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Copyright
 The copyright analysis has two stages:
o Stage one: Subsistence analysis
 Analyse and classify the subject matter at hand. Examine the item sought to be
protected to see if it belongs to one of the classes of works in which copyright can
subsist (see. s.2(1) CO for the list of categories)
 If the work is within one of the classes, then examine it for originality. Originality
threshold is low, the analysis is further divided into two stages: (i) Independent Creation
and (ii) Creative Authorship
o Stage two: Infringement analysis
 Identify the acts done by the defendant and the rights of the copyright owner that has
potentially been infringed (see s.22(1) for the list of acts restricted by copyright)
 Infringement determination: see if there is misappropriation and substantial taking for
copying.
Policy Considerations of Copyright Law
 Always bear in mind the primary policy goal of copyright is to promote creativity so as to enhance
public interest, NOT rewarding hard work, which is a secondary goal only.
 The Utilitarian justification for Copyright Law was stated in Mazer v Stein:
o “encouragement of individual effort by personal gain is the best way to advance the public welfare
through individual effort through the talents of authors and inventors in science and the useful art.”

Originality
 According to s.2(1)(a) of the Copyright Ordinance, copyright is a property right that subsists in original
literary, dramatic, musical or artistic work.
 There is no statutory definition of ‘originality’. But as the US Supreme Court put it in Feist v Rural
Telephone Service: ‘Original… means only that the work was independently created by the author and it
possesses at least some minimal degree of creativity.’
 Accordingly, originality can be divided into two separate elements, namely (i) independent creation and
(ii) creative authorship

Independent Creation
 The work must not be copied from another work – it should originate from the author. (University of
London Press v University Tutorial Press)
 It is possible to have two identical but both protected works, as long as they were independently
created. “A work may be original even though it closely resembles other works so long as the similarity
is fortuitous, not the result of copying.” (Feist v Rural Telephone Service)
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Creative Authorship
 The Supreme Court of Canada gave a definition on creative authorship in CCH Canadian v Law Society
of Upper Canada: “A copyright work needs only be ‘the product of an author’s exercise of skill and
judgment,
o Skill: ‘the use of one’s own knowledge, developed attitude or practiced ability in producing
the work’
o Judgment: ‘the use of one’s capacity to for discernment or ability to form an opinion or
evaluation by comparing different possible options in producing the work’.
though it must not be so trivial that it could be characterized as a purely mechanical exercise.”
 The creativity threshold is a low one – de minimis creativity threshold but the creativity must not be so
trivial as to be characterized as a purely mechanical exercise.
 The deminimis threshold refers to that of creativity, not effort. It is possible that an author who
assembles information in a costly and time consuming but mechanical or functional manner, lacking
creativity, the copyright law would NOT protect such works as the major policy goal is to promote
creativity but not reward efforts. (Feist v Rurual Telephone Service)
 Originality does not embody any conception of artistic/aesthetic merit or beauty.
CCH Canadian Ltd v D distributed copies of law reports, cases etc. P sued D and sought relief in the form
Law Society of of a declaration of subsistence of copyright and an injunction. The court held in P’s
Upper Canada favour that a law publisher’s headnotes, case summaries, etc are copyright materials
because it meets the ‘skill and judgment’ standard. The court said that ‘a copyright
work needs only be ‘the product of an author’s exercise of skill and judgment’. Skill
is the use of one’s own knowledge, developed attitude or practiced ability in
producing the work. Judgment is 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. However, it must not be so trivial that it could be characterized
as a purely mechanical exercise. In this case although headnotes were largely
inspired by the judgments, they were not identical copies but rather, the authors
had to use their knowledge of the law and developed ability to determine the legal
ratios and their capacity for discernment to decide which parts to include.
Accordingly those should be protected by copyright law.
(essentially, a casebook is a compilation of court decisions (which are in the public
domain) and a summary of which: still a copyright book because it meets the ‘skill
and judgment’ standard – a summary made by different lawyers will be different,
the cases chosen would also be different- there involves human creativity.)
Feist v Rural R compiled yellow book. F used it to republish in their own name. R sued F. R argued
Telephone Services that assemblage of such information was costly and time consuming and should be
protected by copyright law. F argued that there was no creativity at all so that the
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yellow book was not copyright material. The US Supreme Court held in F’s favour
that there must be a minimal degree of creativity, although the threshold is low it
must not be so trivial that it could be characterized as a purely mechanical exercise.
Copyright law must promote creativity (instead of mere protection of labour and
capital). The court abolished the ‘sweat of the brow theory’.
Tai Shing Diary Ltd D argued that the P’s diaries lacked sufficient originality in that they were common
v Maersk Hong to all diaries and calenders. The P successfully entered summary judgment. The
Kong Ltd court held that so long as more than negligible or trivial effort or relevant skill and
judgment had been expended in the creation of the work, the creativity threshold
would be met. Although the standard is low, it must not be so trivial to be
characterized as a mechanical exercise.
ICE TV Pty Ltd. V Case concerning a TV guide. The court held that the time and title information in a
Nine Network TV guide ‘is not a form of expression which requires particular mental effort or
Australia Pty Ltd exertion, although it requires skill and labour’. The court held that the TV guide was
not copyright material.
Bleistein v The court held that the originality threshold need not be satisfied by any conception
Donaldson of artistic merit or beauty. “It would be a dangerous undertaking for persons tained
Lithographing Co. only to the law to constitute themselves final judges of the worth of pictorial
illustrations.
Meshwerks v M used some technology to measure Toyota’s cars and produce a digital image of
Toyota Motors USA such. The process was time-consuming and expensive. The court held that copyright
does not subsist in those images – what M has accomplished was a peculiar kind of
copying, not recreating.

