THE QUEEN v. TSUTSUMI MOTONOBU AND OTHERS

IN THE SUPREME COURT OF HONG KONG

(Appellate Jurisdiction)

MAGISTRACY CRIMINAL APPEAL No 1690 OF 1988

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BETWEEN

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J U D G M E N T

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1. This appeal followed a finding of guilt by Mr. I.E. Carlson, Magistrate at North Kowloon in relation to two charges of possession for the purposes of trade or business of infringing copies of artistic works in which copyright subsisted contrary to Section 5(1) of the Copyright ordinance, Cap.39. The charges were brought against all three Appellants and the particulars related to design drawings for bracelets and watch cases of Dunhill Millennium watches. The lst Appellant the virtual owner of the business was fined $15,000 on each charge and ordered to pay $1,000 costs, the 2nd Appellant the manager of the business, was fined $2,500 on each charge, and the 3rd Appellant, the Company, itself, was fined $20,000 on each charge and ordered to pay $1,000 costs. All three Appellants appeal against their convictions and sentences.

2. Mr Grounds who also appeared in the court below advanced three principal grounds of appeal against conviction but after hearing and considering the submissions of both counsel I was satisfied that only his first ground had any real merit.

3. At the end of the prosecution case Mr Grounds had made a submission of no case to answer. Among the points he argued was one which related to the drawings submitted by the prosecution, exhibited to an affidavit put into evidence by the prosecution in terms of Section 9 of the Copyright ordinance, Cap.39. The section in effect allows proof of copyright by affidavit. In this case the affidavit of Joseph Kin-yu Cheung was put into evidence. He is the Marketing Manager and Administration Controller, of the Jewelery Division of Alfred Dunhill (Far East) Limited, which claimed through its parent company Alfred Dunhill Ltd. ownership of the copyright in artistic works in inter alia original drawings for their Dunhill Millennium range of watches. These drawings, including those for the bracelets and watch cases which are the subject of the charges, were exhibited to the affidavit. However, the legends on these drawings were printed and or handwritten in French and in some cases in French and Geman, and no English translation was provided. Mr Grounds argued that without the translations the drawings were not admissible, and that without the drawings the prosecution could not prove its case.

4. As well as which, he argued, the affidavit exhibited "copies" of the said drawings, whereas Section 9 of the Copyright Ordinance requires that they be "true" copies.

5. His submission before the magistrate was that because of these two omissions on the part of the prosecution there could be no case for the Appellants to answer.

6. They learned magistrate found in favour of the Appellants on both points in that he found that the drawings required to be translated and that the word "true" must appear in the affidavit when referring to copies of the drawings. However, and apparently without having further argument on the matter, he gave leave to the Crown to reopen its case to cure the two defects in relation to the affidavit. The record of proceedings gives as his reasons:

"These are matters of form rather than substance. No prejudice to Defence. In Interests of Justice that I should allow this."

Mr Grounds then complained to the learned magistrate that though he had briefly submitted that the Crown should not be allowed to reopen its case, he had been given no opportunity to fully argue the matter before the learned magistrate's ruling. This was all somewhat unfortunate but in my view did not affect the issue which is whether or not the prosecution ought to have, been allowed to reopen its case to cure defects which it ought to have known about right from the beginning.

7. In his Statement of Findindgs the learned magistrate gave somewhat lengthier reasons for his ruling. He said this:

"As I have explained I allowed the prosecution to reopen its case. It was in the interests of justice that I should allow them to do so. On the one hand I had to balance the interest of the defence who would have secured an acquittal at that stage because the drawings were the fundamental documents relating to the copyright and the affidavit proved the existence of the copyright. Without that evidence there was no case to answer Mr Grounds had briefly submitted that by then it was too late for the prosecution to reopen its case. The prosecution had reserved its right to reopen the case should the necessity to do so arose. I had a jurisdiction to permit the prosecution to reopen its case. Although the errors related to the crucial aspects of the prosecution case they were errors of a technical nature. As to the French legend on the drawings it plainly went to explain the dimensions of the watch cases and bracelet. And as to the affidavit it was undoubtedly the intention of the drafts to follow the precise words of Section 9. This error amounted to a slip. If I allowed the prosecution to correct its mistakes I was not depriving the Defence of contesting the case on its true merits nor was I putting it at a disadvantage evidentially by requiring it to call other witnesses who might not have been available, and in any event the evidence which was the subject matter of the errors was there it was not a case of permitting the prosecution to call additional evidence and so I allowed, the prosecution to reopen to correct its errors, and I ruled that the case should proceed on its merits, rather than acquit the Defendants at that stage on two highly technical points, which had nothing to do with the merits."

