Intellectual Property Law

Hong Kong?s Criminal Copyright Infringement: What Constitutes a Copy Capable of Distribution?

By Martha L. Arias

Hong Kong not only straightened its copyright laws, but its authorities are actively prosecuting copyright violations; a smart move in an increasingly globalized economy.  Hence, not always, statutory rules are clear and it is in these cases when courts render legal interpretations. As in any country, statutory interpretations rendered by appellate courts become legal precedents in Hong Kong. This article informs about the Hong Kong?s appellate court?s interpretation of a ?copy capable of distribution,? as a required element of the criminal offense of copyright infringement; particularly, when applied to Internet distribution of digital copies.

Hong Kong?s Copyright Ordinance (Cap 528), 118(1)(f), states that a person commits a criminal offense when, without the license of the copyright owner, he distributes an infringing copy of the copyright work, in the course of, for the purpose of, or in connection with any trade or business, to such an extent as to prejudicially affect the owner of the copyright work.  Thus, according to this rule, (1) there must be a copyright work, (2) a copy must be distributed in the course of, or in connection with any trade or business, and (3) such distribution must prejudice the copyright owner?s rights. Obviously, element two seems to be the central and most-difficult-to-prove element; that is, when a copy is capable of distribution according to the statute.

In the case of Chan Nai Ming v. Hksar, 2007 HKCU 849, (hereafter Chan case), Respondent was charged with attempting criminal copyright infringement for unlicensed dissemination of copyright films via Internet; particularly through the use of ?BitTorrent? technology.  An interesting fact in this case is that to avoid proving element three -prejudice to the copyright owner- the prosecution charged Respondent with ?attempting copyright infringement,? rather than the full offense of copyright infringement. This was a strategy used in this case in which distribution occurred via the Internet and proving element three becomes a challenge.

The BitTorrent system is a variant of a ?peer-to-peer? file sharing system.  This system does not require a centralized server holding the film?s pictures reduced to digital forms; such server would slow the download process and be impractical for Internet distribution.  BitTorrent system retransmits the film?s pictures to other peer computers; there is a ?seeder? computer that holds the initial files to be downloaded, and a computer that acts as ?tracker server? to allow the flow of data from the seeder to the users? computers. Users need to install the BitTorrent software in their computers to be able to access films transmitted through this technology.  The seeder computer is where the infringer has to download ?a copy? of the file to be disseminated, in this case, the film.  In the Chan case, it was proven that Respondent downloaded a copy of the copyright film in his computer?s hard drive and made arrangements to allow transmission of this file.  Respondent, and anyone disseminating files through BitTorrent system, makes the copyright work available to others through advertisement (Ads).  These Ads publicize the file as a .torrent file in Internet newsgroups.   The court record shows that Respondent in this case did such Ads and made the copyright film available to others.  Authorities had to determine whether Respondent provided a connection with the tracker server and redirected users to the seeder computer to enable copies to be downloaded. This proof was in fact provided during trial.  The question was whether Respondent?s seeder computer containing the copyright film amounted to distribution of a copyright and whether the film in Respondent?s seeder computer constituted a copy under copyright law.

The court held, contrary to Respondent?s claim, that a ?copy? for purposes of criminal copyright infringement under the Hong Kong?s copyright law, may be a digital copy in the context of data transmitted through the Internet. The court held that after reviewing the definition of copy, Respondent ?reproduced the work in a material form;? this is, he copied the film in his hard drive and created a digital copy. Regarding to the distribution issue, Respondent argued that he did not ?distributed? copies of the work.  Instead, his action was passive after he downloaded the initial film in his hard drive.  The court held that Respondent conduct was not passive. Indeed, Respondent took many other steps to make the film available to others.  For instance, he kept his computer connected to the network that allowed users to communicate with the tracking computer and the seeder. The fact that this process was performed by software, rather than by his active intervention was not a convincing argument for the court.

Thus, a digital copy constitutes a copy under Hong Kong?s copyright law; and distribution of copyright works through software of other technological means may constitute distribution under the same law.

Full post as published by IBLS Internet Law Blog on September 13, 2009 (boomark / email).