The Copyright (Amendment) Ordinance 2022 (“Amendment Ordinance”) seeks to update Hong Kong’s copyright regime and strengthen copyright protection in the digital environment.

The Amendment Ordinance mainly covers the following five key areas:

1. To introduce an exclusive technology-neutral communication right for copyright owners in light of technological developments, in order to ensure that their works communicated to the public via any mode of electronic transmission are protected. That is to say, after the commencement of the Amendment Ordinance, the communication of copyright works by copyright owners, no matter through streaming or new modes of electronic transmission which may emerge in the future, would receive comprehensive protection;
2. To introduce corresponding criminal sanctions against infringements relating to the new exclusive communication right;
3. To introduce new fair dealing exceptions covering the use of copyright works for (i) parody, satire, caricature and pastiche, (ii) commenting on current events, and (iii) quotation; to revise and expand copyright exceptions to cover various modes of use of copyright works to facilitate online learning, the operation of libraries, museums and archives; to allow online service providers (“OSPs”) to cache data; and to allow media shifting of sound recordings, so as to maintain an appropriate balance between copyright protection and reasonable use of copyright works;
4. To provide incentives for OSPs to cooperate with copyright owners in combating online piracy, and to provide reasonable protection for their acts, safe harbour provisions are introduced to limit OSPs’ liability for copyright infringement on their service platforms caused by subscribers, provided that OSPs meet certain prescribed conditions, including taking reasonable steps to limit or stop the copyright infringement when being notified; and
5. To introduce two additional statutory factors for the court to consider when assessing whether to award additional damages to copyright owners in civil cases involving copyright infringements.

These amendments will strengthen copyright protection in the digital environment and help combat large-scale online piracy. At the same time, the new copyright exceptions will allow users’ reasonable use of copyright works in a wide range of day-to-day Internet activities (such as parody) and safeguard their freedom of expression.

No. The amendments were proposed after several rounds of public consultation and have balanced the interests of different stakeholders. The Amendment Ordinance introduces additional statutory exceptions on the use of copyright works to the existing Copyright Ordinance (Cap.528) (“Copyright Ordinance”), which would not tighten the freedom of speech, expression and creativity, but instead help to strengthen and clarify protection in the relevant aspects.

Firstly, all copyright exceptions currently provided under the Copyright Ordinance (such as the use of copyright works for criticism, review, news reporting, research and private study) remain unaffected and in force.

To tie in with the introduction of the communication right, the Amendment Ordinance introduces a number of new copyright exceptions, including exceptions for reasonable use of copyright works for the purposes of parody, satire, caricature, pastiche, quotation and commenting on current events, which cover many common means for the public to present opinions or express views on the Internet (for example, netizens may use means such as image capture or rewriting songs (commonly known as “secondary creation”) to satirize or comment on current events), in order to provide better protection for freedom of speech, expression and creativity. These acts will not constitute copyright infringement if the relevant conditions under the exceptions are fulfilled (such as fair dealing of copyright works, the extent of quotation is no more than is required by the specific purpose, etc.). Therefore, the Amendment Ordinance provides users of copyright works with more applicable exceptions when using others’ copyright works comparing to the existing laws.

Moreover, to allay netizen’s concerns about the possible impact on the free flow of information across the Internet due to the criminal liability arising from infringing activities, and to provide greater legal certainty, the Amendment Ordinance clarifies the threshold of criminal liability for the “prejudicial” distribution offence under the existing Copyright Ordinance and the new “prejudicial” communication offence. When considering the meaning of “prejudicial” distribution/communication, the court may take into account all the circumstances of the case and, in particular, whether economic prejudice is caused to the copyright owner as a consequence of the distribution or communication (for example, whether the act of distribution or communication amounts to a substitution for the work). Generally speaking, the act of distribution or communication which does not substitute the original work does not involve criminal liability.

The “communication right” is an exclusive right derived from the World Intellectual Property Organization (“WIPO”) Copyright Treaty (“WCT”) and WIPO Performances and Phonograms Treaty concluded in 1996. Simply put, the “communication right” is an exclusive right conferred on copyright owners to communicate their copyright works by any mode of electronic transmission.

The Copyright Ordinance gives copyright owners certain exclusive rights, including the right to make a copyright work available to the public on the Internet, to broadcast a work or to include a work in a cable programme service. Considering that new modes of electronic transmission would emerge with advances in technology, existing modes of transmission prescribed under the Copyright Ordinance (including “making available”, “broadcast” and “include in a cable programme”) may not afford sufficient protection, and infringers may evade legal liabilities and sanctions on technical grounds.

To ensure that the protection afforded to copyright owners would cover any mode of electronic transmission, the Amendment Ordinance introduces the new section 28A which provides a new technology-neutral exclusive communication right for copyright owners to communicate their works to the public through any mode of electronic transmission (including streaming).

Many overseas jurisdictions (including Australia, the European Union, the United Kingdom, Singapore, New Zealand and Canada, etc.) have introduced a communication right to enhance copyright protection in the digital environment since 2001. The introduction of a technology-neutral communication right will bring the copyright regime of Hong Kong on par with international developments and in line with the practices of many overseas jurisdictions.

According to the new section 28A introduced by the Amendment Ordinance, “communication to the public” refers to the communication of a copyright work to the public by any mode of electronic transmission, which includes the following acts: -

1. broadcasting of the work;
2. inclusion of the work in a cable programme service;
3. making available of the work to the public; and
4. any other mode of electronic transmission (such as streaming).

In addition, the new section 28A(4) provides that a person is to be regarded as having communicated a work to the public if the person has determined the content of the communication.

The new section 28A(5) further clarifies acts which are not considered as “determined the content of the communication”, i.e. a person does not determine the content of a communication only because the person takes one or more steps for the purpose of (a) gaining access to what is made available by someone else in the communication, or (b) receiving the electronic transmission of which the communication consists. For example, an Internet user does not determine the content of a communication to him only because he clicks on a link to gain access to a webpage.

