CREATIVE TECHNOLOGY LTD v. VIDEOCOM TECHNOLOGY LTD AND ANOTHER

HCA1434/2002

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO.1434 OF 2002

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R U L I N G

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1. I have entered judgment in favour of the plaintiff for two out of the three causes of action in the Statement of Claim, i.e., passing off and trademark. What has been left outstanding is the copyright claim.

2. The plaintiff is seeking costs of the entire action, including the application for execution of an Anton Piller order as well as the costs of the copyright claim, and the plaintiff has informed the court that if such an order were to be made by the court, they would abandon the cause of action on the copyright.

3. Mr Yan, for the plaintiff referred me to the judgment of Morritt J in LA Gear Inc. v. Hi-tec Sports [1992] FSR 121. In that case, his Lordship faced a not dissimilar situation where the plaintiff got judgment on copyright, but then they had the passing off claim outstanding, and awarded the costs of the entire action to the plaintiff. The consideration of his Lordship was that the costs attributable to the passing off claim were negligible and the costs of the taxing master in finding out and excluding those costs would be so high as to be not justified. There were other considerations of duplication of proceedings which are not present in this case.

4. Mr Yan submitted that as far as the Anton Piller order is concerned, the costs should follow the event. Upon the entering of judgment, the plaintiff should be entitled to costs which have been reserved so far.

5. As to copyright, Mr Yan accepted there must be some independent costs being incurred in respect of pleading, documentation, etc. But they would not be substantial. The testing of the CD, subject matter of the copyright claim, would have to be undertaken anyway to establish the counterfeit status of those CDs, and it would be relevant also for passing off and also for trademark because the entire product is sold as a package.

6. Mr Yan submitted that if the costs of the copyright were left hanging in the air, they would in fact be forced to continue the copyright action because otherwise the plaintiff would be liable to pay costs to the defendants either upon discontinuance or upon the action being struck out for want of prosecution.

7. Mr Man, for the defendants, pointed out that it is a fact that the cause of action in copyright has not been proved. He commented that Mr Yan's submissions and approach was in fact to hold the court in ransom. He could not point to all relevant matters relating exclusively to copyright, but he said that at least in the affidavit of Mr Hong filed for the purpose of the Order 14 application, paragraphs 8 and 9 referred only to copyright infringement.

8. As to this last point, Mr Yan pointed out that in paragraph 17 of the skeleton submissions of Mr Man, paragraphs 8 and 9 of the affidavit of Mr Hong were referred to, and whether or not it was argued at the hearing was really neither here nor there.

9. As to the ransom point, I really do not see it as holding the court in ransom because the court is loathed to see the copyright claim going to trial merely to be a peg to hang costs on. With the injunction for passing off and trademark infringement, the plaintiff has substantially won, and could be taken to have reaped the entire benefit of this action because they have got an injunction.

10. Having regard to the facts of this matter, the history of the action, the documents involved, as well as the conduct of the defendant, in my exercise of discretion I will award costs of the entire action to the plaintiff, which includes all the costs reserved up to today.