APPLE DAILY LTD v. ORIENTAL PRESS GROUP LTD AND OTHERS

HCA1396/2009 & HCA481/2009
(Heard Together)

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1396 OF 2009

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BETWEEN

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DECISION

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1.  There are two applications before the Court. They are:

(1)   An application by the defendants in High Court Action No. 1396 of 2009 (“HCA1396/2009”) by summons filed on 4 July 2009 to strike out the Statement of Claim and dismiss the action.

(2)   An application by the plaintiff in HCA1396/2009 and the defendants in High Court Action No. 481 of 2009 (“HCA481/2009”) by summonses filed on 30 June 2009 in the respective actions to have the two actions consolidated or being tried together or sequentially. 

A determination of the second application will only be necessary if the striking out application does not succeed.

A. Striking out application in HCA1396/2009

2.  In HCA1396/2009, the plaintiff is and was the proprietor and publisher of the newspaper Apple Daily (蘋果日報).  The 1^st to 4^th defendants are companies within the Oriental Press Group (OPG).  The 1^st defendant is the ultimate holding company of OPG.  It is a public company incorporated in Hong Kong.  The 2^nd defendant is a BVI company that has no registration in Hong Kong under the Companies Ordinance, Cap.32.  It is and was the registrant of the official website of OPG under the domain name of “on.cc” (“the Website”).  The 3^rd defendant is and was the proprietor, publisher and printer of Oriental Daily News (東方日報).  The 4^th defendant is and was the proprietor, publisher and printer of The Sun (太陽報). 

3.  The plaintiff claims against the defendants in infringement of copyright that subsists in the literary works of seven Chinese news articles published in Apple Daily (“the plaintiff’s Articles”).  The articles complained of were published in (i) the Website; (ii) Oriental Daily News; and (iii) The Sun (collectively referred to as “the defendants’ Articles”).

4.  It is the plaintiff’s case that the defendants acted in concert with one another and reproduced the plaintiff’s news articles in substantial parts.  In particular, the plaintiff points out that the first edition of Apple Daily, Oriental Daily News and The Sun is usually published at midnight and distributed to the public.  The plaintiffs says that while the plaintiff’s Articles appeared in the first edition of Apple Daily, the defendants’ Articles did not appear in the first edition of Oriental Daily News and The Sun, but only appeared in the later edition, which came after the publication of the first edition of Apple Daily.  The plaintiff’s complaint is that the defendants having seen the first edition of Apple Daily, reproduced without its licence or authority the whole or substantial parts of the plaintiff’s Articles in the form of the defendants’ Articles.

5.  The defendants’ application to strike out the Statement of Claim and to have the action dismissed are based on the following grounds:

(1)   No copyright subsists in the plaintiffs’ Articles in that there is no copyright in mere information or news.

(2)   The defendants’ Articles are very different from the plaintiff’s Articles both in terms of forms and expressions.  The similarity between the plaintiff’s Articles and the defendants’ Articles is insufficient to amount to an arguable case of infringement.

(3)   The plaintiff’s claim is brought for collateral purpose and is an abuse of the Court’s process.

(4)   The plaintiff has no case against the 1^st defendant 

A1. Does copyright subsist in the plaintiff’s Articles?

6.  It is common ground between counsel that there is no copyright in mere information or news.  There is also no dispute that the fact that the content of a literary work is news does not prevent that work from being capable of protection by copyright in that the form of expression of that content is protected: Copinger & Skone James on Copyright (15^th ed) para.3-19.   The plaintiff’s argument is that copyright can subsist in the compilation of news and press information.  In respect of the plaintiff’s Articles, the plaintiff’s case is that copyright subsists in the compilation of each of the articles and in the language chosen to express the compiled news. 

7.  The defendants take issue with the plaintiff’s argument that copyright can subsist in the compilation of news and press information.  In the written submissions, the defendants’ position is that news article can only be protected as literary work in terms of the language or expression used.  In the course of submission, however, Miss Tam SC clarified that the defendants do not go so far as saying that compilation of news can never be protected by the law of copyright. 

8.  In respect of the plaintiff’s Articles, the defendants’ objection is twofold: First, the copyright law in compilation cannot apply.  It is said that the plaintiff’s Articles are no more than reports of news of the day and current events, thus, as a matter of law, incapable of being compilations and enjoying the protection of the copyright law.   The defendants’ second objection is that compilation is not the plaintiff’s pleaded case. 

