The long-awaited Copyright (Amendment) Ordinance was finally gazetted – what impacts will it bring to various stakeholders?
Introduction
With an aim to align Hong Kong’s copyright
regime with technological advancements, international norms, as well as to meet
Hong Kong’s social and economic needs, the Hong Kong government conducted a
public consultation on updating Hong Kong’s copyright regime from November 2021
to February 2022. We have previously examined the consultation paper in the
March 2022 edition of our Intellectual Property newsletter (read more here).
Following the public consultation, the
government introduced substantial amendments to the Copyright Ordinance (Cap.
528) (“CO”), based mainly on the
Copyright (Amendment) Bill 2014 (which was unable to proceed due to opposition
from the then Legislative Council), but with substantial amendments to address
the views of various stakeholders received during the public consultation. This
time, the amendment bill was finally passed by the Legislative Council, and the
Copyright (Amendment) Ordinance 2022 (the “Amendment
Ordinance”) was gazetted on 16 December 2022.
In this article, we will examine the
content of the Amendment Ordinance and provide our analysis and insight on what
impacts it will bring to various stakeholders, including copyright owners,
netizens and online service providers.
Technology-neutral
exclusive right to communicate their works to the public
The CO provides a list of acts which
copyright owners have the exclusive right to do in Hong Kong, including copying
the work, broadcasting the work or including it in a cable programme etc.
However, with the advancement of technology, there are now more ways of making
a work available to the public and they do not necessarily fall within the list
of acts that copyright owners have the exclusive right to do.
To solve the above problem, the Amendment
Ordinance introduces a new technology-neutral exclusive communication right for
copyright owners to communicate their works to the public. Under the Amendment
Ordinance, copyright owner enjoys an exclusive right to communicate the
copyright work to the public, which includes “making the work available, 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”. A common example is to make works available through the Internet by
streaming.
That said, to avoid the definition of “communication
of the work to the public” from being too wide, the legislation expressly
excludes the following 3 acts from falling under the category of “communicating
the work to the public”:
1. gaining
access to what is made available by someone else in the communication; or
2. receiving
the electronic transmission of which the communication consists; or
3.
mere provision of facilities by any person
for enabling or facilitating the communication of a work to the public.
Copyright
owners should note that the above 3 acts do not constitute an exercise of the
right to communication. For instance, any member of the public will not be
prohibited by virtue of the Amendment Ordinance from clicking on a weblink to
gain access to a webpage even if that webpage contains infringing content. That
said, the new Amendment Ordinance provides copyright owners with more
flexibility to tackle infringement activities of others, especially in the
current age where internet and online piracy no longer take the form of
downloading, but rather, streaming.
Introduction of new
criminal sanctions
To
offer better protection to copyright owners, the Amendment Ordinance also introduces
criminal sanctions against those who make unauthorised communications of
copyright works to the public in certain situations.
Under the new section 118(8B) of the Amendment
Ordinance, a person commits an offence if the person infringes copyright in a
work by communicating the work to the public:
1. for
the purpose of or in the course of any trade or business that consists of
communicating works to the public for profit or reward; or
2. to
such an extent as to affect prejudicially the copyright owner.
The maximum penalty for the above offence is a fine of HK$50,000 for
each copyright work, and imprisonment for 4 years.
To dispel concerns about the possible negative impacts
on the free flow of information across the Internet and to provide greater
legal certainty, the Amendment Ordinance provides further guidance in
determining whether the infringer is liable under the 2nd limb of
section 118(8B) i.e. the communication
of work to the public is made to such an extent as to affect prejudicially the
copyright owner.
In determining the 2nd limb, the court:
1. may take into account all the
circumstances of the case; and
2.
in particular, may take into account whether
the communication had caused economic damage or prejudice to the owner (such as where the
infringing work amounts to a substitution for the original work).
Hence, owners and netizens should take note of the wide powers of the
court to take into account all circumstances surrounding the infringement,
which would in turn affect the court’s determination of liability under the 2nd
limb of section 118(8B) CO.
New fair-dealing exceptions
The amendments discussed above further
strengthens copyright protection in Hong Kong, which is crucial to promote
creativity by providing authors and lawful owners with economic incentives.
However, fair access to and uses of copyright works by others are also
important for dissemination and advancement of knowledge which also promotes
creativity.
