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Further Strengthening of Copyright Protection in the Digital Word – Hong Kong Copyright (Amendment) Bill 2014
1 March 2016

In 2011, the Hong Kong Government introduced the Copyright (Amendment) Bill (“2011 Bill”) to update the copyright law in order to cope with changing digital environment and technological advances. The 2011 Bill raised concerns among other things about liability of internet users on their parody of copyright works and the imprecise meaning of the criminal liability threshold “more than trivial economic prejudice”. Interestingly, some internet users and pan-democrats label the above Copyright (Amendment) Bill “Internet Article 23”, with reference to the Basic Law article 23 on the proposed enactment of national security law in Hong Kong.

In 2013, a public consultation was initiated to seek views from the public on the legal treatment of parody. After the consultation, the Copyright (Amendment) Bill 2014 (“2014 Bill”) was proposed. As of 29 February 2016, the 2014 Bill is still being examined by law makers and yet to be passed. This is after lengthy debates and the 2nd reading of the 2014 Bill and the whole 2014 Bill is now being shelved.

This eNews reviews the major changes in the 2014 Bill compared to the 2011 Bill which we have discussed earlier in another eNews.

Major Amendment 1 – Expanding Scope of Fair Dealing Exceptions (section 39 & 39A)

In addition to acts permitted under the existing Copyright Ordinance (Chapter 528 of the Laws of Hong Kong), e.g. fair dealing of copyright work for (i) research and private study and (ii) criticism, review and news reporting, the 2014 Bill proposes to expand the scope of permitted acts for fair dealing of copyright works to parody, satire, caricature and pastiche (section 39A of 2014 Bill), to commenting on current events and quotation from the works (section 39 of 2014 Bill)

It should be noted that under the 2014 Bill, the permitted acts of commenting on current events and quotation have to be accompanied by “sufficient acknowledgement”.

“Sufficient acknowledgement” is defined in section 198(1) of Copyright Ordinance, as an acknowledgement identifying the work in question by its title or other description and identifying the author unless (i) in the case of a published work, it is published anonymously, or (ii) in the case of an unpublished work, it is not possible for a person to ascertain the identity of the author by reasonable inquiry.

How much acknowledgment is considered “sufficient” ? On the plain reading of the Copyright Ordinance, naming the author and the title of the original work would be sufficient.

Under the 2014 Bill, an internet user may face some difficulties if he simply wants to copy a photo in a movie as “quotation” and has to provide sufficient acknowledgement in order to be exempted from a potential liability. Quite frequently, a movie involves multiple authors in different parts of the production e.g. the script, background music, compilation of dialogs, performance of different actors etc. In this case, the internet user may have to quote the entire production team together with the title of the movie to qualify as “sufficient acknowledgement”.

Further, if the author of the work is not the copyright owner of the work e.g. the work has been assigned or licensed to another party through agreement that may not be available for public inspection, then tracing the identity of the author may not be practicable. Although the 2014 Bill section 39(6) provides that “it is not necessary to accompany the relevant dealing with a sufficient acknowledgement if it is not reasonably practicable to do so”, the meaning of not “reasonably practicable to do so” is subject to interpretation and would require clarification or determination by a court in future cases.

Major Amendment 2 – Threshold of Criminal Liability for Unauthorized Communication (section 118)

As in the 2011 Bill, the 2014 Bill introduces an exclusive right of the copyright owner in a work to communicate the work to the public by any mode of electronic communication. In the digital environment, a copyright work may be made available to the public without actual copying of the work, e.g. video live-streaming. The 2014 Bill uses the expression “communication to the public” to replace the traditional expression “making available to the public of copies of works” adopted in the existing Copyright Ordinance.

Further, the new section 118 of the 2014 Bill makes it a criminal offence for a person who infringes the copyright in a work by communicating the work to the public.

It is worth noting that simply sharing a hyperlink on website or in Facebook would not constitute an offence of communicating a work to the public because the new section 28A(5) of the 2014 Bill specifies that “a person does not communicate a work to the public if the person does not determine the content of the communication”.

Under the 2011 Bill, a person commits a criminal offence if he communicates a copyright work to the public to such an extent so as to affect prejudicially the copyright owner. In section 118(8C) of the 2014 Bill, it is further clarified that in determining whether the communication is made to such an extent as to affect prejudicially the copyright owner, the court may take into account all the circumstances of a case and especially whether economic prejudice is caused to the copyright owner as a result of the communication, having regard to whether the communication amounts to a substitution for the work.

Conclusion

Law updates are often necessary to cope with social changes, especially with the emergence of internet usage, electronic communications and information technology advancement.

It is desirable to have updated copyright law in Hong Kong which would maintain fair play as well as strike balances between the rights and responsibilities of different stakeholders, including (i) copyright owners (for copyright protections); (ii) online service providers (to safeguard their business with reasonable compliance); and (iii) copyright users (for reasonable use of copyright works and protection of freedom of speech, press and creation as stipulated in the Basic Law articles 27, 34 and 140).

If you have any queries regarding the above eNews or any other questions relating to copyright or other intellectual property matters, experienced lawyers in our Intellectual Property department will be pleased to assist you.

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