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ORIENTAL PRESS GROUP LTD v.

APPLE DAILY LTD [1998] HKCFA 19; (1997-1998) 1 HKCFAR 208; [1998] 2 HKLRD 976; [1998] 4 HKC 131; FACV6/1998 (28 September 1998) JUDGMENT ____________________ Chief Justice Li : 1. I have read the judgment of Lord Cooke and agree with it. For the reasons which he gives, I would allow the appeal and make the orders he proposes in his conclusion including the orders as to costs. I also agree with the observations made by Mr Justice Litton PJ and Mr Justice Bokhary PJ. Mr Justice Litton PJ: 2. I agree with Lord Cooke's judgment, and with Mr Justice Bokhary PJ's observations concerning the award of damages under s17(1) of the Copyright Act 1956 on the basis of a notional licence fee. 3. Damages under this head are compensatory: The award is intended to put the injured party in the same position as if the wrong had not occurred. Copyright gives to the owner the exclusive right to control and exploit the subject-matter, and use by the tortfeasor without licence represents an invasion of those rights. Where such invasion is by a rival in business - one who competes in the same market - the consequences are obviously more serious and damages should, as a matter of common-sense, be liberally assessed. But, once the criterion taken for assessment is that of the willing licensor and licensee, then the fact that the owner would not normally (acting not unreasonably) have given a licence to the tortfeasor is simply one of the factors to be taken into account: The fact that the subject-matter represents a 'scoop' for the owner is another: These are all within the context of notionally willing parties acting reasonably. 4. It is worth emphasizing that, in this case, it was common ground throughout that the basis of assessment is that of the willing licensor and licensee. But, as was pointed out in the course of argument, there could be situations where an owner of the copyright, acting reasonably, would not have licensed the tortfeasor at any price; in such a situation an assessment based upon a notionally willing licensor and licensee would have been inappropriate. In this regard the case in the Federal Court of

Sing Pao Newspaper & Publications Ltd [1994] 3 HKC 244. I concur in the reasoning and the result embodied in Lord Cooke of Thorndon's judgment. Cheung [1990] 17 IPR 69. It is unnecessary to consider whether their results could have been reached even upon a proper approach free from the concept of a premium. The respondent reproduced one of these photographs in an issue of its magazine. I see no reason why. I agree that this appeal should be allowed to the extent therein stated. 6. the court's approach in Autodesk Australia should not be adopted. he would probably not have copied the work if forced to obtain a licence. Mr Justice Ching PJ : 7.Australia cited in the course of argument. which paragraph reads: " The appellant was the owner and publisher of a magazine known as Playboy. and that of the District Court in Kemp v. Those two decisions are: that of the Court of Appeal in PBI Publications (Hong Kong) Ltd v. It owned the copyright in a collection of artistic photographs of a female model. I agree with the orders proposed in Lord Cooke's judgment. For the reasons given by Lord Cooke of Thorndon and Litton and Bokhary. in a similar case in Hong Kong. The evidence indicated that because of the small size of his sales. 9. The . v. There the copyright related to computer software and the tortfeasor supplied pirated reproductions free of charge to his own customers as an inducement to buy personal computers from him. What little I propose to add is simply by way of expanding upon such concurrence. Autodesk Australia Pty Ltd. Marks Hundred Co. and the fact that he indiscriminately gave away copies of various programmes without inquiry as to the needs of purchasers. PJJ. Mr Justice Bokhary PJ: 8. and pertains to the two Hong Kong decisions each of which proceeded upon a "premium" approach. The background to the PBI case may be taken from the opening paragraph of its headnote. which approach this Court respectfully but unanimously feels unable to support. The assumption of a notional willing licensee was. Ltd [1987] 2 HKC 157. in the circumstances of that case. Both involve damages for copyright infringement awarded on the basis of a notional licence fee. 5. provides an interesting example. inappropriate. There the judge treated the damages as being "at large" and made his award as if he were a jury.

