SKY KING MACHINERY ENGINEERING LTD v. CHINA HARBOUR ENGINEERING COMPANY LTD

CACV 211/2023, [2026] HKCA 11

On Appeal From [2023] HKCFI 1516

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NO 211 OF 2023

(ON APPEAL FROM INTELLECTUAL PROPERTY PROCEEDINGS NO 45 OF 2019)

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J U D G M E N T

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Hon Chow JA (giving the Judgment of the Court):

INTRODUCTION

1.  This is the Defendant’s appeal against the judgment of Madam Recorder Sit, SC dated 9 June 2023, after a trial on the issue of liability, adjudging that the Defendant had infringed the Plaintiff’s copyright in (i) various construction drawings more particularly described below, and (ii) certain installations erected upon Tseung Kwan O Area 137 based on those drawings.

2.  In the Defendant’s Supplementary Notice of Appeal, the Defendant raises an array of challenges to the Recorder’s findings of fact, as well as a few discrete points of law or procedure. For reasons which we shall endeavour to explain in this Judgment, none of the Defendant’s grounds of appeal has merit. Accordingly, the Defendant’s appeal is dismissed.

BACKGROUND FACTS

3.  The basic facts of this case have been fully set out in the Recorder’s reasoned Judgment dated 9 June 2023 (“the Judgment”), and will not be repeated here. For the purpose of the present appeal, the following brief summary, taken largely from the Judgment, should suffice.

(a)  Public fill banks at Tseung Kwan O Area 137 and Tuen Mun Area 38

4.  “Public fill” is a type of inert construction materials consisting of a mixture of rocks, concrete, asphalt, rubbles, bricks, stones and earth generated from building, excavation, renovation, demolition and road works, and is used in, inter alia, reclamation works. Prior to its use, the public fill has to go through a process for the sorting and removal of inappropriate materials (such as metals). The sorting and removal process is carried out at specially designed facilities referred to in the Judgment as “public fill sorting facilities” (“PFSF”).

5.  The operative parts of PFSF include sorting equipment and conveyor belts formed of steel truss. Trucks carrying construction and demolition materials would decant them into PFSF, where the materials would be transported by covered conveyor belts and pass through different sorting equipment, which may include vibrating grizzly feeder (“VGF”), screen feeder, magnetic separator, and blower. There would also be workers stationed on picking platforms manually removing materials which exceed the desired size or are otherwise unsuitable for use. The public fill thereby generated would be placed in a temporary stockpile on the PFSF site, to be transported to the intended land reclamation site.

6.  The Government has set up 2 public fill banks at Tseung Kwan O Area 137 (“TKO137”) and Tuen Mun Area 38 (“TM38”) respectively for the storage of public fill. Contractors would procure the necessary equipment and set up and operate their own PFSF there. In the case of TKO137, where the sorting area is substantial in size, at any given time there may be more than one contractor on the site operating side-by-side in areas designated for different contractors.

(b)  The Plaintiff’s sub-sub-contract for the TKO137 PFSF works

7.  The Plaintiff is a limited company carrying on the business of construction and engineering contracting.

8.  In the early 2000s, the Government was engaged in the carrying out of a reclamation project at Penny’s Bay known as “Penny’s Bay Reclamation Stage 2” (“PB Project”), under which some 60 hectares of land were to be reclaimed for the expansion of Hong Kong Disneyland, and invited tenders from contractors for the project. Under Particular Specifications Appendix 6.2 (“PS Appendix 6.2”), the contractor’s responsibility included the design, construction, installation, operation, maintenance and eventual removal of the PFSF constructed upon designated areas in TKO137 and TM38 for the PB Project (“TKO137 PFSF” and “TM38 PFSF” respectively). The contractor’s design of the PFSF was required to be checked and certified by an independent engineer at the contractor’s cost (PS Appendix 6.2 clause 6.2.4; Special Conditions of Contract clause 18).

9.  Gammon Skanska Limited (“Gammon”) submitted a bid for the PB Project in December 2002. The tender documents included 7 drawings for PFSF, 3 of which specifically concerned TKO137, 3 specifically concerned TM38, and one was for “typical details” of PFSF showing a cross section of the access ramp, picking platform, conveyor support structure and cover, and conveyor truss (“Gammon Tender Plans”). Gammon’s bid was successful. It was appointed main contractor of the PB Project on 17 April 2003 (“the Main Contract”).

10.  Win Hing Civil Engineering Limited (“Win Hing”) was interested in bidding for a sub-contract for the TKO137 PFSF portion of the PB Project from Gammon, and liaised with the Plaintiff to look for a suitable person with the necessary expertise to assist in the construction and engineering of TKO137 PFSF. For this purpose, the Plaintiff found and engaged a person called Wong Tung Ping (“TP Wong”).

11.  Transportation of public fill from the TKO137 PFSF, running along the coast with sloping seawalls, to land reclamation sites was by sea, through barges. Given TKO137’s topography, (i) further conveyor belts were required to be constructed from the bottom of the stockpile extending all the way out to the sea where the barges were berthed, which involved constructing a “barging conveyor” belt (ie part of the conveyor belt was “hanging” as it needed to extend out to and over the sea for about 30 meters to deposit the sorted public fill directly on to the barges), and (ii) temporary berths were required to be constructed, extending out from the sloping seawalls, for the berthing of barges.

12.  The Plaintiff (through TP Wong) put together a method statement for the TKO137 PFSF, including some hand-drawn plans showing the schematic and layout of the PFSF, which revealed a design with 2 sorting lines, with one line running in a “loop”. On 23 June 2003, the Plaintiff submitted a quotation to Win Hing for the installation of a PFSF plant as specified in the said method statement, and the operation of the PFSF plant, at TKO137. In the quotation, the following was expressly stated:

“*For the avoidance of doubt, the sub-contractor should carry out the sub-contract works in accordance with specifications and requirements of the Main Contract, including but no limited to – 1. P.S. clause 6.07 & 6.74 2. P.S. Appendix 6.2 3. SCC18”. [sic]

13.  By a letter dated 27 June 2003, Gammon accepted Win Hing’s bid for the sub-contract works in respect of the TKO137 PFSF portion of the PB Project (“the Sub-contract”). The letter stated that the conditions of sub-contract were to be in substantially the same form as Gammon’s standard form of sub-contract but subject to amendments as were necessary to reflect the requirements in respect of the PFSF works in Gammon’s main contract, and that until a formal sub-contract was executed, the letter would constitute a binding contract between Gammon and Win Hing. As a matter of fact, no formal sub-contract was ever executed between Gammon and Win Hing.

14.  On 28 June 2003, Win Hing issued a letter to the Plaintiff confirming acceptance of the Plaintiff’s quotation for the TKO137 PFSF works (“the Sub-sub-contract”). The letter contained statements identical to that in the Gammon letter of acceptance on the execution of a sub-contract. As in the case of the sub-contract between Gammon and Win Hing, no formal sub-sub-contract was in fact executed between Win Hing and the Plaintiff.

(c)  The Hand Drawn Plans, KT Plans and SF 2003 Plans

15.  Around this time, TP Wong reflected on and improved the layout of the TKO137 PFSF, and (according to the Plaintiff) produced 7 hand-drawn plans (collectively “Hand Drawn Plans”) for the TKO137 PFSF between May/June and August 2003. The Hand Drawn Plans included:

(1)  a layout plan (“Hand Drawn Plan A”);

(2)  a conveyor elevation drawing showing the 2 sorting lines up to the stockpile (“Hand Drawn Plan B”);

(3)  a berthing fender elevation drawing (“Hand Drawn Plan C”); and

(4)  4 drawings showing the barging conveyor and some of its details (“Hand Drawn Plans D, E, F, A144” respectively).

16.  The Plaintiff also engaged Kin Tat Engineering Survey Company (“Kin Tat”) to prepare a set of 13 digitized (ie computer) drawings for the TKO137 PFSF (“KT Plans”). The KT Plans were prepared based on the Hand Drawn Plans as well as instructions given by TP Wong. They were created between 30 June and 7 July 2003, and were provided by Win Hing to Gammon on 8 July 2003. Kin Tat acknowledged that copyright in the KT Plans belonged to the Plaintiff.

17.  Since late July 2003, a series of digitized construction drawings for the TKO137 PFSF were created by Lambeth Associates Limited (“Lambeth”), an entity within the Gammon group, which bore the prefix “SF” and were used for the assembling of the TKO137 PFSF (“the SF 2003 Plans”). At the top right-hand corner of all the SF 2003 Plans is a box containing the following statement:

“This document and the copyright in it is the property of [Gammon]. [Gammon] shall forthwith take all appropriate action against any infringer of its copyright” (“Gammon Copyright Statement”).

18.  From around August 2003, the TKO137 PFSF (with 2 sorting lines) were constructed (“P’s Installation”) based on the SF 2003 Plans, and commenced operation afterwards.

(d)  The SF 2005 Plans

19.  In 2005, a third sorting line for the TKO137 PFSF was constructed, and operated by Gammon immediately next to the 2 existing sorting lines operated by the Plaintiff. Gammon constructed this third sorting line with the assistance of a person called Wong Chi Wai (also known as “Dee”, hereinafter referred to as “Dee Wong”), who was at that time employed as a general foreman of Ho Hon Construction and Engineering Limited, the sub-contractor for the TM38 PFSF portion of the PB Project. The Plaintiff was not involved in the construction or operation of the third sorting line.

20.  For the third sorting line, a further set of construction drawings (“SF 2005 Plans”) was created by Lambeth. Not all the components of the third sorting line had their own SF 2005 Plans. The third sorting line was built based on the SF 2003 Plans and SF 2005 Plans. The Plaintiff’s case, which the Recorder accepted, is that the SF 2005 Plans were created by copying the SF 2003 Plans and the as-built P’s Installation.

21.  The works for the TKO137 PFSF portion of the PB Project were completed in 2006. The two sorting lines operated by the Plaintiff were dismantled in 2007.

(e)  The MS Plans

22.  In 2012, the Defendant was appointed main contractor for a Government project for the reclamation of land and construction of an artificial island for the “Hong Kong-Zhuhai-Macau Bridge and Hong Kong Boundary Crossing Facilities” (“HZMB Project”).

23.  The Defendant engaged Sharon Asia Waste Sorting Engineering Limited (“Sharon”) as sub-contractor for the PFSF portion of the works at TKO137 for the HZMB Project. Sharon employed Dee Wong as the team leader for those works and, with the assistance of Dee Wong, prepared the construction drawings (“MS Plans”) for the PFSF at TKO137, which had 4 sorting lines, and installed the PFSF at TKO137 for the HZMB Project accordingly.

24.  Dee Wong accepted that he used the design of TM38 PFSF and the SF 2005 Plans in the HZMB Project, but claimed that the design he used in the HZMB Project was substantially different from that in the SF 2003 Plans.

(f)  The Plaintiff’s claim against the Defendant

25.  It is the Plaintiff’s case that:

(1)  the SF 2003 Plans and P’s Installation were (and are) original artistic works within the meaning of s 5 of the Copyright Ordinance, Cap 528 (“the Ordinance”);

(2)  the Plaintiff was (and is) the sole owner of the copyright subsisting in the SP 2003 Plans and P’s Installation;

(3)  the SF 2005 Plans were created by copying the SF 2003 Plans and the as-built P’s Installation, and any and all copyright subsisting in the SF 2005 Plans remained solely owned by the Plaintiff due to its ownership of the copyright in the SF 2003 Plans and P’s Installation from which the SF 2005 Plans were derived; and

(4)  the Defendant infringed the Plaintiff’s copyright in the SF 2003 Plans, SF 2005 Plans and P’s Installation by (i) copying/jointly copying, authorizing, directing, counseling, and/or procuring the copying of the SF 2003 Plans, SF 2005 Plans and P’s Installation and/or substantial parts thereof in the MS Plans, and/or (ii) causing/jointly causing, authorizing, directing, counseling, and/or procuring the PFSF for the HZMB Project to be erected and installed at TKO137 according to the MS Plans in the course of carrying out the works under the HZMB Project.

In what follows, unless the context indicates otherwise, references to “Section” or “s” shall be to the numbered sections of the Ordinance.

26.  On 26 May 2014, the Plaintiff commenced an action in the High Court (originally under HCA 924/2014 which later became HCIP 45/2019) against the Defendant claiming, inter alia, damages and injunctive relief against the Defendant for infringement of its copyright in the SF 2003 Plans and P’s Installation. The Plaintiff originally advanced its claims with respect to 32 of the SF 2003 Plans, grouped into 9 categories. However, by the end of the trial, the number of SF 2003 Plans that the Plaintiff relied on was reduced to 25 under 6 categories, namely:

(1)  Layout – SF 101 to 105;

(2)  VGF structure – SF 106 to 107 and 110 to 113;

(3)  Vibrating screen structure – SF 120 to 121;

(4)  Barging conveyor – SF 167 to 172;

(5)  Berthing fender – SF 146 to 148; and

(6)  Conveyor support structure – SF 161, 163 and 165.