At the same time, the new section 28A(6) clarifies that parties (such as OSPs) providing facilities for the carriage of signals (such as providing broadband Internet access services, routers, etc.) so as to enable a work to be communicated to the public would not be subject to legal liabilities for unauthorized communication to the public due to the mere acts of providing the relevant facilities. This new provision is similar to section 26(4) of the existing Copyright Ordinance (Infringement by making available of copies to the public), both of which are based on the Agreed Statement concerning Article 8 of the WCT (Right of Communication to the Public), which clearly states that the mere provision of physical facilities for enabling or making a communication does not amount to “communication to the public”.

However, if a person has taken active technical steps in the communication process, for example, by capturing and processing broadcast signals or data for re-transmission of copyright works via the cable communication system or the Internet, such acts may infringe the copyright owner’s right of communication to the public.

The right of “communication to the public” is an exclusive right for copyright owners to communicate copyright works to the public by any mode of electronic transmission. To constitute an act of “communication to the public”, the recipient of the communication needs to be the “public”.

With reference to WIPO’s relevant guidelines, the relevant “public” in relation to the communication right, is a group consisting of a substantial number of persons outside the normal circle of a family and its close social acquaintances. In other words, if a person uploads works to the Internet for private sharing with his family and friends only, generally speaking, this group would not be considered as “public”, and such act would not constitute communication to the public. However, if the works are uploaded to some public groups so that persons other than family and friends could have access to the relevant works, there may be copyright infringement (unless permission is obtained from the copyright owner or any existing or new exception applies).

Continuing from FAQ no.5, the new section 28A(4) to (5) introduced by the Amendment Ordinance clarifies the principle that the public’s daily and reasonable online behaviours would not constitute an act of “communication to the public” in general.

Generally speaking, a hyperlink only points to or makes reference to a location on the Internet where information may be found in public. It does not contain any substantive content. Therefore, if an individual Internet user only includes hyperlinks and/or shares/forwards links on web pages, social media or instant messaging software, or only views or accesses to contents provided or communicated by others, and the relevant content is not determined by that user, these online behaviours would not constitute “communication to the public”.

However, depending on the evidence and the circumstances of the case, operators of websites which aggregate links to infringing materials hosted on third party websites may be liable for authorization of infringements occurred at the communicating end and/or the recipient end, or joint tortfeasance in respect of the infringing acts.

Absolutely not. The new section 28A introduced by the Amendment Ordinance should not be unilaterally interpreted as unconditionally absolving all possible infringing acts (which may not constitute an act of unauthorized communication to the public) from all legal liabilities. The relevant provisions must be interpreted jurisprudentially alongside other applicable provisions or law to determine whether the relevant acts would be subject to relevant civil and/or criminal liabilities for copyright infringement.

The new section 28A(7) specifically clarifies that if a person’s act is not a communication of a work to the public, this does not affect any civil or criminal liability the person may otherwise have for that act under the Copyright Ordinance or any other legislations, or any rule of law (such as common law).

Existing sections 118(1)(e) and (g) of the Copyright Ordinance provide criminal sanctions for distribution of an infringing copy of the work for profit or in the course of business, or distribution of an infringing copy of the work (otherwise than for profit or in the course of business) to such an extent as to affect prejudicially the copyright owner (“prejudicial distribution offence”).

To tie in with the new communication right, and mirroring the criminal offences for distributing infringing copies of works under sections 118(1)(e) and (g), the new section 118(8B) provides corresponding criminal sanctions for infringement of the communication right, which prohibits the communication of works to the public without the authorization of the copyright owner in the following circumstances: -

1. 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
2. communicating the work to the public (otherwise than 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) to such an extent as to affect prejudicially the copyright owner (“prejudicial communication offence”).

To provide greater legal certainty, the new section 118(8C) introduced by the Amendment Ordinance clarifies the threshold of criminal liability in relation to the prejudicial communication offence, by stipulating that in determining whether any communication of the work to the public is made to such an extent as to affect prejudicially the copyright owner, the court—

1. may take into account all the circumstances of the case; and
2. in particular, may take into account whether economic prejudice is caused to the copyright owner as a consequence of the communication, having regard to whether the communication amounts to a substitution for the work.

The aforesaid provision highlights economic prejudice (such as whether the communication amounts to a substitution for the original work) as a main factor for the court to consider when determining the issue of “prejudice”. The new section 118(2AA) introduced by the Amendment Ordinance also provides the same clarification on the threshold of criminal liability for the existing prejudicial distribution offence. Generally speaking, if the act of distribution or communication does not substitute the original work, no criminal liability will be involved.

The main targets of the communication offence are large scale online piracy, such as illegal streaming of a film for public viewing. Some common activities on the Internet, such as altered pictures, rewriting songs, image capture etc., are not the targets of criminal enforcement if they do not substitute the original works.

According to the new section 118(8D) introduced by the Amendment Ordinance, it is a defence for an alleged offender of the communication offence to prove that he “did not know and had no reason to believe” that the communication of the relevant work infringed its copyright.

Please see FAQ no. 10 for further explanation on the threshold of criminal liability for the communication offence.

According to the new section 119(3) introduced by the Amendment Ordinance, a person who commits the communication offence is liable on conviction to imprisonment for 4 years and to a fine at level 5 (i.e. HK$50,000) in respect of each copyright work.

Absolutely not.

Section 22(2) of the Copyright Ordinance stipulates that copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorizes another to do, any of the acts restricted by the copyright. In simple terms, the basic element of whether an act constitutes infringement (whether civil or criminal), is that there is no consent from the copyright owner on the relevant act. If the copyright owner does not oppose the relevant act, or fails to provide sufficient evidence or assistance to the law enforcement agency during the investigation process and subsequent legal proceedings, the law enforcement agency would not have any basis to initiate any legal proceedings.

