SECRETARY FOR JUSTICE v. CROWN PUBLISHING (HK) LTD AND ANOTHER

HCA 428 / 2008

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 428 OF 2008

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JUDGMENT

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I.    Introduction

1.  The Plaintiff (the Secretary for Justice suing on behalf of the Hong Kong SAR Government) (“the Government”) claims to be the owner of the copyright relating to a set of graphic map sheets in digital form.  She now seeks summary judgment against the 2^nd Defendant (“Mr Leung”) for infringement of the copyright in designing various maps and related annotations contained in two Hong Kong map books known as “the 2003 Hong Kong Road Map” and “the 2004 Hog Kong Road Map” (respectively “the 2003 Map Book” and “the 2004 Map Book”). 

2.  The 2003 and 2004 Map Books were published by the 1^st Defendant and sold in Hong Kong.  Summary judgment by consent has been entered against the 1^st Defendant for infringement of the Government’s copyright, with damages to be assessed.  Thus, this hearing only concerns with Mr Leung.

3.  In this action, the Government seeks against Mr Leung (a) injunction to restrain him from continuing or causing any acts of infringement of the copyright, (b) an order for delivery up of infringing materials, and (c) damages, including additional damages under section 108(2) of the Copyright Ordinance (Cap 528) (“CO”). 

4.  Mr Leung accepts that he was engaged by the 1^st Defendant to “design” the map books.  However, the gist of Mr Leung’s defence is that he was not involved in any acts which infringed the copyright, as he was only contracted to design the “front and back covers, the icons and the supplementary information contained” in the map books.  He has nothing to do with the design and creation of the maps in the books.

II.    Background

5.  Unless otherwise stated, the following are uncontroversial background facts leading to the present dispute.

6.  The Lands Department of the Government maintains a collection of map data of 1:1,000 scale known as B1000, which was made from and through site survey and aerial photographs obtained by its staff.  

7.  Another mapping database known as M10000 was then derived from B1000 by the Lands Department.  M10000 is of a scale of 1:10,000.    M10000 was further turned into another digital mapping database known as B10000 by the Lands Department.   B10000 was created in around May 2002.

8.  The generation of B10000 has involved a number of steps: from raw data capturing, data manipulation and compilation to final presentation of the graphic maps.  Further, the presentation of the graphic maps in B10000 requires much artistic skill and is dependent on the author’s personal style and judgment.

9.  The graphic maps in B10000 contain various unique features which reflect the author’s personal artistic style and judgment.  These features are the result of a process known as “generalization”, which is necessary because not all geographical features on the ground can be directly or conveniently represented on a map.  Examples of such generalization include the map author depicting the coast line by an imaginary line, and using some special symbol to denote a rocky shore, or widening and generalizing on the map a narrow and winding road to improve clarity and to enhance the legibility of road feature. 

10.  Further, apart from the graphic maps, B10000 also contains annotations comprising building names, house numbers, street names and place names. The selection of these names and numbers included in B10000 requires the author’s skills and judgment. 

11.  The entire B10000 graphic maps and the selection and compilation of the annotations on the maps were developed by the staff of the Lands Department in their course of employment. 

12.  Road maps produced by the Lands Department based on the B10000 graphic maps (with the relevant annotations) are purchasable from the market.

13.  The 2003 and 2004 Map Books were published and distributed by the 1st Defendant in Hong Kong.    These two map books contained various and comprehensive road maps of Hong Kong.   

14.  It is the Government’s case that the road maps in the 2003 and 2004 Map Books were all copied from the map collections produced under B10000.  It is the Government’s case that these maps are almost exact replica of the B10000 maps, albeit with some different icons used in the two map books.

15.  Mr Leung has been a graphic designer for about 15 years, and during the relevant time has been working as a freelancer. In the past, he had been commissioned by the 1^st Defendant to design the covers and pictures of novels. 

16.  In about 2002, Mr Leung was engaged by the 1^st Defendant to assist in the design of the 2003 and 2004 Map Books.  Mr Leung was paid an agreed contract fee of HK$171,000.00 for carrying out the works.  As mentioned above, it is Mr Leung’s case that he was only commissioned by the 1^st Defendant to design “the covers of the map books, the icons and the arrangement of the supplementary information on the margin of each page and at the back of the map books”.  He says these included determining the font size, character and spacing of the written description.

17.  The covers and backs respectively of the 2003 and 2004 Map Books also each contains a particular road map section of the Hong Kong Island.

18.  On 17 March 2008, the Government brought the present claim against the 1^st Defendant and Mr Leung for infringement of her copyright in the graphic maps of B10000 in relation to (a) the artistic works produced under the generalization process contained therein, and (b) the literary work for the compilation of the collections of annotations contained therein.

