Shaw Brothers (Hong Kong) Ltd v. Golden Harvest (HK) Ltd
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IN THE SUPREME COURT OF HONG KONG APPELLATE JURISDICTION CIVIL APPEAL NO.16 OF 1971 (on appeal from O.J. action No.165 of 1971) ________________________ BETWEEN
________________________ Coram : Full Court (Blair-Kerr, S.P.J., Pickering & Leonard, JJ.) Date: 28 April 1972 ________________________ JUDGMENT ________________________ Blair-Kerr, S.P.J.: 1. The plaintiff (appellant) is a company incorporated in Hong Kong; and since 1958 they have carried on the business of making, producing, distributing, and exhibiting motion pictures. The majority of the films produced by them during the last 5 years have been what are popular known as sword-play dramas. They produced 24 of such dramas in 1969, and a further 24 in 1970; and their claim to be the largest manufacturers and producers of this type of motion picture in the Chinese language was not challenged in these proceedings. 2. The Managing Director of the company is Mr. Run Run Shaw. A Mr. Raymond Chow was Production Manager from 1962 till 1970; and for the period 1968/1970 he was, in addition, Assistant General Manager. 3. For some time prior to 1970, the Assistant Production Manager was a Mr. Leonard Ho. A Mr. T.K. Leung was editor-in-chief of a film magazine named Southern Screen which was published by the appellant company; and two of the film directors were a Mr. Choi and a Mr. Chang Cheh. 4. Films in which the dialogue is in Mandarin (or some other Chinese language or dialect) are frequently given English as well as Chinese titles. In 1967 the appellant company produced a sword-play film the English title of which was “The One-Armed Swordsman”. The sounds of the three characters in the Chinese title, namely “獨臂刀”, may be Romanized thus: “Duk Bay Doe”. “Duk” means “one”, and “bay” means “arm”. As will be seen presently, there was a good deal of evidence as to the meaning of the character “doe”; but for the time being it is sufficient to say that it may mean “sabre”, “sword” or “knife”. Therefore, the literal translation of “Duk Bay Doe” is “one-arm sword”, or “one-arm sabre”; which, of course, makes nonsense. But there was evidence that these three characters would be understood by the cinema-going public to mean “one-armed swordsman”. 5. Chang Cheh directed the making of this film; and an actor named Wang Yu played the leading role under the screen name “方剛”, the sounds of which characters may be Romanized as “Fang Kang’. This is an ordinary personal name such as Charlie Chaplin, Sherlock Holmes, John Steed, or Monsieur Poirot. It is not a fancy name such as “The Lone Ranger” or “Blue Beard”. 6. The story of the film may be summarised thus:
7. The film “The One-Armed Swordsman” (“Duk Bay Doe”) was a tremendous success. It broke all records for a locally-produced film. The gross receipts in respect of its first run in Hong Kong exceeded $1 million; and in 1969, the appellants decided to produce a sequel to it which they called “Return of the One-Armed Swordsman”. The Chinese name given to this film was “獨臂刀王”. These four characters may be Romanized as “Duk Bay Doe Wong”. Again, this film was directed by Chang Cheh; and Wang Yu played the leading role under the screen name “Fang Kang”. 8. The story of the film may be summarised thus:
9. This film was a tremendous success. The gross receipts in respect of its first run exceeded $1,200,000. 10. In March 1970, Wang Yu left the appellant company’s employment; and he put a notice to this effect in the press. In O.J. 1274 of 1970 the appellant company sought, and obtained, an injunction restraining him until January 1973 from participating in Hong Kong in any other motion picture business. 11. In April 1970, Raymond Chow, Leonard Ho and T.K. Leung left the appellant company’s employment. Choi left some time later. 12. On 3rd May 1970 a company called Wing Luen Motion Picture Co. (Taiwan) Ltd. (hereinafter referred to as “Wing Luen”) was incorporated in Taiwan. According to Raymond Chow, the authorised capital of this company (N.T.$5,000,000) is fully paid up. He is one of the three largest shareholders – his holding being N.T.$1,200,000; and he and one Hwong Ming are directors of Wing Luen. 13. On 8th May 1970, the respondent (defendant) company was incorporated in Hong Kong. Raymond Chow and Leonard Ho subscribed the Memorandum of Association. The authorised capital of this company is H.K.$2 million divided into 20,000 shares of $100 each. According to Raymond Chow, he and Leonard Ho and Choi have, between them, subscribed H.K.$400,000. He also said that certain persons (whom he described as “the Bangkok group”) have subscribed a further H.K. $600,000; and that another group (which he described as “the Taiwan group”) have subscribed a further H.K.$600,000. However, up to the time this action was tried (April 1971) no shares in the respondent company had been allotted, other than the 1share taken up by each of the two subscribers. Raymond Chow is permanent Managing Director of the respondent company; and Hwong Ming, Leonard Ho, and T.K. Leung are directors. 14. Shortly after the respondent company was incorporated, Raymond Chow wrote to the Hong Kong and Kowloon Theatrical Enterprise Free General Association. He informed the Association that the respondent company had decided to make three films one of which was to be called “盲俠大戰獨臂刀” [“Mang Hup Tai Tsin Duk Bay Doe”/“Blind Knight Big Fight One Arm Sabre”], that is to say “Blind Knight in big fight with One-Armed Swordsman”. On 19th May 1970 the Association addressed a notice to all motion picture companies in Hong Kong, with copies to the Cultural Bureau, Motion Pictures Association, and the Film Producers Association in Taiwan, informing them of the respondent company’s intentions. The notice continued:
15. In cross-examination Raymond Chow admitted that it was originally intended that this film would be made by the respondent company in Hong Kong; but that eventually it was decided that Wing Luen and a Japanese company called Katsu Productions Inc. would produce it. He was fully aware that in March 1970 Wang Yu had severed his connection with the appellant company; and there can be no doubt at all that as early as May 1970, Raymond Chow’s intention was that Wang Yu should play the part of “The One-Armed Swordsman” and that a Japanese actor called Shintaro Katzu, “the Blind Knight”, should play the part of a screen character called Zatoichi. 16. Shintaro Katzu was very well-known in Hong Kong in the screen character role of Zatoichi. He and Hwong Ming visited Hong Kong about the middle of May 1970; and, clearly, the press had been given to understand that this film, featuring the two famous screen swordsmen, was going to be made. A great deal of publicity was given to the subject. For example, about 19th May 1970, the China Mail published a photo of Katzu and Hwong Ming under the caption:
On 20th May 1970 the China Mail published another photo of Katzu, this time with Raymond Chow, at Kai Tai Airport under the caption:
17. On 24th May 1970, the Sunday Star published an article which purported to be the substance of an interview with Raymond Chow regarding “Wang Yu, the One-Armed Swordsman” performing in Taiwan, and Chow’s decision to make the Zatoichi film. It reads in part:–
When asked in cross-examination whether he said all these things to the press, Raymond Chow replied: “Something to that effect.” Therefore it would appear that Raymond Chow was arranging for the scripts to be prepared very soon after he left the appellant company’s employment. 18. On 24th May 1970 the Hong Kong Standard published an article about the Zatoichi film. It read in part:–
19. During the latter half of 1970, there were numerous articles in the press concerning the anticipated production of the Zatoichi film and concerning Wang Yu’s dispute with the appellant company. Wang Yu was almost invariably referred to in the English press as “the One-Armed Swordsman” and in the Chinese press as “Duk Bay Doe”. 20. The film “Zatoichi and the One-Armed Swordsman” was in fact produced in Japan towards the end of 1970 by Wing Luen and Katzu Production Inc. a company incorporated in Japan and controlled by Mr. Shintaro Katzu. The filming was directed by Mr. Choi who was one of the film directors formerly employed by the appellants. The respondent company advertised themselves as being distributors of the film in Hong Kong. 21. The film was first shown in Hong Kong at midnight on the night of 23rd/24th January 1971. It went on general release on 6th February 1971. The Chinese name of this film is “獨臂刀大戰盲俠”. The sounds of these characters may be Romanized as “Duk Bay Doe Tai Tsin Mang Hup”. The part of Zatoichi, the blind knight, was played by Shintaro Katzu; and Wang Yu played the part of the One-Armed Swordsman under the screen name “王剛”, which characters may be Romanized as “Wang Kang”. 22. The story of the film may be summarised thus:–
23. The appellant company issued their writ on 26th January 1971. As subsequently amended, the relief claimed was:
24. On 8th February 1971 the appellant company took out a summons for an interlocutory injunction; but it was eventually agreed that no order would be made on this summons; and the judge ordered an early trial. 25. The respondent company applied for the action to be set down for trial before a judge sitting with a jury; and the action came on for trial before Mr. Justice Huggins and a jury of six Chinese and one European on 22nd April 1971. 26. Before summing-up to the jury, the trial judge gave his ruling([1]) on two questions of law which arose on the pleadings. The headnote to the report adequately reflects the substance of the judge’s ruling. It reads:–
27. There is no appeal from the judge’s ruling that there is no separate tort of unfair competition. The respondent company, however, gave notice of their intention to contend that the judgment should be affirmed on grounds other than those relied upon in the verdict namely that, for the purposes of the law of passing off, the appellant company could not acquire goodwill in a fictional character called Fang Kang, and that the judge erred in holding, and directing the jury, that goodwill could be acquired in a fictional character. Nevertheless, counsel for the respondent company, for purposes of the appeal to this court, accepted that goodwill can be acquired in a fictional character; but he reserved the right to argue the contrary if the matter should go further on appeal to the Privy Council. [Re Westbourne Galleries Ltd.([3])]. 28. Having given his ruling on the two points of law, the judge then summed up to the jury who were not asked to give a general verdict but to answer certain questions, the form of which had been agreed by the judge and counsel. The following questions and answers (hereinafter referred to as “the first set”) are as follows:–
