KONAMI KABUSHIKI KAISHA (KONAMI CORPORATION) AND ANOTHER v. INFO POWER LTD

HCMP 2589/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

MISCELLANEOUS PROCEEDINGS NO. 2589 OF 2006

(ON APPEAL FROM DCCJ NO. 2753 OF 2006)

_________________________

_________________________

______________________

J U D G M E N T

______________________

Hon Yeung JA (giving judgment of the Court):

Introduction

1.  In June 2006, the plaintiffs commenced proceedings in the District Court against the defendant for alleged copyright infringement and passing off, and then immediately took out an Order 14 application for an injunction and damages to be assessed.

2.  On 10 October 2006, Judge Yuen (the Judge) handed down her judgment dismissing the plaintiffs’ application with costs.

3.  The plaintiffs sought leave to appeal against the judgment, which application was refused by the judge and then by Tang VP, sitting as a single judge of the Court of Appeal.

4.  The plaintiffs now renew their application and again seek leave from this court to appeal. Mr Lin Feng, for the plaintiffs, states at the outset that the application relating to the passing off claim is not being “vigorously” pursued.

Background Facts

5.  The 1^st plaintiff is the copyright owner of video games known as “World Soccer Winning Eleven 9” and “World Soccer Winning Eleven 10” (“the Video Soccer Games”) published respectively in August 2005 and April 2006. However, their associated strategy guidebooks did not come into existence until July 2006.

6.    The 1^st plaintiff is also the proprietor of the trade mark “World Soccer Winning Eleven”, which was registered in Hong Kong.

7.  The 2^nd plaintiff is the 1^st plaintiff’s Hong Kong trading subsidiary.

8.  The defendant is a publisher of “Game Station”, which is a weekly video game magazine providing information on video games.

9.  In volumes 361, 362 and 364 of “Game Station” published respectively on 2 February 2006, 9 February 2006 and 23 February 2006, the defendant enclosed free booklets of strategy guide on “World Soccer Winning Eleven 9” and in volume 376 of “Game Station” published on 17 May 2006, the defendant enclosed a free booklet of strategy guide on “World Soccer Winning Eleven 10”.

10.  Those free booklets contained graphical pictures/images of the soccer field and of soccer players obtained from “the Video Soccer Games”, and underneath those pictures/images, there were instructions in Chinese as to how the games could be played or could be played better.

The Plaintiffs’ Case

11.  It is the plaintiffs’ case that the defendant’s free booklets of strategy guide contained pictures/images of the soccer field and of soccer players identical or substantially similar to those published in “the Video Soccer Games”, thereby constitute infringement of the 1^st plaintiff’s copyright.

12.  The plaintiffs further contend that the defendant published the free booklets with a view to deceive the public into believing that they were publications by the plaintiffs, hence the claim of passing off.

13.  The plaintiffs also claim against the defendant for infringement of the 1^st plaintiff’s registered trade mark, which does not form part of the Order 14 application and is therefore outside the ambit of the present leave application.

The Defence Case

14.  The defendant claims to have bona fide defences.

15.  The defendant recognizes the 1^st plaintiff’s copyright in the software of “the Video Soccer Games” and admits to have imported into the free booklets of strategy guide, graphical pictures/images, albeit an insubstantial part, of those in “the Video Soccer Games”.

16.  However, the defendant alleges that the purposes of such importation were for giving report, review and criticism of “the Video Soccer Games” and that such importation is permitted acts in relation to copyright works under the Copyright Ordinance.

17.  The defendant emphasizes that there was never any intention to pass off the plaintiffs’ trade name as their ownership in “the Video Soccer Games” had been fully acknowledged in “Game Station”.

18.  In any event, the defendant contends that “Game Station”, having been in the market for seven years, did not deceive or mislead the public in any way. There is also the suggestion that the plaintiffs in fact had consented to the defendant’s or other publishers’ act of publication of their video games.

The Judge’s Decision

19.  The judge pointed out the inadequacies of the plaintiffs’ case in the following aspects:

1.     The complete absence of any description of the information contained in the software of the Video Soccer Games;

2.     It was not known if the software of the Video Soccer Games contained any strategy guide;

3.     The plaintiffs did not produce the images of soccer players appearing in the Video Soccer Games corresponding to those imported into “Game Station”;

4.     There was no translation of the Japanese text accompanying the relevant graphical images;

5.     The plaintiffs did not exhibit a copy of their strategy guide, which was published only in July 2006, two months after the defendant’s publication of the same.

20.  The upshot was that the judge did not feel there was sufficient evidence to enable her to make a decision on the relevant issues to justify granting summary judgment in favour of the plaintiffs.

21.  In particular, the judge pointed out that it was not known “if the Video Soccer Games” contained built-in demonstration games with formulated skill or tactics or the player had to acquire his own skill, whereas the free booklets of strategy guide supplied by “Games Station” contained different methods of soccer playing with comments on how to improve one’s skill.

