FEDERATION INTERNATIONALE DE FOOTBALL ASSOCIATION AND ANOTHER v. THE EATERY LTD

HCA 1532/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1532 OF 2006

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D E C I S I O N

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Background

1.  This is the Defendant’s appeal against the orders of Master Hui made on 4 June 2007 dismissing the following three summonses of the Defendant:

(1)	the Defendant’s summons dated 21 February 2007 pursuant to Order 18 rule 12 of the Rules of the High Court (“RHC”) for, inter alia, an order that unless the Plaintiffs answer the Defendant’s request for further and better particulars as set out in paragraph 3(b) of the request (“Request”) annexed to the Defendant’s summons dated 23 November 2006 as amended pursuant to the order of Master de Souza dated 23 January 2007, the Plaintiff’s action be struck out (“Unless Order Summons”);
(2)	the Defendant’s summons dated 22 February 2007 pursuant to Order 24 rule 11 of the RHC for, inter alia, an order that the Plaintiffs do produce for inspection the agreement entered into between Infront WM GmbH and the 2nd Plaintiff dated 12 June 2003 referred to in the Answer to Request (“Production Summons”); and
(3)	the Defendant’s summons dated 19 March 2007 pursuant to Order 18 rule 12 of the RHC for further and better particulars of paragraph 2 of the Amended Statement of Claim (“2nd FBP Summons”).

2. This action is one of five related and similar actions commenced by the Plaintiffs against different defendants.  The other four actions are HCA 1533/2006, HCA 1534/2006, HCA 1537/2006 and HCA 1605/2006.  The facts in those five actions are similar and involve similar legal issues.  The summonses issued in this action are treated by the parties as “test cases”.

3. The Plaintiffs’ case is that the 1^st Plaintiff (“FIFA”) is the owner of the copyright subsisting in the broadcast of the 2006 FIFA World Cup events (“FIFA World Cup”) and the 2^nd Plaintiff is the 1^st Plaintiff’s exclusive licensee of the copyright in the region of Hong Kong.  They claimed against the Defendants, who are operators of bars and eateries in Wanchai, for broadcasting the FIFA World Cup without having taken out a licence from the 2^nd Plaintiff.  It is the Plaintiffs’ case that the Defendants received broadcasting signals which overspilled from South Africa with unauthorised devices and broadcast the FIFA World Cup in their bars and eateries.

The pleadings

4. The Plaintiffs filed a Statement of Claim (“SOC”) against the Defendant on 15 September 2006.  The Defendant filed its Defence on 9 November 2006.  Three days prior to filing its Defence, the Defendant initiated a series interlocutory applications for inspection and requests for further and better particulars.

5. The Plaintiffs pleaded in paragraph 1 of the SOC that the 1^st Plaintiff is the international governing body of the sport association for football and has the right to sanction and stage the FIFA World Cup, including all matches, the opening and closing ceremonies and the qualification draws thereof and to license all rights to transmit, broadcast and exhibit such events by any means.  The Defendant admitted that the 1^st Plaintiff is such a governing body but claimed to have no knowledge of the other matters alleged which were not admitted.

6. In paragraph 2 of the SOC, the 1^st Plaintiff pleaded, inter alia, that Infront WM AG acquired the exclusive right from the 1^st Plaintiff to transmit, broadcast and exhibit the FIFA World Cup on a world wide basis and that Infront WM GmbH acquired from Infront WM AG the exclusive right for exploitation in certain non-European territories including Hong Kong.  The Defendant’s defence is non admission.  On 20 January 2007, the Plaintiffs amended their pleading in paragraph 2 of the Amended Statement of Claim (“ASOC”) to the effect that the 1^st Plaintiff granted the exclusive right to broadcast the FIFA World Cup in certain non-European territories including Hong Kong to Sporis Holding AG (“Sporis”) and that Infront WM GmbH acquired such right from Sporis.  The 1^st Plaintiff, Sporis and Infront WM GmbH are companies in Switzerland.  In its amended Defence, the Defendant averred that the grant and acquisition of rights to broadcast the FIFA World Cup had not been properly particularised and reserved its right to seek further and better particulars and to plead further as and when such particulars have been provided. 

7. In paragraph 3 of the SOC, the Plaintiffs pleaded that the 2^nd Plaintiff acquired from Infront WM GmbH the exclusive right to broadcast the FIFA World Cup in Hong Kong.  The Defendant replied that the 2^nd Plaintiff’s allegation of its exclusive licence has not been properly particularized and reserved its right to seek further and better particulars and to plead further. 

8. In paragraph 7 of the SOC, the Plaintiffs pleaded, inter alia, that the 1^st Plaintiff is the owner of the copyright subsisting in the broadcast of the FIFA World Cup (“Broadcast”).  In paragraph 7 of the Defence, the Defendant replied that it had no knowledge of the averment which was not admitted.

9. In paragraphs 8 to 12 of the SOC, the Plaintiffs pleaded that the distributor of the 1^st Plaintiff’s Broadcast in South Africa is MultiChoice Africa (Pty) Ltd (“MultiChoice”) and how the overspilled broadcast signal from South Africa was received and decoded in viewable form in Hong Kong.  In its Defence, the Defendant admitted knowledge of MultiChoice but claimed to have no knowledge of the other averments which were not admitted.

10. In paragraphs 14 to 15.1 of the SOC, the Plaintiffs pleaded infringement of the Plaintiffs’ copyright in the Broadcast, the Defendant’s knowledge of the Plaintiffs’ ownership in the copyright and gave particulars of a visit by the Plaintiffs’ investigator at or around 11:13 pm on 23 June 2006 when the television located in the Defendant’s public house was showing a FIFA World Cup match with the MultiChoice logo.  To these three pages of particulars, the Defendant’s defence is just non admission and denial.  In paragraph 17 of the Defence, the Defendant reserved its right to plead further after the Plaintiffs have particularized the articles, apparatus and devices allegedly used by the Defendant in connection with the infringement.

