The proposed amendment of the Hong Kong copyright laws introduce a new communication right for copyright owners, safe harbor provisions for online service providers, and additional factors to consider by the courts when awarding additional damages for copyright infringement.

Introduction

Back in 2006 the Hong Kong government conducted a public consultation on how copyright laws could be improved to better protect copyright owners in the digital era. Following protracted discussions with various stakeholders, the Copyright (Amendment) Bill 2011 has finally been gazetted and is expected to pass into law during the 2011/2012 legislative year. This article discusses some of the major changes proposed.

Communication Right for Copyright Owners

The Bill introduces a new technology-neutral exclusive right for copyright owners to communicate their works through any mode of electronic transmission. The infringement of this right gives rise to civil and criminal liability.

Communication is defined to include:

  • the broadcasting of a copyright protected work;
  • the inclusion of the work in cable program services; and
  • the making available of the work to the public.  

These means to communicate works are not new as they have already been included in the existing Copyright Ordinance. More interestingly, the Bill provides for an exemption that a person does not communicate a work to the public if that person does not determine the content of the communication, in particular by taking one or more steps for the purposes of:

  • gaining access to what is made available by someone else in the communication; or
  • receiving the electronic transmission of which the communication consists.

Safe Harbor for OSPs

The Bill introduces safe harbor provisions for online service providers (OSPs). The provisions limit the potential liability of an OSP for copyright infringing acts occurring on its platform provided that the OSP complies with certain conditions, including:  

  • taking reasonable steps to limit or stop the infringement once the OSP has been made aware of the alleged infringement and expressly precluding any requirement of an OSP to actively monitor their service for acts of infringement.
  • complying with a Code of Practice (to be introduced by the government shortly) that sets out certain guidelines on "notice-and-notice" and "notice-and-takedown".

A major criticism of the Bill is that there is no real mechanism to deter P2P piracy, despite heavy lobbying by copyright owners to introduce a "graduated response" mechanism.

Additional Damages: Factors to Be Considered by the Courts

At present, the Copyright Ordinance sets out certain factors for the courts to take into account when considering whether to award additional damages, in particular:

  • the graveness of the infringement;
  • the benefits accrued from the infringement to the infringer; and 
  • the completeness, accuracy and reliability of the infringer's business accounts and records.

The Bill adds two further factors:

  • the conduct of the infringer after the act of infringement, including after having been informed of the infringement; and
  • the likelihood of a widespread circulation of infringing copies as a result of the infringement.  

Under the proposed amendments, it may be difficult for copyright owners to obtain additional damages if they have not sent any letter before action to infringers.