FORMAT LIMITED v. URBAN COUNCIL

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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BETWEEN

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JUDGMENT

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1. Part of this action involves copyright. On the assumption that the copyright in question subsists in the relevant works or drawings, the defence is, inter alia, that the defendant enjoys its proprietorship. That assertion of the defendant is made in paragraph 8 of the Defence which reads as follows: -

2. A request for Further and Better Particulars has been made and a reply sent. The present controversy stems from the Particulars furnished pursuant to that request for the last two words in paragraph 8 of the Defence, i. e. "or otherwise". It is perhaps not impertinent to have the specific request and the relevant Further and Better Particulars so furnished set out in full. The request was: -

"Of the words "or otherwise", specifying precisely each fact and matter which will be relied upon in support of the allegation that the defendant acquired ownership of the copyright, the subject matter of this action."

 

To that, the reply was: -

 

"A number of the Defendant's publications showing the Defendant's Bauhinia symbol were supplied to the Plaintiff to assist the Plaintiff in its designing work under the agreement as referred to in its Statement of Claim. The Defendant also gave instructions and suggestions to the Plaintiff in the course of the said designing work.  It is clear from all these discussions and the surrounding circumstances that the 'Bauhinia' symbol and the copyright therein with or without the slight modifications, if any, made by the Plaintiff, would remain the property of the Defendant."

3. With these above Further and Better Particulars, the plaintiff is dissatisfied. On the 17th of October, the plaintiff's solicitors wrote to the Legal Department acting for the defendant in the following terms: -

4. To this letter of the plaintiff's solicitors, the defendant did not respond favourably. The matter finally came before the learned Master on the 21st of November, and it was held that the defendant had sufficiently complied with the plaintiff's request. From that decision of the Master, the plaintiff now appeals.

5. Right from the inception of the appeal, Mr. Xavier, Counsel for the plaintiff, wasted no time in conceding that paragraph 1(d) in the letter dated the 17th of October from those instructing him was insupportable. Mr. Xavier was equally ready to accept as being likewise unsustainable, the last part of paragraph 2(d) and 2(h) seeking a disclosure of the identity of "the parties present".

6. It would be more convenient for me to have the matters dealt with in the order as they are put in the said letter of the 17th October:

I turn next to paragraph (1)(b). Mr. Hui found it difficult to resist the particulars of dates by reason of the decision in Duke v. Wisden, but counsel invited the Court to infer from the second sentence of the Further and Better Particulars already given the time duration within which the material publications in this case were allegedly supplied. The second sentence, I repeat, reads as follows: -

"The defendant also gave instructions and suggestions to the plaintiff in the course of the said designing work".

Consequently, Mr. Hui contended that at least the plaintiff had been put on notice that the publications were shown before the completion of the plaintiff's design. Unless the defendant is unable to supply a precise or approximate date, an oblique reference to a period is, in my view, insufficient. The Plaintiff is entitled to know the time or times at which the defendant's publications were so allegedly supplied.  At least, the plaintiff ought to be told what date the defendant would regard as the plaintiff's design completion date. Personal knowledge of a party would not excuse his opponent from the necessity of pleading his own case.

1(c)  Mr. Hui relied on Duke v. Wisden again, but Mr. Xavier contended that that decision was distinguishable if only because identity of the parties was there irrelvant. Mr. Xavier submitted that it was of vital importance in this case for the plaintiff to be forewarned as to the identity of the personality by whom the publications were allegedly supplied, otherwise, so counsel explained, the plaintiff would be prevented from enquiring as to whether the personality involved had due authority to represent and bind the defendant. If in fact, the person who allegedly supplied the publications to the plaintiff had no proper authority to act on behalf of the defendant, the defendant's assertion would simply fail. Moreover, it is a matter of evidence to which the plaintiff is not, in my view, entitled to receive in advance. Mr. Xavier's contention was not presumably made with a view to seeking also particulars of the personality on the receiving end on behalf of the plaintiff. If counsel had so intended, I would have refused it for the same reasons.

Paragraph 1(d) has been conceded and I need to say no more.

Turning to paragraph (2), I should begin with 2(e). Mr. Hui suggested that the mere mention of instructions and suggestions in the Further and Better Particulars was adequate and that any further demand from the plaintiff would be, in substance, a request for subordinate facts and evidence. From the existing Further and Better Particulars, what immediately leaps to mind is: What instructions? What suggestions is the defendant referring to?" The tenor of these Further and Better Particulars leaves a reader in no doubt that the nature of the alleged instructions and suggestions is a material criterion affecting the finished product of the plaintiff or the manner in which the work was designed. That rmst be a relevant fact which should be pleaded. In my view, particulars ought to be further given on this aspect by the defendant.

Paragraph 2(b) and 2(f): My decision on those two paragraphs is to follow that given for paragraph 1(b). Counsel further argued that in the case of these alleged instructions and suggestions, it would go beyond inference or implication as the defendant had specifically averred that these instructions and suggestions were in fact given in the course of the said designing work. Counsel's submission did not, in my view, take the matter any further.

Paragraph 2(c) and 2(g): These again, I need say nothing more than adopt my reasoning given in support of my decision in relation to paragraph 1(c).

Paragraph 2(d) and 2(h): The end portion in each of them had been conceded by Mr. Xavier as insupportable. Mr. Hui suggested that the remainder was but an extention of paragraph 2(a) and paragraph 2(e). They certainly are part and parcel of the other two preceding paragraphs. The former relate to contents, and these relate to form. These two latter paragraphs raise a classical and legitimate request for the form of these alleged instructions and suggestions. In my view, they should be allowed.

7. Lastly, as to the words "surrounding circumstances", Mr. Hui informed the Court that that term meant "in the abovementioned circumstances". Mr. Xavier accepted counsel's statement, so did I.  But I think Mr. Xavier is entitled to have the defendant reduce its allegation into writing so that it may be bound. It is one matter to offer an explanation for words pleaded. It is quite another in having that explanation put down in the pleading.

8. In conclusion, the defendant must further supply particulars in line with this my judgment. The appeal is therefore allowed to the extent delineated in my judgment with 4/5ths of the costs of this appeal and also 4/5ths of the costs before the learned Master for the plaintiff against the defendant.