Idea/ Expression Dichotomy

 Copyright only protects expression of an idea, rather than the idea itself.
 This central rule about copyright is embodied in TRIPS Art. 9(2) and WIPO Copyright Treaty Art.2:
o “Copyright protection shall extend to expressions not to ideas, procedures, methods of
operation or mathematical concepts as such."
 As put in Designers Guild Ltd v Russell Williams Ltd:
o “a literary work which describes a system or invention does not entitle the author to claim
protection for his system or invention as such.”
Baker v Selden Selden created a system of Ledger and book keeping system and wrote a book about
it. Later, Baker published a book of blank forms based on that system but with
different headings. S sued B for copyright infringement. The court held that there
was no copyright infringement, the court held that the words and description
describing the book keeping system themselves are copyrightable because they are
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an expression of an idea, namely that the book keeping system itself is merely an
idea. Since B only used the idea of book keeping to create his own works instead of
copying S’s book which was an expression of idea, there was no copyright
infringement. ‘a book did not give an author the right to exclude others from
practicing what was described in the book’.
[‘Exclusive rights to the ‘useful art’ describe in a book was only available by patent.
The description itself was protectable by copyright]
ABR Benefits P provided services to insurance companies for compliance with law. P developed a
Services Inc. v NCO form for compliance which contains very detailed descriptions. Court held that the
Group form is copyrightable. (The more detailed it is, then more likely it is an expression.)
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Copyright Subject Matter

 Under s.2(1) of the Copyright Ordinance, copyright is a property right which subsists in the following
descriptions of work –
(a) Original literary, dramatic, musical or artistic works;
(b) Sound recordings, film, broadcasts or cable programmes and;
(c) The typographical arrangement of published editions
 Under Hong Kong (and the UK) law, copyright subject matter takes a ‘closed list’ approach, ie. One who
claims copyright in his works must fit his work into one of the categories before copyright is found to
subsist. This is to be contrasted with the ‘open list’ approach in Continental systems.

Literary Works
 As defined in University of London Press v University Tutorial Press, literary work is ‘work which is
expressed in print or writing, irrespective of the question whether the quality or style is high’.
 Under s.4(1) CO, literary work 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 limited to a
table
(b) A computer program
(c) Preparatory design material for a computer program
 According to the WIPO Guide to the Berne Convention, literary work is:
“Novels, news, poems, recitations, short stories whether fictional or not, pamphlets, treatises or handbook
on philosophy, history and all other natural or physical science, almanacs, year books, programs, guides, etc.,
irrespective of their contents, their length, their purpose (entertainment, education, information, discussion,
advertisement, propaganda, etc.) and their form (manuscript, typescript, printing).”
 The scope of literary work is thus very wide and it does not have to possess any particular literary merits.
o Questionnaire for Interviews (Linda, Chih Ling Koo v Lam Tai Hing)
o Trade catalogues (Collis v Cater; Purefoy v Sykes Boxall)
o Examination papers (Boyapati v Rockefeller Management (Aust.))
o Translation (Byrne v Statist Co; Cummins v Bond)
o Editorial work involving amendment (Warwick Film v Eisinger)
o Critical annotation or explanation (Macmillan v Cooper)
o Pools coupons
o Advertisements and trade catalogues
Compilation
 As seen above under s.4(1)(a), compilation of data is protected by copyright as literary work.
 According to TRIPS Art.10:
“Compilations of data or other material, whether in machine readable or other form, which by reason of the
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selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such
protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright
subsisting in the data or material itself.”
 According to WIPO Copyright Treaty Art. 5:
“Compilations of data or other material, in any form, which by reason of the selection or arrangement of
their contents constitute intellectual creations, are protected as such. This protection does not extend to the
data or the material itself and is without prejudice to any copyright subsisting in the data or material
contained in the compilation.”
 Thus, as seen from above, a compilation of data must by reason of selection or arrangement of their
contents constitute intellectual creation – ie. originality is required. According to the WIPO Guildine to
Bern Convention, ‘the maker must bring to bear an element of creativity; merely listing the works or
extracts without offering any personal contribution is not enough’.
ICE TV Pty Ltd. V Case concerning a TV guide. The court held that the time and title information in a TV
Nine Network guide ‘is not a form of expression which requires particular mental effort or exertion,
Australia Pty although it requires skill and labour’. The court found that the way in which the time
Ltd. and title information conveyed was essentially dictated by the nature of the underlying
information and the expression of that information lacked sufficient mental effort or
exertion to satisfy the originality requirement. It was held that the skill and labour used
in respect of compilations must be focused on the originality of the expression of work,
rather than any considerations of ‘industrious collection’. The court held that the TV
guide was not copyright material.
GA Cramp & This case concerns the selection and arrangement of a pocket diary. The court found
Sons Ltd v Frank that this arrangement was commonplace for pocket diaries and there was no feature
Smythsons Ltd which could be pointed out as novel or specially meritorious or ingenious from the
point of view of the judgment and skill of the compiler. Thus, the court held that it was
not protected by copyright because of insufficient originality.
Football League The court held that the compilation of a complete fixture list was a matter of
Ltd v considerable complication, requiring a great amount of labour, skill and ingenuity,
Littlewoods recognizing that is was not possible to give effect to pairing of playing teams in every
Pools Ltd match and the arrangement was a matter of skill and judgment.
Football Dataco The court found that a football fixture list is original. There is selection and
Ltd v Brittens arrangement regarding teams and date, requiring numerous stages of creating the
Pools Ltd fixture list which takes skills in balancing and prioritizing competing requirements of
setting the fixture and thus ‘judgment and discretion’ was involved – the process is not
something which everyone could come up with the same answer.
 The following are uncopyrightable examples (of literary works):
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o Title of a book, name of a company (Exxon) or a game (Satoori): these works do not reach the de
minimis originality threshold and lack sufficient expressive content to be protected as literary
works
o A general timetable for time of local trains (Leslie v Young)
o An advertisement consisting of a few commonplace sentences (Kirk v Fleming)
Computer Programs
 As seen above under s.4(1)(b), computer programs is protected by copyright as literary work.
 Computer program is not defined in the Hong Kong Ordinance. In the US Copyright Act, it is defined as “a
set of statements or instructions to be used directly or indirectly in a computer in order to bring about a
certain result.” And according to the Japanese Copyright Act Art. 2, it is defined as “an expression of
combined instructions given to a computer so as to make it function and obtain a certain result.”
 According to TRIPS Art.10(1):
“Computer programs, whether in source code or object code, shall be protected as literary works under the
Berne Convention.”
 According to the WIPO Copyright Treat Art.4:
“Computer programs are protected as literary works within the meaning of Article 2 of the Berne
Convention. Such protection applies to computer programs, whatever may be the mode or form of their
expression.”
 However, the UK and HK Court of Appeal have held that object codes cannot be a literary work because
electrical impulses in a silicon chip could not be perceived by the senses and were not intended to
convey any message to a human being (HKSAR v Chan Tak Tim). Object codes, however, is protected as
‘adaptation’ under CO s.29(3)(b) – ‘adaptation’, in relation to a computer program, means an
arrangement or altered version of the program or a translation.

