ORIENTAL SUNDAY PUBLISHER LTD. v. APPLE DAILY LTD.

1996 No. A12063

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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J U D G M E N T

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1. These are two actions which come on for hearing today following directions for a speedy trial which I gave on 24th January some ten days ago. To my mind, Mr. Liao, Q.C. who appears for the Defendant is correct. These actions give all the appearance of being a storm in a tea cup. I have been told that there is a history of litigation between the Plaintiffs and the Defendant. This case started off with a big bang on the 9th October. The Plaintiffs' solicitors wrote asking for relief in respect of infringement of copyright including $100,000.00 as a contribution to their costs, plus damages. What costs had been incurred to that day I know not since it took some considerable time thereafter until, I believe, the 23rd December to have the first version of the Statement of Claim served. Certainly the impression is given that this is a convenient means of prolonging the pre-existing enmity between the parties. That, however, should not allow the parties to turn this small squabble into a prolonged battle. Because the issues were confined, and the evidence was in a short compass, I considered it appropriate that a speedy trial should be ordered. This was in an effort to provide the parties with a resolution to their dispute as quickly and economically as the court could.

2. The actions turn primarily upon a photograph. Ms. Poon is an obviously alert and active news photographer. She is employed by OPG Human Resources Ltd, a company within the Plaintiffs' group and originally the 3rd Plaintiff. She was sent up to Beijing in early October to cover political meetings. On the plane she was told by the other journalists that they had seen Ms. Huang Fei getting on the plane and that the rumours of her pregnancy were clearly verified by what they saw. Ms. Poon then went up the plane and eventually found Ms. Huang resting in the 1st class compartment with a blanket covering her. Ms. Poon took a photograph. Ms. Huang was too quick for her. She put her hand out and the resulting photograph did not show Ms. Huang's face. Ms. Poon was not to be put off by considerations for the wishes of her subject or, some would say, prey. When the aircraft had landed, she ran out and went to the baggage claim area where she caught up with Ms. Huang and there from some distance she took a photograph. All Ms. Poon was interested in was a photograph of Ms. Huang and specifically her stomach, referred to in the evidence by the less polite name, belly. However, so that she could take her photograph unobtrusively, Ms. Poon took a photograph of the people standing around Ms. Huang.

3. The roll of negative was sent back to the Plaintiffs. It was considered something of a scoop to have a photograph of the lady revealing her pregnancy, which she had, unlike other well-known persons, not been anxious to demonstrate to the public at large. The Plaintiffs, and specifically the Oriental Sunday Publisher Limited, decided that it should be used on the front cover of the coming Sunday Magazine. That Sunday Magazine was published on Saturday, the 5th October in time for the Sunday. Copies were no doubt sold on the Saturday.

4. The Defendant publishes its paper as a daily paper with a large number of sections catering for a wide variety of interests and totalling on Sunday 6th October, I believe, some 64 pages. In, section C on the first page thereof in the bottom right hand corner, there was a photograph of the Oriental Sunday Magazine which had obviously been purchased previous day. The article emphasized that Ms. Huang was indeed now pregnant as was revealed in the Oriental Sunday.

5. I have to say that even when the paper was passed to me to look at, it took me some time to find that photograph on the first page of section C which is covered in all sorts of photographs of all sorts of personalities. Be that as it may, the photograph of the magazine is a direct copy of the magazine front cover and the Plaintiffs claim infringement of copyright. There are 4 matters which are really the subject of copyright.

6. The first is the negative which Ms. Poon took on arrival at Beijing Airport. Next is the positive print of that negative as it appears on the front cover of the magazine. Next is the layout which is essentially the layout of the characters and the word "Oriental Sunday", I believe with the juxta-position of the issue number, but that aspect has not been emphasized in the course of argument. Lastly copyright is claimed in the overall layout of the front page.

7. Most discussion in the hearing took place in respect of the photograph. What is pleaded is essentially the negative. The negative is the standard 35mm negative and when enlarged in the way usually done by standard photo processors, it can be seen that the photograph shows some 8 people around the baggage conveyor with a background of the various offices in the airport dealing with plant quarantine. Ms. Huang appears a little bit to the right of centre of that photograph but is no larger or smaller than any of the other figures in the photograph or at least about half a dozen of them.

8. As it appears in the magazine, however, Ms. Huang has been singled out. About 20% of the picture heightwise and about the same amount breadthwise, on a rough estimate that would thus be approximately one twenty-fifth of the original negative, has been enlarged considerably. The degree of enlargement can be seen when the magazine is looked at because the grain on the photograph on the cover is more than clearly visible. What happened was that the persons responsible in the Plaintiffs' organisation decided that Ms. Huang should be singled out and they put the photograph into the computer, digitised it and expanded it and then selected out the portion that they required.

9. It seems to me that when the definition of photograph in the Copyright Act 1956, which still applies, is considered, the definition can cover both the negative which was taken by Ms. Poon and the result of processing of that negative namely the print which is seen on the magazine cover. Photograph is defined by the Act as meaning: "any product of photography or any process akin to photography, ..." It then goes on to deal with other matters. It seems to me that one can apply that just as much to a photograph processed by computer as to a photograph processed in a conventional manner by an enlarger, masking, dodging, burning or whatever.

10. When it comes to the question of infringement, Mr. Liao Q.C. argued very strongly that when looked at the magazine cover in so far as it has the picture is not an infringement of the copyright in the original negative because so small a part visually has been taken that it does not constitute a reproduction of a substantial part.

