Wk2&3 Subsistence and Types

Question 1

Copyright Ordinance s.2

Answer 1

• the most important section as it lays the foundation of the Ordinance, how it limits the rights-

1. Copyright is a property right which subsists in accordance with this Part in the following descriptions of work—(a)original literary, dramatic, musical or artistic works; (b) sound recordings, films, broadcasts or cable programmes; and (c) the typographical arrangement of published editions.
2. In this Part “copyright work” ( 版權作品 ) means a work of any of those descriptions in which copyright subsists.
3. Copyright does not subsist in a work unless the requirements of this Part with respect to qualification for copyright protection are met (see section 177 and the provisions referred to there).

Question 2

What is a copyright work?

Answer 2

A copyright work is a work

• in which copyright subsists (s.2(2) of CO)
• Fixed list - 9 types of copyright works (s.2(1) of CO):
  • Original literary, dramatic, musical or artistic works
  • sound recordings
  • films
  • broadcasts
  • cable programmes
  • typographical arrangements of published editions
• C.f. France (open-ended definition over copyright) –> consequence: many people file litigations to argue that certain categories of items are entitled to copyright protection, e.g. perfumes

in Hong Kong, a film is a film, can’t be music

Note:

• Only category (a)–literary, dramatic, musical or artistic works should be ‘original’
• there’s no ‘original’ requirement for sound recordings, films, broadcasts or cable programmes, and typographical arrangement of published editions.
• 2) and (3) also indicate works that can be copyright protected shall be covered by the listed descriptions, and meet certain criteria.

Question 3

Conditions for works to be qualified as copyright work (checklist)

Answer 3

1. It should be in general ‘original’ (at least in category a)
2. It should be an expression rather than merely an idea (idea/expression dichotomy, fixation requirement)
3. It must fall within the set descriptions of work otherwise it will not count
4. Lawful person (s.177, you need to have legal residency somewhere. Thus, in general this qualification does not affect anyone except one who’s no residency)
   * Recorded, in writing or otherwise;

Question 4

What is copyright?

Answer 4

Copyright is a property right

• Exclusivity
• Transmissible (S101(1)) e.g. you can to license it to someone else

Question 5

Originality & work

Answer 5

Originality is not concerned with whether the work is inventive, novel, or unique, it only cares about if it has originated from the author and has not been copied from another work [the University of London Press case 1916, and Interlego case 1989]

• i.e. Not necessarily have to be new, but should come from you

By saying a ‘work’ means that the author must have exercised the requisite intellectual qualities, or in other words, ‘labour, skill, or effort’ in producing the work. [Ladbroke 1964]

• i.e. whether you have contributed to the resulting works in terms of labour, skill, effort. e.g. a stone may come from you as you pick it up but you did not put too much effort in it.

Question 6

3rd Condition: fixation

Answer 6

What are not protected by copyright? (Designers Guild Ltd v Russell Williams (Textile) Ltd):

• Idea (instead of expression of ideas): not protected, because they have no connection with the literary, dramatic, musical or artistic nature of the work. Thus, others are free to express such ideas in their own words, no matter how “original” the idea is (Kleeneze Ltd v DRG (UK) Ltd [1984])
• Expression of ideas that are not original (Kenrick & Co v Lawrence & Co (1890)).

the 3rd condition for a literary, dramatic or musical work to enjoy copyright protection: idea/expression dichotomy

• Copyright does not protect ideas, but the expression of ideas.

Why do we not protect ideas?

• difficult to ascertain what the idea to be protected is. how do you put it to the court? Could floodgate litigation
• Utilitarian perspective: damage the society (if you dominate idea, prohibit others’ thinking)

Question 7

Author needs to show the expansion of skill and judgment to justify protection.

Answer 7

• “Skill” = the use of one’s own knowledge/ developed attitude/ practiced ability in producing the work
• “Judgment” = the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work (CCH Canadian Ltd v Law Society of Upper Canada [2004]).
• There is no restriction as to the amount of time required; but it could not be too trivial.

Question 8

Sawkins v Hyperion Records Ltd [2005]

Answer 8

Fact:

• Musical works of Lalande (copyright expired) to produce modern performing edition
• P had not composed anything new except for one piece.

P’s allegation:

1. his edition were original because he originated the performing editions by his own expert and scholarly exertions;
2. the editions did not previously exist in that form
3. the contents of his editions affected the combination of sounds produced by the performers.

P spent over 300 hours on each edition and made more than 3,000 editorial interventions in the works.

Held:

• The effort, skill and time P spent in making the performing editions were sufficient to satisfy the requirement of originality.
• Whether a work is original or not is a matter of degree, depending on how much skill, labour and judgment in the making of the copy was devoted to. The more that the author merely performs an easy mechanical function, the less was his contribution likely to be taken as “original”.

Question 9

Tai Shing Diary Ltd v Maersk Hong Kong Ltd [2007]

Answer 9

• Simplicity did not prevent originality; the threshold to satisfy originality is a low one

Fact: D argued that P diaries lacked sufficient originality in that they were common to all diaries and calendar.

Held: P won. “The author might draw on existing material, so long as more than negligible or trivial effort or relevant skill and judgment had been expended in the creation of the work”

e.g. selecting, arranging, and presenting the available info in an intelligible manner.

Question 10

Name / patent / trademark

Answer 10

The Court found that typically there is no copyright in a name, invented or otherwise, and that a trade mark can only be infringed when the infringing party shares part of the market segment.

• What is the work trying to represent? Compared with ordinary “literary work”, the above mark “Exxon” has insufficient labour, skill and effort being devoted to it. Did have some creativity but may not necessarily merit the protection.
• neither literary nor artistic. If you think that picture is unique enough then it may be copyrighted. But the company purports to prohibit others from using the word itself, not the picture.