27.  The Defendant in turn commenced third party proceedings against Sharon in July 2014. Sharon actively defended the third party proceedings until 28 June 2022, when its solicitors ceased to act and Sharon indicated that it would not attend the trial. The third party proceedings were eventually discontinued by the Defendant on 20 December 2022, after the conclusion of the trial on the issue of liability as between the Plaintiff and the Defendant (see below).

THE TRIAL

28.  The Plaintiff’s action against the Defendant on the issue of liability was tried by the Recorder on divers dates in November 2022.

29.  It was common ground that, to establish its claim for copyright infringement, the Plaintiff bore the burden to prove the following matters:

(1)  copyright subsisted in the plans and installation relied upon by the Plaintiff which formed the basis of the action;

(2)  the Plaintiff owned the copyright in those plans and installation;

(3)  the Defendant’s plans constituted infringing copies of the Plaintiff’s copyright works; and

(4)  the Defendant had committed infringing acts.

30.  The Defendant accepted, at the trial, that the MS Plans basically followed the SF 2005 Plans, so that if the SF 2005 Plans were a substantial reproduction of the 2003 Plans, infringement would be established. Coupled with the fact that the MS Plans had indisputably been put forward by the Defendant as its own plans, the Recorder considered it unnecessary to deal with the issue referred to at §29(4) above, ie whether the Defendant had committed any infringing acts.

31.  On the other hand, an additional issue was raised by Mr Andrew Liao, SC on behalf of the Defendant, namely, that P’s Installation was not “a work of architecture” within the meaning of “artistic work” in s 5 and hence did not attract copyright protection. Although this issue was only raised for the first time by Mr Liao in his written opening submissions before the Recorder, she allowed the point to be taken because it raised essentially a question of law and the Plaintiff’s counsel was prepared and able to deal with it.

32.  Accordingly, as stated by the Recorder at §43 of the Judgment, the following issues fell to be determined:

(1)  did the SF 2003 Plans satisfy the threshold of originality for copyright to subsist;

(2)  did P’s Installation constitute an artistic work under s 5;

(3)  did the Plaintiff own the copyright in the SF 2003 Plans and P’s Installation; and

(4)  did the SF 2005 Plans copy a substantial part of the SF 2003 Plans and/or P’s Installation.

33.  At the trial, TP Wong gave evidence on behalf of the Plaintiff, while Wong Kwok Leung Jacky (“Jacky Wong”, assistant design manager of Lambeth) and Chan Ho Kin gave evidence on behalf of the Defendant. In addition, Dee Wong and Yu To Shui Peter (who had provided witness statement on behalf of Sharon in the third party proceedings) were subpoenaed by the Defendant to give evidence.

THE JUDGMENT

34.  On 9 June 2023, the Recorder gave the Judgment in favour of the Plaintiff against the Defendant.

35.  In respect of the witnesses who gave evidence at the trial:

(1)  The Recorder considered TP Wong’s testimony to have held up despite extensive cross-examination, and considered his evidence to be credible and genuine.

(2)  The Recorder did not find Jacky Wong to be a satisfactory or credible witness. The Recorder considered that Jacky Wong was extremely coy, carefully crafted his evidence and answers to focus on his responsibility over the “structural system” and structural calculations of the PFSF, when the real and only issue in dispute and the questions put to him (which he must have understood) concerned the SF 2003 Plans and in particular the visual depictions therein. The Recorder further considered his answers in cross-examination to be inconsistent in material respects with his witness statement dated 3 August 2017 (“Jacky’s Chun Wo WS”) which he made for the purpose of another action commenced by the Plaintiff against Chun Wo-CRGL Joint Venture for infringement of copyright in the SF 2003 Plans in HCA 1918/2013 (“the Chun Wo Proceedings”), and rejected his outright denial of having ever received the KT Plans. The Recorder preferred the evidence of TP Wong to the extent that there were conflicts between the testimony of Jacky Wong and the testimony of TP Wong.

(3)  The Recorder found Dee Wong to be a generally credible witness, but considered his evidence to be material in only 2 aspects, namely –

(a)  his role in the creation of the SF 2005 Plans, finding (contrary to the impression given by his witness statements) that he had involvement in only one plan, namely, the layout of the third sorting line, and was not responsible for, and admittedly could not and did not draw or create, any of the SF 2005 Plans, which he said were all done by Lambeth; and

(b)  his admission that he had a complete set of the SF 2005 Plans in his possession, which he used when the MS Plans were created for the HZMB Project.

(4)  The Recorder considered Chan Ho Kin to be an honest witness, and Yu To Shui Peter a less satisfactory one. However, neither witness’s testimony had any direct bearing on the issues to be determined by the court. Thus, the Recorder did not place much weight on their evidence.

36.  The Recorder then dealt with the 4 issues mentioned at §32 above.

37.  In respect of Issue (1), there was no dispute that the SF 2003 Plans were “artistic works” under the Ordinance. As to whether the SF 2003 Plans satisfied the threshold of originality for copyright to subsist, the Recorder made the following material findings:

(1)  TP Wong created the Hand Drawn Plans between May/June 2003 and around August 2003[1].

(2)  The KT Plans[2] were provided to Lambeth, and Lambeth had copied them in generating the SF 2003 Plans[3].

(3)  The SF 2003 Plans were created based on TP Wong’s designs and depictions, communicated to Lambeth through the Hand Drawn Plans and KT Plans, meetings between TP Wong and the Lambeth team in Shenzhen, as well as comments and feedbacks from TP Wong on draft plans produced by Lambeth[4].

(4)  The SF 2003 Plans were created on the instructions of TP Wong, and satisfied the threshold of originality for copyright to subsist[5].

38.  In respect of Issue (2), namely, whether P’s Installation constituted an artistic work under s 5:

(1)  The Recorder found that P’s Installation was constructed as per the SF 2003 Plans, subject to a few additional or different features (which later also appeared in some of the SF 2005 Plans and reflected P’s Installation as built)[6].

(2)  The Recorder held that P’s Installation fell within sub-paragraph (b) of the definition of “artistic work” in s 5, namely, “a work of architecture being a building or a model for a building”, and was thus capable of attracting copyright protection[7]. In coming to this conclusion, the Recorder took the view that (i) the expression “building” in s 5, defined to include “any fixed structure, and a part of a building or fixed structure”, included a temporary structure such as P’s Installation[8], and (ii) the expression “work of architecture”, upon its true construction, did not import any requirement of “artistic quality”[9].

39.  In respect of Issue (3), namely, whether the Plaintiff owned the copyright in the SF 2003 Plans and P’s Installation, the Recorder found that:

(1)  TP Wong was the person who created the SF 2003 Plans and P’s Installation[10].

(2)  TP Wong created the SF 2003 Plans in the course of his employment by the Plaintiff, and thus the Plaintiff was the owner of the copyright subsisting in the SF 2003 Plans[11]. Although the Recorder did not expressly refer to P’s Installation in this part of the discussion, the same reasoning would clearly lead to the conclusion that the Plaintiff was the owner of the copyright subsisting in P’s Installation.

(3)  As a matter of interpretation of the relevant contracts and sub-contracts between (i) the Government and Gammon, (ii) Gammon and Win Hing, and (iii) Win Hing and the Plaintiff, ownership of the copyright in the SF 2003 Plans and P’s Installation vested in the Plaintiff[12].

(4)  The Gammon Copyright Notice did not avail the Defendant because the presumption under s 115(2) and (4) was rebuttable, and had been rebutted upon the finding that TP Wong was the author of the SF 2003 Plans[13].

(5)  Having reached the above conclusions, the Plaintiff’s alternative case of joint authorship between the Plaintiff and Lambeth did not fall to be considered[14].

40.  In respect of Issue (4), namely, whether the SF 2005 Plans copied a substantial part of the SF 2003 Plans and/or P’s Installation, the Recorder found that:

(1)  There was reproduction of the SF 2003 Plans/P’s Installation or substantial parts thereof in the SF 2005 Plans. In view of the Defendant’s acceptance that the MS Plans basically followed the SF 2005 Plans, there was infringement of the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation by the Defendant[15].

(2)  Since the PFSF at TKO137 for the HZMB Project was erected and installed by the Defendant in accordance with the MS Plans, the Defendant’s PFSF at TKO137 for the HZMB Project also infringed the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation[16].

41.  Accordingly, the Recorder entered judgment for the Plaintiff against the Defendant on the issue of liability, adjudging that the Defendant had infringed the Plaintiff’s copyright in the construction drawings for the TKO137 PFSF for the PB Project and P’s Installation by (i) the PFSF construction drawings prepared by Sharon whom the Defendant engaged for the HZMB Project, and (ii) the Defendant’s PFSF installation in the HZMB Project to the extent identified at §§111(1) and 118 of the Judgment.

THE APPEAL

42.  The Defendant’s Supplementary Notice of Appeal dated 11 September 2023, incorporating its Notice of Appeal dated 7 July 2023, consists of 31 paragraphs or grounds (namely, 1-2, 2A, 3, 3A-3B, 4-6, 6A-6C, 7, 7A, 8-10, 10A, 11-17, 17A-17B, and 18-21). The Defendant’s complaints in those grounds can be grouped under 7 issues:

(1)  Ground 1 - the Recorder’s holding that the Defendant was required to serve a notice to challenge the authenticity in respect of the Hand Drawn Plans, in the absence of which the Defendant should not be allowed to argue that the Hand Drawn Plans were only created after the creation of the SF 2003 Plans (in the case of Hand Drawn Plan A) and the SF 2005 Plans (in all other cases);

(2)  Grounds 2 to 3A - the Recorder’s assessment of the credibility of TP Wong’s evidence;

(3)  Ground 3B - the Recorder’s assessment of the credibility of Jacky Wong’s evidence;

(4)  Ground 4 - the Recorder’s failure to draw adverse inferences against the Plaintiff/TP Wong;

(5)  Grounds 5 to 8 - the Recorder’s finding that the Plaintiff was the owner of the copyright subsisting in the SF 2003 Plans, and her failure to consider the case of joint ownership between the Plaintiff and Gammon/Lambeth;

(6)  Grounds 9 to 10A - the Recorder’s finding that P’s Installation was a “work of architecture” and hence an “artistic work” under s 5(b); and

(7)  Grounds 11 to 21 - the Recorder’s finding that the Defendant had infringed the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation.

43.  These grounds of appeal will be dealt with sequentially below.

GROUND 1:  WHETHER NOTICE TO CHALLENGE AUTHENTICITY OF THE HAND DRAWN PLANS WAS REQUIRED

44.  The Defendant argues that the Recorder (i) erred in law in holding that there was a requirement for the Defendant to serve a notice to dispute the authenticity of the Hand Drawn Plans, where the identity of the author(s) and the time of making were not stated on the face of those plans, and (ii) wrongly held that the Defendant should not be allowed, after cross-examination of TP Wong that the Hand Drawn Plans were not made before the KT Plans and/or SF 2003 Plans had been carried out without objection from the Plaintiff, to “raise such an allegation”.

45.  Mr Liao relies on the judgment of Anthony Chan J (as he then was) in Gotland Enterprises Ltd v Kwok Chi Yau (No 2) [2013] 3 HKLRD 490, at §17, for the proposition that the deemed admission under Order 27, rule 4 of the Rules of the High Court, Cap 4A, in the absence of a notice of non-admission of authenticity of that document, does not go beyond what appears on the face of the documents. Thus, if a document does not suggest on its face when it was made, the admission would not inhibit any cross-examination on that point. Mr Liao also relies on the judgment of the Court of Appeal in Hu Lan v David Golden [2024] 1 HKLRD 1252, at §40-42, citing Eco3 Capital Ltd v Ludsin Overseas Ltd [2013] EWCA Civ 413, in support of the contention that if a party wishes to object to another party’s challenge to the authenticity of a document contrary to the deemed admission of authenticity under Order 27, rule 4, the former should raise an objection with the trial judge for a ruling to be made before evidence is led, or object to the relevant cross-examination questioning the authenticity of the document.

46.  There is some validity in Mr Liao’s argument that a notice to dispute the authenticity of the Hand Drawn Plans was not required to be served by the Defendant before it could challenge the evidence of TP Wong regarding the date(s) on which he allegedly created the Hand Drawn Plans, because those plans did not, on their face, state the date(s) of creation of the plans. However, this complaint is immaterial and cannot assist the Defendant in the present appeal because the Recorder in fact went on to consider and accept TP Wong’s evidence, and found as a fact, that the Hand Drawn Plans were created between May/June 2003 and August 2003[17]. The real issue is whether the Recorder’s finding of fact on the time of creation of the Hand Drawn Plans can successfully be challenged by the Defendant. This issue falls within Grounds 2 to 4 of the Supplemental Notice of Appeal, and will be considered below.