Dramatic Work
 Under s.4(1) CO, ‘dramatic work’ includes a work of dance or mime.
 A work cannot qualify as both a literary work and a dramatic work.
 A dramatic work is one which is capable of being performed, for example, by acting or dancing, and is
distinct from the literary elements of the work, including but not limited to theatrical works, plays,
operas and musical comedies.
 Additionally, as defined in Creation Records v News Group, a dramatic work cannot be static and must
have movement, story or action.
 Coherence in content is required. “There must be a story – a thread of consecutively related events –
either narrated or presented by dialogue or action or both”. (Universal Pictures Co v Harold Lloyd Corp).
Therefore, a computer game cannot be dramatic work since a dramatic work must no vary from
performance to performance. (However, this may not be the case for a computer game with narrative
sequence of events or plot not entirely controlled by the user). (Nova Productions v Mazooma Games
Ltd)
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 Dramatic works include the script of a play, but scenic effects and costumes are categorized as artistic
work instead.
 It is the playwright that is responsible for creating the dramatic work. A person who supplied ideas,
including key lines, changes to plot and dialogue, secured no part in the eventual copyright. (Tate v
Thomas) – the same idea/ expression dichotomy
Norowzian v P was a successful director who made a short filmed called Joy. He used special filming and
Arks Ltd editing techniques to give the film striking visual impact. The effects of editing is impossible
(No.2) to be physically performed. P claimed that D infringed his copyright in Joy in their own
advertisement named Anticipation. In Anticipation, a similar jump cutting technique has
been used by D, it was common ground that D had been instructed to produce a
commercial with an atmosphere similar to Joy. In the CA, the court held that Joy was a
dramatic work capable of being performed before an audience. However, since the striking
similarity was between the filming and editing styles and techniques used by the respective
directors of the two films, and copyright does not subsist in mere style or technique, the CA
found there to be no infringement.
Green v Host of TV contest ‘Opportunity Knocks’ could not stop a NZ TV from airing a similar show.
Broadcasting The claim, based on ‘script and dramatic format’ of the show, failed due to lack of subject
Corp of NZ matter certainty since there were no scripts at all, but merely a collection of catch phrases
used at various critical stages and a ‘clapometer’ to measure audience reaction. The CA
held that the ever changing format elements lacked certainty and unity of a dramatic work.
The PC also held that a dramatic work must have sufficient unity so as to be capable of
performance or reproduction and the unpredictable nature of the show made this
impossible.

Musical Work
 Under s.4(1) CO, musical works means a work consisting of music, exclusive of any words or action
intended to be sung, spoken or performed with the music.
 Musical work is a combination of melody and harmonies. Music is different from “mere noise” and “is
intended to produce effects of some kind on listener’s emotions and intellect.” (Hyperion Records v
Sawkins)
 The scope of musical work is different:
o HK & The UK: words in musical work is NOT included – Lyrics are protected as literary works
o Berne Convention, US, France: Include words in musical works
 The scope of musical work includes the notes, performing indications, tempo, performance practice
indicators and even a recording of a person’s spontaneous singing, whistling or humming or
improvisation of sounds. (Hyperion Records v Sawkins)
 Secondary activities may attract their own copyright in musical work:
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o Adding accompaniments, new harmonies, new rhythms

o Transcribing music for different music forces
o Selecting and arranging older tunes and scores (Austin v Columbia)
o Piano reduction (Redwoor Music v Chappell)
o Orchestrating (Godfrey v Lees)
Hyperion Dr. Sawkin researched the works of Lalande and created new performing editions of four of
Records his works. In total his work took him 300 hours. Hyperion produced a CD featuring his work.
Ltd v H disputed that S was entitled copyright in these editions on the basis that an editor should
Sawkins not obtain copyright in non-copyright works. The issue was whether Sawkins was only using
public-domain work or was creating something copyrightable. The court held that it is wrong
in principle to single out the notes as uniquely significant for copyright purposes and to
proceed to deny copyright to the other elements that make some contribution to the sound
of the music when performed, such as performing indications, tempo and performance
practice indicators, if they are the product of a person’s skill and effort, bearing in mind, of
course, the relatively modest level of threshold for a work to qualify for protection. Here,
Sawkin’s work and his contribution based on his expert and scholarly exertion has sufficient
aural and musical significance to attract copyright protection.