8. There appears to have been some further argument as to whether the prosecution had reserved its right to reopen its case though the record is silent as to that. Mr Grounds advised me in the course of arguement that at the beginning of the trial he made so many objections to various matters in the prosecution case that it became obvious that the trial would last an inordinate length of time if that continued. It was then apparently agreed that he would reserve his further objections till the end of the prosecution evidence. I do not know if among the matters reserved were those relating to the affidavit.

9. Whatever may have been the situation in the lower court, I will decide this appeal on the simple issue as to whether the magistrate was right in law to allow the prosecuton to reopen its case to correct the errors pointed out by Mr Grounds in his submission of no case to answer, errors which if not corrected would have brought the case to a premature end in the Appellants’ favour.

10. There is no doubt that the general rule which must be observed is that evidence the prosecution wishes to adduce in support of its case ought to be called before it closes its case if the evidence is then available. There is also no doubt that a discretion exists in the court to allow the prosecution to introduce evidence at a later stage e.g. by way of reopening its case.

11. In magistracy appeal 351 of 1984 The Attorney General and Chow Chuen Fu and another Mr Justice Garcia reviewed many of the relevant authorities, to which I have also been referred in this case, and in broad terms they outline the principles which should guide a court when asked to exercise its discretion to allow the prosecution to open its case to adduce evidence it ought to have led before it had closed its case.

12. These cases decided that a court could exercise its discretion to allow the prosecution to reopen its case when the evidence it sought to adduce was not only of a technical or formal nature but included matters of substance. Evidence omitted by mistake it has been held could be adduced after the Crown case is reopened. Time and time again it is explained that the matter is one of judicial discretion and not to be interfered with unless an injustice results to either side.

13. In a Hong Kong case referred to by Mr Justice Garcia, whose facts are not dissimilar to those in the instant case, in that it involved a failure to provide translations for certain key words Mr Justice Bewley in Hon Tak-sum v R. (Criminal Appeal No 355/82) held that the magistrate was correct to allow the Crown to reopen its case to establish the meaning of Chinese words that had not been translated. That was a case involving the publishing of objectionable articles in a newspaper described in the charge as the Real Victory News. The evidence relating to the articles referred to Chun Shin g Pao and the court allowed the prosecution, after it closed its case, to reopen to prove that Chun Shing Pao was the self same as Real Victory News,

14. In its 43rd Edition at Paragraph 4.414 Archbold summarises the position thus:

"From time to time evidence of a formal nature, or clearly not capable of being the subject of dispute which should have been adduced before the prosecution closed its case is overlooked and submissions of no case to answer are accordingly made. No clear rule has emerged as to the extent of the judge's discretion to allow the Crown to repair the omission it is submitted that the balance of authority in the cases cited below indicates that the discretion is confined to evidence of a formal technical or non contentions nature which may or may not be a matter of substance. The discretion most certainly does not extend to permitting the prosecution virtually to begin its case all over again."