With regard to the trade mark, the Court found that the use of this word by D, who work in a field that in no way shares a market segment with the plaintiff, in no way dilutes P’s brand name nor infringes on its trade mark.

Question 11

Two principles relating to originality

Answer 11

De minimis principle + Sweat of the brow’ principle

Question 12

De minimis principle

Answer 12

De minimis principle: ’the law cares not for small things’

• Public interest in preventing the control of words or phrases that should be available for all to use without fear of copyright infringement
• What about 3 words [Rose v. Information Services 1987]?
• What about 11 words [infopaq 2009, 2004 CCH Canadian case]?

From utilitarian perspective, the outcome of granting copyright protection to several words (e.g. Exxon) is that other people are NOT allowed to use that word anymore, which harms the benefit of the public

3 words not possible but 11 words of headline over newspaper may be copyrighted → The longer the words the higher possibility that it may be copyrighted.

Question 13

Sweat of the brow’ principle

Answer 13

The threshold to satisfy originality is a low one, but the effort must not be so trivial as to be characterized as a purely mechanical exercise [Tai Shing Diary Ltd v Maersk Hong Kong Ltd [2007] 2 HKC 23].

If use is made of already existing material, copyright will subsist if there is some element of material alteration or embellishment (Fossil Inc v. Trimset Ltd [2003] HKCFI 16, para 12)

• whether yellow book should be protected? what justify one to protect it?
  
  • UK standard may be enough as there’s efforts but in the other jurisdictions, i.e. US & civil law countries: certain level of personal character is required for copyright protection over work → so, compilation like yellow book is not protected
• Characters’ name may receive weak protection but also depends how you use it/how much you borrowed (e.g. the plots, image/personality of the characters are the same)
• if one is not sure whether there exist copyright issues, just apply for license first.

Question 14

CO s4(2)

Answer 14

(2) Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise; and references in this Part to the time at which such a work is made are to the time at which it is so recorded.

Question 15

What is a literary work ?

Answer 15

• s.4(1) of CO: “Literary work” ( 文學作品 ) means any work, other than a dramatic or musical work, which is written, spoken or sung, and accordingly includes:
  
  • (a) a compilation of data or other material, in any form, which by reason of the selection or arrangement of its contents constitutes an intellectual creation, including but not limiting to a table;
    
    • ‘Intellectual creation’ is a criterion higher than the ‘Sweat of the brow’ principle, it requires the author exercise judgment, taste or discretion in the selection or arrangement. There is no case law in HK for the moment, most likely HK will follow the Football Dataco v. Brittens Pools case in 2010 (“there is undoubted selection and arrangement in the choice of dates and the decisions as to which match is played on which date”).
  • (b) a computer program; and
    
    • Computer program: copyright protection will not be conferred on the object codes in HK [HKSAR v Chan Tak Tim].
  • (c) preparatory design material for a computer program;

Case Law:

• “A literary work is intended to afford either information/ instruction/ pleasure in form of literary enjoyment.” (Exxon Corp v Exxon Insurance Consultants Intl. Ltd [1982])
• “Literary work cannot… be confined to a work exhibiting literary art or style. Rather it has the broad sense of any written or printed composition.” (Ratio Telefis Eireann v Magill TV Guide Ltd [1990])
• Peterson J: Work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word literary seems to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter —University of London Press v University Tutorial Press [1916] 2 Ch. 601 at 608
  
  • covers a work which is expressed in print or writing, irrespective of its quality. No merit is required

Question 16

idea vs expression #literary, dramatic or musical work

Answer 16

Copyright does not protect ideas, but the expression of ideas

• In order to distinguish between idea and expression, an abstraction process is needed
• Novel as an example: copyright only protects expression but no idea, cannot prevent one writing a bunch of kids to the magical school → but there’s a red line. As the story goes on, there may be more evidence on the similarities.
  
  • e.g. An American soldier fell in love with a German nurse during WWII, in a certain town… → more specific, but still need more details in order to be copyrightable.
  • e.g. just changing names of the characters, but others remain the same? → Copyright infringement. Changing the words alone but same scenarios → infringed.

Depends on: how you structure your materials!

Question 17

Merger doctrine #literary work

Answer 17

Some ideas can be expressed intelligibly only in one or a limited number of ways. In such cases the expression merges with the idea and is therefore not protected

e.g. cook book

Question 18

scène à faire principle #literary work

Answer 18

• certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre
• e.g. IP textbooks: containing case laws, which are not protected because these are essential materials that cannot be avoided when it comes to explaining IP law. Similarly, citation is not copyrightable.
  
  • only the original idea of the authors can be protected, not case quotes.
• E.g. depicting part of the WWII history, inevitable to illustrates certain event, persons, facts

Question 19

“Compilation” (彙編):

Answer 19

• It requires originality, which emphasized on the selection or arrangement of content constituting an intellectual creation.
• Note: where the UK has made differentiate copyright and database rights under the Directive on the Legal Protection of Databases, that has not been followed by HK.

Football League Ltd v Littlewoods Pools Ltd [1959]

• Compilation of the complete list of football matches (fixture list)
• It requires a great amount of labour, skill and ingenuity – the arrangement was a matter of painstaking trial and error.

Ladbroke (Football) Ltd v William Hill (Football) Ltd

• Lord Reid: “… cases where copyright has been denied to a compilation are comparatively few.

