Copyright and Protection Against Infringement

  1. Introduction – Why does it matter to you?

Copyright is perhaps the most commonly known intellectual property right. This article will touch on:

  • What is copyright?
  • What works are “copyrightable” to gain protection?
  • Ownership, licensing and assignment of copyright
  • Implications of copyright infringement and possible defences

Copyright is important to you in two aspects. First, a lot of works is created in the course of your business. Whether such work will be considered as a copyrighted work will determine the nature and scope of rights your have over the work as well as the possible mechanism of distribution of your work.

On the other hand, you will inevitably make use of others’ works in the course of your business. It is hence crucial to consider whether those works are protected by copyright in order to minimize your risk of infringement and potential lawsuits, and to consider the necessity and possibility in seeking authorization from the copyright owners by way of licensing or assignment.

  • N.B. please refer to the article “User-generated Contents and Copyright Issues” for copyright issues in relation to internet/social media uses.

2. Nature of Copyright

2.1 What is copyright?

Copyright is a property right which confers protection on original expressions. Once a work is qualified as a copyrightable work, the copyright owner will acquire a bundle of rights including the right to exploit the copyrighted work and the right to exclude others from using the copyrighted work, publishing or distributing the copyrighted work, and producing derivative works from the copyrighted work without the consent of the copyright owner.

Copyright is protected under Copyright Ordinance (Cap. 528) of the Hong Kong law.

  • Is registration required?

No. Once the work is qualified as a copyrighted work (see below for the requirements), the work automatically gains protection in Hong Kong. There is no need to register the piece of work. 

  • Duration of copyright

Generally speaking, the duration of copyright protection in most copyrighted works is life of author plus 50 years from the end of the calendar year of the death of the author.[1] If the author is unknown, the copyright will expire 50 years from the end of the calendar year in which the work is created/made available to public (as applicable). 

There are several exceptions, for instance typographical arrangement of published editions of writings has a shorter term of protection of 25 years from the end of the calendar year in which the work is first published. [2] Therefore, you are strongly advised to check the ordinance for the copyright duration of specific types of work.

3. What works are “copyrightable”?

A work must satisfy three requirements in order to gain protection under copyright, namely:  

  • Expression of idea
  • Originality
  • Subsistence

3.1 Expression of idea

Copyright only protects an expression of idea not the idea itself. Take the story of Cinderella as an example, the story idea itself is not copyrightable but the way you describe the story such as a novel or a play manifesting the Cinderella story can be protected by copyright.

3.2 Originality

Next, the expression must be original. Although there is no statutory definition of originality, it has been established that originality comprises two essential elements:

Independent creation

It means that the work must be created independently by the author without copying from another work.

Creative authorship

It means that the work must have a minimum degree of creativity, that is, the author must have exercised his/her skill and judgement in the course of creation of the work. The standard of creativity is pretty low as long as the effort put is not negligible or trivial. Take photographs as an illustration, a quick snap of an object without any planning or timing, as compared with photos that require planning over rendition and timing, will be hard to justify the protection. 

Notably, artistic or aesthetic quality of the work is irrelevant in the determination of originality, therefore an ugly painting would gain copyright protection as long as it qualifies as a “copyrightable work” by satisfying the three requirements discussed in this section.

3.3 Subsistence

Lastly but most importantly, only certain categories of work are copyrightable. They are:

  • literary, dramatic, musical or artistic works;
  • sound recordings, films, broadcasts or cable programmes; and
  • the typographical arrangement of published editions.[3]

Literary work is widely construed to include any work, other than a dramatic or musical work, which is written, spoken or sung, and so it could also include computer programs, databases (e.g. football fixtures) and the relevant designing materials.

Dramatic work is a work capable of performance or reproduction, such as films, theatrical works, dances or mimes.

Musical work is a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music (N.B. lyrics in a music/song is protected as literary work while action may be protected as dramatic work).

Artistic work includes a wide range of work, namely:

  • a graphic work, photograph, sculpture or collage, irrespective of artistic quality;
  • a work of architecture being a building or a model for a building; and
  • a work of artistic craftsmanship.

4. Ownership, licensing and assignment

4.1 Ownership

The copyright is owned by the author who created the work. It is in many cases not hard to prove by showing evidence of drafts, planning and models of the work. However, ownership issue could be more complex if the works are created involving employment or commission relationship.

If you are an employer, works made by your employees in the course of their employment (that is, when they are doing work that is naturally incidental to or connected with their class of work), the copyright will belong to you unless there is an agreement to the contrary. In contrast, for commissioned works such as works developed by an independent contractor on commission by the company), the copyright will belong to the creator of the work unless otherwise agreed, yet the party which commissioned the work would have exclusive license of the commissioned work.

