TCA (HONG KONG) LTD. v. OCEAN PLASTIC MANUFACTORY LTD.

IN THE COURT OF APPEAL

1992, No 158
(Civil)

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J U D G M E N T

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Kempster, J.A.:

1. This is a contested application by Ocean Plastic Manufactory Ltd ("the defendants") for leave to adduce further evidence upon the hearing of their appeal against the interlocutory order of Mayo J, made on 1 October 1992 inter parties and in chambers at the instance of TCA (Hong Kong) Ltd and TCA Group Inc ("the plaintiffs") restraining them until judgment in Action No A6554 of 1992 or further order from manufacturing, reproducing or in any way dealing with the external shape of certain baby dolls, save for the head, and ordering the delivery up to the plaintiffs' solicitors of all moulds and other items used in the production and discovery to show the sales of such dolls which are alleged to infringe the plaintiffs' copyright in their "Care for Me Baby Doll". Liberty to apply was granted.

2. As the appeal in question does not relate to "a judgment after trial or hearing of any cause or matter on the merits" our discretion is not fettered by a requirement for "special grounds". RSC Order 59 rule 10. Krakauer v Katz [1954] 1 WLR 278 at p 279 per Denning LJ.

3. The further evidence upon which the defendants seek to rely is a second affirmation made by Stanley Chan, the Chairman of the defendants, on 23 December 1992. An affidavit sworn by Miss Donna Nicholls on the same date deposes to the difficulties experienced by solicitors in preparing and collating evidence to contest the application for injunctive and other relief in the three days between Saturday morning the 26th, when the plaintiffs' summons, writ and evidence were received, and Wednesday 30 September at 2.30, the date of the hearing. She describes the voluminous nature of the documentation, the necessity for conferring with employees in the People's Republic of China and Mr. Chan's unfamiliarity with the English language. However, no application was made to Mayo J to adjourn the hearing in order to allow more thorough preparation; a matter of considerable importance in the context of discretion. Krakauer v Katz (supra).

4. At the hearing below it was conceded on behalf of the defendants that the plaintiffs had arguably shown a real prospect of success at trial and the relief sought was contested on the grounds that damages would furnish the plaintiffs with an adequate remedy and that the balance of convenience came down in the defendants' favour. The judge regarded the defendants' approach as tantamount to claiming to buy the right to infringe copyright. That may well be a matter for argument on the appeal. In ordering an injunction he required the plaintiffs to fortify their cross-undertaking as to damages with a bank guarantee in the sum of HK$500,000. This was duly done.

5. The fresh aspect of the evidence of Mr. Chan, now sought to be adduced, is that the shape of the doll in which the plaintiffs claim the exclusive copyright itself constitutes a copy of a doll any copyright in which is vested in a third party. It is an aspect deriving from his recollection, now apparently keener than it was last September, and, it is submitted, so important as to warrant the defendants being permitted to resile from the concession made below as to the strength of the plaintiffs' case. If and when that application is made regard will doubtless be had to the judgment of Buckley LJ in Bryanston Finance Ltd v De Vries (No 2) [1976] 1 Ch 63 at p 77. Otherwise this evidence does no more than elaborate what has already been deposed to.

6. I remind myself that pending the hearing of the appeal the less said that may bear upon its merits the better and say only that, in the circumstances outlined, the discretion of this Court should, in my opinion, not so be exercised as to allow the admission of fresh evidence. If the defendants see fit to take advantage of their liberty to apply to Mayo J that is a matter for them remembering, perhaps, that in England Simon Brown J has said, with the reservation that perhaps justice will demand it:

"It would be unfortunate indeed were parties to be encouraged to the view that they could have two bites at the first instance cherry merely because the first bite was hurried."

London Underground Ltd v National Union of Railwaymen [1989] 18 IRLR 343 at p 344.

Sir Derek Cons, V.-P.:

7. I agree with my Lord. Having regard particularly to the lack of any application for adjournment before Mayo J, I can find nothing in what has been said this morning which inclines me to accept that justice requires us to permit this great amount of extra evidence to be introduced at this stage. I, too, would exercise my discretion to refuse the application.

Litton, J.A.:

8. As I understand it, the fresh point supported by the new affidavit is that the doll has been "around for some time" and therefore, arguably, there was never any copyright subsisting in either the drawings or the moulds for the doll in question: paragraph 3 of the affidavit of Mr. Stanley Chan. That assertion seems to me to stand uncomfortably with the position previously adopted by Mr. Stanley Chan which appears to have accepted that some copyright subsisted, with exclusivity in TCA or jointly between TCA and Ocean.

9. The affidavit to be placed before us in fact goes far beyond what I have just referred to. It consists of over 190 pages of material and in effect invites us to exercise an original jurisdiction and to entertain the matter afresh upon the new material. It seems to me that this is wholly beyond the scope of Order 59 rule 10. I, too, would dismiss the application.