GLOBAL MARKETING ENTERPRISE (GME) LTD AND ANOTHER v. BLUE BOX INTERNATIONAL LTD

HCA 1053/2015

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 1053 OF 2015

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D E C I S I O N

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1.  This was the application of Global Marketing Enterprise (GME) Ltd (“P1”) and Sandbox Trading Ltd (“P2”) (collectively “the plaintiffs”) for summary judgment for copyright infringement against Blue Box International Limited (“the defendant”) in respect of the plaintiffs’ bathroom toy marketed as “Stack N’ Spray Tub Fountain” or “Stack N’ Spray Fountain” (“P’s Product”). At the conclusion of the hearing judgment was reserved which I now give.

BACKGROUND FACTS

2.  P1 was incorporated in Israel in 2005.  P2 is a limited company incorporated in Hong Kong in April 2014.

3.  The defendant is a limited company incorporated in Hong Kong in 1991 and is part of the Blue Box Group.  The parent company Blue Box Holdings Limited was founded in 1952 and has a paid up capital of HK$100 million and is a well‑established toy company.

4.  In late 2012 and early 2013 the defendant designed a product called “Spray N’ Play” (“D’s Product”) which was put on the market in late 2013.

5.  The plaintiffs’ claim concerns two‑dimensional drawings being Schedule 1 attached to the statement of claim (consisting of seven pages at Bundle A15–A21 inclusive) (“the Schedule 1 drawings”).  It is the plaintiffs’ case that the Schedule 1 drawings constitute part of drawings of the “Production Version” of P’s Product (see §25 of Israel Zanger’s 2^nd affidavit dated 4 November 2015 (“Zanger 2^nd”)) which was first released on the market in February 2009 at the New York Toy Fair.

6.  The plaintiffs claim that D’s Product infringed copyright in the Schedule 1 drawings and on 13 May 2015 brought the underlying action against the defendant for passing off and infringement of copyright.  It issued the present summons for summary judgment for passing off and copyright infringement on 5 November 2015.

7.  Although in the present case the parties’ evidence and exhibits filled nine box files, Mr Hughes submitted that the court should not be daunted by the sheer amount of materials filed from granting summary judgment citing Tai Shing Diary Ltd v Maersk Hong Kong Ltd & Ors [2007] 2 HKC 23 at §12.  In that case A Cheung J (as he then was) did grant summary judgment.

8.  That in an appropriate case the court would grant summary judgment notwithstanding the volume of evidence filed is not controversial.  But whether summary judgment is appropriate would depend on the facts of the particular case.  It should be noted that in Tai Shing, on the issue of infringement, the 2^nd defendant did not deny copying and there was no assertion that its diary was a product of an independent design.  Indeed the defendant’s own evidence showed that express instructions had been given to reproduce the contents of the previous year’s diary as closely as possible.

9.  While Tai Shing is an example where summary judgment was considered appropriate on the facts of that case, it cannot really be taken further.  Whether it would be appropriate in the present case is another matter and turns entirely on the materials before the court.

10.  To succeed in their application for summary judgment the plaintiffs must first satisfy the court that:

(1)  copyright subsists in the copyright works relied on (see §11 below for the meaning of that expression);

(2)  the plaintiffs own the copyright works;

(3)  D’s Product constitutes an infringing copy of the plaintiffs’ copyright works; and

(4)  the defendant has committed acts of infringement under the Copyright Ordinance, Cap 528 (“the Ordinance”).

11.  The defence is that this is not a suitable case for summary judgment because various triable issues arise as regards (1) the subsistence of copyright, (2) its ownership and (3) whether there were infringing acts.  Those matters are considered below.

