SILVERLIT TOYS MANUFACTORY LTD v. I.D.D.I. INTERNATIONAL LTD

HCA 1798/2007

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 1798 OF 2007

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R U L I N G

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Introduction

1.  This is a copyright action brought by the Plaintiff against the Defendant alleging breach of copyright relating to a toy helicopter known as the PicooZ.  I have before me a summons by the Defendant dated 29 January this year by which it seeks orders relating to 5 Lists of Documents (the original and 4 supplemental lists) filed by the Plaintiff and for an order that the Plaintiff answer para. 2 of its Request for Further and Better Particulars.  These matters are the subject of paras. 1, 2, 3, 5 and 6 of the summons.  Para. 4, which relates to voluntary particulars filed by the Plaintiff on 29 January does not call for decision by me and so I will say nothing further about it.

The Plaintiff’s Lists of Documents

2.  Mr Collins, who appears for the Defendant, complains that the Lists of Documents have been prepared in a haphazard and confusing manner and should not be allowed to stand.  He submits that these should be withdrawn and substituted by one composite List in proper chronological order with clear and accurate descriptions of the documents appearing in the List.

3.  Mr Chu, for the Plaintiff, responds by saying that these lists are perfectly compliant with O.24 r.5(1) which requires that:

“A list of documents … must enumerate the documents in a convenient order and as shortly as possible but describing each of them or, in the case of bundles of documents of the same nature, each bundle, sufficiently to enable it to be identified.”

The note to O.24 r.5 at 24/5/3 helpfully elaborates on what is required to comply with the rule.  It is this:

“‘Enumerate the documents in a convenient order’ — The provisions for enumeration and description under this rule are fundamental to the proper execution of discovery which is itself an essential part of a process whereby the merits of the parties’ contentions are to be evaluated and if necessary determined.  The rule provides what is to be done.  No specific order of the court is required.  It is part of the process of ensuring that all relevant documentation is disclosed.  Documents must be sufficiently identified to enable the other party to ascertain and ask for those he wishes to inspect and to enable the court, if application is made, to see whether the rule or any order for discovery has been complied with and if necessary to make, e.g. an order for production for inspection which is clear and can be enforced.  Accordingly (except where the documents are too numerous, and include large numbers of documents of the same nature) the lists should usually consist of items in order of date, with the number of the item, the description (e.g. letter from plaintiff to defendant) and the date.  If the descriptions are prolix, the party giving them may be ordered to pay the costs occasioned by the prolixity (Hill v. Hart-Davis (1884) 4 Q.B.D. 470 on this point only).”

In relation to bundles of documents, the material part of para.24/5/5 is as follows:

“The provisions in regard to bundles of documents only apply where there is a large number of documents of the same nature.  In such a case each of the documents must be numbered, as in other cases, but the bundle may be described as a whole — e.g. ‘letters (or copy letters) from A to B, tied up in a bundle marked A and numbered from 1 to 50 and initialled by me.’”

4.  The five lists are in the bundle as follows:

This complies with the rule.

5.  Whilst Mr Chu says that these supplemental lists, all within days of each other, reflect the Plaintiff’s on-going duty to make discovery, they do the Plaintiff no credit at all.  Plainly, insufficient attention has been paid to the process of discovery with the result that this has produced piecemeal disclosure which could and should have been avoided had the Plaintiff and its solicitors given the matter proper attention.  There are after-all relatively few items of disclosure, going up to number 39 on the fourth supplemental list.  At worst this could and should have been incorporated into an original with perhaps a single supplemental list if necessary.

6.  In relation to the enumeration of the documents in a convenient order, as the rule requires, I have referred to a number of shortcomings which were avoidable had more thought gone into the preparation of these lists.  Mr Collins says that the Plaintiff should be required to start again because he is in no position to know what he wishes to inspect and call for copies of.  Although it goes without saying that in a case such as this discovery is of prime importance, I do not consider that the Defendant has been disadvantaged by the way in which the disclosed documents have been set out or described.  Whilst Mr Collins says that he does not wish to call for inspection of documents referred to as “various” in the date column, the fact is that there is a description which is perfectly intelligible in the description column in every case.  And so, whilst Mr Collins has his point — and my sense of this particular interlocutory skirmish is that it has a substantial element about it of the Defendant’s solicitors hoping to “get one over” the Plaintiff’s solicitors because of their awkwardness in correspondence — the Defendant will not in fact be disadvantaged in calling for inspection of any or as many of the disclosed documents as it wishes to see.  Once inspection has been completed and, if it then becomes apparent from that inspection that there are missing documents then a Further and Better List can be called for or a requirement that the current lists be verified by affidavit, whichever of those courses the Defendant’s solicitors choose to adopt.  In these present circumstances, I will allow the Lists to stand, notwithstanding obvious shortcomings.  I am being asked to exercise a discretionary jurisdiction and where I am satisfied that ultimately no disadvantage will be suffered by the Defendant and where a sense of proportion needs to be maintained, particularly having regard to the avoidance of delay and additional costs which would result from my requiring the Plaintiff to withdraw the present Lists and file a new composite List containing all the items in the existing lists.  The errors that I have identified and the Defendant’s failure to get the orders that they have asked for in the summons can be reflected in the order for costs that I will make in due course. 

The Request for Further and Better Particulars

7.  Mr Chu objects to provide an answer to the request [see page 59] on the basis that, as drafted, it is far too imprecise.  Mr Collins says that it is perfectly understandable and that it really goes to the heart of the matter by requiring the Plaintiff to specify in what respects the Defendant’s helicopter and its accompanying manual are said to breach the Plaintiff’s copyright works.  He seeks particulars of similarities, in support of which he has cited the case of NDP Windows Ltd & Anr v CEGO Ltd (1989) FSR 56, a decision of Aldous J (as he then was) who approved of the practice of setting down points of similarity in copyright cases, observing that in such cases these should normally be given.  The importance of the provision of sufficient particulars of infringement is also emphasised in the older case of Oliver v Dicken [1936] 2 All ER 1004.  See also Halsbury, vol. 9(2), para. 434.

8.  It strikes me that whilst these particulars should be provided there is force in the criticism of imprecision and lack of clarity.  I propose to amend the request to make the matter more clear which will then need to be answered by the Plaintiff within 14 days of the order.  The request will now be in these terms:

“Please particularise which points of the Defendant’s product, including its instruction manual, infringe the Plaintiff’s copyright by reference to the Plaintiff’s copyright works, including its instruction manual and the copyright drawings referred to in the statement of claim.”

The Orders

9.  Accordingly, I make no order on paras. 1 to 4 of the summons and as to para.5 I order that the particulars be provided pursuant to the request in para.8 of this judgment, these particulars to be given within 14 days of the order.  In these circumstances, where I have made a limited order there will be no need to adjourn the Check List Review hearing on 19 March.

Costs

10.  Whilst I have declined Mr Collins his orders on the Lists of Documents, I take the view that he has had the better of the argument because, for the reasons that I have given, the Lists contain the defects which I have identified notwithstanding which I have ruled, as a matter of discretion, that they ought to stand.  As to the particulars, these I have ordered on the basis of an amended request.  On balance Mr Collins has just about had the better of the argument — but only just.  I propose to say that the costs of the summons and of the hearing itself should be the Defendant’s costs in the cause, thereby protecting it from ever having to pay the Plaintiff these costs in the event of the Plaintiff succeeding in the action.  This order for costs will be, in the usual way, an order nisi.