Artistic Works
 Under s.5 CO, “artistic work” 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
(c) A work of artistic craftsmanship
 Under s.5 CO, “graphic work” includes-
(a) any painting, drawing, diagram, map, chart or plan; and
(b) any engraving, etching, lithograph, woodcut or similar work;
 Under s.5 CO, “photograph” 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”
 Under s.5 CO, “sculpture” includes:
A cast or model made for purposes of sculpture
 Under s.5 CO, “building” includes:
any fixed structure, and a part of a building or fixed structure
Graphic Work
 Body painting?
o In Merchandising Corp of America v Harpbond, the CA rejected the argument that body painting,
in the form of make-up, constituted a painting for the purposes of copyright. The court held that
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‘a painting is no an idea: it is an object and paint without a permanent surface is not a painting”.
The decision emphasized on lack of permanence is doubtful – what of a permanent tattoo?
 Map?
o Will be protected only to the extent of the cartographer’s original contribution to the underlying
facts.
Photograph
 A photograph can be taken from a picture, a three-dimensional object or a scene.
 In Antiquesportfolio.com Plc v Rodney Fitch& Co. Ltd, the court considered that 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 to
confer originality on the photograph.
Sculpture
 A sculpture might be described as ‘a three-dimensional work made by an artist’s hand’, objects could not
be regarded as being made by an ‘artist’s hand’ if produced for a mere functional purpose – ie. To qualify
as a sculpture, the work must be created to have an artistic purpose.
Metix v D argued that moulds used for making cartridges could not be works of sculpture because
Maughan they were no more than a transient stage between creation of a drawing of the functional
article and the article itself. Whilst the court disagrees with the D and held that something
which has a mere transient existence can also be a work of sculpture, the court found that
since a sculpture might be described as ‘a three-dimensional work made by an artist’s hand’,
and the manufacturers of the mould could not be regarded as ‘artists’ in producing a
functional item, the moulds did not qualify for copyright protection as sculptures.
Lucasfilm In this case, the Stormtrooper helmet and armour have likewise been held not to qualify as
Ltd v sculptures by the Supreme Court of the UK. The court held that to qualify as a sculpture, the
Ainsworth work must have created to have an artistic purpose, the helmets and armours did not qualify
as sculptures as they were created to potray something about characters in the film and
lacked inherent artistic purposes – “it was the Star Wars film that was the work of art that P
has created. The helmet was utilitarian in the sense that it was an element in the process of
production of the film.”.
Architecture
 A small model of a building is protected as a work of architecture whereas an architect’s plan for a
building may likely fall into graphic works.

Artistic Craftsmanship
 While most other artistic works are protected, irrespective of artistic quality, a high level of artistic merit
is required for a work of artistic craftsmanship.
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 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 also an important factor to be taken into account, but is not conclusive. (George
Hensher Ltd v Restawile Upholstery Ltd).
 The test is stated in Guild v Eskandar Ltd:
First, whether the work in question reflected an exercise of craftsmanship, then whether it was a work of
art. Second, not being the only primary consideration, whether or not the maker had the conscious
purpose of creating a work of art.
 The determination turns on assessing the extent to which the particular work’s artistic expression, in its
form, was unconstrained by functional considerations.
 Artistic craftsmanship can include jewelry, furniture, cutlery, toys, educational aids, etc.
 The craftsman and the artist must be one person.
Guild v Although the P’s garments enjoyed considerable popularity at the upper end of the fasion
Eskandar market, received critical acclaim in fashion circles and were featured in a modern fashion
Ltd 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 be reasonably regarded as works of craftsmanship.
The court was also not satisfied that there was any evidence that the P intended to create
works of art or even regarded herself as an artist.
Lucasfilm The Star Wars case. The court has held that the Stormtrooper helmets and armours were not
Ltd v sculptures (see above). Neither did they qualify as works of craftsmanship. Although the court
Ainsworth considered that the production constituted an act of craftsmanship, the works themselves
were not designed as an artistic end in themselves but rather to give a particular impression
in the film – a utilitarian rather than artistic purpose was intended.
Burke v When one person supple the artistic idea (the designer) and another provides the
Spicers craftsmanship (the seamstress), the work cannot be a work of artistic craftsmanship. The
Dress craftsman and the artist should be one person.
Designs

Sound Recording
 Under s.6 CO, ‘Sound Recording’ is defined:
(1) In this Part “sound recording” means-
o (a) a recording of sounds, from which the sounds may be reproduced; or
o (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.
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(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.

Films
 Under s.7 CO, ‘Film’ is defined:
(1) In this Part “film” 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-
o (a) references in this Part to showing a film include playing the film sound-track to accompany
the film; and
o (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
 Under s.11 CO, the author of the film is:
(1) In this Part “author”, in relation to a work, means the person who creates it.
(2) That person is taken to be-
o (b) in the case of a film, the producer and the principal director;

Broadcast
 Under s.8 CO, ‘Broadcasts’ are defined:
(1) In this Part a “broadcast” means a transmission by wireless telegraphy of sounds or of visual images
and sounds or of representations thereof which-
o (a) is capable of being lawfully received by members of the public in Hong Kong or elsewhere; or
o (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.
(2) An encrypted transmission is regarded as capable of being lawfully received by members of the public
in Hong Kong or elsewhere only if decoding equipment has been made available to members of the
public in Hong Kong or elsewhere by or with the authority of the person making the transmission or the
person providing the contents of the transmission.

Typographic Arrangement
 Under s.10 CO, ‘published editions’ are defined:
(1)“published edition”, 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
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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.

