XCHRX KS TOYS LTD. v. CHAN CHUN CHUNG AND ANOTHER

HCA 1106/2000

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1106 OF 2000

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J U D G M E N T

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1. The Plaintiff's claim against the Defendants is for infringement of copyright in original artistic works relating to the design of the packaging of the Plaintiff's doll "Hello Darling". In these proceedings the Plaintiff seeks relief in respect of one such work.

2. The Plaintiff seeks summary judgment against the Defendants under O.14 RHC.

3. The Plaintiff first published its doll with the design of the packaging in respect of which copyright is claimed in August 1997 by the sale of the same in Hong Kong. The evidence shows that the Defendants offered to sell in January 2000 to investigators engaged by the Plaintiff a doll in packaging which is almost identical to the Plaintiff's packaging save for minor variations.

4. Two issues are raised on behalf of the Defendants :

1. that copyright does not subsist in the design of the Plaintiff's packaging because the work was not an original work；

2. that the Defendants had no knowledge or reason to believe that the Defendants' product was an infringing copy of the artistic work.

5. On the first issue, the Plaintiff relies on the statutory presumption contained in s. 121(3) of the Copyright Ordinance (Cap. 528). Para. 4 of the 1st affirmation of Hui Man Kit of the Plaintiff states that the Plaintiff is the owner of the copyright subsisting in the copyright works referred to in the Statement of Claim. Where such an affirmation is made, by virtue of s.121(3) of the Ordinance, the court shall presume, in the absence of evidence to the contrary, that the statement made in the affirmation is true. This is, however, a rebuttable presumption.

6. William Woo Sze Ho ("Woo") filed an affirmation in support of the Plaintiff's application. He is a designer employed by United Design Co. He described how he came to create the design for the packaging in respect of which copyright is claimed. In the process of creating the design he operated a software known as Illustrator. Subject to the overall dimensions of the packaging he decided the shape, colour, configuration and dimensions of the main logo "Hello Darling - Take Me Home" as well as the decorative stars, hearts and background. He also affirms that he did not copy any other designs and that both designs, including the one in respect of which copyright is claimed herein, originated from him.

7. The Defendants relied on the well-known "Hello Kitty" trademark or brand name products produced by Sanrio Corporation Limited of Japan to show that at least there has been some copying done by Woo in the creation of his works.

8. In my view, the design and style of the word "Hello" in the Plaintiff's work is virtually identical to the design and style of the word "Hello" in at least one of the "Hello Kitty" products, namely, a plastic folder. Also, the letters "h" and "o" are of a distinctive design and style and are virtually identical.

9. Also, the word "Hello" in larger print in the Plaintiff's work is also virtually identical to the same word in another of the "Hello Kitty" products, namely, a suitcase. There is also the use in the Plaintiff's work of hearts and what has been described as twinkling stars in the background although these appear to be in a different style and arrangement to those in the "Hello Kitty" products.

10. On the evidence adduced, it is, in my view, reasonably arguable that the designer Woo must have had regard to the design of the "Hello Kitty" products when he was working on the Plaintiff's work. It seems to me that there are reasonable grounds for challenging the veracity of what Woo said in his affirmation, namely, that he did not copy any other design and that both designs originated from him.

11. It seems to me that the Defendant has shown that on the first issue a triable issue has been raised. In Man Earn Limited v Wing Ting Fong [1996]1 HKC 225, Godfrey J.A. (as he then was) said in the Court of Appeal @ 228 :

"Unless it is obvious that the defence put forward by the defendant is frivolous and practically moonshine, Order 14 ought not to be applied : see Codd v Delap (1905) 92 LT 510, per Lord Lindley at 511."

12. I do not think that it can be said that the defence put forward is frivolous and practically moonshine.

13. Of course, it may well be that at trial the Plaintiff will be able to show either that Woo did not have regard to any of the designs of the "Hello Kitty" products or that notwithstanding reliance on some parts of the design of the "Hello Kitty" products, the Plaintiff's work nevertheless is an original artistic work. But that depends on the facts and the evidence to be adduced and this matter can only be resolved at trial.

14. On the first issue, the Defendant is entitled to unconditional leave to defend and the matter will have to proceed to trial. That being so, it is neither necessary nor desirable for me to express a view on the strength or weakness of each party's case on the second issue. As Litton V.P. (as he then was) said in the Court of Appeal in Man Earn Limited v Wing Ting Fong- (supra) at 230 :

"In my judgment, all that the judge was called upon to do - and all that he should have done - was to have stated in a few words why he concluded that the plaintiff had failed to satisfy him that the defendant had no defence. Any observations beyond that were unnecessary and otiose."

15. I grant unconditional leave to the Defendant to defend.