9.  Three points therefore fall to be considered under this issue of subsistence of copyright.  They are: (i) whether as a matter of law copyright can subsist in compilation of news and press information; (ii) whether it is arguable that the plaintiff’s Articles are protected by the law of copyright as compilations of news and press information; and (iii) whether the Statement of Claim has pleaded a case of compilation.  I shall deal with them in turns. 

10.  Under our law, which is the same as the English law, material published in the press is afforded the same protection as other literary material, subject only to the qualification that information is not protected as such by copyright law, but only the form in which the information is expressed: Copinger & Skone James at para.24-23.  Miss Tam SC has referred to Article 2(8) of the Berne Convention, which provides that the copyright protection under the Convention does not apply to news or facts constituting press information.  As in England, Article 2(8) has not been introduced into our copyright legislation. The law of copyright as regard articles and materials published in the press is thus unaffected by Article 2(8).

11.  Information in the form of tables and compilations has for long received copyright protection. Under section 4(1) of the Copyright Ordinance, Cap. 528, literary work includes a compilation of data or other material, in any form, which by reason of the selection or arrangement of its contents constitutes an intellectual creation, including but not limiting to a table.  The subject matter of the protection is the skill, labour and judgment in searching out, selecting and collating information, data and materials.  Very often, the information, data and materials involved are not themselves original or are already in the public domain: see for example Elanco Products Ltd v. Mandops [1980] RPC 213.  There is no statutory definition on what amounts to compilation.  It has been observed that “Provided the subject matter can reasonably be called a compilation, it will almost always fall within the statutory description”: Copinger & Skone James at para.3-26, citing (at footnote 72) the comment of Lord Reid in Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR 273, at 278 that cases in which copyright has been denied to a compilation are comparatively few.      

12.  As to the interplay between compilation and news and press information, it is the plaintiff’s submission that there is no reason to restrict the copyright protection to compilation of trade data or scientific instructions, but should extend to cover skill and labour expended in the collation of other data or information and their expression in words.  I agree that, in principle, the copyright protection of compilation of information is capable of extending to compilation of news and press information, even though there is no copyright in mere news and press information.  The public interest in free and wider dissemination of news to the public at large that underlines the denial of copyright protection to mere news and press information is not engaged since the protection afforded to compilation is the skill and labour in the making of compilation, and not the news and information that are being compiled.

13.  The editors of Copinger & Skone James have, in the context ofcopyright infringement of newspaper report (at para.7-40), recognized that “if the originality lies in the collecting together and presentation of information, so that the work has elements of a ‘compilation copyright’ then an infringement is likely if the defendant, in covering the same story, has simply saved the effort of doing this work himself.”  Reference was made to PRC Ltd v. Dow Jones Telerate Ltd [1998] FSR 170, a case on news concerning the cocoa crop.  The plaintiff, who collected data and made reports and forecasts in relation to the cocoa crop, sued the defendant, a specialist commodities news services provider, in infringement of copyright on.  The court upheld the claim, finding that three articles written by the defendant’s journalist had copied parts of the plaintiff’s reports either by direct quotations or by paraphrasing or summary.  Lloyd J was not dissuaded by the arguments that there is no copyright in an idea and that there could be no copyright in news.  He noted that counsel for the defendant did not go so far as saying that because the plaintiff’s report is news, it could be copied wholesale in a report of that news without a substantial part being taken in that process: at p.183. 

14.  Miss Tam SC submits that copyright does not subsist in a news article as a compilation because on a proper analysis, news are just historical facts or information and that the law draws a distinction between the skill and labour involved in making compilation and the skill and labour in ascertaining information.  The former enjoys copyright protection but the latter does not.  In response, Mr Shieh SC points out that modern day news reporting is not just about having a reporter attending the scene to obtain the facts of the happening.  Instead, researches into historical facts and related events and analyses are carried out.  The press room would be involved in selecting and collating the available information, data and materials and expressing them in an organised and attractive manner.  The news article or report that is eventually written thus represents a compilation of news and other information and the skill, judgment and labour involved in making the compilation is capable of enjoying copyright protection.  There is, in my view, considerable force in this submission.         