In terms of specific operations, if the law enforcement agency receives allegations of criminal infringement or has reasonable doubts concerning a certain act/activity, a necessary task for the law enforcement agency is to identify and contact the legal owner of the relevant copyright work as soon as possible to ascertain whether that copyright owner opposes such act. Only if the copyright owner opposes such act would the law enforcement agency have the reason to consider taking further actions.

Even if the copyright owner opposes the relevant act, he must provide evidence to the law enforcement agency in the subsequent investigation process to confirm that (1) copyright does exist in the relevant copyright work and he is the legal owner of it, and (2) the work of the alleged infringer has indeed infringed his copyright. The law enforcement agency would only refer the case to the Department of Justice to consider taking out prosecution when this key evidence is procured and combined with other necessary evidence.

If the copyright owner fails to provide sufficient evidence during the process, or a change in position that there is no copyright infringement in the work in question (such as settling the legal action), it is impossible for the law enforcement agency to continue investigation or prosecution action.

According to section 22(2) of the Copyright Ordinance, any person who authorizes another to do any act restricted by copyright in a work may attract civil liability.

The Amendment Ordinance introduces the new section 22(2A) which provides that in determining whether a person has authorized another person to do an infringing act, the court may take into account all the circumstances of the case and, in particular —

1. the extent of that person’s power (if any) to control or prevent the infringement;
2. the nature of the relationship (if any) between that person and that other person; and
3. whether that person has taken any reasonable steps to limit or stop the infringement.

As the modes of online copyright piracy keep evolving, there may be more legal disputes on whether different parties (e.g. OSPs, creators/operators/distributors of software applications, etc.) have authorized others to perform infringing acts in the digital environment. These disputes would likely focus on whether a party’s particular conduct or course of conduct constitutes authorization of the relevant infringing act.

To assist the court in examining what constitutes “authorization”, the Amendment Ordinance introduces the new section 22(2A) setting out some factors which have been frequently considered in case laws in order to provide appropriate statutory guidance. As these factors are set out in a non-exhaustive manner, and the provision clearly stipulates that the court may take into account all the circumstances of the case, the court’s discretion to take into account other factors and circumstances in deciding a particular case would not be affected.

In addition, these factors also provide clearer guidance for the daily operations of “intermediaries” such as OSPs, so as to prevent them from being inadvertently involved in infringing acts committed by third parties on their service platforms.

Existing section 39 of the Copyright Ordinance allows fair dealing of a copyright work for the purposes of criticism, review and news reporting.

To tie in with the introduction of the communication right and to maintain a balance between copyright protection and reasonable use of copyright works, the Amendment Ordinance expands the scope of the existing copyright exceptions and introduces new copyright exceptions which allows fair dealing* of copyright works for the following purposes/use provided that the prescribed conditions are complied with—

1. parody, satire, caricature or pastiche (new section 39A);
2. quotation (amended section 39(2)); and
3. commenting on current events (amended section 39(3)).

*In determining whether the dealing with a work is fair dealing, the Court shall take into account all the circumstances of the case, and in particular —

1. the purpose and nature of the dealing, including whether the dealing is for a non-profit-making purpose and whether the dealing is of a commercial nature;
2. the nature of the work;
3. the amount and substantiality of the portion dealt with in relation to the work as a whole; and
4. the effect of the dealing on the potential market for or value of the work.

Existing section 39(1) of the Copyright Ordinance allows fair dealing of a copyright work for the purposes of criticism or review of a work (or another work), or a performance of a work, provided that it is accompanied by a sufficient acknowledgement (i.e. an acknowledgement identifying the work by its title and identifying its author).

The Amendment Ordinance amends the applicable conditions for this exception. The conditions set out under the amended section 39(1) are as follows——

1. the copyright work concerned has been released or communicated to the public; and
2. is accompanied by a sufficient acknowledgment (not necessary to accompany with the acknowledgment if it is not reasonably practicable to do so).

Pursuant to new section 39(5)(a), “has been released to the public” in item (a) above means if a work has been provided to the public by any means (other than by communication to the public), then the work is regarded to have been released to the public, the means include—

1. issue of copies of the work to the public;
2. rental of copies of the work to the public; and
3. performance, exhibition, playing or showing of the work in public.

Furthermore, according to new section 39(5)(b), in determining whether a work “has been released or communicated to the public”, no account is to be taken of any unauthorized act.

“Quotation” refers to extracting copyright works (including films, sound recordings, broadcasts, photographs as well as traditional texts) for the purposes of providing information, illustrating arguments, facilitating dialogue and communication, and is applicable in various circumstances, including screen shot/image capture.

Providing a fair dealing copyright exception for making quotation from others’ copyright works would facilitate users to use extracts in formal works (such as academic and scholarly texts), as well as in more informal works (such as blogs and social media), so as to help illustrate arguments and engage in comment and debate.

The Amendment Ordinance amends the existing section 39(2) of the Copyright Ordinance to allow users to use a quotation from a work for the purposes of criticism, review or other purposes, provided that the following conditions are complied with—

1. the work quoted has been released or communicated to the public (for the definition of “has been released to the public” and determining whether a work “has been released or communicated to the public”, please see FAQ no. 17);
2. the dealing of the copyright work is fair (i.e. meets the requirements of fair dealing, please see FAQ no.16);
3. the quotation of the work is for a specific purpose, and the extent of the quotation is no more than is required by the specific purpose for which it is used; and
4. the quotation of the work is accompanied by a sufficient acknowledgement, where reasonably practicable.

Existing sections 39(2) and (3) of the Copyright Ordinance already provide a fair dealing exception of copyright works for the purpose of reporting current events. The condition is that it is accompanied by a sufficient acknowledgement (except for reporting current events by means of a sound recording, film, broadcast or cable programme). Considering that “reporting current events” and “commenting on current events” are similar in nature, the Amendment Ordinance amends section 39(3) of the Copyright Ordinance to include “commenting on current events” within the scope of the fair dealing exceptions under the Copyright Ordinance, with the same condition that it is accompanied by a sufficient acknowledgement (unless it is not reasonably practicable).