Judgment was then given in favour of the respondent company. 29. The judge also asked the jury to answer some further questions so that the factual position would be clear in the event of a higher court reversing his ruling that there is no separate tort of unfair competition. These questions and answers (hereinafter referred to as “the second set”) are as follows:–
30. The main ground of appeal to this Court relates to the jury’s answers to the first set of questions. The ground, as framed, reads:–
31. However, there is another ground of appeal. As framed, it reads:–
I shall deal with this ground first; but before doing so, I might say in passing (particularly as we have been told that in all probability this case will be taken by one or other of the parties to a higher court) that in Hong Kong civil actions are normally tried by a judge sitting without a jury. A party may apply for trial by judge sitting with a jury (as the respondent company did in this case). But parties to a civil action very seldom adopt this course. So far as I am aware, there have only been three civil actions tried by jury during the last 27 years. The first was an action tried in 1955. The plaintiff was a person alleged to be of unsound mind, and the defendants were the three doctors who were responsible for certifying him as such. He sued them for damages for wrongful certification. I was counsel in that case; and I know that there was no appeal from the jury’s decision. The second case was a libel action about 10 years ago in which a newspaper was involved. Mr. Zimmern was counsel in that case; and he informs us that although a jury was empanelled, there was some sort of settlement after the first day’s hearing. This is the third case. Therefore, this is the first appeal to this Court during the last 27 years from the verdict of a jury in a civil action; and the only other civil case tried by a jury which was cited to us was Reuter Brockelmann & Co. v. Tung Lok Tong([4]), a case decided in 1909. 32. Turning then to the second of the two grounds set out above. In summing up to the jury, the judge said:–
That is all he said on this topic. The jury retired shortly after 12.30 p.m. This is evident from certain remarks made by the judge towards the end of his summing-up. At 12.50 p.m. counsel were informed by a member of the court staff that they could safely proceed to lunch and return to court at 2.30 p.m. Counsel thereupon went off to lunch. Some went to the Hong Kong Club, others to the Hilton Hotel. Both establishments are situated a short distance from the Court. Having ordered lunch, counsel were summoned back to court because the jury had returned. It is not surprising that there was some delay in reassembling the court. Indeed at 1.20 p.m. when the court did reassemble, the judge apologised to the jury for keeping them waiting. 33. Mr. Zimmern estimated that the time spent by the jury in consultation was about 20 minutes. Mr. Wright thought that it would be nearer to half an hour. 34. Section 26 of the Jury Ordinance Cap.3 reads in part:–
35. The provisions of this section were not fully complied with. The jury returned their special verdict i.e. they answered the questions put to them; and their answers were given in open court. But, before taking the verdict, the clerk of court did not ask them questions, so as to elicit whether they were “all or by what majority agreed” as is invariably done in criminal cases. It is common ground that there had been some sort of agreement between the judge and counsel beforehand that the jury would not be asked these questions. We do not know how this came about. 36. At any rate, after the jury had given their answers, the foreman said:
The judge interrupted him saying:
37. The position therefore was that the court was made aware of the fact that the jury were not unanimous, although the foreman was not permitted to state what the actual majorities were because of this agreement between Bench and Bar. 38. In a criminal case, if the jury simply said “guilty” without stating whether they were all, or by what majority, agreed, I have little doubt but that such a verdict would be quashed on appeal. But, in the case of a civil action, a simple majority is a verdict. The judge directed them to this effect; and the most that one can say is that there was an irregularity in that the jury were not asked to say by what majority they were agreed; but it was an irregularity which did not, in my view, affect in any way the validity of the verdict. 39. However, s. 24 of the Jury Ordinance reads as follows:–
40. In the absence of s.24(1), or some equivalent provision, the common law rule would apply, that is to say in every case, civil or criminal, the jury would have to be unanimous. 41. It may not be unprofitable to say a word or two about the history of s.24(1). Jury trial in Hong Kong goes back to 1843; but it appears that at a very early stage statute intervened to modify the common law. Section 1 of Ordinance No.7 of 1845 reads:–
No provision was made for majority verdicts. Section 19 provided that if the jury could not agree, they were to be discharged and a new jury empanelled. 42. It appears that this system did not work satisfactorily because by s.7 of Ordinance no.3 of 1858 it was enacted that
So, the jury was increased to 7 and a majority was to be taken as a verdict in all cases civil or criminal, other than capital cases. Further statutory changes were effected by Ordinance no.11 of 1864; but these need not be considered. 43. Ordinance no.18 of 1887 was the enactment which first introduced the concept of “reasonable consultation”. Section 22 reads:–
It was during the law revision in 1911 that certain changes were made in the wording of this section. The words “shall retire” were removed and “shall be taken to be” were substituted for the phrase “shall be held and deemed to all intents and purposes to be”. In other words, the legislature were saying in effect: “It is quite possible for a jury to have reasonable consultation even although they do not retire”. It is not clear what was the purpose in changing the phraseology of the latter part of the section. The phrase now is “shall be taken to be” – not “shall (or may ) be taken by the judge as.” 44. In England, unanimity was the rule in all cases until this was modified in 1967 as regards criminal proceedings; but the phraseology of s.13(3) of the Criminal Justice Act 1967 is quite different from our s.24(1) of Cap.3. The English sub-section reads:–
In England the question is not whether there has been “reasonable consultation” but whether the jury have had (1) not less than two hours for deliberation” or (2) “such longer period” (i.e. for deliberation) “as the court thinks reasonable”. 45. In a practice direction([5]) issued by the Lord Chief Justice following the enactment of the Criminal Justice Act 1967, it was suggested that the jury, before retiring should be directed by the judge as follows:–
46. Section 13(3) has been considered on two occasions by the Court of Appeal. (vide R. v. Adams([6]) and R. v. Bateson([7])). In Adams(6) Lord Parker, C.J., said (p. 438):–
And it is clear from the judgment of Salmon, L.J., in Bateson(7) that if a trial judge in England were to accept a majority verdict of guilty and it subsequently appeared to the Court of Appeal that the jury had not had the statutory period of two hours for deliberation, any conviction which had been registered as a result of such a verdict would be quashed. But there is nothing in any of the cases to suggest that such a verdict would be a nullity. There would be a verdict; but any conviction would be quashed on appeal if it were to appear to the Court of Appeal that the trial judge had erred in his computation of the period of two hours. 47. But, supposing an English jury were to return a verdict of guilty after retiring for 2¼ hours; and on appeal it were submitted to the Court of Appeal that the conviction should be quashed on the ground that the judge ought not to have accepted the verdict because, having regard to the nature and complexity of the case, at least 3 hours deliberation was called for. Can one imagine the Court of Appeal acceding to such a submission? Clearly not. It is for the trial judge, in the exercise of his discretion, to decide whether the jury have had sufficient time for deliberation, subject, of course, to the minimum statutory period of 2 hours; and I venture to suggest that only in the most exceptional circumstances would the Court of Appeal interfere with the exercise of the trial judge’s discretion. 48. As regards civil proceedings in England, this is now governed by s.39 of the Courts Act 1971. But here there is no minimum statutory period. Section 39(3) provides that the court shall not accept a majority verdict
So far as the reports indicate, there have been no appeals on the ground that the jury did not have a reasonable period of time for deliberation. 49. This is the first occasion in Hong Kong since the concept was first introduced into our law in 1887 that the verdict of a jury has been questioned on the ground that s.24(1) of the Jury Ordinance was not complied with; and, although the ground of appeal, as framed, simply complains of the fact that the judge did not draw the jury’s attention to the provisions of the sub-section, as the argument developed (prompted, I may say, by the court), the appellant company’s submission was on these lines:
