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Phonographic Performance (South East Asia) Ltd v California Entertainments Ltd

Judgment Cited authorities 2 Cited in Precedent Map Related
Vincent
Judgment Date29 January 1988
Year1988
Judgement NumberHCA8093/1987
Subject MatterCivil Action
CourtHigh Court (Hong Kong)
HCA008093/1987 PHONOGRAPHIC PERFORMANCE (SOUTH EAST ASIA) LTD v. CALIFORNIA ENTERTAINMENTS LTD

HCA008093/1987

Copyright - permanent injunction may be awarded by a Judge in favour of owner of copyright in Order 14 proceeding for summary judgment - whether plaintiff's pleaded ownership of copyright if disputed a triable issue - evidential effect at interlocutory stage of statutory reversal of proof under s.20 of English Copyright Act 1956 and s.9 Copyright ordinance, Cap.39 - Held: 1. On facts dispute over ownership constitutes triable issue; 2. Unconditional leave to defend with costs of summons to defendant; 3. Defendant's Order 18 Rule 19 summons to strike out claim misconceived and dismissed with costs to plaintiff.

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

H.C.Action No.8093 of 1987

______________________

BETWEEN

PHONOGRAPHIC PERFORMANCE (SOUTH EAST ASIA) LIMITED

Plaintiff

and

CALIFORNIA ENTERTAINMENTS LIMITED

Defendant

____________________

Coram: Deputy High Court Judge Cruden

Date of Hearing: 29th January 1988

Date of Judgment: 29th January 1988

Date of Handing Down Reasons: 3rd February 1988

___________

JUDGMENT

____________

1. The plaintiff on 8th December 1987 commenced the present action against the defendant. The plaintiff alleged that it was the owner of that part of the copyright of 7 sound recordings which consisted of the exclusive right of public performance of those recordings in Hong Kong. The plaintiff further alleged that the defendant had infringed the plaintiff's copyright by causing those sound recordings to be heard by the public at the restaurant and discotheque business carried on by the defendant and known as the "California" situate at Lan Kwai Fong, Hong Kong. The plaintiff claims an injunction, damages and other relief.

2. On 29th December 1987 the plaintiff issued a summons under Rules of the Supreme Court, order 14, Cap.4 for final judgment. On 23rd January 1988 the plaintiff obtained an order amending its Statement of Claim. On 28th January 1988 the defendant issued a summons under Order 18 Rule 19 for an order striking out the Amended Statement of Claim. The two summonses have now come before me for determination.

3. I heard comprehensive submissions by Counsel for both parties under the order 14 summons but unfortunately the majority of those submissions related to issues which were at best peripheral and at worst irrelevant. The only substantial issue on this summons was whether the plaintiff was the owner of that part of the copyright alleged to have have infringed. In considering this summons it was common ground that I was only concerned with the 7 recordings referred to in the original statement of claim and am unconcerned with the subsequent amendments.

4. The law is well settled that for a plaintiff to obtain final judgment under Order 14, the Court must be satisfied that there is no triable issue. If the Court is satisfied that there is a good defence on the merits, or that there is a dispute as to facts which ought to be tried, or that a difficult point of law is involved, then a defendant should be given leave to defend.

5. The plaintiff submitted that paragraph 1 adequately pleaded ownership of the copyright and that paragraph 2 gave particulars of the 7 recordings protected by the copyright. Turning to the evidence, I was referred to the first affirmation of Mr. S.K. Ho who is a director of the plaintiff. In paragraph 2 of Mr. Ho`s affirmation he stated, inter alia, that the Hong Kong public performance rights of certain sound recordings are vested in the plaintiff. Mr. Ho went on to affirm,

"

I have checked the books and records of the plaintiff and confirm that the sound recordings which are listed in paragraph 2 of the Statement of Claim ("the said recordings") are sound recordings of which the plaintiff is the owner of the exclusive right of public performance in Hong Kong."

6. In relation to the evidence, Counsel for the plaintiff referred me to a number of statutory provisions which, in copyright cases, reverse the burden of proof and in his submission placed that burden on the defendant. I was first referred to Section 20(7) of the English Copyright Act 1965 which, by Order in Council, applies to Hong Kong - The Copyright (Hong Kong) Orders 1972 and 1979, Cap.29 App.III, DD1.

7. Section 20(7) provides if the label or other mark on a sound recording, states the name of the maker of the sound recording, or the year it was first published, or the country in which it was first published, the label or mark "shall be sufficient evidence of the facts so stated except in so far as the contrary is proven."

8. I was also referred to Section 9 of the Copyright Ordinance, Cap.39 which in relation to notarially authenticated affirmations, creates a statutory presumption that the contents of such an affirmation are true "until the contrary is proved." I find that Mr. Ho's first and second affirmations were notarially authenticated and that the statutory presumption under Section 9 arises as to their contents.

9. Counsel for the defendant took me to an affidavit of Mr. R.H. Kaufman, the Executive General Manager of the defendant. Paragraph 16 of the affidavit deposes to Mr. Kaufman's belief that the plaintiff has not demonstrated it has legal title to sue and that the defendant has the defence set out in the draft defence exhibited to his affidavit. Paragraph 1 of the draft defence, in the following terms, denies that the plaintiff is the owner of the copyright:

"l. Paragraph 1 of the Statement of Claim is denied. The plaintiff is put to strict proof with full discovery of the subsistence of copyright in all the sound recordings included in the plaintiff's alleged repertoire. If which is not admitted that copyright subsists therein, the plaintiff is put to strict proof with full discovery that the ownership of the copyright or any part thereof and inter alia that part which consists of the exclusive right of public performance in Hong Kong of all sound recordings included in the plaintiff's alleged repertoire is vested in the plaintiff. Further or in the alternative, the plaintiff is put to strict proof that it has legal title to sue as provided for under the Copyright Act 1956 as extended to Hong Kong or otherwise."

10. In addition to the evidence in the affidavits, Counsel for the defendant also drew the Court's attention to what, in his submission, was a contradiction between paragraphs 1 and 2 of the statement of claims. It was submitted that while paragraph 1 contained the bare pleading that the plaintiff was the "owner" of part of the copyright, the particulars in paragraph 2 listed under the record label heading, 3 different companies, namely London Records Ltd., CBS Records and Phonogram Ltd.

11. The alleged contradiction, it was submitted, was relevant to the statutory presumption under Section 20(7)(a), that a person named on the label was the maker of the sound recordings. The 7 sound recordings were produced and I note that printed on 6 of their labels is the name of one of those 3 companies. The position of the remaining recording of "Faith" and other titles, is different. The statement of claim pleads that it has a CBS Records label. On inspection the record label is in the name of "CBS/SONY" and includes an endorsement:

"All rights of the manufacturer and of the owner of the recorded work reserved. Unauthorised public performance, broadcasting and copying of this record prohibited. CBS/Sony Ltd., Hong Kong."

The dustcover also refers to CBS/SONY Hong Kong Ltd., and includes a note that application for a public performance licence should be addressed to the plaintiff. The dustcover states that copyright subsists in all sound recordings manufactured or distributed by CBS/SONY Hong Kong Ltd. but does not state that any copyright subsists in the plaintiff.

12. Dealing first with the statutory presumptions under Section 20(7) 1 hold that they raise presumptions in favour of the makers names, appearing on the labels. In the case of 6 of the 7 recordings those names correspond with the names listed in paragraph 2 of the statement of claim. The plaintiff is not...

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