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

Civil Liability

Copyright infringement is a cause of action in civil action. The relief available to copyright owner is: injunction (Anton Piller order), damages, account of profits, discovery order (delivery up of articles, disclosure under oath).

Criminal Liability

A person commits an offence if he, without the licence of the copyright owner:

1 makes for sale or hire;
2 imports into Hong Kong otherwise than for his private and domestic use;
3 exports from Hong Kong otherwise than for his private and domestic use;
4 possesses for the purpose of, in the course of, or in connection with, any trade or business with a view to committing any act infringing the copyright;
5 for the purpose of, in the course of, or in connection with, any trade or business:(i) sells or lets for hire;(ii) offers or exposes for sale or hire;(iii) exhibits in public; or(iv) distributes; or(v) distributes (otherwise than for the purpose of, in the course of, or in connection with, any trade or business) to such an extent as to affect prejudicially the owner of the copyright, an infringing copy of a copyright work.

'Trade or business' does not have to involve dealing with infringing copies for profit or reward. Keeping or using an infringing copy of computer program in a company whose employees make use of it for doing business, for example typing of a business letter, a contract, a quotation or making a drawing is sufficient for the offence. Trade includes profession. Therefore, professionals like lawyers, doctors will be caught by the criminal sanction. Teachers and social workers are alike.

The above provisions apply to dealing of computer program. It is punishable by a fine of up to $50,000 per copy and 4 years of imprisonment. In case of moulds, $500,000 and 8 years of infringement.

The criminal provisions have relieved the prosecution from the need of proving 'knowledge' on the part of the accused. If an accused wishes to defend the charge, he has to prove to the Court that he does not have the knowledge or has no reason to know that the article is an infringing copy.

The Customs & Excise Department is charged with the duty to receive complaints from the public in respect of copyright piracy, investigate the same.

Function or Industrial Articles

Copyright may protect the drawing from which an article is made, but it cannot prevent the manufacture of purely industrial articles.

However, articles that are replicated by an industrial process, but which are of an aesthetically pleasing appearance may be protected by copyright where the article itself is an artistic work. This includes sculptures as well as works of artistic craftsmanship. Where it is possible to obtain a registered design for such articles, the copyright term will be reduced to match the term of protection for registered designs.

Is the copyright of a Hong Kong author protected in foreign countries?

Yes. Hong Kong is a member of the Berne Convention for the Protection of Literary and Artistic Works. Its membership includes most countries in the world. The copyright works owned in Hong Kong enjoy legal protection in these countries or locations.

Collective Licensing

To license copyright works individually is costly and ineffective. For example, the cases of public performance of music and photocopying of published material. To solve the problem they have formed collecting societies or collective licensing bodies. These organisations license certain uses of their works on their behalf. The prominent example of a collective licensing body in Hong Kong is CASH (Composers and Authors Society of Hong Kong), which is responsible for licensing public performance of musical works in Hong Kong.

Collecting societies are non-profit making private bodies. The way they operate is for members of the organisation (the copyright owners) to make decisions about, having regard to general law. Copyright owners must generally decide for themselves whether to opt for collective administration or management of their works for any particular uses.

Collective licensing means that a user may be offered a blanket licence covering use of all the repertoire of the collecting society. This also benefits users as they do not need to negotiate a large number of individual licences.

However, collecting societies may effectively be in a monopoly position for some uses of copyright material. An independent tribunal, the Copyright Tribunal, exists to adjudicate on the matter where the collecting society and users or groups representing users fail to agree the terms and conditions of a licensing scheme.

Collective administration bodies exist for licensing, and/or distributing royalties from certain uses of music and sound recordings and printed material.

Looking for Copyright Permission

Copyright is a type of intellectual property. Like physical property, it cannot usually be used without the owners permission. Of course, the copyright owner may refuse to give permission for use of their work.

Fair amount of uses (e.g. fair dealing for the purposes of research, review and news reporting; reasonable extent for the purpose of instructions or examination) may fall within the scope of one of the exceptions to copyright, but if you want to use a copyright work, you will usually need to approach the copyright owner and ask for a licence to cover the use you require. A licence is a contract between you and the copyright owner and it is for both parties to negotiate the terms and conditions, including the payment or royalty for the use. There are no rules in copyright law governing what may be acceptable terms and conditions might be relevant to licence agreements.

Sometimes copyright owners act collectively to license certain uses and collective licensing bodies can be approached for a licence. In particular, collective administration bodies exist for licensing certain uses of music and sound recordings, printed material

It is important to remember that just buying or owning the original or a copy of a copyright work does not give you permission to use it how you wish. For example, buying a copy of a book, CD, video, computer program etc only gives you the property right on the chattel. It does not usually gives you the right to make copies (even for private use), play or show them in public. Other everyday uses of copyright material, such as photocopying, scanning, downloading from a CD-ROM or on-line database, all involve copying the work so permission is generally needed. Also use going beyond an agreed licence will require further permission.

Copyright and works on the Internet, uploading and downloading

Copyright material sent over the Internet or stored on web servers will generally be protected in the same way as material in other media. Such protected act is referred as 'making available of copies of the work to the public' in the Ordinance. S.26 provides that this is 'to make available of copies of the work, by wire or wireless means, in such a way that members of the public in Hong Kong or elsewhere may access the work from a place and at a time individually chosen by them (such as the INTERNET).

Copyright works commonly found on the Internet are sound recordings like music (MP3 format), films (Real Player or Media Player formats), literary works (texts and passages on world wide web pages and computer programs), artistic works (photos, graphics). Uploading songs without copyright authorisation for distribution by downloading for profits or commercial gains is an criminal offence and can lead to arrest and prosecution.

Anyone wishing to put copyright material on the Internet, or distribute or download material that others have placed on the Internet, should ensure that they have the permission of the owners of rights in the material.

The law may be different in other countries so copyright material may have been put on the Internet in other countries without infringing copyright there.

Fair Dealing for reseach or private study

"Fair dealing" with a literary, dramatic, musical or artistic work, for the purposes of research or private study does not infringe any copyright in these works or the typographical arrangement of published editions of these works.

Fair dealing has been interpreted by the courts on a number of occasions by looking at the economic impact on the copyright owner of the use; where the economic impact is not significant, the use may count as fair dealing. So, it is probably within the scope of the above fair dealing exception to make single photocopies of short extracts of a copyright work for the purposes of research or private study. It may be possible to ask a librarian to copy a short extract from a copyright work for you if you are not able to do it for yourself in a library.

The research and private study exception is a little different for databases protected by copyright. In this case, fair dealing is only possible for research for a non-commercial purpose or private study. However, not all copying from a database will infringe copyright in the database - this will depend on whether a substantial part of the database is being copied - but the contents of a database may also be protected by copyright, and extracts of the contents can, of course, only be copied if this use falls within the scope of the general "fair dealing" exception.

Fair Dealing in criticism, review or news reporting

In each case the exception is limited by the condition that there must be "fair dealing". A long extract of a work cannot be used for the purposes of criticism, review or news reporting. Use of more than this will need the permission of the copyright owner. Slightly different conditions apply to criticism and review and news reporting:

Fair dealing with a work for the purposes of criticism or review of that or another work must include a sufficient acknowledgement.

Fair dealing with a work for the purpose of reporting current events also requires sufficient acknowledgment, except where the reporting is by means of a sound recording, film or broadcast or cable programme.

Educational Establishment

Only the universities and schools defined in Schedule 1 of the Copyright Ordinance is entitled to be known as educational establishment. This includes the major schools, post-secondary schools and universities.