47.  In passing, we should mention that it was not the Recorder’s ruling that the Defendant was not entitled to challenge at all the Plaintiff’s evidence that the Hand Drawn Plans were created by TP Wong on the dates as claimed by him. The Recorder’s ruling was more limited, namely, that Mr Liao should not be permitted to suggest, as he did in cross-examination, that the Hand Drawn Plans “were only created much later in time, after the SF 2003 Plans (in the case of Hand Drawn Plan A) and the SF 2005 Plans (in all other cases). In other words, it is said that they were created ex post facto, to give the impression of originality pre-dating the SF 2003 Plans”. In this regard, it is significant that in the Defendant’s Amended Statement of Defence dated 11 September 2020, the Defendant never raised any positive case as to the time of creation of the Hand Drawn Plans, or suggested that they were created ex post facto in order to give the impression of originality pre-dating the SF 2003 Plans. Neither was this allegation raised in the statements of the Defendant’s witnesses. Thus, while the Defendant was entitled to put the Plaintiff to strict proof of its case as regards the time of creation of the Hand Drawn Plans and test the Plaintiff’s evidence on this matter in cross-examination, the Defendant should not have been permitted to raise the aforesaid positive case at the trial. Be that as it may, for the reason mentioned at §46 above, we do not consider that the Defendant’s complaint under Ground 1 has any impact on the outcome of the present appeal.

GROUNDS 2 TO 3A:  ASSESSMENT OF TP WONG’S CREDIBILITY

48.  The Defendant complains against the Recorder’s assessment of the credibility of TP Wong in the following aspects:

(1)  Grounds 2 and 3 - failure to consider or take into account or proper account of the Defendant’s Closing Submissions dated 25 November 2022 (“D’s Closing Submissions”) concerning the inconsistencies in the evidence of TP Wong in his 1^st witness statement dated 15 April 2020 (“TP’s 1^st WS”) and his evidence in cross-examination in relation to the time of creation and/or the authorship of Hand Drawn Plans A, C and D;

(2)  Ground 2A – wrong findings and inferences on the time of making of the Hand Drawn Plans; and

(3)  Ground 3A – errors in the Recorder’s finding on TP Wong’s overall credibility on various matters.

(a)  Grounds 2 and 3

49.  Under these grounds, the Defendant complains that the Recorder failed to deal with points raised in D’s Closing Submissions. The appellate court’s approach in relation to this type of complaint is well settled. In Harbour Front Ltd v Money Facts Ltd [2019] HKCA 916, Kwan VP (giving the judgment of the court) stated the following at §9:

“The mere fact that certain matters relied on by counsel were not mentioned in the judgment does not mean that the judge had not taken them into consideration. Nor is the judge required to address all the points made by counsel, whether legal or factual. There is no suggestion in the draft grounds of appeal or Ms Lok’s submission that the matters the judge allegedly failed to have any or any sufficient regard to were not raised before him first time round. Repeating the arguments that had been made before without demonstrating how and why the judge went wrong is of little assistance and does not begin to make out a case that the judge’s conclusion is plainly wrong.”

50.  It is noted that the matter before the Court of Appeal in Harbour Front Ltd concerned an application for leave to appeal against an order granting an interlocutory injunction to restrain the sale or disposal of a property, and the matters which the first instance judge allegedly failed to consider did not relate to the oral testimony of a witness given at trial. However, the principle that a judge is not under a duty to expressly deal with each and every point raised by counsel is equally applicable to the latter situation. As mentioned in the aforesaid judgment of Kwan VP, that principle applies to the duty of a judge to address points made by counsel, whether legal or factual. The fact that the relevant evidence which it is contended the judge failed to address was given orally instead of on affidavit makes no difference.

51.  The same principle was stated by Rogers VP in Sun Focus Investment Limited v Tang Shing Bor, HCMP 2251/2009 (unreported, 24 November 2009), at §2, and by Cheung CJHC (as he then was) in The Incorporated Owners of Kadoorie Avenue Mansion v Rising Dragon International Limited, HCMP 3201/2013 (unreported, 10 April 2014), at §6.

52.  Mr Liao refers to the judgment of Chan CJHC (as he then was) in Zhuo Cui Hao v Ting Fung Yee [1999] 3 HKC 634 at 639 (quoted by Lam JA (as he then was) in Welltus Ltd v Fornton Knitting Co Ltd [2013] 5 HKC 106, at §20) in support of the proposition that a judge is under a duty to analyse the material points in the evidence of the case, and give reasons as to why he has reached a particular conclusion or decision “to make people understand why their evidence is not accepted by the court and why they lose in a case. Only by this can justice be seen to be done. Furthermore, the losing party needs to be clear on whether there is any error in the reasons for the decision given by the court before he can decide whether to appeal or not …”.

53.  We do not consider the above proposition to be controversial. However, the question of whether a judge has failed in his/her duty to address point(s) raised by counsel and whether the Court of Appeal should intervene in the judge’s decision because of such failure requires a careful assessment of all relevant circumstances, including the nature and materiality of the point(s) in question, the complexity of the case, the length of the trial, the substantiality of the submissions made to the judge, whether the party whose evidence has not been accepted or who has lost in the case would reasonably understand why his evidence has been rejected or why he has lost, and whether it can fairly be said that his right to lodge an appeal against the judgment has been prejudiced.

54.  When carrying out this assessment, the following observation made by Lam VP (as he then was) in LWH v NKWS [2018] HKCA 260, at §9, should be borne in mind:

“This Court has repeatedly said that a judge is not obliged to deal with each and every point raised by counsel or litigant in their evidence and submissions. It is sufficient that the Judge gave adequate reasons to explain how the evidence has been weighed. It is an impossible task (and very often it would do more harm than good) if a judge has to rebut the arguments and evidence in great minutiae. We wish to emphasize again that it is not the function of a judgment to address each and every point in arguments or evidence without regard to the significance of the same in the overall exercise in assessment of facts and evidence.”

55.  In the present case, the trial was a substantial one lasting some 10 hearing days, and the Recorder was well assisted by experienced counsel who conducted careful cross-examination and made very detailed opening and closing submissions. The Recorder gave a careful and detailed written judgment (running to 123 paragraphs in 83 pages) covering all major, contentious aspects of the case.

56.  In respect of the inconsistencies in the evidence of TP Wong relied on by the Defendant, as can be seen in a helpful table (“the Table”) annexed to Mr Chain, SC’s Skeleton Submissions for the Plaintiff dated 30 September 2025, full submissions on those matters had been made by Mr Liao in his written and oral closing at the trial[18]. Two of the main points raised by Mr Liao concerned the authorship and time of making of Hand Drawn Plan C (relating to the berthing fender). In respect of the former, Mr Liao criticized the evidence of TP Wong by reference to the inconsistencies between (i) his evidence in TP’s 1^st WS that the Hand Drawn Plans were all drawn by him personally, although he had received some minor clerical and scribal assistance from Ho Chung Kui and Lai Chi Wai of Chung Wai Engineering Company in relation to the preparation of some of the Hand Drawn Plans and they had done some rough sketching in making minor changes to the Hand Drawn Plans exactly following his instructions, and (ii) his oral evidence that one (relating to the berthing fender) and possibly another (relating to the barging conveyor) of the Hand Drawn Plans were drawn by Ho Chung Kui and/or Lai Chi Wai but according to his design. In our view, notwithstanding such inconsistencies, it is clear that TP Wong’s evidence was to the effect that Ho Chung Kui and Lai Chi Wai, whatever might have been their exact involvement, followed his design or instructions in relation to the preparation of the relevant plans. The Recorder was fully aware of the inconsistency in the evidence of TP Wong relied upon by Mr Liao concerning the authorship of the Hand Drawn Plan C (relating to the berthing fender), but did not consider that it affected the credibility of TP Wong’s evidence[19]. In our view, the inconsistency in the evidence of TP Wong was not of such significance or importance that it was not reasonably open to the Recorder to find him a credible and reliable witness. Even if one or two of the Hand Drawn Plans were prepared by Ho Chung Kui and/or Lai Chi Wai, there was no suggestion that the copyright subsisting in those plans belonged to them or their employer instead of the Plaintiff.

57.  Another inconsistency in the evidence of TP Wong emphasized by Mr Liao concerns the time of creation of Hand Drawn Plan C: (i) in TP’s 1^st WS, his evidence was to the effect that the Hand Drawn Plans were created in June 2003, whereas (ii) in his oral evidence, he said that Hand Drawn Plan C was made in August 2023. The Recorder was plainly aware of this criticism of the evidence of TP Wong, but did not find such criticism to be convincing[20]. Again, we consider that the Recorder was entitled to come to that view, and found that Hand Drawn Plan C was created in August 2003 by Lai Chi Wai according to TP Wong’s instructions[21].

58.  When considering whether it would be justified for this Court to intervene in the Recorder’s assessment of the credibility of TP Wong, it is, we consider, also relevant to take into account the central point that the Defendant sought to make at the trial, namely, that the Hand Drawn Plans were in fact made much later in time, after the SF 2003 Plans (in the case of Hand Drawn Plan A) and the SF 2005 Plans (in all other cases), and they were created ex post facto to give the impression of originality predating the SF 2003 Plans [22]. However, as found by the Recorder, there were striking or substantial similarities between the KT Plans (which were indisputably created in late June/early July 2003, and some of them were strikingly similar to the Hand Drawn Plans), and the SF 2003 Plans[23]. Although there was no KT Plan for the barging conveyor or berthing fender (because in late June/early July 2003 there were still some uncertainties on the 2 issues referred to at §77(1)(d) of the Judgment[24]), the central point that the Defendant wished to advance was plainly unsustainable.

59.  In the Supplemental Notice of Appeal, the Defendant refers to some other bits and pieces of the evidence raised in D’s Closing Submissions which the Defendant complains the Recorder failed to consider, including (i) the suggestion that the measurement of 5171mm in Hand Drawn Plan C for the berthing fender was odd and unbelievable, (ii) TP Wong’s oral evidence that Hand Drawn Plan D for the barging conveyor, made in July/August 2003, should have depicted/displayed a second counterweight but this feature was not found in the relevant SF 2003 Plans but found in P’s Installation in 2004, thus indicating that Hand Drawn Plan D could not have been made before or for the SF 2003 Plans as alleged in TP’s 1^st WS, (iii) why the second counterweight in the Hand Drawn Plan D was not shown in SF 167 (one of the SF 2003 Plans); and (iv) the appearance of some similar features shown on plans prepared by Gammon/Lambeth (ie Gammon Tender Plans/SF 2003 Plans), including Gammon’s/Lambeth’s own drawing number and plan title, in Hand Drawn Plan A (layout).

60.  As observed by the Recorder, Mr Liao had subjected TP Wong to very extensive and protracted cross-examination on these matters. He also made detailed submissions on them to the Recorder in his closing submissions at the trial[25]. There is no reason to believe that the Recorder was not fully aware of the points made by Mr Liao, or did not take them into account when assessing TP Wong’s evidence. The Recorder came to the view that TP Wong’s testimony had held up despite extensive cross-examination, and was credible and genuine[26]. We do not consider the Recorder was required to expressly deal with the above relatively minor matters in the Judgment, or her omission to do so is sufficient to lead us to intervene in her assessment of the overall credibility of TP Wong.

(b)  Ground 2A

61.  Under this ground, the Defendant argues that the Recorder wrongly came to findings and inferences on the time of making of the Hand Drawn Plans. In support of this argument, the Defendant relies on 2 matters:

(1)  Contrary to the pleadings, the Recorder wrongly found that the Hand Drawn Plans were provided to Lambeth during the period “between July 2003 and February 2004” (Judgment, §74), when in fact the relevant request for Further and Better Particulars referred to SF 106 (one of the SF 2003 Plans) for the sheetpile wall only. Further, the Recorder’s finding was contrary to the evidence in TP’s 1^st WS that the alleged Hand Drawn Plans were made in June 2003.

(2)  The Recorder wrongly found it consistent that the alleged Hand Drawn Plan D (barging conveyor) depicting a weighing hopper was made in or after August 2003 (as opposed to June 2003 as alleged in TP’s 1^st WS), in that the weighing hopper had always appeared in Gammon Tender Plan T02277-006 dated 10 December 2002 and in later plans and drawings before August 2003 (Judgment, §§77(1)(d), 77(3) and 80). The Recorder failed to find that TP Wong was an unreliable witness in conveniently shifting the alleged time of making of the Hand Drawn Plan D from June to August 2003 during cross-examination.

