DISH NETWORK LLC AND OTHERS v. ZENTEK INTERNATIONAL CO. LTD AND ANOTHER

HCMP 1357/2008

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 1357 OF 2008

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J U D G M E N T

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1.  This is an application for Norwich Pharmacal relief.  The 1st and 2nd plaintiffs are US satellite broadcasters.  They provide encrypted programming services to subscribers for a fee.  The 3rd plaintiff is a Canadian satellite broadcaster and is in a similar business as the 1st and 2nd plaintiffs but operates in Canada.  All the plaintiffs use the same encryption technology supplied by a NagraStar LLC. 

2.  The plaintiffs provide an access card to their subscribers for access to the encrypted programmes.  The access card has the hardware and software to descramble the encrypted signals from the plaintiffs so that the encrypted programmes can be viewed by the subscribers.  There are however various types of equipment and devices in the market which can descramble the plaintiffs’ encrypted programmes by various means.  Such descrambling is without the plaintiffs’ authorisation and is illegal. 

3.  In order to prevent illegal descrambling, the plaintiffs have revised and updated their encryption technology and descrambling hardware and software.  However, those in the business of providing illegal descrambling equipment and devices also updated their products to continue their business.  This has been going on and on and there are a number of versions of encryption hardware and software with corresponding piratical descrambling equipment and devices. 

4.  Pirate software is an essential component of most pirate devices.  Some of the software are available from some piracy websites.  These websites often restrict access to those who pay fees to become their members or subscribers.

5.  Through various investigations, the plaintiffs have identified a number of websites which have been used for or involved in the sale of pirate hardware and software.  The domain names of these sites are www.tomico-satellites.com, www.tomico-satellites.net, www.nagra2-software.com, www.nagra2elite.com, www.nagra3.com and www.anton-pillar.com (hereinafter called “the Websites”). 

6.  The Websites used to be hosted in servers in North America.  In 2006, they were moved to a server or servers of the 1st defendant located in Hong Kong.  When the Websites were in Hong Kong, those who control them continued to sell the pirate hardware and software from them.  With the exception of www.anton-pillar.com, the Websites had in them pirate software available for downloading by their members and subscribers.  The Websites have now suspended their operations, but they can be revived at anytime.

7.  The plaintiffs apply for Norwich Pharmacal relief against the defendants.  The 1st defendant is the company that owns the relevant server or servers in Hong Kong.  The 2nd defendant is its director.  The plaintiffs want disclosure by the defendants of the names, identities and some other information of the owners of the Websites as well as their members and subscribers who have taken part in the sale and purchase of the pirate hardware and software.

8.  In order to succeed, the plaintiffs must show cogent and compelling evidence to demonstrate that serious tortious activities have taken place against them in Hong Kong (see A Co. v B Co. [2002] 3 HKLRD 111 at 117G-H).  The plaintiffs rely on section 275(2)(b) of the Copyright Ordinance, Cap. 528.  They say that their position is the same as copyright owners whose rights have been infringed by the owners, members and subscribers of the Websites.  Sections 275(1) and (2)(b) provide:

“(1)   a person who-

(a) makes charges for the reception of programmes included in a broadcasting or cable programme service provided from a place in Hong Kong or elsewhere; or

(b) sends encrypted transmissions of any other description from a place in Hong Kong or elsewhere, is entitled to the following rights and remedies.

(2)  He has the same rights and remedies against a person who-

(a) …; or

(b) publishes any information which is calculated to enable or assist persons to receive the programmes or other transmissions when they are not entitled to do so.

as a copyright owner has in respect of an infringement of copyright.”

9.  The plaintiffs say that the owners of the Websites, in making available the pirate software for downloading by their members and subscribers, have published such software in terms of section 275(2)(b).  The plaintiffs thereby have the rights and remedies against them as infringers of the plaintiffs’ copyright. 

10.  The defendants disagree.  They say that there is no publishing unless and until a member or subscriber has clicked on the link on the pirate webpage shown on his computer monitor to initiate the streaming of signal of the pirate software from the 1st defendant’s server in Hong Kong to the sever of the member or subscriber.  The defendants say that this act of clinking on the link invariably takes places in North America as the plaintiffs’ programmes are only broadcast in North America.  They thus argue that the infringement by publishing only takes place in North America and not in Hong Kong. 