THE APPLICABLE LEGAL PRINCIPLES

12.  It would be convenient to set out some basic principles first.  They can conveniently be found in Lord Millett’s speech in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 at 2425C to 2426B.  In summary Lord Millett held that the correct approach is as follows:

(a)  in an infringement of copyright action the court is concerned not with appearance but derivation;

(b)  the plaintiff’s complaint is that all or a substantial part of the copyright work has been copied;

(c)  in order to determine that question it is necessary

(i)  to identify features in the defendant’s design the plaintiff alleges are copied;

(ii) the purpose is to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely the result of copying than of coincidence;

(iii)similarities that are commonplace, unoriginal or consist of general ideas may be disregarded;

(d)  if the plaintiff demonstrates sufficient similarity in the features that he alleges have been copied, the burden passes to the defendant to satisfy the judge that they did not result from copying;

(e)  differences may indicate an independent source; and

(f)  if it is found that the defendant’s design incorporates features taken from the copyright work, whether what has been taken constitutes all or a substantial part of the copyright work to be determined by quality rather than quantity.

13.  In Designers Guild the judge found, after trial, that copying had taken place.  While the defendant appealed, it limited its appeal against the conclusion that such copying was of a “substantial part” of the plaintiff’s design.  It did not challenge the finding of “copying” itself.  On appeal, the Court of Appeal did not consider that the defendants’ design involved the copying of a substantial part of the plaintiff’s design and it was in those circumstances that the matter came to be considered by the House.

14.  On the question whether there had been a reproduction of a substantial part of drawings over which copyright was claimed, the English Court of Appeal in Leco Instruments (UK) Ltd v Land Pyrometers Ltd [1982] RPC 133 stated (at 143 line 29) that the issue whether the copying found was of a substantial part of the plaintiff’s copyright work “was concerned with quality and not quantity”.  Pausing there, it should be noted that it is an approach that is reflected in Lord Millett’s speech in Designers Guild (at 2426B).

15.  Leco Instruments was an appeal from the judge who had refused to order summary judgment in a case that had proceeded upon the basis that the defendants had a copyright in the drawings, that there had been copying by the plaintiffs and that the copyright drawings were the source of the alleged infringing product.  The plaintiffs had submitted that whether a substantial part of the drawings had been reproduced was simply a matter for the eye of the judge, that no further evidence was material or indeed admissible and that the matter should therefore be dealt with without trial.

16.  Fox LJ rejected that approach and held (at 143, ll. 34 – 47):

“Quality is a matter of degree, to be determined on all the admissible facts. I am not satisfied that no further evidence is relevant or admissible .... The question of copying is in the end, no doubt, one for the judge, but it may be that there is admissible technical evidence — for example, by way of examination by a section of the object itself — which would assist him. I think the defendants are entitled to have their case heard at trial on such admissible evidence as they then choose to put before the court and the court accepts. Further, I do not think that it is a case in which the defendants should be denied the ordinary right of discovery. Copying is, for the purposes of this application, admitted. If there was copying, it is possible that discovery will throw light on the whole question of the nature and extent of that copying, and that such material is a proper matter to be considered by the judge …”

17.  The plaintiffs’ complaint in the present case is copying or copying of a substantial part by the defendant.  It is important to bear in mind that copying is denied.  I now turn to consider the defences.

SUBSISTENCE OF COPYRIGHT

18.  Particulars of the copyright works claimed are given in §5(a) of the statement of claim which reads:

“5. The 1^st Plaintiff is and was at all material times the owner of the copyright subsisting in original artistic works relating to toys for infants and young children marketed under the title ‘STACK ‘N’ SPRAY Tub Fountain’ (collectively ‘Copyright Works’ and each of them a ‘Copyright Work’, which were designed and developed by the 1^st Plaintiff in accordance with and in reproduction of the respective Copyright Works (the ‘STACK ‘N’ SPRAY Fountain’).

PARTICULARS OF THE 1^st PLAINTIFF’S COPYRIGHT WORKS

(a) The 1^st Plaintiff will rely on the design drawings and prototypes created in respect of each component of the STACK ‘N’ SPRAY Fountain specified in Schedule 1. The particulars of each Copyright Work are as follows:-