11. In essence, the Defendant’s defence is just non admission or denial.  No positive case was advanced.  It requested inspection of the agreement between the 1^st Plaintiff and Infront WM AG, which now refers to the agreement between the 1^st Plaintiff and Sporis.  It reserved its right to plead to the Plaintiffs’ allegations about Sporis’ exclusive licence from the 1^st Plaintiff and the 2^nd Plaintiff’s exclusive licence from Infront WM GmbH.  The three Summonses now before me are all related to these exclusive licences.

The events leading to the issue of the present summonses

12. On 6 November 2006, prior to filing its Defence, the Defendant issued a Summons pursuant to Order 24 rule 11 of the RHC requesting production and inspection of, inter alia, the agreement between the 1^st Plaintiff and Infront WM AG (“Inspection Summons”).  This led to the Plaintiffs’ Summons dated 20 January 2007 to amend the SOC which has the effect of replacing Infront WM AG by Sporis.

13. On 23 November 2006, the Defendant issued a summons pursuant to Order 18 rule 12 of the RHC requesting for further and better particulars of the SOC (“1^st FBP Summons”) annexing the Request.  The Plaintiffs gave answer to the Request on 19 January 2007.

14. On 19 January 2007, the Plaintiffs applied for summary judgment against the Defendant in HCA1534/2006 pursuant to Order 14 of the RHC.  That application was scheduled to be heard on 13 August 2007.

15. On 23 January 2007, the Inspection Summons and the 1^st FBP Summons were heard before Master de Souza.  Master de Souza ordered the Request to be amended to match the Plaintiff’s amendment in the ASOC and ordered the Plaintiffs to give consolidated answers to the Request.  No order was made in respect of the Inspection Summons.

16. The Defendant was not satisfied with the particulars provided by the Plaintiffs in the meantime and issued the three summonses on 21 and 22 February and 19 March 2007.  The parties exchanged affidavits.  In the affirmation of David Murray filed on behalf of the Plaintiff, the Plaintiff disclosed a redacted copy of the licence agreement between Infront WM GmbH and the 2^nd Plaintiff.

17. The three summonses were heard before Master Hui on 31 May 2007 who dismissed the summonses on 4 June 2007.  The Defendant now appeals against the orders of Master Hui.

The issues

18. In respect of the Unless Order Summons, the basis of the Defendant’s application is that the Plaintiffs have not properly answered their Request for further and better particulars as ordered by Master de Souza.  The Plaintiffs’ position is that the Request has been adequately answered by the affirmation of David Murray made pursuant to section 121 of the Copyright Ordinance (Cap 528) of the Laws of Hong Kong. 

19. Under the Production Summons, the Defendant sought an unredacted copy of the licence agreement between Infront WM GmbH and the 2^nd Plaintiff.  The Plaintiff, relying on section 121 of the Copyright Ordinance, objected to the production as being irrelevant and unnecessary.

20. In respect of the 2^nd FBP Summons, the Plaintiff’s position is that the Request has also been adequately answered by the affirmation of David Murray.

21. From the above, it is immediately apparent that the three summonses hinge on whether exclusive licensees of copyright can rely on section 121 of the Copyright Ordinance in copyright infringement proceedings.

Sections 112 and 121 of the Copyright Ordinance

22. It is the submission of Ms Tam SC, counsel for the Plaintiffs, that the procedural convenience given to a copyright owner under section 121 of the Copyright Ordinance are equally available to his exclusive licensee by virtue of section 112.  Both sections are within Part II of the Copyright Ordinance.  On the other hand, Ms Tong, counsel for the Defendant, argues that section 121 does not apply to exclusive licensees.  She further argues that the section only deals with evidentiary issues and does not obviate the need for properly particularizing pleadings and discovery in the usual course.

23. Section 112 and the relevant part of section 121 are as follows:

“	112.	Rights and remedies of exclusive licensee
		(1)	An exclusive licensee has, except against the copyright owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
		(2)	His rights and remedies are concurrent with those of the copyright owner; and references in the relevant provisions of this Part to the copyright owner shall be construed accordingly.
		(3)	In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner.”
“	121.	Affidavit evidence
		(1)	An affidavit which purports to have been made by or on behalf of the owner of a copyright work and which states –
				…
			(d)	that copyright subsists in the work; and
			(e)	that a copy of the work exhibited to the affidavit is a true copy of the work,
			shall, subject to the conditions contained in subsection (4), be admitted without further proof in any proceedings under this Ordinance.
				…
		(3)	The court before whom an affidavit which complies with the conditions in subsection (4) is produced under subsection (1) or (2) shall presume, in the absence of evidence to the contrary -
			(a)	that the statements made in the affidavit are true; and
			(b)	that it was made and authenticated in accordance with subsection (4).
				…
		(5)	Notwithstanding that an affidavit is admissible as evidence by virtue of this section, a defendant or his solicitor may, within 3 days from the service of the copy of the affidavit, serve a notice requiring the attendance of the deponent to the affidavit in court.
				…
		(8)	Without prejudice to subsection (5) -
			(a)	the party by whom or on whose behalf the affidavit was served may call the deponent to give evidence; and
			(b)	the court may of its own motion or, if the defendant who has served a notice under subsection (5) satisfies the court that the subsistence or ownership of the copyright is genuinely in issue either before or during the hearing, require the deponent to attend before the court and give evidence.
		(9)	Without prejudice to subsection (8)(a), a deponent of an affidavit which is admissible under this section shall attend before the court and give evidence if, and only if, the court so requires under subsection (8)(b).
		…”

