You are on page 1of 7

 !

"# Intellectual Property Practice

Dismissing the Appeal of ‘Big Crook’


So far, the criminal conviction
and custodial sentence for file
sharing stands. Wing L Cheung
highlights the unique features
of this case as compared with
o t he r w e l l - k no w n c a s e s
involving the use of similar
technology, paying particular
attention to the meaning of
the word ‘distribute’ in the
Copyright Ordinance
Photo: Jorge Figueiredo

Introduction To r e c a p i t u l a t e , C h a n w a s of the Copyright Ordinance (Cap


The conviction of Chan Nai Ming at convicted by Magistrate Mr Colin 528) (the Ordinance) and s 159G of
Tuen Mun Magistracy on 24 October Mackintosh of three charges of the Crimes Ordinance (Cap 200). He
2005 (HKSAR v Chan Nai Ming, attempting to distribute an infringing was sentenced to three months’
TMCC 1268/2005) is only part one copy of a copyright work (otherwise imprisonment on each charge and
of the ‘Big Crook Case’. On 12 than for the purpose of, in the course the sentences were ordered to run
December 2006, Hon Beeson J of, any trade or business) to such an concurrently.
delivered a 31 page judgment extent as to affect prejudicially the The appeal judgment has
dismissing the appeal by Chan owner of the copyright, without the apparently been widely welcomed. In
against his conviction and sentence licence of the copyright owner, particular, intellectual property
(HCMA 1221/2005). contrary to ss 118(1)(f) and 119(1) rights owners and the entertainment

==01 • 2007  ! Hong Kong Lawyer 43


Intellectual Property Practice  !"#

industry are delighted by the clear Grokster, Ltd et al, the action was owner of the copyright, an
terms in which Hon Beeson J has taken by the Plaintiff against infringing copy of a copyright
rejected the argument that ‘copies’ Grokster, a distributor of free work.
under the Ordinance must involve software allowing peer-to-peer file
physical material entities. sharing. In each of these well known The word ‘distribute’ is not defined
Needless to say, the decision of cases, the legal battle is civil in in the Ordinance. According to The
Hon Beeson J in relation to the nature, engaging commercial entities Oxford Dictionary, distribute means
meaning of ‘copies’ is an important with huge monetary interests at ‘hand or share out to a number of
statement of law. That said, it is stake. Clearly this has to be recipients’. In Words and Phrases
useful to note that the ‘Big Crook differentiated from the position of Legally Defined, it is defined as
Case’ has many other important Chan, an individual BT seeder, who ‘delivery of something to several
implications. The purpose of this faces criminal charges. persons’ (quoting the Canadian case
article is to highlight the unique One may find Chan’s position to of R v McNiven [1944] 1 WWR 127
features of this case as compared to be similar to that of the defendants at 128, per Doiron J).
other well-known cases involving the in the ‘Tiger Leak Case’ in the United Whether Chan’s acts constituted
use of file-sharing technology, and to States (Apple Computer, Inc v Doug distribution was argued extensively
examine the way in which the word Steigerwald, et al). In that case, both at the magistracy level and on
‘distribute’ should, in light of the Apple Computer, Inc sued three appeal. Before the Magistrate, it was
appeal judgment, be understood in software developers of the Apple argued that the word ‘imports a
the context of s 118(1)(f) of the Developer Connection (ADC) positive act’ and the defendant’s acts
Ordinance. program for disseminating on BT the were purely passive. The defence
then pre-release version of Mac OS invited the Magistrate to confine to
Unique Features of version 10.4 ‘Tiger’. The similarity the time of the downloading,
the Big Crook Case arises not only because those submitting that:
The general description that the Big defendants are also individuals, but
Crook Case is ‘the first of its type’ also that the United States Attorney’s …the acts were those of the
requires closer examination. While Office has launched criminal downloaders, not the defendant,
this is indeed the first criminal investigation. In so far as the civil whose role at that stage was
prosecution in Hong Kong under sub- case is concerned, Apple has released entirely passive. What was done
s (1)(f) of s 118 of the Ordinance, the a statement confirming its settlement was not a distribution by the
appeal judgment is in fact just with all the defendants. However, the defendant. He did no more than
another addition to the library of statement provides no information leave his computer in a state
cases around the world involving the on the current status of the criminal whereby others, if they chose to
use of file-sharing technology. This investigation. do so, could access it and take
should be readily understandable, as material from it.
the use of file-sharing technology Meaning of ‘Distribute’ –
began to gain popularity long before Decision at Magistracy Level Although the Magistrate found
the release of BT (Bit Torrent) in Section 118(1)(f) of the Ordinance this argument unsustainable, he did
2001. is in the following terms: not go to the extreme of holding that
Many readers will be familiar with distribution can be a passive act. He
the United States case of A&M A person commits an offence looked beyond the time of the
Records, Inc v Napster, Inc, in which if he, without the licence of the downloading and found as a fact that
the plaintiff was granted a copyright owner…distributes the defendant had acted positively to
preliminary injunction against (otherwise than for the purpose distribute the infringing copies of the
Napster, a peer-to-peer music sharing of, in the course of, or in copyright films:
software provider. In the more recent connection with, any trade or
United States case of Metro- business) to such an extent as The defendant loaded the files
Goldwyn-Mayer Studios Inc et al v to affect prejudicially the into his computer, he created