Copyright Works	Authors	Place of Domicile of the Authors	Year of Initial concept sketch & prototype	Year of first making the Copyright Works available to the public
First Boat with Propeller	Zafrira Weisman Zanger, Roni Golos Frostig, Israel Zanger	Kiryat Ono, Israel	2007 & 2008 respectively	2009
Second Boat	Zafrira Weisman Zanger, Roni Golos Frostig, Israel Zanger	Kiryat Ono, Israel	2007 & 2008 respectively	2009
Third Boat	Zafrira Weisman Zanger, Roni Golos Frostig, Israel Zanger	Kiryat Ono, Israel	2007 & 2008 respectively	2009
Octopus	Zafrira Weisman Zanger, Roni Golos Frostig, Israel Zanger	Kiryat Ono, Israel	2007 & 2008 respectively	2009
Base	Zafrira Weisman Zanger, Roni Golos Frostig, Israel Zanger	Kiryat Ono, Israel	2007 & 2008 respectively	2009	”

19.  That §5(a) was in some disarray is an understatement.  When it was put to Mr Hughes (counsel for the plaintiffs) that the drawings attached as Schedule 1 are dated either “04.12.08” or “03.11.08” and, importantly, none bears a 2007 date, he had to concede that not only should the date “2007” not appear in the 4^th column at all, the phrase “Initial concept sketch &” should also be “redlined”.

20.  That was not quite the end of the matter as the copyright works identified in the table relate to only 5 of the 7 pages that constitute the Schedule 1 drawings.  As there are no particulars of authorship given for the drawings shown on pages A15 and A16, P1’s copyright works can only be taken to refer to the two‑dimensional drawings at A17 – A21 (inclusive).  Hereafter references to “the copyright works” shall be construed as a reference to the drawings on pages A17 – A21 only of bundle A.  All said it was hardly an auspicious start for an Order 14 application.

21.  At the hearing although the plaintiffs abandoned reliance on the drawings exhibited as “IZ‑17” to Zanger 2^nd, Mr Zanger’s evidence shows that IZ‑17 drawings were drawings of the production version.  It is also clear (and not disputed) that the schedule 1 drawings are identical to the corresponding drawings in IZ‑17.  In other words, the copyright works with which the court is concerned are production version drawings.

22.  Mr Wong (counsel for the defendant) submitted that since there is a considerable body of evidence produced by the plaintiffs of antecedent drawings of unknown authorship and ownership and in respect of which copyright has not been claimed (see for example exhibits IZ 10–12 and IZ 14–15), there must be a triable issue on originality.

23.  He referred to the following passage from Lord Oliver’s speech in Interlego AG v Tyco Industries Inc [1989] AC 217, 258F:

“What is important about a drawing is what is visually significant and the re‑drawing of an existing drawing with a few minimal visual alterations does not make it an original artistic work, however much labour and skill may have gone into the process of reproduction or however important the technical significance of the verbal information that may be included in the same document by way of information or instruction.” (Original emphasis)

He submitted that as there is no evidence on alterations that are visually significant, whether copyright subsists in the copyright works must be debateable.

24.  In his written submissions in anticipation of the defendant’s contention, Mr Hughes had cited and relied on the decision in LA Gear Inc v Hi‑Tec Sports PLC [1992] FSR 121, 136 where the Court of Appeal held that:

“If, in the course of producing a finished drawing, the author produces one or more preliminary versions, the finished product does not cease to be his original work simply because he adapts it with minor variations, or even if he simply copies it, from an earlier version.”

25.  But that was distinguished byMr Wong on three grounds:

(1)  unlike the present case, in LA Gear, copyright was claimed in respect of all drawings which were pleaded as a series;

(2)  there was no evidence in LA Gear that antecedent drawings prior to drawing 1 existed; and

(3)  in any event, even if preliminary drawings existed in that case, the author owned the copyright.

26.  It is common ground that if copyright is claimed in respect of a series of drawings, it is required to be pleaded: MGX Asia Ltd v China Way Global Company Ltd, (unreported), 12 February 2014, HCA 2001/2013 at §11.  It has not been pleaded and Mr Hughes confirmed that he was not relying on a series of designs.  

27.  In those circumstances, on the evidence before the court, Icannot but agree with Mr Wong that a triable issue does arise as to the subsistence of copyright claimed.  It is not a case where the court is able to reach the conclusion that copyright does subsist in the copyright works with any confidence.  