Formality
 There is no formality for copyright, copyright subsist in a work as soon as it is created.
 Berne Convention Art.5(2): “The enjoyment and the exercise of these rights shall not be subject to any
formality.
Orphan Work
 No copyright infringement can be committed against an Orphan Work
 CO s.66(1): Copyright in a literary, dramatic, musical or artistic work is not infringed by an act done at a
time when, or in pursuance of arrangements made at a time when:
(a) It is not possible by reasonable inquiry to ascertain the identity of the author; AND
(b) It is reasonable to assume that copyright has expired OR that the author died 50 years or more
before the beginning of the calendar year in which the act is done
Ownership
 Ownership in copyright is distinct from ownership of the physical embodiment of the work
Mishima Yukio Y wrote letters to his psychiatrist throughout his life. The psychiatrist published a book
case (Tokyo) containing the contents of those letters after Y committed suicide. Y’s successor sued
for copyright infringement. The Tokyo court held that Y has merely given the
psychiatrist the physical embodiment of his work (the letters) but not the copyright of
those works.
Authorship
 CO s.11(1): In this Part “author”, in relation to a work, means the person who creates it.
 CO s.11(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
Joint Authorship
 Under s.12(1) CO, a work of joint authorship 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.
 Essentially, three requirements have to be met: (1) there had to be collaboration in the creation of the
work, (2) there had to be a contribution from each author (each author must bring creative expression
to the work), (3) contribution had to be separate. There is however no need for there to be a common
intention as to joint authorship.
 A joint author is accordingly a person who collaborates with another author in the production of a
work, who as an author provides significant creative input and whose contribution is not distinct (as in
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separate) from that of the other author.

 A joint author must participate in the writing and share responsibility for the form of expression in the
literary work (rather than merely supplying ideas or making suggestions).
 It is not necessary for each author to establish that his contribution to the work is equal in terms of
either quantity, quality or originality to that of his collaborators.
Robin Ray v A joint author must participate in the writing and share responsibility for the form of
Classic FM Plc expression in the literary work. He must accordingly do more than contribute ideas to
an author: he must be an author of the work in question. It is not enough that he
thought up the plot of a play or made suggestions for a comic routine to be included.
(Tate v Thomas)
Cala Homes Ltd There is no restriction on the way in which a joint author’s contribution may be
v Mcalpine funneled into the finished work, and in particular there is no requirement that each of
the authors must have exercised penmanship. What is required is something which
approximates to penmanship – a direct responsibility for what actually appears on the
paper.
Beckingham v Contribution of the co-author needs to be significant and original (ie. contributing
Hodgens sufficient skill and judgment in the collaboration)
Also, there does not have to be any intention to come joint authors.
Godfrey v Lees It was unnecessary for each joint author of a musical work to establish that his
contribution to the work is equal in terms of either quantity, quality or originality is to
that of his collaborators. The ‘qualifying threshold’ is not high but trivial contributions
would not qualify.
 Note again that contribution of co-authors must be inseparably connect, meaning that contributions
must be merged into inseparable or interdependent parts of a unitary whole (ie. cannot itself be a
meaningful work if singled out)

Employee Works
 Under CO s.14(1) where a literary, dramatic, musical or artistic work, or a film, is made by an employee
in the course of his employment, his employer is the first owner of any copyright in the work subject to
(a) Any agreement to the contrary and (b) ss.2 where the employer has to pay an award if the work is
exploited in a way that is not reasonably contemplated by the employer and employee at the time of
creating the work.
 Whether someone is employed is a matter of fact to be derived from the circumstances of each case,
the existence of a contract is not conclusive
 The ‘course of employment’ is also distinct from ‘period of employment’, it depends on the nature and
terms of the job and the relation of the work to it – whether reasonably incidental or not.
Ultraframe UK The CA held that a contract of service exists if three conditions are fulfilled: (1) the
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Ltd v Fielding servant agrees that, in consideration of a way or other remuneration he will provide his
own work and skill in the performance of some service for his master, (2) he agrees,
expressly or impliedly, that in the performance of that service he will be subject to the
other;s control in a sufficient degree to make that other a master and (3) the other
provisions of the contract are consistent with its being a contract of service
Ng Mung Khian The CA held that the course of employment is different from during the period of
v Wing Kwong employment. ‘Course of employment” connotes the idea that the employee was doing
Painting something which was part of his service to his employer. The course of employment
might have taken to have commenced although the hour for actual work had not
struck. If the activity upon which the workman was engaged reasonably incidental and
natural to the class of work, then the chain is not broken.
Byrne v Statist Journalist undertook a piece of translation and editing as special task outside his
Co. normal hours of employment. The piece was for an advertisement in his employer’s
newspaper. Court held that he was NOT in the course of employment
Beloff v Journalist wrote internal memorandum to her colleagues about a possible article. Court
Pressram held that he was in the course of employment.
Commissioned Works
 Under s.15(1) CO, where a work is made on the commission of a person and there is an agreement that
expressly provides for the entitlement to the copyright, copyright in the commissioned work belongs to
the person who is entitled to the copyright under the agreement.
 Under s.15(2) CO, notwithstanding ss.1, (a) the person who commissioned the work has an exclusive
licence to exploit the commissioned work for all purposes that could reasonably have been
contemplated by the author and the commissioner at the time the work was commissioned and (b) has
the power to restrain any exploitation of the commissioned work for any purpose against which he
could reasonably take objection.
Ultraframe UK Commissioning means ordering. It means more than requesting or encouraging. It
Ltd v Fielding connotes an obligation to pay not just for the finished products but to pay for the very
article in which the copyright resides irrespective of whether any of the finished
products are purchased.
Community for Whether a work is commissioned work or employee work will depend on:
Creative Non- - Skill required – Source of instrumentalities and tools – location or work
Violence v Reid - duration of relationship – extent of hired party’s discretion over time
- method of payment – provision of employee benefits