11.  Leading counsel for the defendants also refer to BBC Enterprises Ltd v Hi-Tech Xtravision Ltd [1992] RPC 167 at 202 lines 11 to 19 and submits that the act of publishing (like the manufacture of unauthorized decoders in the BBC Enterprises Ltd case) must be completed in Hong Kong before section 275(2)(b) can apply.  Since publishing only takes place in North America, no action under section 275(2)(b) is constituted against the owners of the Websites.

12.  I refer to the Oxford English Dictionary.  The word “publish” is defined to mean, among others:

“(1) to make public, to make publicly or generally known, … (4)(a) to issue or cause to be issued for sale to the public (copies of a book, writing, engraving, piece of music, or the like); said of an author, editor, or spec. of a professional publisher, (b) to make generally accessible or available for acceptance or use; to place before or offer to the public, now spec. by the medium of a book, journal, or the like.”

13.  I prefer the meaning of “publish” as defined in the Oxford Dictionary and disagree with the defendants on their interpretation of section 275(2)(b).  I find that the mere availability of the software on the Websites, except the www.anton-pillar.com website, amounts to publishing and constitutes an infringement of the plaintiffs’ rights as copyright owners.  I therefore find in favour of the plaintiffs that there is cogent and compelling evidence that serious tortious activities against the plaintiffs have taken place in Hong Kong.

14.  The next matter raised by the defendants is on the propriety of requiring the disclosure of data contained in the www.anton-pillar.com website.  The evidence suggests that this website is just a chatroom where people discuss about matters relating to piracy descrambling.  Those who take part in the discussions may or may not be operators or members of the other websites grouped under the Websites.  This website also has nothing available for downloading or for sale.  I agree with the defendants that there is no cogent evidence that tortious activities against the plaintiffs have taken place in this website.  I would not require disclosure of any data in or relating to this website.

15.  The defendants have also submitted that the data to be disclosed should not include those of the users of the Websites as some of them are mere visitors.  I agree and will not require the disclosure of data of mere visitors or mere users.  I will only require disclosure of data of those who have offered or accepted pirate software or hardware whether for a price or otherwise and those who have given instructions for the use of pirate hardware or software.

16.  To avoid prejudice to innocent users of the Websites, the plaintiffs also undertake that if they should obtain information from the defendants which contains information of innocent users, they will not use such information for any purpose.  Upon this undertaking of the plaintiffs, I make the following order:

(1) The 1st and 2nd defendants do within 7 days of the date of the order herein disclose to the solicitors for the plaintiffs (in documentary form) the full names, postal addresses, e-mail addresses, and proof of identity documents (if available) of the owners and/or operators of the websites www.tomico-satellites.com, www.tomico-satellites.net, www.nagra2-software.com, www.nagra2elite.com and www.nagra3.com which have been hosted by the 1st defendant’s computer servers in Hong Kong (hereinafter called “the Infringing Websites”);

(2) The 1st and 2nd defendants do within 7 days of the date of the order herein disclose to the solicitors for the plaintiffs (in documentary form) the registration information, billing and payment information and other communications between the 1st and/or 2nd defendants and the owners and/or operators of the Infringing Websites;

(3) The 1st and 2nd defendants do within 7 days of the date of the order herein disclose to the solicitors for the plaintiffs (in documentary or computer readable form) the records of the names, usernames, nicknames, pseudonyms, postal addresses, e-mail addresses and internet protocol addresses of the members and subscribers of the Infringing Websites and the dates and times such internet protocol addresses were used to access the Infringing Websites;

(4) The 1st and 2nd defendants do within 7 days of the date of the order herein disclose to the solicitors for the plaintiffs (in documentary or computer readable form) the electronic data of messages and “posts” or private messages that contain information of the identities of the members and subscribers of the Infringing Websites preserved in the servers in which the Infringing Websites reside;

(5) The members and subscribers of the Infringing Websites as referred to in paragraphs 3 and 4 of this order are limited to those who have offered or accepted pirate hardware or software for a price or otherwise or those who have given instructions for the use of pirate hardware or software.

(6) The plaintiffs be at liberty to use the documents and information disclosed pursuant to this order for the purpose of enforcing their broadcasting and related rights against any and all persons so disclosed;

(7) The 1st and 2nd defendants do within 7 days of their compliance of this order make and file an affidavit or affirmation verifying that they have duly complied with this order and serve a copy of the same on the solicitors for the plaintiffs;

Pursuant to an agreement of the parties, I also order:

(8) The costs of these proceedings be to the 1st and 2nd defendants; and

(9) The plaintiffs do pay the 1st and 2nd defendants reasonable costs for their compliance with this order.