OWNERSHIP OF COPYRIGHT

28.  The authors are identified as Zafrira Weisman Zanger, Roni Golos Frostig and Israel Zanger.  Exhibit IZ‑3 to Israel Zanger’s 1^st affidavit contains three “Declarations on acquisition of comprehensive rights in the designs” (“the Declarations”) in identical terms and all are dated 10 August 2015.

29.  Putting it mildly, the Declarations are somewhat unusual.  They are signed by P1 as “employer” and the relevant declarant as “employee” of P1 but written employment contracts which would normally have been exhibited, are not.  Rather, what emerges is that the relevant declarant “has been working on the basis of the employment contract or design contract in the enterprise of the Employer since 2007 and is (inter alia) employed or commissioned for creating designs for the Employer” (emphasis added).  It seems that none of the declarants was sure of or clear about his/her status or capacity (as employee or independent contractor) at the time of authoring the copyright works.

30.  That is a very unusual state of affairs, particularly as regards Mr Zanger who is the plaintiffs’ CEO (but apparently not involved in the partnership referred to below) given that the Declarations were made in late 2015, well after the dispute between P1 and the defendant had begun.  How could he not know whether or not he was an employee and whether Mrs Zanger and Mrs Frostig were employees or commissioned to create the designs as independent contractors?

31.  P1’s core design team is said to have originated from a partnership design studio named Golos‑Weisman Design (“GWD”) formed in the 1990s by Mrs Frostig and Mrs Zanger: see Zanger 2^nd §5. That is all the information provided.  It would appear that Mr Zanger himself was not involved in GWD.  But it is wholly unclear whether the partnership GWD still exists or whether it was dissolved and, if so, when.

32.  It is a fact that many of the drawings exhibited by P1 dated 2008 bear the inscription or logo “GOLOS‑WEISMAN DESIGN” shown encased in a rectangle.  The box containing Ps’ Product shows the same inscription written within a round stamp which appears to be a trademark.  While Mr Hughes was dismissive of the stamp stating that it was no more than a claim to a trademark, GWD does claim copyright to P’s Product in no uncertain terms.  If the base of P’s Product is turned over, one finds the following inscription clearly embossed on the bottom: “© 2009 Golos‑Weisman Design”.

33.  In those circumstances, could the court disregard the possibility the owner of the copyright was neither P1 nor the relevant declarant as independent contractor, but the partnership GWD?  Clearly not.  But there is no evidence of any assignment from GWD to P1.  It follows that a triable issue must also arise as to ownership.

34.  Although the plaintiffs sought to rely on the presumption in section 121 of the Ordinance as regards both subsistence and ownership, under subsection (3) the presumption arises “in the absence of evidence to the contrary”.  Mr Wong submitted and I agree that the presumption was rebutted by the plaintiffs’ own evidence.

INFRINGING COPY

35.  Both P’s Product and D’s Product are floatable bath toys made of plastic, with stackable elements/components capable of spraying water that is pumped up through the floating base that incorporates a battery‑operated pump.  When in operation water is pumped up through the connecting hole in the middle of the base to the component(s) stacked on top.

36.  P’s Product comprises six components: (1) a floating base triangular in shape with rounded corners, (2) a light blue boat with a propeller held by arms that could be raised (“the first boat”), (3) a smaller dark blue boat (“the second boat”), (4) an even smaller red boat capped by a figure with arms that can rotate, (5) a diver and (6) a red octopus.  In addition there is also a detachable telescopic stem with a suction cup fitted at one end.  The on/off switched is located on one of the three corners of the triangular base, the other two corners have grooves designed to accommodate only components (5) and (6) (the diver and the red octopus) but not the other components.

37.  All components (including components (5) and (6)) are stackable except that nothing can be placed on top of components (4), (5) and (6).  Each of components (2) to (6) is designed to fit the central connecting hole and when the pump is in operation the hole permits water to be pumped upwards and then emitted through the openings or holes of the relevant component.  Each of components (2), (3) and (4) has a pair of cartooned eyes.