Assignment
 Under s.101, copyright is transmissible by assignment.
 Under s.101 (2), an assignment or other transmission of copy right may be partial, limited so as to apply
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(a) to one or more, but not all, of the things the copyright owner has the exclusive right to do, (b) to
part, but not the whole, of the period for which copyright is to subsist.
 Under s.101(3), an assignment of copyright is NOT effective unless it is in writing, signed by or on behalf
of the assignor.
Licence
 A licencee obtains a contractual right from the copyright owner to do certain acts with the copyright
work which is otherwise prohibited by the CO.
 A licence is binding on every successor in title to a copyright owner’s interest in the copyright, except a
purchaser in good faith for valuable consideration and without notice (actual or constructive) of the
licence or person deriving title from such a purchaser.
 A licence can be exclusive or non-exclusive and does not have to be in writing.
 An ‘exclusive license’ under CO s.103(1) is a licence in writing signed by or on behalf authorizing the
licensee to the exclusion of all other persons, including the person granting the license, to exrecise a
right which would otherwise be exercisable exclusively by the owner. (s.103(2) the license under an
exclusive licence has the same rights against a successor in title who is bound by the licence as he has
against the person granting the licence.
 Under s.112 (1) An exclusive licensee has, except against the copyright owner, the same rights and
remedies in respect of matters occurring after the grant of the licence as if the licence had been an
assignment.
(2) His rights and remedies are concurrent with those of the copyright owner; and references in the
relevant provisions of this Part to the copyright owner shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself
of any defence which would have been available to him if the action had been brought by the copyright
owner.
 A licence can be implied: Licences are frequiently to be implied from the circumstances in which
copyright material is handed over
Blair v Osborne Company hired an architect to prepare a plan for submission of a planning application.
& Tobkins Landowner used the plan to submit and then build a building that reproduced the plan
although he had not employed the architect to supervise construction of the building.
The architect sued for copyright infringement since he has no contract with the
landowner, arguing that he had only authorized the company to submit the plan but
not to build a building according to the plan. The court held that the company has an
implied license – by delivering the plan to the landowner, the architect has impliedly
licensed the landowner to build a building (the transaction with an implied license)

Duration of Copyright
 General Rule: life of author plus 50 years (CO s.17(2))
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 For unknown authorships: 50 years from the end of the calendar year in which the work was first
made, or if during that period the work is made available to public, 50 years from that year (s.17(3))
 For computer-generated work: 50 years from the end of the calendar year in which the work was made
(s.17(6))
 For Joints authorships: 50 years from the end of the calendar year of the death of the last surviving
author or the last author whose identity is known.

Moral Right
 Copyright protects the personality of authors by granting them moral rights
 According to Art.6 of the Berne Convention:
Independent of the author’s economic rights, and even after the transfer of the said rights, the author
shall have the right to claim authorship of the work and to object to any distortion, modification of, or
other derogatory action in relation to the said work, which would be prejudicial to the author’s honor
or reputation
 Moral rights are also protected under the Copyright Ordinance:
o Right to be identified as author or director – s.89(1)
o Right to object to derogatory treatment of work – s.92
o Right against False attribution of work – s.96
 Note that under the Copyright Ordinance:
o Moral rights are ‘inalienable’, ie. Cannot be assigned.
s.105 CO: The rights conferred by Division IV (moral rights) are not assignable
o Under s.100 CO, the right to be identified as author or director applies in relation to the whole or
any substantial part of a work, whereas the rights to object to derogatory treatment and false
attribution apply in relation to the whole or any part of the work.
o Moral rights can however be ‘waived’
s.98(2) CO: Any of those rights may be waived by instrument in writing signed by the person
giving up the right.
o The cause of action upon breach of moral rights would be breach of statutory duty
s.114(1) CO: An infringement of a right conferred by Division IV (moral rights) is actionable as a breach
of statutory duty owed to the person entitled to the right.
 There are however limitations as to the subject matter protected by moral rights. In particular, under the
Copyright Ordinance, moral rights do not apply to:
o A computer programme or any computer-generated work (s.91(2), s.93(2))
o Any work made for the purpose of reporting current events (s.91(5), s.93(3))
o a newspaper, magazine or similar periodical; or an encyclopedia, dictionary, yearbook or other
collective work of reference (s.91(6), s.93(4))
 As for the duration of subsistence of moral right:
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o Under s.97(1), the right to be identified as author (under s.89) and the right to object to
derogatory treatment of work (under s.92) subsist so long as copyright subsists in the work.
o Under s.97(2), the right to object to false attribution (under s.96) continues to subsist until 20
years after a person’s death.

