IN THE SUPREME COURT OF HONG KONG
BETWEEN KAMBROOK DISTRIBUTING PTY.LIMITED AND
KAMBROOK DISTRIBUTING PTY.LIMITED
Coram: Deputy Judge Barnett
Date of hearing: 12 to 16 November 1984
Date of delivery of judgment: 16 November 1984
1. This case involved three defendants. Shortly before Mr. Rogers closed his opening speech, settlement was reached with the 2nd and3rd Defendants. This now leaves the 1st Defendant only, and admissions have been made on behalf of the 1st Defendant.
2. Copyright infringement has been conceded and admitted in respect of three of the component parts of the article which is the subjectto this case. Copyright and ownership thereof have been admitted in respect of the two other parts but not infringement of that copyright.The other two parts with which we are still concerned are the handle and the lid.
3. The plaintiff in this case is, in Australia at least, a well-known designer and manufacturer of electrical household goods. In 1978,Mr. Bannigan, who gave evidence on behalf of the Plaintiff and who is the Managing Director of the Plaintiff Company, conceived theidea of converting an electric kettle into what is now known as an electric jug which has a multi-function; it not only boils water,it will heat food and it will poach eggs. His preliminary sketches which are to be seen in the Plaintiff’s bundle at page 72, sketchesin which his idea finally received some concrete form, eventually reached the market in the form of the Plaintiff’s product K10.
4. As I said what is in issue now is whether or not the Defendant has infringed copyright in respect of the lid and the handle of thePlaintiff’s product the K10.
5. On behalf of the Plaintiff Mr. Rogers contends that the handle and the lid cannot be divorced from the final product. Mr. Liao forthe Defendant says that they have to be looked at individually.
6. Mr. Rogers as I have said contends that the K10 really is one object, one product, and must be looked at as a whole, as was conceivedand designed by Mr. Bannigan and as is shown on p. 72 of the Plaintiff’s Bundle. It is not legitimate, Mr. Rogers says, to cut upan artistic work into its component parts. Mr. Rogers points to the Beza model, and he says, if you are to separate the handle fromthat model, then why not separate the spout as well, and that of course has not been done and has not been contended.
7. There was some argument about the handle that was made by Mr. Beza and there was contention as to whether or not it formed part ofone solid model, a jug body with a handle. It is quite clear from Mr. Stephens’ evidence, and I find as a fact, that the handle wasmodelled separately from the jug body by Mr. Beza. Not only was it modelled separately, it was modelled, as Mr. Stephens said, outof several parts which were glued together to produce the final model of the handle.
8. Mr. Rogers, rightly, says that the Plaintiff is not seeking copyright in all the small pieces which were glued together and whichmake the Beza handle. That would be wholly unrealistic. It was one composite.
9. Finally, Mr. Rogers prays an aid the amended defence; in para. 4a, as he points out, there is a reference to the Defendant’s utensilin the singular, and in para. 6 there is a reference to the Plaintiff’s product, again in the singular. This, says Mr. Rogers, illustratesthe Defendant’s approach to this case.
10. Mr. Liao contends that the handle and the lid should be dealt with separately. As he says, separate models were made, separate moulds,separate dies. Mr. Bannigan has said that the tooling drawings were probably made on one piece of paper. There is no real disputeabout that and I find as a fact that the tooling drawings for the various components of the K10 were made on one sheet of paper.But said Mr. Liao, even if that is so, the drawings were still separate ones on that sheet.
11. Mr. Liao has also prayed in aid the recent decision of Mantell J. in the Mike & Kremmel (1) case. That was a case involving a tin opener and Mantell J. had to consider whether or not there was infringement of copyright inrespect only of the handle and lever. In other words, the product in that case was divided up and dealt within respect of componentparts. I think, without knowing the full facts of that case, it only suggests there may be cases where it is appropriate to separatea product into its separate parts. In my judgment, the case before the court today is not such a case.
12. Indeed in my judgment I have no hesitation in saying that the Plaintiff’s product must be regarded as a whole. It would be whollyunrealistic, I think, in the circumstances of this case to separate it into its five component parts. The five component parts are,of course, the egg poacher, the suspended basket, the jug body itself, the handle and the lid. There is one other part, that is theheating element, but that is not a matter of contention before the court. So I refer only to the five parts.