62.  There is no merit in either of these points.

63.  The argument mentioned at §61(1) above is based on an incorrect reading of §74 of the Judgment, where the Recorder stated the following:

“… the existence and the Plaintiff’s reliance on the Hand Drawn Plans had been pleaded in the original Statement of Claim dated 26 May 2014 (in paragraph 8(v)(b)), copies had been disclosed in the Plaintiff’s Answers to the Request for Further and Better Particulars on 4 November 2014, and in those Answers the Plaintiff had provided a time period of between July 2003 and February 2004 (request 2) during which it said the Hand Drawn Plans were provided to Lambeth (request 4).”

64.  In the above passage, the Recorder was not making any finding that the Hand Drawn Plans were provided to Lambeth between July 2003 and February 2004. The Recorder was merely referring to certain answers given in the Plaintiff’s Answers to the Request for Further and Better Particulars on 4 November 2014 which the Recorder understood the Plaintiff to be saying that the Hand Drawn Plans were provided to Lambeth between July 2003 and February 2004. The fact that the Plaintiff’s answers were given in relation to a request which only referred to SF 106 for the sheetpile wall, or that the Plaintiff’s answers may be open to different interpretations is neither here nor there. The Recorder’s finding that the KT Plans, which were prepared based on the Hand Drawn Plans, were provided to Lambeth is to be found at §82 of the Judgment, where the following was stated:

“Although Jacky Wong denies that he or Lambeth had ever received the KT Plans, given (i) there was a letter dated 8 July 2003 showing the KT Plans had been submitted by Win Hing to Gammon, and (ii) the substantial similarities between the KT Plans and some of the SF 2003 Plans identified above, I reject his evidence (see also §§53 to 56 above). I find that the KT Plans had been provided to Lambeth, and that Lambeth had copied them in generating the SF 2003 Plans above.”

65.  As regards the time of creation of Hand Drawn Plan D, notwithstanding what was stated in TP’s 1^st WS, the Recorder accepted TP Wong’s oral evidence that it was created in around August 2003[27]. The Recorder was entitled to do so.

66.  In respect of the argument mentioned at §61(2) above, there is no inconsistency between (i) the fact that a weighing hopper had always appeared in Gammon Tender Plan T02277-006 dated 10 December 2002 and in later plans and drawings before August 2003, and (ii) TP Wong’s evidence that Hand Drawn Plan D (barging conveyor) depicting a weighing hopper was made in or after August 2003. Further, as noted by the Recorder at §77(3) of the Judgment, “it was only in or after August 2003 that the PB Project employer insisted the weigh hopper could not be dispensed with. I also note that in the first version of the relevant SF 2003 Plan for the elevation view of the barging conveyor (SF167) in August 2003 there was no weighing hopper, but a weighing hopper was added back in the September 2003 revision of it”. The Recorder considered these facts to be consistent with, and supportive, of TP Wong’s evidence that Hand Drawn Plan D (amongst others) was only created in around August 2003 when it became clear (consequent upon negotiations with the PB Project employer) that the PFSF (i) must include a weighing hopper at the beginning of the barging conveyor; and (ii) nothing could be erected on the seabed or attached to the seawall to act as support to the barging conveyor, so that the latter’s design would have to cater for that[28]. We do not see any error in this reasoning of the Recorder.

(c)  Ground 3A

67.  Under this ground, the Defendant challenges the Recorder’s finding on TP Wong’s overall credibility, arguing that:

(1)  The Recorder was wrong to find that TP Wong “readily gave answers which he must have understood to be unfavourable to the Plaintiff” (Judgment, §49), because she had failed to take into account or proper account the fact that (i) the Plaintiff did not disclose any Gammon Tender Plans in its Statement of Claim dated 26 May 2014, and it was only after Sharon’s disclosure of the those plans in October 2019 that the Plaintiff’s disclosed the same by amending its Statement of Claim in August 2020, (ii) the Plaintiff abandoned its claims based on SF 130 and SF 131 for covered tunnel only on the first day of the trial and after service of the Defendant’s opening submissions, and it was only during cross-examination that TP Wong admitted/conceded that “he copied the covered tunnel and truss plans from the Gammon plans in other earlier projects”.

(2)  The Recorder was wrong to find that (i) the meetings with Mr Hau Chi Chiu (“Mr Hau”) of Gammon and (ii) the supply of TKO 137 plans by Gammon for TP Wong to prepare Hand Drawn Plans A and D were not material but were fine details only to be “teased out” in cross-examination, and further was wrong to find that TP Wong’s answers on these matters “were not in any way inconsistent with the facts and chronology he has already deposed to in his witness statements …” (Judgment, §§50, 62(3) and 77(5)(a)).

(3)  In considering the testimony of TP Wong and Jacky Wong as to how the SF 2003 Plans were created, the Recorder also erred in the following matters –

(a)  failing to take into account TP Wong’s lack of professional qualifications as a structural engineer and experience to design particularly the barging conveyor and berthing fender, which were unique or particular design challenges;

(b)  failing to find that TP Wong was unable to provide clear and detailed explanations on how he came up with the design particularly the barging conveyor and berthing fender; and

(c)  wrongly finding that Jacky Wong provided inconsistent explanation on the change of the berthing fender from the initial straight-line design to the cantilever (bent) design, when TP Wong provided the same explanation for the change due to the height of the mooring position of the barge.

68.  The Defendant’s complaints under Ground 3A are, in substance, mere disagreements with the Recorder’s findings. It is trite, however, that the assessment of a witness’s credibility falls within the province of a trial judge, and his/her finding of fact on a matter (whether primary or inferential) is not to be overturned merely because the appeal court may reach a different conclusion on the matter. The appeal court may properly intervene in a finding of fact made by a trial judge only when the finding is plainly wrongly, or the judge has made a palpable error, such as when there was no evidence to support the finding, or it was based on a misunderstanding of the evidence, or one which no reasonable judge could have made.

69.  In respect of the detailed points raised by the Defendant:

(1)  We do not see that the 2 matters referred to at §67(1) above have any direct bearing on, or undermine, the Recorder’s observation at §49 of the Judgment that TP Wong “readily gave answers which he must have understood to be unfavourable to the Plaintiff’s case, eg his admitting that he had been provided with the Gammon Tender Plans which he had looked at …”.

(2)  The matters referred to at §67(2) above were considered by the Recorder. She was entitled to reach the views that she did on those matters.

(3)  The Recorder clearly explained why she accepted the evidence of TP Wong and rejected the evidence of Jacky Wong in relation to the issue of how the SF 2003 Plans were created. In particular, in respect of the matters referred to at §67(3)(a) and (b) above, the Recorder was fully aware of the fact that TP Wong had no professional qualification as a structural engineer, but considered that he “clearly has extensive experience in sorting materials, the equipment involved, how to create a process and also build the structure for it …  I accept his testimony that through his many years of experience he has a good working understanding of conveyor trusses and steel members and what loading they can support such that he was able to determine what should be used to create structures to cater for specified loading”[29], and was able “to supplement the documentary evidence with detailed explanations on how he came up with each of the components in the PFSF identified in §37 [of the Judgment] in his witness statements and oral testimony”[30]. In respect of the matter referred to at §67(3)(c) above, the Recorder was critical of the evidence of Jacky Wong not because of the substance of the explanation he gave for the change of the berthing fender from the initial straight-line design to the cantilever (bent) design, but because of the inconsistent evidence contained in Jacky’s Chun Wo WS and his oral testimony.

70.  In all, we do not see that there is any valid criticism of the Recorder’s assessment of the overall credibility of TP Wong.

GROUND 3B:  ASSESSMENT OF JACKY WONG’S CREDIBILITY

71.  Under Ground 3B, the Defendant argues that the Recorder wrongly and unfairly took the “Hand Drawn Draft plans” described in §36 of TP Wong’s witness statement dated 19 September 2016 filed in the Chun Wo Proceedings (“TP’s Chun Wo WS”) and subsequently referred to in Jacky’s Chun Wo WS to be the same Hand Drawn Plans alleged and produced by TP Wong in this action (Judgment, §§54(2), 84(4) and 85(2)). The Defendant points to the fact that the Plaintiff never disclosed TP’s Chun Wo WS or the “Hand Drawn Draft plans” referred to therein in this action. Instead, it opposed the Defendant’s application at the PTR hearing for specific discovery of documents in that action which would have included the aforesaid two witness statements and the “Hand Drawn Draft plans” referred to therein.

72.  The Defendant’s complaints under this ground are unjustified. In Jacky Wong’s witness statement filed in the present action on 10 August 2022 (“Jacky’s WS”), he was content to adopt the contents of Jacky’s Chun Wo WS as his evidence without any qualification. At §5 of Jacky’s Chun Wo WS, he stated that “Mr Hau[31] provided me with the Hand–Drawn Draft plans as described in paragraph 36 of [TP’s Chun Wo WS]” which he understood “had set out the intended arrangement and equipment proposed by the Plaintiff for the PFSF at Tseung Kwan O Area 137”. It was not the Defendant’s case at the trial that there were 2 different sets of Hand Drawn Plans for TKO137 PFSF. At the time when Jacky Wong made his witness statement in this action in August 2022, the Plaintiff had already disclosed copies of the Hand Drawn Plans in the Answer to Request for Further and Better Particulars of the Plaintiff’s Statement of Claim dated 4 November 2014[32]. If the “Hand–Drawn Draft plans” referred to in Jacky’s Chun Wo WS that he said he had received from Mr Hau were different from the Hand Drawn Plans disclosed by the Plaintiff in this action, he could easily have said so in either Jacky’s WS or in his oral evidence. He did neither. Instead, in his oral evidence, he said that he had not in fact seen §36 of TP’s Chun Wo WS, and had not confirmed what plans were referred to by TP Wong at §36 of his said statement, prior to his signing of Jacky’s Chun Wo WS. Jacky Wong’s oral evidence was, on its face, at odds with what he had said in Jacky’s Chun Wo WS. It was a matter for the Recorder to assess Jacky Wong’s evidence. The Recorder plainly did not accept his oral evidence[33]. There was nothing unfair in the Recorder’s assessment of the evidence.

73.  As for the Defendant’s argument that the Plaintiff was not entitled to rely on the inconsistency in Jacky Wong’s written and oral evidence because the Plaintiff had opposed the Defendant’s application for specific discovery of documents filed in the Chun Wo Proceedings at the PTR hearing, it was a matter entirely for the Defendant to decide whether to pursue its application for specific discovery if it considered that the application had merit and, if the application was not successful, to lodge an appeal against any unfavourable ruling. The Defendant’s attempt to put the blame on the Plaintiff for opposing the Defendant’s application is wholly without merit.

GROUND 4:  DRAWING OF ADVERSE INFERENCES

74.  Under Ground 4, the Defendant argues that the Recorder erred in failing to draw adverse inferences against the Plaintiff/TP Wong for opposing the Defendant’s application to subpoena documents and Mr Hau of Gammon, and failing to call Ho Chung Kui and Lai Chi Wai of Chung Wai Engineering Company[34] and representative(s) of Kin Tat who, as it transpired from TP Wong’s oral evidence, were highly material witnesses.

75.  This ground can be dealt with shortly. The drawing of adverse inference against a party for failing call a witness who may be expected to be able to give material evidence on an issue in the case is neither an inflexible rule nor a mechanistic exercise. Generally speaking, there must be a prima facie case on the issue before the court may properly draw an adverse inference against a party for not calling such a witness. Further, if there is a plausible explanation as to why the witness was not called by a party, the court should not draw an adverse inference against that party. Lastly, whether to draw an adverse inference is a matter for the judge depending on all relevant circumstances. The Court of Appeal will not lightly interfere with the judgment of the judge on such a matter. See DBS Bank (Hong Kong) Ltd v Sit Pan Jit [2016] 5 HKC 104, at §88 per Poon JA (as he then was).

76.  In respect of the specific points raised by the Defendant:

(1)  Insofar as the Plaintiff’s opposition to the Defendant’s application made at the trial to subpoena Gammon for production of documents and call Mr Hau to give oral testimony is concerned, such application was refused by the Recorder for 2 reasons: (i) lateness of the application to expand on the scope of the evidence without good explanation (the Defendant’s explanation based on the late engagement of legal team was not accepted by the Recorder), and (ii) absence of information or clarity as to the scope or extent of the new evidence sought to be introduced[35]. These were perfectly good reasons given by the Recorder for refusing the Defendant’s application. The Plaintiff was entitled to oppose the Defendant’s application. In our view, there could be no proper basis to draw any adverse inference against the Plaintiff for opposing the Defendant’s application.

(2)  Insofar as the Plaintiff’s failure to call witness(es) is concerned, this matter was expressly considered by the Recorder, who took the view that (i) the Defendant had not established any prima facie case on any relevant issue which the Plaintiff could, but failed to, call an available witness to displace the prima facie case, and (ii) the testimony of the alleged “missing” witness identified by Mr Liao at the trial (namely, Mr Hau of Gammon) was not material. The Recorder was entitled to come to such views and refused to draw any adverse inference against the Plaintiff[36].

