Intellectual Property Department, Hong Kong SAR Government1 Public Discussion Forum on Review of Certain Provisions of the Copyright Ordinance Session II

Intellectual Property Department, Hong Kong SAR Government2 Discussion Topics for this Session Employee Defences Proof of Infringement (Business End- users of Pirated Computer Software) Circumvention of Technical Measures

Intellectual Property Department, Hong Kong SAR Government3 Employee Defences

Intellectual Property Department, Hong Kong SAR Government4 ‘Defence’ and ‘Exception’ If an accused person appears to have acted within the scope of an exception, the prosecution has the burden of proving beyond reasonable doubt that the accused was not covered by the exception. An accused person would have the burden of proving on the balance of probability that he/she should benefit from a statutory defense.

Intellectual Property Department, Hong Kong SAR Government5 Employee Defences Defences against accusations of criminal infringement of copyright under S. 118(1) - –making for sale/hire –importing (non private) –exporting (non-private) –possession for trade or business purposes –selling/hiring for trade or business purposes –prejudicial distribution

Intellectual Property Department, Hong Kong SAR Government6 Problems for Discussion In relation to end-user criminal liability, should employees in a ‘weak’ position enjoy a specific defense? Can managers escape through a loophole provided by employee defenses? Should there be ‘whistle-blower’ protection for employees who identify managers who provided infringing copyright works (computer programmes, movies, television dramas and music recordings) for business use? What should be done for employees who fear losing their jobs if they refuse to use infringing copyright works?

Intellectual Property Department, Hong Kong SAR Government7 Proof of Infringement (Business End-users of Pirated Computer Software)

Intellectual Property Department, Hong Kong SAR Government8 Proof of Infringement (Business End- users of Pirated Computer Software) If you find suspected pirated computer software on a computer in a business office, how do you prove that it is an infringing copy?

Intellectual Property Department, Hong Kong SAR Government9 Circumstantial Evidence Pirated optical disks found on the premises? Failure to retain original packaging and manuals? Lack of receipts of accounting records of purchase of genuine software? Lack of an end-user licence? Should we require business users to retain proof that their software is genuine?

Intellectual Property Department, Hong Kong SAR Government10 Some Ideas... Failure to demonstrate ownership of a licence could support inference of infringement? Legal requirement to retain records of licenses for up to seven years? Others…?

Intellectual Property Department, Hong Kong SAR Government11 Circumvention of Technical Measures

Intellectual Property Department, Hong Kong SAR Government12 Circumvention of Technical Measures It is now a civil infringement of copyright to –make –deal in (import/export/sell/hire/offer for sale/advertise for sale) –possess for trade purposes a device or means to circumvent copyright protection for trade/business purposes. There is no criminal liability at present.

Intellectual Property Department, Hong Kong SAR Government13 Circumvention of Technical Measures (2) Apart from devices and means to circumvent copyright protection for trade/business purposes, we now often come across devices and means to restrict access to all or parts of digitized works. For example, a device may allow a work to be viewed, but disallow ‘cut-and-paste’ copying.

Intellectual Property Department, Hong Kong SAR Government14 Problem? The Games Industry feels that making/dealing in ‘mod chips’ to circumvent copyright protection for games is very prevalent. It is difficult to deal with using civil litigation alone. They have had some significant successes in the past, however.

Intellectual Property Department, Hong Kong SAR Government15 Do we risk protecting too much? Sometimes, anti-circumvention devices are built in to devices that make copies that are permitted under copyright law (e.g. restricting access to digital copies of works that are out of copyright). We could amend the law to make it an offence to circumvent copyright protection devices for the purpose of making infringing copies.

Intellectual Property Department, Hong Kong SAR Government16 Options Criminalize the circumvention of copyright protection activities presently covered by S. 273 of the CO? Expand S. 273 to cover access control measures and then criminalize the expanded scope? Both expand to cover access control, and provide criminal sanctions for both?

Intellectual Property Department, Hong Kong SAR Government17 END