50. A court is not permitted to inquire what goes on in the jury room. For all the court knows, a jury may have spent their time indulging in idle chatter or playing cards; and it is not implicit in the expression “reasonable consultation” that the jury have in fact consulted with one another in a reasonable manner and for a reasonable length of time, much less that the judge must satisfy himself as to this. Therefore “reasonable consultation” must mean “opportunity for consultation for such period of time as the court thinks is reasonable.” I do not think it means “for such period of time as the jury thinks is reasonable”, although I agree that it is arguable that this is all it does mean. 51. As regards “opportunity”, this naturally presupposes that the jury shall have been told that they are free to deliberate alone for as long as they like, that they may have meals and refreshment, and that all other necessary facilities shall be provided. No question as to that aspect arises in this case. 52. Many factors may influence a judge, in the exercise of his discretion, as to whether, after a given interval of time, he should take a majority verdict or ask the jury to consider the matter further. These will include not only the nature and complexity of the case, but such intangible factors as whether they are an intelligent jury (as evidenced by the questions which they may have asked during the trial), and generally as to their attitude towards their judicial duties and in particular as to whether they appear to have made up their minds in such a way that to order them to indulge in further consultation would be a meaningless exercise. 53. If the judge has exercised his discretion, and, having done so, he has then taken the jury’s verdict, I do not see how it can be said that the verdict is a nullity or that there is no verdict. This does not mean that this Court does not have the power to say that the judge exercised his discretion wrongly in that, having regard to all the circumstances, he took the majority verdict prematurely. But, speaking for myself, I feel that it would be only in the most exceptional circumstances that this Court would take upon itself to say that there was a wrong exercise of discretion on the part of a trial judge and that the verdict of the jury should be set aside on the sole ground that there had not been reasonable consultation by the jury. 54. On learning from counsel that in this case the time spent by the jury in retirement was probably in the region of 25 or 30 minutes, I must say my reaction was, to say the least of it, one of surprise; and it is clear from the record that the trial judge was surprised because when the court reassembled at 1.20 p.m. he addressed them thus:–
It occurred to me that this was possibly a somewhat doubtful compliment; and it is my duty to say that I have spoken to the trial judge about this case; and I have his permission to record the following:–
55. This jury were not concerned with the two points of law on which the judge ruled before summing-up. However, they had listened to some 6½ days of evidence and to lengthy addresses by counsel. They had been given a most careful direction by the judge; and all in all I would have expected even the most intelligent jury to have spent a considerable time considering the law applicable and counsel’s submissions. The speed with which they reached their conclusions certainly does suggest that they arrived at those conclusions, and by a majority, without due performance of their judicial function. On the other hand, for myself, I am not prepared to say that the judge exercised his discretion wrongly and that the verdict of the jury should be set aside on this ground only. On the other hand, I see no reason why this Court should not bear in mind the behaviour of this jury when considering the main ground of appeal namely that their verdict is perverse. 56. I would only add for the future that, in my view, before a jury retires, the trial judge should in every case, civil or criminal (other than capital cases), direct them on the lines suggested by Lord Parker in his 1967 practice direction(5). 57. Turning then to the main ground of appeal. Section 29A of the Supreme Court Ordinance and O.59 are in substantially the same terms as s.30 of the Supreme Court of Judicature (Con.) Act 1925 and O.59 of the Rules of the Supreme Court 1965, respectively. Rule 10(3) reads:
58. Although the notice of appeal asks for an order that the judgment be set aside and that judgment be entered for the appellant company, the proceeding before us is really a motion for a new trial under s.29A of the Supreme Court Ordinance. But, this court has jurisdiction to enter judgment now in favour of the appellant company. Mr. Zimmern, for the appellant company, submits that if we find that the jury’s answers to questions 1 and 2 of the first set are perverse, the Court should set aside the judgment and order a new trial. But counsel submits that the jury’s answers to questions 5 and 6 of the first set are equally perverse; that we have all the materials before us; that the evidence is really all one way; that there is nothing to be gained by incurring the expense of a new trial; and that we should enter judgment for the appellant company now. 59. When dealing with an appeal from the decision of a judge sitting without a jury, this court is guided by the principles which guide the Court of Appeal when dealing with comparable proceedings in England. Such an appeal is a rehearing on the record; and the principles which are followed by the Full Court are conveniently set out in decisions such as Powell v. Streatham Manor Nursing Home(8), Watt v. Thomas(9), and Benmax v. Austin Motor Co., Ltd.(10). 60. In England, the power of the Court of Appeal to set aside a jury’s finding is said to be “far narrower”(11). Clearly, the Court of Appeal is exceedingly careful in interfering with the verdict of a jury; and, as Swinfen Eady L.J. said in Winterbotham Gurney & Co. v. Sibthorp and Cox(12), the Court is even more careful in giving a decision contrary to the finding of a jury; and this is more often done in cases where judgment is entered for a defendant than for a plaintiff [vide the Winterbotham case(12) at p.633]. Nevertheless, when all the facts are before it and there is nothing to be gained by ordering a new trial, in a clear case the Court of Appeal will not hesitate to give judgment contrary to the finding of the jury. 61. A considerable number of cases were cited by counsel. The first of these was Solomon v. Bitten(13). In that case the trial judge expressed himself to be dissatisfied with the verdict of the jury. The Court of Appeal (Jessel M.R., Brett and Cotton L.JJ.) reversed the order appealed from. The court, however, said:
This decision was referred to in The Metropolitan Railway Company v. Wright(14). This was an action in negligence; and there was conflicting evidence on matters of primary fact. The jury found for the plaintiff. The Court of Appeal ordered a new trial on the ground that the verdict was against the weight of the evidence. Lord Selborne said:–
62. The House of Lords reversed this decision and ordered the verdict to stand. Lord Herschell L.C. said:–
Lord Fitzgerald said:–
Lord Halsbury said:–
63. The language used by Lord Halsbury on this occasion appears to have given members of the Court of Appeal the idea that the decision in The Metropolitan Railway Co. case(14) laid down some new rule. But in Jones v. Spencer(15), Lord Halsbury said:–
64. Jones v. Spencer(15) was an action for breach of warranty. A horse purchased by the respondent (plaintiff) from the appellant (defendant) was found to be suffering from some disease when it arrived in London. Veterinary surgeons called by the respondent testified that the disease must have been in existence at the time of the purchase. The appellant, however, called a number of witnesses to say that up to the time of the sale the animal was sound and had shown no symptoms of the disease. The jury found for the respondent. The appellant applied for a new trial which was refused. On appeal to the House of Lords, Lord Halsbury said:–
65. Millar v. Toulmin(16) was an action by a commission agent to recover commission for having found a purchaser for property sold by the defendant. The jury found for the defendant. There was an application to the Divisional Court for a new trial on the ground of misdirection and of the verdict being contrary to the weight of evidence. The Divisional Court ordered a new trial. On appeal to the Court of Appeal Lord Esher said:–
And having considered the rule then in force equivalent to our O.59 r.10(3), the Master of the Rolls said:–
Bowen L.J. said:–
The Court of Appeal entered judgment for the plaintiff instead of ordering a new trial. 66. The House of Lords reversed this decision, and restored the judgment in favour of the defendant on the ground that there had been no misdirection and that the verdict was correct. Lord Halsbury said that even if he had taken a different view of the facts, he “doubted very much” whether O.58 r.4 [now O.59 r.10(3)] “gave any such jurisdiction as the Court of Appeal claimed to exercise in finding a verdict for themselves”. But Lord Watson and Lord Fitzgerald expressed no opinion upon this question. The Court of Appeal’s decision was reversed on the facts. 67. It may be noted that Toulmin v. Miller(16) came before the House in August 1886 i.e. 5 months after the decision in Metropolitan Railway v. Wright(14), the case in which Lord Halsbury had expressed such strong views, which he appears to have modified considerably by the time Jones v. Spencer(15) reached the house in November 1897. 68. The next case relied upon by counsel for the appellant company was Aitken v. McMeekan(17). This was an Australian case. The question of fact which was in issue was whether a testator, at the time he executed his will, was of unsound mind and incapable of executing any testamentary document. In an action for revocation of probate, the jury answered that question in the affirmative and judgment was given in favour of the plaintiff. 69. A doctor called by the plaintiff expressed the view that a “seizure”, which the testator had suffered 3 months before executing the will, had probably resulted in brain disease; and a doctor called by the defendants said that he thought the “seizure” had merely affected the testator’s heart. The plaintiff called witnesses who spoke of their observation of the testator and the state of his mind. The defendants called witnesses who had transacted business with the testator and who had formed an opinion as to his business capacity. 70. The medical evidence appears to have been rather speculative; and the defendants were able to call two solicitors concerned with the making of the will. Their credibility was not in question. 71. The Full Court of Victoria refused a motion for a new trial. The judgment of that court reads in part:
72. The Privy Council, however, reviewed the whole of the evidence, and said:–
