ELEGANT TECHNOLOGY LTD v. HKSAR

FAMC No. 58 of 2004

IN THE COURT OF FINAL APPEAL OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION 

MISCELLANEOUS PROCEEDINGS NO. 58 OF 2004 (CRIMINAL)

(ON APPLICATION FOR LEAVE TO APPEAL

FROM CACC NO. 448 OF 2003)

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D E T E R M I N A T I O N

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Mr Justice Bokhary PJ:

1. In Tse Mui Chun v. HKSAR (2003) 6 HKCFAR 601 at pp 616J-617C the Court of Final Appeal said:

“30. The scheme of s.121 [of the Copyright Ordinance, Cap. 528] is obviously predicated on the premise that in most cases copyright subsistence and ownership, even if not actually admitted, would not be genuinely in issue. Experience has shown that this premise is rooted in reality. Of course there can be cases in which copyright subsistence or ownership is genuinely in issue. Thus a court before which a s.121 affidavit or affirmation is placed may require the deponent to attend before it and give evidence. It may exercise this power either of its own motion or because the defendant satisfies it that copyright subsistence or ownership is genuinely in issue. Naturally the trial court will be vigilant to ensure that justice is not defeated, or even delayed, through spurious contentions about copyright subsistence or ownership. Such contentions should receive short shrift. But in cases, which we think are likely to be rare, where the trial court is satisfied that copyright subsistence or ownership is genuinely in issue, it will of course address that issue. And the power to require a s.121 deponent to attend and give evidence will then come importantly into play.”

2. The Court of Appeal cited that passage but omitted the last sentence.  That omission may have contributed to the confusion into which the Court of Appeal fell when, in the opening sentence of para. 43 of their judgment in the present case, they said: “It is difficult to discern from the judgment in Tse Mui-chun why copyright subsistence or ownership was genuinely in issue in the proceedings before the Court of Final Appeal”.  In truth, there is no such difficulty.  As appears from the passage which we have quoted from their judgment, the Court of Final Appeal were dealing with when it would be appropriate to order a s.121 deponent’s attendance.  If the defence merely puts the prosecution to proof of copyright ownership or subsistence, proof by a s.121 affidavit affirmation would normally suffice.  But if there is a genuine issue as to such ownership or subsistence, then it might be appropriate to order the s.121 deponent’s attendance.

3. Mr Gary Plowman SC for the applicants drew our attention to the decision of the Court of Criminal Appeal in R v. Sims [1946] KB 531.  Delivering the judgment of the court in that case, Lord Goddard CJ said at p.539 that “whenever there is a plea of not guilty, everything is in issue, and the prosecution have to prove their whole case, including the identity of the accused, the nature of the act and the existence of any necessary knowledge or intent”.

4. Merely because an accused does not actively contest a fact so that such fact is in that sense not genuinely in issue, it does not mean that the prosecution does not have to prove that fact.  An accused can, as it is sometimes put, simply fold his arms and leave it to the prosecution to prove that fact if they can.  But even though defence inaction cannot do so, defence action can sometimes reduce the prosecution’s task.  Thus the issues which arise on a plea of not guilty can be reduced by some positive step taken by the defence.  And this can reduce what the prosecution would otherwise be required to prove.  In the present case, the Court of Appeal said this (at the end of para. 41 of its judgment): “In fact the defence case at trial was based around a positive assertion that Hunan Sanchen owned the copyright in the cartoon.”  It would appear that copyright ownership was not in issue at all in the present case.  But even if it were, it is clear that there was sufficient evidence of copyright ownership in the circumstances even though some questions could possibly have been raised on that evidence if the witness’s evidence that Hunan Sachen owned the copyright concerned had been challenged in cross-examination, which it was not.

5. We see no basis for granting leave to appeal to the Court of Final Appeal, and this application for such leave is dismissed.