Copyright infringement
Generally, copyright infringement occurs when someone else uses the copyrighted work / the original piece of work without consent of the copyright holder. In this article you will understand the meaning of (a) primary infringement; (b) secondary infringement; and (c) the enforcement options.
What counts as copyright infringement?
Primary infringement
- Primary infringement incurs only civil liability except when the infringing copies are made for sale or hire which will constitute a criminal offence in addition to civil liability
- If a person, without consent of the copyright owner, carrie out or causes or requires another party to carry out any of the below (see sections 22-29 of the Copyright Ordinance) then that person will infringe the copyright of the works concerned:
- 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 make copies of the work available to the public via the Internet;
- To perform, show or display the work in public (it does not apply to artistic works and typographical arrangements of published editions);
- To broadcast or include the work in a cable programme service (it does not apply to typographical arrangements of published editions);
- 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.).
Secondary infringement
If a person carries out, among other things, 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 effect prejudicially the copyright owner (e.g. loss of income or business opportunities, etc.).
AND is at the time s/he committed the act, knew/ had reason to believe that he was dealing with infringing copies then that person would be liable to a fine of HKD $50,000 per infringing copy and to imprisonment for 4 years
How to report and address copyright infringement
Copyright is enforced at the District Court or the Court of First Instance as Hong Kong does not have any specialised copyright courts.
Hong Kong has a Copyright Tribunal and has jurisdiction to hear and determine disputes relating to licensing schemes, awards payable to employees for using their work outside reasonable contemplation etc.
However, before commencing copyright infringement proceedings, it is advisable to send a cease and desist letter to the alleged infringer.
A copyright owner can take civil legal action against any person who infringes the copyright in the work. The activities that the owner can prevent vary according to the various types of works
- The owner may seek all necessary relief against the infringer, e.g.
- An injunction to prevent further infringement
- An order for delivery up of the infringing items
- Disclosure of information about the supply and/or dealings of the infringing items
- An award for damages as well as costs
- Starting from 6 July 2007, there is no longer any civil and criminal sanction for end users to import or possess parallel imported copies of copyright works for use in business. However, parallel importation of copies of copyright works for any of the following purpose is still subject to civil or even criminal sanctions (see below):
- Dealing in (i.e. selling, hiring or distributing for profit) such copies except computer software products; or
- (where such copies are movies, television dramas, musical sound recordings or musical visual recordings) playing or showing any such copyright work in public except by educational establishments or their libraries for educational purposes or library use
- Anyone who manufactures or sells products for defeating technological copyright protection systems is also civilly liable. Border enforcement assistance to copyright owners by the Customs and Excise Department is also available.
The Customs and Excise Department is responsible for enforcing criminal aspects of copyright infringement. It has extensive powers of search and seizure in the investigation of alleged infringements and has the power to confiscate suspected infringing copies whether or not a charge has been laid
- Copyright piracy, such as making of or possession of infringing articles for trade or business, may be subject to a term of imprisonment of up to four years and a maximum fine of HK$50,000 per infringing article.
- Importing or exporting pirated articles is a criminal offence. It is also an offence to be involved in copyright piracy outside Hong Kong for the purpose of importation into Hong Kong. Those who manufacture equipment for copyright piracy may also be liable to a term of imprisonment of up to eight years and a maximum fine of HK$500,000.
- Dealing in parallel-imported copies of any copyright work (except computer software products), importing them for dealing, importing or possessing parallel-imported copies of movies, television dramas, musical sound recordings or musical visual recordings for playing or showing in public is a criminal offence during the 15 months commencing from the work’s first publication anywhere in the world.
- Importing, exporting or dealing in products to circumvent the technological copyright protection systems, or providing commercial services to enable others to do so is an offence. Any offender, upon conviction, is liable to a term of imprisonment of up to four years and a maximum fine of HK$500,000.
Key takeaways
- Before commencing copyright infringement proceedings, it is advisable to send a cease and desist letter to the alleged infringer.
- The copyright owner can take civil legal action against any person who infringes the copyright in the work.
- A complaint can also be filed with the Customs & Excise Department in Hong Kong to enforce the criminal provisions under the Copyright Ordinance.
Bibliography
- Intellectual Property Department of the Government of the Hong Kong Special Administrative Region, “Copyright”: https://www.ipd.gov.hk/eng/copyright.htm