Question 20

Dramatic work

Answer 20

• “Dramatic work” (戲劇作品) includes a work of dance or mime (s.4(1) of CO)
• Dramatic works could include many elements
  
  • e.g. dialogue (which may be protected as literary works), dancing
  • work of mime without words can be regarded as dramatic work

Question 21

Ratio of the Norowzian case #Dramatic work

Answer 21

• A dramatic work is capable of being performed [Norowzian v Arks (no. 2) 1999]
  
  • Concerns definition of dramatic works.
  • “A dramatic work is a work of action, with or without words or music, which is capable of being performed before an audience. A film will often, though not always, be a work of action and it is capable of being performed before an audience. It can therefore fall within the expression “dramatic work” in s.1(1)(a) and I disagree with the judge’s reasons for excluding it.” - Lord Justice Nourse [[1999] EWCA Civ 3014]
• if the scripts indicates where and when some characters do certain actions, then it may be dramatic works.
• the problem with video games is that the scripts do not instruct how the player play it

Question 22

Norowzian v Arks (no. 2) 1999

Answer 22

Facts:

• A short film of the plaintiff(P) called Joy depicted a man dancing to music on the flat rooftop of a building. The effect of editing the film by the technique of jump cutting was used to remove certain parts of the sequence of movements and to join together the parts 🡪 physically impossible for the performer to perform the routine displayed on the film.
• P claimed defendant’s (D) advertisement infringed his copyright in Joy as it portrayed a man who having been served a pint of Guinness, danced about a while. Similar jump cutting technique used + D had instructed the director of the ad to produce with an atmosphere similar to that in Joy.

Held:

• CFI: Not a dramatic work. The film could not be ‘dramatic work’ as it was not capable of physical performance. Because of the editing process the film was not a recording of anything that could be performed a danced by anyone.
• CA: Appeal dismissed but CFI’s definition also rejected. The dance itself did not constitute a dramatic work, but the film did constitute a dramatic work as it was capable of being performed before an audience. However, there was not infringement since copyright does not subsist in mere style or technique.

Question 23

Nova Productions Ltd v Mazooma Games Ltd #dramatic work

Answer 23

Issue: computer game as a dramatic work?

Held: Claim rejected. A dramatic work must not vary from performance to performance.

Question 24

Green v Broadcasting Corp of New Zealand

Answer 24

• P sued D for both passing off and copyright infringement in his television talent show titled “Opportunity Knocks”. The evidence relayed to the court was particularly diffuse (e.g. gimmicks, a collection of catchphrases, the use of a “clapometer”, etc.)
• Held: a dramatic work must have sufficient unity so as to be capable of performance or reproduction and the unpredictable nature of the show’s participants and their acts made that impossible.

Question 25

Musical work

Answer 25

* “Musical work” (音樂作品) means a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music. (s.4(1) CO) * Music and lyrics are separate * Will a few notes suffice? depends how long -\> the longer the easier to be proved * Other elements such as performing indications, tempo and performance practice indicators, if they are the product of a person’s effort, skill and time, can be covered by copyright (Sawkins v Hyperion Records, page 227 of textbook) * Held: notes should not be regarded as the only matter covered by musical copyright. * Spontaneous singing, whistling or humming or of improvisations (free style) of sounds by a group of people with or without musical instruments should be regarded as music for copyright purposes. * Note: need to be recorded s4 CO subsection 3 * (3) It is immaterial for the purposes of subsection (2) whether the work is recorded by or with the permission of the author; and where it is not recorded by the author, nothing in that subsection affects the question whether copyright subsists in the record as distinct from the work recorded. * Permission to record a work, and whether the work is recorded by the author is immaterial in terms of copyright protection.

Question 26

Artistic works (s5 CO)

Answer 26

In this Part— “ artistic work ” ( 藝術作品 ) means— * (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality; * (b) a work of architecture being a building or a model for a building; or * (c) a work of artistic craftsmanship; “building ” ( 建築物 ) includes any fixed structure, and a part of a building or fixed structure; “graphic work” ( 平面美術作品 ) includes—(a)any painting, drawing, diagram, map, chart or plan; and(b)any engraving, etching, lithograph, woodcut or similar work; “ photograph ” ( 照片 ) means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film; “ sculpture ” ( 雕塑品 ) includes a cast or model made for purposes of sculpture.

Question 27

s5 CO artistic works: painting - tatto / calligraphy etc.?

Answer 27

* What about body painting? Tattoo?—Sims, A. (2016). The perils of full copyright protection for tattoos. European Intellectual Property Review, 38(9), 570-576. * According to Merchandising Corp of America v Harpbond 1983, it was deemed without permanence so no copyright protection. Need to last a long period of time * but if it’s recorded, may be protected as photograph * s5 also provides that, ‘irrespective of artistic quality’. calligraphy?: is it a literary work or just a painting? graphic + literary or literary? * We all know that it’s often an imitation of the masters’ style. Consist of words - can be a literary work as well * Graphical work + literal work?? * if one originates the words themselves (rather than simply copying others’ saying) and can show labor, may be literal work

Question 28

Merchandising Corp of America v Harpbond #graphic works

Answer 28

Held: rejecting the argument that body paining (in the form of make-up) constituted a painting for the purpose of copyright—“a painting is not an idea: it is an object; and paint without a [permanent] surface is not a painting”.

Question 29

Sculpture (3-dimensional works)

Answer 29

* What about moulds for the Stormtrooper helmet and armour? * The answer is no according to the Metix 1997 case and the Lucasfilm case. It was decided that the manufacturers of both items lacked inherent artistic purpose. * ‘Irrespective of artistic quality’: The courts said we need artistic purpose, but the law says we don’t care artistic quality * Something wrong here? * No, in order to be considered as a sculpture work, you need to first be considered as a work, that is, if you are producing a functional item or producing something to serve a functional purpose, it will not suffice. It must have an artistic purpose, even the end result is with low artistic quality, it doesn’t matter.