GROUNDS 5 TO 8:  OWNERSHIP OF COPYRIGHT SUBSISTING IN THE SF 2003 PLANS AND P’S INSTALLATION

(a)  Ground 5

77.  Under this ground, the Defendant argues that the Recorder wrongly interpreted the Main Contract between the Government and Gammon, the Sub-contract between Gammon and Win Hing, and the Sub-sub-contract between Win Hing and the Plaintiff, in finding that under the Sub-sub-contract, the responsibility for the design of the TKO137 PFSF and the copyright associated with the same vested in the Plaintiff.

78.  Two different, but related, issues are raised under this ground:

(1)  whether the Plaintiff was responsible for the design of the TKO137 PFSF; and

(2)  whether the Plaintiff was the owner of the copyright subsisting in the SF 2003 Plans and P’s Installation,

under the contractual arrangements amongst Gammon/Win Hing/the Plaintiff.

79.  The answer to the first issue depends on the true construction of the contracts amongst Gammon, Win Hing, and the Plaintiff. The following provisions in the Main Contract, Sub-contract and Sub-sub-contract are relevant for the present purpose:

(1)  PS Appendix 6.2 of the Main Contract –

(a)  Clause 6.2.1(1) provides that the “Contractor” (ie Gammon) shall design, construct, install, operate, maintain, and eventually remove the PFSF on land designated for PFSF under the Main Contract.

(b)  Clause 6.2.1(7) provides that the PFSF are temporary works and shall be designed by the Contractor in accordance with the SCC 18.

(c)  Clause 6.2.4(1) provides that as part of the design, the Contractor shall submit the system, design, operation and maintenance details of the PFSF, together with the checking certificates issued and signed by the approved independent checking engineer to the Engineer within 45 days of the commencement of the Main Contract for consent.

(2)  The Special Conditions of Contract (“SCC”) of the Main Contract –

(a)  By SCC 10(1), “Contractor’s Design” is defined to mean that part or those parts of the design of the permanent works for which the Contractor has elected or is required to prepare design calculations and drawings and which has been accepted by the Employer (ie the Government).

(b)  SCC 10(13)(a) provides that except in respect of those intellectual property rights referred to in sub-clause (c), the Contractor undertakes and warrants to the Employer that it is the sole legal and beneficial owner of all intellectual property rights subsisting in the Contractor’s Design.

(c)  SCC 10(13)(c) provides that to the extent that the beneficial ownership of any intellectual property rights in the Contractor’s Design is vested in anyone other than the Contractor, the Contractor shall procure that the relevant beneficial owner shall grant a licence to, inter alia, the Employer to utilize the Contractor’s Design.

(d)  SCC 18(1) provides that when considered necessary by the Contractor or specified in the Main Contract or subsequently ordered by the Employer, the design of any “Temporary Works” shall be checked and certified by an engineer independent of the Contractor and not associated with the design of the Temporary Works.

(3)  The Sub-contract between Gammon and Win Hing contained in Gammon’s letter of 27 June 2003 provides that the conditions of contract between them shall be in substantially the same form as Gammon’s Standard Form of Sub-Contract but subject to such amendments “as are necessary to fully reflect the requirements in respect of the above mentioned works [ie the works for the TKO137 PFSF] as are contained in [the Main Contract]”. As observed by the Recorder, the Sub-contract is a “back-to-back” contract vis-à-vis the Main Contract.

(4)  The quotation from the Plaintiff to Win Hing dated 23 June 2003 expressly provides, inter alia, that (i) the Plaintiff is required to install a PFSF plant as specified in a method statement attached to the quotation (which, as mentioned by the Recorder, includes various hand-drawn plans showing the design thereof)[37], and (ii) for the avoidance of doubt, the sub-contractor (ie the Plaintiff) should carry out the sub-contract works in accordance with the specifications and requirements of the Main Contract, including PS Appendix 6.2.

(5)  The Sub-sub-contract between Win Hing and the Plaintiff contained in Win Hing’s letter of 28 June 2003 refers, inter alia, to the Plaintiff’s said quotation and states that the conditions of contract between them “shall be [in] the same form as [Gammon] to Win Hing, but subject to such amendments as are necessary to fully reflect the requirements in respect of the above mentioned works [ie the works for the TKO137 PFSF] as are contained in [the Main Contract]…”.

80.  The clear effect of the above contractual provisions is that as between (i) the Government and Gammon, (ii) Gammon and Win Hing, and (iii) Win Hing and the Plaintiff, Gammon, Win Hing and the Plaintiff were respectively responsible for, inter alia, the design, construction and installation of the TKO137 PFSF.

81.  In our view, the Recorder was correct to find that under the Sub-sub-contract, the responsibility for the design of the TKO137 PFSF fell on the Plaintiff.

82.  The answer to the second issue mentioned at §78(2) above requires an examination of the statutory scheme relating to the ownership of copyright under the Ordinance. For the purpose of the present discussion, the following provisions of the Ordinance are relevant:

(1)  Authorship of work – s 11(1) defines “author”, in relation to a work, to mean “the person who creates it”.

(2)  First ownership of copyright - s 13 provides that “The author of a work is the first owner of any copyright in it, subject to sections 14, 15 and 16[38].”

(3)  Employee works - s 14(1) provides that “Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to – (a) any agreement to the contrary; and (b) subsection (2) [not relevant for the present purpose].”

(4)  Commissioned works – s 15(1) provides that “Where a work is made on the commission of a person and there is an agreement between the author and the commissioner of the work which expressly provides for the entitlement to the copyright, copyright in the commissioned work belongs to the person who is entitled to the copyright under the agreement.”

83.  In the present case, the Recorder found that (i) TP Wong was the person who created the SF 2003 Plans and P’s Installation, and (ii) TP Wong was at all material times acting in the course of his employment by the Plaintiff, and there was no suggestion of any agreement to the contrary between them as regards the ownership of the copyright subsisting in the SF 2003 Plans and P’s Installation. It follows that, subject to s 15, the Plaintiff should be regarded as the first owner of the copyright.

84.  On the basis that the Plaintiff created the SF 2003 Plans and P’s Installation upon the commission of Gammon (through Win Hing) within the meaning of s 15(1), the question is whether there was any agreement amongst the Plaintiff/Gammon/Win Hing which expressly provided for the entitlement to the copyright subsisting in the SF 2003 Plans and P’s Installation. No such express agreement can be found in the Sub-contract between Gammon and Win Hing, or in the Sub-sub-contract between Win Hing and the Plaintiff. The Recorder was correct to find that the copyright associated with the design of the TKOP137 PFSF (ie the SF 2003 Plans and P’s Installation) vested in the Plaintiff.

85.  The Defendant raises three specific arguments in support of Ground 5. First, it is argued that the Recorder erred in holding that under the Main Contract, SCC 10 would apply to the works the design of which Gammon was responsible including the PFSF and/or was relevant to the execution of the PFSF works. The Defendant contends that upon the proper construction of the Main Contract, SCC 10 did not govern the responsibility for the design, and would apply only to permanent works, as opposed to temporary works to which SCC 18 would instead be applicable. It was thus wrong for the Recorder to hold that SCC 10 was relevant to the execution of the PFSF works, which was specified in PS Appendix 6.2 of the Main Contract as a temporary work, under the Sub-contract and the Sub-sub-contract.

86.  This argument has no merit. Assuming, for the purpose of the Main Contract, that the TKO137 PFSF should be regarded as “temporary works” falling outside the scope of “Contractor’s Design” as that expression is defined in SCC 10(1), and SCC 10 has no relevance or application to the works associated with the execution of the TKO137 PFSF, as earlier mentioned, it is the clear effect of the contractual arrangements amongst Gammon/Win Hing/the Plaintiff that the Plaintiff is responsible for the design of the TKO137 PFSF. As found by the Recorder, TP Wong, acting in the course of his employment by the Plaintiff, created the SF 2003 Plans and P’s Installation. It follows from this finding that the Plaintiff is the owner of the copyright subsisting in the SF 2003 Plans and P’s Installation, and this conclusion is not displaced by anything in the relevant contractual arrangements amongst Gammon/Win Hing/the Plaintiff.

87.  Second, the Defendant argues that SCC 10(13) only provided for a warranty and undertaking as to the ownership of copyright, or licence to use copyright works, and did not have the effect of vesting any copyright in the Plaintiff. This argument does not assist the Defendant, because the Plaintiff is entitled to the ownership of the copyright subsisting in the SF 2003 Plans and P’s Installation not by virtue of SCC 10, but by the combined operation of the aforesaid statutory provisions as applied to the facts of the present case.

88.  Third, the Defendant argues that the Recorder’s finding that the Plaintiff’s proposal and the price it quoted to Win Hing included the design of the TKO137 PFSF is contrary to TP Wong’s evidence. This argument is based on an incorrect reading of TP Wong’s evidence. In the cross-examination of TP Wong relied on by the Defendant[39], what TP Wong said was that, under the Sub-sub-contract, the Plaintiff did not “sell” the design to Gammon. It was not his evidence that the Plaintiff’s proposal and the price it quoted to Win Hing did not include the design of the TKO137 PFSF, or that the Plaintiff was not responsible for the design of the TKO137 PFSF. In fact, when Mr Liao submitted in the course of his oral closing submissions at the trial that TP Wong accepted that “it’s not part of his job to design under the contract of the appointment, the quotation. That’s what he said”, the Recorder immediately corrected him and pointed out that was not what TP Wong said[40].

89.  In passing, we note that, under s 11(3), it is provided that “In the case of a literary, dramatic, musical or artistic work which is computer-generated, the author is taken to be the person by whom the arrangements necessary for the creation of the work are undertaken”. However, as recorded by the Recorder at §109(2) of the Judgment, although Mr Liao sought to raise an issue based on that provision in his opening submissions, he subsequently confirmed that he would no longer pursue that point. The Defendant has not sought to revive this point in the Supplementary Notice of Appeal. Accordingly, it is not necessary for us to consider the potential applicability of s 11(3) to the present case.

(b)  Grounds 6 and 6A

90.  Under these grounds:

(1)  The Defendant argues that the Recorder erred in finding that the Plaintiff was the sole owner of the copyright in the SF 2003 Plans, and consequently had not considered the case of joint ownership between the Plaintiff and Gammon/Lambeth.

(2)  The Defendant places particular reliance on the Gammon Copyright Statement. The Defendant further submits that, on each of the SF 2003 Plans, it is stated that it was drawn, designed, checked and approved by named individuals including Jacky Wong who were members of the Lambeth team, and Gammon’s name appears as the publisher. The named individuals, alternatively Lambeth/Gammon, are/is presumed to be the owner(s) of the copyright under s 115(2) and (4). The Defendant contends that the Recorder wrongly found that the Plaintiff had successfully rebutted the presumption.

(3)  The Defendant also complains that the Recorder failed to identify any and all particular authorial contributions from TP Wong in connection with the making of various SF 2003 Plans referred to in sub-paragraphs (a) to (e) of Ground 6A.

91.  We do not accept these arguments.

92.  Section 115 provides, relevantly for the present purpose, as follows:

“(1) The following presumptions apply in proceedings brought by virtue of this Division with respect to a literary, dramatic, musical or artistic work.

(2) Where a name purporting to be that of the author appeared on copies of the work as published or on the work when it was made, the person whose name appeared is presumed, until the contrary is proved -

(a) to be the author of the work;

(b) to have made it in circumstances not falling within section 14(1), 182, 184 or 188 (works produced in course of employment, Government copyright, Legislative Council copyright or copyright of certain international organizations).

…

(4) Where no name purporting to be that of the author appeared as mentioned in subsection (2) but a name purporting to be that of the publisher appeared on copies of the work as first published, the person whose name appeared is presumed, until the contrary is proved, to have been the owner of the copyright at the time of publication.”

93.  By reason of the above provisions of s 115, there is a presumption that the copyright in the SF 2003 Plans is owned by the named author or publisher. However, it is not in dispute that such presumption is rebuttable. The Recorder found as a fact TP Wong was the person who created the SF 2003 Plans. Her detailed reasons for the finding that TP Wong was the author of the SF 2003 Plans are fully set out in Section F.2 (§§71-86) of the Judgment, and will not be repeated here. She accordingly held that the presumption under s 115 had been rebutted (§108 of the Judgment). The Recorder’s reasoning is sound. We see no basis to disturb the Recorder’s conclusions on these matters.

94.  On the basis that TP Wong was the author of the SF 2003 Plans and, as found by the Recorder, Lambeth’s role was no more than one of “scribe”, the Recorder was correct to take the view that the issue of “joint authorship” did not fall to be considered[41].

