XCHRX GOLDEN BRIGHT MANUFACTURER LTD. v. MGA ENTERTAINMENT (H.K.) LTD.

HCA 5287/2000

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 5287 OF 2000

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REASONS FOR DECISION

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1. This is an application by the plaintiff for judgment under Order 14 on its claim arising out of an allegation of infringement of copyright. On 17 November I gave judgment for the plaintiff in terms of its draft submitted, with minor amendments, and with costs, and now give my reasons for so doing.

2. The defendant had filed no affidavit in opposition to the claim, which is largely admitted, the only matter in issue being the form of the order to be made, and of that several amendments had already been agreed. The defendant, however, objected to the wording of the proposed paragraph 2 of the order, the draft of which annexed to the summons reads as follows:

"The Defendant do, within seven (7) days of this Order, deliver up or at the Plaintiff's option, destroy upon oath all goods, articles and materials (including all articles designed or adapted for the making of copies of the Plaintiff's copyright works) in the possession, power, custody or control of the Defendant, the continued use, sale or otherwise howsoever dealing in or with which by the Defendant would offend against any of the foregoing injunctions."

3. The "foregoing injunctions" include restraining the defendant from selling, offering for sale or supplying reproductions of the plaintiff's pinball games, or otherwise from infringing the plaintiff's copyright subsisting in drawings in respect of a number of listed parts of the pinball games.

4. Mr Yan, on behalf of the defendant, contends that the paragraph in question should include the words "in Hong Kong" after "the Defendant" in the fifth line. His reasoning is as follows. The copyright relied upon by the plaintiff is a creature of statute, namely the Copyright Ordinance, Cap 528, and this is territorial in that it cannot be used to bring proceedings for any infringement of copyright outside Hong Kong. He cites in support of this the English case of Def Lepp Music and ors v Stuart-Brown and ors [1986] R.P.C. 273, and says that the plaintiff could not accordingly enforce such an injunction as is proposed in respect of an infringement outside Hong Kong. The order, he says, should therefore be limited to goods, articles and materials in Hong Kong, as those outside Hong Kong cannot be infringing articles within the meaning of the Copyright Ordinance and the Court cannot order the defendant to bring such articles into Hong Kong.

5. The first flaw in this argument, it seems to me, is that the order would not, if his argument is correct, be requiring the defendant to do anything of the sort. If, as he maintains, these goods outside Hong Kong are not infringing articles within the meaning of the Ordinance, then any attempt by the plaintiff to enforce an order in respect of them would be doomed to failure. Equally, if the Ordinance does not apply to such goods, then any order by the Court, made under the Ordinance, would not apply, and it is unnecessary for the Court to spell that out by restricting the order to goods in Hong Kong.

6. But a further argument also defeats his contention. The Copyright Ordinance has a provision, which I believe is peculiar to this jurisdiction, namely in the definition of "infringing copy" under section 35(3) of the Ordinance, where it can also be such if:

(a) it has been or is proposed to be imported into Hong Kong; and

(b) its making in Hong Kong would have constituted an infringement of the copyright in the work in question, or a breach of an exclusive licence agreement relating to that work.

7. This is clearly an exception to the limit of territoriality under the Ordinance, and enables those who have reason to believe that copies of their works are being made outside Hong Kong and imported here, or intended to be imported here, to seek an order not limited to those goods already here, or being manufactured here. Section 109 of the Ordinance, which enables the owner of the copyright to apply for an order for delivery up, refers to an infringing copy only, which must be an infringing copy under the definition in section 35. There is no requirement to limit the application, nor for the Court not to make such an order. The fact that the plaintiff has failed to specifically plead that there are infringing copies outside Hong Kong does not help the defendant either. The plaintiff, having established that the defendant has been guilty of possessing, supplying and selling infringing copies is entitled to as wide an order as the Court considers necessary to prevent it being repeated.

8. For these reasons I saw no objection to the plaintiff's order as originally drafted, subject to the amendments agreed, and accordingly made the order in terms of the application.