Question 30

Metix (UK) Ltd v GH Maughan (Plastics) Ltd #sculpture

Answer 30

* F: P sought to protect its products by claiming copyright protection in the moulds made for making industrial products (twin cartridges like a double-barrelled syringe, which held products prior to their being mixed), as works of sculpture. * Held: Transient existence may be a work of sculpture, but in this case the Court did not see anything artistic in the moulds.

Question 31

Lucasfilm Ltd v Ainsworth [2012] AC 208 #Star Wars case #sculpture

Answer 31

Moulds for the Stormtrooper helmet and armour also held not to qualify as “sculptures Set out GR: that, to qualify as a sculpture, the work must be created to have an artistic purpose. Here, the helmet and armour were created to portray something about characters in the film and lacked inherent artistic purpose (utilitarian rather than artistic purpose)

Question 32

Photograph #artistic works

Answer 32

* “ Photograph ” ( 照片 ) means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and ***which is not part of a film***; * cannot be screenshot * What if I took a photo randomly? Again, it depends on whether you could demonstrate that you have put a minimum level of 'skill, judgment and labour' in making the photo [antiquesportfolio.com 2001]. * but if it’s like the photo above, then it is not likely to be copyright protected. * using the same model and same angle? no, the expression is not original. * This is regarded as a copy instead of a creation * Question: If I photoshopping the picture, like adding a filter on it, could I claim for copyright? It depends on the degree of changes to the photo — if it’s a mere change of colour, it’s trivial. * Question: According to the textbook, derivative work could still be protected. For instance, what if the photographer asked the model to pose slightly different or hold a different object, would that be sufficient to be considered as an ‘original’?
 * yes

Question 33

Antiquesportfolio.comPlc v Rodney Fitch & Co Ltd #photographs

Answer 33

Held: in the case of a photograph of a three-dimensional object, the positioning of the object, the angle at which it is taken, the lighting and the focus were all matters which could involve aesthetic or even commercial judgment so as to confer originality on the photograph

Question 34

Temple Island Collections Ltd v New English Teas Ltd #further discuss photographs

Answer 34

* P claimed copyright in an edited photo that was largely monochrome except for a red bus shown travelling across a Bridge. D produced a photograph also with a red bus on the same bridge. * Held: infringed key combination of the visual contrast features with the basic composition of the scene itself which made the P’s work interesting. The composition of a photograph was capable of being a source of originality as it could be the product of the skill and labour, or intellectual creation, of a photographer. * The issue was not whether the artist might have used commonplace techniques to produce his work but whether he had used them under the guidance of his own aesthetic sense to create the visual effect concerned.

Question 35

Artistic craftsmanship

Answer 35

* To protect work of the type produced by the arts and crafts movement. No Precise definition * In the *George Hensher* case, which involves a hand-made mock-up for an item of furniture intended to be mass- produced was asserted to be a work of artistic craftsmanship. But the court held that to be protected, an item must have artistic character. And the conclusion was that the mock-up lacked it. * **‘irrespective of artistic quality**’ was not required, so some artistic quality is obviously required in order to gain copyright protection. * Two separate requirements should combine in the same work: **_artistic quality_**, and **_craftsmanship_** (*Golden Bright Manufacturer Ltd v Sunlight Electronic Toys Manufacturing Co Ltd* **[**2007] HKCFI 115, para 69). * It must give pleasure and be valued for its appearance. * It is up to the court to decide after talking to expert witnesses [George Hensher 1976]. * The author must be consciously trying to create a work of art [*Guild v Eskandar* 2001]. (Artistic requirement involved) * There must be genuine craftsmanship involved [Guild v Eskandar 2001, Bonz Group (Pty) v Cooke 1994].

Question 36

George Hensher Ltd v Restawile Upholstery (Lancs) Ltd

Answer 36

#no clear principle on artistic craftsmanship Is it artistic craftsmanship? It seems that the work must be of a high level of artistic quality and the issue of whether the work in question is a work of artistic craftsmanship is to be determined by whether a substantial section of the general public would obtain pleasure and satisfaction from the work. In this respect, the intention of the maker of the work is an important factor to be taken into account, but is not conclusive.

Question 37

Guild v Eskandar Ltd #craftsmanship

Answer 37

adopted the tests in *Merlet v Mothercare Plc*: (i) whether the work in question reflected an exercise of craftsmanship (ii) matter of evidence – whether the maker had the conscious purpose of creating a work of art * facts and judgements: although P’s garments enjoyed considerable popularity at the upper end of the fashion market, received critical acclaim in fashion circles and were featured in a modern fashion exhibition at museums, the court did not find them to be works of artistic craftsmanship. The court found that the garments, being machine-made articles of a very simple kind and being prototypes for mass production, could not reasonably be regarded as works of craftsmanship + not satisfied that there was any evidence that P intended to create works of art or even regarded herself as an artist

Question 38

Burge v Swarbrick #Australian case #craftsmanship

Answer 38

Held: utility and beauty are not mutually exclusive. BUT the plug in that case (a scale model of the hull and decks of a yacht) forming part of a naval architect’s board design did not satisfy the definition of “work of artistic craftsmanship” because the design was constrained by functional considerations. * In determining whether a work was a work of artistic craftsmanship, the determination does not turn on assessing the beauty or aesthetic appeal of the work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing _the extent to which the particular work’s artistic expression_, in its form, was unconstrained by functional considerations.

Question 39

Golden Bright Manufacturer Ltd v Sunlight Electronic Toys Manufacturing Co Ltd #HK case #did not cite Burge #follow George Hensher

Answer 39

held: the handsample of a pinball game was not a work of artistic craftsmanship. an article which was only intended to be used as a step in a commercial operation and had no value in itself was unlikely to be considered to be a work of artistic craftsmanship because there had to be something which an owner valued because of its artistic character.