38.  The plaintiffs submitted that the triangular base (component (1)), the blue boat with a raised prow (component (2)) and the red octopus (component (6)) stand out as elements crucial to the design.  They consider there to be “a striking resemblance” and “similarities” between D’s Product and the copyright works and submitted that the defendant’s attempts to alter the copying were insufficient.

39.  There are four components to D’s Product: (1) a triangular base made up of a large central circular base with three smaller circular pontoons of identical size attached at equidistant points to its outer edge, (2) a blue whale, (3) a red octopus and (4) a green turtle carrying a spinning wheel on its top.  The spinning wheel sits on the turtle and cannot be raised.  Each of components (2), (3) and (4) has a pair of cartooned eyes.  Notably, unlike P’s Product, the base of D’s Product is not flat because of the placement of and housing for the battery.  When placed on a flat surface, the base tips in one direction.

40.  While there are similarities of concept, idea and function of the products, those similarities are irrelevant since they are not protected by copyright.  It is therefore necessary to focus on the plaintiffs’ specific complaints as to what allegedly has been copied that is protected by the Ordinance.

(a)  Dimensions of the products

41.  Complaints were directed at:

(i)   the dimensions of the stacking components, specifically “the blue boat” (which I understood to be a reference to the second boat) and the defendant’s blue whale and also the parties’ respective red octopuses; and

(ii)  the fact that the stackable components of P’s Product and D’s Product were “interchangeable”.

42.  Surprisingly, insofar as the red octopus is concerned, the copyright works do not even state its dimensions.  The relevant drawing (at A21 of bundle A) does not give dimensions.  Rather, it shows that the plaintiffs’ red octopus is made up of two separate halves.

43.  The defendant’s red octopus is visually very different:

(i) its eight feet/tentacles are turned upwards (rather than downwards);

(ii) it has a flat head (and not a round head);

(iii) it has a pair of cartooned eyes (not normal eyes);

(iv) it does not wear a swim mask;

(v) it is a single cylindrical piece with representations of the upturned feet/tentacles at one end; and

(vi) it is dumpy and much fatter than the plaintiffs’ red octopus shown in the drawing at A21.

44.  As regards the second boat, the only dimensions stated (at A19) relate to its overall height, length and width and no dimensions were given of the defendant’s whale.  Much was made of the plaintiffs’ raised prow but in addition to the absence of the relevant dimensions to illustrate the raised prow, the defendant’s whale is visually very different from either the plaintiffs’ first or second boat: simply stated it is a whale and not a boat.

45.  Mr Hughes then prayed in aid the fact that the stackable components were “interchangeable”.  That it was said was a very strong indication of copying.  Implicit in his assertion that the stacking components of the two products are “interchangeable” is the suggestion that therefore they must be of comparable dimensions.  The assertion was that each of the plaintiff’s stackable components ‘fits’ the connecting holes of the defendant’s floating base and vice versa.  At a minimum, also implicit in that is the assertion that the interchanged component(s) is/are able to perform the functions intended.

46.  Upon examination, it is clear that because the diameter of the circular base of each of the stackable elements of P’s Product is larger than the corresponding part of the defendant’s components, the plaintiffs’ stackable elements can be placed with ease on the defendant’s base. It ‘fits’ the defendant’s base only in the sense that it can sit comfortably and balance on the base.  But as each of the plaintiffs’ stackable components has a narrow protruding connecting tube in the centre of its wider circular base the central hole of the defendant’s base would appear to provide additional support and anchorage for components (2), (5) and (6) of P’s Product as the protruding tube of each is sufficiently long to be inserted into the central hole.  The so‑called ‘fit’ is neither ‘snug’ nor perfect.

47.  When the pump is activated, water leaks from gaps between the connecting holes and the plaintiffs’ stackable elements when placed on the defendant’s base.  That appears from photographs the defendant has exhibited.  Because there is no proper fit, the intended spraying effect of the plaintiffs’ stackable elements is not achieved.

48.  The centre of the plaintiffs’ base is raised by three concentric circles placed one on top of the other in decreasing diameter with the smallest on top, creating three steps or rungs to accommodate components placed on top.  There is a central hole permitting the insertion of the connecting tube that protrudes from the bottom of each stackable element of P’s Product and for water to be pumped up through that hole.