24. Ms Tong submits that section 121 is only concerned with, inter alia, the ownership and subsistence of copyright.  She quotes extensively from Deputy High Court Judge Gill’s dicta in Golden Bright Manufacturer Ltd v Sunlight Electronic Toys Manufacturing Co Ltd & Anor [2007] 2 HKC 357 at 375H - 378H.  She submits that from those dicta, it is clear that section 121 is plainly not intended to apply to exclusive licences and rights conferred pursuant thereto.  That was a well considered judgment which I respectfully agree.  I do not think it necessary to quote the dicta relied on by Ms Tong.  Suffice it is to say, I am quite unable to read such intention into the dicta of Deputy High Court Judge Gill.  Golden Bright Manufacturer Ltd was an action by the copyright owner against the defendant for infringement.  The focus of the dicta was on the operation of the burden of proof under section 121 as between the copyright owner and the alleged infringer.  The concurrent status of the copyright owner and the exclusive licensee was not an issue.  There was neither the need nor the opportunity for the court to express any opinion on whether the section could be relied upon by an exclusive licensee.  On the facts of that case, Deputy High Court Judge Gill held that in the absence of evidence to the contrary, he was bound to accept the statements of the copyright owner as true.

25. The legal issue in this appeal is not how section 121 operates, but whether it operates as between the exclusive licensee and the alleged infringer by virtue of section 112, i.e. whether the procedural convenience given to the copyright owner is equally available to the exclusive licensee.  This turns on the interpretation of section 112.  Ms Tong submits that section 112(2) must be construed in its context, such that the reference to “relevant provisions of this Part” under the second limb of section 112(2) clearly relates only to “rights and remedies of copyright owner” in the first limb, i.e. the rights and remedies contained in sections 107 to 111 of the Copyright Ordinance.  That is a possible interpretation.

26. However, it is equally possible to read the second limb disjunctively.  The Copyright Ordinance comprises of four Parts.  Part II is about copyright.  It is made up of eleven Divisions.  Sections 107 to 122 are within Division VI with a divisional heading called “Remedies for Infringement” which covers provisions governing the rights and remedies of the copyright owner, presumptions, offences, powers of investigators as well as section 112 and section 121.  Had the legislature intended that section 112 should have the limited effect as contended by Ms Tong, it would have been very easy for the legislature to have so expressed itself by replacing the phrase “relevant provisions of this Part” with phrases such as, “sections 107 to 111”, “relevant provisions of this Division” or “relevant provisions of this sub-Division”.  But it chose to use words of much wider import. 

27. A statute must be construed as a whole.  Section 112(1) gives an exclusive licensee the same rights and remedies as if the licence had been an assignment.  Thus, the subsection effectively puts an exclusive licensee into the shoes of the copyright owner.  This gives support for a wide construction for the second limb of section 112(2).  If for any reason the legislature thinks it expedient to give to the copyright owner the procedural convenience under section 121, there is no reason for that convenience to be withheld against the exclusive licensee whom section 112(1) put into the shoes of the copyright owner.  Ms Tong argues that there is a distinction between the copyright owner and the exclusive licensee as the exclusive licensee is within jurisdiction while the copyright owner may be abroad and hence there is no need to rely on the procedural convenience of proof by affidavit instead of flying in a witness from abroad.   She further argues that since pursuant to section 103 an exclusive licence must be made in writing, the exclusive licensee’s ownership in the copyright works could be easily proved by production of the written licence without reliance on the section 121 affidavit.  On the facts of the present case, the exclusive licensee is within and not outside jurisdiction.  However, as a matter of law, no such distinction has been drawn by section 112, which is the pertinent section, and there is no basis for importing such distinction into either section 112 or section 121.  I think Ms Tong has allowed herself to be confused by mixing up construction of section 112 with the policy considerations for section 121.

28. Ms Tong submits in the alternative that even if an exclusive licensee is entitled to the procedural convenience conferred by section 121, he may only do so in relation to the ownership and subsistence of the alleged copyright, such that no presumption may arise under section 121 in relation to their own rights as exclusive licensee.  She repeats her argument that the exclusive licensee may prove ownership by simply producing the licence, without having to rely on the procedural convenience under section 121.  I consider such argument wholly artificial.  The exclusive licensee is in the position of an assignee from the owner.  As against a third party, there is no distinction between original ownership and ownership by assignment.  If section 121 permits an owner to prove ownership and subsistence by affidavit without having to prove how he created or acquired ownership, including production of the assignment if it was acquired by assignment, there is no reason why the exclusive licensee should be required to produce his licence.  Furthermore, if the exclusive assignee has to prove his status as an exclusive licensee, he would have to produce not only the written licence and copyright subsistence, but also proof of copyright ownership in the licensor and all intermediate licensors/licensees whose co-operation may not always be readily available.  This is one of the difficulties which section 121 seeks to avoid.  If Ms Tong’s submission is correct, it would render section 112 nugatory.

29. Section 121(1) gives the exclusive licensee the same rights and remedies as if he is an assignee of the owner of the copyright works.  Under the first limb of section 121(2), legislature explicitly states that these rights and remedies are concurrent with those of the copyright owner.  It is with these provisions in the background that the second limb provides that the entire Part II shall be construed accordingly.  By adopting this drafting technique, it is amply clear that the intention of the legislature is that in addition to conferring on the exclusive licensee the same rights and remedies available to the copyright owner under sections 107 to 111, all provisions in Part II so long as they are relevant are to be construed in such a way so that the exclusive licensee enjoys all the benefit, protection and procedural convenience that are given to the copyright owner under Part II.  The procedural convenience includes the presumptions under sections 115 to 120 and the section 121 affidavit.