22.  The judge further commented that without knowing if “the Video Soccer Games” contained a strategy guide or demonstration games, it was not possible to say whether the contents of “Games Station” was a critique or review of the plaintiffs’ strategy guide or demonstration games and it was also not known if “Games Station” simply put forward playing tactics to enable its readers to achieve a better result.

23.  The judge concluded that without a translation of the Japanese text and without the corresponding pictures/images of the relevant soccer players, their pictures/images could not be read in a proper context and she was unable to decide if the defendant’s publication amounted to a review or criticism, or if the defendant had indeed imported the plaintiffs’ images.

24.  The judge concluded that there were triable issues on:

1.     Whether the plaintiffs could have acquired a reputation or goodwill in the strategy guide before its publication;

2.     Whether “Games Station” had misrepresented that their strategy guides were those of the plaintiffs;

3.     Whether the plaintiffs had suffered damages or were likely to suffer damages as a result of the defendant’s misrepresentations even if they were indeed misrepresentations.

The Plaintiffs’ Complaints

25.  The plaintiffs’ main complaint in the intended appeal is that the judge had applied the wrong test in the Order 14 application.

26.  Mr Lin Feng, on behalf of the plaintiffs, argues that the judge should not have required the plaintiff to produce all relevant evidence as it was not practical to do so.

27.  Mr Lin emphasizes that the plaintiffs had already submitted a section 121 affidavit in accordance with the Copyright Ordinance and therefore all documents and objects referred thereto should be treated as if they had all been produced.

28.  Mr Lin further emphasizes that when the defendant had admitted importing pictures/images from “the Video Soccer Games”, the judge should have concluded that there was enough evidence to support the cause of action on copyright infringement.

29.  Mr Lin argues that the meaning of the Japanese text accompanying the graphical pictures/images is not relevant to the issue of whether the 1^st plaintiff’s copyright in the artistic work had been infringed. When the judge complained about the absence of translation of the Japanese text accompanying the graphical images, she was in error.

30.  Mr Lin suggests that the judge should have no difficulty in concluding that there was no comment, nor review nor critique of the 1^st plaintiff’s artistic work in the graphical pictures/images in the defendant’s free booklets when “the importation of the pictures/images from the (1^st plaintiff’s artistic) Work is enormous whereas the comments were few”, and therefore the defendant did not satisfy the requirement of “fair dealing” as laid down in Hubbard v Vosper [1972] 1 AER 1022 at 1027.

31.  Mr Lin argues that the copyright claim has a realistic prospect of success and leave to appeal should be given. 

Discussion

32.  The defendant admits to have imported into the “Games Station”, and in particular, the accompanying strategy guides, graphical pictures/images from “the Video Soccer Games”.

33.  When one examines the graphical pictures/images in question, it is readily apparent that the artistic work involved in each of those graphical pictures/images, in the form of the soccer playing field and the appearance of the players, is almost identical.

34.  No doubt one can produce millions of pictures/images from any video games; however in view of the fact that the artistic work involved in those pictures/images is practically identical, it can be argued that even the importation of one or two pictures/images would be substantial.

35.  We are satisfied that on the undisputed evidence, it is highly arguable that the defendant had used “a whole or a substantial part” of the artistic work published in “the Video Soccer Games” and that the absence of the corresponding pictures/images is immaterial.

36.  The real issue is whether the defendant can avail itself of the fair dealing defence under s 39 of the Copyright Ordinance. 

37.  We note that the Chinese texts under each of the imported graphical images in the defendant’s strategy guides relate principally to how “the Video Soccer Games” should be played or can be played better. There do not appear to be anything about the artistic work involved in those graphical pictures/images.

38.  For obvious reasons, it is neither necessary nor desirable for us to express a strong view on the chance of success in the appeal. Suffice it for us to say that it is highly arguable that the judge was wrong in concluding as she did that the defence of fair dealing was available to the defendant.

39.  We are satisfied that on the claim of infringement of copyright, the  intended appeal has a realistic prospect of success and leave to appeal should be granted on this part of the judgment below.

40.  While the pleadings and the affidavit evidence have indicated that the 1^st plaintiff owns the copyright in question, they do not indicate what rights or interest the 2^nd plaintiff has in the copyright so as to sustain a claim in infringement of copyright. They only say that the 2nd plaintiff is the 1^st plaintiff’s Hong Kong trading subsidiary. This is insufficient. In the circumstances, leave to appeal in respect of the claim in infringement of copyright should only be granted to the 1^st plaintiff.

41.  Mr Lin recognizes his difficulties in relation to the plaintiffs’ passing off claim and has not in fact advanced arguments in relation to the claim. We therefore refuse leave to appeal on the plaintiffs’ passing off claim.

Conclusion

42.  We grant leave to the 1^st plaintiff to appeal against the judge’s dismissal of the Order 14 application in respect of the copyright infringement claim but refuse leave to the plaintiffs in respect of the passing off claim.

43.  We reserve the costs of this application.