The new exception for fair dealing of copyright works for “commenting on current events” allows the reasonable use of others’ copyright works by Internet users to comment on current events, such as expressing views on various issues or participating in discussions on related issues, thereby further safeguarding freedom of expression and other public interest.

The existing Copyright Ordinance does not provide a legal definition for the expression “current events”.

With reference to the interpretation/principles established by the United Kingdom’s jurisprudence on the fair dealing exception “for the purposes of reporting current events”, the exception—

1. is not confined to specific or very recent events, particularly where the ramifications of the event continue to be a matter of public debate and concern;
2. is not confined to the reporting of current events in a general news programme and includes, for example, the reporting of sports events in a sports news bulletin; and
3. the work concerned needs not be “current”, provided that it is reasonably used to report current events.

According to the above interpretation/principles, the meaning of “current events” is not confined to “today’s or very recent happenings”. These interpretation/principles may also apply to the new fair dealing copyright exception for “commenting on current events”.

New section 39A introduced by the Amendment Ordinance allows fair dealing of a copyright work by a user for the purposes of parody, satire, caricature or pastiche. The provision also sets out a list of non-exhaustive factors that the court may consider when determining whether the dealing of a work is fair (see FAQ no. 16).

The decision on not providing specific statutory definitions or guidance for terms which encompass sophisticated concepts such as parody, satire, caricature and pastiche was the consensus reached by various stakeholders during the past public consultation exercise on parody, and after careful deliberations by the Bills Committee on the Copyright (Amendment) Bill 2014. We consider this is the most appropriate and fair approach to deal with the issue as it would allow flexibility in interpretation according to their ordinary and general meanings (e.g. citing the definitions of the terms in dictionaries/wordbooks), and for the court in adjudication. Courts may also interpret these terms with reference to case laws in other common law jurisdictions with similar exception provisions.

We note that the approach of not providing statutory definitions for these terms was effective in other common law jurisdictions (e.g. the UK, Australia and Canada). The actual application of this exception can also be established through case laws.

Screen shot (image capture) or altered pictures generally involve users using some of others’ copyright works (e.g. photographs, illustrations, posters, etc.) and modifying them. If the relevant act involves the use/copying of the whole or a substantial part* of the underlying work, but such use falls within the scope of the existing or new exceptions under the Amendment Ordinance (such as for the purposes of criticism or review of a work, commenting on current events, parody or quotation, etc.), and provided that the relevant exception conditions are complied with (e.g. the dealing of the copyright work is fair, the quotation is no more than is required by the specific purpose, etc.), it would not constitute copyright infringement.

It is not an absolute legal requirement to state the source of the copyright work/quote the source of the copyright work used. Under the new exceptions for quotation and commenting on current events, the law requires the relevant dealing to be accompanied by a sufficient acknowledgement only if it is reasonably practicable to do so (such as quoting the source, including the name of the work and the author, etc.). This is a kind of respect to the original author as well as a kind of protection for the user. As for the fair dealing exceptions for parody, satire, caricature and pastiche, there is no legal requirement to quote the source owing to their nature.

* A substantial part of a copyright work hinges on the “quantity” and “quality” of the materials being copied. Even though only a very small part of a copyright work is copied, if that part is a key element of the work, it may also constitute copyright infringement. For example, when a certain catchy musical phrase in a piece of music is copied, even though the relevant phrase is very short, it may also constitute infringement.

Rewriting lyrics for songs refers to the act of rewriting new lyrics of a song based on the same melodies. If it simply involves rewriting lyrics without copying the substantial part* (please see FAQ no. 22) of the original lyrics, such act of mere presentation of new lyrics by text, which does not involve copying, singing or performing the musical part of the original song, would not constitute infringement.

If the singing of a song with rewritten lyrics is uploaded onto the Internet, or recorded and further distributed, but the relevant act falls within the scope of the existing or new exceptions under the Amendment Ordinance (e.g. for the purposes of criticism or review of a work, commenting on current events, parody, etc.), and provided that the relevant exception conditions are complied with (e.g. the dealing of the copyright work is fair), it would not constitute copyright infringement.

The melody and lyrics of a song, as well as the sound recording of a song, could be protected by copyright. Generally speaking, the acts of performing songs or playing of sound recordings in public, recording the performance/playing and uploading the relevant clips to social media platforms would involve copying, the performance and playing of copyright works in public, and making available copies of copyright works to the public, which are acts restricted by copyright.

If the posting of an earnest performance of a copyright work falls within the scope of the existing or new exceptions (e.g. for the purposes of criticism or review of a work, commenting on current events, parody, etc.), and provided that the relevant exception conditions are complied with (e.g. the dealing of the copyright work is fair), it would not constitute copyright infringement.

We also noticed that the existing market business models may have already catered for the needs of general users. For example, individual social media platform has entered into licensing agreements with relevant copyright licensing bodies, and is authorized to communicate songs which are performed anew (such as “playing and singing by oneself” (cover-version)). Apart from the aforementioned licensing arrangements with individual organizations, YouTube has also developed a content identification (Content ID) comparison system. Take clips of cover-versions of songs as an example, when users upload clips to YouTube, the clips are scanned against a database of files submitted by copyright owners. If there are contents found which matched copyright owners’ works, copyright owners may choose to take different actions, such as allowing the clip to be played continually and share the revenue generated with the uploader of the clip.

Under the existing Copyright Ordinance, the use of a copyright work with the copyright owner’s consent would not constitute copyright infringement. As far as we know, some video game developers welcome and allow users to share clips of playing video games online (such as live streaming of game-playing sessions, uploading clips of playing games onto online social media platforms, etc.) to attract more users. We also noticed that some popular home video game consoles in the market (e.g. SONY’s PS5) have built-in functions to facilitate users to share the process of playing video games online. We believe that the existing market business models already cater for the needs and daily activities of users.