13. Mr. Bannigan as I have said gave evidence on behalf of the Plaintiff. He gave his evidence, I thought, very fairly and when he wascross-examined he readily conceded certain points to the Defendant. His evidence most clearly was that he designed the K10 as a whole.It started, as he said, with the egg poacher, progressed from there and finished up as the final model which we see in court today.In the course of his evidence he was questioned about the Beza model. The Beza model was the first mock-up, the first time at whichMr. Bannigan’s idea, Mr. Bannigan’s preliminary sketches, were converted into three dimensions so that there could be a clear impressionof what the finished product would look like. When he was questioned about this Mr. Bannigan said, had Mr. Beza simply sent backthe jug body without the handle, that would have been of no use to him at all. He wanted to get the overall impression of what hisproduct was going to look like.
14. Careful examination of the evidence which has been given and of the K10 product, the Plaintiff’s product, also shows a very closecorrelation between the body and the handle. This was not, I think, referred to by Counsel in their closing speeches, but nonethelessI regard it as a very significant point in coming to my conclusion. Mr. Bannigan, it will be remembered, said that the two fixingscrews at the base of the handle are fixed into two bosses which are part of the jug body and which appear inside the jug body, underneaththe element. This he says, and he was not contradicted, was a novel idea. The design of the handle and the body were therefore invery close conjunction. It seems to me that in respect of the K10 the handle, although it was moulded separately, is as much a partof the jug body as the handles on the jugs or kettles, parts of Exhibit P4, where handles are actually moulded as part of the body.
15. It has been admitted by the Defendant that three parts of the Plaintiff’s product have been copied, that is the body, the egg poacher,and the suspended basket. By that admission alone it seems to me there has been reproduction of a substantial part of the Plaintiff’swork. That is the test propounded by the Copyright Act. Causal connection has been admitted. In my judgment, therefore, the Plaintiffis entitled to the relief which it seeks.
16. It may well be the case will go further. It may well be I shall be found to be wrong in my decision. I should not wish the partiesto be involved in further time and costs. I propose, therefore, to deal with the two items, the lid and the handle, separately.
17. Various authorities have been cited. I will not go through them in detail. Suffice it to say that they emphasize two points. First,they emphasize the law, that is the copyright protects not ideas but it protects the form in which those ideas are expressed. Secondly,I think, the cases emphasized that each case turns on its own facts. One very important point, which emerges from all those cases,some of which I shall mention, is that a first impression is not necessarily a good guide. I have been referred to the Swish (2) case and I have been directed in Swish case to the photograph which appears on page 564 in which the interior latches are depicted.The Defendant’s interior latches are joined whereas the Plaintiff’s are separate. The Defendant’s latches have pronounced ribbing.At first blush, therefore, there are not perhaps striking similarities yet after careful examination the court found in that casethat there are striking similarities between the Plaintiff’s and the Defendants’ products both as a whole and in the components.Then in the Catnic (3) case, which concerned the design and the manufacture of lintels, one might have thought that there had been infringement of the Plaintiff’scopyright. That was found not to be so. These cases, I think, underline that there must be a careful examination of the product ineach case:
18. Turning then to the Plaintiff’s handle. The Plaintiff through Mr. Bannigan had an idea for the handle. That idea was translatedfirst by the drawings and by the finished product into what is a D-shaped handle, an integral part of which is a housing for theelectrical heating element and that housing incorporates a hexagonal window. In the Plaintiff’s handle that hexagonal window fitsover the control part of the element. That prevents the element from rotating inside the body of the jug. If it did not do that,if the element rotated, then the hot element will come into contact with. plastic, and disaster will ensue.
19. That was Plaintiff’s idea, which took its first form on p. 72 of the Plaintiff’s Bundle. If we look at the handle which is depictedon p. 72 and compare it with the finished form, which is in court, of the Defendants’ handle, I think I need say no more than thatI find it very difficult to see any similarity other than in the idea. Mr. Roger’s contention that its intended function must notbe disregarded, I think, does not help him over the drawings. The drawings of the handle, the preliminary sketches, were succeededby the Beza model, by tooling drawings by moulds and dies, and resulted in the finished product.