And that. is what tempted the Court of Appeal into following the course of simply adding a premium to that sum of $5. 13.. at p.what it called the "normal licence fee". it would nevertheless have done so on payment of a premium. while there was no specific evidence as to what amount the appellant would have charged the respondent by way of premium over and above a normal licence fee for the use of the photograph. covers both cases where there have been licences. and those where there have not". it is tolerably clear to us that although the appellant would have been reluctant to sell the photograph to the respondent on payment of a normal commercial fee due to the fact that it regarded the respondent's magazine as being a down market publication that sold at a much lower price than its own magazine. . It alleged that the quality of the respondent's reproduction of the photograph was poor.appellant claimed damages for both infringement of copyright and for conversion. we have come to the conclusion that an overall award of $7. That enabled the Court of Appeal to discover . I suspect.At p.or at least to think that it could discover . Where damages for copyright infringement are awarded on the basis of a notional licence fee or royalty.The flaw in that approach lies of course in its resort to a premium. the court begins of course by looking at what the defendant actually did.000. this was said: "." 10. and is therefore the sum to be awarded by way of infringement damages... But it must be remembered that (as Lord Wilberforce said in General Tire & Rubber Co. Firestone Tyre & Rubber Co.Later. Ltd [1976] RPC 197 at 214) "the true principle . That price then represents the notional licence fee or royalty.." 11. and sought an account of profits against the respondent." 12.500 would meet the justice of this case. v.000 in order to cater for the plaintiff's reluctance to permit the publication in a down market magazine of a photograph which had appeared in its own magazine..161 H .I Macdougall J said this in the course of giving the judgment of the court: ".. It asks itself what the parties would have agreed as the price for what the defendant did if they had entered into negotiations beforehand and had concluded what would have been a reasonable bargain in all the circumstances. Then the court moves on from the actual to the notional. In the PBI case there was unchallenged evidence that the plaintiff had once sold a similar photograph for $5.162 E.

were published in a Japanese magazine. It is not a question of adding a premium to the price under an agreement attributed to willing parties neither of whom are either keen or reluctant. 17. The defendant. Hill & Smith Ltd [1983] FSR 512 at p. by using the highly successful patented construction". So although the negotiations are notional.221) "bargain as they are.. In this connection. unreported). His Honour Judge Downey said: ". 16. The notional licence fee in the present case should reflect the price-enhancing fact that a valuable "scoop" was being shared with a rival publisher. And the terms of the bargain to be attributed to the parties reflect that reality. published those photographs in its own newspaper. but I am not persuaded that it is as high as 400%. The notional negotiators are taken to (as Lord Wilberforce pointed out in the General Tire case at p. And so is business rivalry such as that which exists in the present case.253A.14. 15. Kemp's case. Putting commercially useful material into the hands of a competitor carries a commercial downside legitimately to be offset by a payment of money. with their strengths and weaknesses. He said that "the rate of royalty which would have been reasonable for the defendants to pay must reflect [the] advantage of entering the market in competition with the patentees. I do have some evidence as to what would have been charged over and above a normal licensee fee. accompanied by texts and captions in Japanese. I turn now to the other Hong Kong case. Again the background may be taken from the first paragraph of the headnote.533. who were the market leaders. it is worth noting how Falconer J put it in Catnic Components Ltd v. their context is taken from reality. Some of his photographs.. I think that I should depart from the 50% premium apparently applied by the Court of Appeal in the PBI case (CA 91/87." 18. Their business rivalry goes to the price at which both parties acting reasonably would be willing to contract in all the circumstances. Commercially sound reluctance of the kind which existed in the PBI case is relevant to the price which could reasonably be demanded. But being satisfied that the plaintiff would not . in the market as it exists". which paragraph reads: " The plaintiff was a freelance professional photographer who had resided in Hong Kong for three and a half years. At pp 252 I . a newspaper publisher in Hong Kong.