Question 40

Vermaat & Powell v Boncrest Ltd #craftsman vs artist?

Answer 40

“...for a work to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was _both a craftsman and an artist_. A craftsman is a person who makes something in a skilful way and takes justified pride in his workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal … there are some passages in the authorities which suggest that it is essential that the same person both conceive and execute the work. For myself I do not regard that as being necessary. _If two or more people combine to design_ and make the ultimate product I cannot see why that ultimate product should not be regarded as a work of artistic craftsmanship.” * i.e. → even if the ultimate product is done by two or more people combined to design, can still be regarded as a work of artistic craftsmanship. Does not need to have the same person to conceive and execute the work

Question 41

Other copyright works (3.062)

Answer 41

* ss.6-10: define sound recordings, films broadcasts, cable programmes and published editions * Newspaper Licensing Agency Ltd v Marks & Spencer Plc* * Held: For newspapers, there was no separate, additional, copyright in the typographical arrangement of individual articles. The skill and labour devoted to typographical arrangement was principally expressed in the overall design. * It was not the choice of a particular typeface, the precise number or width of the columns, the breadth of margins and the relationship of headlines and straplines to the other text, the number of articles on a page or the distribution of photographs and advertisements, but the combination of all these into pages, which gave a newspaper as a whole its distinctive appearance.

Question 42

Public policy denying copyright (3.063-3.065)

Answer 42

* Copyright in grossly indecent or immoral subject matters may not be enforceable. * Public interest = a defence in law, operates to override the rights of the copyright holder * s.192(3) of the Ordinance: “Nothing in this Part affects any rule of law preventing or restricting the enforcement of copyright, on grounds of public interest or otherwise.” ***Mak Hau Shing v Oriental Press Group Ltd*** - Held: * (i) on public policy grounds, it would refuse to enforce copyright in any photograph in which the victim was coerced into posing. However, the girl in this case was not forced to take the picture and photographs of a young woman with bare breasts is not in any sense immoral. * (ii) The court would not refuse to enforce the photographer’s copyright on the basis of the daughter’s embarrassment. ***Hyde Park Residence Ltd v Yelland*** * *“a court would be entitled to refuse to enforce copyright if the work is: (a) immoral, scandalous or contrary to family life; (b) injurious to public life, public health and safety or the administration of justice; or (c) incites or encourages others to act in a way referred to in (b) above.”*

Question 43

Formalities (3.066-3.067)

Answer 43

* Copyright protection arises automatically upon creation of the relevant copyright work by its author; no registration or formal notification is therefore required. * can be assigned (in writing) ; or licensed by the authors or copyright owners. * so it’ll be without any complicated legal formalities * In HK, there’s no legal requirement to put any copyright notice one the work. Absence of notice will not prejudice the copyright owner’s rights * But if one elects to put such a notice, it will appear as: * “©. Name of owner of the copyright work. Date or Year of first publication of the work.” * some may add “All rights reserved”, which is to state obviously that although access to the work is given, the copyright owner does not waive any claim to assert his ownership and exclusive rights to disallow any unauthorised reproduction of the work

Question 44

Qualifications (3.068-3.070)

Answer 44

* s.177 & s. 178, Open qualification system: any original copyright works created by any person or published by any person anywhere in the world can qualify for protection in Hong Kong. * extends the reciprocal protection that is afforded under international conventions and treaties, principally the UCC (which only offers protection to member countries) * Authors and copyright owners should keep a complete record of the process of creation of a work from inception to completion/ Using a computer, one may keep different versions of the work which can at least show the significant progress and changes made along the way. * for both enforcement purpose + proof of independent creation against allegation of copyright infringement.

Question 45

Authorial / entrepreneur neural works

Answer 45

s2(1)(a): authorial works that require ‘originality’ (s4, s5) s2(1)(b) and (c): entrepreneurial works or secondary works/derivative works, which require no originality (s6-s10) * it links to an organization, created by a group of people or a company, more business-oriented

Question 46

No copyright exists in these works if it is a copy of another article of the same kind

Answer 46

e.g. X rents a DVD and copies the film, nothing has changed, but X should NOT enjoy copyright because it is exactly the same as the original work. If we don’t have these safebar, the copyright will be forever - not good for public interest Note: DVD is a container of the work; even if the DVD does not change, there has already been an infringement of copyright

Question 47

Why do we need to have special copyright protection for entrepreneurial works? (Why do we assign rights to producers who did not exert labor at all?)

Answer 47

1. Because without his arrangement, it’s impossible to make it happen. 2. Make the market mechanism more possible by protecting the rights of the producers. * Nature of entrepreneurial works: * contains creativity but not that creative or original * huge investment put to, e.g. provide a platform for original works

Question 48

Sound recordings

Answer 48

1. In this Part “ sound recording ” ( 聲⾳紀錄 ) means— * (a) **a recording** of sounds, from which the sounds may be reproduced; or * (b) a recording of the whole or any part of a literary, dramatic or musical work, from which sounds reproducing the work or part may be produced, regardless of the medium on which the recording is made or the method by which the sounds are reproduced or produced. 2. Copyright does not subsist in a sound recording which is, or to the extent that it is, a copy taken from a previous sound recording.