19.  On 3 July 2008, by consent summary judgment was entered against the 1^st Defendant for its infringement of the Government’s copyright in the abovementioned artistic and literary works, with damages to be assessed.

20.  The Government now also seeks summary judgment against Mr Leung, with damages to be assessed.

III.    The present application

Applicable principles

21.  The principles governing O.14 is well established.  The burden is on the defendant to raise a triable defence, which is not frivolous, moonshine, and which is worthy of belief.  The defendant should also condescend to particulars in his defence.  See:  Hong Kong White Book, paras 14/4/2 to 14/4/19.

22.  Further, Mr Leung through counsel does not dispute the following legal principles on copyright infringement submitted by Mr Kevin Pun, counsel for the Government:

(1)  As a primary infringement, copying without licence incurs liability whether or not the defendant appreciated that what he was doing infringed copyright.  Thus, innocence or ignorance is not a defence. See:  Copinger and Skone James on Copyright (15^th ed), para 7-07; Fancis Day & Hunter v Bron [1963] Ch 587 at 624.

(2)  Copying can be direct or indirect.  In most cases, copying can only be deduced by inference from all the surrounding circumstances.  Proof of sufficient similarity, coupled with proof of possibility of access, raises a prima facie case or inference of copying for the defendant to answer.  Where there is substantial similarity, this is prima facie evidence of copying and also of access. See:  CO, s 22(3)(b); Copinger, supra, para 7-17; Francis Day & Hunter, supra, at 614.

(3)  It is sufficient for the plaintiff to show that the defendant has copied a substantial part of the plaintiff’s work.  Whether a part is substantial must be decided by its quality rather than quantity.  The true principle is that “the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work, that is, in fact merely to take away the result of another man’s labour or, in other words, his property”. See:   CO, s 22(3)(a); The Modern Law of Copyright and Designs (3^rd ed), para 3.131; Ladbroke (Football) v William Hill (Football) [1964] 1 WLR 273 at 287, 293.

The Government’s case

23.  It is the Government’s case that she owns the copyright subsisting in original copyright works relating to a set of graphic maps in B10000, and such copyright works relate to the artistic works and the literary work mentioned above, pursuant to sections 5 and 4 respectively of the CO.

24.  The Government says on comparing all the road maps contained in the 2003 and 2004 Map Books with that of the maps in B10000, they look virtually identical.  It is also the Government’s case that the road maps in the two map books contain numerous occurrences of signatures of B10000, examples of which are the jagged lines features, the road exaggerations, the coastlines representations and beach boundaries, the symbolic representations of the rocks and cliffs, tadpole shaped symbols representing the artificial slopes and the use of layer tinting and contour height to represent the land surface.  These are clear evidence of copying of the B10000 maps and thus infringement of her copyright in these maps.

25.  The Government says the evidence shows clearly that Mr Leung was contracted to design and create, inter alia, the maps contained in the 2003 and 2004 Map Books.  As such, Mr Leung was also infringing the copyright of the B10000 maps.   

26.  Alternatively, if Mr Leung was (as alleged by him) only involved in designing and creating the covers and backs of the two map books, Mr Kevin Pun for the Government submits that:

(1)  Mr Leung is similarly liable for infringing the Government’s copyright in the entire B10000 maps, as the road maps in the covers and backs of the map books are qualitative-wise (as opposed to quantitative-wise) a “substantial” copying of all the B10000 maps; or

(2)  He is in any event liable for infringing the Government’s copyright subsisting specifically in the two road maps contained respectively in the covers and backs of the two map books.

27.  Mr Pun therefore further submits that there is clearly no triable defence to the claim, and summary judgment for the injunctive reliefs should be granted with damages to be assessed.

Mr Leung’s defence

28.  Although without admitting the same, Mr Leung has not advanced any evidence or arguments to challenge the Government’s case that copyright subsists in the B10000 maps, and that she is the owner of the copyright.    In fact, it is Mr Leung’s evidence that he had expressly asked the staff of the 1^st Defendant whether the 1^st Defendant had already obtained the consent and licence from the Government to make use of the Government’s maps purchased for the purpose of designing and creating the 2003 and 2004 Map Books.

29.  Mr Leung’s defences (as raised in his pleading, affirmation and through counsel’s submissions) however can be summarized as follows:

(1)  He was not involved in the design or creating of the road maps contained the 2003 and 2004 Map Books. Thus, he has not committed any infringement acts in relation to the Government’s copyright in the B10000 maps.   It is Mr Leung’s evidence that he was only commissioned by the 1^st Defendant to be responsible for “designing the covers of the map books, the icons and the arrangement of the supplementary information on the margin of each page and at the back of the map books, e.g., determining the font size, character and spacing of the written description”.  He was also not responsible for organizing the creation and production of the two map books.