95.  Under Ground 6A(a) to (e), the Defendant seeks to challenge the Recorder’s detailed findings of fact set out in a table at §89 of the Judgment for rejecting the Defendant’s contention that with respect to a number of SF 2003 Plans, they were in fact based on some earlier drawings or antecedent materials (referred to as “Gammon Tender Plans”, “K Wah quarry plan” “Equipment installation drawing”. “Equipment sales brochure” and “MTRC 612 drawing”) and hence were not original, and contends that the Recorder “should have” made some different findings. We have considered the findings made by the Recorder in each instance. Those findings are reasonable, and are fairly open to her. It has not been shown that the Recorder has made any palpable errors, or her findings are obviously wrong. The fact that the Defendant does not agree with the Recorder’s findings and considers that the Recorder ought to have made some different findings in its favour because of points advanced in closing submissions on its behalf is not a ground which would justify appellate intervention. The following statement of principle of Cheung JA in his recent judgment in Man Kwong Kau v Wong Wai Hong [2024] HKCA 505, at §19 bears repetition:

“The applicable principles concerning appeals against findings of fact made by a primary judge are well settled: Yu Pak Kan v Busy Firm Investment Ltd [2023] HKCA 105, [19]:

(1) The Court of Appeal can only intervene in a finding of fact by a primary judge where the finding is plainly wrong.

(2) It is a misuse of the appellate process to place before the Court of Appeal submissions which, in substance, are (or should be) submissions advanced by way of closing submissions at the trial after the judge has heard all the evidence.

(3) In an appeal, the Court of Appeal focuses on the question whether the primary judge has fallen into palpable errors which could give rise to grounds for intervention by the appellate court. It is not germane that the Court of Appeal may reach a different conclusion from that of the judge.

(4) It is not helpful for counsel and litigants in person to merely repeat submissions already advanced and considered by the primary judge at the trial. The starting point should be the judgment of the primary judge and the identification of palpable errors (which must be errors of such nature which warrant intervention by the Court of Appeal) in the judgment. The mere assertion that the finding of the judge is against the weight of the evidence or that the judge should have reached another conclusion because of points advanced in the closing submissions below are not errors coming within that category.

(5) Where a trial judge has reached a conclusion on the primary facts, the kinds of mistake which could engage an appellate court’s power of intervention are: i) where there was no evidence to support the conclusion, ii) the conclusion was based on a misunderstanding of the evidence, or iii) the conclusion was one which no reasonable judge could have reached.

(6) With the recognition of the rationale for appellate restraint, there is also a greater appreciation of the need to exercise restraint in respect of findings of secondary facts based on inference drawn from findings of primary fact.”

(c)  Grounds 6B, 6C and 7

96.  The same comments mentioned in §95 above apply to Grounds 6B, 6C and 7, under which the Defendant challenges the Recorder’s reasons set out in (i) a table at §81 of the Judgment for finding that 6 of the SF 2003 Plans (namely, SF 101, 102, 103, 110, 111 and 120) were based on and copied from the corresponding KT Plans (namely, 001, 002, 010, 011, 012 and 020), and (ii) a table at §86(2) of the Judgment for finding the remaining SF 2003 Plans were created on the instructions of TP Wong, and contends that the Recorder should have made some different finings.

97.  There is one particular argument raised by the Defendant in Grounds 6B(d) and 7 that we should briefly deal with, namely, TP Wong’s “admission” that “Lambeth might not necessarily follow his instructions” which, says the Defendant, supports its contention that the Recorder was wrong to find that the Plaintiff was the sole author of the relevant SF 2003 Plans[42] and/or the Recorder should have found that Gammon/Lambeth had made authorial contributions to the making of the SF 2003 Plans. In TP’s 1^st WT, TP Wong said, inter alia, that (i) he provided Jacky Wong with copies of all the Hand Drawn Plans and KT Plans, gave instructions and directions to Lambeth as to the drawing up of the SF 2003 Plans, and the SF 2003 Plans were then drawn up entirely on his instructions and directions (§46), (ii) in the entire process of drawing up the SF 2003 Plans, the role played by Lambeth was akin to a mere “scribe” (§46(f)), and (iii) Lambeth was not engaged in the PFSF portion of the PB Project in any official capacity and, as such, Lambeth’s team did not and could not have refused to follow the instructions given by the Plaintiff. In the course of his cross-examination by Mr Liao at the trial, when it was pointed out to TP Wong that a small feature referred to as a “second counterweight” which appeared in Hand Drawn Plan D (relating to the barging conveyor) did not appear in the corresponding SF 167 (of the SF 2003 Plans), TP Wong said that he did not know why Lambeth did not include that feature in SF 167, and that although he had instructed Lambeth to do so, Lambeth did not necessarily follow his instruction. In addition to the argument under Ground 2(d) that this inconsistency between TP Wong’s written and oral evidence adversely affects his credibility, the Defendant argues that TP Wong’s admission shows that the Plaintiff was not the sole author of the SF 2003 Plans (at least in relation to SF 167), and/or Gammon/Lambeth had made some authorial contribution to the same.

98.  In our view, the fact that out of many SF 2003 Plans, there was one single instance where Lambeth did not copy everything or include one particular feature of Hand Drawn Plan D in SF 167 is far from sufficient for this Court to interfere with the Recorder’s assessment of the overall credibility of TP Wong, or her finding of fact that TP Wong was the person who created the SF 2003 Plans and Lambeth was a mere scribe. As correctly pointed out by the Recorder, when considering the issue of copyright infringement, the question is whether what has been taken constitutes all or a substantial part of the copyright work[43]. Similarly, for the purpose of establishing authorship, the Plaintiff needs only to show that it is the owner of the copyright in relation to the relevant part of the work which the Plaintiff complains has been infringed by the Defendant.

(d)  Ground 7A

99.  Under this ground, the Defendant argues that the Recorder was wrong in finding that the SF 2003 Plans (in particular, SF 106, 130, 160 and 162) were first created on 24 July 2003, when in fact they were first made on 16 June 2003 before the Plaintiff submitted its quotation to Win Hing for the TKO137 PFSF works, and in failing to find authorial contributions from Gammon/Lambeth. This ground has no substance. Insofar as SF 130, 160 and 162 are concerned, they do not form part of the complaints pursued by the Plaintiff at the trial[44]. Insofar as the remaining plan, SF 106, is concerned, although the first issue of that plan was dated 16 June 2003 (with 4 further revisions apparently made in July and August 2003), the Recorder made a specific finding as to how it and SF 107 were created at §86(2) of the Judgment:

“These are drawings showing the construction sequence and details on how the sheetpile retaining wall at the decanting point was to be secured against the earth-filled ramp. Given (i) these details must necessarily follow from the design and dimensions of the support structure, which were created by TP Wong and (ii) the matters in §§84 to 85 above[45], I find that they were created on the instructions of TP Wong.”

100.  We do not see that the actual date on which the first issue of SF 106 was created has any material bearing to the Recorder’s finding that Jacky Wong/Lambeth created it on the instructions of TP Wong.

(e)  Ground 8

101.  Under this ground, the Defendant argues that the Recorder was wrong to disregard the authorial contributions from Gammon/Lambeth, and wrongly found the Plaintiff as sole author and owner of the SF 2003 Plans according to various authorities, in particular, Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818, at 835; and Martin v Kogan [2020] ECDR 3, at §41.

102.  In our view, neither case assists the Defendant. The former case, concerning some architects’ drawings or floor plans (artistic work), establishes the principle that –

“where two or more people collaborate in the creation of a work and each contributes a significant part of the skill and labour protected by the copyright, then they are joint authors”;

while the latter case, concerning a screenplay (literary or dramatic work), establishes the principle that –

“[i]t is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected in the case of a literary or dramatic work, whether the work is one of sole or joint authorship. Too much focus on who pushed the pen is likely to detract attention from what it is that is protected, and thus from who the authors are. Likewise, we do not think that an enquiry into who accepts responsibility for the form of expression in the work is a helpful concept, particularly in a collaborative work. The statutory test does not go any further than asking who contributed to the creation of the work”.

103.  We do not consider that these principles are relevant or applicable to the present case, in view of the following finding by the Recorder at §85(8) of the Judgment:

“I bear in mind that there being no dispute that Lambeth generated the (digitized) SF 2003 Plans, the ultimate question I have to consider is whether Lambeth just followed TP Wong’s directions and instructions, or that it was at liberty to change things as it liked or saw fit. However, there is simply no evidence from Jacky Wong that there were aspects of the design or depiction communicated to him which he did not agree with and ignored and replaced with his own design. As Mr Liao submitted, Jacky Wong’s evidence was all-or-nothing – he said he created the (structural) design and his team executed it. As such, my rejection of his evidence means that there is no factual foundation to say that he or the Lambeth team had a creative role in some aspect of the SF 2003 Plans.”

104.  In other words, there was simply no evidence accepted by the Recorder that Jacky Wong or Lambeth or Gammon made any contribution in creating the SF 2003 Plan other than merely following TP Wong’s directions and instructions. The Recorder also found that Lambeth’s role was no more than one of scribe[46]. On these findings, there was no basis for holding Gammon or Lambeth to be co-authors or co-owners of the copyright subsisting in the SF 2003 Plans.

105.  For the above reasons, Grounds 5 to 8 are all rejected.

GROUNDS 9 TO 10A:  “WORK OF ARCHITECTURE”

106.  The Defendant makes two principal points under these grounds. The first point, under Grounds 9 and 10, raises an issue of statutory construction, namely, whether, for a building to qualify as a “work of architecture” within the definition of “artistic work” in s 5(b), the building in question must satisfy some requirement of “artistic quality”. The second point, under Ground 10A, raises a pleading objection that the Plaintiff should not have been permitted to run the case that P’s Installation constituted a “work of architecture” within the definition of “artistic work” in s 5(b).

107.  Dealing first with the issue of statutory construction, in order to qualify for copyright protection, the Plaintiff had to show that P’s Installation was an “artistic work” as that expression is defined in s 5, as follows:

“artistic work (藝術作品) means –

(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality;

(b) a work of architecture being a building or a model for a building; or

(c) a work of artistic craftsmanship.”

108.  As pointed out by the Recorder at §96 of the Judgment, the only candidate in the definition of artistic work that P’s Installation could fall within would be sub-paragraph (b): “a work of architecture being a building or a model for a building”.

109.  At the trial, Mr Liao argued that P’s Installation could not fall within that part of the definition for 2 reasons: (i) it was only a temporary structure, and thus would not qualify as a “building” (which is defined to include “any fixed structure, and a part of a building of fixed structure”), and (ii) the expression “work of architecture”, on its true construction, imported a requirement of “artistic quality”, which P’s Installation did not possess. The Recorder held against Mr Liao on both grounds. In the present appeal, Mr Liao no longer contends that P’s Installation is not a “building” within the meaning of that term as defined in the Ordinance, but maintains the argument that it does not qualify as a work of architecture. In support of this argument, Mr Liao relies on the following commentary in Copinger and Skone James on Copyright, 19^th ed, at §2-152:

“History of protection of works of architecture

Works of architecture, as distinct from the plans, drawings and sketches of such works, were first made the subject of copyright protection under the 1911 Act… Under the 1911 Act, an artistic work was therefore defined to include ‘architectural works of art’, this expression being in turn defined to mean any building or structure having an artistic character or design, in respect of such design, or any model for such building or structure, but the protection given by the Act was confined to the artistic character and design, and did not extend to processes or methods of construction. Copyright could therefore now subsist in a building, as distinct from a copyright in the plans on which the building was based. Under the 1956 Act, an artistic work was defined to include works of architecture, being either building or models for buildings, a building being defined to include any structure. Express reference to artistic character or design, and to the nature of protection, was now omitted but it is thought that this did not produce any substantial alteration in the law. While drawings were protected ‘irrespective of artistic quality’, the omission of these words in respect of architectural works maintained, in effect, the requirement under the 1911 Act that such works, in order to be architectural works, must have some artistic character.” [emphasis added]

110.  The learned editors of Copinger go on to state, at §2-156, the following:

“Artistic character or design of architectural work

The necessity under the 1911 and 1956 Acts that a work of architecture should have an artistic character or design has already been noted and it is suggested that the position is the same under the 1988 Act. It is suggested that such artistic character need not involve any aesthetic judgment, but may reside in the process of design of the building or structure. In the case of the vast majority of structures in respect of which the issue might arise as to whether they were works of architecture, this is, in practice, likely not to be a problem. It is, however, possible to conceive of a structure which would require to be designed but which might not be considered to qualify as a work of architecture.”

111.  According to counsel’s research, the view that to constitute architectural works under the 1956/1988 Acts, such works must have some “artistic character or design” has appeared in successive editions of Copinger, from the 13^th edition (1991) through to the 19^th edition (2024) of that work. Mr Liao submits that the Recorder was wrong to hold that the said statement “wholly ignored the legislative history of the UK Copyright Act”. He also relies on various authorities, including Beazley Homes Ltd v Arrowsmith [1978] 1 NZLR 394, at 400, Lucasfilm Ltd v Ainsworth [2012] 1 AC 208, at §14-26, which it is said are supportive or consistent with Copinger, as well as the observation of Hacon J in Response Clothing Ltd v Edinburgh Woollen Mill Ltd [2020] ECDR11, at §44.