19. I am satisfied that the plaintiff would probably have refused to grant a licence to the defendant. since he has never sold photographs to newspapers in Hong Kong. in my judgment. And nowhere in his judgment does the judge suggest that such refusal would have been unreasonable." 20. Indeed his findings in this regard positively suggest the opposite. be assessed at a rate which is higher than that adopted in the PBI case." In the result His Honour adopted a 100% premium. He normally sells to major magazines. However the position is different if the evidence discloses that his unwillingness to license at any or any realistic price would have been reasonable.250 E . without attributing unreasonableness to either party. So if the evidence discloses that the plaintiff would have been unwilling to license at any or any realistic price because he would have been unreasonable. it is assumed that the parties are willing and reasonable. It is one thing to assess damages by way of an agreement which is fictitious only in the sense that it had not actually been made. Such fiction would nevertheless be related to reality if the court believes that the parties would have entered into that agreement if they had negotiated beforehand and had done so reasonably. Damages were assessed on the basis of a notional licence fee. The court simply attributes reasonableness to him.F: "In the present case. it does not believe would have been made. the judge proceeded on the basis that the plaintiff would not have agreed to grant the defendant a licence. . and that dictates an assumption of willingness on his part. 21. But that was not done on the basis of an agreement which the court believed that the parties acting reasonably would have made. Under the notional licence fee or royalty basis of assessment. and because the print quality of newspapers is poor and the exposure (or readership) is different. that does not stand in the way of the assessment. It is another thing altogether for a court to proceed on the basis of the price under a notional contract which. So the mere adoption of a premium is not the only unsatisfactory aspect of Kemp's case. it may well be that some basis of assessment other than that of a notional licence fee or royalty ought to be adopted. As can be seen from the passage in his judgment quoted above. There is also this. For he says this at p. In such circumstances.have given a licence to the defendant. the premium for the defendant's infringement of his copyright must.

No one would ever query my admission that my brother Litton of course put the point with far greater cogency than I have managed to achieve. but perfection is not always possible. And I entirely agree with what Mr Justice Litton PJ said in the course of the argument when he warned of the danger of vain quests for perfect precision counter-productively resulting in inordinate delay and expense through which litigants would lose the cost-effectiveness of practical justice. Precision is a highly desirable thing. initially before the Court of Appeal and now in this Court.) are reported in [1997] 2 HKC 515. and the hearings before him were conducted on affidavit evidence without cross-examination. By leave of this Court the plaintiffs in proceedings brought in the former High Court of Hong Kong appeal from a decision of the Court of Appeal dismissing an appeal whereby they challenged as insufficient the amount of damages awarded to them by Rogers J. Lord Cooke of Thorndon. for breach of copyright. It should be something reasonably straightforward. Nothing turns on that separation.A. It is convenient to refer to the plaintiffs together as Oriental. The real issue is whether HK$8001 is an adequate overall award for breach of the copyright in the photograph and the layout. that the defendant is liable to the plaintiffs for breach of copyright and that an injunction should issue has not subsequently been challenged. The Judge had ordered a speedy trial. it is only the Judge's decision on quantum that has been in question. . both brought against the same defendant (Apple) as the proprietor and publisher of a local Chinese language newspaper Apple Daily. the (unreported) decision of Rogers J. The High Court judgment on damages and the Court of Appeal judgment (delivered by Godfrey J. NPJ : 23. or even desirable. in the present appeal to attempt to spell out what form such other basis of assessment might take. The first plaintiff is the owner and publisher of a weekly Chinese language magazine Oriental Sunday and has been found to be entitled to copyright in a colour photograph which appeared on the front cover of an issue of the magazine as hereinafter explained. The first hearing concerned liability and an injunction. 24. There are two actions. I believe. The second hearing concerned damages. a tolerable if somewhat pale representation of the original. But my narrative is.22. The Judge awarded a total of HK$8000 for damages for breach of the copyright in the photograph and a nominal HK$1 for breach of the copyright in the layout. It is not necessary. on behalf of himself and Wong and Pang JJ. The second plaintiff is a subsidiary of the first plaintiff and has been found to be entitled to copyright in the layout of that front cover. But I will say this.

