XCHRX CENTALIC TECHNOLOGY DEVLEOPMENT LIMITED v. WORLDWIDE INDUSTRIAL LIMITED

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

Action No. 10156/1995

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D E C I S I O N

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Rogers, J.:

1. This is an application for an interlocutory injunction and it concerns what is called a handler in a printed circuit board testing machine. The Plaintiff, according to the evidence, has invented a new type of machine in the 1980's. Indeed it had two machines based upon the concept. I have been shown photographs and drawings relating to the machines.

2. The features of the Plaintiff's machine are fourfold. In the first place, it has a C-shaped cross-section. It has a two-layer support structure and four guide-rods to hold the test fixture and a central pneumatic cylinder.

3. The handler in a PCB testing machine performs the function of a base and moveable platform so that various contacts can be made between the PCB to be tested and the test-head. As part of the whole apparatus there is then a computer which analyses the results and declares on the screen very quickly whether the PCB has passed or failed a test.

4. The Plaintiff has been successful in the manufacture and sale of its machines. They are, I have no doubt, very well-built machines. I have seen, as I will come to, a sample of the Defendant's machine. These machines are not mass-produced machines. They are carefully made to painstaking precision. Each machine, as can be supposed, will have a test-head with hundreds if not thousands of contacts and these have to touch accurately the correct part of the PCB to be tested, not to pinhead accuracy I would suppose, but more like to pinpoint accuracy. The machines have to do that day-in and day-out on a regular basis. There can be no doubt that these are very high precision machines.

5. The Defendant is a comparatively new company and in April of last year it came on the market with a machine which comes from a Taiwanese manufacturer. This Taiwanese manufacturer is itself a comparatively new company. The Defendant's machine, the OS2000, has been on the market since April and since that time the Plaintiff has been unable to sell any machines.

6. The Plaintiff in 1993, some years after it first commenced selling its own machine, applied for a patent. I have been shown a copy of the specification and that has a comparatively broad claim, which of course has been accepted by the examiner. That relates essentially to the handler where the testing plate, which is moveable to contact the circuit boards that is being tested, and the support member has a cross-section substantially C-shaped along its whole width. One can see therefore that if the examiner was prepared to accept a claim like that there must be at least something to be said for the Plaintiff's claim that when it first invented its machine, it had produced something novel. Regrettably however that patent is useless because, of course, the machine to which it relates has been sold for many years.

7. The Plaintiff therefore in this application has to base its claim on copyright in drawings. It does so on the basis of the drawings of the two machines. I take into account for the purposes of this application that some of the drawings have been lost, particularly the early sketches.

8. When I examined and compared the photograph of the alleged infringement with those drawings which were exhibited to the affidavit my immediate reaction was that there was unlikely to be infringement. Indeed when I considered the direction which the exchanges of evidence had gone, and the Plaintiff's skeleton argument, I could see that my immediate reaction was likely to be confirmed. It was for that reason that last Friday when this matter first came for the hearing of the full interlocutory injunction application I asked to see in particular the Defendant's machine. I have not seen the Plaintiff's machine, as there was not time on Friday, and I do not consider that it is necessary for this application that I do so.

9. I have seen the Defendant's machine, as I have said, and having seen that and compared it with the drawings I have come to the unequivocal conclusion that I do not consider that the Plaintiff has made out an arguable case of infringement at the interlocutory injunction stage.

10. Whether there is infringement depends upon whether, in the words of the Copyright Act 1956 there was "reproduction" of a substantial part of the copyright work. What is 'a substantial part of the work' can be looked at in a number of ways; from time to time different tests have been proposed. But what one has to bear in mind however, as was said in the case of Interlego A.G. v. Tyco Industries Inc. [1988] RPC page 343 is that these are artistic works. As Lord Oliver said at page 365:

"Engineering drawings are no doubt 'artistic works' within the broad meaning of that expression in the Copyright Act 1956 but it has to be remembered that they are essentially no more than manufacturing instructions for a three-dimensional artefact."