In other situations, if the act falls within the scope of the existing or new exceptions under the Amendment Ordinance (such as for the purposes of criticism or review of a work, quotation, etc.), and provided that the relevant exception conditions are complied with (e.g. the dealing of the copyright work is fair), sharing the process of playing video games online would not constitute copyright infringement. For instance, some people would include criticism or review of the games while they share the game-playing process online, provided that the relevant exception conditions are complied with, the copyright exception under section 39(1) of the Copyright Ordinance relating to criticism or review of a work may be applicable.

For clips which do not contain criticism or review, they may contain images/screen of the games and background music/soundtracks etc., which involve others’ copyright works. The new exception of “quotation” under the Amendment Ordinance may, depending on circumstances, also be applicable. The common acts of sharing the process of playing video games online would not attract relevant civil and criminal liability if any copyright exception(s) is/are applicable.

The term “secondary creations” is a very general term. Reference to “secondary creations” by different people may cover a wide range of various activities, including mere adaptation or modification of copyright works.

Any work (including the so-called “secondary creation”), in which only the idea or insubstantial part* (please see FAQ no. 22) of the underlying work is incorporated would not constitute copyright infringement.

If the relevant “secondary creations” uses/copies the whole or a substantial part of the underlying work, but the use falls within the scope of the existing or new exceptions under the Amendment Ordinance (such as for the purposes of criticism or review of a work, commenting on current events, parody or quotation, etc.), and provided that the relevant exception conditions are complied with (e.g. the dealing of the copyright work is fair, the quotation is no more than is required by the specific purpose, etc.), it would not constitute copyright infringement.

On the contrary, if a work involves the use/copying of the whole or a substantial part of the underlying work, and its use does not fall within the scope of exceptions under the Copyright Ordinance, prior permission should be obtained from the copyright owner of the underlying work, otherwise it would constitute copyright infringement.

The Amendment Ordinance expands or newly introduces the following permitted acts for the education sector:-

1. The Amendment Ordinance introduces the new section 44(1A), which allows a person authorized by an educational establishment* to communicate to an “authorized recipient” a recording, or a copy of a recording, of a broadcast or cable programme that has been made in accordance with section 44(1), without infringing copyright in the broadcast or cable programme, or in any works included therein, if the following conditions are complied with:

1. the communication is made for the educational purposes of the establishment; and
2. the establishment has already taken all reasonable steps to ensure that—
   (i) only authorized recipients receive the communication; and
   (ii) the authorized recipients do not make any copy or further transmission of the communication.

Please note that the exceptions under sections 44(1) and 44(1A) will not apply if licences under licensing schemes are available authorizing the recording, copying or communication in question, and the person making the recording, copies or communication in question knew or ought to have been aware of that fact.

2. Section 45(1) has all along allowed the making of reprographic copies of artistic works or of passages from published literary, dramatic or musical works, to a reasonable extent, by an educational establishment for the purposes of giving instruction, or by a pupil for the purposes of receiving instruction in a specified course of study**.

Under the Amendment Ordinance, the format in which copies may be made under this exception are no longer limited to reprographic copies, and the categories of works which may be used to make copies are also extended to cover extracts from published sound recordings or films.

The Amendment Ordinance also introduces the new section 45(1A), which allows a person authorized by an educational establishment to communicate to an “authorized recipient” a copy of a work made in accordance with section 45(1), without infringing copyright, if the following conditions are complied with:

1. the communication is made for the educational purposes of the establishment; and
2. the establishment has already taken all reasonable steps to ensure that—
   (i) only authorized recipients receive the communication; and
   (ii) the authorized recipients do not make any copy or further transmission of the communication.

Please note that the above exception will not apply if licences under licensing schemes are available authorizing the copying or communication in question, and the person making the copies or communication in question knew or ought to have been aware of that fact.

* The list of educational establishments is provided in Schedule 1 of the Copyright Ordinance.

** A “specified course of study” refers to a course of study which is provided for the delivery of a curriculum developed on the basis of curriculum guidelines issued or endorsed by the Curriculum Development Council; or a course of study which consists of an assessment of a pupil’s competence in the area covered by the course, and leads to the award of a qualification.

According to the new sections 44(5) and 45(5) introduced by the Amendment Ordinance, in relation to a communication made by a person authorized by an educational establishment, an “authorized recipient” means a teacher or pupil of the establishment who has been authorized by or on behalf of the establishment to receive the communication. With reference to section 195(2) of the Copyright Ordinance, it includes any person who gives and receives instruction in the educational establishment.

Generally speaking, “authorized recipient” also includes the following persons:

• A staff member of an educational establishment, who is responsible for or his duties are related to giving instruction.
• Parents or guardians of minor students who are authorized recipients, as legally they may exercise various statutory rights on behalf of minors.

Apart from the new copyright exceptions introduced by the Amendment Ordinance, there are other copyright exceptions in the Copyright Ordinance to cater for different circumstances of giving or receiving instruction as well, for example section 38 for purposes of research and private study, and section 41A for purposes of giving or receiving instruction.

These copyright exceptions may apply in the same circumstance and are not mutually exclusive. Users may, in the appropriate circumstances (e.g. for sections 38 and 41, the relevant dealing of copyright works by a user would qualify as fair dealing*), make reasonable use of copyright works without copyright owners’ consent. For example, students of an educational establishment may copy and communicate reference materials or homework containing copyright works amongst themselves for their private study.

* In determining whether any dealing with a work is fair dealing, the court must take into account all the circumstances of the case and, in particular—
(a) the purpose and nature of the dealing, including whether the dealing is for a non-profit-making purpose and whether the dealing is of a commercial nature;
(b) the nature of the work;
(c) the amount and substantiality of the portion dealt with in relation to the work as a whole; and
(d) the effect of the dealing on the potential market for or value of the work.