Question 49

If one sing a song and record it, one will have 2 rights in hand:

Answer 49

1. Copyright over the song (which can be infringed by touching upon the content); and 2. recording * Rights over recording can be infringed only when it touches upon the original recording, e.g. one copy the recording * this right is not infringed if one merely cover the song

Question 50

Scenarios of song infringement

Answer 50

* If Y wander in a garden and recording bird singing, * others will only infringe Y’s right when they make a copy of Y’s recording of the bird song, but one cannot prevent others from going to the same garden and record the same because the bird song itself is not original (and is thus not protected), it is a work of nature * if A is not a good singer and ask B to sing the song he makes, B enjoy’s right of performance. * if you record singers sing in a concert and post it to YouTube * You are a copyright owner of the recording. But cannot do so, because what your recording contains is the work belonging to others * so, posting it online means you allow others to use your recording - infringing the right of the songwriters and performers in the concert * you can only do that if you have an agreement with the owner of the song

Question 51

Films s.7

Answer 51

s7.Films 1. In this Part “ film ” ( 影⽚ ) means a recording on any medium from which a moving image may by any means be produced. 2. The ***sound-track accompanying a film is to be treated as part of the film*** for the purposes of this Part. 3. Without prejudice to the generality of subsection (2), where that subsection applies— * (a) references in this Part to showing a film include playing the film sound-track to accompany the film; and * (b) references to playing a sound recording do not include playing the film sound-track to accompany the film. 4. Copyright does not subsist in a film which is, or to the extent that it is, a copy taken from a previous film. **_Practical benefits:_** * Film is a combination of different works → If originality is a requisite requirement of copyright, then the company will need to ask permission and check potential copyright for every element in the film, which is impossible for the industry to work.

Question 52

The hybrid position of film copyright: film/dramatic works

Answer 52

* the production of a film involves many people * Berne Convention * In addition to the right enjoy in pursuant to s.4 of the Copyright Ordinance, a film also enjoys dramatic rights due to its artistic inputs --\> without intellectual input, there’ll only be film copyright. * Dramatic (script, dialogue, dance, stunts/fights) * Performers rights * Artistic (sets, costume designs, etc) * Sound recording/musical

Question 53

Broadcasts

Answer 53

8. Broadcasts 1. In this Part a “ broadcast ” ( 廣播 ) means a transmission by wireless telegraphy of sounds or of visual images and sounds or of representations thereof which— * (a) is capable of being lawfully received by members of the public in Hong Kong or elsewhere; or * (b) is transmitted for presentation to members of the public in Hong Kong or elsewhere, **otherwise than** through **a service for making available to the public** of copies of works or fixations of performances. 在本部中， 廣播 (broadcast)指藉無線電訊傳送 —— (a) 能夠被在香港或其他地方的公眾人士合法地接收的聲音或影像及聲音或表述聲音或影像及聲音的東西；或 (b) 為向在香港或其他地方的公眾人士播送而傳送的聲音或影像及聲音或表述聲音或影像及聲音的東西， 但傳送方法並非透過向公眾提供作品的複製品或表演的錄製品的服務。

Question 54

Problem with the provision of broadcasts

Answer 54

it limits the coverage of this type to wireless transmission, following examples not covered under this provision– e. g. Web-casts (broadcasts online) are not protected * a broadcast does not protect any fixed entity per se. Instead, what is protected are the **signals** that are transmitted. In a sense, copyright law recognizes the value in the act of communication itself as distinct from the content of what is being communicated. * The term ‘broadcast’ in HK only includes **Television broadcasts and sound broadcasts,** but not include webcasts and most forms of internet transmission, where the person receiving the transmission does so at a place and at a time chosen by that person (making available to the public). * Satellite broadcasts, by their very nature, can reach other countries. They may be rebroadcast to further countries before being finally broadcast to the public. They are regarded as broadcasts even if they are encrypted, as long as the public has had the **decoding equipment** lawfully made available to them.

Question 55

Cable programme 有線傳播節⽬

Answer 55

* **Also does not include internet service providers** In this Part— * “ cable programme ” means any item included in a cable programme service; * “ cable programme service ” ( 有線傳播節⽬服務 ) means a service which consists wholly or mainly in the lawful sending by any person, by means of a telecommunications system (whether run by himself or by any other person), of sounds, visual images, other information or any combination of them either— * (a) for lawful reception, otherwise than by wireless telegraphy, at 2 or more places in Hong Kong or elsewhere, whether they are so sent for simultaneous reception or at different times in response to requests made by different users of the service; or * (b) for lawful reception, by whatever means, at a place in Hong Kong or elsewhere for the purposes of their being presented there either to members of the public or to any group of persons, * and includes such a service that has as a component a multipoint microwave distribution system, but does not include the services excepted under subsection (2);……

Question 56

Published editions

Answer 56

* NOT about the content but ***the arrangement*** * s 10(1) refers specifically to the published edition of a literary, dramatic or musical work. Artistic works are not included because their publication does not entail any typographical arrangement. * more generally refers to books and magazine, e.g. the design of the cover 1. In this Part “ published edition ” ( 已發表版本 ), in the context of _copyright in the typographical arrangement_ of a published edition, means a published edition of the whole or any part of one or more literary, dramatic or musical works. 2. Copyright does not subsist in the typographical arrangement of a published edition if, or to the extent that, it reproduces the typographical arrangement of a previous edition

Question 57

Published editions — Newspaper

Answer 57

* In the case of a newspaper, it has been held that the typographical arrangement refers to that of ***the whole newspaper***, not of each article published therein: see *Newspaper Licensing Agency Ltd v Marks and Spencer Plc* *_Newspaper Licensing Agency Ltd v Marks & Spencer Plc_* Held: * For newspapers, there was no separate, additional, copyright in the typographical arrangement of individual articles. The skill and labour devoted to typographical arrangement was principally expressed in the overall design. * It was not the choice of a particular typeface, the precise number or width of the columns, the breadth of margins and the relationship of headlines and straplines to the other text, the number of articles on a page or the distribution of photographs and advertisements, but the combination of all these into pages, which gave a newspaper as a whole its distinctive appearance.