73. In Allcock v. Hall(18), the action was for an injunction to restrain the defendants, a firm of timber merchants, from trespassing on the plaintiff’s building. The allegation was that the defendants inserted logs into the wall of the building. The defendants pleaded that by reason of continuous user of the logs for more than 30 years they had acquired a prescriptive right. What the jury had to decide was a simple question of fact namely the length of time the logs had been inserted in the wall of the building. The jury found that no logs had been inserted prior to 1878 i.e. only 13 years prior to the hearing of the action. 74. Lindley L.J. said (p.445/447):–
75. In Paquin Ltd. v. Beauclerk(19), the headnote reads:–
On appeal to the House of Lords, this decision was confirmed. Lord Lorebum said:–
76. Skeate v. Slaters Ltd.(20) was an action for damages for breach of an implied warranty by the defendants to supply food reasonably fit for human consumption. The plaintiff’s allegation was that he had been made ill by eating food in the defendants’ restaurant. The defendants submitted that the plaintiff had made out no case. The trial judge thought that the case was very weak; but he declined to withdraw it from the jury. The defence called witnesses. The jury were unable to agree and were discharged. The defendants applied for judgment; but the judge refused the application; and the defendants appealed against the judge’s decision. It was not a motion for a new trial; but an appeal against the judge’s refusal to enter judgment for the defendants. 77. The Court of Appeal were unanimously of the opinion that the judge was right in holding that on the plaintiff’s evidence there was some case to go to the jury. Nevertheless, the defendants submitted that they should have judgment because the jury disagreed. The appeal was dismissed. Buckley J.J. referred to Lord Halsbury’s criticism of the decision of the Court of Appeal in Millar v. Toulmin(16); and said(p.440):–
I do not think that case is of much assistance to us in this appeal, except for a passage from the judgment of Phillimore L.J. at p.446, which reads:–
78. In Winterbotham, Gurney and Co. v. Sibthorp and Cox(12), the plaintiffs were a firm of solicitors at Cheltenham. At the request of the first defendant, they advanced £300 at 6% interest to a third party. The first defendant indorsed to the plaintiffs a bill of exchange drawn by him, accepted by the second defendant, payable to the order of the first defendant. The negotiations for the loan were conducted by the plaintiffs’ London agents – another firm of solicitors. The bill was dishonoured when presented for payment. It transpired that the bill was tainted with the fraud of the drawer; and the question for the jury was whether the plaintiffs were indorsees for value without notice of the fraud. 79. Partners from both firms of solicitors gave evidence that they knew nothing of the fraud or the circumstances under which the bill was accepted by the second defendant. Their evidence does not appear to have been impugned in any way; and no fact was elicited to throw doubt on the good faith of the plaintiffs. Nevertheless, the jury answered in the negative the question: “Do you find that the plaintiffs gave value for the bill in good faith?” 80. The Court of Appeal took a firm line. Bankes L.J. said:
81. Counsel had submitted that the most the Court of Appeal could do was to order a new trial. The Court rejected this submission. Swinfen Eady L.J. said (p.630):–
And at p.632 Swinfen Eady L.J. said:
82. I do not think that the decision in Mechanical and General Inventions v. Austin(21) adds anything to what has been already said. In that case judgment was given in favour of the plaintiffs (appellants). The Court of Appeal set aside the finding by a jury that there was an agreement between the appellants and the respondents (defendants) giving the latter an option for a licence under letters patent. The House of Lords upheld that decision. Lord Wright, however said this:
83. Mr. Zimmern submitted that whatever the position may be in England, in Hong Kong the verdict of a jury, at any rate in a civil case, should be given no more weight than the decision of a judge sitting alone. He argued thus:
84. The reasons usually given for the fact that it is much more difficult to upset the verdict of a jury than the decision of a judge sitting alone are: (1) that juries do not give reasons and therefore courts of appeal have a very imperfect knowledge of how they arrive at their decisions and (2) as regards simple questions of fact, 12 heads are better than one. 85. As regards the second of those two reasons, logically, and in the absence of authority, I would have thought that the unanimous verdict of 12 persons should be given more weight and value than a unanimous verdict of 7 persons, and very much more weight and value than a majority verdict of, say, 4:3; and if, in the opinion of 3 judges of the Full Court, a jury has returned a perverse verdict by majority, it does seem illogical that this Court should feel as inhibited as the English Court of Appeal does as regards setting aside a unanimous verdict of 12 persons. 86. However, Mr. Wright for the respondent company, cited West India Electric Co. Ltd. v. Roberts(22). This was an appeal to the Privy Council from the Appeal Court of the Supreme Court of Jamaica. Section 32 of the Jamaica Jury Ordinance Chapter 186 reads:–
87. The respondent had obtained a verdict for damages against the appellants. The Appeal Court was of the opinion that the damages were excessive; and an order was made for a new trial on the question of damages alone. There was a statement in the judgment to the effect that the verdict as to damages was a verdict of the majority. Lord Buckmaster, giving the opinion of the Judicial Committee, said (p.1028) that, without further explanation, that was
Mr. Zimmern submitted that in this passage, their Lordships were merely pointing out that no distinction should be drawn between unanimous and majority verdicts; but that it leaves open the question whether this Court should say that the unanimous verdict of a jury of seven persons in Hong Kong should be regarded as equal in weight and value to the unanimous verdict of a jury of twelve persons in England, and whether this Court should adopt in toto the principles which, in the past, have guided the English courts in reviewing the verdicts of juries. Of course, Mr. Zimmern’s submissions concerned, and concerned only, the verdicts of juries in civil matters. 88. The difficulty as I see it is this: s.26 of the Jury Ordinance requires that a jury be asked to disclose in open court by what majority they are agreed. This is essential for the proper administration of criminal justice. It is not essential as regards a civil action. Nevertheless, s.26 draws no distinction between criminal and civil matters. Even in a civil action s. 26 requires that the jury be asked by what majority they are agreed. That being so, if this Court were to adopt the principle that a majority verdict should have less weight and value than a unanimous verdict, we would be forced to formulate some sort of scale of values, that is to say that a 5:2 majority verdict would be given more weight than a 4:3 majority verdict and so on. Furthermore, if we are enjoined to give a majority verdict (even one of 4:3) the same weight and value as a verdict that is unanimous because the law permits the courts to accept a majority verdict, it is difficult to see on what basis this Court could say that the unanimous verdict of a jury of 7 persons should have less weight and value than the unanimous verdict of a jury of 12 persons when the law says that the Hong Kong jury shall consist of 7 persons. 89. In my view, in the present state of the authorities, this Court is bound to deal with an appeal from the verdict of a jury in a civil matter in accordance with the principles which guide the English Court of Appeal in such matters. 90. I now propose to consider certain aspects of the evidence relating to the jury’s answers to questions 1, 2, and 3 of the first set. 91. In cross-examination, Raymond Chow admitted that the appellant company’s two films were well-known in Hong Kong, and the jury answered question 3 in the affirmative. They could hardly have done otherwise. The evidence was overwhelming. The films were extensively advertised in both the English and Chinese press and over Commercial Radio as well as by bill boards, hoardings, synopses, etc.. In each case the amount spent on newspaper advertising was in the region of $30,000; and the total amounts spent on advertising (including newspaper advertisements) were as follows:–
Gross takings were as follows:– The One-Armed Swordsman
Return of the One-Armed Swordsman
92. Owing to the fact that the appellant company did not have a proper computer in 1967, there was no evidence as to how many seats were sold during the first run of the One-Armed Swordsman in 1967. However, there was evidence as to the number of seats sold in respect of the re-issues of that film and in respect of the first run and the re-issues of the Return of the One-Armed Swordsman. The figures are as follows:–
93. Although the price of cinema tickets rose to a certain extent between 1967 and 1969, we can get a rough idea of how many tickets were sold in respect of the One-Armed Swordsman. If 529,732 seats were sold during the first run of the Return of the One-Armed Swordsman (which grossed $1,109,850.90), the average price of a seat was $2.43. The first run of The One-Armed Swordsman in 1967 grossed $1,025,809.50. If we take $2.43 as the average price of a ticket, the number of seats sold during the first run was in the region of 455,000. Therefore it would appear that prior to January 1971, approximately 663,000 seats were sold in respect of The One-Armed Swordsman and 709,274 seats were sold in respect of the Return of The One-Armed Swordsman – a gross total of 1,372,274 seats. 94. At all material times the population of Hong Kong was just under 4 million. 663,000 is 16½% of 4 million; and 709,274 is 17.7% of 4 million. It is known that a fairly large proportion of the population of Hong Kong are cinema-goers, although no figures are available. If we say that 50% of the population might conceivably be classed as regular cinema-goers (i.e. 2 million) and if we assume that noone saw the films more than once and everyone who bought tickets saw the films, we get the staggering result that between 1967 and 1970, 31% of the cinema-going public of Hong Kong saw the film The One-Armed Swordsman and 35.4% saw the film Return of the One-Armed Swordsman! 95. It is interesting to compare the above gross-takings with the following figures in respect of 8 of the appellant company’s films produced between 1961 and 1968.