Rumours that she was pregnant had been circulating in Hong Kong. including Huang Fei. explanatory captions (in Chinese) reinforced this interpretation as follows : EXCLUSIVE CLOSE CONTACT LOVE COMES FIRST-REFUSES TO HAVE AN ABORTION. The issue of Oriental Sunday for Sunday 6 October was in fact on sale on Saturday 5 October. otherwise Fay Wong. Pun Siu Shuen is a reporter employed within the Oriental group of companies.25. 8cm by 12cm. Huang Fei. is a celebrated pop singer. where she saw Huang Fei seated and partly covered by a blanket. evidently regardless of any question of the subject's consent. The film was immediately flown back to Hong Kong . of the Oriental Sunday front cover. Pun Siu Shuen resolved to try to take a revealing photograph of Huang Fei. It was of a group of people. but after the aircraft arrived in Beijing airport the reporter contrived to take one surreptitiously from a discreet distance. and a blown-up version of the part of the photograph showing Huang Fei was used for the front cover of the issue of Oriental Sunday dated 6 October 1996. when the calling journalist met with a brusque reaction. HUANG FEI CHOOSES TO BECOME A MOTHER!AND NEWSBREAK : 5 MONTHS PREGNANT. The basic facts are not in dispute. albeit in reduced size. The issue of Apple Daily published on 6 October included. a story headed HUANG FEI'S PREGNANCY EXPOSED OUR JOURNALIST'S SLANGED AT BY DOU WEI OVER THE PHONE. Other reporters on the plane told her that they had seen Huang Fei getting on the plane and that from her appearance they thought her to be pregnant. 26. The amplitude of figure was consistent with pregnancy. She did take a photograph but it was chiefly of Huang Fei's hand. BACK IN BEIJING AWAITING FOR CHILDBIRTH. Accompanying the Apple Daily story was a complete reproduction in colour. Apple Daily's Editor (Entertainment) : . The story began by describing the Oriental Sunday picture and included an alleged chronology of a relationship between Huang Fei and Dou Wei and an account of telephone calls by Apple Daily to Dou in Beijing. hastily put up before the camera. On or about 2 October 1996 she was travelling economy class by plane to Beijing on an assignment. The reason for this copying is frankly described in an affirmation made on behalf of the defendant by Wong Kim Man. in the bottom right hand corner of the front page of its entertainment section. she intruded into the first class section. 27. They were of interest to readers of Oriental Sunday and Apple Daily. rival publications catering for readers of similar tastes. waiting for their luggage. After a fruitless survey of the business class section of the aircraft. Huang Fei also specifically asked not to be photographed.

K. 2 of 1997). (3) Where in an action under this section an infringement of copyright is proved or admitted. Readers of the Apple Daily were in no way misled that the report was the exclusive efforts of the employees of the Defendant. Designs and Patents Act 1988) and the Hong Kong Ordinance of 1997 the express right to conversion damages has been discarded. following judicial comments that section 18 could operate harshly upon defendants : see Infabrics Ltd v Jaytex Ltd[1982] AC 1 at 18. As a newspaperman for a daily paper. 26. As can be seen from exhibit "WKM-1". by way of damages. The reproduction of the entire front cover of the Oriental Sunday magazine that accompanied my report was simply to add credibility to the "exclusive report" of the Oriental Sunday and to pay compliments to the Oriental Sunday for their "Scoop" story and advertising the magazine to the readers of the Apple Daily. These statutory provisions.. The Defendant has not derived any benefit therefrom. I have simply reported the news that in the then current issue of the Oriental Sunday magazine. formerly extended to Hong Kong by certain Orders in Council. having regard (in addition to all other material considerations) to (a) the flagrancy of the infringement.. have now been superseded by the Copyright Ordinance (Ordinance No.5. The portions of sections 17 and 18 of the Act of 1956 relevant to the present case are as follows 17. injunction. . accounts or otherwise. It is noteworthy that in both the current United Kingdom statute (the Copyright. infringements of copyright shall be actionable at the suit of the owner of the copyright. shall be available to the plaintiff as is available in any corresponding proceedings in respect of infringements of other proprietary rights. 6. there was this "exclusive report" on Miss Huang's pregnancy and have fully acknowledged that the source of my report was the said magazine. and . simple and direct. and the court.) and conversion damages under section 18 of the same Act. The plaintiffs claimed infringement damages under section 17 of the Copyright Act 1956 (U. There was never any intention on my part or on the part of the Defendant to copy or adapt any of the materials or photographs in the Oriental Sunday magazine for the use of the Apple Daily in a manner prejudicial to Oriental Sunday.(1) Subject to the provisions of this Act. this was indeed the method I have adopted. and in any action for such an infringement all such relief. it is essential to bring any news that is of interest to the readers in a manner that is fast. . but transitional provisions in that Ordinance have the effect of leaving them applicable for the purposes of the present case. 28.