15.  Whether the copyright in compilation subsists in a news article has to be answered by analysing the true nature of the article in question.  This brings me to a consideration of the plaintiff’s Articles.  At the outset, it is necessary to reiterate two trite principles.  The first is that striking out is only appropriate in plain and obvious cases and the court must be very careful about the striking out of claims in advance of all the evidence being put before the court.  The second is that it is no part of the court’s function at the interlocutory stage to engage in detailed analysis of the plaintiff’s case.  In looking at the plaintiff’s Articles, what the court is concerned with is to see whether it is arguable that the copyright in compilation can apply to them.    

16.  Broadly speaking, the plaintiff’s Articles fall into three categories.  The first is in the nature of a news story.  This covers the first of the plaintiff’s Articles (雷曼苦主激到腦死), which is a story of an elderly purchaser of the Lehman Brothers mini-bonds, illustrated by photographs and drawings.  It appears from the contents of the article that the reporter(s) had carried out interviews with the purchaser’s family members and made enquires with bank staff.   It is not a report of the news of the day or a description of historical fact.  The article is arguably a compilation.

17.  The second type is a combination of a piece of news or current event and the relevant data, information and materials.  The second, third, fifth, sixth and seventh of the plaintiff’s Articles fall within this category.  The second article (中央贈港  中華鱘又死一條) is about the news of the death of another of the Armoured Sturgeon fish presented to the SAR government by the central government.  At the same time, the article contains various other information and materials, such as the circumstances surrounding the presentation of the fish to Hong Kong, the response of the Ocean Park and its chairman to the incidence of death and an expert commentary on the probable cause of the death.  The third article (200 警察家庭收陰司紙利是) relates a piece of news, namely, households in a police quarter had received through the post burnt hell bank notes.  It also includes other information and materials, such as the respective views and comments of a feng shui teacher and a lawyer on the implications and legal position of the act of mailing hell bank notes.  As to the fifth article (更衣室藏攝錄機偷拍啤酒女郎疑多人中招酒樓經理被捕), apart from reporting on the arrest of a restaurant manager for secretly filming beer salesgirls when they were changing clothes, it also contains materials and information that are not news items or past facts, such as a lawyer’s view on the possible offences involved and the likely sentences and also the working conditions of beer salesgirls and problems encountered in their work.  Likewise, the sixth article (四漢拐帶小姊妹入鋪集禮非禮) contains both the news of the arrest of four men on suspicion of indecent assault and also the expert advice of a clinical psychologist on measures to protect young children from sexual abuse.  The seventh article (欠債消防被拍裸照) similarly reports on the crackdown of a finance company and the arrests of its staff for intimidating their debtors and, at the same time, gives information on bankruptcy and the borrowings made by members of the disciplinary forces. 

18.  Plainly, the articles under this second category do not just contain mere news or past facts.  Instead, they contain a variety of information and materials that are indicative of efforts and skill being expended in researches, selection, collation and presentation.  Each of them is arguably capable of being protected as a literary work in the form of a compilation within the meaning of section 4(1) of the Copyright Ordinance.  

19.  The third category consists of the fourth of the plaintiff’s Articles (TVB 兩助理編導圖姦舞蹈員).  It focuses primarily on a current event, namely, the arrest of two TVB assistant directors on account of suspected attempted rape.  Although the bulk of its content is on a current event, it is not plain and obvious that the article consists solely of mere news information or past facts such that it is incapable of being protected by the copyright in compilation.

20.  In short, upon a reading of the plaintiff’s Articles, it cannot be said that they are plainly incapable of being a compilation within the statutory description and not entitled to copyright protection.

21.  I turn next to the defendants’ objection that compilation has not been pleaded by the plaintiff.  The plaintiff’s case of copyright is at paragraph 10 of the Statement of Claim, which reads:

“10. The Literary Works:-

(1) were created by the respective authors (“collectively the Authors”) in their respective course of employment with the Plaintiff;

(2) were created by the Authors on or about the respective dates as particularised in the third columns of Schedule 1;

(3) were first published in Apple Daily (蘋果日報) on or about the respective dates as particularized in the fourth column of Schedule 1;

(4) were created by the respective Authors through the exercise of independent and substantial skill, judgment and labour and are original literary works within the meaning of the Copyright Ordinance (Cap 528, the “Ordinance”);

(5) contain, inter alia, exclusive news and/or exclusive information which were privy only to the Plaintiff and the Next Media Group at the material times;

(6) contain, inter alia, exclusive news and/or exclusive information which were exclusively obtained through the exercise of independent and substantial skill, judgment and labour and are original literary works within the meaning of the Ordinance;

(7) contain, inter alia, news and/or information which were conveyed in a particular form of language and/or mode of expression; and

(8) contain, inter alia, inventive original and unique concepts and/or unique form of expression.”