112.  For the purpose of ascertaining the true construction of the expression “work of architecture” in s 5(b), it is necessary to have regard to the legislative history of the definition of “artistic work” in the successive Copyright Acts in the UK since 1911:

(1)  In the Copyright Act 1911 –

(a)  the expression “Artistic work” was defined in s 35(1) to include “works of painting, drawing, sculpture and artistic craftsmanship, and architectural works of art and engravings and photographs”, and

(b)  the expression “Architectural work of art” was defined to mean “any building or structure having an artistic character or design, in respect of such character or design, or any model for such building or structure, provided that the protection afforded by this Act shall be confined to the artistic character and design, and shall not extend to processes or methods of construction”.

(2)  It is clear that, under the 1911 Act, although an architectural work of art could enjoy copyright protection, such protection was given only if the relevant work possessed or exhibited some artistic character or design, and the protection extended only to the artistic character and design of the work.

(3)  In the Copyright Act 1956, the definition of “artistic work” in s 3(1) was changed, and broken down into 3 sub-paragraphs, as follows –

“In this Act ‘artistic work’ means a work of any of the following descriptions, that is to say, -

(a) the following, irrespective of artistic quality, namely paintings, sculptures, drawings, engravings and photographs;

(b) works of architecture, being either buildings or models for buildings;

(c) works of artistic craftsmanship, not falling within either of the preceding paragraphs.”

(4)  Two points are of note upon a comparison of the 2 definitions in the 1911 and 1956 Acts –

(a)  although works of painting, drawing and sculpture enjoyed copyright protection under both Acts, the 1911 Act was silent as to whether the relevant work must satisfy some requirement of artistic quality in order to qualify for copyright protection, while the 1956 Act expressly provided that protection was given irrespective of artistic quality; and

(b)  insofar as works of architecture were concerned, in order to attract copyright protection, a requirement of artistic quality was expressly imported under the 1911 Act, but such requirement no longer appeared in the 1956 Act.

(5)  Notwithstanding the aforesaid differences, it is incorrect to think that, for works of painting, drawing and sculpture, there was a requirement of artistic quality imposed under the 1911 Act. As observed by Lord Reid in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64, at 77G –

“Section 3(1) [of the 1956 Act] is difficult to understand unless one takes account of its origin. The Copyright Act 1911 covered artistic works. Section 35 contains a definition. ‘“Artistic work” includes works of painting, drawing, sculpture and artistic craftsmanship, and architectural works of art and engravings and photographs.’ ‘Architectural work of art’ is defined as meaning any building or structure having an artistic character or design. This brought in artistic craftsmanship and buildings for the first time. It would seem that paintings, drawings, sculpture, engravings and photographs were protected whether they had any artistic character or not, but works of craftsmanship had to be of ‘artistic’ craftsmanship and buildings must have an ‘artistic’ character or design. There is no further explanation of what is meant by ‘artistic.’

The Act of 1956 in section 3(1)(a) makes explicit that the works to which it refers need have no artistic quality. Section 3(1)(b) removes the need for any artistic character or design in buildings. But section 3(1)(c) preserves the limitation that there must be ‘artistic’ craftsmanship.” [emphasis added]

(6)  In other words, the addition of the words “irrespective of artistic quality” in s 3(1)(a) of the 1956 Act did not effect any change of the law insofar as works of painting, drawing and sculpture were concerned. Those words merely made explicit what was implicit in the definition in the 1911 Act. On the other hand, the law was changed insofar as works of architecture were concerned. Under the 1911 Act, the relevant work must have an artistic character or design before copyright protection was given. However, under the 1956 Act, the need for any artistic character or design was removed. In our view, what is significant is not the addition of the words “irrespective of artistic quality” for paintings, sculptures, drawings, etc in s 3(1)(a), but the omission of the express reference to “artistic character or design” for works of architecture in s 3(1)(b) of the 1956 Act. While Lord Reid’s aforesaid observations in Hensher were strictly obiter, the underlying reasoning was, in our view, clear and convincing, and we have no hesitation in agreeing with Lord Reid’s observations.

(7)  The definition of “artistic work” in the 1956 Act was carried over to s 4(1) of the Copyright, Designs and Patents Act 1988 (with minor textual and stylistic changes which did not result in any change of substance), as follows –

“In this Part ‘artistic work’ means –

(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality,

(b) a work of architecture being a building or a model for a building, or

(c) a work of artistic craftsmanship.”

(8)  Finally, the definition of “artistic work” in s 5 of the Copyright Ordinance in Hong Kong is derived from, and identical to, the definition of that expression in the 1988 Act, save that a Chinese translation of “artistic work” (藝術作品) has been added in the local definition.

113.  In our view, it is clear, from an examination of the legislative history of the definition of “artistic work” in the successive Copyright Acts in the UK since 1911 and the Copyright Ordinance in Hong Kong that there is no requirement of artistic quality to be satisfied before a work of architecture can qualify as an artistic work under s 5(b). The Recorder is correct in her view expressed at §100(7) of the Judgment that:

“it would be wrong to simply construe item (b) against item (a), and say that because item (a) stipulates ‘irrespective of artistic quality’ and such words are absent in item (b), it must follow that item (b) requires artistic quality. On the contrary, the legislative history of item (b) shows that the words used mean exactly what they say; that is, there is no requirement for artistic quality in a work of architecture.”

114.  As regards Beazley Homes Ltd and Lucasfilm relied on by Mr Liao, those cases were considered by the Recorder at §§101 and 102 of the Judgment. In the former case, McMullin J expressed the view (at p 400) that a “work of architecture” within the definition of “Artistic work” in s 5(1) of the Copyright Act 1962 of New Zealand, which was in the same terms as s 3(1) of the Copyright Act 1956 in the UK, meant a work in the design of which some skill was apparent, and thus for a building to qualify as a work of architecture, it must be the product of some skill or experience in design or construction. There is nothing in the judgment of McMullin J to suggest that a work of architecture must have some artistic quality. The latter case was concerned with the meaning of the word “sculpture” in the definition of artistic work in s 4 of the Copyright, Designs and Patents Act 1988. In our view, neither case supports the Defendant’s construction of the expression “work of architecture” in s 5(b).

115.  Lastly, Response Clothing relied on by Mr Liao was concerned with the question of whether a design which was woven into the fabric of garments qualified as a “work of artistic craftsmanship”. Mr Liao seeks to place reliance on the following passage by HH Judge Hacon, at §44:

“Before turning to what makes a work of craftsmanship artistic, it is to be noted that whereas s.4 of the 1988 Act makes artistic quality irrelevant to the assessment of whether a graphic work, photograph, sculpture or collage is an artistic work, there is no such removal of artistic merit from the assessment of a work of architecture or artistic craftsmanship. It might be said that in consequence artistic merit is relevant to the latter assessments. But, on one view anyway, artistic merit or quality can only ever be a subjective consideration. Parliament cannot have intended the assessment to depend on the chance of a particular court’s artistic appreciation, or lack of it. The only alternative would be to have experts explain their own (presumably opposing) views. Yet even received views on artistic merit can change markedly over time and sometimes they change back again.”

116.  It seems to us clear that HH Judge Hacon was not intending to express any definitive conclusion when he stated that “it might be said that in consequence” artistic merit was relevant to the assessment of whether a work was a work of architecture or artistic craftsmanship. We do not see that this statement takes the Defendant’s case on the construction of “work of architecture” any further than the view expressed in Copinger.

117.  In all, we are of the view that the Recorder came to the correct conclusion that there is no requirement that a work must have some artistic quality or character before it can qualify as a “work of architecture” for the purpose of s 5.

118.  The Defendant’s pleading objection raised under Ground 10A can be dealt with more briefly. The Defendant argues that the Recorder was wrong “as to how the issue of P’s Installation arose from the Plaintiff’s Amended Statement of Claim in which P’s Installation was simply pleaded as an original artistic work (without particulars) corresponding to the SF 2003 Construction Plans [Judgment, §42]”. There is nothing in this objection. In the Amended Statement of Claim, the Plaintiff pleaded, inter alia, that:

“[7A] The PFSF apparatus assembled by the Plaintiff for the first and second sorting lines at the TKO137 (‘the Plaintiff’s Installation’), which corresponds to the Construction Plans, was assembled with substantial intellectual and human labour and effort.

[8] The Construction Plans and the Plaintiff’s Installation are original artistic works within the meaning of section 5 of the Copyright Ordinance (Cap. 528) …”

119.  The Plaintiff thus made it clear that it was advancing a case that P’s Installation was an original artistic work within the meaning of s 5. The definition of artistic work in s 5 has only 3 short sub-paragraphs, and “a work of architecture” was the obvious candidate. If the Defendant was in any genuine doubt on this matter, it could easily have asked the Plaintiff to state the basis on which the Plaintiff contended that P’s Installation was an original artistic work within the meaning of s 5 by seeking further and better particulars of the plea. The issue of whether, to quality as a work of architecture, some element of artistic quality was required, was a pure question of law. The Defendant was not inhibited in any way from advancing its arguments on this issue at the trial. We do not see that the Defendant has suffered any prejudice arising from the fact that it was not pleaded in the Amended Statement of Claim that P’s Installation was a work of architecture within the definition of artistic work in s 5. In short, the Defendant’s pleading objection is rejected.

GROUNDS 11 TO 21:  INFRINGEMENT OF THE PLAINTIFF’S COPYRIGHT IN THE SF 2003 PLANS AND P’S INSTALLATION

(a)  Ground 11

120.  Under this ground, the Defendant argues that the Recorder erred in finding that the Defendant had infringed the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation by comparing the SF 2005 Plans with the SF 2003 Plans purportedly upon the Defendant’s “concession” that the MS Plans basically followed the SF 2005 Plans so that infringement would be established if the SF 2005 Plans were a substantial reproduction of the SF 2003 Plans (Judgment, §§40(1), 43(4) and 119). The Defendant says that (i) it made no such concession which is erroneous in law, and (ii) on the issue of infringement, the question is whether the MS Plans and the Defendant’s PFSF for the HZMB Project infringed the Plaintiff’s copyright in the SF 2003 Plans and P’s Installation.

121.  At §40(1) of the Judgment, the Recorder stated that “[t]he Defendant accepts the MS Plans basically followed the SF 2005 Plans, so that if the SF 2005 Plans were a substantial reproduction of the SF 2003 Plans, infringement would be established”. The Defendant’s contention that it made no such concession is incorrect. In the course of Mr Liao’s oral closing submissions at the trial, the following exchanges took place between the bench and the bar table[47]:

“COURT: Because I think one of the submissions that Mr Chain makes…

MR LIAO: Yes.

COURT: … is that, well, even in a scenario where there are some – where the 2005 plan in and of itself attracts originality, the 2003 plan can still almost like sort of permeate through it, and that copyright continues to remain so that when I look at the MS plan, I have to look at it both by comparison to the 2005 plan and the 2003 plan. What do you say to that?

MR LIAO: Yes, yes. Now, let’s say there are several issues involved but let me firstly, firstly, for the further construction plans [ie the SF 2005 Plans], the question is whether it is a substantial reproduction of the construction plan [ie the SF 2003 Plans]. Right? That goes more to the question of infringement because the MS plans basically follow the further construction plans. So if the further construction plans constitute a reproduction of substantial part of the construction plan, so would MS plan, would be a substantial reproduction of the construction plan via that conduit, via that type, right?

It’s an indirect copy in the sense that if this is a copy of the – that’s for the construction plan, therefore it’s also a copy of the construction plan, very much like the point my learned friend raised about colour, right? So you say sub A, B and C. If B is a reflection of A, and C being the same as B, therefore it must be a reproduction of A as well and at the same time a reproduction of B. Right? So that link is there. That’s on the question of infringement, reproduction.

But on the question of authorship …

COURT: … I think you’ve submitted to me that, basically, the MS plan copies the 2005 plans.

MR LIAO: Now, there are some exceptions.

COURT: Some of them. All right, yes.

MR LIAO: Some, for example, some…

CIURT: So that’s going to be the exercise, and then I obviously have to then do that comparison again for substantial – to see if it’s substantially reproduced there.

MR LIAO: Yes, yes, but your Ladyship’s work there will be very much reduced once you have done the further construction [plans].” [underlining added]

122.  It is clear from the above exchanges that Mr Liao on behalf of the Defendant did accept, or concede, that the MS Plans basically followed the SF 2005 Plans, so that if the SF 2005 Plans were a substantial reproduction of the SF 2003 Plans, infringement would be established. Although Mr Liao also said that there were some exceptions, they did not detract from the main point that the MS Plans basically followed the SF 2005 Plans.

