Hong Kong: Copyright (Amendment) Bill 2011 To Boost Copyright Protection In The Digital Environment

Last Updated: 19 July 2011
Article by Kenny Wong and Alan C.W. Chiu
Most Read Contributor in Hong Kong, October 2018

Originally published July 15, 2011

Keywords: Copyright amendment bill, copyright protection, HKSAR, online service providers, OSPs

The HKSAR Government tabled the Copyright (Amendment) Bill 2011 (the "Bill") at the Legislative Council in June 2011. It has three key objectives: (i) to ensure the Hong Kong Copyright Law copes with the rapid technological advances in this digital age; (ii) to facilitate cooperation between copyright owners and online service providers ("OSPs") in combating online infringement; and (iii) to support reasonable use of copyright works via computer networks, e.g. e-learning.

Since the first public consultation in December 2006, the Government has considered different proposals of copyright reform and sought to balance the copyright owners' commercial interests and the public's expectation to have unrestricted flow of information. For details regarding the consultation discussions, please refer to our email alert "Copyright Reform in Hong Kong" dated 9 December 2009 (http://www.mayerbrown.com/publications/article. asp?id=8265&nid=6) .

The major proposals in the Bill cover the following:

1. Introducing right of communication to the public, with criminal sanctions against infringement

To facilitate copyright owners to exploit and share their works electronically, the Government introduces this technology-neutral right to broaden the protection of copyright works communicated via any mode of electronic transmission (e.g. uploading to a public or private forum or posting on social media such as facebook). The right of communication is defined broadly and intends to cover not only the current specific modes of transmission, namely to "broadcast" a copyright work, to include it in a "cable programme service" and to "make it available" to the public by wire or wireless means, but also other existing and future means of electronic transmission.

It should be noted that a person who does not determine the content of the communication would not be treated as communicating a work to the public. Hence the transmission of copyright works by OSPs and intermediaries through automated processes will not be regarded as a communication under the Bill.

Criminal liability will be imposed on a person who, without authorisation, communicates a copyright work to the public. Such liability is not confined to conduct in the course of business for profit, but also where it is made to such an extent as to affect prejudicially the copyright owner unless that person proves that he has no actual or constructive knowledge of the work being an infringement.

The public has expressed concerns about the potential restriction of freedom of expression this catch-all right of communication may cause. If the Bill is passed, political parodists who make poke fun on others' photos or lyrics over the social networking sites may have to face criminal sanctions.

2. Introducing safe harbour provisions for OSPs

The Bill seeks to introduce new Sections 88A to 88I to provide for a statutory regime to limit OSPs' liability (i.e. waiving their liability for damages or any other pecuniary remedy) in copyright infringement that has occurred on their online platforms. OSPs are not required to actively monitor their platforms or services and remove or disable access of suspected infringing materials on their own initiatives. To benefit from the safe harbour provisions, an OSP has to satisfy the following conditions:

i. It must adopt a notice and take-down policy and take reasonable steps to limit or stop the infringement as soon as practicable after it received a notice of the alleged infringement, or became aware of an infringement or otherwise became aware of circumstances that would inevitably lead to a conclusion that there is an infringement.

ii. It must designate an agent to receive notice of alleged infringement by specifying the agent's name, address, telephone number and email on its website.

iii. It must not receive any financial benefit directly attributable to the infringement. References have to be made to the accepted industry charging practice for providing similar online services. An unreasonably high service fee of an OSP may suggest that it is receiving a monetary benefit attributable to the infringing activities carried out through its online platform.

iv. It must accommodate and not interfere with the technical measures adopted by copyright owners to identify or protect their copyright works.

The Bill has laid down a basic framework of notification system for reporting infringement whilst the detailed guidelines and procedures are expected to be complied into a Code of Practice by the industry players. In a nutshell, the Bill proposes that upon receiving a notice of alleged infringement (provided that such notice duly complies with the formality and content requirements in the proposed new Sections 88C(2) & (3)) ("Notice"), the OSP may send a copy of the Notice to the relevant online service subscriber and notify him that the subscriber may contact the complainant directly. Upon satisfying that the material is infringing or the circumstances would lead inevitably to the conclusion that there is an infringement, the OSP should take down the material or disable access thereto and notify the subscriber in writing. The subscriber may file a counter notice (in compliance with the proposed new Sections 88D(4) & (5)) ("Counter-Notice") disputing or denying infringement and requesting for reinstatement of the material.