22.  Quite clearly, compilation has not expressly pleaded.  Nor is this apparent from the pleading.  Paragraph 10(1), (2) and (3) deal with the ownership, authorship and first publication of the copyright.  As to paragraph 10(4), it deals with originality of he plaintiff’s Articles.  Paragraph 10(5) pleads exclusivity of the information contained in the plaintiff’s Articles, which is more relevant to infringement.  Then in paragraph 10(6), copyright is claimed for the skill, judgment and labour in obtaining the exclusive information.  Miss Tam SC submits, and I agree, that this plea is inappropriate in that the skill and labour in ascertaining the information is incapable of attracting copyright protection: see Elanco Products Ltd v. Mandops at p.226 and PCR Ltd v. Dow Jones at p.183.  As for paragraph 10(7), it relates to textual copying.  Paragraph 10(8) is a round-up plea. 

23.  That the Statement of Claim does not on the face of it raise an issue of subsistence of literary copyright in the form of compilation is reinforced by the particulars of infringement pleaded in paragraphs 19 and 20.  The thrust of the particulars is on reproduction of certain unique language, expressions and descriptions.  There is no reference to the taking of any skill and labour in the assembly, selection or presentation of information.

24.  Compilation is a particular form of literary copyright, the originality requirements for which differ from those of the conventional literary work.  This in turn impacts upon the application of the test of substantial reproduction.  The plea should be clearly pleaded so as to show what had been compiled and which part of the skill and labour had been taken by the defendants.  In this regard, the Statement of Claim is unsatisfactory.  The defects in the pleading, however, are not such as to warrant a striking out and dismissal of the action. As explained in the other parts of this Decision, the plaintiff’s case on compilation is not unarguable.  The shortcomings in the Statement of Claim are not incurable.  The present case is distinguishable from the case of Metix (UK) Ltd v. G H Maughan (Plastics) Ltd [1997] FSR 718, in which the claim was struck out in that no viable case could be made out for the moulds in question to come within the meaning of “sculptures”: see pp.720-722.      

A2. An arguable case of infringement?

25.  The crux of the plaintiff’s pleaded case on infringement

appears at paragraphs 19 and 20 of the Statement of Claim.  Paragraph 19 pleads:

“ 19. The Defendants’ Infringing Articles could not have been made without copying, in whole or in substantial parts, the corresponding Plaintiff’s Literary Works as:-

(1) The unique language, expressions and descriptions used in the Infringing Articles were closely similar to the corresponding Plaintiff’s Literary Works;

(2) The title and contents of the Defendants’ Infringing Articles were closely similar to the corresponding Plaintiff’s Literary Works;

(3) The publications of each and every one of the Defendants’ Infringing Articles immediately followed those of the Plaintiff’s Literary Works; and

(4) The sequence of the publications of each and every one of the Defendants’ Infringing Articles was identical to that of the Plaintiff’s.”  

Paragraph 20 goes on to state the particulars of the unique language, expressions and descriptions, the contents and title and the timing and sequence of events as respectively pleaded under paragraphs 19(1) to (4). 

26.  As seen, the plaintiff’s pleaded case of infringement relies on the identified similarities between each of the plaintiff’s Articles and the corresponding defendants’ Articles and also access and the opportunity to copy.  The defendants’ argument in this application is that the plaintiff’s Articles and the defendants’ Articles are very different in terms of language, expressions, styles of presentation and organization and that there is an absence of objective similarity.   Hence, even if the plaintiff can make out a case of access, no inference of copying can be drawn.  Further, even if an inference can be dawn, there is no copying of the substantial parts of the literary works in the plaintiff’s Articles because of the differences between the two sets of articles.  As to the similarities and unique expressions, descriptions, titles and quotations identified by the plaintiff, the defendants’ argument is that they are common colloquial expressions and are too commonplace and trivial to form a substantial part of the literary works of the plaintiff’s Articles, such that even if they were indeed adopted from the plaintiff’s Articles, it did not amount to copying of a substantial part of the literary works.    