Right to be identified as author

 The WIPO Guide to the Berne Convention cites this right as ‘first and foremost’.
 Under s.89(1) CO:
o the author of a copyright literary, dramatic, musical or artistic work, and the director of a
copyright film, has the right to be identified as the author or director of the work. And under
s.100, this right applies in relation to the whole or any substantial part of a work.
 Under s.91(3), this right does not apply to employee works.
 In the case of joint authorship, under s.99(1), the right to be identified as author is a right of each joint
author to be identified as a joint author, and must be asserted in accordance with s.90 by each joint
author in relation to himself.
 The right to be identified as author has to be asserted either generally or on an assignment or by
instrument in writing:
o Under s.90(2), the right may be asserted generally, or in relation to any specified act or
description of acts – (a) on an assignment of copyright in the work, by including in the
instrument effecting the assignment a statement that the author or direct asserts in relation to
that work to be identified or (b) by instrument in writing signed by the author or director.
 There is no particular form of words required for the assertion, though the form commonly used is ‘[The
author] hereby asserts his right to be identified as the author of [the work]’. According to the Copinger
case, an assertion, in ordinary language is simply an insistence or positive statement of a right or a claim.
Hyperio Although it was accepted that the law did not require the use of a specific form of words to
n describe the authorship of the work, the language in this case “With thanks to [the P] for his
Records preparation of performance materials for this recording” was found insufficient to identify his
Ltd v authorship when he was the author of the performing editions of the music.
Sawkins
Right to object to derogatory treatment
 Under s.92(1) CO:
o the author of a copyright literary, dramatic, musical or artistic work, and the director of a
copyright film, has the right in the circumstances mentioned in this section not to have his work
subjected to derogatory treatment.
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 ‘Treatment’ is defined in s.92(2)(a) to mean addition to, deletion from, alteration to or adaptation of,
other translation of literary dramatic work or an arrangement of a musical work involving no more than a
change of key or register.
o “treatment” of a work means any addition to, deletion from or alteration to or adaptation of the
work, other than - (i) a translation of a literary or dramatic work; or (ii) an arrangement or
transcription of a musical work involving no more than a change of key or register.
 ‘Derogatory’ is defined in s.92(2)(b) to mean amounting to distortion or mutilation of the work or is
otherwise prejudicial to the honour or reputation of the author.
o the treatment of a work is derogatory if it amounts to distortion or mutilation of the work or is
otherwise prejudicial to the honour or reputation of the author or director
 The test for ‘derogatory’ seems to be objective, it is not sufficient that the author is aggrieved by what
has occurred.
Pasterfield The court ruled that to succeed in claiming derogatory treatment, the plaintiff must establish
v Denham that the treatment accorded to his work is either a ‘distortion’ or a ‘mutilation’ that
‘prejudices the author’s honour or reputation’. It is not sufficient that the author is aggrieved
by what has occurred.
Confetti P originator of music track claimed that superimposition of rap (allegedly about violence and
Records v drugs) over his work amounted to derogatory treatment. The court found that the rap were
Warner very hard to decipher and the parties disagreed on what the words actually were, the very
Music Ltd fact that the words were hard to decipher itself militates against the conclusion that the
treatment was ‘derogatory’ in the statutory sense.
 Under s.114, in an action for infringement of rights conferred by s.92 (ie. Right to object to derogatory
treatment), the court may grant an injunction as remedy.
o the court may, if it thinks it is an adequate remedy in the circumstances, grant an injunction on
terms prohibiting the doing of any act unless a disclaimer is made, in such terms and in such
manner as may be approved by the court, dissociating the author or director from the treatment
of the work.
Right to object to false attribution
 Under s.96(1) CO:
o A person has the right in the circumstances mentioned in this section-
(a) not to have a literary, dramatic, musical or artistic work falsely attributed to him as author; and (b)
not to have a film falsely attributed to him as director
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Economic Right
 Under s.22(1) CO:
o The owner of the copyright in a work has, in accordance with the following provisions of this
Division, the exclusive right to do the following acts in Hong Kong-
 (a) to copy the work (see section 23);
 (b) to issue copies of the work to the public (see section 24);
 (c) to rent copies of the work to the public (see section 25);
 (d) to make available copies of the work to the public (see section 26);
 (e) to perform, show or play the work in public (see section 27);
 (f) to broadcast the work or include it in a cable programme service (see section 28);
 (g) to make an adaptation of the work or do any of the above in relation to an adaptation
(see section 29),
 s.22(2) provides that copyright subsisting in a work is infringed by any person who, without license of the
copyright owner, does or authorizes another to do any of the acts restricted by copyright.
Reproduction right (a) Copying
 s.23(2) defines ‘copying’:
o “Copying of a work means reproducing the work in any material form. This includes storing the
work in any medium by electronic means.”
 s.23(3) specifically deals with 2D/3D transformations in relation to an artistic work:
o “In relation to an artistic work copying includes the making of a copy in 3 dimensions of a 2-
dimensional work and the making of a copy in 2 dimensions of a 3-dimensional work.”
 s.23(4) prohibits take still photos of the whole or substantial part of films in relation to a film:
o “Copying in relation to a film, television broadcast or cable programme includes making a
photograph of the whole or any substantial part of any image forming part of the film, broadcast
or cable programme.”
 s.23(6) states that copying in relation to any description of work includes the making of copies which are
transient or are incidental to some other use of the work.
Ditsribution right (b) Issuing copies to the public
 s.24(2) defines the act of ‘issuing copies to the public’:
o “the issue of copies of a work to the public are to the act of putting into circulation copies not
previously put into circulation, in Hong Kong or elsewhere, by or with the consent of the
copyright owner.”
 s.24(4) states that the scope of distribution right extends to electric form:
o “issue of copies of a work include the issue of the original and the issues of copies in electronic
form.”
 Note the ‘first sale doctrine’ (aka. ‘doctrine of exhaustion) that sale of copies with authorization exhausts
the copyright owner’s control. This doctrine is put in statutory form in s.24(3):
o “References in this Part to the issue of copies of a work to the public do not include-
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 (a) any subsequent distribution, sale, hiring or loan of copies previously put into
circulation; or
 (b) any subsequent importation of those copies into Hong Kong.”
Rental right (c) renting copies to the public
 Rental right is embodied in TRIPs Art.11:
o “In respect of at least computer programs and cinematographic works, a Member shall provide
authors and their successors in title the right to authorize or to prohibit the commercial rental to
the public of originals or copies of their copyright works.”
 And in Art. 7(1) of the WIPO Copyright Treaty:
o Authors of
 (i) computer programs;
 (ii) cinematographic works; and
 (iii) works embodied in phonograms, as determined in the national law of Contracting
Parties,
shall enjoy the exclusive right of authorizing commercial rental to the public of the originals or copies of
their works.
 Under s.25(1), the categories of copyright subject matters in which rental right subsists are:
o “The rental of copies of any of the following works to the public is an act restricted by the
copyright in the work-
 (a) a computer program;
 (b) a sound recording;
 (c) a film;
 (d) a literary, dramatic or musical work included in a sound recording;
 *[(e) a literary or artistic work included in a comic book; or
 (f) the typographical arrangement of a published edition of a comic book.]
 Under s.25(2), ‘rental’ is defined:
o “rental” means making a copy of the work available for use, on terms that it will or may be
returned, for direct or indirect economic or commercial advantage.”
 Therefore, as echoed by s.25(3), ‘rental’ does not include making available for the purpose of public
performance, playing or showing in public, broadcasting, making available for exhibition in public,
making available for on-the-spot reference use.
 There is no statutory definition for ‘on-the-spot reference use’. There seem to be two dimensions, ‘on-
the-spot’ qualifies time and space while ‘reference use’ qualifies the nature. It seems that ‘reference’
implies that the object will not be exhaustively used – a lesser degree of full usage.
Right of making available online (d) making avaible copies of the work to the public
 This right is embodied in WIPO Copyright Treaty Art.8:
o “…authors of literary and artistic works shall enjoy the exclusive right of authorizing any
communication to the public of their works, by wire or wireless means, including the making
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available to the public of their works in such a way that members of the public may access these
works from a place and at a time individually chosen by them.”
 Under s.26(2), ‘the making available of copies of work’ is defined, the key elements are ‘by wire or
wireless means’ and ‘in such a way that members of the public in Hong Kong or elsewhere can access
from a place and time individually chose’, eg. On the internet:
o “References in this Part to the making available of copies of a work to the public are to the
making available of copies of the work, by wire or wireless means, in such a way that members
of the public in Hong Kong or elsewhere may access the work from a place and at a time
individually chosen by them (such as the making available of copies of works through the service
commonly known as the INTERNET)”
 Note that the focus is on ‘making available’, it does not matter whether the work is accessed, once it is
made available online, this right is exercised/infringed.
 Note also that the mere provision of physical facilities for enabling the making available of copies of
works to the public does NOT in itself constitute an act of making available of copies of work to the
public.
 Note also, for example, that posting hyperlinks to works already available on websites is NOT in itself an
act of making available of copies of work to the public.
 Whereas acts like offering for download, streaming a musical work from a online music store or pay-per-
view TV channel, or sharing works over peer-to-peer file sharing network, are acts of making available of
copies of work to the public.
Public performance right (e) Performing, showing or playing the work
 Under s.27(2), ‘performance’ is defined:
o “performance”, in relation to a work-
 (a) includes delivery in the case of lectures, addresses, speeches and sermons; and
 (b) in general, includes any mode of visual or acoustic presentation, including
presentation by means of a sound recording, film, broadcast or cable programme of the
work.
 Under s.27(3), in relation to films, sound recordings, broadcast and cable programmes, the playing or
showing of the work in public is the act prohibited under this section.
 ‘Public’ is not statutorily defined, but it seems that public means a place open to the public, or any place
where a substantial number of persons outside of a normal circle of family and friends is gathered.
Broadcasting right (f) Broadcasting or including in a cable programme
 Under s.28, the subject matters protected by broadcasting rights are listed:
o The broadcasting of the work or its inclusion in a cable programme service is an act restricted by
the copyright in-
 (a) a literary, dramatic, musical or artistic work;
 b) a sound recording or film; or
 (c) a broadcast or cable programme.
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 WIPO further explains this right:

o ‘It is central to this right that some form of receiver intermediate between the performer and the
audience’ (– therefore, some form of instrument must be used, if merely performed to the public
then the right infringed would seem to be performance right. Further, do not confused this right
with making available online, this right is limited to broadcasting through ‘wave’)
o It is necessary only that signals be emitted; “it is immaterial whether or not they are in fact
received.”
Adaptation right (g) Making an adaptation of the work
 This right is embodied in Art.12 of the Berne Convention:
o “Authors of literary or artistic works shall enjoy the exclusive right of authorizing adaptations,
arrangements and other alterations of their works.”
 ‘Adaptation’ means recasting of a work from one format into another, whereas ‘arrangement’ means
modification within the same format.
 ‘Adaptation’ in relation to different categories of work is statutorily defined under s.29(3):
o In this Part “adaptation”-
 (a) in relation to a literary work, other than a computer program, or dramatic work,
means-
 (i) a translation of the work;
 (ii) a version of a dramatic work in which it is converted into a non-dramatic work
or, as the case may be, of a non-dramatic work in which it is converted into a
dramatic work;
 (iii) a version of the work in which the story or action is conveyed wholly or
mainly by means of pictures in a form suitable for reproduction in a book, or in a
newspaper, magazine or similar periodical;
 (b) in relation to a computer program, means an arrangement or altered version of the
program or a translation of it;
 (c) in relation to a musical work, means an arrangement or transcription of the work.
 An adaptation is made when it is recorded, in writing or otherwise. (s.29(1))
Holland v This case provides an example of infringement of adaptation rights. The D’s ballet, ‘the
Vivian Van Nightingale and the Rose’, allegedly infringed the copyright in Oscar Wilde’s popular short
Damm story of the same title. The D actually admitted that ‘the name of Oscar Wilde was a
Productions valuable advertising feature.’ The court ruled against D and found that the ballet was ‘based
on’, ‘adapted from’ and ‘inspired by’ Oscar Wilde’s story.
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