Hence, to tie with the introduction of the
above communication right, the Amendment Ordinance broadens the scope of
permitted acts which may be done in relation to copyright works without
attracting civil or criminal liability notwithstanding subsistence of
copyright. The following new fair dealing exceptions are introduced by the
Amendment Ordinance:
1.
use for the purpose of parody, satire, caricature and pastiche (戲仿、諷刺、營造滑稽及模仿);
2.
use for the purpose of commenting on current events;
3.
use of a quotation, the extent of which is no more than is required by
the specific purpose for which it is used;
4.
use by education establishments for educational purposes;
5.
use by service providers to enable more efficient transmission of the
fixation by the provider through a network, i.e. data caching; and
6. use in the form of media shifting (i.e. making of an additional copy from one
media format to another), for the purpose of private and domestic use.
The Hong Kong government has assured the
public in the consultation paper that the new fair dealing exceptions above
would cover, in appropriate cases, a wide range of day-to-day Internet activities,
so long as they are for the above listed purposes.
Under the Amendment Ordinance, it appears
that netizens may now freely express their opinions through secondary creations,
as long as such copyrighted materials are used for non-commercial purposes. That
said, without any statutory definitions to any of the terms “parody, satire,
caricature and pastiche”, and a lack of examples provided in the ordinance or
any case law at the moment, it is unclear if the present common uses of
copyright works on the internet can fall within the above fair dealing
exceptions.
Safe harbour provisions
Under the Amendment Ordinance, an online
service provider such as operator of a social networking website may
accidentally be involved in communication of copyright works to the public and
thus participate in copyright infringement. For instance, if a person posts an
infringing copy of a copyright work on a social networking site, the site operator
may also be making the work available to the public by wireless means and thus
infringing the copyright of the work.
To prevent an online services provider
from being innocently mixed-up with a third party wrongdoing and also to
incentivise online service providers to take reasonable measures to limit
infringing activities on their service platforms, the Amendment Ordinance
incorporates safe harbour provisions for the service providers.
Under the safe harbour provisions, if an
online service provider has complied with the conditions set out in the
Amendment Ordinance, the service provider will not be liable for damages or any
other pecuniary remedy for infringement of the copyright in a work that occurs on
the provider’s service platform merely because the provider provides, or operates
facilities for, online services.
The conditions for the online service
providers to comply with are the following:
1. The service provider has taken reasonable steps to limit or stop the infringement as soon as practicable after the provider:
a. received
a notice of alleged infringement in relation to the infringement;
b. became
aware that the infringement has occurred; or
c. became
aware of the facts or circumstances that would lead inevitably to the
conclusion that the infringement had occurred.
2. The
service provider receives no financial benefit directly attributable to the
infringement;
3. The
service provider accommodates and does not interfere with the standard
technical measures that are used by copyright owners to identify or protect
their copyright works; and
4. The
service provider designates an agent to receive notices of alleged
infringements, by supplying through the provider’s service, including on the
provider’s website at a location accessible to the public, the agent’s name and
contact details.
The safe harbour provisions encourage the active cooperation of service
providers and copyright owners to collectively combat online piracy. Whilst it
imposes additional obligations on the part of the online service provider, it
would undoubtedly benefit both the service provider and copyright owners, to
flush out acts of infringement as well as protect and exempt the service
provider from liability.
Conclusion
The Amendment Ordinance has already
brought substantial changes to the current copyright regime in Hong Kong, and
is slowly catching up with the ever evolving digital environment. That said,
the government also acknowledged that there are remaining issues that have not
yet been addressed in the Amendment Ordinance, such as extension of copyright
term of protection, introduction of specific copyright exceptions for text and
data mining, etc. It remains to be seen whether additional amendments would be
implemented to address all such issues in the near future.
In case you encounter any legal questions
in relation to the updated copyright regime or require any compliance advice, you
are advised to consult an intellectual property lawyer.
For enquiries,
please feel free to contact us at: |
E: ip@onc.hk T:
(852) 2810 1212 19th Floor, Three Exchange Square, 8 Connaught
Place, Central, Hong Kong |
Important: The law and procedure on
this subject are very specialised and
complicated. This article is just a very general outline for reference and
cannot be relied upon as legal advice in any individual case. If any advice
or assistance is needed, please contact our solicitors. |
Published by ONC Lawyers © 2023 |