KAMBROOK DISTRIBUTING PTY LTD v. JACK LIGHT INDUSTRIAL CO LTD AND OTHERS

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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JUDGMENT

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1. This case involved three defendants. Shortly before Mr. Rogers closed his opening speech, settlement was reached with the 2nd and 3rd Defendants. This now leaves the 1st Defendant only, and admissions have been made on behalf of the 1st Defendant.

2. Copyright infringement has been conceded and admitted in respect of three of the component parts of the article which is the subject to this case. Copyright and ownership thereof have been admitted in respect of the two other parts but not infringement of that copyright. The other two parts with which we are still concerned are the handle and the lid.

3. The plaintiff in this case is, in Australia at least, a well-known designer and manufacturer of electrical household goods. In 1978, Mr. Bannigan, who gave evidence on behalf of the Plaintiff and who is the Managing Director of the Plaintiff Company, conceived the idea of converting an electric kettle into what is now known as an electric jug which has a multi-function; it not only boils water, it will heat food and it will poach eggs. His preliminary sketches which are to be seen in the Plaintiff's bundle at page 72, sketches in which his idea finally received some concrete form, eventually reached the market in the form of the Plaintiff's product K10.

4. As I said what is in issue now is whether or not the Defendant has infringed copyright in respect of the lid and the handle of the Plaintiff's product the K10.

5. On behalf of the Plaintiff Mr. Rogers contends that the handle and the lid cannot be divorced from the final product. Mr. Liao for the Defendant says that they have to be looked at individually.

6. Mr. Rogers as I have said contends that the K10 really is one object, one product, and must be looked at as a whole, as was conceived and designed by Mr. Bannigan and as is shown on p. 72 of the Plaintiff's Bundle. It is not legitimate, Mr. Rogers says, to cut up an artistic work into its component parts. Mr. Rogers points to the Beza model, and he says, if you are to separate the handle from that model, then why not separate the spout as well, and that of course has not been done and has not been contended.

7. There was some argument about the handle that was made by Mr. Beza and there was contention as to whether or not it formed part of one solid model, a jug body with a handle. It is quite clear from Mr. Stephens' evidence, and I find as a fact, that the handle was modelled separately from the jug body by Mr. Beza. Not only was it modelled separately, it was modelled, as Mr. Stephens said, out of several parts which were glued together to produce the final model of the handle.

8. Mr. Rogers, rightly, says that the Plaintiff is not seeking copyright in all the small pieces which were glued together and which make the Beza handle. That would be wholly unrealistic. It was one composite.

9. Finally, Mr. Rogers prays an aid the amended defence; in para. 4a, as he points out, there is a reference to the Defendant's utensil in the singular, and in para. 6 there is a reference to the Plaintiff's product, again in the singular. This, says Mr. Rogers, illustrates the Defendant's approach to this case.

10. Mr. Liao contends that the handle and the lid should be dealt with separately. As he says, separate models were made, separate moulds, separate dies. Mr. Bannigan has said that the tooling drawings were probably made on one piece of paper. There is no real dispute about that and I find as a fact that the tooling drawings for the various components of the K10 were made on one sheet of paper. But said Mr. Liao, even if that is so, the drawings were still separate ones on that sheet.

11. Mr. Liao has also prayed in aid the recent decision of Mantell J. in the Mike & Kremmel ⁽¹⁾ case. That was a case involving a tin opener and Mantell J. had to consider whether or not there was infringement of copyright in respect only of the handle and lever. In other words, the product in that case was divided up and dealt within respect of component parts. I think, without knowing the full facts of that case, it only suggests there may be cases where it is appropriate to separate a product into its separate parts. In my judgment, the case before the court today is not such a case.

12. Indeed in my judgment I have no hesitation in saying that the Plaintiff's product must be regarded as a whole. It would be wholly unrealistic, I think, in the circumstances of this case to separate it into its five component parts. The five component parts are, of course, the egg poacher, the suspended basket, the jug body itself, the handle and the lid. There is one other part, that is the heating element, but that is not a matter of contention before the court. So I refer only to the five parts.