but that claim has not been pursued. put it in Sutherland Publishing Co.. The aim is.199. 18. Thus the case settled that the two sections gave cumulative.. delivered by Lord Porter. Contending that both sums are far too low.000 for infringement and HK$150. [1936] Ch 323 at 337 '. shall have power to award such additional damages by virtue of this subsection as the court many consider appropriate in the circumstances.J. as he would be entitled to if he were the owner of every such copy or plate and had been the owner thereof since the time when it was made : . v Caxton Publishing Co. v Caxton Publishing Co. A proposition often cited about infringement damages is that of Lord Wright M. and a longer passage to the same effect will be found in the principal speech. the appellants seek their replacement by HK$45. or such other sums as this Court may determine.. Ltd.. it does not in itself provide much guidance as to how to go about the task of assessment. or of any plate used or intended to be used for making infringing copies... while bearing in mind that. the owner of any copyright shall be entitled to all such rights and remedies. Ltd. is satisfied that effective relief would not otherwise be available to the plaintiff. in Caxton Publishing Co. as confirmed by Lord . v Sutherland Publishing Co. of course the plaintiff cannot get it twice over'. 29. in Sutherland Publishing Co.damages for breach of copyright and damages for conversion are complementary. '. That case went to appeal. in assessing damages for the infringement.. .(b) any benefit shown to have accrued to the defendant by reason of the infringement. Ltd. In the present case Rogers J. in respect of the conversion or detention by any person of any infringing copy. It will be convenient to consider the two heads in turn. awarded HK$5000 infringement damages under section 17(1). Ltd.. The plaintiffs had claimed also additional damages under section 17(3).000 for conversion. the measure of damages is the depreciation caused by the infringement to the value of the copyright as a chose in action'.R. not alternative. remedies but should be applied so as to avoid double damages for substantially the same loss. and together make up the totality of loss inflicted on the owner of the copyright .. the court. [1938] AC 178 at 197 . Ltd... Ltd. As well the Judge awarded HK$3000 for conversion damages under section 18. Infringement Damages : The Principles 30. As this is hardly more than a paraphrase in legal language of the statement that the copyright owner is entitled to damages representing the harm done by the invasion of his right. as MacKinnon L. [1938] Ch 174 at 204.(1) Subject to the provisions of this Act.

has been recognized in English law since at least Meters Ltd. even where there has been no history of the granting of licences by the plaintiff and no 'going rate'. the fair market value. That was a patent case. but what is more significant for present purposes is that their Lordships were unanimous in adopting as the proper approach.J. however. I think that General Tire is entirely supportive of a lump sum figure here. Nowhere has it been held to be . (2) loss of royalties by a licensing patentee where there is an established royalty rate. v Metropolitan Gas Meters Ltd. gave the opinion that what could reasonably have been charged for the permission would be in many cases the safest and best way to arrive at a proper figure. to find the sum of money which will put the injured party in the same position as he would have been if he had not sustained the wrong.to summarize his classification very briefly . was approved in the General Tire case. to disclaim any suggestion of laying down a secondary rule for the assessment of damages or tying the hands of future judges. The availability of the willing licensor . In General Tire itself a notional royalty per pound of infringing material was decided upon. Ltd. where Fletcher Moulton L. Nothing would be gained by lengthening this judgment with any detailed survey or list of these materials.willing licensee measure. Nowhere has it been questioned that this is one legitimate measure and often appropriate. [1976] RPC 197 at 212. The Lord Justice was careful. In developing this approach in the General Tire case Lord Wilberforce identified some of the main groups of reported cases as . This Court has had the benefit in argument of extensive citation by counsel of cases and writings in various Commonwealth jurisdictions and the United States which illustrate or discuss the application of the willing licensor . The judgment of Fletcher Moulton L. that a one-off lump sum is inappropriate for a one-off infringement such as occurred is the present case. however. whereas Lord Salmon saw it as in the third. (3) loss of notional royalties where there is no such established rate. certain lump sum settlements being dismissed as an unreliable guide because they had probably been influenced by the disputed validity of the patent.Wilberforce in the leading case of General Tire and Rubber Co v Firestone Tyre and Rubber Co. There was no suggestion. (1911) 28 RPC 157 at 165. in the circumstances of that case.(1) loss of profitable sales by a manufacturing patentee. On the contrary. subject only to any question of additional damages and any problem that may arise in cases where the statutory right to conversion damages still applies. but the principles applied in it are equally applicable in copyright cases. 32. The General Tire case appears to have been treated by the majority of the House of Lords as in or at least close to the second class.willing licensee approach.J. 31. what would have been agreed between a willing licensor and a willing licensee : in other words.