49.  When one performs the same exercise (as in §47) by placing the defendant’s stackable elements on the plaintiffs’ base, each of the defendant’s stackable elements (the whale, the octopus and the turtle) can sit loosely on top of the raised centre of the plaintiffs’ base because the circular base of each component is larger in diameter than the top rung.  Again when the pump is activated, water leaks from gaps between the connecting holes and the defendant’s stackable elements when placed on the plaintiffs’ base.  Because there is no proper fit, the intended spraying effect of the defendant’s stackable elements is not achieved.

50.  In my view, the use of the term “interchangeable” is rather misleading.  If the interchanged component cannot achieve the function for which it was designed, I do not consider it to be ‘functionally’ interchangeable as Mr Hughes tried to put it: it was simply not designed to fit the other party’s product, their sizes being different.

(b) Design of the products

51.  Mr Zanger complained that the following components of the defendant’s product showed similarities with the distinctive features of those of the plaintiffs’ product:

(i) the defendant’s triangular base;

(ii) components (2)–(4) of the defendant’s product namely the blue whale, the red octopus and the green turtle with a spinning wheel;

(iii) the pair of cartooned eyes on each of those components;

(iv) the defendant’s packaging;

(v) the name of D’s Product;

(vi) the battery cover;

(vii) the propeller/spinning wheel; and

(viii) the star feature.

Stacking and achieving a fountain effect at the same time was said to be the striking feature of P’s Product.

52.  As a preliminary matter, items (vi) to (viii) were never pleaded.  The defendant has therefore not filed evidence specifically to address those matters.  I do not consider that they should be taken into account for present purposes.

53.  As regards the triangular base, it was said that the sizes of the triangular bases were comparable.  But the design of defendant’s base while having a triangular effect is achieved by the particular placement of the four circles, the central one being markedly larger as earlier described (at §28).  Mr Wong also explained that the reason for the three circular pontoons is to achieve greater stability.  In terms of visual appearance, the three pontoons of D’s Product render the base markedly different from the plaintiff’s base which is distinctly ‘substantial’, ‘solid’ and bulky while the defendant’s base convey a trim and compact feel.

54.  Mr Wong has given an explanation as to the considerations that led to the production version of the defendant’s base.  Having learnt from past experience the defendant was anxious to avoid the much greater production cost involved to produce a bulkier base because of the amount of material required as it would render production not cost‑effective: Wong 2^nd, §§53 and 57.

55.  So far as the whale, the red octopus and the turtle are concerned, it should be borne in mind that the defendant has had many years’ experience in designing and producing children’s toys.  The parent company has been in the toy business for decades.  Their catalogues are replete with baby/infant toys designed to resemble sea animals.  Whales, octopuses and turtles are part of their standard repertory of bath toys.  So is the spinning wheel which was not a new concept or design but is “extremely common in bath and aquatic toys”.  That evidence is not challenged.  As is the case with the spinning wheel, the defendant has been putting cartooned eyes on their products long before P1 was even incorporated and that is apparent from its catalogues predating P’s Product.

56.  Wong Kwok Hung, the Vice President of the Research and Development (infant and baby care) Division of the defendant since 1996, has given a detailed description (at §§40 – 75 of his 2^nd affidavit dated 27 January 2016 (“Wong 2”)) of the development of the defendant’s product and how the design evolved.  It started before a project briefing held with his design and development team (comprising K K Chan, Cheung Tsz Kit and Kevin Wong) and marketing colleagues in late 2012 concerning new products to be developed for the following year.

57.  Inter alia, Mr Wong exhibited a computer aided sketch design (WKH‑33) he had come up with in late 2012 showing a triangular floating base with stackable elements.  K K Chan was then instructed to develop the idea further without being limited to the expression Mr Wong had adopted. One can see from KK Chan’s drawings (exhibit WKH‑34) that the turtle and octopus (components (3) and (4) of D’s Product) formed part of his design.

