HAYCO MANUFACTURING LTD. v. WAI MING PRECISION MOULDING LTD. and Another

HCA2001/96

IN THE HIGH COURT OF THE

HONG KONG SPEICAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO.2001 OF 1996

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J U D G M E N T

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1. This is an unusual case because it involves in the main toilet brushes. One of the criteria for the protection of people's work is the originality of design and the artistic work which goes into that particular design and I confess before coming into this case, I have never realized that artistic work was involved in toilet brushes. I have thought, and I am sure most people do think, that a toilet brush is just an ordinary toilet brush, however, Miss Chow has very clearly set out in her opening, for which I am grateful, the legal position with regard to the protection which the law gives for people's work and originality - whether it be in a toilet brush or whether it be in a complex piece of sophisticated gadgetry.

2. The law on this particular case, it being a pre-ordinance case, is governed by the English Copyright Act. The copyright is claimed over drawings which were brought about by the plaintiff's employee. There is no doubt at all and it is not disputed that by virtue of s.3, the drawings are capable of being protected. The plaintiff has put its case on the basis that the design of the toilet brushes and another brush which I will refer as what is called ergonomic features. Again, I did not know what this was at all and as I looked it up in the Oxford Dictionary it said as follows :

"Ergonomic means design that can be conducive to efficient use."

3. This case involves essentially issues of fact. The background is as follows.

4. The plaintiff is a highly experienced brush-maker. He comes from a family of brush-makers and he runs a successful business and is obviously, in his field, exceptionally able. He started out from 1983 in a company called Donald Hay & Associates Ltd and he began working with the 1st defendant who is now a director of the 1st defendant. They had an agreement which was entered into in January 1992 which is not necessary to refer with regard to their method of operation. Mr Stephen Ng is the person who was originally making a number of items for the plaintiff. As I said this case involves issues of fact and the first matter is my conclusions with regard to the two main protagonists here, Mr Hay and Mr Ng.

5. As I said, I found Mr Hay to be highly experienced; he answered questions very skillfully, he knew most people associated with the brush industry and seems to me a perfectly honest and respectable person.

6. Mr Stephen Ng was a manufacturer of these various brushes. He has got qualifications and again is obviously experienced in his field, but unfortunately I do not accept his evidence on the main matters in this case for these reasons : the defendant was manufacturing a valuable product in the market place, hundreds of thousands of these toilet brushes were being produced by the defendant who was being paid on a piece basis. They broke up but it is not necessary to decide who was at fault. I disregard that and look at it quite objectively because in May 1995 there was a Deed of Cancellation and a few days later, the moulds and manifest were handed back by the 1st defendant. Within a few months, Mr Ng was contacting the plaintiff's customers advertising products which, in my judgment, when I looked at the photographs, appeared to me to be a photograph of the plaintiff's products. He, no doubt motivated by greed, realized he could make more money by competing with Mr Hay than by manufacturing for him. I do not accept his evidence on the majority of matters, I disbelieve him. As I said, it would be an amazing coincidence that a man who had been making these toilet brushes suddenly decided to manufacture something which is so similar to the eye that it was obviously done quite deliberately to cash in on the business of the plaintiff. It is a great pity, quite frankly, in this litigation he had not realized this from the word "Go". Keith J. heard an interlocutory application for an injunction nearly two years ago, in August 1996, and in a very carefully reasoned judgment came to the conclusion that there was clear prima facie evidence of infringement and granted injunctions against the defendants in respect of the swivel scrub brushes and these toilet brushes. It is great pity the defendants did not accept that decision. In my judgment, the matters that he has put forward are no more than excuses for deliberate copying.

7. The drawings of the toilet brush were done by Ms Camy Ng who was working for Mr Hay. He is not a draftsman and he asked her to do it. He said that as far as his toilet brush is concerned, which has a flat upper part going down to a rounded lower part before the brush head is, he was the first person to design this. The clip in the middle was important because it goes into the holder and the flattened shape at the front head features would make it attractive to the market. He said "he wanted it to be different, indeed, he said "I have to be different".

