ORIENTIAL PRESS GROUP LTD v. APPLE DAILY LTD

IN THE COURT OF APPEAL

1997, No. 104
(Civil)

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J U D G M E N T

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Godfrey, J.A. (giving the judgment of the court) :

Introduction

1. This is an appeal from Mr. Justice Rogers, who in actions for breach of copyright has awarded the plaintiffs Oriental Press Group Limited and Oriental Sunday Publisher Limited damages against the defendant Apple Daily Limited falling far short of the amount to which the plaintiffs consider themselves entitled. They accordingly now appeal, asking the court to substitute for the awards made by the judge much more substantial awards in their favour.

2. For present purposes no distinction need be drawn between the plaintiffs, to whom we shall refer hereafter in the singular.

Background

3. The plaintiff is the publisher of a Chinese weekly magazine ("Oriental Sunday"). The defendant is the publisher of a Chinese daily newspaper ("Apple Daily"). The bone of contention between them is, in substance, a photograph of a popular local entertainer named Huang Fei, or Faye Wong. This lady's private life is, or so it is said, of interest to those who read these two publications. In October 1996, such readers were, apparently, particularly interested in the truth or otherwise of rumours concerning her pregnancy. The photograph in question, taken without the subject's consent in the baggage claim area of the airport in Beijing, is said to confirm the rumours. The judge has held the plaintiff entitled to copyright in this photograph; the defendant does not now contend otherwise.

4. The plaintiff published this photograph on the front cover of the 6 October 1996 issue of the "Oriental Sunday" (an issue in fact released on 5 October 1996).

5. The defendant re-published this photograph in the 6 October 1996 issue of the "Apple Daily". It did so by reproducing, on the cover page of the entertainment section of its own paper, with acknowledgement, the cover of the 6 October 1996 issue of the "Oriental Sunday". But the defendant had not sought the consent of the plaintiff for this reproduction; and indeed the plaintiff would not have licensed the defendant to reproduce the photograph if it had been asked to do so. The plaintiff says it was thus robbed of its "scoop". Hence these proceedings.

The judgment

6. The judge, coming to assess damages, reviewed all the evidence presented to him. He remarked that there was no evidence before him of any loss to the plaintiff caused by the defendant's breach of copyright. He dealt separately with "infringement" damages and "conversion" damages. So far as "infringement" damages were concerned, he accepted the plaintiff's contention that these should be assessed on the footing of a proper royalty for the use of the photograph. He was provided with evidence in the form of alleged comparables, all of which he considered and rejected. For example, he was pressed by the plaintiff with evidence of what would, apparently, have been an appropriate royalty for the use of a death-bed photograph of Deng Xiao Ping. He rejected this as a "wholly unreal comparison". He was further presented with evidence from the plaintiff of what would have been an appropriate royalty for a set of four (as he said ) "highly valuable" pictures of the unfortunate Diana, Princess of Wales, in the company of one Major Hewitt. He thought this series of photographs, for which a proper royalty would have been 1,000, could be expected to arouse far greater interest "than a photograph of a pop singer in Beijing airport waiting for her baggage". He said "using this instance as some kind of measure", he would estimate the value of the photograph in the present case at HK$5,000.

7. As to "conversion" damages, the approach the judge adopted was that favoured in John Lane, The Bodley Head Ltd v. Associated Newspapers [1936] 1 KB 715 and Ash v. Dickie [1936] 1 Ch 655 (see also Caxton Publishing Co. Ltd v. Sutherland Publishing Limited [1939] AC 178 and Ravenscroft v. Herbert [1980] RPC 193). (This approach requires one to calculate the value of the infringing publication, taking an "appropriate proportion" of that value, and multiplying that proportion by the number of copies sold. There is a difficulty with the "appropriate proportion" concept however; for that proportion cannot be arrived at by any exact method of calculation. Sometimes, the feature in question may be of major importance, however little space it occupies. If, then the proportion of the publication which the space taken up by the feature bears to the whole publication is, say, 4%, the value of that 4% may be more than 4% the total value of the publication (see, for example, the case last cited, at p.210, where the judge assessed the appropriate proportion at 15%). The judge has to do the best he can, using his common sense; he has to do rough justice by fixing an appropriate value, starting with the proportion which the feature bears to the whole publication in terms of the space occupied, but with a margin of appreciation which allows an adjustment upwards or downwards to reflect the feature's relative importance.) The judge in the present case assessed the conversion damages at $3,000. He reasoned as follows :

"I have calculated damages in this respect as being $3,000.00. In doing so I regard this as being very generous to the Plaintiff. I have done it on a rough basis. I have compared the size of the photograph with the part of the paper that is not regarded as advertisement, on the Plaintiff's calculation that is 38.5 pages. The size of the total area of the paper therefore which is not devoted to advertisements works out, on my calculation, 360mm x 535mm x 38.5 pages. I find that comes to a figure of 7,415,100. I then took half the size of the article which is more than the size of the photograph but which, in my view, gives the sort of prominence that is given in relation to this article and photograph. I come to a figure of approximately 497 that is 1/497th part of the newspaper not containing advertisements. And I divide the total price of the newspaper $5.00 x its circulation by 497, and I come to a figure of approximately $3,000.00 rounding the figure of 497 up to 500."

The function of the Court of Appeal

8. It is necessary, once again, to point out that it is not the function of this court to provide a disappointed litigant with a chance to have a second bite at the cherry. This court is not entitled to interfere with a judge's assessment of damages merely because it would, or might, have attached greater weight, or lesser weight, than did the judge to one aspect or another of the evidence. It can interfere only if it is satisfied that the judge has fallen into some error of principle (by, for example, failing to take into account some matter which he was bound to take into account; or by wrongly taking into account some matter which he was not entitled to take into account); or, short of this, that the amount awarded was so inordinately low or so inordinately high that it must have been a wholly erroneous estimate of the damage. (For an example of the application of these well-settled principles in the field of infringement of copyright, see the Privy Council case of Khawam v. K. Chellaram & Sons [1964] 1 WLR 711.)