30. Having construed section 112, I now turn to the three summonses.

The Unless Order Summons

31. The Plaintiffs’ position is that if the Defendant is not satisfied with the answer given by the Plaintiffs, the proper course should have been for the Defendant to apply for further and better particulars of the answer given in reply to the first request for further and better particulars, instead of relying on the 1^st FBP Summons to ask for further and better particulars or even for an unless order.  In any event, the Plaintiffs are of the view that the answer given is sufficient.  At the hearing before the master, Master Hui did not deal with this technical objection raised by the Plaintiffs, but considered the sufficiency of the Plaintiffs’ answer.  Ms Tam is contented to defer her argument on the technical objection and to deal with the issue of sufficiency first.

32. The Defendant’s request and the Plaintiffs’ answer complained of, including the relevant part of David Murray’s affirmation annexed to the answer, are as follows:

“	The request:
	In respect of the rights particularized in the answer to the previous request, state, with particulars, how it is alleged that Infront WM GmbH acquired such rights from Sporis Holding AG.  In particular, but without prejudice to the generality of the foregoing, state whether there was any written agreement(s) or document(s) pursuant to which Infront WM GmbH allegedly acquired the rights from Sporis Holding AG and if so, identify each such agreement and document.”
“	The answer:
	Infront WM GmbH acquired such rights from Sporis Holding AG by way of licensing.  The Plaintiffs rely on Affirmation of David Murray … to prove such acquisition of rights.  The Affirmation was made under s. 121 of the Copyright Ordinance, which specifically provide a short cut to the copyright owners to prove subsistence and ownership of its rights without disclosing each and every details of the licensing arrangement.”
“	David Murray’s affirmation:
	4.	The author of the Broadcasts is Host Broadcasting Services AG (“HBS”), a company incorporated under the laws of Switzerland …
	5.	Copyright has subsisted in the Broadcasts from the dates they were created to the date herein and at all material times, FIFA is and was the copyright owner of the Broadcasts.  …
	6.	FIFA granted the exclusive right to broadcast the Broadcasts in certain non-European territories including Hong Kong by any form of radio or television signals, live or deferred, for private or public viewing to Sporis Holding AG of Markstrasse 10, CH-6060 Samen, Switzerland.  Infront WM GmbH acquired such right from Sporis Holding AG.”

Ms Tong complains that by not giving the particulars of the licence the answer fails to explain how it is alleged that Infront WM GmbH acquired the exclusive right from Sporis.  It also fails to address the Defendant’s request whether the right was acquired by a written agreement. 

33. Ms Tong referred to the following principle in Hong Kong Civil Procedure 2007 at paragraph 18/7/7:

“

It is essential that a pleading, if it is not to be embarrassing, should state those facts which will put those against whom it is directed on their guard, and tell them what is the case which they will have to meet …  “Material” means necessary for the purpose of formulating a complete cause of action; and if any one material statement is omitted, the statement of claim is bad.  …  Each party must plead all material facts on which he means to rely at the trial; otherwise he is not entitled to give any evidence of them at the trial.  No averment must be omitted which is essential to success.”

She then referred to paragraph 18/12/1 of Hong Kong Civil Procedure 2007, quoting the dicta of Bokhary JA, as he then was, in Aktieselskabet Dansk Skibsfinansiering v Wheelock Marden & Co Ltd [1994] 2 HKC 264 at 269E-270E that the functions of properly particularized pleadings are:

(1)	to inform the other side of the nature of the case that they have to meet as distinguished from the mode in which that case is to be proved;
(2)	to prevent the other side from being taken by surprise at the trial;
(3)	to enable the other side to know with what evidence they ought to be prepared and to prepare for trial;
(4)	to limit the generality of the pleadings, the claim and the evidence;
(5)	to limit and define the issues to be tried, and as to which discovery is required;
(6)	to tie the hands of the party so that he cannot without leave go into any matters not included.

She also referred to paragraph 18/12/3 of Hong Kong Civil Procedure 2007, citing as an example that where an agreement is relied upon, the pleading should state the date of the alleged agreement, the names of the parties, whether it was made orally or in writing, in the former case stating by whom it was made, and in the latter case identifying the document, and in all cases setting out the terms relied on. 

34. Ms Tam SC does not dispute the legal principles referred to by Ms Tong.  Those principles are well established.  But Ms Tam SC relies on Order 18 rule 7(3) of the RHC which provides:

“	A party need not plead any fact if it is presumed by law to be true or the burden of disproving it lies on the other party, unless the other party has specifically denied it in his pleading.”

She submits that in respect of the chain of licences pleaded in paragraphs 2 and 3 of the ASOC, since the Defendant does not specifically deny the matters pleaded therein, the presumption of truth of the statements in David Murray’s affirmation by reason of section 121 dispenses with any need to plead further to it.  Ms Tong’s counter argument is that section 121 is evidentiary only and as the issue of ownership and subsistence of copyright remains in issue the section does not have the effect of discharging the Plaintiffs from their obligation to fully plead their case. 

35. With respect to Ms Tam SC, I do not think Order 18 rule 7(3) applicable.  The particulars which the Defendant sought are whether the exclusive licence between Sporis and Infront WM GmbH is in writing and the terms of the licence.  These are not facts which could be presumed by law to be true.  Nor do I think the burden of disproving those facts lies on the Defendant by virtue of section 121(3).  It is important to distinguish between legal burden and evidential burden.  I think Order 18 rule 7(3) refers to the legal burden.  The legal burden of proof is fixed by the pleadings.  The general principle is he who asserts the positive bears the legal burden of proof, unless it is reversed by law.  Under section 121(3), the presumption is invoked in the absence of evidence to the contrary.  The section does not presume certain facts to be true unless the contrary is proved.  I therefore do not think section 121(3) has the effect of imposing on the Defendant the burden of disproving the presumed facts.  It is the Plaintiffs who assert that they are the copyright owner or exclusive licensee of the copyright owner, they bear the legal burden of proof, though they may be assisted by the presumption under section 121.  They have to plead to those facts or at least the basic facts which invoke the presumption.  Once those basis facts are proved, the evidential burden is on the Defendant to adduce such evidence to the contrary as is sufficient to rebut or displace the presumption.  The legal burden is on the Plaintiff to prove and not on the Defendant to disprove.  I therefore do not think Order 18 rule 7(3) applicable to the present case. 