8. As I said, I was not terribly familiar with these sort of items, but I can well understand that when you are in a market place selling what appears to the layman to be common objects, it is perhaps more important for individual features to be protected because, indeed, it is those individual features which can distinguish them from the variety of competing articles. Whereas one is designing a sophisticated piece of machinery, it is easy to distinguish it from others but toilet brushes being fairly common. In my judgment, Mr Hay set out to create a brush which was different and indeed he succeeded. Obviously he had found a very good market, very very substantial sales and his brush, although similar to lots of other brushes as one would expect - after all toilet brushes only have a handle and a head - therefore I would expect it to have features common or similar to other products. However, when I compared the drawings with the articles which were produced, the defendant deliberately set out to copy them. There are some differences, the hook has disappeared and has been replaced by a hole. The shape of cavity on the handle is square in the drawing, it goes all the way to the shoulder, there is no thumb indentation and the hand ridges are slightly different. In my judgment, when I put them next to one another, they are strikingly similar.

9. The defendant, as I said, when he broke up with Mr Hay, obviously wanted to get the market for himself and sent out catalogues or letters showing a brush which he tells me that was a prototype, indeed all these were prototype. I do not believe him for one moment, I think these photographs which is at p.244 of one of the volumes, in my judgment, is a deliberate method of utilizing the plaintiff's products, I am not saying everyone of them, but insofar as the small brushes are concerned - the scrubbing brush and the toilet brushes - is a photograph. He says that these are prototypes, I do not believe them. He sets to demonstrate the colour that they were spray painted, I do not believe him on that. I think he is not telling the court the truth and these were an assembly of the plaintiff's products which it may well be, he thought, he would be able to manufacture. It turned out that he started manufacturing different items.

10. The point is taken by Mr Wu that there is no originality. In my judgment, there clearly was. Mr Hay used his own skill and judgment and expertise to design a brush which was different from his competitors and he obviously succeeded. It is said by Mr Wu that Camy Ng did the drawings and she was an employee. But the thought process was Mr Hay's mind, she was merely the method by which the thought process got onto the piece of paper, but the designs were the designs of the plaintiff, whoever drew them, whether it be an employee or an independent person, the originality came from Mr Hay; they were his designs and they are entitled to protection under the Copyright Act. In my judgment, as far as the toilet brushes are concerned, they had been flagrantly broken by the defendants seeking to cash in on a very good market.

11. The second brush is called the swivel brush it is really a floor brush and it was found by Mr Hay that this tipped over on occasions because the brushes on the market had the hinged portion which held the handle above the level of what is called the board which is the moulded part which holds the bristles. He wondered what to do about this and he looked at his own and other makes and he thought that it would be a good idea to, what he described as "lower the centre of gravity", in other words, put the hinged portion much lower in the brush head by putting two holes which would hold the hinge lower in the body of the brush. It is difficult in a judgment to describe the features without looking at the article, when one looks at his article, one can readily see what I am seeking to describe. He says this was unique. I am perfectly prepared to accept him. There is no evidence to suggest that he is not telling me the truth and he says it was a revelation and it allowed him to knock out most of the opposition. Indeed, as I said before, in this type of market where one is dealing with common place items, it is, I am sure, often the unusual feature which can distinguish one product from the other that enables substantial profits to be made.

12. Miss Chow has kindly given me a chronology of all the matters and the swivel brush came out about the end of 1994, just a few months before the parties broke up, and the defendant produced an article which, although having some slight differences, in my judgment, is a deliberate copy again of the drawings. It is strikingly similar to the plaintiff's, the important feature being the placement of this hinged portion. There are some differences between the Hayco drawings of the swivel brush produced : the underneath is convex whereas the side view of the defendant's brush shows it to be flat; there were certain ridges. Keith J. said he found those differences infinitesimal. I wholeheartedly agree with him, in my judgment, there are strikingly similar. The drawings for these came from Camy Ng, I do not accept the defendant's evidence that he designed these at all. It may be he did some drawings, it may be he helped out, but the originality or, put it in legal terminology, the artistic work and originality behind this was that of Mr Hay alone. The defendant had sought to get in on the act again and to profit himself by his actions.