The plaintiff's argument

9. The plaintiff's argument on the appeal is set out in the Notice of Appeal as follows :

"Infringement Damages

1. In assessing the notional royalty for the use of the photograph on the front cover of the Oriental Sunday Magazine ("the Photograph"), the learned Judge erred in that he :

a) Failed to give any or due weight to the evidence that the Photograph had great "scoop" and exclusivity value, being the first photograph (and the only one available in evidence) to confirm the rumoured pregnancy of Huang Fei, a prominent Hong Kong pop star who avoided publicity.

b) Failed to give any or due weight to the evidence that a licence fee for a non-exclusive "once only" right to publish a photograph of the dying Deng Xiao Ping (which had already been published in Hong Kong) would have cost in the region of US$6,000 and failed to hold that, in the context of a Hong Kong newspaper such as the Apple Daily, this figure was an appropriate yardstick for assessing a notional royalty in the present case.

c) Failed to give any or due weight to the evidence that the Defendants would not have been given a licence to reproduce the Photograph.

d) Failed to give any or due weight to the evidence that the minimum penalty charged in the industry to infringers was 3 times the normal licence fee.

e) Misinterpreted the last sentence in Exhibit "LHC-6" to the 2nd Affirmation of Lee Hong Chuen in failing to appreciate and disregarding the evidence that the Photograph was being cited as one in which the writer's company would be interested and was not being cited as an example of a normal everyday photograph.

f) Failed to give any or due weight to the evidence that the set of frames from a film purportedly taken of Lady Diana, a foreign celebrity, during an affair which had long been openly admitted by both parties concerned would not attract as much interest in Hong Kong as a photograph proving for the first time the pregnancy of a Hong Kong pop star.

g) Held without any, and contrary to, the evidence that photographs of Lady Diana would arouse more interest than a photograph of a local pop singer.

h) Wrongly used the aforesaid purported photographs of Lady Diana as a measure for assessing the notional royalty.

Conversion Damages

2. In assessing the value of the copy in relation to the whole of the Defendant's newspaper, the learned Judge erred in that he:

a) Wrongly held that no prominence was given to the Photograph or the accompanying article in the Entertainment Section of the Defendant's newspaper, notwithstanding that they appeared on the front cover of that section and constituted one of only three news features on that page.

b) Wrongly assessed the value of the copy by reference to area, by taking half the area of the article of which the copy formed part and comparing this with the area of the news sections of the Defendant's newspaper. The value of the copy assessed by this method amounted to 0.2 per cent of the value of the Defendant's newspaper.

c) Wrongly failed to attach any or due weight to the evidence that the photograph in the copy had great "scoop" and exclusivity value for the reasons in 1(a) above and had a value substantially larger than that arrived at merely by measuring its size."

10. These so-called "grounds of appeal" consist, as they all too often do, entirely of complaints that the judge gave too little or too much weight to various features of the evidence urged on him by one party or the other. The whole argument is misconceived; and it must be rejected.

11. The judge considered all the matters mentioned in the "grounds of appeal". The weight to be given to any and all of them was entirely a matter for him. The one matter of fact which, in our view, does need some further consideration is the complaint made by the plaintiff as to the judge's assessment of the area of the defendant's newspaper occupied by the infringing feature. Copies of the 6 October 1996 issue of the "Apple Daily" were not originally supplied for our use (as of course they should have been) but at our request we were eventually supplied with one copy. It comprises 6 sections, as follows :

12. The judge may have made a minor miscalculation as to the proportion which the infringing feature bears to the whole publication; but not, in our judgment, a miscalculation of such significance as would require or entitle us to interfere with his assessment of the conversion damages: indeed, properly evaluated, the miscalculation favoured the plaintiff.

Conclusion

13. We dismiss the appeal. We do so without reluctance. The photograph of this lady was taken, as we have noted, without her consent. It is, perhaps, a nice irony that, if asked for her consent, she would clearly have indignantly refused it, just as the plaintiff says it would have refused its consent to the reproduction of the photograph by the defendant. The taking of photographs of public figures on public occasions (for example, when emerging from limousines on first nights) is and must remain legitimate. But the taking of photographs of public figures on private occasions without their consent is quite another matter. It has been held, on public policy grounds, that no copyright can subsist in matter which is morally offensive : see, for example, Stockdale v. Ownlyn (1826) 5 B & C 173; although, nowadays, the work would have to be considered as having a grossly immoral tendency before it would be excluded from copyright protection : see Stephen v. Avery [1988] Ch. 449. The point is that the law should, and can, reflect public sentiment. Public sentiment has turned, or seems to be turning, against those who are guilty of invasion of the privacy of public figures by taking their photographs on private occasions without their consent and then selling those photographs for large sums which reflect the cupidity of the publishers and the prurience of their readers. The time may come when, if the legislature does not step in first, the court may have to intervene in this field (as Lord Bingham of Cornhill, LCJ, has recently suggested in England); for example, by holding that the protection of copyright will not be extended to photographs of public figures taken on private occasions without their consent. (No newspaper or periodical would pay a large sum for a photograph which its rivals could re-publish without fee; and that consideration would go some way to reduce the incidence of the sort of conduct which is exemplified by the conduct of the photographer in the present case, who, knowing that the subject did not want to be photographed, nevertheless proceeded surreptitiously to photograph her.)

14. We will appoint a date and time for hearing submissions as to the costs below, and as to the costs of this appeal, after the parties have had an opportunity of considering this judgment.