XCHRX SOMA INTERNATIONAL LIMITED v. DOLLY DOLLS TOYS FACTORY LIMITED

1994, No. A8223

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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JUDGMENT

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Background

1. The parties are Hong Kong companies engaged in the toy trade.

2. The plaintiff says that it is the owner of the copyright subsisting in some drawings, a sculpture in the form of a plaster model, and sculptures in the form of plastic models relating to a toy figure in the shape of a modernistic warrior called a 9½ inch Sonic Man/Sonic Ranger/Super Robotic Ranger ("the larger ranger"), and plaster and plastic sculptures relating to a similar toy figure, but only 4½ inches high ("the smaller ranger"), all of which I will refer to collectively as "the works". The plaintiff says that the defendant has infringed its copyright, and now seeks final judgment against the defendant under Order 14.

The Basis of the Copyright Claimed

3. Copyright is claimed on the basis that the drawings and sculptures are artistic works within the meaning of section 3 of the Copyright Act, 1956 because they are "irrespective of artistic quality, . . . sculptures, drawings . . .". Mr Garland also sought initially to bring the sculptures within the meaning of artistic works on the basis that they were "works of artistic craftsmanship", but, for the purpose of the proceedings before me, this has been abandoned.

Originality

4. For copyright to subsist in the works, they must, of course, be original; that is, they originated with the creator and were not copied from other works. The defendant says that the works are not original because the features are "common in the trade". It is true, as one would expect with representations of the human figure as a futuristic warrior, that there are similarities in general configuration between the works and other toys representing the human figure as a futuristic warrior, but the defendant has been unable to raise any case, against the plaintiff's assertions on oath, that there is such a close resemblance as would provide any evidence that the works are copies of these other toys, and, therefore, not original. The plaintiff is assisted in this area by the presumption that it has been able to raise under section 9 of the Copyright Ordinance (Cap. 39), except in relation to the plaster model of the larger ranger, which no longer exists, and, therefore, a copy could not be produced. I am satisfied that the plaintiff has proved originality in relation to the works, having not copied them and having produced them independently with the expenditure of skill, labour, knowledge and judgment.

Sculptures?

5. The plaintiff also has to prove that the works are protected by section 3 of the Act. With the drawings, there is no difficulty. Regarding the other works, Mr Garland has withdrawn the suggestion that they are works of artistic craftsmanship. That leaves only the possibility that they are sculptures. Mr Liao argues that they are not sculptures because they were not intended to have any continuing existence in their own right, but were merely steps in the manufacturing process. He points to the definition of "sculpture" in section 48 of the Act - "'sculpture'" includes any cast or model made for the purpose of sculpture".

6. Mr Liao relies on the case of Davis (J&S) Holdings v Wright Health Group [1988] R.P.C. 403, in which Whitford J., who was concerned with models and casts produced to represent the shape of the part of the human mouth to which dental trays would be applied, said -

"I take first the claim to copyright in the models and casts, on the basis that they are works of sculpture, noting the inclusion in sub-section (a) of the words 'irrespective of artistic quality', which are not found in subsection (b) or (c). The relevant casts or models were not made for the purpose of sculpture and, in my view, on the meaning properly to be given to the word "sculpture" in the light of the further definition in section 48, they cannot otherwise fall to be considered as works of sculpture."

7. Whitford J. goes on to point out that, by judicial extension, the types of works covered by copyright have been redefined to the "point where their meaning bears very little relation to the meaning which those not familiar with the law would give to" them. He says -

"So it would be in respect of sculpture but for the addition of the words 'made for the purposes of sculpture'. These words cut down the extent to which casts or models can secure protection as sculptures. . . . The models or casts produced . . . were no more than steps in the production first of the prototype, later in the manufacture of the tooling from which the plaintiffs' production was secured. They were never made for the purpose of sculpture, and it was never intended that they should have any continuing existence."

8. In Wham-O Manufacturing Co v Lincoln Industries [1985] R.P.C. 127, the Court of Appeal of New Zealand found that wooden models made from preliminary drawings, which was used to produce a mould from which moulded discs known as Frisbees were made, fell "within the definition of sculptures and are thus properly the subject of copyright protection."

9. The decision in Wham-O was considered by Whitford J. in Davis. He said -

"A carved wooden model is one thing. A model fashioned in plasticine or some other suitable modelling material, which was never intended should have any permanent existence, being no more than a stage in production is another."

10. In Breville Europe PLC v Thorn EMI Domestic Appliances [1995] FSR 77 (a decision given in December 1985), Falconer J. was concerned with plaster shapes in the form of the sandwich that would be produced by the heating plates of a toaster. Falconer J. refers to the ordinary dictionary definitions of "sculpture" and to Wham-O, and goes on to say - "In my view the plaster shapes . . . were sculptures and as such attracted copyright.", although these shapes were not intended to have "any continuing existence", but were to be used to produce the die-casting moulds for the heating plates. Indeed, the original moulds, like the plaster model of the larger ranger in the case before me, were destroyed in the process.

