LL.B. CONSULTANCY LTD v. PROWAY LTD AND OTHERS

HCA 5130/2001

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 5130 OF 2001

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R U L I N G

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1. This is an application for summary judgment against the 1st defendant on the plaintiff's claim for infringement of its copyright in an article relating to employment visas, which has since about late 1996 been published on its web site on the internet.

2. The plaintiff alleges that in late October 2001 certain extracts or excerpts from the plaintiff's article appeared on the web site of the 1st defendant in an article relating to employment visas and immigration.

3. It is common ground that the plaintiff's action against the 1st defendant is for primary infringement of the plaintiff's copyright and therefore the plaintiff does not need to prove knowledge on the part of the 1st defendant that its work was infringing copyright material. It is also common ground that the plaintiff's copyright can be infringed by either direct or indirect copying of the protected work.

4. For the purpose of this application, the 1st defendant has not sought to dispute that the plaintiff's article is capable of protection by the law of copyright or suggest that it is not an original work. In particular, the 1st defendant has not sought to dispute the plaintiff's ownership of the copyright in the article in question.

5. Mr Wong for the 1st defendant has taken two points in these proceedings:

(1)	whether there is a triable issue on the question of "copying";
(2)	whether there is a triable issue on the question of whether "a substantial part" of the copyright work in question has been taken.

6. I propose only to deal with the second of these points put forward by Mr Wong because, in my view, it is decisive to this application.

7. As Copinger & Skone James on Copyright, Vol. 1, (14th edition) points out at paragraph 7.25, "some use of a copyright work is clearly permissible for the Act does not prohibit use of 'any' part even if that part was a result of labour, only 'a substantial part'". The law of Hong Kong is to the same effect. (See Section 22 of the Copyright Ordinance, Cap. 582.)

8. The plaintiff's article in which it has copyright runs to 24 pages.

9. What the plaintiff complains has been appropriated by the 1st defendant ultimately amounts to 3 individual expressions, 3 complete sentences and a part of a fourth sentence from the plaintiff's article.

10. Mr Wong points out that the fact that the plaintiff may have copyright in the whole article does not necessarily mean that parts of the copyrighted work might not have been copied from another work. By reason of the subject matter being dealt with it is likely, if not inevitable, that it will have been compiled by reference to other material.

11. He points to the fact that the same phraseology appears in another site under the name of "Lowtax". Indeed there is evidence from which a court could well conclude that the 1st defendant did not copy the complained of excerpts and extracts directly from the plaintiff's article, but from the "Lowtax" web site. In the affirmation of Law Lai Choi Samson filed on behalf of the 1st defendant, he alleges that the designer of the 1st defendant's web site visited the web site of "Lowtax" but not that of the 1st defendant. There is even greater similarity between the words complained of in the defendant's article and the "Lowtax" article then between the defendant's article and the plaintiff's article.

12. Mr Wong admits that he cannot say from where "Lowtax" derived its material, but contends that it is at least a possibility, still consistent with the plaintiff having copyright in its article, that both the plaintiff's extracts and "Lowtax" extracts came from the same source, or indeed that the person who compiled the plaintiff's article derived the passages in question from the "Lowtax" site.

13. Mr Wong goes on to argue that a relevant test in so far as the substantiality of what the 1st defendant has appropriated is "Has there been a substantial appropriation of the independent labour of the author?" (See paragraph 7.27, Copinger & Skone James). He relies on the passage from Copinger & Skone James at paragraph 7.30 as follows:

"If what has been taken from the plaintiff's work is material which was not original to the maker of the work, because for example it was copied from another work, then it should be disregarded in deciding the issue of whether a substantial part of the plaintiff's work has been copied."

14. He points out that it would not be fair to give judgment at this stage against the 1st defendant, simply because it cannot now adduce evidence as to when the "Lowtax" material was first put on the internet. The 1st defendant does however point to other web sites where the 3 expressions used in the plaintiff's article have been used.

15. In my view, this is not a case where all the 1st defendant is saying is that there is a possibility that discovery or cross-examination might reveal a defence as in the Microsoft case ([1997] FSR 580).

16. Bearing in mind the limited number of expressions and sentences involved in the plaintiff's complaint, and the absence of evidence from the author of the plaintiff's site as to whether these expressions and sentences were original or alternatively from where he derived the particular passages, I find that the 1st defendant has raised a triable issue as to whether he has used "a substantial part" of the plaintiff's copyright material. I therefore give leave to the 1st defendant to defend.