44 Hong Kong Lawyer = ! 01 • 2007


 !"# Intellectual Property Practice
the .torrent files, he created the distribution of copies in the copyright relevant legislation.
images of the inlay cards and sense. Counsel for Chan emphasized In that case, the Court of Appeals
imprinted them with his logo, that: found in favour of the plaintiffs.
the statuette; he published the Senior Circuit Judge Butzner said:
existence of the .torrent files, …during downloading, the
and the name of the films in copies of the films in the When a public library adds a
question, on the newsgroup, so Appellant’s computer stayed on work to its collection, lists the
that others would know where the computer’s hard disk and work in its index or catalogue
to go to download. He said, in memory but this hardware, a system, and makes the work
effect, “Come here to get this tangible object, was never available to the borrowing or
film if you want it.” He activated transferred to the downloaders. browsing public, it has
the .torrent file, so as to enable completed all the steps
others to download. He kept his Counsel for Chan also relied on s 26 necessary for distribution to the
computer connected and the of the Ordinance, which refers public. At that point, members
BitTorrent software active to specifically to ‘making available of of the public can use the work.
allow the downloading to take copies of works through the service
place. The downloading commonly known as the INTERNET’, Hon Beeson J agreed that in
involved the dissemination of submitting that s 26 recognizes an interpreting s 118(1)(f) of the
the data comprising the ‘Internet right’. It was argued that the Ordinance the ordinary meaning of
infringing copies. His acts were adoption of the Internet right in s 26, ‘distribution’ should be adopted.
an essential part of the in addition to the distribution right Against the argument that
downloading process and were in s 24, showed that it was not the distribution must involve a tangible
continuing throughout the intention of the legislature of Hong object, the learnt judge referred to
downloading, even if he had not Kong that making a work available on s 23(2) of the Ordinance which
been sitting at the computer at the Internet should amount to provides that:
all times. These acts were an distributing copies of that work.
integral part of the enterprise of In response, Counsel for the Copying of a work means
downloading the infringing Respondent (HKSAR) invited the reproducing the work in any
copies to other computers. This Court to give s 118(1)(f) of the material form. This includes
amounted to distribution...This Ordinance ‘a fair, large and liberal storing the work in any medium
was not merely “making construction and interpretation’ in by electronic means.
available” the BitTorrent files. accordance with s 19 of the
These were positive acts by the Interpretation and General Clauses The learnt judge also accepted
defendant, leading to the Ordinance (Cap 1). Counsel also that there are various sections of the
distribution of the data. referred to two decisions where the Ordinance showing that storage by
meaning of distribution was electronic means of digital copies was
Meaning of ‘Distribute’ – considered. In particular, counsel an integral element of the Ordinance
Decision on Appeal relied on a case heard in the United (ss 23(2), 198 and 23(6)) and that the
On appeal, it was argued on behalf of States Court of Appeals – Donna R legislature intended to safeguard
Chan that since the ordinary Hotaling & Others v Church of Jesus copyrighted works that existed in
meaning of ‘distribute’ is ‘to hand or Christ of Latter-Day Saints. This case digital form (ss 2(1)(a), 4(a), 17(6),
share out to a number of recipients’, relates to making available copyright 23(2) and (6), 26(1) and (2), 29(1)
distribution must require a physical materials for borrowing or browsing and (4), 32(2) and s 198).
transfer of a tangible object, such as in a public library. The question is W h e n d e a l i n g w i t h C h a n ’s
paper, magnetic tape or CD, from the whether such an act constituted contention about s 24 of the
distributor to the recipient. It was infringement of the Plaintiffs’ Ordinance (that if s 24 covered
further submitted that if there is no exclusive right to distribute copies of copyright works not in tangible form
physical transfer, there cannot be the materials to the public under the there was no need to enact s 26), the