36. The question raised by this summons is whether, in the light of the issues in dispute, the particulars requested are relevant or necessary for the fair and reasonable disposal of the dispute and if they are whether the answers are sufficient.  What are relevant or necessary depends on the circumstances of the particular case, including the case as pleaded by the Plaintiffs and the defence.  It is up to the Plaintiffs to determine how they would wish to plead their case and to prove it at trial.  Of course, at trial, they would be bound by what they have pleaded.  The 1^st Plaintiff may adopt the lengthy and tedious procedure of proving copyright ownership and chain of title or to take advantage of the procedural convenience under section 121, which is not only a procedural convenience but a shortcut.  So too may the 2^nd Plaintiff by virtue of section 112.  The Plaintiffs have chosen the shortcut.  The shortcut has its convenience but also its disadvantage.  The question whether the pleadings are sufficiently particularised must be answered in the light of how the Plaintiffs plead their case, provided always that a reasonable cause of action has been pleaded.  The Defendant cannot force on the Plaintiffs a case which they do not intend to launch. 

37. In their ASOC, the Plaintiffs pleaded the 1^st Plaintiff’s ownership and subsistence of the copyright, the 2^nd Plaintiff’s right as exclusive licensee and the following chain of licence:

1^st Plaintiff  –  Sporis  –  Infront WM GmbH  –  2^nd Plaintiff

38. Ms Tong calls this “the chain of title”.  I think that is a misnomer, as the title to the copyright never changed hands at all.  There is a chain of successive licences leading to the 2^nd Plaintiff’s exclusive licence to exploit the right in Hong Kong and section 112 gives the 2^nd Plaintiff the same rights and remedies as if its licence had been an assignment.  There never was any change in ownership and title of the copyright in the Broadcast.  In answer to the Defendant’s request for particulars of the licence between Sporis and Infront WM GmbH, the Plaintiffs informed the Defendant that Infront WM GmbH acquired the rights from Sporis by way of licensing and provided the Defendant with a draft affirmation of David Murray (which was subsequently and duly affirmed).  The material terms of the licence as regards the nature of broadcasting rights acquired by Sporis has been disclosed in the affirmation, i.e. broadcasts in certain non-European territories including Hong Kong by any form of radio or television signals, live or deferred for private or public viewing to Sporis.  David Murray’s affirmation formed part of the pleadings.  It was made on behalf of both the 1^st and 2^nd Plaintiffs. David Murray confirmed that his affirmation was made pursuant to section 121.  The Plaintiffs are therefore pleading the facts contained in the statements in the affirmation and pleading the presumption under section 121(3).  In other words, the Plaintiffs have informed the Defendant that they are relying on the affirmation as prima facie evidence of those facts falling within section 121(1), in particular that the 1^st Plaintiff is the copyright owner and copyright subsists, that the 2^nd Plaintiff as exclusive licensee has concurrent rights and remedies with the 1^st Plaintiff in Hong Kong.  In the absence of evidence to the contrary, these facts are presumed to be true under section 121(3).  The licence between Sporis and Infront WM GmbH is just part of the background.  None of these have been specifically denied in the Defence and no positive case has been advanced by the Defendant.

39. Ms Tong submits that as the Plaintiffs’ action is founded on ownership and subsistence of the copyright, the Plaintiffs are required to plead the chain of licences in respect of the alleged copyright, in particular how it is alleged that the Plaintiffs have the right to sue in these proceedings, i.e. how it is alleged that Infront WM GmbH acquired the exclusive right from Sporis, which was then passed onto the 2^nd Plaintiff.  She further submits that David Murray’s affirmation did not answer whether the agreement is in writing.  Ms Tong says that this is material because in accordance with section 103, an exclusive licence must be in writing and signed by or on behalf of the copyright owner.  She submits that the particulars of any such written licence and the terms relied upon ought to be pleaded as these are material facts to establish the chain of licences to the alleged copyright, which the Defendant need to be informed in order to prepare for its defence. 

40. It is true that the Plaintiffs have not pleaded to the particulars of the exclusive licence between Sporis and Infront WM GmbH and the other terms of that licence and have not answered if the exclusive licence is in writing.  But in view of the way they pleaded their case, those facts are irrelevant.  Those facts have been by-passed by the way the Plaintiffs pleaded their case by relying on the section 121 affirmation.  The Defence is a bare denial with no positive case having been advanced.  The Plaintiffs are entitled to rely on the presumption under section 121(3) and to succeed on this issue at trial by production of David Murray’s affirmation.  Thus, the details of the licence between Sporis and Infront WM GmbH, the terms of the licence and whether it is in writing etc are all irrelevant because of the way the Plaintiffs’ case is pleaded.  Those facts could be relevant if the Defendant makes them relevant by pleading a positive defence impinging on the facts averred to in David Murray’s affirmation.  It could, for example, raise the defence that it has obtained a licence to broadcast the FIFA World Cup from MultiChoice, the logo of which was alleged to have been displayed while the Defendant was broadcasting the FIFA World Cup on 23 June 2006 and adduce such evidence as to contradict the prima facie evidence of David Murray’s affirmation.  It could produce a similar section 121 affidavit from MultiChoice averring that MultiChoice had an exclusive or a concurrent licence from Sporis or Infront WM GmbH or the copyright owner or someone else to broadcast the Broadcast in Hong Kong.  That would put in issue whether the licence between Sporis and Infront WM GmbH and the licence between Infront WM GmbH and the 2^nd Plaintiff are exclusive licences.  The Plaintiffs would then be obliged to plead to those matters in their Reply to the Defence or even to re-amend their ASOC.  But this is not the case.