(2)  Insofar as the design and creation of the covers and backs of the 2003 and 2004 Map Books are concerned:

(a)  they are not qualitative or representative copying of all the B10000 maps, and thus there cannot be infringement of copyright of all the B10000 maps.  

(b)             Any claim for summary judgment in part for infringement of copyright relating only to the two road maps contained respectively in the cover and back page of the two map books is not properly pleaded, and thus Mr Leung has been taken by surprise.

30.  For these defences, Mr Becky Wong, counsel for Mr Leung, submits that:

(1)  Given Mr Leung’s denial on oath, and given his evidence that he had no previous maps design experience before being commissioned by the 1^st Defendant to work on these two map books, whether Mr Leung was contracted to and involved in the designing and creation of the road maps in the contents of the two map books is a question of fact, and is at least worthy of belief.  The court cannot therefore resolve this on affirmation evidence, and the issue must go to trial.  

(2)  In relation to the design of the covers and backs of the map books:

(a)  whether the two maps in the covers and backs are qualitatively representative of the entire collection of B10000 maps is again a question of fact, which can only be determined at full trial as to how these maps were created.  No summary judgment should thus be granted at this stage, unless and until full evidence on this issue is canvassed;

(b)             as the Government has not in its Statement of Claim specifically claimed for separate liability on infringement of the copyright subsisting in specific maps (as opposed to the entire collection of the B10000 maps), she is not entitled to any summary relief in this respect.  Further, Mr Leung is taken by surprise, as the Government has not made any submission in her skeleton that she would alternatively seek summary judgment in part only in relation to the road maps contained in the covers and backs of the two map books.  It would therefore be unfair for the Court to enter summary judgment against Mr Leung on this basis.

IV.    Discussion

The copyright in the B10000 maps

31.  I am satisfied from the unchallenged evidence of the Government that the creation of the B10000 maps involved the necessary artistic works and literary work, which attract copyright in them, as provided under sections 4 and 5 of the CO.  I am also satisfied that the copyright is owned by the Government.

32.  As I mentioned above, Mr Leung has at least impliedly accepted the existence of the said copyright in the B10000 maps and that it belongs to the Government.

Whether the maps in the 2003 and 2004 Map Books are copied from the B10000 maps

33.  I am also satisfied from the unchallenged evidence of the Government that the maps contained in the 2003 and 2004 Map Books (including the two in the covers and backs of the books) were copied or substantially copied from the corresponding maps of the B10000 collection.  Such evidence includes the comparison between the detailed overlays obtained from B10000 with the corresponding pages in the 2003 and 2004 Map Books, which reveals almost identical features of at least 51 sheets of digital maps of B10000 have been copied by the 2003 Map Book, and at least 50 by the 2004 Map Book.

34.  Again, Mr Leung has not advanced any positive case or evidence to suggest that the maps in the map books are not copied from the B10000 maps.

35.  I am therefore also satisfied that the maps in the 2003 and 2004 Map Books are designed and created in infringement of the copyright of the B10000 maps.

Whether Mr Leung was involved in the design and creation of the maps in the map books

36.  An invoice dated 20 November 20002 and for the sum of HK$171,000.00 was issued by Mr Leung to the 1^st Defendant in relation to the design works and services he had rendered to it for the 2003 and 2004 Map Books.  This invoice is produced by the Government in support of this summary judgment application. 

37.  The single largest item of work (in terms of its fee concerned) in this invoice is entitled “Map production” and its description refers to the production of “about 174 pcs of map (Formatting from DXF files to the files ready for output)”.  The cost attributed to this part of the work is HK$162,000.00 (out of the total invoiced sum of HK$171,000.00).

38.  In my view, objectively looked at, this invoice shows that Mr Leung was engaged in, and did provide, design services to the 1^st Defendant for the production of the maps contained in the two map books.  The specific reference to “about 174 pieces” of maps were to be produced stands in stark contrast to Mr Leung’s case that he was only involved in the design and production of the covers and backs of the map books.  This contemporaneous document (which is Mr Leung’s own document) thus flatly contradicts Mr Leung’s primary evidence and case on his alleged limited involvement in the design work for the map books.

39.  Notwithstanding that, Mr Leung has provided no comments or evidence whatsoever in his opposing affirmation to at least explain (a) why the invoice provides for the work on the production of some 174 pieces of maps, and (b) the apparent inconsistency between this and his case that he was not contracted to and involved in the design of the maps in the maps books (save and except the two in the covers and backs). 

40.  Even in a summary application, a bare assertion advanced by a party does not necessarily lead to a triable issue.  Although the court is not to embark on a mini trial on affidavits, it is still entitled to assess that assertion against any contradictory evidence presented (in particular contemporaneous documents) to see if the assertion is worthy of belief.  The defendant should also condescend to particulars in his affirmation in support of a defence.  See:  Hong Kong White Book, paras 14/4/4, 14/4/9; Murjani v Bank of India [1990] 1 HKLR 586, 588 I-590H per Hunter JA, approving Banque de Paris v de Naray [1984] 1 WLR 21, at 23 per Ackner LJ.