To robustly and fairly enforce this Notice system, the Bill proposes that anyone who makes a false statement in the Notice or Counter-Notice commits an offence and will be liable for paying compensation by way of damages to the persons suffered as a result of his false statement.

Further, the proposed new section 22(2A) provides that in determining whether a person has authorised another to do any of the infringing acts, the court may take into account all circumstances and in particular (i) the extent of that person's power to control or prevent the infringement; (ii) the nature of the relationship between the two persons; and (iii) whether that person has taken any reasonable steps to limit or stop the infringement. Therefore, so long as an OSP does not have censorship or otherwise exercise control over the materials posted or transmitted via its servers and strictly adheres to the take-down policy in compliance with the safe harbour provisions, the OSP will unlikely be held liable for infringement.

3. Introducing a copyright exception for temporary reproduction of copyright works by OSPs

A new section 65A is proposed to be added to give OSPs an exception for making and storing temporary copies of copyright works to enable them to undertake caching activities which are technically required provided that (i) the sole purpose is to enable more efficient transmission of the work through the network; (ii) it is an automatic and essential part of the technological process and that process does not modify the copyright work or interfere with the use of the work; (iii) the storage is temporary; and (iv) the OSP complies with the standard industry obligations in updating the database in which the copy is stored, assessing the work and promptly removing the temporary copy when the original source is no longer available.

4. Prescribing the factors for considering what amounts to distribution to such an extent as to affect prejudicially the copyright owner

In the famous big-crook case where films were illegally distributed via BitTorrents, the court interpreted the term "affect prejudicially" widely and this has given rise to a lot of discussions and some disagreement. The Bill now provides for a nonexhaustive list of factors in determining whether the copyright owner's interest has been affected prejudicially by the distribution of an infringing copy. The court may take into account all circumstances and in particular (i) the purpose of the distribution; (ii) the nature of the work, including its commercial value; (iii) the amount and substantiality of the portion copied that was distributed; (iv) the mode of distribution; and (v) the economic prejudice caused to the copyright owner, including the effect on the potential market for or value of the copyright work.

5. Prescribing additional factors for considering the award of additional damages

The Government refuses to introduce statutory damages but seeks to add two new factors that the court may consider in awarding additional damages in copyright and performer's right infringement. Apart from the existing factors, namely (i) the flagrancy of the infringement; (ii) the benefit accruing to the infringer by reason of infringement and (iii) the completeness, accuracy and reliability of the infringer's business accounts and records, the Bill proposes that the court may also take into account (iv) the conduct of the infringer after the infringement occurred (including after having been informed of the infringement) and (v) the likelihood of widespread circulation of infringing copies (See the proposed new Sections 108(2)(d) & (e) and 221(2) (d) & (e)). The likelihood of widespread circulation will be a particularly important factor for online infringement cases as it is the fundamental nature of the Internet that copies can be quickly and widely distributed or circulated by the click of a mouse.

6. Introducing a media shifting exception for sound recordings

This will legalise the conversion of songs from one format to another for the user's own convenient use or private enjoyment. Media shifting in a commercial context remains prohibited.

7. Expanding fair dealing exemptions

To promote e-learning and dissemination of information for the purposes of education and cultural, historic and heritage preservation, certain fair dealing exceptions that are applicable to schools, specified libraries and archives are proposed to be extended to cover museums under the Bill.

Corresponding copyright exceptions will also be added in respect of the new right of communication. For example, schools will be allowed to send or share among their teachers and students copies of artistic works, passages from a published literary, dramatic or musical works or extracts from a published sound recording or film for educational purposes via computer networks. Librarians, curators and archivists will be allowed to make copyright materials available for public access via computer terminals within their premises and to play or show sound recordings or films to members of the public within their premises.

Mayer Brown is a global legal services organization comprising legal practices that are separate entities (the Mayer Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a limited liability partnership established in the United States; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales; Mayer Brown JSM, a Hong Kong partnership, and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2011. The Mayer Brown Practices. All rights reserved.

This article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein. Please also read the JSM legal publications Disclaimer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Mayer Brown
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Mayer Brown
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions