"Tai Shing Diary Limited vs. Maersk Hong Kong Limited and others (HCA 2667/2004)"

Hong Kong
- Date of Judgment: 22 December 2006
- Before: Hon. A Cheung J

 

Summary

This was an Order 14 application (summary judgment) in relation to an alleged claimed for copyright infringement. The work in question was a desktop diary which the Plaintiff designed and compiled in 1992.

The Plaintiff (Tai Shing Diary) asserted that the diary included copyright protected artistic works and also literary works. The 1st Defendant (Maersk) was a former client of the Plaintiff between 1995 and 2002. In that period the 1st Defendant purchased a diary on a yearly basis which was customized for its own requirements. In 2003 Maersk (the 1st Defendant) requested that the 2nd Defendant supply a corporate diary for 2004. The 3rd Defendant (Ng Shun Ming) was a former sales representative of the Plaintiff and he was the sales representative and founding director of the 2nd Defendant. The undisputed evidence is that the diary was intended to be a close reproduction of the 2003 Maersk diary provided by the Plaintiff in 2003.

The issue in an Order 14 application is "whether the Defendant has an arguable defense."

There is no difference in the approach simply because the matters relate to intellectual property. Second, the court will not conduct a mini-trial on affidavit evidence.

Third, the burden is on the Defendant to show an arguable case or some other reason for trial.

Fourth, whilst it is true that where copyright infringement is alleged, issues such as originality and infringement depend on an evaluation of qualitative matters, but this would not mean that summary judgment cannot be granted.

The court will consider the facts and circumstances of each case. The court will undertake a detailed examination of the claimed copyright work and the allegedly infringing copy to see whether there is an arguable defence or triable issue in relation to questions of originality and/or infringement. Macmillan Publishers v. Thomas Reed Publications [1993] FSR 455. The mere fact that a court has to look at the works and do a comparison is not fatal to an application for summary judgment. That said, there are no cases where the question of originality or infringement, on the facts of the cases, could not be summarily deposed of on affidavits.

Originality

The Plaintiff claimed that there was originality and thus ownership in the literary works and artistic works in various sections of the diaries for 1993 to 2003. The literary works relate to the text and compilation of the sections entitled "World time", "International airport guide" etc… The Plaintiff also asserted that artistic works related to such sections as the "year planning chart" and the "notes" section.

The Plaintiff submitted a very detailed affirmation by its director (Ku Yu Sing) which explained who were the authors of the literary works and artistic works in question and how those works were first compiled and written and subsequently revised by these persons, for and on behalf of the Plaintiff. [para 19]

The Defendants queried whether copyright subsisted in the features of the diary. They argued that the works lacked sufficient originality in that they are common to all diaries and calendars. [para 21]

In respect of the literary works it was argued that insubstantial skill and labour had been expended on the works and in respect of the artistic works it was said that the design was a common and obvious layout. [para 21]

Judge Cheung said that as far as originality is concerned and the general requirement under Order 14 it is for the Defendant to provide particulars of his defense. Judge Cheung also said that given the statutory presumption he must assume that the statements made by Mr. Ku are true. The judge noted that the requirement of originality is a low one. Counsel for the Plaintiff (Winnie Tam, a very experienced senior intellectual property counsel) reminded the court that as a matter of law, "the work in question must originate from the author and must not be copied from another work. The author may draw on existing material, so long as more than negligible or trivial effort or relevant skill and judgment was expended in the creation of the work. The standard required is a low one but the effort must not be as trivial as to be characterized as a purely mechanical exercise." [para 23]

It was noted that "the degree of originality required for copyright to subsist is original skill and labour in execution, not originality of thought. Copyright subsists regardless of artistic merit. In the case of a diary, whilst there is no copyright in the concept of a diary, there is copyright in the distinctive compilation of the features in a diary". [para 26]

Court accepted that the test of originality had been satisfied in this case. Given Mr. Ku's affirmation the Defendant had to "adduce evidence to the contrary". There was an evidential burden on the Defendant to place material before the court to cast doubt on the truth of the statements contained in the relevant affidavit. In other words what is required is some arguable evidence to the contrary. [para 29]

In response to this the Defendants put forward alleged prior works which were said to be works which were at all material times available to the Plaintiff for copying. [para 32]

The Plaintiff 's counsel (Winnie Tam SC) argued that the "alleged prior works only served to demonstrate the endless artistic options that were available to a designer, and to rule out any possibility of the Defendants arriving at such closely similar designs without slavish copying." [para 35]

It was noted that the 1st Defendant's counsel did not even try to make an attempt to convince the court some of the prior works were substantially similar to the Plaintiff works.

The 1st Defendant's counsel argued that under cross-examination and with the benefit of discovery they may be able to challenge the Plaintiff's claim of originality. [paras 41-42]

Judge Cheung did not accept this point. The judge noted that no leave would be given to defend by arguing a case that is full of assumptions.

The judge assessed that the Defendants had not raised any triable issue on the question of originality.

The judged noted that "the pre-existence of similar idea or concept does not by itself prevent the Plaintiff or its predecessor from exercising independent skill, labour and judgment in coming up with the subject works". Although the artistic work may not be particularly unique or complicated their simplicity does not prevent them from passing the low threshold for claiming originality. [para 48]

On the issue of infringement the court accepted that the Defendant diary was a substantial reproduction of the Plaintiff's work. It was observed that the 2 nd Defendant did not deny copying from the Plaintiff's diary. The 2 nd Defendant did not assert that its diary was the product of independent design.

The court held that there was no triable issue on the question of infringement.

Decision of the Registrar of Trade Marks dated 10 March 2005 (unreported)

1 We suspect that the relationship between the parties and the fact that some issues were not contested by the defendants assisted the Plaintiff's case.

2 We note that the counsel Andrew Bruce is more well known for handling criminal matters and not IP matters.