HKSAR v. CHAN KWAI TONG

HCMA993/2005

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

(Appellate Jurisdiction)

MAGISTRACY APPEAL NO.993 OF 2005

(ON APPEAL FROM FLCC 1030 OF 2005)

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REASONS  FOR  JUDGMENT

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Background

1. On 7 October 2005, the appellant was convicted by a magistrate sitting in the Fanling Law Courts of the offence of importing into Hong Kong infringing copies of copyright work otherwise than for private and domestic use without the licence of the copyright owner, contrary to section 118(1)(b) and section 119(1) of the Copyright Ordinance, Cap. 528.

2. The particulars of the offence are that on 7 October 2004, at the Customs Arrival Hall of Lo Wu Control Point, the appellant, without the licence of the copyright owner, imported into Hong Kong :

(1)   60 numbers of digital versatile discs (DVD); and

(2)   two numbers of video compact discs (VCD),

being infringing copies of copyright work, namely films otherwise than for his private and domestic use.

3. The magistrate, in her Statement of Findings, stated that she accepted PW1 and PW3 to be honest and reliable witnesses.  She accepted their evidence and found that Exhibit P6 (three paper cartons) were used by the appellant to hold the exhibits.

4. She considered the evidence given by the appellant and found that he was not an honest and reliable witness and she rejected the whole of his evidence.  She found that his evidence was not worthy of belief and she did not accept his evidence that he did not know that the discs in question were infringing copies of copyright work.

5. She considered section 118(3) of the Copyright Ordinance which states :

“(3) It is a defence for the person charged with an offence under subsection (1), to prove that he did not know and had no reason to believe that the copy in question was an infringing copy of the copyright work.”

She mentioned the case of HKSAR v. Tan Say Seng [2000] 3 HKC 236 where it was held that :

“…. the magistrate had to look at what enquiries the appellant made and assess whether on an objective standard he had done that which in the circumstances reasonably could be required of him.”

6. She found that the appellant had only relied on the particulars of the publisher and the sole distributor to determine that the discs in question were not infringing copies, and she found that that was insufficient and clearly did not meet the standard required on an objective basis.  She found the charge proved against the appellant and convicted him and sentenced him to one month’s imprisonment.  The appellant was granted bail immediately after the conviction pending appeal.

The appeal

7. On the first day of the hearing of the appeal on 18 November 2005, the appellant queried whether PW2, who was the representative of the copyright owner in Hong Kong, was a reliable witness.  In relation to the admitted facts, he alleged that he never authorised the solicitor acting for him at the trial, to sign the admitted facts and that he was never shown that document nor was it ever read to him.  I then adjourned the hearing of the appeal and ordered the transcript of the evidence of PW2 and ordered the filing of an affidavit by the appellant to substantiate his allegations and by the solicitor concerned to reply to the allegations.

8. The appellant filed a short affidavit to say that during the trial no person read to him the admitted facts.  The solicitor concerned filed an affidavit to say that the admitted facts were read and explained by him to the appellant who then wrote at the back of the admitted facts that he understood and agreed the said facts.  The solicitor said that as instructed by the appellant, he then signed the admitted facts which was then submitted to the court.  He produced a duplicate copy of the admitted facts bearing the appellant’s signature.

9. At the resumed hearing of the appeal on 24 February 2006, Ms Leung, for the respondent, very properly submitted that in the final address to the magistrate by the defendant’s solicitor, he never mentioned to the court the provisions of section 35 of the Copyright Ordinance nor the provisions of section 118(6) of the same Ordinance.  Consequently, it would appear that the magistrate never considered these provisions because none of them was mentioned in her Statement of Findings.

10. Section 35(3) states :

“(3)   Except as provided in section 35A, a copy of a work other than a copy of an accessory work is also an infringing copy if—

(a)  it has been or is proposed to be imported into Hong Kong; and

(b)  its making in Hong Kong would have constituted an infringement of the copyright in the work in question, or a breach of an exclusive licence agreement relating to that work.”

Subsection (4) reads as follows :

“(4)   For the purposes of sections 118 to 133 (criminal provisions) ‘infringing copy’ (侵犯版權複製品) does not include a copy of a work—

(a)  that was lawfully made in the country, territory or area where it was made;

(b)  that has been or is proposed to be imported into Hong Kong at any time after the expiration of 18 months beginning on the first day of publication of the work in Hong Kong or elsewhere; and

(c)  its making in Hong Kong would have constituted an infringement of the copyright in the work in question, or a breach of an exclusive licence agreement relating to that work…. ”

11. In section 118(6), it is stated :

“(6)   For the purposes of subsections (1)(b) and (3), where a person is charged with an offence under subsection (1) in respect of a copy of a copyright work which is an infringing copy by virtue only of section 35(3) and not being excluded under section 35(4), if he proves that—

(a)  he had made reasonable enquiries sufficient to satisfy himself that the copy in question was not an infringing copy of the work.;

(b)  he had reasonable grounds to be satisfied in the circumstances of the case that the copy was not an infringing copy;

(c)  there were no other circumstances which would have led him reasonably to suspect that the copy was an infringing copy,

he has proved that he had no reason to believe that the copy in question was an infringing copy of the copyright work.”

12. The defence raised by the appellant at trial clearly came within the ambit of section 35(4), in that it was alleged by him that the discs were lawfully made in China and they were lawfully made because there was copyright granted to the manufacturers in China.  Because section 35(4) came into play, it would have been much better if the magistrate had considered the provisions of section 118(6) to determine whether the appellant had proved that he had reasonable grounds to be satisfied, in the circumstances of the case, that the copy was not an infringing copy.

13. In any case, Ms Leung submitted that the date of the offence in question was more than 18 months after the first day of publication of one of the films in Hong Kong and she posed the question to the court of whether those copies of that film were “infringing copies”.

14. According to the evidence of PW2, in respect of the 60 DVDs of a film entitled “Hero”, the date of publication of the work in Hong Kong was in March 2003, so 18 months from that date would have taken one to September 2004.  Therefore, when these 60 DVDs were brought into Hong Kong by the appellant on 7 October 2004, that was after 18 months from the date of publication of the work in Hong Kong, and therefore those 60 DVDs, in my view, were not “infringing copies”.

15. In respect of the two VCDs of the other film which was entitled in Chinese “十面埋伏”, the same argument would not be available to the appellant because the date of publication of that work was in the year 2004.

Determination

16. In view of the matter just mentioned, I quashed the conviction in respect of the 60 DVDs.  There were no other matters raised by the appellant or apparent from the trial bundle which could have affected the safety of the conviction in respect of the two VCDs, so I dismissed the appeal in respect of that part of the conviction.  The sentence of one month’s imprisonment imposed by the magistrate was quashed, and in lieu thereof the appellant was fined $1,000 which would be taken out from his bail money.  The appeal was therefore allowed to the extent mentioned.