section 17 Sub-section 3 of the Copyright Act 1956. The Statement of Claim was in similar terms, and there was then a judgment in default. Unfortunately, the judgment in default - which, of course, was obtained by the Plaintiffs and the draft order was presented by the Plaintiffs - was for damages in respect of the Defendant's acts of conversion and payment of all sums found due, which is in accordance with the writ; and, next, damages of the profits of the Defendant from all acts of infringement and payment of all sums found due; and third, additional damages in accordance with Section 17(3) of the Copyright Act 1956. This order was not in the form which is laid down by the rules for a default judgment: there should have been a final judgment as to liability and an interlocutory judgment for damages to be assessed by the Registrar. The Registrar did in fact make an assessment and unfortunately his certificate also is not in accordance with the proper form: it is in the form of a judgment itself, but the certificate follows the wording of the order which was made in the initial stages, and it is certified that the damages to which the Plaintiffs are entitled, amount to $12,563.00, as to $12,363.00 being damages for the profits acquired by the Defendants, as to $100.00 being damages for conversion and as to $100.00 being damages in accordance with Section 17 Sub-section 3 of the Copyright Act 1956. 2. Now the first point which is made is that we ought not to interfere with the discretion of the Registrar, and that, of course, is a rule which we would follow if we felt that this was appropriate here, but prima facie it will be seen that the order which was made was not the one which one would have expected, because there were three payments in of moneys in this action and one would have expected that the Defendant, having paid more than the amount that was finally assessed, should not have to pay any costs thereafter. The Registrar was informed of the payments in, but apparently no reason was given for not making what appears to be the usual order - there is certainly no mention in his notes of any reason. The first payment in was in these terms:
That first payment in was made on 5th July 1978. Just over two years later a second payment in was made which brought the payment in to just over the figure which was assessed by the Registrar, and then shortly thereafter there was a further payment in of a sum which it has been indicated to us was of the same value as, and no doubt related to, some labels which had been ordered by the Defendant and which were infringements. Shortly after the second payment in there was an Affidavit filed to which were exhibited some accounts of the Defendant purporting to show the profits which they had made as a result of the infringement, and those accounts substantially tallied with the first two payments in. As it seems to me, the reality of the matter was that the payments in were designed to cover the profits. The wording of the notices of the payments in is undoubtedly unfortunate, but they followed the words which had been introduced into the action by the Plaintiffs themselves. The words damages for profits, of course, are nonsensical, but it is clear what was intended. 3. The difficulty is to find under what provision the payments in were made. Order 22 relates only to payments in in respect of claims for damages. It had been agreed before the Registrar that the claim that the Plaintiffs wished to pursue was one for damages for profits - again this nonsensical phrase. The substance of the matter, it seems to me, was that they were not claiming damages at all. They were claiming the alternative equitable remedy of an account of profits in lieu of damages, and if the proceedings had been properly worded throughout there would have been no mention of damages in the notices of payments in; but assuming - as I think it is reasonable to do - that, the Plaintiffs having put the matter forward as damages, this was a claim for damages, the Defendant could then make a payment in under Order 22. If he was not entitled to do so, it is said that there was no power other than Order 22 for payment in. We need not decide whether that is correct. 4. Before the Registrar there were in fact two main issues. The Defendant raised a third issue, upon which he failed, but upon the two substantial issues he clearly succeeded. The Plaintiffs got no more than the Defendant had indicated he was prepared to pay. In these circumstances it seems to me that the Plaintiffs should not have received their costs after 17th September 1980. I have already referred to the admission by the Plaintiffs before the Registrar that they were in fact pursuing the remedy of damages for profits, which clearly meant that they were seeking an account. They had all along been contending that the Defendant was liable to pay very much more than he was admitting, and in fact they were claiming something in the region of $200,000.00. They gambled on obtaining such an order and they failed. My view is that they must in fairness pay the Defendant's costs as from 17th September 1980. Yang, J.A. : 5. I agree. Barker, J.A. : 6. I agree but would merely add this. I am not prepared to decide whether it is possible for a payment in to be made other than under Order 22, although it was contended before us the situation was covered by Order 62 Rule 5. I do not think it is necessary for me to make any pronouncement on that. I would merely say this, that if it in fact is not possible for a payment in to be made, for example, in an action brought against trustees, or in an action where an account is sought, there are other ways in which a Defendant can protect himself as to costs, namely, by writing an open letter to the Plaintiffs saying I am prepared to pay the sum of $X thousand, and if you do not accept this offer, this letter will be brought to the attention of the court. But, for the reasons given by the President of the Court, I agree. 21st December 1981. Representation: |