41. As the pleadings including the particulars supplied now stands, I think they have disclosed more particulars than reasonably required in view of the pleaded case of the Plaintiffs and in the light of the defence of bare denial.  Not only have the pleadings informed the Defendant of the nature of the case that they have to meet, they even disclosed the mode in which the Plaintiffs’ case is to be proved, i.e. by David Murray’s affirmation.  There will be no surprise at trial.  The Defendant knows exactly what evidence they ought to be prepared to meet and to prepare for trial.  The pleadings have limited the generality of the pleadings, the claim and the evidence.  They have limited and defined the issues to be tried.  The Plaintiffs’ hands are well tied to David Murray’s affirmation.  In addition, there are built in safeguards in the section 121 affidavit regime for a defendant who has a genuine dispute on the ownership and subsistence of the copyright.  Under section 121(5), a defendant may within three days of service of a copy of the affidavit, serve a notice requiring the attendance of the deponent to the affidavit in court.  Pursuant to section 121(8), if the defendant satisfies the court that the subsistence or ownership of the copyright is genuinely in issue, the court may require the deponent to attend before the court and give evidence.  The Defendant has served a notice requiring the attendance of David Murray in court.  If the Defendant can so satisfy the court, David Murray would have to give evidence in court and be subject to cross examination.  The Plaintiffs’ case would have to stand or fall with David Murray’s affirmation.  As I have said, the shortcut has its convenience, but also had disadvantages.  I think as the pleadings now stand, they have achieved the functions of properly particularized pleadings as laid down in Aktieselskabet Dansk Skibsfinansiering v Wheelock Marden & Co Ltd.  

42. Ms Tong argues that the Defendant need those particulars requested in order to plead further to the Plaintiffs’ case.  In my view, the particulars requested are irrelevant.  If the Defendant had any positive defence, it would have pleaded them.  I am quite unable to see how the terms of the exclusive licence between Sporis and Infront WM GmbH or between Infront WM GmbH and the 2^nd Plaintiff would assist the Defendant in pleading its defence.  The request whether the licence is in writing might be of assistance to the Defendant if the answer is in the negative.  I doubt very much that that would be the case.  But there is no need for me to surmise because that is not relevant to the Plaintiffs’ pleaded case.  There could be no genuine dispute about copyright subsisting in the Broadcast.  If the Defendant had committed the act of infringement by broadcasting the FIFA World Cup on 23 June 2006, its defence does not lie in whether the licence between Sporis and Infront WM GmbH is in writing in view of the case as pleaded by the Plaintiffs, but by putting forward a positive defence as to from whom it obtained the licence to broadcast the FIFA World Cup.  It chose not to, but raised obviously irrelevant requests for further and better particulars.  If the Defendant had not committed the act of infringement as pleaded by the Plaintiffs in paragraphs 14 and 15 of the ASOC, it could have advanced a positive defence rather than a bare denial.  The particulars of the licences and whether they are in writing are also irrelevant.  Thus, in view of the Defendant’s defence, there could be no genuine dispute as to copyright ownership as well.  The Defendant has impressed me that it is not defending the action in a bona fide manner.  Its Request is not only a fishing exercise but also a delaying tactic.  The particulars, if provided, would only lead to further requests for further and better particulars.  It is the Court’s function to control and regulate the proceedings before it.  As the particulars requested are irrelevant, the Court shall refuse the Defendant’s application for unless order and put an end to such unnecessary proliferation of pleadings so that justice will not be defeated, or even delayed, through spurious contentions about copyright subsistence or ownership.

43. As for the Plaintiffs’ technical objection, Ms Tam SC referred me to Chung J’s decision in La Chemise Lacoste SA v Crocodile Garments Ltd, HCA 2401/1995, in which a similar issue was decided.  Chung J held at 224:

“	34.	Mr Scott contends that in law there is no place for further and better particulars of further and better particulars.  I do not agree.
	35.	First, particulars of a pleading served subsequently under a request or order become part of the pleading:  The Supreme Court Practice 1993 (not found in the 1999 ed),para 18/12/40.  Further, the party whose pleading was accused of having offended rules of pleading or lacking in particulars should be entitled to know the basis of the accusation.  Such a requirement accords with the general procedural requirements in our civil litigation system that litigants should not be taken by surprise.  It also helps to avoid litigation because the accused party can decide whether the accusation is validly made against the pleading and respond accordingly.  This may be the underlying policy regarding Ord 18 r 12(6) [application for particulars by letter before summons].  It may also be the policy for requiring:-
		‘	The request … for further and better particulars of a pleading should identify the paragraph … by its number or letter … as set out in the pleading in question, and should specify, clearly and precisely, the further and better particulars under each such number or letter, which are being requested …’: (The Supreme Court Practice 1991 (not found in the 1999 ed), para 18/12/40.’
	36.	There is no justification why a different policy or set of rules should apply to further and better particulars given for a pleading than that applicable to the original pleading (or the original particulars given in a pleading).  In fact, there is good reason for applying the same policy or set of rules regarding further and better particulars.
	37.	Thirdly, the learned authors of The Supreme Court Practice 1991 Vol 1 seem to recognise the existence of ‘further and better particulars of further and better particulars’ when they stated ‘This form of the further and better particulars applies to further and better particulars of further and better particulars of a pleading, as well as to voluntary particulars’: para 18/12/40 [under the heading ‘Form of particulars’].
	38.	One exception to the above observations appears to be where contumelious conduct was involved, for example, a party has given an answer to interrogatories ‘so palpably insufficient as to show want of bona fide’: see Kennedy v Lyell [1882] WN 137, or was in contumelious default in complying with an order for particulars: Grand Metropolitan Nominee v Evans [1992] 1 WLR 1191.”