The provisions in the new sections 44(1A)(b) and 45(1A)(b) introduced by the Amendment Ordinance relating to requiring educational establishments to take all reasonable steps, aims to require the relevant establishments to deploy suitable measures, so as to ensure that copyright works may not be reproduced or disseminated outside the intended scope of the exceptions. Measures commonly adopted in the digital environment include disabling certain downloading or copying functions in the communication, restricting access by implementing login requirements, etc.

We do not intend to provide an exhaustive list of “reasonable steps” in the statutory provision as what “steps” are “reasonable” have to be determined with reference to the actual circumstances, such as technological developments, resources and technical expertise available to different educational establishments. We consider that the law should provide adequate flexibility for educational establishments to adopt suitable measures.

(1) All along, section 48 of the Copyright Ordinance has allowed the librarian of a specified library to make and supply from a published edition a copy of part of a literary, dramatic or musical work (other than an article in a periodical), provided that the following conditions are complied with:

1. a person requesting for copies is required to satisfy the librarian that he requires them for purposes of research or private study, and will not use them for any other purpose;
2. no person is furnished with more than one copy of the same material or with a copy of more than a reasonable proportion of any work;
3. persons to whom copies are supplied are required to pay for them a sum not less than the cost attributable to their production; and
4. a person requesting for copies is required to satisfy the librarian that his requirement is not related to any similar requirement of another person.

Under the Amendment Ordinance, the types of works that may be made and supplied under this exception are extended to cover a copy of part of a published artistic work, sound recording and film.

(2) All along, section 50 of the Copyright Ordinance has allowed the librarian of a specified library to make and supply to another specified library a copy of the following work:

1. an article in a periodical;
2. the whole or part of a published literary, dramatic or musical work; or
3. a sound recording or film.

The Amendment Ordinance adds artistic work to item b. above.

Please also note that this exception does not apply to the making and supplying of copies of works in items b. and c. above if at the time the copy is made, the librarian making it knows, or could by reasonable inquiry ascertain, the name and address of a person entitled to authorize the making of the copy.

Under the existing Copyright (Libraries) Regulations (Cap. 528B), specified libraries include libraries of schools and universities, and libraries managed by Government Departments (e.g. the Leisure and Cultural Services Department), etc.

After the implementation of the Amendment Ordinance, several relevant copyright exceptions will also apply to specified museums. The Secretary for Commerce and Economic Development will consult the views of relevant stakeholders as soon as possible, and update the list of specified libraries, museums and archives by notice in the Gazette in accordance with section 46(1)(b) of the Copyright Ordinance.

Sections 51 to 53 of the Copyright Ordinance provide copyright exceptions relating to specified libraries and archives. The Amendment Ordinance extends these exceptions to specified museums. The Amendment Ordinance also amends the applicable scope of sections 51 and 52, and adds some copyright exceptions applicable to specified libraries, museums or archives. Please see FAQ nos. 34 to 35.

(1) Section 51 of the Copyright Ordinance allows the librarian or archivist of a specified library or archive to make a copy from any item in the permanent collection of the library or archive for the following purposes:

1. in order to preserve or replace that item by placing the copy in its permanent collection in addition to or in place of it; or
2. in order to replace in the permanent collection of another specified library or archive an item which has been lost, destroyed or damaged.

Please note that this exception may only be used to make copies in cases where it is not reasonably practicable to purchase a copy of the item in the permanent collection in question to fulfill the above purposes.

Apart from extending this exception and the related applicable conditions to specified museums and allowing copies that may be made under this exception to cover artistic works in the permanent collection, the Amendment Ordinance also allows a specified library, museum or archive to make no more than 3 copies in total at any one time, and only one of those copies may be accessible to the public at that library, museum or archive under this exception.

(2) All along, section 52 of the Copyright Ordinance has allowed the librarian or archivist of a specified library or archive to make and supply a copy of the whole or part of an unpublished literary, dramatic or musical work from a document (including a document in electronic form); or to make and supply a copy of the whole or part of an unpublished sound recording or film, provided that the following conditions are complied with:

1. a person requesting for copies of works is required to satisfy the librarian or archivist that he requires them for purposes of research or private study, and will not use them for any other purpose;
2. no person is furnished with more than one copy of the same material; and
3. persons to whom copies are supplied are required to pay for them a sum not less than the cost attributable to their production.

Please note that this exception does not apply if the work had been published before it was deposited in the library or archive, or the copyright owner has prohibited copying of the work, and at the time the copy is made the librarian or archivist making it is, or ought to be, aware of that fact.

Apart from extending this exception and the related applicable conditions to specified museums, the Amendment Ordinance also allows the types of works that may be made and supplied from any document (including document in electronic form) under this exception to extend to cover copies of the whole or part of an unpublished artistic work.

(1) The Amendment Ordinance introduces the new section 51A, which allows the librarian, curator or archivist of a specified library, museum or archive to communicate a copy made pursuant to section 51 (i.e. the copyright exception mentioned in FAQ no.34) to the users or staff of the library, museum or archive, provided that the following conditions are complied with:

1. the means of communicating the copy is by making it available online, to be accessed by the users or staff through the use of a computer terminal installed within the premises of the library, museum or archive;
2. only 1 user may access the copy at any one time; and
3. the library, museum or archive takes appropriate measures to prevent users from making further copies or communicating the copy to others.

Please note that this exception will not apply if there are licences under the relevant licensing schemes authorizing the communication in question, and the person making the communication in question knew or ought to have been aware of that fact.

(2) The Amendment Ordinance introduces the new section 52A, which allows the librarian, curator or archivist of a specified library, museum or archive to play or show a sound recording or film held in the permanent collection of the library, museum or archive to an audience consisting of members of the public within the premises of the library, museum or archive, provided that the following conditions are complied with:

• If the audience is required to pay for the playing or showing of the sound recording or film, the relevant payment is no more than a reasonable contribution towards the maintenance of the library, museum or archive.