There the parties were in competition for a contract to supply carpet to a hotel. (1992) 4 NZBLC 102. It is to be noted that willing negotiators. as in the Feltex case. Indeed the old statute in section 17(3) and the current Ordinance in section 108(2) expressly authorise additional damages in cases within the scope of those provisions. are each willing to negotiate with the other . 913. from personal antipathy or some form of prejudice) that circumstance may tell against adoption of the willing licensor . or both sides. are postulated. in the actual bargaining positions of the parties. for example. 33. with their strengths and weaknesses. cited. which Mr Liao S. Nor is there any claim for an account of profits (which could only be awarded as an alternative to damages : see the Caxton case [1939] AC at 198). for example.they bargain as they are. I may perhaps be forgiven for taking Feltex Furnishing of New Zealand Ltd.willing licensee test. one assumes. so as. The defendant's contention that damages should be assessed on a licence fee basis was rejected. It is quite another thing to reject matters (other than any doubt as to the validity of the patent itself) of which either side.C. For an example of a case where it was found to be an inappropriate measure. The defendant won the contract by dint of using the plaintiff's design in breach of copyright. in the market as it exists. v Brintons Ltd. to reject as comparable a bargain made in settlement of litigation.compulsory or invariably the best method of reaching a fair figure. would necessarily and relevantly take account when seeking agreement. as in other fields of valuation where this time-honoured measure is . It is one thing (and legitimate) to say of a particular bargain that it was not comparable or made in comparable circumstances with the bargain which the court is endeavouring to assume. As already mentioned. At all stages of the present case it has been common ground between the parties that a fair licence fee approach should be adopted. additional damages are no longer sought. It follows that the fair price cannot be increased because in fact the notional licensor would never have granted a licence. A succinct and authoritative formulation of the applicable principle of assessment is contained in the speech of Lord Wilberforce in General Tire at 221 The "willing licensor" and "willing licensee" to which reference is often made (and I do not object to it so long as we do not import analogies from other fields) is always the actual licensor and the actual licensee who. 34. Nowhere has it been said that when adopted it is necessarily exhaustive of the damages. but once it is accepted that the test is to be adopted willingness must be presumed. If based on rational grounds (as distinct. An award related to the profit which the plaintiff would have made if its own tender had been successful was upheld.

The Court did accept. has a large circulation. rightly rejected a submission that the fair remuneration basis should apply only where the owner of the copyright would have been willing to grant the defendant a licence. So a newspaper which has a 'scoop' photograph may reasonably expect to receive more for a licence to copy. But he arrived at a figure so low . per Macdougall J. did seek to adopt it.HK$5000. On the other hand the actual parties and the strengths and weaknesses of their positions have to be considered. Rogers J. [1987] 8 HKC 157 accords in substance with the principles already stated. There the District Court Judge.000 copies. Ltd. that what it called a premium (of 50 per cent) should be added to a normal commercial fee because the appellant. than if the photograph had been of no special interest to potential readers. no doubt Oriental Sunday. 35. there is no point is speculating about whether the same result could possibly have been reached for different reasons. PBT Publications (Hong Kong) Ltd v Marks Hundred Co. Something should be said about two Hong Kong cases cited in argument. Applying the Principles 36. would have been reluctant to deal with what it regarded as a down-market publication selling at a much lower price than its own magazine. I see that decision as in essence assessing a fair market price as between the respective publications. which is less than s£500 and less than US$700 . especially from a competitor. however. the publisher ofPlayboy (Chinese edition). It is perhaps more doubtful whether the addition of a 'premium' of 100 per cent in Kemp v Sing Pao Newspaper and Publications Ltd [1994] 3 HKC 244 can be justified.applied. however. if and insofar as they reflect circumstances which a willing licensor and a willing licensee would reasonably take into account. Nor does it seem possible to point to any circumstances which would make the notional fair licence fee approach inappropriate. appears to have put his judgment on the ground that the plaintiff would not have given a licence to the defendant (see the report at 252-3). The case was decided on its own facts. not compensatory. as sought by both parties. while rightly rejecting as penal. Apple Daily has a print run of 300. The considerations influencing the plaintiff's attitude will be relevant. too.that I am driven to say that I cannot imagine that these two substantial commercial parties in notional bargaining would ever have agreed on it for this 'scoop' photograph. allegedly based on international trade practice. a claim for a 400 per cent charge. What is clear is that a premium can never properly be added merely for the plaintiff's unwillingness or reluctance as such. . not as importing a capricious or unjustifiably subjective demand by the plaintiff. And. There the Court of Appeal. There is no evidence that the sales of either Oriental Sunday or Apple Daily were affected by the photograph.

