Infringement of copyright and permitted acts (exceptions to copyright infringement)

II. Infringement of copyright and permitted acts (exceptions to copyright infringement)

Under the Copyright Ordinance, copyright owners have the exclusive right to carry out the following acts in relation to their works (see sections 22-29 of the Copyright Ordinance).

• To copy the work onto a tangible medium (e.g. paper or any digital medium).
• To put into circulation (i.e. to distribute) copies of the work not previously put into circulation anywhere in the world.
• To rent copies of computer programs and sound recordings to the public for economic or commercial advantage.
• To perform, show or display the work in public (it does not apply to artistic works and typographical arrangements of published editions).
• To communicate (by wire or wireless means) the work to the public, including broadcasting or including the work in a cable programme service and making the work available to the public.
• To make an adaptation of a literary, dramatic or musical work, which includes:
  • translating a work into another language;
  • converting a dramatic work into a non-dramatic work, and vice versa;
  • conveying a story by pictures;
  • arranging or transcribing a musical work;
  • converting a computer program into another computer language or code.
  • To carry out any of the above acts in relation to an adaptation (e.g. to photocopy a Chinese translation of an English book, or sell copies of the translation etc.).

Civil Liability

If a person, without the consent of the copyright owner, carries out or causes or requires another party to carry out any of the above acts, that person will infringe the copyright of the works in question. Such infringement is referred to as “primary infringement”, and does not require proof of guilt in the infringer’s mind. Thus, even if the infringer does not know that his act infringes a copyright, that infringer will still be liable.

There are other two important points in relation to the primary infringement of a copyright.

• Infringement exists even when the infringing act is done indirectly (such as copying from a source which is in turn a copy of the original) (see section 22(3)(b) of the Copyright Ordinance).
• To constitute infringement, all that is required is that the infringing act is done in respect of a “substantial part” of a work (see section 22(3)(a) of the Copyright Ordinance). The test for substantiality is qualitative and not quantitative. Thus there are no fixed quantitative measures (e.g. number of words or pages for a book) for determining whether a part of a work is a substantial part of the work. Generally speaking, a part of a work will be regarded as a substantial part of the work if the part contains enough of the author’s skill and labour to merit protection.  In line with the requirement of “originality” (see Question 1 of Part I), copyright does not require a work to be of high quality or aesthetic value, nor does it require a work to be creative or new. However, works which are trivial or involve little skill and labour will not be protected. Thus, in the context of civil liability, other than works such as titles, names, and short phrases, all other acts of copying or dealing in copyrighted works would likely be considered as a “substantial part”.

Primary infringement incurs only civil liability. The only exception is when the infringing copies are made for sale or hire, as this is a criminal offence in addition to civil liability (see “Criminal Offences” below).

Apart from primary infringement, a person may also incur civil liability for “secondary infringement” if that person carries out, among other things, any of the following acts without the consent of the copyright owner (see sections 30 and 31 of the Copyright Ordinance).

• To import into or export from Hong Kong, otherwise than for his private and domestic use, infringing copies of a work.
• To possess, sell, distribute or otherwise deal with infringing copies of a work for the purpose of trade or business.
• To distribute, otherwise than for the purpose of trade or business, infringing copies of a work to such an extent as to affect prejudicially the copyright owner (e.g. loss of income or business opportunities, etc.).

However, the person will only be liable if, at the time he committed the act, he knew or had reason to believe that he was dealing with infringing copies. If such knowledge or guilty state of mind cannot be proved, that person will not be liable for secondary infringement.

In addition to the above, a person may also incur civil liability because of secondary infringement if he commits, among other things, any of the following acts without the consent of the copyright owner.

• To provide an article specifically designed or adapted for making infringing copies of a work (see section 32(1) of the Copyright Ordinance).
• To transmit a work by a telecommunications system enabling infringing copies to be made by reception of the transmission anywhere in the world (see section 32(2) of the Copyright Ordinance).
• To permit a place of public entertainment to be used for an infringing performance (see section 33 of the Copyright Ordinance).
• To provide apparatus/equipment or premises to host apparatus, or supply a copy of a sound recording or film for an infringing performance (see section 34 of the Copyright Ordinance).
• To provide a device specifically designed or adapted to circumvent the copy-protection of a work, or to publish information intended to assist such circumvention (see section 273 of the Copyright Ordinance).

In a short summary regarding civil liability, if the copyright of an item is being infringed, the relevant copyright owner can institute legal action against the infringer in order to get compensation/recover loses. Also, the copyright owner may seek an injunction order from the court to prevent further infringement.

Remedies 

Where copyright has been infringed, the copyright owner can institute legal proceedings against the infringer to claim for various reliefs including damages, injunctions and accounts (see section 107 of the Copyright Ordinance).  Further, the court may award additional damages after considering all the circumstances of the case, including:

• the flagrancy of the infringement;
• any benefit accruing to the defendant by reason of the infringement; 
• the completeness, accuracy and reliability of the defendant’s business accounts and records; 
• any unreasonable conduct of the defendant after the act constituting the infringement occurred, including any act done or attempt made by the defendant to destroy, conceal or disguise evidence of the infringement after having been informed of the infringement by the plaintiff; and 
• the likelihood of widespread circulation of infringing copies as a result of the infringement.

Criminal Liability

Criminal offences for copyright infringement are set out in sections 118, 119A, 119B  and 120 of the Copyright Ordinance. 

Under section 118(1), a person commits an offence if he does, among other things, any of the following.

• To make infringing copies for sale or hire.
• To import into or export from Hong Kong, otherwise than for his private and domestic use, infringing copies of a work.
• To possess, with a view to committing further acts of infringement, sell, distribute or otherwise deal with infringing copies of a work for the purpose of trade or business.
• To distribute, otherwise than for the purpose of trade or business, infringing copies of a work to such an extent as to affect prejudicially the copyright owner (e.g. loss of income or business opportunities).

If convicted for any of the above acts, the offender is liable to a fine of $50,000 per infringing copy and to imprisonment for 4 years.

Other criminal offences include the following:

• Providing an article specifically designed or adapted for making infringing copies of a work (see section 118(4) and (8) of the Copyright Ordinance). If convicted, the offender is liable to a fine of $500,000 and imprisonment for 8 years.
• Communicating the work to the public 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 to such an extent as to affect prejudicially the copyright owner (see section 118(8B) of the Copyright Ordinance).  If convicted, the offender is liable to a fine of $50,000 per infringing copy and to imprisonment for 4 years.
• Possessing an infringing copy of a work in a copying service business (see section 119A of the Copyright Ordinance). If convicted, the offender is liable to a fine of $50,000 per infringing copy and imprisonment for 4 years.
• Making for distribution or distributing on a regular or frequent basis infringing copies of copyright works in printed form contained in books, magazines, periodicals or newspapers without the licence of the copyright owner, resulting in a financial loss to the copyright owner business (see section 119B of the Copyright Ordinance). If convicted, the offender is liable to a fine of $50,000 per infringing copy and imprisonment for 4 years. 
• Making infringing copies of a work outside Hong Kong for export to Hong Kong (see section 120(1) of the Copyright Ordinance). If convicted, the offender is liable to a fine of $500,000 and imprisonment for 8 years.
• Making an article outside Hong Kong specially designed or adapted for making infringing copies of a work and intended to be so used in Hong Kong (see sections 120(2) and (3) of the Copyright Ordinance). If convicted, the offender is liable to a fine of $500,000 and imprisonment for 8 years.