96. As I have said, The One-Armed Swordsman was the first film produced by the appellant company to “break” the $1 million mark as regards gross-takings for a first run; and the unchallenged evidence was that, prior to the showing of this film, no other locally-produced sword-play drama had grossed $1 million on a first run. Thereafter, it appears that the appellant company frequently achieved this result, especially after the Return of the One-Armed Swordsman was produced, as the following figures show:–
97. Clearly, the advent of The One-Armed Swordsman had a very considerable impact on the cinema going public and it enhanced very considerably the appellant company’s reputation as a producer of films. In these proceedings they proved beyond a shadow of doubt that their 2 films (The One-Armed Swordsman and Return of the One-Armed Swordsman) were very well-known in Hong Kong. 98. Towards the end of 1970, the appellant company produced another film called “The New One-Armed Swordsman”. David Chiang was the star swordsman in it; but it is common ground that he did not play the part of the mythical character Fang Kang. The part played by Chiang was quite different. 99. Nevertheless, owing to the very great publicity which had been given to the Zatoichi film, obviously the appellants feared that it would be a big box-office draw to the detriment of their own film. This was particularly so when (about 23rd January 1971 or thereabouts) the respondent company, in their press advertisements of the forthcoming Zatoichi film, began to make references to the appellants’ two previous films in which Wang Yu had starred, and to suggest that the Zatoichi film would be very much better than “The One-Armed Swordsman”. The following are a few samples of the kind of thing which was published by the respondent company:–
100. The appellants’ allegation is that in these advertisements the respondent company was claiming that Wang Yu, playing “Duk Bay Doe” in the Zatoichi film, was the genuine “One-Armed Swordsman” – the appellants’ character, and that his portrayal of this character in the Zatoichi film was better than in the appellants’ films. 101. The appellants countered with their advertisements; and towards the end of January 1971, there was virtually an advertising “war” between the parties. This continued into early February. A sample of the kind of thing published by the appellant company on 6th February is this:–
Here, they are saying to the public, in effect:
102. This was followed up by an article written by Chang Cheh which was published in a Chinese newspaper on 10th and 11th February 1971. This reads in part:–
103. The existence of this article was discovered by the respondent company when Chang Cheh was being cross-examined. Mr. Wright said that it was largely because of this article that he decided to plead abandonment; and a great deal of time was spent during the trial arguing that, even if the character Fang Kang was a distinctive character, the appellant company had abandoned any rights to it by 23rd January 1971. 104. It is difficult to know what the jury meant by their answer (“no”) to question 4 of the first set. The question is badly framed. As Mr. Wright said, it should really have commenced with the words: “If your answer to question 1 is in the affirmative ....” But having answered question 1 in the negative, I suppose the jury had no alternative but to answer question 4 in the negative. As Mr. Wright said, counsel for the respondent company would have been in trouble if the jury had answered question 4 in the affirmative! 105. At any rate, from what Mr. Wright and Mr. Yu both said, it is clear that this court is not concerned with the question of abandonment. My note of Mr. Wright’s address to us on this aspect reads:–
With these remarks, I am in full agreement. Chang Cheh’s article of 10th February was nothing more than a part of the advertising “war” between the parties. It was intended as an advertisement of “The New One-Armed Swordsman”, and nothing more. And, in any event, nothing an employee such as Chang Cheh might say could bind the appellants in any way. 106. Turning now to the question of distinctiveness. Paragraphs 7-9 of the statement of claim read:–
107. The evidence of the director, Chang Cheh, was that he wished to create a character different from any sword-play heroes in films produced prior to 1967; that he conceived the idea of a story which would involve the hero losing his right arm and thereby being forced to re-learn the art of sword combat with his left arm; that he would fight with a broken sword which he would inherit from his father; that unlike the heroes who usually appear in sword dramas, this character would not wear gay apparel, but would be dressed simply; that he would have a rough, unkempt appearance in that his hair would be unadorned and he would be unshaven. 108. Chang said that although these basic ideas were his, he got a novel writer called I Kuang to write a story around the idea; that I Kuang called the hero Fang Kang; that he (Chang Cheh) then re-wrote the script for purposes of film production, using much of the materials in the story written by I Kuang; and that he (Chang Cheh) gave the film the title “Duk Bay Doe”. As regards the Return of the One-Armed Swordsman, Chang Cheh wrote the script himself and named the film “Duk Bay Doe Wong”. 109. There is no doubt at all that by far the most important part of the evidence in this case is the three films. The jury saw them. We saw them. Indeed I do not see how any tribunal could deal satisfactorily with an appeal of this nature without seeing the films because it all boils down to this: what impression did the appellant company’s films make on the average cinema goer, and what was the reaction of the ordinary unwary cinema goer when he saw the respondent company’s film? The law of passing off is tolerably clear; it was accurately stated to them by the trial judge; and in any event there is no appeal from his very careful summing-up. 110. In all three films there is a great deal of sword-fighting. In the appellant company’s two films, Fang Kang is unquestionably the hero. In the first film, after he has learned the art of one-arm combat, he is always victorious. Equally, in the second film, except for his encounter with the chief demon (who fights long and hard and resorts to some rather dubious methods before he is overcome) there is never any doubt but that Fang Kang is going to win. And his skill in swordsmanship is not that of any ordinary mortal. He can take on 20 or more armed opponents and write them all off with a few dexterous strokes. He avoids the murderous strokes of his adversaries simply by leaping 6 feet or so in the air. Indeed, he can leap 40 or 50 feet in the air without the slightest difficulty. In one scene in the Return of the One-Armed Swordsman, he takes avoiding action by leaping up on the top of some tall bamboo trees; and later he finds no difficulty in cutting down an area of the bamboo forest with a few sweeps of his sword. 111. In addition to his feats of swordsmanship, clearly Fang Kang is a very formidable individual. In one scene, he strikes his hand against a tree leaving his palm print on the trunk! In another scene, he throws a chopstick at someone with such force that it goes through the victim’s skull. 112. All these super-human antics (achieved largely by means of trick photography) were part of Fang Kang’s act. But there was no evidence as to whether behaviour of this kind is common in sword-play dramas generally. Certainly it was not pleaded that the appellant company created this kind of act; and I gather that fantastic feats of one kind or another are common in sword-play dramas. But the point is this: In the appellant company’s films, Fang Kang, with one arm (his left) and with half a sword, is able to perform all the remarkable feats which previous swordsmen may have been able to achieve with 2 arms and a full-length sword. 113. Of course, fang Kang is always a “goodie” fighting against, and beating, the “baddies”. 114. In the respondent company’s film, Wang Kang (played by Wang Yu) indulges in the same sort of mythical feats. In one scene, a large number of Samurais corner him in a hut and set it on fire; but he finds no difficulty in jumping clean through the roof of the hut and fighting his way out to safety. In another scene he jumps 40 or 50 feet up to the boughs of some trees. In other respects, he is just as formidable as Fang Kang. In one scene he splits a thick concrete slab with one blow of the palm of his hand. There are quite a number of acts of this sort in all three films. 115. Zatoichi, the blind knight, is also invariably victorious. Despite his blindness, he is always able to kill his adversaries, no matter how numerous they are; but he fights quite differently from Wang Kang; and, as regards his encounter with Wang Kang at the end of the film, there are apparently 2 versions. Although both swordsmen are injured, in the version shown in Japan there is a suggestion that Zatoichi is probably the victor, whereas in the version shown in Hong Kong there is a suggestion that Wang Kang is the victor. 116. As I have said, Fang Kang’s father is associated with the Golden Sabre School; and the broken sword which Fang Kang inherits is a Golden Sabre. Between the blade and the handle, there is a rectangular golden-coloured guard, and there is a golden tip to the handle. The sword is broken at an angle; and when not in use it is enclosed in a simple sheath, the sort of thing that could readily be made by a peasant in a village. Nothing ornate about it. It is true that in The One-Armed Swordsman on one or two occasions Fang Kang carries a long sword in order to fool those adversaries who use the sword-lock technique. But his main weapon throughout this film and throughout the sequel (Return of the One-Armed Swordsman) is the broken sword. 117. In the Zatoichi film, Wang Kang’s right arm is missing. He fights with his left arm; and with a broken sword and sheath virtually identical to Fang Kang’s sword; and he performs the same kind of mythical feats as Fang Kang did in the appellant company’s two films. Wang Kang was also on the side of good and fighting against the forces of evil. 118. Therefore, cinema-goers attending the respondent company’s film in January/February 1971 saw not only Wang Kang (played by Wang Yu) perform the same kind of super-human feats of swordsmanship etc. as they had seen Fang Kang (played by Wang Yu) perform in The One-Armed Swordsman and Return of the One-Armed Swordsman. They saw that Wang Kang’s right arm was missing and that he fought with a sword (held in his left hand) which was identical in all respects to the sword used by Fang Kang in the appellant company’s two films. 