In Sky King Machinery Engineering Limited v China Harbor Engineering Company Limited [2023] HKCFI 1516, the Hong Kong Court of First Instance held that the copyright of construction drawings for public fill sorting facilities are protected under the Copyright Ordinance (Cap. 528).

Background

This is a claim for copyright infringement with respect to a series of construction drawings for public fill sorting facilities (“PFSF”). Public fill is inert construction and demolition materials which are used for reclamation. Contractors would set up PFSF at public fill banks to sort public fill, which would then be transported to the land reclamation site for use.

The Plaintiff is a company which carries on the business of construction and engineering contracting. In 2003, it was the sub-sub-contractor responsible for a PFSF portion of the Government works project known as “Penny’s Bay Reclamation Stage 2”, for the reclamation for the expansion of Hong Kong Disneyland (“PB Project”).

In the course of the Plaintiff’s PFSF work under the PB Project, construction drawings for PFSF (“SF 2003 Plans”) were created based on the drawings and ideas of the Plaintiff’s employee, Mr Wong Tung Ping (“TP Wong”), and the PFSF installation was built based on the SF 2003 Plans. In some instances, modifications to the SF 2003 Plans were directed by TP Wong to reflect the situation on the ground (“P’s Installation”). The Plaintiff claimed that copyright subsists in both the SF 2003 Plans and P’s Installation and belongs to the Plaintiff.

The Plaintiff claimed that the Defendant copied the SF 2003 Plans and P’s Installation while generating construction drawings for the PFSF used for another Government project in 2012. Accordingly, the Plaintiff commenced proceedings against the Defendant.

The issues

Two of the main issues in dispute in this case are:

1.       Did the SF 2003 Plans satisfy the threshold of originality for copyright to subsist; and

2.       Did P’s Installation constitute artistic works under section 5 of the Copyright Ordinance (Cap. 528) (the “Ordinance”).

CFI’s Decision

Issue 1

The Defendant contended that the SF 2003 Plans were based on earlier drawings which were not originally generated by the Plaintiff, as PFSFs have been designed in this manner by participants in the construction industry for many years, and the design was dictated by the site constraints. Hence. the Defendant claimed there is no copyright subsisting in the SF 2003 Plans as they are not original works of the Plaintiff.

The court concluded that the test of originality is firstly, whether the work originate from the author, in the sense that it must not be slavishly copied from another work; and secondly, whether there is expenditure of more than negligible or trivial effort or relevant skill in the creation of the work. There is no requirement of novelty, usefulness, inventiveness, aesthetic merit, quality or value. In other words, the threshold is a low one.

Where a work makes use of materials obtained by the author from pre-existing sources, the court held that the true test is whether the same plan, arrangement and combination of materials have been used before for the same purpose or for any other purpose. If they have not, then the author is entitled to copyright. Even if the author borrowed much of his materials from others, a drawing may still qualify for copyright protection if there is originality in the way the materials have been arranged or collocated.

Upon examining the evidence, the court held that the SF 2003 Plans satisfied the threshold of originality for copyright to subsist.

Issue 2

The Defendant did not dispute that the SF 2003 Plans falls under the definition of “graphic work” under section 5 of the Ordinance, which includes drawing, diagram, map, chart or plan, and thus attracts copyright protection under the Ordinance. However, the Defendant contended that P’s Installation does not fall under the definition of “a work of architecture being a building or a model for a building”, as it was a temporary structure as defined in the main contract for the PB Project, and that “work of architecture” requires artistic quality, which P’s Installation did not possess.

Under section 5 of the Ordinance, “a work of architecture being a building or a model for a building” attracts copyright protection. “Building” is further defined as “includes any fixed structure, and a part of a building or fixed structure”. The Court held that a building or structure must be of such character as is usually erected upon, or constructed under, the ground and that in each case it involves something of substance, with an element of permanence.

The court held that since P’s Installation was constructed and remained on TKO137 between 2003 and 2007 (until it was dismantled), it had the necessary degree of substance and permanence required under the definition set out in section 5 and so it falls under the scope of section 5. How P’s Installation was defined in the main contract of the PB Project is irrelevant.

Further, upon examining the legislative history of the equivalent act of the Copyright Ordinance in England, the Court held that there is no requirement for “art” or “artistic character” for “work of architecture” under section 5.

Hence, the court held that P’s Installation was a “work of architecture” and thus protected under section 5 of the Ordinance.

Key takeaways

This case serves as a reminder that construction drawings are protected under the Ordinance, although they may not consist of artistic quality. Construction companies shall be mindful that although construction drawings might have been designed by participants in the industry in a certain manner for many years, they may still be protected by the Ordinance. Construction companies shall consider carefully before using drawings or plans generated by others.