Prejudicial Communication Offence and Parodies under the Copyright (Amendment) Bill 2014

Felix Tin, Senior Associate, ONC Lawyers

The lapsed Copyright (Amendment) Bill 2011 was revised and introduced to the Legislative Council as the Copyright (Amendment) Bill 2014 pending resumption of second reading debate.

Prejudicial Communication Offences

Under both the Copyright (Amendment) Bill 2011 (the “2011 Bill”) and 2014 (the “2014 Bill”), a person commits a criminal offence if he makes unauthorised communication or distribution of copyright works to the public to “such an extent as to affect prejudicially the copyright owners” (the “Extent”).

To clarify what amounts to the Extent, the 2011 Bill introduced the “more than trivial economic prejudice” concept under which a non-exhaustive list of factors was introduced for the court to consider in determining on the Extent. Such non-exhaustive list has been criticised for being imprecise, resulting in legal uncertainty and having a chilling effect on freedom of expression. Accordingly, the 2014 Bill has dropped the “more than trivial economic prejudice” threshold as well as the non-exhaustive list and instead stated that the court may take into account all circumstances and focus on the factor of economic prejudice, which will largely depend on whether the infringement would amount to substitution for the original copyright work.

New Copyright Exceptions for Parodies

One of the stumbling stones for passing the 2011 Bill is its lack of exemptions for derivative works/parodies and common activities on the internet, such as mash-ups, altered pictures/videos, doujinshi (同人誌), image/video capture, posting of earnest performance of copyright works and rewriting lyrics on social websites such as YouTube and Facebook. Under the 2014 Bill, fair dealings with copyright work for three purposes are exempt from copyright infringement on the condition that there is, so far as practicable, sufficient acknowledgement of the copyright.

The purposes covered by the fair dealing exceptions include the purpose of parodies (imitation of the style of a particular writer for comic effect), satire (use of humour or ridicule to criticise people’s stupidity or vices), caricature (depiction of a person with exaggerated distinguishing characteristics for comic effect) or pastiche (artistic work that imitates that of two other works, artists or periods). In view of other possible means that may be used for expression of views or comments on current events, the 2014 Bill introduced additional fair dealing exemptions for the use of copyright works for commenting on current events and limited quotation (to an extent which is not more than is required by the specific purpose of its use) of copyright works.

During the consultation for the 2014 Bill, the concept of user generated content (“UGC”) surfaced which covers the scenario where a fan of a cartoon character set up a non-profit making website (for sharing his interest in the cartoon character) containing copyright images of the cartoon character. Although it was proposed that UGC should also be covered by fair dealing exception, the concept was not adopted as a subject of exception in the 2014 Bill on the ground that it is still unsettled and developing.

Liability of Online Service Providers (“OSP”)

The 2014 Bill has kept the safe harbour provisions under the 2011 Bill which limits OSP’s liability to pay damages or other pecuniary remedy for copyright infringement on their service platforms caused by subscribers subject to specified conditions. Such limitation has been backed up by the proposed procedure for complainants to give notices of alleged infringement to OSP, for OSP to respond to such notices in various ways (eg, to forward such notice to the subscribers or directly remove the alleged infringing works with notice of removal to the subscribers), and for subscribers to file counter-notice and demand reinstatement of the allegedly infringing works. OSPs and copyright users and owners may follow detailed guidance in a Code of Practice to be issued in future.

Conclusion

The preliminary proposals leading to the 2011 and 2014 Bills dated back to April 2008. There have been calls for passing the 2014 Bill pending resolution of the UGC issue to keep pace with international standards in protection of intellectual property in digital environment. Same as the 2011 Bill that lapsed, the 2014 Bill is pending resumption of second reading debate. Interested parties shall keep an eye on the development before the 2014 Bill lapsed on the expiry of the term of the Legislative Council in 2016.