119. Pausing here. It was suggested to Chang Cheh that the idea of a One-Armed Swordsman was not really his idea. He admitted that he had read a novel called “San Diu Hup Lui” (“Fairy Falcon Swordsman Couple”) by one Kam Yung in which the hero’s right arm is slashed off by the daughter of the leading swordsman of that time; and that he learned to fight with his left hand, wielding a full-length sword. Chang admitted that he might unconsciously have been influenced by this novel; but I do not think that anything turns on that. It was not suggested that the character in this novel bore any other resemblance to the character Fang Kang or that the novel had ever been made into a play or a film. 120. I may mention briefly the other characteristics relied on by the appellants as they are less important than the broken sword and the “one-arm”; but nevertheless they all play a part in the build-up of the character. Firstly, the short beard, or stubble, which Wang Yu had when playing the parts of Fang Kang and Wang Kang, was not natural. It was make-up. The length of the hair varied to some extent at different times throughout the 3 films; but not to any great extent, except that in the respondent company’s film he had side-burns. But I am in no doubt at all that the stubble on Wang Kang’s face would have tended to remind the average cinema-goer of the stubble on Fang Kang’s face. 121. As regards the clothing worn by Fang Kang. It is true that he wore a leather jacket at the beginning of The One-Armed Swordsman. But for the remainder of the film, he wore the dark sombre clothes with the flowing sleeves which Chang Cheh said he had designed for him. In the Return of the One-Armed Swordsman, he wore the same clothes at the commencement of the film during the period when he was in the country with his peasant wife. But when he eventually decided to lead his juniors into battle against the 8 demons, he and his colleagues wore a sort of simple white uniform. But, there is one scene where he day-dreams and imagines himself back with his wife and child; and it is noticeable that he is again dressed in the simple black clothing he wore in the earlier part of the film. 122. In the respondent company’s film, Wang Kang wears dark clothes and there are many scenes in which his general appearance is very like that of Fang Kang in the appellant company’s films. 123. As regards the hairstyle, the most that can be said on behalf of the appellant company’s allegations is that Fang Kang’s bun was never decorated by means of a ribbon as was frequently done by some other swordsmen. I would add, however, that the respondent company in their pleadings impliedly admit that the hairstyle, sword and beard of the swordsman Wang Kang are similar to the hairstyle, sword and beard of Fang Kang in the appellant company’s films. 124. In my view, there is substance in the appellant company’s allegation that the pose adopted by Fang Kang at certain junctures during the course of a fight was a distinctive feature of his fighting. Wang Kang adopted precisely the same sort of pose. Taken by itself, no doubt it is a small point; but having seen Fang Kang once or twice, the average cinema-goer would, in my view, tend to associate this particular stance or pose with the character Fang Kang. 125. A Mr. Wong Fu-ling was in charge of the music department of the plaintiff company from 1961 till he left in July 1970. He selected the music for The One-Armed Swordsman in 1967; and part of the music was taken from an American film called Duel at Diablo. This music is played twice in The One-Armed Swordsman. It is first introduced after Fang Kang’s arm is cut off by his master’s daughter and one hears it as he staggers through the forest alone until he falls into the barge and is rescued by the peasant girl. It is not heard again until the end of the film after Fang Kang has killed “Long-Armed Devil” and he goes off to the country with his wife. 126. It is by no means the only music in the film. But, in my view, if any ordinary cinema-goer remembered any of the music at all, it would be this theme. It is what might be described as action music; and the insistent beat from the percussion and brass instruments of the western-type orchestra certainly left an impression on my mind, and I think it might well have left an impression on the mind of the average cinema-goer. 127. The respondent company’s film began with this music! And it was played loudly! And the music was played again on two other occasions during the Zatoichi film. Unquestionably this would have tended to remind the average cinema-goer of the plaintiff company’s two films. According to the evidence of Raymond Chow, he consulted Wong Fu-ling; and Wong selected this music for the Zatoichi film. 128. The respondent company’s submission was that there had been many other one-armed swordsman like Fang Kang and that there was nothing distinctive about the appellant company’s character; and in paragraph 9 of their defence they made reference to 4 films involving the adventures of mythical swordsmen with one arm. The onus of proof was on the respondent company to prove that the heroes in those films were characters having substantially the same characteristics as Fang Kang. They did not make any serious attempt to do so. Most of the information about the films was elicited by Mr. Zimmern’s searching and thorough cross-examination of Raymond Chow. The first of the 4 films referred to by the respondent company in their pleadings was a Japanese film called “Tange Sazen”. This film was shown in Hong Kong between 2nd and 9th October 1965. There was nothing in the film to suggest that hero was a mythical swordsman from China. In fact, he was a Japanese. His left arm was missing; and he fought with his right arm; he was also blind in one-eye. There was no evidence that the actor or the character he portrayed (if he did portray any particular character) bore any resemblance to Fang Kang. 129. The next film referred to by the respondent company in their defence is called “The Mad Mad sword”. This was a film produced by another film company (Cathay). It was shown in Hong Kong from 11th to 19th September 1969, i.e. 2 years after the first run of “The One-Armed Swordsman” and 8 months after the first run of “Return of the One-Armed Swordsman”. It was a satire on all famous film swordsman including “The One-Armed Swordsman” (the appellant company’s character.) In the film he was called “Duk Bay Doe”. Obviously, it was pointless to include “Duk Bay Doe” in such a film unless he was well-known. A film company would not be so foolish as to produce a satirical comedy concerning characters about whom the public knew nothing. 130. The next film referred to by the respondent company was called “Unparalleled Judo Knife”. This was produced in Taiwan about 1970 – again long after the first run of “The One-Armed Swordsman” and “Return of the One-Armed Swordsman”. The Chinese name was not a translation of the English name, or vice versa. It was “Duk Bay Hung Sau Doe”. “Hung Sau” means “empty handed”. So, the literal translation of “Duk Bay Hung Sau Doe” is “one arm empty-handed sword.” 131. There was an actor in the film who had one arm missing. But he did not fight with a sword at all. He fought with his hand. When it was pointed out to Raymond Chow in cross-examination that the character “Doe” was superfluous in the name of this film, the only thing he could think of saying in reply was:–
A much more likely explanation would be that this Taiwanese film company were simply trying somehow to get the characters “Duk Bay Doe” into the name of their film! 132. The fourth film referred to by the respondent company was called “The Great Duel”. This film was produced in Taiwan. It was shown in Hong Kong from 19th to 25th November 1970, i.e. long after the appellant company’s two films. Kwai Sin So is a well-known character in Chinese films; and this film was a Kwai Sin So film. The Chinese name which this company gave to their film was: “Kwai Sin So Duk Bay Doe Wong” – not a translation of “The Great Duel”. However, they managed to incorporate the name of the appellant company’s second film (“Duk Bay Doe Wong”) preceded by the characters “Kwai Sin So”! And, apparently, this is how they justified the inclusion of the characters “Duk Bay Doe Wong” in the name of their film: In the last reel of the film one of the swordsmen, for no apparent reason, cuts off one of his own arms and fights a duel with Kwai Sin So! The Chinese title bears no relation to the story of the film. Clearly, this Taiwanese company were simply trying to “cash-in” on the reputation of the appellant company’s second film “Duk Bay Doe Wong”. 133. Turning now to the names of the films. Raymond Chow said:
It is hardly surprising that Chow was asked why he did not call his one-armed swordsman in the Zatoichi film “kim hak” or “kim hup”. His answer was:
Which character? On Chow’s own evidence “Duk Bay Doe” was not a name which would specially conjure up ideas of gallantry and skill in individual combat. “Kim hup” or “kim hak” does that better. Why then choose “Duk Bay Doe” as part of the name of the Zatoichi film? As Mr. Zimmern said, the respondent company were unable to show that the characters “Duk Bay Doe” had ever been used in mythology, novels, any other kind of literature, or in any other film prior to the film produced by the plaintiff in 1967. 134. If the respondent company had wished to distinguish the Chinese name of their film from those of the appellant company’s films, there appears to be no reason at all why they should not have called their one-armed swordsman “duk bay kim hap”, or “duk bay kim hak”, more especially as “kim hak”, on their own evidence, suggests gallantry and skill in individual combat. They might also have called it “darn bay doe hup”. 135. In regard to the names of the respondent company’s film, it is of interest to see what happened in Singapore. Under an agreement dated 20th October 1970, Wing Luen authorised the respondent company to distribute the Zatoichi film in Hong Kong, Singapore and Malaysia. The film was advertised in Singapore by large posters on which appeared in the Chinese characters (i.e. Duk bay doe tai tsin mang hup – ‘one arm knife big fight blind knight’) together with the English name “Zatoichi and the One-Armed Swordsman”. 136. In the original statement of claim served on 1st February 1971 the appellant company had claimed a “substantial reputation in the words ‘One-Armed Swordsman’ 獨臂刀 [“duk bay doe]”. After the summons for the interlocutory injunction was taken out, the posters in Singapore were changed. The English title of the film was changed to “Zatoichi and the Roving Swordsman”! And the Chinese title was changed from “Duk bay doe tai tsin mang hup” to “Darn doe hak tai tsin mang hup.” “Darn” means “one”. But it also means “single”; and whereas “duk bay” conjures up a picture of a swordsman who has one-arm, “darn doe hak” means either a swordsman who fights single-handed (i.e. by himself) or who uses one knife. In other words, the picture of a swordsman with one-arm vanished from the name of the respondents’ film in Singapore! 137. One naturally asks oneself: why the sudden change? All Raymond Chow could say was that his Singapore agents wanted it that way. Why should a community which is 80% Chinese want to change the name at all? The appellants suggest, and in my view with ample reason, that the respondent company and their agents in Singapore were afraid that the appellant company might institute a passing off action in Singapore. 138. Chang Cheh chose the Chinese name for the Return of the One-Armed Swordsman. He said he simply repeated the name “Duk Bay Doe” and added the character Wong. His evidence was:–