The above dicta are adopted by Deputy High Court Judge Muttrie in Man Siu Hing and Man Yuen Yam, unreported, HCAP 13/2003, 7^th February 2006.  I respectfully agree with the principle of law as stated by Chung J.  Unless a party has by contumelious conduct failed to provide particulars as ordered or provided particulars which are so palpably insufficient as to evince an intention not to comply with the order, the appropriate action for the requesting party is to request for further and better particulars of the further and better particulars given.

44. The answer given by the Plaintiffs is, on the face, to the point and sufficient.  The Plaintiffs declined answering whether the licence was in writing and declined providing the terms of the licence.  But they gave a reason, their reliance on David Murray’s affirmation.  They provided a draft affirmation.  The Plaintiffs’ refusal to answer cannot be regarded as contumelious.  While in most likelihood the Plaintiffs would not voluntarily supply the particulars and would resist any renewed application for further and better particulars of the further and better particulars, nevertheless, in seeking the sanction by an unless order, the Defendant was pressing the wrong button.

45. For the above reasons, I conclude that the Defendant’s application for unless order is inappropriate and in any event I find that the Request has been sufficiently answered.  I therefore uphold Master Hui’s decision and dismiss the Defendant’s appeal with costs.

The Production Summons

46. In paragraph 7 of David Murray’s affirmation, he averred to the exclusive licence agreement between Infront WM GmbH and the 2^nd Plaintiff and exhibited a redacted copy of the agreement.  The Defendant now applies for an unredacted copy.  Ms Tong argues that where a document is referred to in any pleading, including particulars and affidavits or witness statement by one party, the other party has a prima facie right to inspect the document and take copies of it and it is for the refusing party to show cause to the contrary.  She quoted Zida Technologies Ltd v Tiga Technologies Ltd & Ors [2001] 4 HKC 163 at 176C and 180D-E, Dynamic Way International Ltd & Ho Kui Chee & Ors [2000] 4 HKC 138 (CA) at 142C in support of the above proposition.  Relying on the same authorities, Ms Tong submits that as the Plaintiffs have chosen to rely on the agreement as part of their pleaded case, the Defendant should not be faced with having to deal with it without being permitted to see it (Zida Technologies Ltd at 178H-I and Dynamic Way International Ltd at 142D-E).

47. Ms Tam resists the application on the basis of irrelevance of the entire document and in particular the redacted part.  On the basis of my conclusion in respect of the Unless Order Summons, I would have held the agreement to be irrelevant and its production unnecessary in view of the prima facie evidence of David Murray’s affirmation.  If it had not been disclosed, it could not have been relied on by the Plaintiffs at trial.  The Defendant will not be faced with the unfair situation of having to deal with the agreement without being permitted to see it.  However, a redacted copy has been disclosed, once disclosed, the agreement in its unredacted version must be treated as if it is relevant and may be used by either parties.  The issue then is appropriateness of the redaction.

48. The relevant authority on this issue is GE Capital Corporate Finance Group Ltd v Bankers Trust Co [1995] 1 WLR 172.  In that case, Hoffmann LJ, as he then was, held that a party does not need to disclose irrelevant parts of a document.  He said at 174C-D:

“	It has long been the practice that a party is entitled to seal up or cover up parts of a document which he claims to be irrelevant.  Bray’s Digest of the Law of Discovery, 2nd ed (1910), pp 55-56 puts the matter succinctly:
	‘	Generally speaking, any part of a document may be sealed up or otherwise concealed under the same conditions as a whole document may be withheld from production; the party’s oath for this purpose is as valid in the one case as in the other.  The practice is either to schedule to the affidavit of documents those parts only which are relevant, or to schedule the whole document and to seal up those parts which are sworn to be irrelevant; …’
	The oath of the party giving discovery is conclusive, “unless the court can be satisfied – not on a conflict of affidavits, but either from the documents produced or from anything in the affidavit made by the defendant, or by any admission by him in the pleadings, or necessarily from the circumstances of the case – that the affidavit does not truly state that which it ought to state:” per Cotton LJ in Jones v Andrews (1888) 58 LT 601, 604.”

I think the above is a correct statement of the law.  The practice has been unquestioned for over a hundred years.  I am not in any position to depart from it.

49. The authorities quoted by Ms Tong are not on redaction and are clearly distinguishable.  They are decisions reached on the basis of their own facts.  In Zida Technologies Ltd, Deputy High Court Judge McCoy SC was referring to a prima facie right to inspect documents referred to in pleadings, affidavits and exhibits, but does not decide that irrelevant parts of a document should also be disclosed.  In Dynamic Way International Ltd, the issue before the court was whether it should order inspection of documents alleged to be confidential, which the party giving discovery intended to rely on.  There was no issue about redaction of irrelevant parts of the document.  Interlego AG And Tyco Industries Inc and Others [1985] HKLR 115 is even more remote to the present case.  The issue in that case was whether one could rely on certain information for the purpose of making an ex parte application and then refuse to disclose that information at the inter partes hearing.  This case is irrelevant.