20. I now compare the two finished products. Mr. Stephens who gave evidence on behalf of the Plaintiff said that the Defendant’s handleappears to be the smaller brother of the Plaintiff’s handle. Mr. Bannigan for his part conceded that there are cosmetic differencesbetween the two handles. What he said was that he is anxious to protect three matters in respect his handle. There has, I know, beensome dispute about the number of matters he is seeking to protect. When I say 3 matters, I think they will be obvious and there willbe no dispute about them. He seeks to protect, first, the covering of the electric heating element; secondly, the hexagonal windowin the cover or housing of the heating element, that’s the hexagonal window to which I have already referred and which prevents rotationof the heating element; and thirdly, the way in which the handle is fixed to the body of the jug. It is affixed by 3 screws; thereis a sheer screw at the top, securing it to the body of the jug. The sheer screw was arrived upon after the Beza model had been made,in place of a horizontal screw. There are 2 screws at the bottom of the housing which connect it to the body of the jug, securedto the bosses to which I have already referred.
21. Mr. Liao rightly says the handle is a commonplace product. I have been referred to a number of cases, including the case of Kenrick (4), from which it is clear that the courts impose a very strict standard indeed when it comes to infringing copyright of such a product.
22. Visually, I am bound to say, I am unable to find any reproduction of a substantial part of the Plaintiff’s handle. The Plaintiff’shandle is characterised by large, bold, vertical ribbing on the grip; it has a right-angled shoulder at the top; the housing forthe control of the element is square. The Defendant’s handle has no ribbing on the grip; it has a sloping shoulder; and it has around housing for the control.
23. Both housings have a hexagonal window. This shape is dictated by the standard shape of the control on the heating element. The Plaintiffshousing grips the control itself to prevent rotation of the element. The Defendant’s housing grips not the control but the plug whenit is inserted into the control to provide power. So rotation is prevented by the plug.
24. In my judgment what has been copied is not, in copyright terms, the form of handle but the idea of a combined handle and cover. Iwould therefore find for the Defendant.
25. As to the lid, much of what I have said about the handle is applicable. However, Mr. Bannigan’s sketches on p. 72 portray nothingmore than the idea of a cover for the jug, circular in shape. I see no similarity between the sketch of the lid and the Defendant’sproduct.
26. Mr. Banningan said that the most important features of his finished lid are the measurements, in particular the diameter and overallheight. He conceded, however, that there are differences in appearance. What he called cosmetic differences.
27. With respect, apart from a basic saucer shape, I can see little similarity. The handles, or knobs, and there must be one in orderto lift the lid, are different in shape. The Plaintiff’s lid simply sits on the rim of the jug; the defendant’s has an additionalflange which grips the rim of the jug. These latter features have their own advantages and disadvantages. The Plaintiff’s lid iseasy to remove but falls off more easily when pouring; the Defendant’s lid does not fall off but is more difficult to remove andcould cause hot food or liquid to slop over.
28. Again, in respect of the lid, I would find for the Defendant.
29. For completeness, Mr. Stevens said that if a man making the Defendant’s handle used features of the Plaintiff’s handle, the man wouldhave saved time and effort. That evidence is too imprecise. Therefore, the fact that the Defendant has not chosen to give evidenceis irrelevant. It was not, in my view, necessary for the Defendant to have explained its design and development process.
(As this judgment has been reconstructed from a defective tape and brief notes, I shall be happy to hear counsel onany errors or omissions which they consider serious).
(1) Mike & Kremmel Ltd. and anr. v. Chi Shing Industrial Co. Ltd. Action 4049 of 1984.
(2) L. B. (Plastics) Ltd. v. Swish Products Ltd. (1979) R. P. C. 551.
(3) Cantic Components Ltd. & anr. v. Hill & Smith Ltd. Fleet Street Reports (1978) 405.
(4) Kenrick & Co. v. Lawrence & Co. XXV Q.B.D. 99
Mr. Anthony Rogers, Q.C., (Messrs. Simmons & Simmons) for Plaintiff.
Mr. Andrew Liao & Mr. C. Luk (Messrs. Johnson, Stokes & Master) for 1st Defendant.
Mr. Clement Luk (Messrs. Howell & Lo) for 2nd & 3rd Defendants.