Hong Kong: IP Law – Application For Norwich Pharmacal Relief In Respect Of Online Infringement Of Copyright

Last Updated: 9 December 2009

The growth of online copyright infringement has posed serious challenges to copyright owners and more of them are now relying on the "Norwich Pharmacal" discovery order to require disclosure of the identity of infringers from online service providers. The Norwich Pharmacal order is a court order that compels a person to disclose information or documents which may be relevant to the misconduct or wrongdoing of a particular wrongdoer and may then be used in an action against the wrongdoer.

Recent Case Law on Norwich Pharmacal Order

In the Hong Kong High Court case of Dish Network LLC & Others v Zentek International Co Ltd & Another [2009] HKEC 220, the Plaintiffs are North American satellite broadcasters who applied for a Norwich Pharmacal discovery relief against the Defendants, a company in Hong Kong and its director which hosted the server(s) for websites providing pirate hardware and software ("Websites") that enabled the members of the Websites to descramble the Plaintiffs' encrypted programmes without paying subscription fees to the Plaintiffs.

In order for the Plaintiffs to take further action against the owners and members of the Websites who published and took part in the sale and purchase of the pirate hardware and software, the Plaintiffs sought a Norwich Pharmacal discovery relief against the Defendants to compel the disclosure of the identities of the owners and members of the Websites, which were essential information for the enforcement of the Plaintiffs' rights against these online infringers.

Interpretation of "Publish"

The Plaintiffs submitted that the owners of the Websites, in making available the pirate software for downloading by their members, have published such pirate software in terms of Section 275(2)(b) of the Copyright Ordinance, Cap.528 of the laws of Hong Kong ("Copyright Ordinance").

Section 275(1) of the Copyright Ordinance provides that "a person who makes charges for the reception of programmes included in a broadcasting or cable programme service provided from a place in Hong Kong or elsewhere; or sends encrypted transmissions of any other description from a place in Hong Kong or elsewhere" is entitled to the rights and remedies provided in Section 275(2) of the Ordinance. Section 275(2)(b) of the Ordinance further provides that such person would have the same rights and remedies against anyone who publishes any information which is calculated to enable or assist persons to receive the programmes or other transmissions when they are not entitled to do so.

The Plaintiffs claimed that as satellite broadcasters who provide encrypted programming services to subscribers for a fee, their position would be the same as other copyright owners thereby entitling them to rely on Section 275(2)(b) of the Copyright Ordinance to claim against the owners of the Websites. The owners of the Websites had published the pirate software on the Websites enabling its members to receive the Plaintiffs' encrypted programming services illegally.

On the other hand, the Defendants argued that there was no publication unless and until a member of the Websites had clicked on the link to initiate the streaming of signal of the pirate software from the Defendants' servers in Hong Kong to the server of the members in North America. The Defendants further argued that this act of clicking on the link took place in North America as the Plaintiffs' programmes were only broadcast in North America. They submitted that no action under Section 275(2)(b) of the Copyright Ordinance would arise against the owners of the Websites because the act of publishing took place in North America, instead of Hong Kong.

In order for the Plaintiffs to succeed in applying for the Norwich Pharmacal discovery order, they must show cogent and compelling evidence to demonstrate that serious tortious or wrongful activities have been committed in Hong Kong and further demonstrate that it is just and convenient for the court to exercise its discretion to grant the relief.

High Court's Ruling

The judge preferred the meaning of "publish" in the Oxford Dictionary defined as "to make public, to make publicly or generally known, to issue or cause to be issued for sale to the public, or to make generally accessible or available for acceptance or use; to place before or offer to the public...by the medium of a book, journal, or the like". He also disagreed with the Defendants' interpretation of Section 275(2)(b) of the Copyright Ordinance and held that the mere availability of the software on the Websites amounted to publishing and constituted an infringement of the Plaintiffs' rights as copyright owners.

Based on the above, the Defendants were ordered to disclose details of the owners and/or the operators of the Websites and records of the names of the Websites' members. But in making the order, the court had to strike a balance between the administration of justice and protection of privacy relating to personal data and subject to the Plaintiffs' undertaking that if they should obtain information of innocent users from the Defendants, they would not use such information for any purpose. The Plaintiffs were at liberty to use the documents and information disclosed for the purpose of enforcing their broadcasting and related rights against any persons so disclosed.

If you have any queries regarding the above judgment or on any intellectual property registration or enforcement matters in Hong Kong or mainland China, experienced lawyers in our Intellectual Property Department will be happy to assist you.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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