27.  In an effort to make good the defendants’ arguments and to demonstrate the dissimilarities between the plaintiff’s Articles and the defendants’ Articles, Miss Tam SC had taken the court through a close examination of and comparison between the plaintiff’s Articles and the defendants’ Articles.  Attempts were also made at analysing the context, the choice and emphasis of the language and the manner of expressions with a view to identifying the differences between the two sets of articles.  Albeit to a lesser extent, the plaintiff’s written submissions also endeavour a comparison of the words and phrases employed in the plaintiff’s Articles with those in the defendants’ Articles, pointing out that there were frequent occurrences of similarities justifying inferences of copying.            

28.  The issue of copying is a question of fact.  Whether an inference of copying can be drawn is dependent on the circumstances of the case.  The likelihood of the defendants having access to the plaintiff’s works, the extent of objective similarities and whether the similarities are unique or commonplace are some of the relevant circumstances.  All these are matters for evidence.   Similarly, the question of substantiality is a matter of impression to be formed from a comparison of the plaintiff’s Articles and the defendants’ Articles and an assessment of the copied features thus identified: see the discussions in Natuzzi SpA v. De Coro Ltd [2007] 3 HKC75, 102-105 at paras.135 to 152.       

29.  Save in exceptional cases where the matter is clear and straightforward, disputes as to issues of copying and substantiality are not suitable for determination in a striking out application.  It is not the purpose of a striking out application to engage in meticulous analysis of the evidence.  The case of Ludlow Music Inc v. Robbie Williams [2001] FSR 271, on which the defendants rely in contending that a striking out is appropriate in the present case, is an example of one of those exceptions where the issues of copying and substantiality were rendered clear and beyond doubt by the expert engineering evidence before the court, such that the court was prepared to make a determination at a summary judgment application.  The present case stands in very different light.

30.  It is also the plaintiff’s argument that the infringement also takes the form of paraphrasing and altered copying, a point which is not apparent from the Statement of Claim.  There is no dispute that copyright in a literary work can be infringed by paraphrasing or altered copying.  The cases of Elanco Products Ltd v. Mandops, op cit, PCR Ltd v. Dow Jones Telerate Ltd, op cit, Graves v. Pocket Publications Ltd [1936-1945] MCC 236 and Ravenscroft v. Herbert [1980] RPC 193 all involve paraphrasing copying of literary works in the form of compilation.  The defendants’ objection to this argument is intertwined with the objection that the plaintiff’s Articles cannot be literary works in the form of compilation.    Given my decision that it is not plain and obvious that the plaintiff’s Articles cannot amount to literary works in the form of compilations, I need only say that upon a reading of the two sets of articles in question, I am not prepared to say that the plaintiff’s case of paraphrasing or altered copying is obviously untenable.  Accepting the defendants’ submission that the common terms and expressions in the plaintiff’s Articles and the defendants’ Articles are commonplace colloquial terms, there is still the question of why were these terms selected and used to convey and express the information.             

31.  In short, the issue of whether there is any taking or copying of the plaintiff’s literary works requires an analysis and comparison of the plaintiff’s Articles and the defendants’ Articles to see whether the similarities lie only in the news and information, or whether there are also similarities in the language and expressions as well as whether there had been altered paraphrasing or altered copying and taking of the plaintiff’s skill and efforts in the making of compilations.  As noted above, the present striking out application is not an occasion for undertaking such tasks.    

A3. Collateral purpose

32.  The defendants also apply to strike out the claim as an abuse of the process of the court.  The defendants’ complaint is that the plaintiff commenced HCA1396/2009 not for the genuine vindication of its rights, but as an act of retaliation against the OPG for having commenced a copyright infringement action against it under HCA481/2009.  In HCA481/2009, the plaintiff was alleged to have infringed the copyright said to subsist in 33 news articles published in Oriental Daily News by making direct and verbatim copying of expressions in them.  The main defence of the plaintiff is that no copyright subsists in mere news and information.  The defendants say that the plaintiff’s compliant herein is diametrically opposed to the stance it took in defending the claim in HCA481/2009.

33.  In addition, the defendants say that commencement of HCA1396/2009 was designed to cause harassment or commercial prejudice to the defendants by way of negative publicity campaign against the defendants and the Oriental Press Group.  The defendants rely on the fact that immediately after the commencement of the action, the plaintiff prominently published an article in the Apple Daily criticizing the defendants of infringing its copyright in the plaintiff’s Articles.   

34.  The defendants’ allegations are refuted by the plaintiff.  Both sides have filed contentious affidavit evidence on the point.  Mr Shieh SC submits, and I agree, that the court cannot try and decide conflicting evidence of motive on affidavits.  Most importantly, the plaintiff’s motive in bringing the action against the defendant by itself cannot ground a striking out application.  If the claim is otherwise good or arguable, the court will not strike it out merely because it was brought with a collateral purpose.  I do not accept that the plaintiff’s claim can be struck out as an abuse of process because it was brought for a collateral purpose. 

A4. The claim against the 1^st defendant

35.  It is not in dispute that the 1^st defendant is the ultimate holding company of OPG.  It is also common ground that the 2^nd defendant, a BVI company, was and is the registrant of the Website.

36.  The plaintiff’s pleaded case against the ^1st defendant is set out in paragraph 5 of the Statement of Claim, which states:

“5. The 1^st Defendant:-

(1) is and was at all material times a limited company incorporated in Hong Kong and engaged in the business of newspaper publication;

(2) is and was at all material time responsible for the publication of news articles, including but not limited to the content of Oriental Daily News (東方日報) and The Sun (太陽報), via the Internet at their official website under the domain name of “on.cc” (“the Website”);

(3) is and was at all material times responsible for the sale of advertising spaces on the Website; and

(4) is and was at all material times provides Internet subscription to its online content on the Website.”     

37.  In seeking to strike out the claim against the 1^st defendant, the defendants have adduced evidence to the effect that the 1^st defendant only provides corporate management services and does not carry on any day-to-day business and all business operations of the OPG are conducted by the subsidiaries within the OPG.  It is specifically said that the 1^st defendant was not involved in the copying or publication of the defendant’s Articles or in any of the infringing acts complained of.  It is said that the plaintiff has no case against the 1^st defendant.  

38.  In explaining the joinder of the 1^st defendant, the plaintiff points out the difficulties it encountered in identifying the proper legal entity responsible for the Website. It refers to the 2009 Annual Report of the OPGwhich states (at p.52) that “ON.CC (HK) Limited” is the website service provider.  A domain search however reveals the registered domain owner or operator to be the 2^nd defendant, whose address is the same as that of the OPG.  Despite being the domain registrant and notwithstanding the Website appears to be an income generating entity, the 2^nd defendant has not been registered in Hong Kong under Part XI of the Companies Ordinance.  There is also no business registration record of it.  At the same time, the 2^nd defendant was not mentioned in the Annual Report of the OPG.  The plaintiff says that because the position as to which entity is truly liable for the internet publication is in doubts, the 1^st defendant, being the holding company of the OPG, is joined to ensure all parties who may be held accountable are before the court.

39.  In addition, the plaintiff refers to the 2009 Annual Report of OPG, which states (at p.4) that:

“on.cc”, the flagship online portal of Oriental Press Group, boasts the largest number of news products available online in Hong Kong … records significant  income growth when compared to last financial year … become an entry platform for advertisers to diversify their exposure into the internet media.  Together with “Oriental Daily News” and “The Sun”, the group is now offering a one-stop solution for SME to advertise in newspaper, TV, website and mobile … “on.cc” become the dedicated partners of Microsoft’s Window Vista in developing the desktop gadgets …”     

The plaintiff says that this shows the Website is the “on-line ‘face’” or alter ego of the 1^st defendant and that the Website is not a part of Oriental Daily Press and/or The Sun.  The plaintiff further says that the fact the 2^nd defendant has no business registration suggests, and there is an arguable case, that the Website is in fact operated by the 1^st defendant.  On these bases, it is said that the plaintiff is justified in joining the 1^st defendant as it is ultimately responsible for the operation of the Website. 

40.  In maintaining the action against the 1^st defendant, it is incumbent upon the plaintiff to show an arguable case of infringement against the 1^st defendant.  Specifically, there has to be some causal link between the acts of infringement complained of and the 1^st defendant.  On the materials before the court, it would seem that the 1^st defendant is joined because the plaintiff has doubts as to who in fact operated or operates the Website.  Since the Website is the official website of the Oriental Press Group and as the1^st defendant is the ultimate holding company of the Group, the plaintiff therefore deems it appropriate or expedient to hold the 1^st defendant responsible for the operation of the Website.  In my view, the plaintiff does not have a positive case of infringement against the 1^st defendant.  It has not been able to point to any involvement of the 1^st defendant in the publication of the defendant’s Articles on the Website.  Its case against the 1^st defendant is based on speculative inferences. The suggestion that the Website is the alter ego of the 1^st defendant is on thin ground.  I agree that the claim as against the 1^st defendant ought to be struck out.

A5. Conclusion

41.  On the defendants’ striking out summons, I make the following order:

(1) The Statement of Claim as against the 1^st defendant is struck out and the action against the 1^st defendant stands dismissed with an order nisi that the plaintiff pays the 1^st defendant the costs of the action and the application, to be taxed if not agreed. 

(2) The 2^nd to 4^th defendants’ application to strike out the Statement of Claim and to dismiss the action against them is dismissed with an order nisi that the 2^nd to 4^th defendants pay the plaintiff 80% of the costs of the application, to be taxed if not agreed.

(3)   There is an order nisi that the application be certified fit for two counsel.

42.  The order nisi in respect of the costs as between the plaintiff and the 2^nd to 4^th defendants is to reflect the plaintiff’s failure to properly plead its case of compilation.   I do not propose to make any directions for amendments of the Statement of Claim as leave to do so would not be necessary given that the defendants have not filed their defence.

B. Consolidation application

43.  The summonses seek, as a primary relief, the consolidation of the two actions and, as an alternative relief, an order that the two actions be tried together or one after the other by the same judge.  At the hearing, Mr Shieh SC accepted that a consolidation of the actions in the straight sense is inappropriate.  In my view, this must be right.  Firstly, the parties in the two actions are not identical. Secondly, while both claims are for infringement of copyright in news articles, different news articles are involved.  Thirdly, the questions of law in issue are not entirely the same in that, as confirmed by Miss Tam SC, compilation is not an issue in HCA481/2009. Fourthly, there is no indication that there will be an overlap of witnesses. As matters now stand, the only commonalities in the two actions are that they involve the same two groups of news media and that the legal issue of copyright in news articles and textual copying is engaged in both actions. 

44.  Miss Tam SC did not oppose to the alternative relief of the two actions be tried together or one after the other by the same judge, but said that the progress in HCA481/2009 should not be held back by having to wait for HCA1396/2009.  It is pointed out that HCA481/2009 is at a much more advanced stage, with discovery being completed, whereas HCA1936/2009 is still in the pleading stage.

45.  In my view, given that both actions involve the legal issue of copyright in news article and textual copying and that it is likely that the legal team for either side will be the same, there will be some saving of time and costs in the two actions being tried by the same judge.  As to whether the actions should be ordered to be tried together or sequentially, and if so, whether one trial should follow immediately after another, they are questions of case management, the determination of which hinges upon a number of considerations. The progress of the two actions is no doubt a relevant consideration, but it is not the only consideration.  The position with regard to the evidence, including documents and witnesses, and the feasibility and desirability of having a single set of legal submissions are also relevant positions.  Given that HCA1396/2009 is still in the pleadings stage, it is premature to come to any concluded view on the manner in which the trials of the two actions are to take place. These directions should be considered at a later stage and preferably be reserved to the trial judge.  The parties should also give thought to whether it is appropriate to apply under Practice Direction 5.7 for a trial judge to be assigned to the two actions.

46.  As to the costs of the consolidation application, although this is not a case for consolidation, the applying parties have succeeded in the alternative relief.  It is unfortunate that the parties had not given serious thoughts to the alternative relief before the hearing.  Had this been done, much of the affidavit evidence and written submissions relating to the dispute on consolidation would not have been necessary.  In these circumstances, I consider the appropriate order would be to make the costs of the summonses the costs in the cause.                              

47.  Accordingly, on the two consolidation summonses, I make the following orders:

(1)  The two actions are to be tried by the same judge. 

(2)  The questions of whether the trials should be heard together or sequentially and, if so, whether one should follow immediately after another are reserved to the trial judge.

(3)  There is an order nisi that the costs of the summonses be the costs in the respective actions in HCA481/2009 and HCA1396/2009.