15. That I believe to be an accurate if somewhat bland statement of the present law on the subject. It was more robustly stated by Anderson, J. in Hansford v McMillan (1976) V.R. 743 where at p.749 (45) he said:

"There is a very substantial weight of authority to the effect that an informant may reopen his case to meet an objection that some formal proof of a matter that really does not admit of denial has been overlooked The common case is where regulations have not been tendered as part of the informant's case and it has repeatedly been held that the informart’s may cure this deficiency in his case after he has closed it, even to the extent of tendering such proof on the return of an order nisi to review.  In relatively recent times this Court has allowed the curing of such deficiency in proof almost without comment: see Lee v Irish (1949), V.L.R. 166; Nash v Stielow [1980] V.L.R. 3a @ 143; Anderson v Chigwidden [1961] V.R. 564; Schuett v McKenzie [1968 ] V.R. 225; Kennet v Holt [1974] V R. 644. The reason for allowing such deficiency in proof, to be repaired is obvious. Though justice is said to be blind, like Janus she looks both ways and while looking to the interests of an accused person to ensure that all elements of an offence are proved, she does not close her eyes to the injustice to the prosecutor when a technicality which virtually does, not adroit of challenge has been overlooked In view of the course taken in this case, it is instructive to observe the eloquence of earlier judges upon this aspect. In Re Kendrick (No. 2) 1903 28 V.L.R. 472, Hood, J., dealing with the question of whether a Court of Marine Inquiry should have allowed the reopening of a case to prove that Kendricks had a Master’s certificate and that notice of the charge had been served upon him said at p.475. 'It would be a scandal on the administration of justice if every court had not the jurisdiction, to allow a party to cure a slip, I have no doubt that if necessary I the Court had jurisdiction to reopen the whole matter. It is a question of discretion entirely. As to not allowing a slip to be cured, it would be monstrous if a party could be defeated because his counsel had overlooked some little point.’"

16. The difficulty of course lies in determining what are those matters the omission of which ought not to preclude the reopening of a prosecution case, and what are those which most decidedly should. The answer semis to be that the matter does not lend itself to greater definition, but is a matter entirely of discretion which should be exercised within the circumstances of each case to ensure that no injustice is done. Words such as technical, formal, and noncontentious in relation to matters omitted, be they matters of substance or otherwise, have been used in an attempt to confine the discretion within prescribed limits but such prescription is invidious in areas of judicial discretion which is:

"The power of decision exercised to the necessary end of awarding justice, and based upon reason and law, but for which decision there is no special governing statute or rule." (R. Bowers, The Judicial Discretion of trial courts, A Treatise for Trail Lawyers, Indianapolis 1931)

17. In the instant case the learned magistrate was of the view that it was in the interests of justice to allow the prosecution to reopen its case to correct what amounted to errors in relation to the translations of the legends on the drawings exhibited to the affidavit, and the omission of the descriptive word "true" where referring to the copies of these drawings. He took the view that he was in no way putting the defence at a disadvantage, now did he think it was a case of permitting the prosecution to in effect call further evidence. He ruled that the case should proceed on its merits. I would normally be slow in any event to interfere with the learned magistrate's exercise of discretion, but here I find myself agreeing absolutely with the manner of his exercising it.

18. It would, in my view, have been an affront to justice to have allowed these appellants to escape conviction due to these technical errors. The appeals against conviction are dismissed.

Sentence

19. As to sentence. There are as yet, I am told, no tariffs or guidelines for offences against the Copyright Ordinance, but I see no good reason to disagree with the learned magistrate's view that these offences relate closely to offences for breach of trademarks, false certificates of origin and breach of export quotas. The for possession of each infringing copy is a fine of $1,000 and imprisonment for 12 months. There were 1320 such infringing copies in the first charge, and 1310 in the second charge.

20. The mitigation was that the profit margin for the watch pieces was low, that Dunhill really had not lost any sales as a result, and that this was the first offence committed by any of the defendants.

21. Nevertheless, a rough estimate of profits in relation to each charge was $400,000 and $300,000 and as the learned magistrate properly pointed out this is one of the type of offences which most hurts the reputation of a commerical city such as Hong Kong. I feel that the fine of $15,000 imposed on the 1st Defendant for each charge was a proper sentence it being a small percentage of the total profit. Similarly I agree that a fine of $2,500 for each charge was appropriate for the 2nd Appellant, having regard to his position as a mere manager. $20,000 for each charge for the 3rd Appellant, the company, was in my view also correct. The award of costs will also stand.

22. The appeals against sentence are dismissed.