OPG HUMAN RESOURCES LTD v. APPLE DAILY LTD AND ANOTHER

HCA 481/2009

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 481 OF 2009

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D E C I S I O N

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1.  This is an application for further and better particulars of the defence. The plaintiff claims the defendants for copyright infringement in respect of the defendants’ publication of 33 articles on the defendants’ website. The plaintiff claims that these are more or less verbatim copies of the plaintiff’s copyright works.

2.  The defendants put the plaintiff to strict proof.  They have also pleaded various grounds of defence like the plaintiff’s articles are merely news of the day and/or mere items of press information created for reporting current news and mere news or information that there can be no subsistence of copyright. 

3.  Paragraph 14(b) of the defence also pleaded that:

“In the event that the alleged Infringing Articles were found to constitute a substantial part of the alleged Literary Works (which is denied), the Defendants rely on the defence of fair dealing. The Defendants repeats paragraph 13 of this defence.”

4.  The plaintiff then requested for further and better particulars of this defence.  The request reads:

“Please state all the facts and grounds in support of the defence of fair dealing in respect of each and every one of the 33 Infringing Articles as particularised in Schedule 2 of the Statement of Claim herein dated 31 March 2009.”

5.  Mr Wong, counsel for the plaintiff, in his written submissions highlighted that there are three distinct categories of defence of fair dealing: namely, fair dealing for the purposes of research and private studies, criticism and review and/or reporting current event (see sections 38 and 39 of Copyright Ordinance, Cap. 528 and Copinger & Skone James on Copyright 15th Edition, para 19-19).

6.  Mr Wong further said that:

“In order to advance a ‘defence of fair dealing’, the defendants must take in respect of each article: -

(1) the category or categories of fair dealing defence which they seek to rely on, and

(2)     in respect of such category of fair dealing defence, the basis for their claiming that the infringing article in question falls within that category.”

7.  The defendants oppose the application.  They argue that the defence of fair dealing is a point of law.  They have fully pleaded all material facts and the request is unnecessary.  They further argue that the plaintiff could not be taken by surprise at the trial in the light of the pleading of fair dealing and the pleading of other grounds of defence.

8.  I do not think the defence of fair dealing can be raised and argued without any factual basis.  The defendants have no doubt pleaded a number of grounds of defence and the facts in support thereof.  There is, however, no fact pleaded on which the defence of fair dealing can be built.  If the defendants want to rely on the facts pleaded in support of other grounds of defence as facts to support fair dealing as well, then they have to say so. 

9.  The second ground of objection is that the request for particulars is, in substance, a request for evidence for which the plaintiff is not entitled.  I do not think this is a valid objection.  The request merely seeks the facts and grounds in support of this defence, not the evidence.

10.  The third ground is that the request is too vague or ambiguous.  Reference is made to the refinement of the request by Mr Wong, for the plaintiff, as referred to above.  The defendants say that until the plaintiff has made a proper request, the court should not order the particulars. However, the plaintiff’s request is for all the facts and ground in support of the plea, it is for the defendants to tell the plaintiff the facts and grounds that the defendants will rely on. 

11.  The refinement by Mr Wong is, of course, useful in highlighting the need for the further and better particulars of this ground of defence, but I do not think the original request is too vague or ambiguous. If the defendants are going to establish some facts and grounds at the trial to support this ground, I do not think they would have any difficulty in telling the plaintiff the same so that the plaintiff can prepare for the same. 

12.  The defendants also submitted that it is for the defendants to raise and prove the defence of fair dealing and the plaintiff need not prepare the evidence for it.  The burden to prove this defence is, of course, on the defendants, but that does not mean that they do not have to tell the plaintiff what facts and grounds that they are going to rely on.  The plaintiff has the right to know them in advance and to prepare its case to meet them at the trial. 

13.  In the premises, I order the defendants to provide the particulars of fair dealing as pleaded in paragraph 14(b) of the defence to the plaintiff.  In order to make the issues easily identifiable, I suggest that the defendants may answer the particulars by stating firstly the category or categories of fair dealing defence which they seek to rely on.  Then, in respect of such category or categories of fair dealing defence, the basis for their claiming that the infringing article in question falls within that category or categories.  But that is not to replace the need for informing the plaintiff all the facts and grounds in support of the defence of fair dealing in respect of each and every one of the 33 allegedly infringing articles.

14.  I order the further and better particulars to be furnished within 21 days.  I also order the defendants to pay the plaintiff the costs of this application with certificate for counsel.