41.  In my judgment, given this invoice and the total lack of explanation from Mr Leung to explain to the stark inconsistency between it and his assertion of non involvement in the design and production of the relevant maps, I have come to the clear view that Mr Leung has failed to discharge his burden to show that the assertion is worthy of belief, and it raise a triable issue on facts.  In coming into this view, I have of course considered the affirmation evidence as a whole, but that does not in any way affect my conclusion.

42.  I am therefore satisfied from the evidence that Mr Leung was responsible for and involved in the design and production of all or substantially all the maps contained in the 2003 and 2004 Map Books.  In doing so, he has infringed the Government’s copyright in the B10000 maps.

43.  Although it is also Mr Leung’s evidence that he was told by the 1^st Defendant’s staff that it had already obtained the necessary licence and consent from the Government to use the purchased B10000 maps for the production of the two map books, it is accepted by Mr Leung’s counsel that ignorance or innocence offers no defence in law to an infringement action.  Nothing therefore turns on this.

44.  For the above reasons, Mr Leung has failed to raise a triable defence to the Government’s claim, and summary judgment should be granted, with damages to be assessed.

45.  Given my above ruling, strictly speaking it is not necessary for me to deal with the Government’s alternative arguments and Mr Leung’s alternative submissions in response thereto.  However, if I were wrong above, I will deal with these arguments briefly below.

The copying of the road maps in the covers and backs of the map books infringe the copyright of the entire B10000 maps

46.  From the evidence presented for the purpose of this application, it appears to be the Government’s case that the B10000 map database consists of a collection of separate and individual maps representing different sections of the entire Hong Kong.

47.  If that is the case, then it is at least arguable at this stage that the two individual maps (the cover one representing part of the road map at Tai Hang, and the back one representing a part of North Point) cannot be said to be qualitative-wise a substantial copying or reproduction of all or the entire collection of the B10000 maps, amounting to an infringement of the copyright in the entire collection of the B10000 maps.   This is so because the present state of the evidence at least makes it arguable that separate copyright subsists in each and every one of these maps, since different artistic and literary works were created separately in each of them in their process of production.    This aspect of the evidence thus needs to be fully canvassed at trial if the Government is to succeed on this basis.

Mr Leung’s separate infringement in the copyright of the cover and back maps

48.  Mr Leung’s only opposition raised against the Government’s alternative claim for his infringement of two individual maps is the allegation that this is not part of the Government’s pleaded claim.

49.  I do not think that is correct.  

50.  At paragraph 2 of the Statement of Claim, copyright works that the Government claims to have been infringed by the Defendants (including Mr Leung) are pleaded to include the various artistic works and the collection of the annotations contained in the B10000 maps.  Further, in the prayer of the Statement of Claim, the Government has pleaded for injunctive relief against the Defendants (including Mr Leung) in restraining them from infringing, either by themselves or through others, her copyright in the copyright works “or any of them”. 

51.  Properly read in the context, I accept that it is part of the Government’s claims that Mr Leung has infringed the copyright in part (if not all) of the copyright works.  In the premises, the Government’s claim for summary judgment in part in relation to infringement of only the two maps contained in the covers and backs of the map books does in my view fall within her pleaded case.

52.  Nor do I think there are any merits in the submissions that Mr Leung is somehow taken by surprise by the Government’s alternative case on part summary judgment:

(1)  As I have concluded above, this forms part of the Government’s pleaded reliefs, which are also included in the O.14 Summons.  There is no question of surprise.

(2)  The Government’s claim relies on Mr Leung’s own evidence that he was only involved in the design of the covers and backs of the two map books.  No new evidence is relied upon by the Government to support this alternative claim. There is also no question of surprise or prejudice.

(3)  Moreover, Mr Leung has failed to identify to the court what prejudice, if any, is caused to him by allowing this alternative claim for part summary judgment to proceed today.

53.  In the circumstances, had I not concluded that full summary judgment should be granted for the reasons given in paragraphs 36 to 44 above, I would still have granted the Government partial summary judgment in relation to Mr Leung’s infringement of the copyright subsisting in the two maps of B10000 appearing at the covers and backs of the 2003 and 2004 Map Books.

V.    Conclusion

54.  For the above reasons, Mr Leung has failed to show a triable defence to the Government’s claim.  I therefore grant summary judgment in terms of paragraphs 1 to 4 of the Government’s O. 14 Summons, with an enquiry be made as to damages in terms of paragraphs 4 and 5 thereof.

55.  I further grant an order nisi that costs of this application and the action be to the Government to be taxed if not agreed.  Unless any of the parties applies to vary the same, this order will be made absolute within 14 days from today.