B.G. LIGHTING CO. LTD. v. WU LUK FUK

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R E A S O N S

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Nazareth, J.A. (giving the Reasons of the Court):

1. The Defendant appealed against the order of Jones, J. giving summary judgment under Order 14 in favour of the Plaintiff. Having heard counsel, we allowed the appeal and set aside the order. We now give our reasons, avoiding so far as possible reference to matters that may have to be determined upon trial of the action.

2. The Plaintiff is a company incorporated in Hong Kong carrying on the business of designing, manufacturing and selling lamps, lighting devices and arrangements. The Defendant is a sole proprietorship carrying on the manufacture of lighting devices at Kwai Chung.

3. The Plaintiff claimed to be the owner of the copyright in one design drawing and two technical assembly drawings for a lighting arrangement designated as "HCT-2", that were prepared by an employee, in September and October 1988, during the course of his employment. The drawings, it is said, are original artistic works and were first published in Hong Kong in or about October 1988 by the manufacture and sale of the lighting arrangement. The Plaintiff had since about October 1988 actively promoted the sale of the lighting arrangement and other lighting arrangements in the same series of design known as "Hi-tech Crystal Lighting". Substantial sales were made in Hong Kong, other countries in Southeast Asia, the United States and Canada.

4. The Plaintiff claimed that the Defendant had infringed its copyright by substantially reproducing the lighting arrangement "HCT-2" by offering such product for sale knowing that it constituted an infringement of copyright.

5. The evidence for the Plaintiff was set out in affidavit of Mr. Wong, the Plaintiff's Managing Director. He deposed to the preparation of the three drawings, and the promotion of the lighting arrangement "HCT-2", and stated that the Plaintiff was the owner of copyright in the three drawings. Mr. Stephen McVeigh, who specialises in the investigation of industrial property rights, stated that the Defendant offered for sale lighting arrangement models that bore a close resemblance to the Plaintiff's lighting arrangement "HCT-2".

6. Mr. Wu Luk-fuk stated in his affirmation that the Defendant supplied a number of components to a firm called "Hong Kong Crystal Lighting" for a lighting arrangement designed by that firm which components, he claimed, were ready made parts purchased by the Defendant from suppliers. He referred to various differences between the two lighting arrangements.

7. Having outlined the facts in somewhat greater detail than is necessary to reproduce in this appeal, the Judge in his statement went on to refer to the reliance of counsel for the Plaintiff below upon s. 9 of the Copyright Ordinance, which reads:

"9. (1) An affidavit which-

(a)    purports to have been made by or on behalf of the owner of a work or other subject matter in which copyright subsists under the Act; and

(b)    states that-

(ii)    the person named therein is the owner of the copyright in the work or other subject matter; and

(iii)    a copy of the work or other subject matter exhibited to the affidavit is a true copy of the work or other subject matter,

shall, if it complies with subsection (3), be admitted without further proof in any proceedings under the Act or this Ordinance.

    (2)    The court before whom an affidavit is produced under subsection 1) shall presume, until the contrary is proved-

(a)    that the statements made therein are true; and

(b)    that it was made and authenticated in accordance with subsection (3).

    (3)    An affidavit for the purposes of this section shall be-

(a)    made on oath-

(i)    before a magistrate or a notary public if it is made at any place within the Commonwealth; or

(ii)    ... ; and

(b)    authenticated, so far as relates to the making thereof, by the signature of the magistrate, notary public or ... before whom it is made."

8. Having set out the foregoing text of s. 9, the Judge continued:

"     The evidence contained in the affidavit of Mr. Wong clearly establishes proof of copyright in the absence of evidence to the contrary. Accordingly, the defendant cannot without evidence to rebut the presumption that arises under s. 9 seek to put forward a defence that puts the plaintiff to strict proof. The issues raised by the defendant in challenging originality on the grounds that the drawings may have been copied from a previous design was neither supported by any evidence nor was it relevant for the plaintiff is not seeking to protect the idea. The plaintiff relies on the objective similarities between the two lighting arrangements and to knowledge of the plaintiff's promotional material and advertisements by reason of the fact that the defendant would be aware having regard to its position in the trade. In fact the defendant does not dispute this evidence. The plaintiff also contends that prior to the publication of the design, there was no lighting design identical or similar to that of the plaintiff."

...

    There was abundant evidence that the defendant had access to the plaintiff's work whilst there is a substantial visual similarity between the products of the plaintiff and the defendant. This evidence reveals a substantial reproduction of the plaintiff's lighting arrangement with knowledge by the defendant. No evidence was produced by the defendant to explain the strong similarities with the result that the onus under s. 9 has not been discharged."

    None of the matters raised on behalf of the defendant amounted to an arguable defence with the result that I entered judgment in favour of the plaintiff."

9. Mr. Anthony Rogers, Q.C. who appeared for the Defendant before us, but not at the hearing of the 0. 14 application below, submitted in pursuance of one of the several grounds specified in the Defendant's Notice of Appeal, that the Judge misconstrued the statutory presumption in s. 9 in the following sentence at the end of the penultimate paragraph of his judgment:

"No evidence was produced by the defendant to explain the strong similarities with the result that the onus under s. 9 has not been discharged."

10. Mr. Andrew Liao, Q.C. who appeared for the Plaintiff at the hearing of the appeal, but not below, submitted that in the passage in his judgment immediately following the text of s. 9, the Judge correctly appreciated the effect of s. 9 and therefore could not have misconstrued it so shortly after. He suggested, the words complained of were an inconsequential lapse, probably intended to refer to the shift of onus upon a striking similarity being established within the contemplation of the judgment in L.B. (Plastics) Ltd v Swish Products Ltd [1979]. RPC 551 at 552 (43), rather than the onus under s. 9.

11. Without expressing any opinion upon the likely outcome of the trial, a comparison of the products does not raise such an overwhelming inference of substantial reproduction of any of the Plaintiff's original drawings by the Defendant as to lead us to conclude that there is plainly no defence to the claim. The Defendant has an arguable defence and should have leave to defend.

12. We according allowed the appeal and do not find it necessary to adumbrate the other grounds also pursued.

13. However with the agreement of counsel conveyed at the end of the hearing of the appeal, we will deal with the costs by order nisi. We see no reason why costs should not follow the event and order nisi that the costs of the Plaintiff's O. 14 application and, with a certificate for two counsel, also of this appeal be to the Defendant.