Please note that this exception will not apply if there are licences under the relevant licensing schemes authorizing the playing or showing of the sound recording or film in question, and the person playing or showing the sound recording or film in question knew or ought to have been aware of that fact.

Data caching which is transient or incidental in nature is technically required by OSPs for the process of data transmission to function efficiently, and includes the storing or caching of web content by OSPs on their proxy servers so that the content can be quickly retrieved in response to future requests. In addition to saving bandwidth, caching activities are also indispensable for efficient transmission of information on the Internet.

However, data caching technically involves copying, which is an act restricted by copyright under the Copyright Ordinance. Therefore, the Amendment Ordinance introduces a new section 65A to provide OSPs with the copyright exception for temporary reproduction of copyright works. If the relevant conditions are complied with, OSPs may make and store temporary copies of works without infringing copyright.

The copyright exception for temporary reproduction of copyright works is mainly to facilitate the process of data transmission to function effectively by OSPs. To ensure that such temporary reproduction is only made in response to technical needs, the new section 65A(1) provides that OSPs must comply with the following conditions in order to benefit from this copyright exception:

1. the sole purpose of the making and storage is to enable more efficient transmission of the work by the OSP through a network;
2. the making and storage forms an automatic and essential part of a technological process, and that process neither modifies the work, nor interferes with the lawful use of technology to obtain data on the use of the work;
3. the storage is temporary;
4. the OSP updates the database in which the copy is stored in accordance with reasonable industry practice;
5. the OSP complies with conditions (if any) on access to the work; and
6. the OSP acts promptly to remove the copy or disable access to the copy in the event that either of the following facts comes to the OSP’s actual knowledge—
1. the work has been removed from the original source from which the copy was made;
2. access to the work at the original source from which the copy was made has been disabled.

“Media shifting” refers to the making of an additional copy of a sound recording from one media or format into another, usually for the purpose of listening to the work in a more convenient manner. A typical example is the copying of sound recordings from an audio compact disc to the embedded memory of a portable MP3, i.e. from digital audio compact disc format to MP3 format.

However, media shifting technically involves copying and is an act restricted by copyright under the Copyright Ordinance. For the convenience of users, the Amendment Ordinance introduces a new section 76A to allow media shifting of sound recordings by users for private and domestic use if the prescribed conditions are complied with.

To ensure that the new copyright exception for media shifting of sound recordings applies only in specific circumstances, the new section 76A(1) stipulates the following applicable conditions for this exception :

1. The sound recording (original copy) used to make a copy of the sound recording (private copy) is not an infringing copy;
2. The private copy is made by the lawful owner of the original copy (owner) solely for the private and domestic use by the owner or a member of the household in which the owner lives;
3. Not more than one private copy of the original copy is made and stored in each device lawfully owned by the owner; and
4. The owner retains the ownership of both the original copy and the private copy.

It should be noted that this copyright exception for media shifting only applies to sound recordings and does not cover other copyright works (such as printed works, photographs, etc.).

The Amendment Ordinance introduces safe harbour provisions to provide incentives for online service providers (OSPs) to cooperate with copyright owners in combating online piracy, and to provide reasonable protection for their acts. The safe harbour provisions aim to provide an efficient and effective mechanism outside the court to handle allegations of copyright infringement, as well as balancing the interests among copyright owners, copyright users and OSPs.

The new safe harbour provisions limit OSPs’ legal liabilities for copyright infringement on their service platforms caused by subscribers or users, provided that they meet certain prescribed conditions, including taking reasonable steps to limit or stop such infringing activities when being notified.

For subscribers or users, the safe harbour provisions provide a fair and transparent regime that they may dispute the alleged infringements and make representations against the removal of their works. It would safeguard their freedom of expression.

The safe harbour provisions are underpinned by a Code of Practice (CoP) which sets out practical guidelines and procedures for OSPs to follow after notification. For example, the CoP sets out a “Notice and Notice” system which requires OSPs to notify their subscribers that their accounts have been identified in connection with an alleged copyright infringement; and a “Notice and Takedown” system where OSPs are required to remove materials or disable access to materials (stored or made available for search on the service platforms by subscribers) that are identified to be infringing.

The introduction of safe harbour regime seeks to provide additional protection for OSPs to ensure that they do not need to assume legal liability for pecuniary remedy for copyright infringement on their service platforms, provided that they meet certain prescribed conditions.

The new sections 88A and 65A(2) clearly define “service provider” as “a person who, by means of electronic equipment or a network, or both, provides, or operates facilities for, any online services”, and “online service” (but does not include any service provided through an intranet) includes:-

(a) the transmission, routing, or provision of connections for digital online communications, between or among points specified by a user, of information or material of the user’s choosing;
(b) the hosting of information or material that can be accessed by a user;
(c) the storing of information or material on a system or network that can be accessed by a user;
(d) the linking or referral of users to an online location by the use of information location tools; and
(e) the provision of online social networking services to users.

As such, the safe harbour regime is applicable to internet service providers, internet information location tools service providers, online storage space service providers, etc.

Any organizations or individuals who fall within the above definition is eligible for safe harbour protection, if they comply with the conditions under the safe harbour provisions.

On the other hand, the new section 88B(5)(b) stipulates that the failure of an OSP to qualify for limitations on liability under the safe harbour provisions has no adverse bearing on the consideration of any defence that may be available to the OSP in proceedings for infringement of copyright.

OSPs are always in the best position to combat infringing activities on the internet. For example, OSPs can stop infringing activities identified or accessible on their service platforms by technical measures. The cooperation of OSPs is therefore essential for the implementation of efficient and effective measures to combat online piracy.

Meanwhile, OSPs should not turn a blind eye to one’s use of their services for online infringing activities when they became aware of such occurrence. Depends on the circumstances, OSPs may also be liable for authorizing third parties to commit infringement activities.