Counsel for the respondent company submitted to the jury and to this Court that the second film could not be said to be a film dealing with “Duk Bay Doe” at all. My note of his submission was:–
139. It was quite remarkably the lengths to which the respondent company would go in their endeavour to demonstrate that there was nothing distinctive about the characters “duk bay doe”. Yet they themselves could not resist using these characters in the name of the Zatoichi film, although there were perfectly good alternatives; and their Singapore agents actually did change over to alternative characters – and that for no apparent reason except (as the appellants suggested), the fear that the appellants might institute proceedings in Singapore. 140. Of course, “Duk Bay Doe Wong” may be translated into English as “King of Swordsmen with one-arm”. The fact remains that the three characters “Duk Bay Doe” formed the main part of the Chinese name. There is no getting away from that. 141. As regards the names “Fang Kang” and “Wang Kang’, my note of the submission of Mr. Yu, counsel for the respondent company, reads:–
142. On that aspect of his submission, I suppose Mr. Yu came as near as he dare to saying that three European non-Chinese-speaking judges were quite unfit to decide an appeal of this sort. Speaking for myself, this submission did not impress me in the slightest. I am quite well aware that Chinese is a very inflective language. The same characters may be pronounced, with slight changes of tone up or down, so as to mean entirely different things; but here we are dealing with two personal names – “Fang Kang” and “Wang Kang”. It is also common knowledge that Romanization is a rather poor attempt at reproducing the actual Chinese sounds. For example, throughout this judgment I have Romanized the character 獨 as “duk”. But I notice that in certain parts of the evidence the court reporters have Romanized it as “dok”. In fact the Chinese sound is nearer to “u” than to “o”. On the other hand, it is neither “u” nor “o”. 143. But even if we allow for the fact that the “a” in “Wang” may sound a little different from the “a” in “Fang”, (and there was no evidence of this) it is the whole name that one listens to; and unquestionably “Wang Kang” might well remind a cinema-goer of “Fang Kang”, more especially as Wang Yu played the part of Wang Kang and the part of Fang Kang. Indeed, the name “Wang Kang” appears to be a cross between the name “Wang Yu” and “Fang Kang”. 144. Furthermore, as regards counsel’s argument that the Chinese audiences and the Chinese members of the jury heard the Chinese dialogue in the film, counsel knows perfectly well that the dialogue in all three films is in Mandarin; and, as Mr. Zimmern said, the proportion of Mandarin-speaking persons attending these film performances is relatively small. The language of Hong Kong is Punti (Cantonese). The producers of all three films were well aware of that. Hence the reason for the Chinese sub-titles alongside the English sub-titles so as to give the Hong Kong audience some idea of what the story was about. 145. Furthermore, it was a mere chance that there were six Chinese jurors on this jury. The jury list includes many Europeans and other persons of Caucasian race, including Portuguese and Americans, and also Indians, Pakistanis, persons of mixed blood and others. The language of the courts is English; and jurors are chosen for their knowledge of English, not for their knowledge of Chinese; and this Court is quite capable of understanding the record for the purpose of deciding this appeal. 146. In January 1971 the respondent company arranged for a synopsis of the Zatoichi film (in Chinese and English) to be printed in Hong Kong. According to this document, the story in the film ends with a suggestion that Zatoichi wins the fight. This is how the film ended when shown in Japan. As I have said, the film ends in Hong Kong with a suggestion that Wang Kang, The One-Armed Swordsman from China, wins the fight. Obviously, someone had made a mistake. If the synopsis was in Japanese when it arrived from Japan (and Raymond Chow was not very clear about this) the person in the respondent company who translated it should have noticed that the ending of the film as shown in Hong Kong did not tally with the synopsis which was being issued. The mistake was noticed some time later; and early in February 1971 a further synopsis was printed by the respondent company; and in this document the suggestion is that Wang Kang, the one-armed swordsman from China, wins the fight. 147. However, what we are concerned with here is the fact that in both the Chinese and English versions of the first synopsis the name “Wang Kang” does not appear at all. According to these documents the story of the film is about “Fang Kang, the one-armed swordsman from China”! 148. The writ was issued on 26th January and the statement of claim was served on the respondent company on 2nd February 1971. The summons for the interlocutory injunction, together with the affidavit of Ricardo Uy, the Secretary of the appellant company was served on 8th February. In this affidavit, Uy made reference to the appellants’ use of the name “Fang Kang” for their screen character. 149. When the writ was issued, the appellants had not seen the Zatoichi film. They were working on the respondents’ advertisements only. However, there is no evidence that in the film as first shown on 23rd/24th January, the name “Fang Kang” appeared, or that it was heard on the sound track. What is significant, however, is that in the second synopsis printed early in February, the name “Fang Kang” was changed to “Wang Kang”. 150. Raymond Chow could give no satisfactory explanation of how the name Fang Kang got into the original synopsis. He said that it was a translator’s error. But he also said that the name “Fang Kang” was not used in Japan. What, then was being translated in Hong Kong? Either the name “Fang Kang” was being used in Japan and the Hong Kong translator simply translated the Japanese synopsis, or if the name “Wang Kang’ appeared in the Japanese synopsis, it would appear that the original intention was to use the name Fang Kang in Hong Kong . 151. The letters “S.B.” or “Shawscope” invariably formed part of the appellant company’s advertisements of their films. The advertisements also included such words as “A Shaw Brothers Picture”. The respondent company began by doing the same sort of thing. Their advertisements included the letters “G.H.” and the words “Release thru. Golden Harvest”. But about 10th February, there was a sudden change in the form of some of the advertisements. The words “Release thru. Golden Harvest” disappeared; and later the letters “G.H.” also disappeared. 152. At the trial, the respondent company’s submission was that there could not possibly have been any confusion in the minds of the cinema-going public because the fact that the respondent company were the exhibitors was clearly stated in all advertisements. That being so, one wonders why there was this sudden change in the form of the advertisements about 10th February. 153. The explanation given by Raymond Chow was that the respondent company advertised in Chinese newspapers only, and that the changes in the form of the advertisements took place in English papers such as the China Mail and the South China Morning Post, and that it must have been those in charge of the managements of the various cinemas who had themselves changed the advertisements by omitting the letters “G.H.” and the words “Release thru. Golden Harvest” from 10th February onwards. 154. As to that, no witnesses from the cinemas were called to explain the sudden change; and one naturally asks oneself 2 things: (1) if the respondent company were not expecting to benefit from English advertisements, why bother giving their film an English title? (2) What had the cinemas got to gain by omitting the letters “G.H.” and the words “Release thru. Golden Harvest” from advertisements without the respondent company’s authority or direction? They were not being sued by the appellants. 155. The jury should have been perfectly well aware of what the issues were. The judge explained to them that in a passing off action it was unnecessary for the plaintiff to show that the defendant intended to deceive the public or that the public had in fact been deceived; and that what had to be shown was that there was a likelihood of some members of the public being deceived. He explained to them the meaning of goodwill; and said that although the appellant company’s allegation was that it was the respondent company’s film which was being passed off as that of the appellant company, the substance of the appellant company’s allegation was that the respondent company had stolen the appellant company’s character. He then said that it was not necessary that cinema-goers who were likely to be confused or deceived should know anything at all about Shaw Brothers; and that the question for the jury was whether the ordinary, reasonable, but unwary cinema-goer might think the character in the Zatoichi film was the same character as the one who appeared in the appellant company’s two films. He then said that it was not enough that the respondents had been at pains to claim in their advertisements that the Zatoichi film was theirs and that it was a better film than the appellants’ film if, nevertheless, the cinema-going public were likely to be confused. 156. He then proceeded to deal with the question of reputation and said:–