==01 • 2007  ! Hong Kong Lawyer 45


Intellectual Property Practice  !"#

learnt judge was prepared to make must involve successful receipt of the (in which it was decided that
use of ‘extraneous materials’ to assist data in question. This point was not immediate custodial sentence should
in statutory interpretation, applying argued on appeal. In any event, it be imposed for offenders under s 118
the rule in Pepper v Hart (1993) AC may be useful to note that there are (1)(d) of the Ordinance), and the
593 as applied in HKSAR v Yau Mee authorities tending to show that often cited judgment of Leonard J in
Kwan (2004) 1 HKC 525. The learnt successful receipt of data is not a R v Ng Wai Ching (HCMA 1309/96):
judge took the view that s 26 of the necessary element of distribution.
Ordinance was enacted to give The case of Donna R Hotaling v There is international pressure
additional protection to copyright Church of Jesus Christ of Latter-Day upon Hong Kong to stamp out
owners and this intention of the Saints has already been discussed traffic in pirated goods. Failure
legislature was shown by the speech above. The case of Playboy to attack the illegal
of the Secretary for Trade and Enterprises, Inc v Chuckleberry activity…would be perceived as
Industry when introducing the Publishing, Inc is another United a default on the part of the
enactment of s 26: States case along the same line. In government on its international
that case, the conduct under obligations.
In devising our own copyright complaint was the placing of
regime, we also have to ensure infringing images on an internet Chan may lodge a further and final
that the copyright law we put server located in Italy. It was held appeal to the Court of Final Appeal.
in place can cater for that the conduct amounted to So will the ‘Big Crook Case’ extend
technological advances and suit distribution of the images within the to part three? The answer depends
local circumstances…we United States, since the defendant of course on a number of factors.
propose to protect the interests ‘caused and contributed to their Legally speaking, Chan must first
of copyright owners in the distribution’. obtain leave under s 32 of the Hong
digital environment…We have Kong Court of Final Appeal
accordingly included in the Closing Remarks Ordinance (Cap 484), on the ground
Copyright Bill provisions to The fact that Chan is now serving that ‘a point of law of great and
reflect this consensus, which custodial sentence may have general importance is involved’ or
embodies the guiding principle attracted some sympathy. In giving that ‘substantial and grave injustice
that the rights of copyright his reasons for sentence, the has been done’. In so far as the first
owners must be suitably Magistrate has the following to say limb of the requirement is concerned,
balanced against the reasonable about Chan: given the nature of this case and the
expectations of all users of the arguments presented on appeal, it
Internet and Hong Kong’s Despite the handle which he seems likely that any application for
Internet service providers. rather flippantly adopted, he is leave by Chan would be readily
not a bad man, he is not a big granted.
An Undecided Point – Does crook. He is an ordinary family
Distribution Involve Successful man with the usual family
Receipt of Data? responsibilities who has used
Before leaving the discussion about his undoubted knowledge of the Wing L Cheung
the meaning of distribution, it may Internet, and the time he had Kirkpatrick & Lockhart Preston
be worth pointing out that when the available when he was Gates Ellis
Magistrate came to his decision he unemployed, for illicit purposes. wingl.cheung@klgates.com
seemed to have placed weight on the
fact that the film files uploaded by However, the criminality and
Chan were successfully downloaded seriousness of this case has to be Formerly, Senior Government
by three downloaders, including a appreciated in light of the Court of Counsel, Prosecutions and Law
Customs officer. It is not clear if it is Appeal case of Secretary for Justice Drafting Divisions, Department of
the Magistrate’s view that distribution v Choi Sai Lok [1999] 4 HKC 334 Justice