11. At page 373 he said:

"It has, however, to be borne in mind that all these cases were concerned with a very different question from that which this appeal is concerned. It is one thing to say that the explanatory figures and legend, because they are of value (and, indeed, perhaps essential) to an informed understanding of the drawing, cannot be ignored in considering whether copyright in the drawing has been infringed by the making of a three-dimensional article or whether the article would appear to a non-expert to be a reproduction of the drawing. It is quite another to say that explanatory material, in the form of words or figures, which are clearly the subject of literary copyright, can confer upon an artistic work an originality which it does not possess in its own right."

12. As I have said in this case, there is no question to my mind that the Plaintiff has established an arguable case of originality. Indeed I approach this case on the basis that they would succeed on originality in the drawings. I cannot for the moment see an argument as to why they would not.

13. It is the question however as to whether the Defendant's article can in any way be said to be a reproduction. As Lord Oliver said, one has to take into account measurements on a drawing. They are not to my mind all important, but they do give the reader of the drawings some indication of what the drawing actually shows. As I will come to, I found nothing in any measurements to indicate reproduction.

14. Copyright has been bedevilled by a truism that it is said that copyright does not protect an idea, but the artistic work. I do not intend to go into philosophical arguments, nor to add to the plethora of case law on this subject, but I do say this, that many of the cases in the past have involved what have concerned exact reproductions, or virtually so.

15. It is easier perhaps to come to the conclusion that an item is not a reproduction than to express in words how that mental process has been arrived at. But here, having seen the apparatus, and compared it drawing-by-drawing, I can say at least this. In respect of some of the drawings it was explained to me that there were no corresponding parts in the Defendant's apparatus and so I ignore those entirely. In respect of other of the drawings it was explained that there might be corresponding parts but they were not visible or accessible at the time that I was viewing the apparatus. These, to my mind in any event, were minor parts under the base of the machine if they existed at all. But for the purposes of the interlocutory injunction I have to ignore them because, of course, the Plaintiff has not established an arguable case in respect of them. But as regards the later progress of this Action they may or may not be significant, I know not, but I doubt whether they are of sufficient importance to warrant the Plaintiff proceeding further in respect of them in any event.

16. Even accepting that the Defendant's apparatus has a basic C-shaped cross-section and indeed that it has the two-layer support structure, with four guide-rods to hold the test fixture and the pneumatic cylinder, in my view in the way that takes its form in the Defendant's apparatus it is in no sense a reproduction of any of the Plaintiff's drawings. Not merely could I find no corresponding measurements between the Plaintiff's drawings and any part of the Defendant's machine but the proportions, in so far as they were comparable, were quite different. The construction of the Defendant's machine did not appear to me to accord with the drawings. In no sense could I see that it was a reproduction.

17. I feel that I can do no better than to go back to the words of Lord Justice Buckley in Catnic Components Limited v. Hill and Smith Limited [1982] RPC 183 at page 223, line 12, where he said:

"If an 'artistic work' is designed to convey information, the importance of some part of it may fall to be judged by how far it contributes to conveying that information, but not, in my opinion, by how important the information may be which it conveys or helps to convey. What is protected is the skill and labour devoted to making the 'artistic work' itself, not the skill and labour devoted to developing some idea or invention communicated or depicted by the 'artistic work'. The protection afforded by copyright is not, in my judgment, any broader, as counsel submitted, where the 'artistic work' embodies a novel or inventive idea than it is where it represents a commonplace object or theme."

18. I regret that, probably with that inadequate explanation as to my view of the situation, I conclude. I fully appreciate that my decision today may well bring an end to these proceedings, unless the Plaintiff re-bases the whole of its case. That is a matter which has caused me to be cautious. However, taking everything into account, I have no doubt that in expressing my conclusion in such a manner, it is in the long run not only fair to the Defendant but also fair to the Plaintiff.

19. I wish to add one further matter and that is this. The Plaintiff has sent copies of the Writ to many of the potential customers and persons in the trade. The implication no doubt, and the impression given to those who received such a communication, is that the Defendant's article is an infringement. The Plaintiff has undertaken to provide the names and addresses of those to whom that communication has been sent. I will allow this Decision to be published so that any corrective measures can be taken by the Defendant as, in fairness, I consider that it should be in a position to correct that mis-impression.