He then said that it did not matter how long it took the appellant company to acquire their reputation, if they did acquire it, and that it depended entirely on the probable reactions of the public to the appellants’ two films because “reputation depends upon the nature of the business and the success of the business and the publicity given to the business.” [Standard v. Reay(23)]. 157. The judge then turned to the question of distinctiveness and said:
He then said:–
158. The judge then dealt with each of those items seriatim. 159. He then turned to the question of reputation and said:
And he then referred to the evidence of advertising and to the figures in respect of gross takings. 160. The judge then turned to the question of abandonment, which was a big issue in the court below, but which the respondents now say they are not pursuing any further. 161. The judge then turned to the question of confusion and said:–
The judge then went over the various alleged elements which made up the appellant company’s character [Duk Bay Doe, Fang Kang, Chinese swordsman without a right arm, clothes, beard, hair, sword, pose and music]. He then dealt with the various advertisements (“here comes the genuine brand, etc.”); and, as regards the disappearance of the name “Golden Harvest” and the letters “G.H.” from the respondents’ China Mail advertisements from 10th February onwards, the judge said:–
162. The judge then dealt with deliberate intent to confuse and said that the appellant company relied upon all the evidence he had been discussing as showing that “it is impossible that the respondent company can have had any other intention: they cannot possibly have overlooked all these similarities and they must have intended to cause confusion”; and he continued:–
163. The judge then dealt with the two synopses issued in January and February 1971; and he said:–
164. He then dealt with the change of name of the film in the Singapore posters in February 1971; and said:–
165. In his closing address to the jury, Mr. Yu’s submission on behalf of the respondent company was to the effect that:
That sort of advocacy is frequently effective with juries. But it completely misses the point of the appellant company’s case, which was: It is the combined effect of these various marks which make our character. I think Mr. Zimmern put the matter rather effectively before us. He said:–
166. It is agreed on all sides that the most important part of the evidence in this case is the three films; but it is not what the jury thought about them that matters. It is what the jury thought (or ought to have thought) the public would think – that is to say if this jury stopped to think about the matter at all. 167. Now, as I have said, we saw those films; and we are therefore in a very much stronger position than a Court of Appeal ordinarily is. So far as the films are concerned we are really in as good a position as the jury was. Very little indeed turns on the credibility of witnesses. All the factual evidence about gross receipts and the number of persons who saw the appellant company’s two films went unchallenged. Furthermore, the jury was not asked to give a general verdict but to answer specific questions; and a Court of Appeal is always in a stronger position when dealing with a jury’s answers to a number of specific questions than it is when dealing with a general verdict. 168. Despite the ingenious arguments of counsel in regard to the name Duk Bay Doe, he could not get over the fact that the appellant company was the first to think of this name; that it was not a descriptive name; and that, in any event, by 1970, in the eyes and minds of a large section of the cinema-going public, “Duk Bay Doe” was synonymous with the appellant company’s character, Fang Kang. 169. In my view the relevant evidence was to all intents and purposes, one way. Unquestionably, the jury’s answers to questions 1 and 2 in the first set should have been in the affirmative. No body of men viewing the evidence reasonably, could have come to any other conclusion. Apart from their unreasonableness in answering “no” to the 1st question, it seems incredible that they could have answered “yes” to question 3 and “no” to question 2, unless they chose to take the words “said character” in question 2 as meaning “said distinctive character”, and not “Fang Kang”. But if the court had intended them to read it like that, the question would have been framed thus: “If the answer to question 1 is in the affirmative ......”. The question as framed clearly meant: “Do you find the character called Fang Kang well-known in Hong Kong”. The appellant company’s two films were all about “Fang Kang” or “Duk Bay Doe Fang Kang”. 170. Although we are not directly concerned with their answers to the second set of questions, the sheer perversity of this jury is perhaps best seen in their answer to question 3 in the second set. One of the two characters in the Zatoichi film was “Wang Kang the One-Armed Swordsman from China”. He was so described in the respondent company’s own synopses. The words “The One-Armed Swordsman” formed part of the English title of the film. “Duk Bay Doe” formed part of the Chinese title. This jury were asked whether they found a character in Zatoichi film described as “The One-Armed Swordsman” (“Duk Bay Doe”) and, apparently because Wang Kang was not addressed as “Duk Bay Doe” in the film itself but as “Wang Kang”, the jury answered the question in the negative! The whole film was about the two characters “Duk Bay Doe” and “Mang Hup”! 171. The question of confusion was considered in Dunhill v. Bartlett & Bickley(24). Russel J. said (p.438):–
172. In his closing address, Mr. Skone James said:–
With that observation I am in full agreement. Having regard to the fact that they were employing Wang Yu to play the same kind of part in the same sort of film, it behoved the respondents to be specially careful that the public would not confuse their one-armed swordsman with the appellants’ one-armed swordsman, Fang Kang. In fact, they copied the name “The One-Armed Swordsman” (“Duk Bay Doe”) lock, stock and barrel; and they did not make the slightest effort to change their character except as regards the slight change in the screen name of their character – Wang Kang instead of Fang Kang – and slight changes in the clothes he wore. 173. It was no accident that the characters Wang Kang and Fang Kang were so much alike. The plain truth of the matter is that Raymond Chow never gave the law of passing off a thought. As one report put it, his attitude was that Wang Yu would play the part of Duk Bay Doe “and Shaws can do nothing about it”. The evidence showed conclusively that there was a deliberate conspiracy on the part of Chow, Ho, Choi and Wang Yu to steal the appellant company’s character and use it to their financial advantage in the Zatoichi film. Their intention to do this was formed in May 1970, soon after they left Shaws’ employment to form their own company. 174. As regards the respondent company’s advertisements, it is no good their saying in effect:– “In most of our advertisements we disclosed our name as distributors of the Zatoichi film. Therefore the public could not have been confused.” If A copies B’s ideas, devices or gimmicks which so nearly resemble those of B as to be likely to deceive the public, it is no good his putting up a notice near the goods which he offers for sale to the effect that the goods so offered are made by B and not by him. But, apart altogether from that, the average cinema-goer looks at an advertisement to see the name of the picture. He doesn’t care who produces it, so long as it is a good story, or portrays a character whom he knows and likes and would like to see again. 175. In this case, the cinema-going public saw advertisements to the effect that “The One-Armed Swordsman” (“Duk Bay Doe”) who was well-known as such throughout the length and breadth of Hong Kong following his appearance in the appellant company’s films, was going to meet another well-known screen character Zatoichi in a life and death sword duel. 176. In Claudius Ash, Sons & Co. Ltd. v. Invicta Manufacturing Co. Ltd.(25), Earl Loreburn L.C. said (p.475):–
177. For myself, I am in no doubt at all that the jury’s answers to questions 5 and 6 were utterly perverse. How any body of men, viewing the evidence reasonably with unbiassed and unprejudiced minds could have honestly given those answers as well as the answers they gave to questions 1 and 2, passes my comprehension. It would not need many verdicts of this kind of make people, both inside and outside the legal profession, seriously question whether, in civil disputes the jury system is suitable for Hong Kong – at any rate in this type of case. The system could be improved to some extent by giving the Hong Kong judges the same discretion as was conferred upon their English counterparts by s.6(1) of the Administration of Justice (M.P.) Act 1933. 178. In my view the verdict and judgment in this case should be set aside. But the question arises as to whether we should put the parties to all the expense and trouble of a new trial. We have all the facts before us. A new trial would elicit nothing new – at least, it should not do so. The evidence is really all one way. For myself I would enter judgment for the appellant company now as regards prayers 2 and 3 of the claim for relief.
A. Zimmern (Deacons) for Appellant. L. Wright & P. Yu (Stephen Lo & Co.) for Respondent. ([2]) Bollinger v. Costa Brava Wine Co. Ltd. [1960] R.P.C. 16; [1961] R.P.C. 116; Vine Products Ltd. v. Mackenzie & Co., Ltd. [1969] R.P.C. 1 (2) Bollinger v. Costa Brava Wine Co. Ltd. [1960] R.P.C. 16; [1961] R.P.C. 116; Vine Products Ltd. v. Mackenzie & Co., Ltd. [1969] R.P.C. 1 ([3]) [1971] 1 A.E.R. at p. 562 ([5]) [1967] 3 A.E.R. at p.138 (5) [1967] 3 A.E.R. at p.138 (10) [1955] A.C. 370 (11) [1970] Supreme Court Practice p.773 note 59/2/2 (12) [1918] 1 K.B. at p.630 (13) [1881] 8 Q.B.D. p.176 (14) [1886] 11 A.C. p.152 (13) [1881] 8 Q.B.D. p.176 (14) [1886] 11 A.C. p.152 (15) [1895-99] A.E. Reports (Reprint) p.1091 (16) [1886] 17 W.B.D. p.603 (14) [1886] 11 A.C. p.152 (15) [1895-99] A.E. Reports (Reprint) p.1091 (16) [1886] 17 Q.B.D. p.603 (17) [1895] A.C. p.310 (18) [1891] 1 Q.B. 444 (19) [1906] A.C. 148 (18)[1891] 1 Q.B. 444 (20) [1914] 2 K.B. p.429 (12) (1918) 1 K.B. 625 (16) [1886] 17 Q.B.D. p.603 (16) [1886] 17 Q.B.D. p.603 (21) [1935] A.C. 346 (22) [1920] A.C. 1025 (23) [1967] R.P.C. 589 (24) [1922] 39 R.P.C. p.426 (25) [1912] 29 R.P.C. p.465 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||