As such, OSPs and copyright owners should cooperate to combat online piracy. This will bring benefits to the creative industries, OSPs and society at large. In fact, a number of overseas jurisdictions (e.g. Australia, Singapore, United Kingdom and United States) also have adopted similar safe harbour regime.

The new safe harbour provisions seek to strike a reasonable balance between protecting the legitimate rights of copyright owners and other interests. On the one hand, the safe harbour provisions ensure that so long as OSPs meet certain prescribed conditions, including taking reasonable steps to limit or stop a copyright infringement, OSPs’ liability for copyright infringement on their service platforms caused by subscribers would be limited, and thereby providing incentives for OSPs to cooperate with copyright owners in combating online piracy. On the other hand, the safe harbour provisions do not require OSPs to actively police their service platforms for infringing activities so as to avoid over-regulation of OSPs.

To allay public concerns regarding possible abuse of the mechanism, both the copyright owners making the complaints and subscribers are required to provide adequate and specific information to substantiate their allegations of copyright infringement and claims in counter notices respectively. For instance, a complainant must identify the copyright work alleged to have been infringed and the material and activity alleged to be infringing, confirm that he is either the copyright owner of the copyright work concerned or has been authorized to act on the copyright owner’s behalf, and confirm the truthfulness and accuracy of all the statements he made. A complainant or subscriber who submits a false statement may incur civil and criminal liabilities (the maximum penalty is a fine at level 2 (i.e. HK$5,000) and imprisonment of 2 years).

Moreover, upon receipt of a counter notice filed by a subscriber, an OSP is required to take reasonable steps to reinstate the material it has taken down unless the complainant has informed the OSP in writing that proceedings have been commenced in Hong Kong seeking a court order in connection with the infringing activity that relates to the material.

To protect individual subscribers’ personal data, an individual subscriber may opt against the OSP’s disclosure of his personal data when it sends a copy of his counter notice to the complainant.

In general, the complainant needs to apply to the High Court for disclosure of the personal particulars of the subscriber and prove that such disclosure is necessary, proportionate and justified. The OSP is only required to disclose such information upon consideration and approval by the court.

The new section 88B(2) states that if the OSP has not received or is not receiving any financial benefit directly attributable to the infringement, and subject to its compliance with other conditions, the OSP would qualify for safe harbour protection.

The new section 88B(4) further states that in determining whether an OSP has received or is receiving a financial benefit directly attributable to the infringement in question, the court may take into account all the circumstances of the case and, in particular—

• the industry practice in relation to the charging for the online services provided by other OSPs that are similar to the online service to which the infringement relates;
• whether the fee for the online service provided by the OSP is for, and the value of the online service provided by the OSP lies in, providing access to infringing material;
• whether the financial benefit received by the OSP for providing the online service to which the infringement relates is greater than the benefit that would usually result from charging for the online service in accordance with accepted industry practices; and

Without limiting the above principles, financial benefits directly attributable to the infringement do not include one-off set up fees and flat periodic payments that are charged by the OSP in respect of all users on a non-discriminatory basis.

As to advertising income generated from service platform, the court would determine on a case-by-case basis in accordance with the above principles.

The safe harbour provisions do not stipulate a specific time frame to take down the alleged infringing materials but require OSPs to act “as soon as practicable” to stop or limit the alleged infringing activity. The wording “as soon as practicable” is adopted taking into account the divergent views of different stakeholders, and that a standard time frame may not be able to cater for different circumstances of individual cases and the operational needs of OSPs. The wording “as soon as practicable” provides the flexibility that individual OSPs may require and strikes a reasonable balance between different stakeholders’ interests.

There is also no definite timeframe for removal of allegedly infringing content or disabling access to such content in the copyright regimes of Australia, New Zealand, Singapore, the UK and the US.

Copyright infringement attracts civil liability which is actionable by copyright owners. The general principle behind is to right the wrong that has been done to a claimant, who must bear the burden of proof of the wrongdoing and the harm done. As a general rule, damages are compensatory in nature and the copyright owner has to prove the loss suffered by him as a result of infringement.

In view of the difficulties encountered by the copyright owners in proving and quantifying actual loss, the existing Copyright Ordinance allows the court to award additional damages as the justice of the case may require having regard to all the circumstances, and, in particular, a non-exhaustive list of statutory factors (section 108(2)):-

1. the flagrancy of the infringement;
2. any benefit accruing to the defendant by reason of the infringement; and
3. the completeness, accuracy and reliability of the defendant’s business accounts and records.

Given the challenges in the digital environment (especially in providing evidence to prove actual loss in online infringement cases), the Amendment Ordinance introduces two additional non-exhaustive factors in section 108(2) of the Copyright Ordinance for consideration by the court when determining whether to award additional damages, so that the total amount of damages awarded is more commensurate with the prejudice, loss and/or injury suffered by the plaintiff:-

1. the unreasonable conduct of an infringer after having been informed of the infringement; and
2. the likelihood of widespread circulation of infringing copies as a result of the infringement.

(i)    Unreasonable conduct of the defendant after having been informed of the infringement

This factor seeks to clarify that apart from the defendant’s conduct before he was notified of the infringement, his full course of conduct in relation to the infringement, including his conduct after being notified of the infringement claim (e.g. acts of destroying evidence of infringement or concealing the infringement, etc.) is a material factor for the court to take into account when determining whether to award additional damages.

(ii)    Likelihood of widespread circulation of infringing copies as a result of the infringement

This factor is to make clear that the court may, when determining whether to award additional damages, take into account any evidence indicating the likelihood of circulation of the infringing copies by other parties as triggered off by the defendant’s infringing act(s).

The two additional non-exhaustive factors, together with the existing three statutory factors, would provide more comprehensive guidance to the court in its determination of whether to award additional damages. The bundle of factors would also provide better guidance for copyright owners on the types/kinds of evidence which they could adduce before the court in support of their claims for additional damages in civil cases.