13. Mr. Bannigan as I have said gave evidence on behalf of the Plaintiff. He gave his evidence, I thought, very fairly and when he was cross-examined he readily conceded certain points to the Defendant. His evidence most clearly was that he designed the K10 as a whole. It started, as he said, with the egg poacher, progressed from there and finished up as the final model which we see in court today. In the course of his evidence he was questioned about the Beza model. The Beza model was the first mock-up, the first time at which Mr. Bannigan's idea, Mr. Bannigan's preliminary sketches, were converted into three dimensions so that there could be a clear impression of what the finished product would look like. When he was questioned about this Mr. Bannigan said, had Mr. Beza simply sent back the jug body without the handle, that would have been of no use to him at all. He wanted to get the overall impression of what his product was going to look like.

14. Careful examination of the evidence which has been given and of the K10 product, the Plaintiff's product, also shows a very close correlation between the body and the handle. This was not, I think, referred to by Counsel in their closing speeches, but nonetheless I regard it as a very significant point in coming to my conclusion. Mr. Bannigan, it will be remembered, said that the two fixing screws at the base of the handle are fixed into two bosses which are part of the jug body and which appear inside the jug body, underneath the element. This he says, and he was not contradicted, was a novel idea. The design of the handle and the body were therefore in very close conjunction. It seems to me that in respect of the K10 the handle, although it was moulded separately, is as much a part of the jug body as the handles on the jugs or kettles, parts of Exhibit P4, where handles are actually moulded as part of the body.

15. It has been admitted by the Defendant that three parts of the Plaintiff's product have been copied, that is the body, the egg poacher, and the suspended basket. By that admission alone it seems to me there has been reproduction of a substantial part of the Plaintiff's work. That is the test propounded by the Copyright Act. Causal connection has been admitted. In my judgment, therefore, the Plaintiff is entitled to the relief which it seeks.

16. It may well be the case will go further.  It may well be I shall be found to be wrong in my decision. I should not wish the parties to be involved in further time and costs. I propose, therefore, to deal with the two items, the lid and the handle, separately.

17. Various authorities have been cited. I will not go through them in detail. Suffice it to say that they emphasize two points. First, they emphasize the law, that is the copyright protects not ideas but it protects the form in which those ideas are expressed. Secondly, I think, the cases emphasized that each case turns on its own facts. One very important point, which emerges from all those cases, some of which I shall mention, is that a first impression is not necessarily a good guide. I have been referred to the Swish ⁽²⁾ case and I have been directed in Swish case to the photograph which appears on page 564 in which the interior latches are depicted. The Defendant's interior latches are joined whereas the Plaintiff's are separate.  The Defendant's latches have pronounced ribbing. At first blush, therefore, there are not perhaps striking similarities yet after careful examination the court found in that case that there are striking similarities between the Plaintiff's and the Defendants' products both as a whole and in the components. Then in the Catnic ⁽³⁾ case, which concerned the design and the manufacture of lintels, one might have thought that there had been infringement of the Plaintiff's copyright. That was found not to be so. These cases, I think, underline that there must be a careful examination of the product in each case:

18. Turning then to the Plaintiff's handle. The Plaintiff through Mr. Bannigan had an idea for the handle.  That idea was translated first by the drawings and by the finished product into what is a D-shaped handle, an integral part of which is a housing for the electrical heating element and that housing incorporates a hexagonal window. In the Plaintiff's handle that hexagonal window fits over the control part of the element. That prevents the element from rotating inside the body of the jug. If it did not do that, if the element rotated, then the hot element will come into contact with. plastic, and disaster will ensue.

19. That was Plaintiff's idea, which took its first form on p. 72 of the Plaintiff's Bundle. If we look at the handle which is depicted on p. 72 and compare it with the finished form, which is in court, of the Defendants' handle, I think I need say no more than that I find it very difficult to see any similarity other than in the idea. Mr. Roger's contention that its intended function must not be disregarded, I think, does not help him over the drawings. The drawings of the handle, the preliminary sketches, were succeeded by the Beza model, by tooling drawings by moulds and dies, and resulted in the finished product.

