@eLaw.com.hk by yip tse & tang, solicitors + notaries 葉謝鄧律師行

Copyright in the Cyberspace FAQ

Q: Do copyright laws apply to publications made on the Internet?
A: Yes. Anybody connected to the Internet can easily post messages on the world wide web through message board, chat room and newsgroup. Copyright laws equally apply to Internet publications despite its easy and convenient use and access.

Q: On what law copyright is based upon?
A: The Copyright Ordinance gives express provisions on copyright.

Q: Does the copyright owner has to register his rights in order to obtain the legal protection?
A: No. Unlike other intellectual property rights such as trade mark and patent, copyright does not require any registration. Under the Berne Convention, Governments should not set any registration procedures as a condition of copyright protection.

Q: What works have copyright protection?
A: They are literary, dramatic, musical or artistic works, sound recordings, films, broadcasts or cable programs; and typographical arrangement of published editions.

Q: Any particular criteria is required for getting legal protection?
A: The works should not be ideas. It must be an expression. The works must also be original and satisfy the criteria of fixation. Fixation requires a work 'fixed' on certain media such as a poem written down on a piece of paper, musical works recorded in a tape. Works stored in the hard disk of a web server satisfies the fixation requirement.

Q: Does it amount to infringement by uploading musical works e.g. a song of Nicholas Tse from a licensed CD to the Internet for public download?
A: A purchased CD is licensed for personal listening only. Uploading musical works on the Internet would copy the song onto the hard disk of the web server thereby duplicating the work. As the duplication is open for public download, it violates the licence. It is also likely that the uploader has committed the restricted act of making available copies for copying.

Q: Does it amount to infringement if I do not copy the news article word by word and I do not copy the entire content?
A: The copyright owner only has to prove substantial copying. Substantiality means quantity and/or quality of copying and is decided based on facts of the case. In law, word by word copying is called literal copying. However, non-literal i.e. indirect copying is still an infringement.

Q: Why mp3.com settled litigation cases with the musical copyright agents?
A: mp3.com's legal position is comparatively weak. There are previous cases decided by the American court similar to mp3.com's context. They have all decided in favour of the copyright owner. The Playboy v. Frena case related to uploading of gif files (digitised by scanning from Playboy magazine) on BBS. The Sega v Maphia case related to uploading of game programs on BBS for download. However, these two cases are not binding on the Hong Kong Courts.

Q: Will Napster face the fate of being closed down by the American Court?
A: Napster is not like mp3.com. Napster does not upload any musical works on the Internet by itself. Users download the computer program and have it installed at its own PC, enabling musical files exchanged and download which people of Napster.com does not play a part. It is like manufacturer producing double cassette for people making copies (CBS Songs v Amstrad); RIO manufactures mp3 player for people to copy their favourite songs onto the mp3 player. In both cases the copyright owners failed in their legal action. But it should also be noted that recently HP has settled a legal action by agreeing to pay a certain sum of money to the copyright agent for every CD Writer produced by HP. It is highly likely that Napster's case will be settled out-of-court by the parties by Napster agreeing to pay royalties to the copyright agents.

Prevention of Copyright Piracy Ordinance

The Ordinance sets out a statutory licensing scheme for the manufacture of optical discs in Hong Kong. The Ordinance also stipulates that all optical discs produced in Hong Kong have to be permanently marked with a code indicating their source of manufacture.

The Ordinance also contains extensive enforcement provisions. It empowers Customs officers to better monitor optical disc manufacturing plants in Hong Kong and prevents them from being used for copyright infringing activities.

The main provisions of the Ordinance are:

1. All business involved in the production of optical discs in Hong Kong will be required to obtain a licence from the Commissioner of Customs and Excise.
2. Manufacturing optical disc in Hong Kong without a valid licence from the Commissioner is an offence punishable with a maximum fine of HK$500,000 and to imprisonment for up to two years on first conviction. The maximum penalties will be doubled for second and subsequent convictions.
3. All optical discs manufactured in Hong Kong must bear a unique manufacturer's code indicating their source of manufacture. The codes will be assigned by the Commissioner of Customs and Excise. Fines of up to $100,000 and up to 2 years of imprisonment for producing optical discs that do not have the manufacturer's code marked on them.
4. Customs officers will have the power to inspect all licensed premises at all reasonable times without a warrant. They can seize, seal or detain any items in connection with offences under the Ordinance.
5. The Commissioner will keep a register on licenses and information on the register will be accessible to the public.

The Ordinance will help Customs identify the factories for the manufacture of optical discs, empower them to inspect these factories and ensure that the production of optical discs in these factories is lawful.

Business Software Alliance (BSA)

The Business Software Alliance is an international organization representing leading software and e-commerce developers in 65 countries around the world. Established in 1988, BSA has offices in the United States, Europe, and Asia.

As the "voice" of the software industry, BSA helps governments and consumers understand how software strengthens the economy, worker productivity and global development; and how its further expansion hinges on the successful fight against software piracy and Internet theft.