Question 58

TV format?

Answer 58

* can this TV format be copyrighted? If yes, which category will it fall into? * some say film/dramatic works, but it’s not about the content but more about the format, different people singing different songs * If a company decided to imitate the format of the Voice without the guidance of the licenser, what will happen? * China: nothing will happen, because it is just an idea to run the show and is too abstract to be protected under copyright * e.g. although the general idea is similar (i.e. turning chairs), the chairs are different, guests are different, etc.

Question 59

Can perfumes be protected?

Answer 59

* trade secret is vulnerable —people nowadays can easily use reverse engineering to imitate the smell. In HK is not protected by copyright because it’s not one of the listed categories, but what if it’s an open ended legislation like France? * Is the idea “fixed”?

Question 60

Unprotected items

Answer 60

In general unprotected means those that are not original TRIPS Article 9(2): Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. *_Baker v. Selden 1879_* Writing a toolbook does not give one the exclusive right to use this system

Question 61

Computer software?

Answer 61

Generally, only those parts that are truly original will it be protected, but there are exceptions: * Merger doctrine (lines of code are necessary to maximize the efficiency of the software etc.) * scène à faire (lines of code that belong to a certain standard etc.) --\> such codes are inevitable * lines of code in the public domain * those that were originally copyright protected but then expire (?) * Lotus Development Corporation v. Borland International, Inc., 49 F.3d 807 (1st Cir., 1995)

Question 62

Facts?

Answer 62

You may be the first one to discover the fact, but you are not the creator therefore you cannot enjoy copyright protection over it. * e.g. Even if a reporter discovered some criminal events, such facts are not copyright protected. Different newspapers can all report on it. Only how the event is described that is important. BUT the EXPRESSION of the fact can be protected.

Question 63

Sports events?

Answer 63

* What type of work does it belong to? * Can it be considered as dramatic work? NO! Because it cannot be “performed” in a fixed way → the game cannot be “reproduced” * Record it? It is another way of protection. BUT the game itself cannot be protected. * What is the outcome if copyright is granted? * Copyright protects creativity. While games contain a certain extent of “beauty” or “aesthetic”, this is not the purpose of the game → We join the game to win (didn’t make the move for aesthetic purpose) * Utilitarian ground: if we copyright a game, the owner of the copyright may monopolize the moves in the game. * BUT if the competition itself is an art competition, there is possibility that the moves can be protected by copyright

Question 64

Immorality (public policy denying copyrights) + cases

Answer 64

* **s192(3)** of CO: “nothing in this part affects any rule of law preventing or restricting the enforcement of copyright, on grounds of *public interest* or otherwise.” * Public interest = a defence in law, operates to override the rights of the copyright holder. Copyright in grossly indecent or immoral subject matters may not be enforceable. ***Glyn v Weston film feature* 1916**: ‘copyright cannot exist in a work of a tendency so grossly immoral as this, a work which apart from its other objectionable features, advocates free love and justifies adultery where the marriage tie has become merely irksome’ ***A-G v. Guardian (no.2)* 1990**: The Lords extended the scope of the immorality exclusion beyond the content of the work to include the circumstances in which the work was created ***Hyde Park Residence Ltd v Yelland*** “a court would be entitled to refuse to enforce copyright if the work is: (a) immoral, scandalous or contrary to family life; (b) injurious to public life, public health and safety or the administration of justice; or (c) incites or encourages others to act in a way referred to in (b) above.” ***Mak Hau Shing v Oriental Press Group Ltd*** #semi-nude photos Held: (i) on public policy grounds, it would refuse to enforce copyright in any photograph in which the victim was coerced into posing. However, the girl in this case was not forced to take the picture and photographs of a young woman with bare breasts is not in any sense immoral. (ii) The court would not refuse to enforce the photographer’s copyright on the basis of the daughter’s embarrassment.

Question 65

Authorship s.11

Answer 65

GR: Author of work (i.e. the creator) = first owner of any copyright in it (s.13) * When you got an item in hand, first goes to s.11 and identify the owner 11. Authorship of work 1. In this Part “ author ” (作者), in relation to a work, means the person who creates it. 2. That person is taken to be— * (a) in the case of a sound recording, the producer; * (b) in the case of a film, the producer and the principal director; * (c) in the case of a broadcast, the person making the broadcast (see section 8(3)) or, in the case of a broadcast which relays another broadcast by reception and immediate re-transmission, the person making that other broadcast; * (d) in the case of a cable programme, the person providing the cable programme service in which the programme is included; * (e) in the case of the typographical arrangement of a published edition, the publisher --\> includes real person & legal person/ artificial person * Can animals and machines be authors? Ans: No AI/monkey copyright

Question 66

Shall we give everyone involved equal rights over the work? esp. project work e.g. film production

Answer 66

* Within a single work, different people have different levels of contribution. There is always a person or two who contribute a lot more than the others. * If we give everyone the equal rights as the author, when the number of right holders goes bigger, it will be impossible for anyone to make use of the work as it will require every right holder to give permission. * Consequence of granting equal rights to everyone involved in the creation of the work: * need every right holder to give permission * very troublesome and impractical to use the work * Follows the utilitarian theory. Regardless of the fact that one has invested their soul, it will be chaotic to grant everyone copyright

Question 67

Who may not be regarded as an AUTHOR?

Answer 67

When a person merely contributes to a work in the form of ideas, titles, scenic effects or catch-lines (e.g. Tate v Thomas [1921]) contribution needs to be greater than ideas. _***Celebrity Pictures Ltd v B Hannah Ltd* [2012]**_ Fact: The photographer was given very general instructions as to the type of photographs required and the general acceptance that there was team effort involved in the photo-shoot. Held: The instruction is not sufficient to make anyone other than the photographer as author.