11. The New Shorter Oxford English Dictionary defines "sculpture" as -

"The art or process of creating (now usu. large) representational or abstract forms in the round, in relief, or (formerly intaglio), by chiselling stone, casting metal, modelling clay or some other plastic substance, carving wood, etc., or, now also, by assembling separate parts . . ."

12. The authorities, but for the decision of Whitford J. in Davis, point to the conclusion that the three-dimensional works produced by the plaintiff are "sculptures". Whitford J., and Mr Liao following him, place a great deal of emphasis of the definition of "sculpture" in section 48 - "'sculpture'" includes any cast or model made for the purpose of sculpture". The definition is not very helpful; parliamentary counsel having committed the cardinal drafting sin of using a word to define the same word, thus producing circularity. But, it is clear that the definition is not intended to be limiting; it is intended to enlarge the meaning of "sculpture". What the law says is - "In case you might think that a cast or model produced for the purposes of proceeding onto a further sculpture is not itself a sculpture, it is." What it does not say is - "A cast or model not made for the purposes of producing a further sculpture, and not intended to have continuing existence, is not a sculpture."

13. Whitford J. makes it clear that, but for the interpretation he places on the section 48 definition, he would have held that the meaning of "sculpture", like the meaning of "drawings", is wide, and he might well have held the objects with which he was concerned to be "sculptures".

14. For the reasons which I hope I have made clear, I prefer to follow the decisions in Whom-O and Breville. On that basis, I hold that three-dimensional works are "sculptures" within the meaning of section 3 of the Act, and entitled to copyright accordingly.

Infringement?

15. For there to be an infringement of the plaintiff's copyright -

"there must be present two elements: first, there must be sufficient similarity between the infringing work and the copyright work, or a substantial part thereof, for the former to be properly described, not necessarily as identical with, but as a reproduction . . . of the of the latter; second, the copyright work must be source from which the infringing work is derived." (per Diplock LJ in Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 623.)

16. The second element, the so called "causal connection", is admitted by the defendant, although originally, and until recently, the defendant maintained that its designs were arrived quite independently. Although the defendant now admits this, I have not been told just what it is that the defendant did when using the copyright works as the source for its products.

17. As for the first element, there is no doubt that the defendant copied or made a reproduction a substantial part of the plaintiff's products. The evidence that this happened is that the defendant's packaging reproduces that of the plaintiff, to the point that illustrations on the defendant's box reproduce details of the plaintiff's product, rather than the defendant's. It is especially apparent that the plaintiff's products have been copied, probably reproduced with a mould made from the plaintiff's products, when the toys are broken down; the internal construction is, for practical purposes, identical. The defendant has reproduced parts of the internal construction of the plaintiff's figures, which, in the case of the larger ranger, are superfluous, and, in the case of the smaller ranger, are not used by the defendant. It was, no doubt, these factors that drove the defendant, on the advice of its lawyers, to admit the causal connection.

18. After carefully considering the external appearance of the plaintiff's and defendant's products, I have no doubt that there is a strong visual resemblance. The immediate impression is that they are the same toy; a more careful examination of detail would lead one to the belief that they are similar varieties of the same toy, with insignificant differences. This emerges even more clearly when one compares the plaintiff's products with the defendant's, on the one hand, and the plaintiff's products with other the other toys produced, on the other. No one would think the plaintiff's or the defendant's products were copies of, for example, Robocop. They are quite different. I am driven unavoidably to the conclusion that the defendant reproduced substantial parts of the plaintiff's products.

19. The works in which the plaintiff claims copyright are not, of course, the plaintiff's products on the market, but, if the defendant, while copying those products, copied a substantial part of the works, it has infringed the plaintiff's copyright. In this regard, it is necessary only to have regard to the final prototype sculptures produced by the plaintiff for the two rangers because they are clearly the finished sculptures produced from preliminary versions (LA Gear Inc v Hi-Tech Sports PLC [1992] FSR 121). In any event, each of the stages of development of the works, from the drawings to, and including, the final prototypes, represented sufficient originality to justify separate copyright in each of them. The final prototype sculptures, both internally and externally, are reproduced in the plaintiff's products, and, thus, by copying the plaintiff's products, the defendant infringed the plaintiff's copyright in the final prototype sculptures. The drawings, also, are substantially reproduced in the plaintiff's products, and, by copying those products, the defendant also copied the drawings.

20. What the defendant did in this case was to copy the plaintiff's products, and then, with the intention of concealing this, it devised some changes in the appearance of its product. In this way, it sought to hide the fact that it had infringed the defendant's copyright. It went so far as, until recently, pretending to this Court that it had designed its products quite independently. It has, in my judgment, not succeeded in disguising its infringement.

Conclusion

21. Mr Liao argues that the issues in this case are too complex for Order 14 procedure, and that, in any event, there are issues that should go to trial. I do not agree. In my view, the plaintiff's case is clear and straightforward, and it is entitled to final judgment. Accordingly, I make an order in terms of the draft annexed to the summons of 3 May 1995.