Information given below is for general reference only and does not constitute any legal advice.
For details on the new amendments, please refer to https://www.ipd.gov.hk/en/copyright/legislative-proposals-and-amendments/copyright-amendment-ordinance-2022/index.html.
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:
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: -
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: -
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—
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 —
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—
*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 —
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——
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—
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—
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—
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.