Question 68

Joint authorship s.12

Answer 68

e. g. You want to make a derivative work from Justin Bieber’s song, that is NOT a joint authorship → there is no collaboration * Section 12 of CO, Cap 528 1. In this Part a “work of joint authorship” ( 合作作品 ) means a work made by the collaboration of 2 or more authors **in which the contribution of each author is not distinct from** that of the other author or authors. 2. A film is treated as a work of joint authorship unless the producer and the principal director are the same person. 3. A broadcast is treated as a work of joint authorship in a case where more than one person is to be taken as making the broadcast (section 8(3)). 4. References in this Part to the author of a work are, except as otherwise provided, construed in relation to a work of joint authorship as references to all the authors of the work. * 3 requirements: 1. Collaboration in the creation of the work 2. Contribution from each author - or “who provides a significant input” (Ray v Classic FM Plc [1998]). 3. Contribution needs to be separate, i.e. collaboration was a “joint laboring in the furtherance of a common design” (*Lvey v Rutley* (1871)). * The author must participate in the writing and share responsibility for the form of expression in the literary work. SO, he must do more than contribute ideas.

Question 69

The authors contributed to the making of the work.

Answer 69

* A joint author had to have direct responsibility for what ended up on the paper which was the equivalent to penmanship. Heptulla v. Orient Longman [1989] * Fisher v Brooker [2009]; Brown v Mcasso Music Production Ltd [2005] their contributions need not be equal, but to be a joint author, each must have made a _significant & original contribution_ in terms of the right sort of creative skill and judgement. * joint authorship may result from reworking an existing work by a person if his input can be regarded as an original contribution to the work. * Penmanship is not a must; but at least needs to convert his/her ideas to some kinds of expression. Thus, merely giving suggestions is not enough

Question 70

Brown v Mcasso Music Production Ltd [2005] #joint authorship

Answer 70

**_Fact:_** A performer had “rapped” changes to a song used in a TV ad. Rapped a dialogue into a song - only accounts for 10% of the work. The rap part is significant **_Held:_** He is the joint owner of the copyright in the song because he has contributed sufficient skill and judgement: * The rap was sufficient to make him a joint author of the song. Rap carries words and it’s a significant element of the song * e.g. rap part in a relatively silent song vs 2-word soft rap in a song → the significance may be different * Significance: words in “rap” were of greater significance than other music forms * Skills and judgment: his choice of words depended upon correct vernacular usage, fitting chosen words into the backing, etc.

Question 71

The work must have been produced through a process of collaboration between the authors. [joint authorship]

Answer 71

Robin Ray [1998]: the authors need not have intended to create a work of joint authorship, but they must have intended to create a work. When setting out to create a work, there must have been some common design, cooperation, or plan that united the authors.

Question 72

The respective contributions must not be distinct or separate from each other.

Answer 72

The contributions must merge to form an integrated whole.

Question 73

Beckingham v Hodgens [2003]

Answer 73

**_Fact:_** A session musician who composed and played a violin part on the recording of “Young at Heart” claimed a share of copyright. **_Held:_** He was a joint author since the violin part was significant and original. * Although he had not asserted his copyright for nearly 10 years, the implied royalty-free licence to use his work was revoked upon his action and he would claim a share of royalties. * Whether the contribution is “significant and original” was a question of fact and degree.

Question 74

Share / licensing

Answer 74

* Each of the joint authors will have their own copyright in the work, which, if an original work, will last for the life of the longest to live plus 50 years. Although a joint author can leave their share on death, consent of all the co-authors must be obtained in order to license the work. * i.e. permission/ licence from other co-owners is required * e.g. Doraemon written by two Japanese artists * s.197: Any requirements of the licence of the copyright owner requires the licence of all of them. * the sole right of reproducing must be indivisible as to exercise, though it is divisible as to title (Cescinsky v George Routledge & Sons [1916], per Rowlatt J).

Question 75

Cola Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] #joint authorship

Answer 75

Fact: The director of Cola provided a very detailed input (incl. design features) in plans which architects were instructed to prepare and through regular briefing and vetting sessions with the architects ensured that the plans accorded with Cala’s “images”. Held: The director was the “joint author” with the architects. * Laddie J: there is no restriction on the way of funneling contribution into finished work – not necessarily penmanship, but a direct responsibility for what appears on the paper. * Note: in practice, this situation is likely to be exceptional.

Question 76

Godfrey v Lees [1995] #joint authorship

Answer 76

**_Fact_**: An orchestral arranger + piano and organ accompanist for a popular group (yet not its member) claimed that he has contributed arrangements and accompaniment to various musical works of the group and should be entitled to a share in the music copyright. **_Held_**: He was a joint author, but his claim to a share of earnings failed as he was estopped by his conduct in allowing the band members to proceed for 14 years under the assumption that he did not claim any interest in the music copyright.

Question 77

Slater v Wimmer [2012] #joint authorship

Answer 77

s.12(2): A film is treated as a work of joint authorship unless the producer and the principal director are the same person. * Fact: Claim of copyright ownership between:- * P = cameraman who and shot a film footage of a skydive over Mount Everest) and * D = (1) financier who paid for P’s trip and expenses; (2) one of the skydivers. * Issue: Whether P was both the producer and principal director. * Held: P was the principal director but not producer. There is joint authorship, so each needed another's permission to reproduce the work. * P is principal director --\> he had creative control of the making of the film, e.g. decide what to film, how to film, etc. * D is producer --\> he paid for the event, arranged for and engaged other crew members.