XCHRX NAVYSTAR (NGAI SHING) INDUSTRIAL COMPANY LIMITED v. FAIRING INDUSTRIAL LIMITED

No. A5802 of 1994

______________

H E A D N O T E

______________

COPYRIGHT - ORIGINAL ARTISTIC WORK - INFRINGEMENT BY REPRODUCING THE WORK IN A 3 DIMENSIONAL FORM AND SALE OF THE ARTICLES - APPLICATION TO STRIKE OUT PLEADINGS.

No.A5802 of 1994

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

__________

__________

_______________

J U D G M E N T

_______________

Nature of Application

1. This is an application by the Defendant to strike out the Plaintiff's Statement of Claim on the basis that, firstly, it discloses no reasonable cause of action and secondly, it is frivolous, vexatious and an abuse of the process of the court.

Reasonable Cause of Action

2. The Statement of Claim pleads that the Plaintiff is the owner of the copyright in drawings of a toy compact disc player and the Defendant infringed the copyright by manufacturing, selling, offering for sale a toy disc player which is a reproduction or a substantial reproduction of the Plaintiff's drawings.

3. In respect of the first limb of the application, the complaint is that in the Statement of Claim, the Plaintiff has not identified the drawings in which the copyright exists. Further the Plaintiff has not identified the similarities of the Plaintiff's drawings and the Defendant's product which the Plaintiff said had infringed its copyright.

4. I am satisfied that the Statement of Claim discloses a cause of action on infringment of copyright. The Plaintiff has pleaded the ownership of the copyright in the original artistic work, namely the drawings, a set of which were served together with the Statement of Claim. The Plaintiff has also pleaded the infringement by the Defendant of the copyright by the manufacture and sale of an article which is a reproduction of the drawings. This is in accordance with ss.3,4 and 5 of the Copyright Act 1956. The complaint by the Defendant is on the lack of particulars of the drawings and the similarities. This is not a ground for striking out a Statement of Claim : see Note 18/19/7 of the Supreme Court Practice.

5. Mr Pao, Counsel for the Defendant, relied on the judgment of Aldous J. in N & P Windows Ltd v. Gego Ltd. [1989] FSR 56, where he said that it was essential in future cases that points of similarity were set out. The learned judge did not go as far as to say that the absence of particulars on the similarities will render the Statement of Claim defective.

6. Mr Pao, relying on the case Lonrho plc v. Fayed and others (No.2) [1991] 4 ALL ER 961, submitted that the absence of particulars rendered the Statement of Claim defective. He relied on the judgment of Millett J. at page 965, which stated that:

"On an application to strike out a Statement of Claim under Ord. 18,r. 19(1)(a) on the ground that it discloses no reasonable cause of action, the truth of the allegations contained in the statement of claim is assumed and evidence to the contrary is inadmissible. This is because the court is invited to strike out the claim in limine on the ground that it is bound to fail even if all such allegations are proved. In such a case the court's function is limited to a scrutiny of the statement of claim. It tests the particulars which have been given of each averment to see whether they support it, and it examines the averments to see whether they are sufficient to establish the cause of action. It is not the court's function to examine the evidence to see whether the plaintiff can prove his case, or to assess its prospects of success."

Although the judgment referred to the particulars of the averment, it is to the averments that one must see whether a cause of action has been established. I am satisfied a cause of action have been established in this case.

7. Mr Pao further relied on George Ward (Moxley) Ltd. v. Richard Sankey Ltd. [1988] FSR 66 in which Whiteford J. held that infringment of copyright could only be found in cases of indirect copying where what has been copied are features that are not purely functional. Indirect copying occurs where a defendant has no access to the drawing of the plaintiff but made his article by copying the article which the plaintiff manufactured from the drawing. Mr Pao submitted that a comparison of the two products puts one's mind in no doubt that no features, that are not functional, have been reproduced by the Defendant's products.

8. That case deals with the alleged copying by the defendants of an idea: the idea of wrapping a sleeve around 6 nested pots and the learned judge held that copyright infringement had not been established, there being nothing to copy other than the idea The drawings of the Plaintiff disclosed more than just an idea. They are drawings of the exterior part of the toy compact disc player. As to the requirement of copying the non-functional features before an infringement can be established, this is not a requirement under the Copyright Act 1956. I would decline to follow that judgment. Furthermore, as pointed out in British Leyland Motor Corporation Ltd v. Armstrong Patents Co. Ltd [1986] A.C. 577,the copyright in a drawing whose sole purpose was to serve as the blueprint for the construction of a three-dimensional article of purely functional or utilitarian value and with no aesthetic or decorative element was capable of being infringed by copying the three-dimensional article. It is not correct to attempt to separate the skills of the draughtsman into those which were purely "artistic" and those which were directed to giving the article its operational efficiency, perhaps at the direction of an engineer, and thus argue that if no use has been made of the former skills there will have been no infringement, (see, for example, the judgment of Lord Bridge at page 621).

Frivolous. Vexatious and Abuse of Process of the Court

9. In respect of the second limb of the application, the Defendant argued that before the present action was instituted, the Plaintiff initially complained of infringement of their copyright and registered design by the Defendant. Then it relied solely on the infringement of registered design. However, when it was pointed out that the registered design was invalid due to prior publication, the Plaintiff reverted to a claim on infringement of copyright and supplied the Defendant with 19 drawings which it said it would rely upon. When the Statement of Claim was formulated it was a claim on copyright infringement and the Plaintiff served five drawings together with the Statement of Claim. In a recent affirmation the Plaintiff disclosed for the first time a set of engineering drawings. The Defendant complained that the Plaintiff is attempting to search for a basis upon which to launch a claim on copyright infringement and it is an abuse of the process of the court.

10. Irrespective of what the Plaintiff had relied upon before the action, the present action is based on an infringement of the copyright of the five drawings. I cannot see how it can be described as frivolous, vexatious and an abuse of the process of the court in respect of the stand taken by the Plaintiff before the present case.

11. Regarding the new drawings, they are drawings of the interior of the Plaintiff's product, whereas the five drawings showed the exterior of the product. Again the matter cannot be said to be frivolous, vexatious or an abuse of the process of the court.

12. It is said that the same thing had happened in a previous action by the Plaintiff against another defendant. The Plaintiff originally relied on a set of 1993 drawings, which post-dated the production, and when faced with a striking out application, the Plaintiff at the last moment produced another set of 1991 drawings. The Plaintiff had explained the background of the other action. I do not see how the other case could assist the Defendant at all. The issue here is whether it is plain and obvious that the action is frivolous, vexatious or an abuse of the process. I am not satisfied it is so.

13. It is argued that the five drawings were invalid due to the lack of originality because they were only prepared after the prototype of the product had been created. I do not read Paragraphs 10 and 11 of the Affidavit of Mr Andrew Siu as saying that the drawings were made after the prototype was produced.

14. It is also said that a comparison of the products made by the Plaintiff and the Defendant will show that the two products are so different that no case of infringement has been made out. As the case of Leco Instruments (U.K.) Ltd v. Land Pyrometers Ltd. [1982] RPC 133 showed, what is at issue is whether there has been a reproduction of a substantial part of the drawings, a matter which is concerned with quality not quantity. Quality, being a matter of degree, falls to be determined on all admissible facts. On a visual examination of the two products, I can see that there are similarities and I just cannot say that there is no infringement involved.

15. I am not satisfied that the Defendant has made out a case for striking out the Statement of Claim. In the circumstances, the Defendant's application is dismissed with costs to the Plaintiff.