NATIONAL PRESTO INDUSTRIES, INC v. CAB PLASTICS LTD

1988 No. A7106

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. I have before me two appeals by the defendant from decisions of a Master, one of which has become academic and only concerns costs.

2. The appeal of substance relates to a decision of Master Jennings given on the 28th July 1989 when he granted leave to the plaintiff to administer interrogatories. The defendant has answered five of the interrogatories, but appeals against the decision to administer the remaining three.

3. By these proceedings, the plaintiff alleges infringement of its copyright in artistic works relating to a domestic electric appliance called a "Salad Shooter" which is an electric slicer/shredder for the purpose of slicing or shredding vegetables and other food products. The defendant admits that it manufactured in 1988 a large number of items referred to as a "Hamilton Beach Salad Maker" which the plaintiff says is very similar to the plantiff's product. However, the defendant denies the plaintiff's allegations that they manufactured its product by reproducing the drawings or a substantial part of the drawings, models or prototypes of the plaintiff.

4. The application for leave to administer interrogatories arose from the contents of a letter from the defendant's former solicitors, W.I. Cheung & Co. dated the 23rd May 1989 in reply to a letter from the plaintiff's solicitors concerning documents, which provided the following information about costing :-

"2. Documents relating to costing

(i) Initially, our clien was supplied with a set of drawings to enable it to prepare estimate for costing and tooling but the set of drawings was returned to HB through Mr Fuchs prior to 23rd May 1989.

(ii) Our clien was also supplied with a certain model of the proposed product but the same was dismantled and/or broken in the course of making the various component parts; moulds and dies and the same or its parts cannot be located or traced. In any event, such model should not be considered as 'documents'."

The plaintiff then sought to administer the following interrogatories :-

"1. Was the 'Model of the proposed product', (referred to in the letter dated 23rd May 1989 from Messrs W.I. Cheung & Co. to the plaintiff's solicitors), supplied to the defendant by Hamilton Beach Inc?

2. Was it a Hamilton Beach product?

3. Was it a product of the plaintiff?

4 Did it bear the plaintiff's trade mark?

5. Was it :-

(1) a sample of the plaintiff's product the 'Salad Shooter Electric Slicer/Shredder'?

(2) a prototype of such?

or (3) a reproduction of such?

6. Was it a working model?

7. Was it A.C. or battery operated?

8. (1) Was such model or parts thereof copied by the defendant in the manufacture of the product the defendant manufactured for Hamilton Beach?

(2) If parts only were copied specify which parts."

The defendant has supplied answers to interrogatories 1, 2, 3, 4 and 7 in accordance with the order of the Master, but appeal against the order in respect of interrogatories 5, 6 and 8.

5. Mr Smith, counsel or the defendant, submitted that subsistence of copyright is not admitted and that the main issue between the parties will be as to whether or not the various components of the defendant's products substantially reproduce the artistic works in which the plaintiff claims copyright, viz. the drawings, prototypes and models as set out in the amended statement of claim. Mr Smith drew my attention to L.B. (Plastics) Limited v. Swish Products Limited [1979] F.S.R. 145 for the proposition that the court is prepared to draw inferences from the surroundings such as the similarity between the plaintiff's drawings and the defendant's products, together with the fact that the defendant had had an opportunity to copy the plaintiff's products which would establish a prima facie case which the defendant has to answer. Mr Smith placed reliance upon Rockwell International Corporation and Another v. Serck Industries Limited [1988] F.S.R. 187 which held that a plaintiff is entitled to interrogate a defendant as to facts which tended to support the plaintiff's case or to impeach the defendant's case, but not as to facts which supported the defendant's case. A further authority cited by Mr Smith was Rofe v. Kevorkian [1936]2 All E.R. 1334 where it was held inter alia, that a party should not be interrogated on a question which he can only answer by consulting an expert and repeating the expert's opinion.

6. With regard to interrogatories 5(2) and (3), Mr Smith contended that on the authority of Rofe, in answering these questions, the defendant would have to make a value judgment or to form an opinion or make enquiries of persons not its servants or agents. The same argument as to a value judgment was advanced in respect of interrogatory 6 reliance again being placed on Rofe. In respect of interrogatory 5(1), difficulty is contemplated because it is suggested that the plaintiff had produced and distributed samples of its products which have not been identified by the plaintiff. With regard to interrogatory 8, reliance was placed upon Rockwell.

7. In my judgment, I do not consider that the answer required for either interrogatories 5 or 6 requires a value judgment by means of an expert's report. The information sought is within the knowledge of the defendant who should be competent to provide answers without any difficulty.

8. With regard to interrogatory 8, Mr Smith's reference to L.B. (Plastics) concerns a case where it was held that the similarity between the plaintiff's drawings and the defendant's products, together with the defendant's opportunity to copy the plaintiff's product had established a prima facie case which the defendant had to answer. Accordingly, he submitted that if the plaintiff was able to obtain an admission from the defendant that it had access to the Salad Shooter, it would be able to rely on that admission together with any resemblance between the Salad Shooter and the Salad Maker which it may be able to establish at the trial in order to lead to an inference which the defendant would be bound to rebut by its own evidence as to how it arrived independently at the design for its own product.

9. However, the arguments that have been put forward by Mr Smith, do not apply to the facts of this case for no admission has been made by the defendant. The object of the application is to seek such an admission. As a result, I am unable to accept Mr Smith's submission.

10. Further the suggestion that the interrogatories have not been framed clearly or precisely is without merit.

11. The interrogatories relate to facts within the knowledge of the defendant but not within the knowledge of the plaintiff. Accordingly the plaintiff is entitled to answers to these interrogatories. The appeal against the decision of the Master is therefore dismissed with an order nisi for costs.

12. The other appeal wag against the decision of Master O'Donnell on the 6th July 1989 dismissing the defendant's application to inspect six prototypes of the plaintiff's product. Objection was taken before the Master on a technical point that the defendant's summons under 0.24 of the Rules of the Supreme Court was inappropriate which argument was accepted with the result that the application was dismissed. Without deciding the matter I believe that there was merit in the plaintiff's objection. Be that as it may, inspection has now been given to the defendant. In as much as practically the whole of the argument has been directed to the interrogatories, the costs relating to this appeal will be minimal. I shall therefore dismiss the appeal with no order as to costs.