20. I now compare the two finished products. Mr. Stephens who gave evidence on behalf of the Plaintiff said that the Defendant's handle appears to be the smaller brother of the Plaintiff's handle. Mr. Bannigan for his part conceded that there are cosmetic differences between the two handles. What he said was that he is anxious to protect three matters in respect his handle. There has, I know, been some dispute about the number of matters he is seeking to protect. When I say 3 matters, I think they will be obvious and there will be no dispute about them. He seeks to protect, first, the covering of the electric heating element; secondly, the hexagonal window in the cover or housing of the heating element, that's the hexagonal window to which I have already referred and which prevents rotation of the heating element; and thirdly, the way in which the handle is fixed to the body of the jug. It is affixed by 3 screws; there is a sheer screw at the top, securing it to the body of the jug. The sheer screw was arrived upon after the Beza model had been made, in place of a horizontal screw. There are 2 screws at the bottom of the housing which connect it to the body of the jug, secured to the bosses to which I have already referred.

21. Mr. Liao rightly says the handle is a commonplace product. I have been referred to a number of cases, including the case of Kenrick ⁽⁴⁾, from which it is clear that the courts impose a very strict standard indeed when it comes to infringing copyright of such a product.

22. Visually, I am bound to say, I am unable to find any reproduction of a substantial part of the Plaintiff's handle. The Plaintiff's handle is characterised by large, bold, vertical ribbing on the grip; it has a right-angled shoulder at the top; the housing for the control of the element is square. The Defendant's handle has no ribbing on the grip; it has a sloping shoulder; and it has a round housing for the control.

23. Both housings have a hexagonal window. This shape is dictated by the standard shape of the control on the heating element. The Plaintiffs housing grips the control itself to prevent rotation of the element. The Defendant's housing grips not the control but the plug when it is inserted into the control to provide power. So rotation is prevented by the plug.

24. In my judgment what has been copied is not, in copyright terms, the form of handle but the idea of a combined handle and cover. I would therefore find for the Defendant.

25. As to the lid, much of what I have said about the handle is applicable. However, Mr. Bannigan's sketches on p. 72 portray nothing more than the idea of a cover for the jug, circular in shape. I see no similarity between the sketch of the lid and the Defendant's product.

26. Mr. Banningan said that the most important features of his finished lid are the measurements, in particular the diameter and overall height. He conceded, however, that there are differences in appearance. What he called cosmetic differences.

27. With respect, apart from a basic saucer shape, I can see little similarity. The handles, or knobs, and there must be one in order to lift the lid, are different in shape. The Plaintiff's lid simply sits on the rim of the jug; the defendant's has an additional flange which grips the rim of the jug. These latter features have their own advantages and disadvantages. The Plaintiff's lid is easy to remove but falls off more easily when pouring; the Defendant's lid does not fall off but is more difficult to remove and could cause hot food or liquid to slop over.

28. Again, in respect of the lid, I would find for the Defendant.

29. For completeness, Mr. Stevens said that if a man making the Defendant's handle used features of the Plaintiff's handle, the man would have saved time and effort. That evidence is too imprecise. Therefore, the fact that the Defendant has not chosen to give evidence is irrelevant. It was not, in my view, necessary for the Defendant to have explained its design and development process.

                (As this judgment has been reconstructed from a defective tape and brief notes, I shall be happy to hear counsel on any errors or omissions which they consider serious).

(1) Mike & Kremmel Ltd. and anr. v. Chi Shing Industrial Co. Ltd. Action 4049 of 1984.

(2) L. B. (Plastics) Ltd. v. Swish Products Ltd. (1979) R. P. C. 551.

(3) Cantic Components Ltd. & anr. v. Hill & Smith Ltd. Fleet Street Reports (1978) 405.

(4) Kenrick & Co. v. Lawrence & Co. XXV Q.B.D. 99