B.G. LIGHTING CO. LTD. v. METRO LUMINAIRES LTD.

1991 No. A8919

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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J U D G M E N T

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1. The Plaintiff designs, manufactures and sells lights and lighting fixtures. It claims to be the owner of the copyright in respect of the design of a lighting fixture known as "HCT-2". It alleges that the Defendant has infringed its copyright by offering lighting fixtures for sale which are reproductions of "HCT-2". It seeks various forms of relief. The Defendant has chosen not to appear or be represented today. Save for such admissions as are made by the Defendant in the Amended Defence, it is therefore necessary for the Plaintiff to prove its case. All references in this judgment to sections of an Act are references to sections of the Copyright Act 1956.

2. I find the facts to be as follows. The design for the lighting fixture which came to be known as "HCT-2" first appeared in two drawings made in September 1988 by an employee of the Plaintiff, its production designer, Chan Wing Kin. The drawings were based on the idea of Samson Wong, the Plaintiff's Managing Director. He knew that crystal lighting was regarded as a symbol of status and success in South-East Asia, and he wanted to give crystal lighting a new hi-tech modern appearance. Mr. Chan subsequently prepared two technical drawings for the lighting fixture which incorporated his designs.

3. In due course, the Plaintiff manufactured a range of lighting fixtures which it called the Hi-Tech Crystal Lighting Series. One of the lighting fixtures in that range was the lighting fixture known as "HCT-2", and that fixture was based on Mr. Chan's drawings. From October 1988, the range of lighting fixtures including the fixture known as "HCT-2" were promoted in various trade and consumer magazines, and the range, including the fixture known as "HCT-2", featured prominently in the Plaintiff's catalogue which was published in April 1989. Finally, in January 1989, the Plaintiff deposited the technical drawings relating to the various designs of the lighting fixtures in the Hi-Tech Crystal Lighting Series, including the technical drawings prepared by Mr. Chan relating to the fixture known as "HCT-2", with the Hong Kong Design Depository of the Federation of Hong Kong Industries.

4. On these facts, I find that

(i) the design and technical drawings prepared by Mr. Chan relating to the lighting fixture known as "HCT-2" amounted to artistic works within the meaning of section 3(1)(a),

(ii) the lighting fixtures which were manufactured by the Plaintiff based on those drawings were reproductions of the drawings within the meaning of section 48(1),

(iii) those reproductions were issued to the public within the meaning of section 49(2)(c) when lighting fixtures of the type known as "HCT-2" were first offered for sale to the public,

(iv) as a result, copyright subsisted in the drawings by reason of section 3(3)(a), and

(v) by reason of section 4(4), the Plaintiff was entitled to the copyright subsisting in the drawings.

5. I turn to the question whether the Plaintiff has proved that the Defendant has infringed its copyright in the drawings. In para. 6(a) of its Amended Defence, the Defendant admitted that it had assembled and sold various lighting fixtures since the middle of 1989. Included in the lighting fixtures to which that admission related were four particular lighting fixtures. The Defendant's solicitors in correspondence have confirmed that certain photographs are photographs of those four lighting fixtures. They are at pp. 68 and 74 of the bundle of documents on which the Plaintiff relies.

6. I have compared (a) the drawings in which the Plaintiff's copyright subsists and (b) the photographs in the Plaintiff's promotional brochures and catalogues of the lighting fixtures manufactured by the Plaintiff known as "HCT-2" with (a) the photographs of the four lighting fixtures which the Defendant admits having assembled and sold, and (b) the Defendant's drawings for their manufacture which were disclosed on discovery. There is a very substantial degree of objective similarity between them, and it is apparent that the essential features and substance of the Plaintiff's design have been adopted. That objective similarity, coupled with the fact that the Defendant had the opportunity to copy them (because the Plaintiff's lighting fixture known as "HCT-2" was promoted extensively and was freely available on the market) raises a prima facie case of copying, and therefore a prima facie case of copyright infringement. In those circumstances, the burden shifted to the Defendant to establish that copying had not taken place. The absence of the Defendant has meant that it has placed no evidence before me to establish that copying has not taken place. In those circumstances, I find that the Defendant has knowingly infringed the Plaintiff's copyright in the drawings prepared by Mr. Chan relating to the lighting fixture known as "HCT-2".

7. In the interests of completeness, I should add that in para. 6(b) of the Amended Defence, the Defendant alleged that it had based the design of its lighting fixtures on (a) a sample and a photograph supplied by a company in Taiwan some time in 1989, and (b) similar European designs, in particular a design created by an Italian company which had been advertised in a trade magazine in early 1988. The Amended Defence added that the documents and sample could be inspected by prior appointment at the Defendant's solicitors' office. Mr. Wong took up that offer. On 11th March 1992, he inspected them at the Defendant's solicitors' office. He was not shown any European design or the trade magazine which was alleged to have advertised the design created by the Italian company. All he was shown was the sample supposedly supplied by the company in Taiwan. Photographs were taken of that sample. They appear at pp. 88 - 92 of the bundle. I have looked at them with care. They bear no resemblance to the particular design features which make the lighting fixture known as "HCT-2" so distinctive.

8. Accordingly, there must be judgment for the Plaintiff on its claim against the Defendant, and I will now hear counsel on the relief to which the Plaintiff is entitled.