VOGEL INDUSTRIES (M) SDN BHD v. VOGELSITZE GMBH AND OTHERS

HCIP 56/2023

[2024] HKCFI 3482

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 56 OF 2023

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REASONS FOR DECISION

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1.  This is the 1^st and 3^rd Defendants’ applications to strike out the Plaintiff’s copyright infringement claim on the ground that the Statement of Claim discloses no reasonable cause of action. Due to this specific ground relied on by the 1^st and 3^rd Defendants, no affidavit evidence has been filed by the parties in respect of this application.

2.  In the substantive hearing on 31 October 2024, I refused to strike out the claim but granted general leave to the Plaintiff to amend its pleadings.  I also granted leave to the 1^st and 3^rd Defendants to reapply to strike out the Plaintiff’s amended pleadings.  I now give my reasons.

3.  The Plaintiff is a company incorporated in Malaysia which carried on and carries on the business of designing, developing, manufacturing and supplying passenger seats for buses and coaches.  According to the Plaintiff’s case:

(i)     The Plaintiff was and is the owner of the copyright subsisting in the artistic works consisting of two design drawings  (collectively “the Design Drawings”) of a seat headrest model named “Revo SL-17” (“the Revo SL-17 Headrest”) which was originally designed.

(ii)    The passenger seats manufactured by the Plaintiff (“the Plaintiff’s Passenger Seats”), which consisted of the Revo SL-17 Headrest, were previously installed on the buses operated by The Kowloon Motor Bus Company (1933) Limited (“KMB”).

(iii)   The 1^st Defendant is a company incorporated in Germany, whereas the 3^rd Defendant is a company incorporated in Hong Kong.

(iv)   Since a date unknown to the Plaintiff after 2017, without the Plaintiff’s authority or approval, the 1^st Defendant has manufactured, sold or offered for sale a seating system known as “ARONDO Combi HF” (“the 1^st Defendant’s Product”), which comprises, inter alia, a headrest that constitutes a three-dimensional reproduction of the Design Drawings or a substantial part thereof.

(v)    The 2^nd to 4^th Defendants were and are customers of the 1^st Defendant, who in turn started selling or providing the 1^st Defendant’s Product to KMB or other bus operators in Hong Kong.

(vi)   Based on the aforesaid, it is averred that the 1^st to 4^th Defendants have infringed the copyright owned by the Plaintiff.

4.  For the purpose of the present application, one has to examine the way in which the Plaintiff has formulated the claim.

5.  According to §7 of the Statement of Claim, the Plaintiff’s claim is based on the infringement of copyright in respect of the Design Drawings attached as Annexure 1 to the pleading.  There were 2 Design Drawings so attached with one dated 28 April 2017 whilst the other one dated 1 August 2017.  In the Particulars supplied in the same §7, the Plaintiff avers that:

(i)     During the period from 27 October to 5 January 2017, the Plaintiff’s employees designed and developed the Revo SL017 Headrest which resulted in the completed Design Drawings.

(ii)    The production of the Plaintiff’s Passenger Seats were commenced from 12 May 2017 onwards.

6.  The Plaintiff also pleads that it is the registered proprietor of the Registered Design Nos 2220574.6 and 2220575.9 in respect of the Revo SL-17 Headrest (“the Registered Designs”).  The said designs were registered by the Plaintiff on 18 October 2022 in order to assert its ownership in “the Designed Work” which has been defined to include only the Design Drawings.  Upon the 1^st and 3^rd Defendants’ applications for summary judgments on their Counterclaims against the Plaintiff, the court, with the consent of the parties, made a declaration, inter alia, to invalid the registration of the Registered Designs.

7.  In the respective Defences and Counterclaims filed by the 1^st and 3^rd Defendants, the said Defendants aver, inter alia, that the Design Drawings were created after the design and the development of the SL-17 Headrest had been completed and finalised, and so the Revo SL-17 Headrest was not manufactured in accordance with the Design Drawings.

8.  In the Replies and Defences to Counterclaim, the Plaintiff replies as follows:

(i)     The design and production process of the Plaintiff’s Passenger Seats first began in or around October 2016.  Design sketches were supplied to the Plaintiff’s prototype team to produce a prototype.

(ii)    The prototype was revised and eventually the final prototype was created in or around the end of December 2016.

(iii)   Based on the final prototype, the Plaintiff commenced the mass production of the Plaintiff’s Passenger Seats from May 2017 onwards.

(iv)   One of the Plaintiff’s employees, Mr Lee, created the Design Drawings to express the Design Work as represented in the final prototype.