11. The decision makes no difference to the result of the case because of the clear conclusion that I have come to in respect of the other aspect of photographic copyright. It is not even of academic interest in view of the fact that the question of whether a substantial part has been taken for the purposes of infringement of copyright has to be judged by reference to quality. Hence each decision is purely one on the facts of the case. But I consider that Mr. Liao has a point there. I think that when looked at visually the photograph really is a photograph of a group of people with a background and a foreground with the baggage conveyor. Looked at qualitatively the photograph on the front page of the magazine is quite different from the photograph i.e. that of the negative.

12. But that does not seem to me to matter in this case because the Plaintiffs are in my view entitled to rely on the photograph which appears on the front cover. In respect of that Mr. Liao argues that there is no originality because that constitutes simply an enlargement. I do not consider that is correct for this reason that it is not simply an enlargement which appears on the front cover, it is an enlargement with a selection. It is an enlargement with a selection which is of some importance.

13. Again, Mr. Liao quite rightly has raised the point: "What would happen if old photographs were taken and small parts of those were enlarged? Would new copyright attract to that?" That seems to me to be a question which has to be answered in the future. I consider that the answer probably lies in this. If there is an old photograph and somebody re-processes that by enlargement, selection and so forth, he may well attract new copyright to his work. That would only be infringed by somebody who actually copied his work rather than one who went through a similar process all over again, took the old photograph and enlarged it and cut it and so forth.

14. In this respect I adopt what I consider is a rather simplistic approach to copyright in photographs, that one obtains copyright as soon as the shutter is opened and closed. Each new photograph attracts its own copyright and one does not really have the same problems with regard to photographs attracting copyright that one has in respect of other items because they attract copyright of their own.

15. I next turn to the copyright in the layout of the characters. Again, because this is a speedy trial, one has to approach this with some flexibility as to the actual history of the matter. It seems that originally the layout of the characters for the Oriental Sunday were horizontal with the English words separating the Chinese characters, with two large Chinese characters above and the two smaller characters for Sunday underneath, side by side. That was changed at issue no. 209 and the smaller characters were moved to the side, there was a background inserted, and the smaller characters were widened. The final version of these characters is slightly different, however. That appears certainly in nos. 283 and 300 which I have been shown and those seem to me to follow very much Exhibit 4 which had 3 different representations in different colours.

16. During the course of argument, I raised the question as to whether the characters themselves attracted copyright. Again, it seems to me that Mr. Liao is correct that probably the characters themselves on their own do not attract copyright. There seem to be substantial grounds to suppose those are embodied in a computer program and the fact that sometimes the characters can be shown in relief and sometimes they can be shown in outline with a shadow behind them, is only a function of what a computer program can do in displaying the characters. I doubt whether the characters alone can attract copyright.

17. However, with regard to the layout of the characters with the words "Oriental Sunday" underneath in their box-shape with their background, I consider that there is sufficient originality for that to attract copyright and I so hold.

18. Finally there is the layout of the front page generally i.e. what would be called the headlines, the way the photograph is super-imposed onto the front page and the star-burst highlight at the bottom. That again is a layout which in my view is sufficient to attract copyright. There is clearly skill and labour which goes in to it. It may seem pretty mundane to a casual observer but I have no doubt that if unskilled persons tried to create a magazine layout, they would find that there is more skill involved than at first blush it might seem.

19. I then turn to the Defendant's newspaper. The photograph of the magazine cover is so clear that all these matters right down to the detail of the bar code can be seen. In those circumstances, I have no hesitation in holding that the layout is infringed that being the specific layout for the no. 283 issue as well as the layout for the name of the magazine. As regards infringement of copyright in the photograph, as I already indicated, I consider that the copyright which has been infringed is the copyright generated when the photograph was processed inside the Plaintiffs' organisation and came out on the computer printer. As I have already said I consider that really the negative photograph is different.

20. That only leaves the question of what relief should be granted. I have no hesitation in granting an injunction against the Defendant to prevent further use.

21. As I indicated in the course of argument, the likelihood the Defendant wishing to use either the Sunday the 6th October edition of their newspaper or this particular photograph commercially seems to me to be extremely remote. If I were to order delivery up, however, it would at this juncture seem to me to be of a remarkably few number of copies which would be left lying around in the newspaper office. But it would entail destroying what archive records the Defendant keeps. I have no evidence of that but I consider I am entitled to draw upon common knowledge that newspapers do keep archive records. Relief of delivery up is there for 2 reasons. It is there to aid the enforcement of an injunction. In copyright cases it is also there to enable the Plaintiff to obtain the items which by reason of the provisions of the Act relating to conversion, the law deems the Plaintiff has a right to. There is no suggestion that the Plaintiff would in any way benefit on a commercial basis from delivery up of the copies of the photographs of the front page to which otherwise they might be entitled. I see no reason in these circumstances why the ordinary standard records of all their newspapers should not be kept including this one provided there is no further commercial exploitation of this photograph.

22. I am unable today to deal with the question of damages. When the order for speedy trial was made, apparently, I did indicate that damages could be dealt with on another occasion. In my view, they could have been dealt with today and it would have disposed of the matter expeditiously. But be that as it may, the question of damages which from what evidence has been filed today would appear to me to be likely to be minimal, will have to be left over for another day, but I do propose again with a view to not allowing this matter to become unnecessarily complicated or extended to reserve that matter to myself so that matter too can be quickly disposed of in the interests of keeping some rationality to these proceedings.