Business entrepreneurs are advised to include clauses concerning ownership of the copyright (as well as other intellectual property) in contracts with employees, independent contractors, external helpers and even volunteers of the company, by stating that the company will retain ownership of all works created by these parties. This would give both the company and parties dealing with the company a higher certainty on the ownership of the copyright and risk of infringement.

4.2 Licensing

Licensing means the copyright owner (licensor) gives another party (licensee) a permission to use the copyrighted work in a specific manner (e.g. authorize the licensee to create a drama based on a novel protected by copyright). The license granted can be exclusive or non-exclusive. There are no specific formalities, and the terms of the license is a matter of business negotiation.

4.3 Assignment

On the other hand, assignment entails a transfer of the copyright from the owner of the copyright (assignor) to another party (assignee). After the assignment, the assignor ceases to be the owner of the copyright and the assignee becomes the new owner and therefore exclusively enjoys the copyright. An assignment may be partial, that is only transferring one or more exclusive rights the owner possesses to the assignee.

5. Copyright infringement

Copyright is infringed when a person tries to interfere with the owner’s right to deal with his/her copyrighted work without the owner’s consent.

There are two types of infringement, namely primary and secondary.

5.1 Primary Infringement

Primary infringement includes acts such as copying a copyrighted work, issuing/renting copies of the work, performing/showing/broadcasting the work and making an adaptation of the work.[4]

Particularly, to establish an infringement of copyright by copying a copyrighted work, the copyright owner must prove that (i) the alleged infringer had access to the copyrighted work and (ii) the allegedly infringing work is substantially similar to the copyrighted work. The second element is to be assessed on a case by case basis. It is not necessarily about quantity (although the more the copyrighted work is copied, the more likely to find a substantial similarity) but also the quality of the copied material. That is, if the copied material is the core part or the most characteristic part of the copyrighted work, it would be more likely to establish an infringement. By contrast, it is irrelevant that the copied parts do not constitute a substantial part of the allegedly infringing work.

5.2 Possible defences against primary infringement

Fair dealing is a list of statutory defences. It allows the use of others’ copyrights without authorization for the following purposes/reasons only:

  • Research and private study [5]
  • Criticism, review and news reporting [6]
    • For instance, the news programme reporting an art exhibition may show the artworks
  • Education[7]
  • Uses by librarians/archivists [8]
  • Incidental inclusion of work in an artistic work, sound recording, film, broadcast or cable programme [9]
  • Uses by persons with a disability [10]
    • For instance, this allows the making and provision of copies of TV broadcasts and cable programmes with sub-titles or suitable modifications to people who are deaf or hard of hearing, or physically or mentally handicapped
  • Uses for the purposes of public administration such as uses by the Legislative Council or in court proceedings [11]

It is more likely for companies to rely on the reason of “incidental inclusion” and “criticism” in their course of business. It is advisable to add a sufficient acknowledgment of the copyright of others in your work although only “criticism, review and news reporting” and “education” call for a sufficient acknowledgment as part of the requirement of fair dealing.

5.3 Secondary infringement

5.3.1 Examples of secondary infringement

Secondary infringement concerns with importing/exporting/possessing/distributing infringing copies of the work, or acts that assisting a person in acts that are primary infringement, such as providing a platform for the infringer to distribute/perform the infringed works.[12]

5.3.2 Possible defences against secondary infringement

There is no secondary infringement unless primary infringement is proved. Even if there is primary infringement, people being sued for secondary infringement would not be liable if he had no reason to believe that the copies were infringement copies,[13] by making reasonable enquiries or having reasonable grounds to believe so.

5.4 Remedies and liability for copyright infringement

A person whose copyright has been infringed can sue the infringer and apply to court for:

  • “Order for delivery up” under which the infringer has to delivery up all the infringing works and copies to the copyright owner
  • Damages for the loss associated with the infringement
  • Account for profits from the infringer in making use of the copyrighted works

Certain acts of copyright infringement are criminal offences. For most of these offences, a person can be punished by a fine up to HK$50,000 per infringing copy and imprisonment up to four years upon conviction. [14]

Checklist –   You should: Understand what copyright isUnderstand what “copyrightable” isHave a brief idea of copyright infringement, potential defences and liabilities 

[1] s.17(2), Copyright Ordinance

[2] s.21, Copyright Ordinance

[3] s.2, Copyright Ordinance

[4] s.22(2), Copyright Ordinance

[5] s.38, Copyright Ordinance

[6] s.39, Copyright Ordinance

[7] ss.41A-45, Copyright Ordinance

[8] ss.46-53, Copyright Ordinance

[9] s.40, Copyright Ordinance

[10] ss.40A-40C, Copyright Ordinance

[11] ss.54A-55, Copyright Ordinance

[12] ss.30-34, Copyright Ordinance

[13] s.36(1), Copyright Ordinance

[14] s.119, Copyright Ordinance

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