What motivated him. Apple Daily did not tell its readers that it was copying Oriental Sunday's photograph without permission. as copyright is after all the exclusive right to copy. where the Privy Council applied to a case of infringement of a registered design what . was that it was 'essential to bring any news that is of interest to the readers in a manner that is fast. but she is not a party to the proceedings and whether she or her child subsequently born have any rights to privacy which may have been infringed is not a question before this Court. Oriental Sunday was trumpeting that it had something exclusive. More importantly for present purposes. though. as he says in his affidavit in a passage not referred to in any of the judgments in the courts below. gave the Plaintiff and its Sunday magazine . a free advertisement'.With much of what the learned Judge says in his reasons for judgment I respectfully agree.. The Judge said that there was nothing disparaging of Oriental in Apple's use of the photograph : it was simply a faithful reproduction. In essence the Defendant. to have been the perspective of Huang Fei. For sharing that exclusivity. In fact. but it cannot go very far. where there is the first statement of the perspective in which the whole case was seen : 'These actions give all the appearance of being a storm in a tea cup'.. That the editor of an entertainment section of a paper such as Apple Daily would reasonably. 37. with respect. [1964] 1 WLR 711.) Ltd. Nor does theft cease to be such because freely acknowledged.. That is unlikely. citing Khawam v K Chellaram & Sons (Nig. 39. it could reasonably have commanded a truly substantial fee. The key to understanding why such a small award was made can be found as early as the second sentence of his judgment on liability.. In refraining from disturbing the Judge's award the Court of Appeal invoked familiar principles of appellate restraint in appeals from assessments of damages at first instance. have been keen to make immediate use of such a photograph is obviously a consideration which would have played a major part in negotiations between willing parties. but he appears to have been influenced by some considerations of little or no relevance and to have put aside or minimised some that were entitled to weight. simple and direct'. a legitimate point as far as it goes. 38. and in some degree therefore necessarily diminishing its reputation with readers for exclusivity and enhancing its rival's reputation for enterprise. 'The Apple Daily not merely gave full credit to the Plaintiff but really endorsed the Plaintiff's efforts by using a photograph of the front cover of the Plaintiff's magazine. of course. having regard to commercial considerations only. That is. it was certainly not the perspective of Wong Kim Man when on 5 October 1996 he seized the opportunity of pirating the rival publication's photograph.

41. very possibly taken or dealt with in circumstances of danger to the photographer or exploiter. mentioned in the evidence are of little or no help. The price agreed was £1000. actual or contemplated. which featured four of the photographs. it must be satisfied either that the judge applied a wrong principle of law (as by taking into account some irrelevant factor or leaving out of account some relevant one). that a number of transactions. Oriental Daily News used three of these photographs on its front page and also reproduced the front page of The Sun for 8 October 1996. or. I agree with Rogers J.had been enunciated more generally in Nance v British Columbia Electric Railway Co. On these authorities.e. The accompanying story in Oriental Daily News referred both in its heading and in its text to suspicions that these alleged photographs of the Princess and her riding instructor were a hoax. A photograph of one of the world's most influential statesman as his death approached. and Davies v Powell Duffryn Associated Collieries Ltd. before an appellate court can properly intervene. In particular one is not significantly helped by the fact that on or about 28 February 1997 Mr Liu of the agency M Photo told a representative of Oriental that the agency were 'thinking of charging' US$6000 for a non-exclusive one-time use of a photograph of Deng Xiao Ping on what was to be his death bed (which photograph Apple Daily had in fact used for an undisclosed sum). and Osenton v Johnston [1942] AC 130 at 138-9. is in an altogether different category from one of a pregnant pop star. This is no easy task. The 'inordinate' limb of this proposition corresponds broadly to the 'clearly wrong' criterion applied in appellate review of discretionary decisions in such cases as Evans v Bartlam [1937] AC 473 at 486. In the present case I cannot avoid the conclusion that there has been a wholly erroneous estimate of the damage. that the amount awarded is so inordinately low or so inordinately high that it must be a wholly erroneous estimate of the damage. as subsequently turned out to be the . For those reasons it becomes the responsibility of this Court to assess the infringement damages afresh. Ltd. 40. that the only transaction at all comparable that is specified in the evidence is one whereby under a contract dated 8 October 1996 (i. The video comprised a series of photographs of a young woman in her underwear romping with a man. I further agree with Rogers J. short of this. within a few days of the infringement now in suit) Oriental acquired from the daily tabloid The Sun of London the exclusive right to print pictures in Hong Kong of what was described as the Diana and Hewitt video. for the evidence of comparable transactions is meagre. [1942] AC 601 at 616-7. flowing essentially from a perspective which did not give weight to relevant considerations and overlooked or gave minimal weight to relevant ones. [1951]AC 601 at 613.