13. There are two other matters which did not form the subject to the interlocutory injunction : one is called the scrubbing brush. This is shown on the photograph, I have no doubt at all it is a photograph of the plaintiff's brush and I think the defendant set out essentially just to copy Mr Hay. He, as I said, I think, assembled as many as Mr Hay's products as he could lay his hands on and photographed them. It may be it has caused Mr Hay embarrassment, whether it has caused money loss, I am not quite sure. But, in my judgment, I do not think it necessary to do anything about this scrubbing brush. It was copied by Mr Hay, although I accept in law that that in itself does not necessarily absolve him from protection under theCopyright Act, but the defendant never produced and I am sure the defendant never intended to produce the scrubbing brush. What he had done, as I said, was, I think, really a bogus advert that he sent out to, I think, entice the customers away. I am not concerned whether he was seeking to pass it off, may be he was, but that is not the action here. I have not got an action of passing off, I have got an action of copyright, so I do not think it necessary to come to any conclusion on this scrubbing brush. Miss Chow has taken instruction, I think the plaintiffs do not wish to give the appearance of taking an oppressive attitude in this case. They come to court, I am quite sure, to protect their good name and to prevent people such as Mr Ng for cashing in on their ideas. So the plaintiff is not pushing the matter with regard to the scrubbing brush.

14. As far as the little kitchen brushes are concerned which I have certain unique features, I have no doubt at all about that, equally I am sure that Mr Ng photographed Mr Hay's products and included them in the catalogue. However, when I do compare the drawings, Mr Wu had been able to point out three differences between the drawings showing no thumb space, the angle is not shown and no indentation. So when I do compare, although from a visual point of view they appear similar, on a strict analysis as I have to compare the drawings, on the balance of probabilities, I do not think that the plaintiff proved that the three items were copied from the drawings. I have no doubt, however, that the three items do have original features in them and those features would be entitled to protection under the copyright law and that if Mr Ng were to manufacture that, he may well found herself facing another writ but I am sure he will not do that. Whilst, therefore, I consider that Mr Ng is not telling me the truth when he said that these were prototypes, in my judgment, again it is not necessary for me to make any order in respect of those brushes.

Conclusion

15. So, my conclusions are that insofar as the two types of brushes, the toilet brush and the swivel brushes, by virtue of the features, were the subject of protection under the Copyright Act. The ownership of that is in Mr Hay's company and the defendants had deliberately infringed that copyright. I will therefore, subject to hearing counsel on any particular matter, make orders for permanent injunctions against both defendants. The 2nd defendant being really the marketing arm of the 1st defendant. I will make permanent injunctions for those two types of brushes. I will order them to deliver up any of the items which infringed and I shall order that the plaintiff is entitled to damages. What damages they are would be a matter, or unless it is agreed, can be a matter for evidence and submission. I do not think it necessary for a High Court Judge, quite frankly, to have to deal with that but I will be prepared to listen to any submissions.

Costs

16. The plaintiff has won the action and the costs should follow the event. I have not made specific orders in respect of two of these small brushes. Apparently a 'Calderbank' offer was made. It is great pity the defendants did not bother to accept it and prolonged this case, however I disbelieve him on all material matters. I do not see any reason why I should make a proportional costs order here. The plaintiff succeeded with costs to be taxed if not agreed.

17. The order of Keith J., of course, continues. In that order for costs he made three quarters the plaintiff's costs in the cause and a quarter costs in the cause for the defendant.

(R.A.W. Sears)

Judge of the Court of First Instance,
High Court