50. Ms Tong also referred to two decisions in which the court ordered disclosure of the redacted part of a document.  But those are decisions on their own facts.  In The New China Hong Kong Group Limited (in liquidation) & Anor and AIG Asian Infrastructure Fund LP, unreported, HCCL 97/2000, 21 January 2004, the document was so redacted as to be rendered practically meaningless.  I am not satisfied that is so in the present case.

51. The facts in Worldtrade Entertainment Limited & Another and Starway Technology Limited & Anor, unreported HCA 450/2000, 19 May 2000, are similar to those in the present case.  The 1^st and 2^nd plaintiffs pleaded that they were respectively the copyright owner and exclusive licensee of the copyright work in a film in the region of Hong Kong and that the Defendants infringed their copyright in the work by manufacturing VCDs consisting of reproduction or adaptation of the copyright work and the VCDs were sold and distributed in Hong Kong.    The defendants put the plaintiffs to strict proof of certain matters relating to the alleged copyright works.  They also put forward a defence that they were engaged by a third party to manufacture the VCDs for use in Mainland China only.  They gave particulars of the said third party who had also supplied them with a master copy to satisfy them that it had distribution right in the work.  The defendants applied for an unless order for production of the plaintiffs’ licence agreement.  But no order was made upon the plaintiffs’ undertaking to exhibit the document in an affidavit.  Subsequently, the plaintiffs filed an affirmation exhibiting a redacted copy of the agreement.  In the affirmation, the deponent said that the concealed part were trade secrets of a commercially sensitive nature and the concealment was made as per order of the court when no such order for concealment had in fact been made.  The concealed parts were about the price, the manner of payment and deduction in the event that the plaintiff was unable to show the film in Hong Kong by first theatrical release within one month of the agreement.  Having examined the unredacted agreement, Deputy High Court Judge Kwan, as she then was, considered the price and the manner of payment were somehow relevant to the validity of the agreement in the Peruvian Guano sense (1882) 11 QBD 55, and ordered disclosure of the unredacted agreement.  She said:

“

In applying the test in the Peruvian Guano case (1882) 11 QBD 55 at 63, I bear in mind that the question of relevance was framed in wide terms.  A document is relevant not only when it is evidence on any issue in dispute but “also which, it is reasonable to suppose, contains information which may – not which must – either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary.”  Brett LJ further had this to say: “A document can properly be said to contain information which may enable the party requiring the affidavit either to advance his own case or damage the case of his adversary, if it is a document which may fairly lead him to a chain of inquiry, which may have either of these two consequences.”

Though the defence put forward was short of a positive one, the defence was more than a bare denial.  The defendants gave the particulars of the third party who gave them the master copy to satisfy them of his distribution right in the works.  In this respect, Worldtrade Entertainment Limited is factually distinguishable from the present case and the order for full disclosure understandable.  I think Worldtrade Entertainment Limited is a decision on its own facts.

52. In the present case, the Plaintiffs have filed an affirmation by its general counsel, Chan Shu Hung, who affirmed that the redacted parts are irrelevant. This is conclusive, unless having examined that affirmation, the redacted licence agreement, the pleadings and any other documents disclosed, I can be satisfied that Chan Shu Hung’s affirmation does not truly state the position.  The agreement consists of thirty pages, only thirteen pages have been disclosed.  About 60% of the document has been redacted.  Ms Tong argues that the recital, part of the definition clause, part of the grant of rights clause, part of the copyright clause, and part of the term and termination clause have been redacted and those parts may be useful in advancing the Defendants’ case or in damaging the Plaintiffs’ case.

53. I have examined the redacted licence agreement.  I do not wish to surmise on what has been redacted.  The redacted document fully supports the Plaintiffs’ claim to exclusive right to broadcast the FIFA World Cup in Hong Kong.  On the other hand, the Defendant’s defence is so bare that not even the very wide test of Peruvian Guano can find anything from the pleadings, affirmations, exhibits or disclosed documents to hang on any suggestion that the affirmation of Chan Shu Hung is not stating the truth.  I am bound to accept that affirmation as conclusive.  Accordingly, I dismiss the Defendant’s appeal in respect of the Production Summons with costs.

The 2^nd FBP Summons

54. The Defendant’s request for further and better particulars under the 2^nd FBP Summons and the Plaintiffs’ answer are as follows:

“	The request:
	State how it is alleged that the right to broadcast the FIFA World Cup was granted by the 1st Plaintiff to Sporis Holding AG.  In particular, but without prejudice to the generality of the foregoing, state whether there was any written agreement(s) or document(s) pursuant to which Sporis Holding AG allegedly acquired the rights from the 1st Plaintiff and, if so, identify each such agreement and document.”
“	The answer:
	The 1st Plaintiff granted such rights to Sporis Holding AG by way of licensing.  The Plaintiffs rely on the Affirmation of David Murray … to prove such grant of rights, …The said Affirmation was made under s. 121 of the Copyright Ordinance, which specifically provides a short cut to copyright owners to prove subsistence and ownership of their rights without disclosing each and every detail of the licensing arrangement.”

55. The further and better particulars requested under this Summons are similar in nature to those in respect of which the Defendant’s Unless Order Summons sought to obtain, except that these further and better particulars are in respect of the licence agreement between the 1^st Plaintiff and Sporis.  The legal issues and factual circumstances are all the same.  The Unless Order Summons is in respect of the second link in the chain of licences, while the Production Summons is in respect of the third link.  The 2^nd FBP Summons is in respect of the second link in the chain of licences.  For the same reasons as those based on which I dismiss the appeal in respect of the Unless Order Summons, I dismiss the Defendant’s appeal in respect of the 2^nd FBP Summons with costs to the Plaintiffs.

Conclusion

56. Accordingly, I dismiss the Defendant’s appeals in respect of all the three summonses of the Defendant with costs to the Plaintiffs with certificate for counsel.  The costs are to be taxed if not agreed.