impress one as enthusiastic rather than convincing. Deputy Manager of Oriental's Legal Department. should be taken at no less than half that of the entire section.000.case. should be one third of its market value (HK$5 per copy) and that the market value of the photograph.000. Without doubt the latter is a decidedly better photograph : in colour : of a local or regional celebrity : and much more topical. On the other hand. which in fact occupies a small bottom-corner space on the front page of an entertainment section of twelve pages. and bearing in mind Lord Wilberforce's acceptance in General Tire that compensatory damages should be liberally assessed (see [1976] RPC at 212). I would reject the submissions in the first affirmation of Tam Shuk Fong. He said There were apparently 4 photographs on that occasion and the value of them for the four together for use in the press was put at £1. although in consequence they might occupy a reader's attention longer than the photograph of Huang Fei. that the appropriate value of the entertainment section of Apple Daily. Its authenticity was also beyond doubt. I see the £1000 figure as. 42. so far as the matter is relevant at all to infringement as distinct from conversion damages.000 can properly be estimated as fair compensation to Oriental for this particular infringement. in all the circumstances of this case.00. The evidence of the deponents for the parties differs on the comparative interest for Hong Kong readers of the photographs from The Sun and the airport photograph. These submissions. The Judge made use of that 'comparable' in a somewhat arithmetical way. He thought that as. Conversion Damages . only a starting point from which damages should be measured upwards. I think that a total figure of HK$30. I estimate the value in the present case of this photograph as $5. The story suggested that the affair had occurred ten years earlier.00. Weighing these differences as best I can. The photographs are black and white of extremely poor quality. 43. for they are no more. being very indistinct. they had not been seen before. 44. Being very generous to the Plaintiff and using this instance as some kind of measure and giving allowance for any discount for the bulk of the 4 as opposed to a single photograph. which in fact makes up one fifth of the newspaper. the photographs would arouse interest far greater than a photograph of a pop singer in the Beijing airport waiting for her luggage. Striving to balance the competing considerations and arguments objectively. despite their age.

it would fall to be resisted. set aside in part the judgments in the courts below. Very modest though the HK$3000 awarded by Rogers J. while leaving standing the award of HK$3000 for conversion damages and the nominal award of HK$1. Chief Justice Li : 47. nor has any error been established in the Judge's approach. 60 per cent of their costs in the Court of Appeal and this Court.000 can be at best an approximation. no more need be said about it in this case.000 to Oriental for infringement damages. The plaintiffs should have their costs of trial and. I agree with the Court of Appeal that it has not been shown to be inordinately low. The HK$30. Moreover. At all events. Accordingly I would allow the appeal. . is.000 is a sufficient overall assessment of the plaintiffs' loss. in the light of the relative times occupied in argument by the two issues. This part of the case can be dealt with briefly. Mr Garland. doing justice to both parties and not giving rise to any concern on the score of double damages. a sum of HK$33. in considering this figure it is necessary to bear in mind the increased award of infringement damages. because the old statutory right to separate conversion damages has gone and the subject may be largely academic. who argued the case for Oriental with care and learning. allows the appeal and makes the orders set out in the conclusion to Lord Cooke's judgment. If there were any temptation to embark on a judicial thesis on this subject.45. Conclusion 46. described the theoretical problems of the relationship of infringement and conversion damages as 'appalling'. being unanimous. In my opinion. The Court. and substitute an award of HK$30. including those relating to costs.