Their efforts include educating computer users about software copyrights; advocating public policy that fosters innovation and expands trade opportunities; and fighting software piracy.
Source: www.bsa.org/hongkong/about

Reference Web-site: http://www.bsa.org/hongkong

Control of Anti-circumvention Device

It attracts civil liability to a person who deals with anti-circumvention devices or publishes information enabling such circumvention. The electronic circumvention mechanism includes encryption or digital watermark as happens in DVD and musical recordings of Secure Digital Music Initiative (SDMI). In Hong Kong, we have the example of Cable TV decoder. Such Cable TV decorder can be bought in China at just around $300. No authorisation is given by Cable Television Limited, the sole broadcaster of Cable TV in Hong Kong, to connect the decorder to the programme cable. The connection violates the right of 'making available the works to the public'. 'Making available' includes making available through wire or wireless means. Cable TV is transmitted through wire means. The installation of the decorder and the receiving of the programme for watching is an infringement of Cable TV's rights.

Section 273 provides that the person issuing or making available the copies or the unfixed performance to the public has the same rights and remedies (as a copyright owner has in respect of an infringement of copyright) against a person who, knowing or having reason to believe that it will be used to make infringing copies or infringing fixations:

(a) makes, imports, exports, sells or lets for hire, offers or exposes for sale or hire, advertises for sale or hire, or possesses for the purpose of, in the course of, or in connection with, any trade or business, any device or means specifically designed or adapted to circumvent the form of copy-protection employed; or
(b) publishes information intended to enable or assist persons to circumvent that form of copy-protection.

Based on the above provisions, cable programme service providers like Cable TV is entitled to take action against the home users of the unauthorised decorders as well as against the supplier of the decorder, which is known to be an anti-circumvention device. To enforce the rights, the cable programme service provider will encounter great difficulties as the infringement takes place inside private residence. It is not easy to detect and have evidence gathered. Therefore, Cable TV has recently announced to have the decorder replaced. The replacement cost amounts to billions of dollars.

Rights Management Information

It is very common to find that copyright works bear copyright information such as author, and use terms and conditions. These are rights management information.

Accoridng to s.274 of the Copyright Ordinance, 'rights management information' means-

(a) information which identifies the work, the author of the work, the owner of any right in the work, the performer, or the performance of the performer;

(b) information about the terms and conditions of use of the work, the person having fixation rights in relation to the performance, or the performance; or

(c) any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work or a fixed performance or appears in connection with the making available of a work or a fixed performance to the public.

The law gives the provider of the rights management information legal remedies against persons who remove or alters such information without authority. Under the same section, he is entitled to the following rights and remedies as a copyright owner has in copyright infringement, namely, against the person who:

(a) removes or alters any electronic rights management information provided by him without his authority; or
(b) issues or makes available to the public, sells or lets for hire, imports into or exports from Hong Kong, broadcasts or includes in a cable programme service, without his authority, works or copies of works, performances, fixations of performances to which the electronic rights management information is attached knowing that the electronic rights management information has been removed or altered without his authority.

Works Having No Copyright

Copyright works are well-defined in the Copyright Ordinance, works do not fall into the definition are not qualified for protection. In some cases, a title is registrable as a trade mark thereby giving protection under the Trade Mark Ordinance. The following are not protected by copyright:

1. Unfixed works e.g. speeches. But it should be noted that live performance enjoys protection under the head of Performer's Rights although these are not copyrights in nature.

2. Titles (e.g. news headlines), names (Alan Tam), short phrases and slogans (Life is Full of Surprises)

3. familiar designs or symbols e.g. figure point symbol, cross-bone

4. Ideas (e.g. fruits are good for health), methods, systems, processes, concepts, principles, discoveries or devices.

Parallel Import

The present Copyright Ordinance outlaws parallel import ( ) of a copyright work. Goods of parallel import for the purpose of the Copyright Ordinance means a copy of that work which was lawfully manufactured in the country or territory where it was made. Such works, despite being authentic, are defined by the Ordinance as 'infringing copy'. According to the Ordinance, a copy of copyright work imported into Hong Kong by way of parallel import and which, if made in Hong Kong, would have either infringed the copyright in that work, or breached an exclusive licence agreement relating to the software, is regarded as an infringing copy.

Whether the goods so imported are 'infringing copy' has a time element, namely it only been published for 18 months or less.

Henceforth, if the works are so imported into Hong Kong and are possessed for the purpose of, in connection with or in the course of trade or business, it is a criminal offence. The penalty is just like possessing a 'pirated copy' of a work. The maximum penalty is $50,000 per infringing copy (which is in fact a copy so imported by parallel import) and 4 years imprisonment.

Goods having been published for more than 18 months will not attract criminal liability. It will nevertheless potentially attract civil liability under the trade mark laws.

In May, 2001, the Industry and Commerce Bureau has released for consultation a proposal to remove the criminal and civil liability elements on possession etc of computer programs imported into Hong Kong by parallel import. The proposal originated from the public's outcry of insufficient competitiveness of the market in computer programs. The consultation closes on 15 June 2001.

Who is a 'lawful user'?

Lawful user of a computer program if he has a contractual right to use the program.

The Ordinance allows 2 exceptions specially for computer program

1. Backup: A lawful user of a copy of a computer program may make a back-up copy of the program without infringing the copyright in the program if it is necessary for him to have the back-up copy for the purposes of his lawful use.

2. Decompilation of correction of errors in the program: A lawful user of a copy of a computer program may copy or adapt the program without infringing the copyright in the program if the copying or adapting is necessary for his lawful use. A lawful user of a copy of a computer program may, in particular, if it is necessary for the lawful use of the program, copy the program or adapt it for the purpose of correcting errors in it.

Computer Program

Computer programs are protected on the same basis as literary works. They include the source code and the object code.

Translation of a program into or between computer languages and codes corresponds to "adapting" a work. This is commonly called 'reverse engineering'.