123.  The exceptions that Mr Liao relied upon were set out in Table 3 (items 1, 2, 5, 6 and 7) attached to D’s Closing Submissions. Those exceptions are maintained by Mr Liao in the present appeal[48]. They relate to SF 101, 102, 103, 104, 105, 110, 111 and 112, corresponding to MS/001, 002, 003, 004, 005, 021, 022 and 023[49]. However, the mere fact that there exist some differences between the SF 2003/SF 2005 Plans and the relevant MS Plans do not mean that the latter are not substantial reproductions of the former. As correctly observed by the Recorder at §115(3) of the Judgment, when considering the issue of infringement, “[t]he inquiry is directed to the similarities rather than the differences. Differences in the overall appearance of the 2 works due to presence of features of the defendant’s work about which no complaint is made are not material.”  At §118 of the Judgment, the Recorder carefully analysed the SF 2003 Plans individually[50] and compared them with the corresponding SF 2005 Plans/MS Plans, and concluded that substantial reproduction was established in each instance. Insofar far as SF 101, 102, 103, 104, 105, 110, 111 and 112 were concerned, the comparison was with the corresponding SF 2005 Plans. There is, however, no suggestion by the Defendant that the features appearing in the corresponding SF 2005 Plans which the Recorder found to be substantial reproductions of the relevant SF 2003 Plans do not also appear in the corresponding MS Plans.

124.  In all, the Defendant’s complaints under Ground 11 have no validity.

(b)  Grounds 12 to 21

125.  Under these grounds, the Defendant challenges the Recorder’s findings that various SF 2005 Plans/MS Plans were substantial reproductions of the corresponding SF 2003 Plans and/or P’s Installation. At the hearing of the appeal, Mr Liao said that these were relatively minor points, and confirmed that the Defendant would confine its complaints to 4 plans or sets of plans, namely:

(1)  SF 101 v MS/001, the corresponding SF 2005 Plan being SF 101 (Rev 8) (relating to layout)[51];

(2)  SF 102 (Rev 5), SF 103 (Rev 5) and SF 104 (Rev 2) v MS/002, the corresponding SF 2005 Plan being SF 109 (Rev 2) (relating to elevation)[52];

(3)  SF 110 (Rev 2) v MS/021, the corresponding SF 2005 Plans being SF 115 (Rev P1) and SF 115 (Rev 1) (relating to support of VGF )[53]; and

(4)  SF 112 (Rev 1) v MS/023, the corresponding SF 2005 Plans being SF 117 (Rev P1) and SF 117 (Rev 1) (relating to footing for VGF)[54].

126.  Mr Liao does not challenge the legal principles set out by the Recorder in Section I.1 (§§113 to 116) of the Judgment concerning the law on substantial reproduction. The following principles that the Recorder set out in the Judgment are relevant for the purpose of the present discussion:

“[113] An action for infringement of artistic copyright is not concerned with the appearance of the defendant’s work but with its derivation… Even where the copying is exact the defendant may incorporate the copied features into a larger work much and perhaps most of which is original or derived from other sources. But while the copied features must be a substantial part of the copyright work, they need not form a substantial part of the defendant’s work – thus the overall appearance of the defendant’s work may be very different from the copyright work, but it does not follow that the defendant’s work does not infringe the plaintiff’s copyright: Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, 2425C-E.

[114] The question of infringement involves a two-stage inquiry.

[115] First, one must identify those features of the defendant’s design which the plaintiff alleges have been copied from the copyright work.

(1) The concept of reproduction consists of 2 elements: (i) a sufficient resemblance between the copyright drawing and the alleged infringement, and (ii) a causal connection between the two. Neither element is sufficient.

(2) One starts with a visual comparison of the 2 designs, noting the similarities and the differences, the purpose of which is to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence.

(3) The inquiry is directed to the similarities rather than the differences. Differences in the overall appearance of the 2 works due to presence of features of the defendant’s work about which no complaint is made are not material.

…

[116] Second, once it is found the defendant’s design incorporates features taken from the copyright work, the question is whether what has been taken constitutes all or a substantial part of the copyright work: Cap.528 sections 22(3) and 23; Designers Guild 2426A-B.

(1) Whether a part is substantial must be decided by its quality rather its quantity: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, 293.

(2) In the type of case where an identifiable part of the whole, but not the whole, has been copied, the question whether the copying of the part constitutes an infringement depends on the qualitative importance of the part that has been copied, assessed in relation to the copyright work as a whole. Since substantiality depends on the relationship between what has been copied on one hand and the original work on the other, similarity is no longer relevant: Designers Guild 2431H.

(3) To that end:-

(a) In the case of an artistic work, the question is whether the defendant had taken a substantial part of ‘that which is visually significant’: Rose Plastics GmbH v William Beckett & Co (Plastics) Ltd (unreported) 2 July 1987, cited with approval in Interlego 266A-B.

…

(d) Moreover, whether the actual dimensions and spatial relationships visually depicted on the drawing are sufficiently important to be a substantial part depends upon their significance to the kind of person to whom the drawing is addressed; in other words, ‘visually significant’ is not to be equated with significant to the layman: Billhöfer 122. This question is one of fact and degree: op.cit.”

127.  In the Judgment, the Recorder set out her detailed reasoning for finding that the relevant SF 2005 Plans were substantial reproductions of the SF 2003 Plans referred to at §125(1) to (4) above (see items 1, 2, 3, 4, 8 and 10 in the Table at §118 of the Judgment). We do not propose to set out the Recorder’s reasoning here. At the hearing of the appeal, Mr Liao challenged the Recorder’s finding of substantial reproductions by inviting the Court to carry out a visual comparison of the relevant SF 2003 Plans with the corresponding SF 2005 Plans/MS Plans to identify the dissimilarities between them and conclude that the latter could not be regarded as substantial reproductions of the former.

128.  Essentially, the approach that Mr Liao advocates is to look at the plans as a whole and place emphasis on the dissimilarities in the overall shape or configuration of the layout, elevation, VGF support structure or VGF footing appearing on the relevant SF 2003 Plans on the one hand and the corresponding SF 2005 Plans/MS Plans on the other, while the Recorder’s focus is on the particular similarities relied on by the Plaintiff and asks whether the similarities or features which have been copied (if established) constitute all or a substantial part of the copyright work. In our view, the Recorder’s approach is supported by the principles that she set out and quoted at §126 above.

129.  When considering whether this Court should disturb the Recorder’s finding on the issue of infringement, we bear in mind that her conclusion was arrived at after what in modern legal parlance is often referred to as a “multi-factorial assessment”. Generally speaking, the Court of Appeal should not reverse a trial judge’s decision on such an issue unless he has misdirected himself or erred in principle.

130.  In Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416, which concerned infringement of copyright in an artistic work (fabric designs):

(1)  Lord Bingham of Cornhill set out the proper approach that the appellate court should adopt when dealing with the issue of whether there had been copying of a substantial part of the plaintiff’s design –

“The Court of Appeal upheld [the defendant’s] challenge. But in doing so, as it seems to me, it fell into error… Secondly, the Court of Appeal approached the issue of substantiality more in the manner of a first instance court making original findings of fact than as an appellate court reviewing findings already made and in very important respects not challenged. It was not for the Court of Appeal to embark on the issue of substantiality afresh, unless the judge had misdirected himself, which in my opinion he had not.” (2418G-H)

(2)  Lord Hoffmann’s guidance on the appellate function in relation to a judge’s finding of infringement is to the same effect, pointing out that the appellate court should not reverse a judge’s decision unless he has erred in principle –

“The question of substantiality is one of mixed law and fact in the sense that it requires the judge to apply a legal standard to the facts as found. It is, as I said, one of impression in that it requires the overall evaluation of the significance of what may be a number of copied features in the plaintiff’s design. I think, with respect, that the Court of Appeal oversimplified the matter when they said that they were in as good a position to decide the question as the judge. I say this for two reasons…

Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge’s decision unless he has erred in principle: see Pro Sieben Media A.G. v. Carlton U.K. Television Ltd. [1999] 1 W.L.R. 605, 612–613. I agree with Buxton L.J. in Norowzian v. Arks Ltd. (No. 2) [2000] F.S.R. 363, 370 when he said:

‘where it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.’” (2423F-2424B)

131.  In Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd [2015] 1 HKLRD 414, which concerned infringement of trade marks in coffee and tea products, Lam VP (as he then was), giving the judgment of the Court of Appeal, also referred to a collection of authorities explaining the proper role of the appellate court in relation to a judge’s conclusion on an issue of mixed question of law and fact, or one based on a multi-factorial assessment:

“[22] In Fine & Country Ltd v Okotoks Ltd [2014] FSR 11 at [50], Lewison LJ identified the role of an appellate court in an appeal of a similar nature as ours as follows:

‘The Court of Appeal is not here to retry the case. Our function is to review the judgment and order of the trial judge to see if it is wrong. If the judge has applied the wrong legal test, then it is our duty to say so. But in many cases the appellant’s complaint is not that the judge has misdirected himself in law, but that he has incorrectly applied the right test. In the case of many of the grounds of appeal this is the position here. Many of the points which the judge was called upon to decide were essentially value judgments, or what in the current jargon are called multi-factorial assessments. An appeal court must be especially cautious about interfering with a trial judge’s decisions of this kind. …’

[23] Another statement to similar effect can be found in similar context in the judgment of Kitchen LJ in Specsavers v Asda [2012] FSR 19 at [104]:

‘… this court will not interfere with the conclusion of a trial judge on an issue which has required him to engage in what has been described as a multi-factorial assessment unless there has been an error of principle …’

[24] In the context of a mixed question of law and fact, a similar approach was adopted by Kwan JA in Toeca National Resources BV v Baron Capital Limited (unrep., CACV 55 of 2013, [2014] HKEC 950) (6 June 2014) at [42]-[44] where Her Ladyship found guidance from the judgment of Neuberger J in Todd v Adams [2002] CLC 1050 at 1064-1065.

…

[26] Another instance where similar sentiment was expressed at an appellate level in an intellectual property cases is the observation of Buxton LJ in Norowzian v Arks Ltd (No 2) [2000] FSR 363 at p.370:

‘Where it is not suggested that the judge has made an error of principle, a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.’”

132.  In coming to her finding that the relevant SF 2005 Plans/MS Plans were substantial reproductions of the corresponding SF 2003 Plans, the Recorder did not err in principle or misdirect herself. It is immaterial that we may have come to a different conclusion on the issue of infringement if we are asked to determine this issue afresh. We do not consider that there is any proper or sufficient basis for this Court to disturb the Recorder’s conclusion on the issue of infringement in the present case.

133.  There is one other point mentioned by Mr Liao in his submissions that we should briefly deal with. In relation to the Recorder’s finding that SF 101 (Rev 7-8) (of the SF 2005 Plans) was a substantial reproduction of SF 101 (of the SF 2003 Plans) based upon a comparison of the third sorting line on the former (SF 101 (Rev 7-8)) with the first sorting line on the latter (SF 101), Mr Liao argues that such finding was contrary to the evidence of TP Wong, who accepted in cross-examination that the alignment of the two sorting lines did not look the same. The Recorder’s reasoning for finding substantial reproduction established is set out in item 1 of the Table at §118 of the Judgment:

“(1) The relevant comparison is between the third sorting line on SF101 rev.7-8 and the first sorting line (with conveyor belts C11 to C13 and C31 to C32).

(2) I am satisfied that the third sorting line copied the first sorting line (both in the SF 2003 Plan and P’s Installation). The ordering and graphic depiction of each component of the sorting line is identical or near identical. The alignment of the third sorting line is substantially the same as the first sorting line, with the exception of conveyor C44 which is at angle of around 120^o (as opposed to horizontal in the first sorting line), but that must have been dictated by the site constraints since there was not enough space for C44 to be fully horizontal. Further, the description of the equipment (‘identical to existing [equipment]’) also indicates copying.

(3) The copying is basically all of the copyrighted first sorting line. I find substantial reproduction established.”

134.  It is clear from sub-paragraph (2) above that the Recorder was well aware of the fact that the alignment of the two sorting lines was different (in that conveyor C44 of the third sorting line on SF 101 (Rev 7-8) was at an angle of around 120° as opposed to horizontal in the first sorting line on SF 101), but found nevertheless that substantial reproduction was established. The issue of whether there was substantial reproduction was a matter for the Recorder, not the witness. It is, we consider, open to the Recorder to come to her finding notwithstanding the evidence of TP Wong.

135.  There are some other minor points raised by the Defendant in the Supplemental Notice of Appeal under Grounds 12 to 21 which were not pressed by Mr Liao at the hearing of the appeal. We have considered those points, but do not consider that they add anything of significance to the Defendant’s appeal or have merit.

136.  In all, Grounds 11 to 21 are rejected.

DISPOSITION

137.  The Defendant’s appeal is dismissed with costs to the Plaintiff, to be taxed if not agreed.