58.  The defendant’s senior product designer Cheung Tsz Kit has also filed an affirmation describing his involvement in the design process from November 2012 through July 2013 and how he had to take over K K Chan’s role when it was known that the latter would be leaving the defendant’s employment in early 2013.

59.  I should add that there was also criticism at the short time it took the defendant to design the product and produce the various prototypes.  What needs to be borne in mind is that the defendant itself has been in the toy business since 1991 and its parent since the 1950s.  They are considerable businesses with resources, expertise and experience in manufacturing toys.  The evidence shows that the process of designing D’s Product up till the production version took 8 – 9 months.  If the defendant had set out to copy P’s Product one might ask rhetorically, why would it have taken so long?

60.  The packaging showing blue bathroom tiles that were said to be copied from the packaging of P’s Product was the packaging of ItsImagical to whom the defendant had supplied the ‘glu‑glu fountain’.  The defendant had nothing to do with ItsImagical’s packaging.

61.  The name of D’s Product was said to be another indicator of copying but a slew of D’s Products include “’n” as an abbreviation of ‘and’ in the name of the product, the preceding and succeeding words being descriptive and commonplace.

62.  Is the evidence filed on behalf of the defendant sheer ‘moonshine’ as Mr Hughes invited the court to find or does it raise a triable issue?  The defendant has denied copying the plaintiffs’ product and has provided its own account.

63.  Much was made of the fact that Mr Wong had seen the plaintiffs’ product when Mr Wong first came up with the drawing exhibited as WHK‑33 to Wong 2^nd.  I find nothing untoward in a producer/manufacturer keeping an eye on what its competitors have on the market.  That is commonplace.  It does not follow that copying must have taken place.

64.  Mr Hughes has subjected the defendant’s evidence to severe criticism.  It was stressed to the court on many occasions that the defendant had the plaintiffs’ product “at its elbow”.  Mr Hughes made reference to LB (Plastics) Ltd v Swish Products Ltd [1979] FSR 145 where (at 149) Lord Wilberforce commented that the beginning of the necessary proof of copying normally lies in “the establishment of similarity combined with proof of access to the plaintiffs’ productions”.

65.  In that case, there was a trial which established that the respondents had specimens of the appellants’ components (based on the appellants’ drawings) in their possession, and later, before finally designing their own, they had redrawings and even tracings of some of the appellants’ drawings passed to them by an associated company to whom the appellants had supplied the drawers in question.  In those circumstances, I cannot see the relevance of LB Plastics for present purposes.

66.  In any event Mr Wong’s evidence was that WKH‑33 was preceded by earlier drawings which neither he nor the defendant had retained.  Was he lying?  More to the point, is his account unbelievable?

67.  Having regard to all the matters above, in my view, whether D’s Product was independently created or whether it substantially copied the copyright works must be questions that can only be answered by the trial judge.

CONCLUSION

68.  The court’s role here is not to conduct a mini‑trial on affidavit evidence if the defendant in Order 14 proceedings raises a defence.  As I find that triable issues do arise as regards subsistence of the copyright claimed, its ownership and infringing acts, the matter must go to trial.  So far as costs are concerned, costs must follow the event.  

69.  The defendant seeks an order that costs be paid forthwith and at a higher scale than party and party costs by reason of the plaintiffs’ conduct as regards the application for summary judgment that all along had been made on the twin grounds of passing off and copyright infringement.  A week before the scheduled hearing but almost six months after the Order 14 summons had been taken out, the plaintiffs decided to abandon the passing off claim.  The defendant submitted that the plaintiffs’ conduct was an abuse of process.

70.  Given the state of the plaintiffs’ own evidence and the evidence filed by the defendant, clearly this was not a case suitable for summary judgment.  The summons should not have been issued.

71.  In the circumstances I consider it appropriate to dismiss the plaintiffs’ summons.  There is to be an order nisi that the plaintiffs pay the defendant its costs forthwith on a party and party basis.

Mr Sebastian Hughes, instructed by ATL Law Offices, for the 1^st and 2^nd plaintiffs

Mr Philips B F Wong, instructed by Robin Bridge & John Liu, for the defendant