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Proposals for Strengthening Copyright Protection in the Digital World – Hong Kong Copyright (Amendment) Bill
1 December 2011

Since 2006, Hong Kong has considered different proposals for copyright reform to facilitate the development of copyright protection and to cope with the rapid changing digital environment in Hong Kong. After two rounds of public consultations in 2007 and 2008 and extensive discussions with the relevant copyright stakeholder groups including copyright owners associations, online service providers (“OSPs”) and copyright users, the Copyright (Amendment) Bill (the “Bill”) was finally tabled at the Legislative Council in June 2011.

The major proposals in the Bill are as follows :-

(a) Communication rights for copyright owners (sections 28A and 118(8B) to (8D))

Under the existing Copyright Ordinance, copyright owners have exclusive rights to disseminate their work through specific modes of transmission including the right to broadcast a copyright work, to include it in a cable programme service and make copies available to the public. These exclusive rights are provided under section 22 of the Copyright Ordinance and the rights are infringed if a third party makes any of the specific mode of transmission without a licence or authorization of the copyright owner.

The Bill proposes to broaden the scope of the original protection by introducing a new technology-neutral right to communicate a copyright work through any mode of electronic transmissions in such a way that the public may access the work from a place and at a time individually chosen by them. This proposed “catch-all” amendment encompasses new forms of media developed from time to time without the need for further amendment.

In addition, to balance the impact on the above “catch-all” provision, the Bill provides that the mere provision of facilities by any person enabling or facilitating the communication of a work to the public does not by itself constitute an act of communicating the work to the public which may be deemed to have infringed the right of the copyright owner without authorization.

For instance, a person who uploads a song onto an internet forum without permission of the copyright owner will be committing an act of infringement; while a coffee shop merely providing internet connection facilities which enable a customer to upload a copyright work onto an internet forum may not constitute communication of the work to the public under this section.

It is a criminal offence if a person, without authorization of the copyright owner, communicates a copyright work to the public for profit or reward in the course of trade or for business purpose or to such an extent as to affect prejudicially the copyright owner, unless that person proves that he did not know and had no reason to believe he was infringing the copyright in the work. The Bill further provides a list of circumstances that the court may consider in determining the extent of prejudicial effect to the copyright owner.

(b) “Safe harbour” provisions for OSPs (sections 88A to 88I)

The Bill introduces clear guidelines on the limitation of OPS’s liability relating to online materials. In order to avoid liability for damages or any other pecuniary remedy for copyright infringement occurring on their platform, an OSP must comply with the following steps and conditions :-

(i) it has taken reasonable steps to limit or stop the infringement as soon as practicable after it receives a notice of alleged infringement or otherwise becomes aware that the infringement has occurred or becomes aware of facts or circumstances which would lead inevitably to the conclusion that infringement has occurred;

(ii) it has not received and is not receiving any financial benefit directly attributable to the infringement;

(iii) it accommodates and does not interfere with standard technical measures used by the copyright owners to protect their copyright works; and

(iv) it designates an agent to receive notices of alleged infringements.

The Bill has also provided for the formalities and procedures to notify alleged infringement to OSPs. On receiving a notice of alleged infringement from a complainant, an OSP may send a copy of the notice to the relevant subscriber and notify such subscriber that he may contact the complainant directly. Upon satisfying that the materials would lead inevitably to the conclusion that infringement has occurred, the OSP may remove or disable access to the infringing materials and notify the subscriber of such removal or denial access. The subscriber may also file a counter notice disputing such arrangement.

(c) Award of additional damages (section 108(2))

The Bill includes two additional factors which the court may take into consideration when deciding whether further damages should be awarded in an action for infringement of copyright, namely :-

(i) the conduct of the defendant after the infringing act occurred, including but not limited to the conduct of the defendant after having been informed of the infringement; and

(ii) the likelihood of widespread circulation of infringing copies as a result of the infringement.

These additional factors may lead to further damages awarded against infringers for causing widespread publication or dissemination of unauthorized materials such as the use of peer-to-peer or Bit Torrent file sharing programs.

Conclusion

The reform under the Bill has been criticized by many copyright holders to be conservative and to have lagged behind current global practices. The proposed amendments of introducing a new copyright owner¡¦s technology-neutral right and criminal sanctions against infringement have also been criticized for increasing the risk of inadvertent breach by the general public.

However, some have welcomed the new proposals for enhancing copyright protection in the current digital environment and opine that over regulation would only stifle creativity and innovation. Hence, a proper balance has been struck between the interests of copyright holders and end-users.

Lawyers in our Intellectual Property Department are experienced in intellectual property registration, enforcement and exploitation matters and will be happy to assist if you have any questions on the Bill or queries on any Intellectual Property matters.

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