HOBERMAN DESIGNS INC v. LIEN TAI TRADING CO LTD

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

CIVIL ACTION NO. HCA 7501 OF 1999

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JUDGMENT

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1. This is an Order 14 application by the Plaintiff, Hoberman Designs, Inc., against the Defendant, a Hong Kong company for infringement of copyright in what is known as a Mini Sphere which is a toy made for children based on the Mr. Charles Hoberman's unfolding structure invention.

2. Mr. Hoberman is a well-known American designer who had invented this copyright by using engineering interlocking pieces. The Mini Sphere can expand and contract by the appropriate pulling on any part of the hub. The copyright has been vested in Mr. Hoberman and also in his company, Hoberman Associates, Inc. and I had seen the assignment and the appropriate documents demonstrating the vesting of all the copyright in the Mini Sphere to the Plaintiff including the right of action to sue for past breach of this copyright.

3. The Defendant had by its own admission dealt with and produced Infringing Toy 1 and Toy 2 which had been shown to me today in Court. I have no doubt that these Defendant's products including these boxes are copies of the Plaintiff's Mini Sphere and its box, which were also shown to me.

4. At the hearing, a number of points were raised by Ms. Yiu for the Defendant. It was said by Ms. Yiu, that the title of the Plaintiff is not complete. There was no substance in that. It was said by Ms. Yiu that the products are not identical or not copies and that the Defendant desired to have expert evidence called at the trial. But there is no such necessity and expert evidence would not help the Defendant. I have seen the products and the boxes of the Defendant and also the product and box of the Plaintiff. To me, there is no question of they being anything but copies, that is to say the Defendant's products were copies of the Plaintiff's product. A large number of other minor points were also raised by Ms. Yiu. Suffice it to say that I find all of them to be of no substance.

5. The affidavit evidence of the Plaintiff is not just overwhelming but shows a case to which there is no answer Now, if the Defendant's affidavit filed in opposition, has shown some genuine defence, then of course, the Court will hesitate and will give the most careful consideration to any such genuine defence. I looked at the affidavit and there is just no genuine defence, nothing, and so I am quite satisfied that there is no issue, no bona fide issue to which the case should go to trial. There is nothing further to be investigated at the trial.

6. The case of the Plaintiff has been proved to my satisfaction and therefore there must be a summary judgment against the Defendant. Ms. Yiu, however, also objects to the form of the reliefs sought by the Plaintiff in the Order 14 Summons. It was said by Ms. Yiu that the reliefs sought in the Order 14 Summons are wider than what are sought in the Prayer of the Statement of Claim. And she is right. But the Court at any trial of an action is not confined to giving the exact relief as sought in the Prayer. The court can mould the reliefs and the orders that it was prepared to give. I have looked at the Order 14 Summons. The reliefs sought in the Summons are basically of two types. The first is to prevent effectively the Defendant from repeating any kind of infringement of the Plaintiff's copyright, and that it is largely reflected in paragraphs 1(including a and b), 2 and 3 of the Order 14 Summons. Paragraphs 4, 5, 6, 7 and 8 deal with the damages that had been suffered by the Plaintiff in respect of the Defendant's past infringements. I can see nothing in these paragraphs of the Order 14 Summons, which are improper or oppressive or not sanctioned by the law.

7. In my judgment, there should be an Order in terms of the Summary Judgment Summons dated 17th July 1999.