(v)    Hence, the Defendants’ assertion that the Revo SL-17 Headrest was not manufactured in accordance with the Design Drawings is wrong.

9.  The 1^st and 3^rd Defendants seek to strike out the Plaintiff’s claim on the following grounds:

(i)     Since the Design Drawings were created after the completion of the design process and the Plaintiff’s Passenger Seats were produced based on the final prototype instead of the Design Drawings, the Plaintiff’s claim based on the copyright allegedly subsisting in the Design Drawings must fail as the same were made after the completion of the design process.

(ii)    One of the Design Drawings was dated 1 August 2017, and so the Plaintiff’s Passenger Seats could not have been manufactured based on this drawing.

(iii)   The Plaintiff’s claim can therefore only be based on the infringement of copyright allegedly subsisting in the final prototype.  However, the final prototype is only an industrial article which does not enjoy copyright protection.  The prototype is not “a work of artistic craftsmanship”, citing §§33.2, 33.7 and 33.8 of The Modern Law of Copyright[1] .  Further, relying on Lucasfilm Ltd v Ainsworth[2], neither can the prototype qualify as “a sculpture” which is the subject matter for copyright protection.

10.  Having perused the pleadings, I agree that there is some confusion in the Plaintiff’s claim that requires clarification.  Though it is clearly pleaded in the Statement of Claim that the copyright relied on by the Plaintiff is the copyright allegedly subsisting in the Design Drawings, the Plaintiff, in the Replies and Counterclaims, seems to suggest that the Design Drawings do not have any role to play in the design process.  It is averred that: (i) the design process had already been completed with the production of the final prototype; and (ii) the final products were manufactured in accordance with the prototype itself.  In such case, there may not be any copyright subsisting in the design drawings which were created after the completion of the design process.  Indeed, the design drawings may be considered just as a reproduction of the design of the prototype, thereby lacking originality to qualify as a piece of protectable copyright material.

11.  Looking at the details of the Design Drawings, I would imagine that in the actual production process, the final prototype only finalised the design of the Plaintiff’s Passenger Seats.  Before the actual production, the design team need to break down the seats into different components and design drawings would have to be prepared.  The final products were therefore manufactured in accordance with the measurements and specifications in the Design Drawings.

12.  Mr Lam, counsel for the Plaintiff, relies on the dicta of Lam J (as he then was) in Natuzzi SPA v De Coro Ltd[3]to argue that, if there is skill and labour expended in the preparation of such kind of technical drawings, such drawings are protectable under the Copyright Ordinance.  Mr Hughes, counsel for the Defendants, does not dispute such proposition.  If that is the case relied on by the Plaintiff, it should have pleaded the same in establishing the originality of the Design Drawings.  It is not right, or at least misleading, to say that the design process was completed after the production of the final prototype and the final products were manufactured in accordance with the prototype as if nothing else was involved in the process.

13.  There is another matter that requires clarification.  It is not clear whether the Plaintiff is complaining that the Defendants were copying the design of the passenger seat per se or the production of the exact components of the Plaintiff’s Passenger Seats as shown in the Design Drawings.  If it is the former, Mr Lam agrees that there may not be any originality about the design, and the Plaintiff may have a more difficult task in establishing a copyright infringement claim in that regard. In particular, the related registered design claim has been dismissed by the court.  The Plaintiff therefore has to clarify whether the Plaintiff’s claim is more than a copy of the design per se.

14.  As the Plaintiff may have an arguable case on the originality of the Design Drawings, I would grant general leave to the Plaintiff to amend the pleadings to clarify its claim.  However, if the Plaintiff’s claim is still unarguable after the clarification, the 1^st and 3^rd Defendants should have the leave to reapply to strike out the amended claim.  I therefore so ordered.

15.  So far as the issue of costs is concerned, I am of the view that the Plaintiff should take some responsibility for the confusion in the pleadings.  In their pleadings, the 1^st and 3^rd Defendants have made it clear that, since the Design Drawings were made after the completion of the design process, there is no copyright subsisting in these drawings.  Instead of clarifying the claim, the allegations in the Replies and Defences to Counterclaims further confuse the basis of the Plaintiff’s claim by stating that the Plaintiff’s Passenger Seats were manufactured based on the prototype.  No reference was made to the Design Drawings.  However, I do not think that the Plaintiff should pay for the 1^st and 3^rd Defendants’ costs if the Plaintiff finally succeeds in its claim.  I therefore ordered that the costs of both striking out summonses be the respective 1^st and 3^rd Defendants’ costs in the cause.