46 Hong Kong Lawyer = ! 01 • 2007


 !"# Intellectual Property Practice

 !"#
 !"#$%&'()*+",-./012345/6789
 !"#$%&'()*+,-./-01#23456780
  !"#= ! !"#$%&'() *+,


  !"#$%&'()*+  !"#$%&'&()*+,
2005  10  24  !"#$%  !" !"#$%&'(  !"#$% Grokster 
 !"#$%& (HKSAR v Chan  !"#$#%&'()*+,  !"#$%&'()*+
Nai Ming, TMCC 1268/2005)  !"#$%&'()*+),  !"#$%&'()*+,
  !"#$ !"  !"#$%&'()*+,-  !"#$%&'()#*+,
2006  12  12  !"#$%  !"#$%&'()*+,-  !"#$%&'()*+,-
 31  !"#$%&'()  !"#$%&'()*+,-  !"#$ (seeder) !"
 !"#$%&'() (HCMA  118(1)(f)  !" !  !"#$%&'()*+,-
1221/2005)  
 !"#$%&'()*+,  Tiger Leak (Apple
 Colin Mackintosh  !"#$  !"#$ !" Computer, Inc v Doug Steigerwald,
 !"#$%&'(#)*+,  ! !"#$ et al)  !"#$%&'()*
 !"#$ %&'()*+,  !"#$ !"#$%&  !"#$%&'() A p p l e
 !"#$%&'()(*+  !"#$%&'()*+,- Computer, Inc  Apple Developer
 !"#$%&'()*+,-  ! 118(1)(f)  !"#$% Connection (ADC)  !"#$%
 !"#$% &'"()*  !"#$%&'( )*+,  !"#$%&'()*+,
 !"#$%!&%'()*+  !"#$"%&'()*+  !"# Mac OS  10.4
 !"#
 528 
 !  !"#$%&'()*+&, Tiger !"#$%&'()
  118(1)(f)  119(1)   !"#$%&'()*+,-  !"# $%&'()*+,
 !"#$% 200   !"##$%&'( )*  !"#$%&'()*+,-
159G  !"#$%&'()* (Bit Torrent)  2001  !"#$  !"#$% Apple  !"
 !"#$  !"#$%&'()*+,  !"#$%&'()*+,-
 !"#$%&'()*+,  !"A&M Records, Inc v  !"#$%&'()*+,-
 !"#$%&'()*+,( Napster, Inc  !"#$%&'  !"#$%&'()*+
 !"#$%&'()*+,-  !"# $%#%&'()*
 !"#$%&'()*+,-  Napster  !"#$%&'  ! !
 !" !"#$  !"#$ Metro-Goldwyn-  !"#$%\
 !"#$%&' !" Mayer Studios Inc et al v Grokster,  ! 118(1)(f)  !"#
 !"#$%&'()*+ Ltd et al  !"#$%&$'( 

==01 • 2007  ! Hong Kong Lawyer 47


Intellectual Property Practice  !"#

 !"#$$%&'($  !"#$ %&'()*+,  !"#$%&'()*


 !"#$%&'()$  !"#$%&  !"#$%&'()*+
 !"#$%&'()*+  !"#$%&'(#%&
=  !"#$%&'  !"#$%&'()*  !"#$%&'()*
 !"#$%&'()*  !"#=.torrent=  !"#
 !"#$%&'()*+  !"#$%&'()*+
 !"#$%&'()*+  !"#$%&'()!  !"#$%&'( 26 
 !"#$%&'()*+  !"#$%&'()*  !"#$%&'= !"#
 !" #$% .torrent= !"#$%&  !"#$%&$%'()*+
 !"#$%&'()*+  !"
 !"#$ 26 
 !"# ! !"#$  !"#$%&'()*+  !"#$ !"#$ 24
 !"# !"#$  
= !"#$%&'(  !"#$%&'() 26 
distribute= =hand or share  !" !.torrent  !"#$%&'()*+,
out to a number of recipients  !"#$%&'()*+  !"#$%&'()*+,-
 !"#$%&'()Words  !"#$%&'!"(  !"#$!%&'()*+,
and Phrases Legally Defined  !"#$%&'()*+  !"#$
 ! R v McNiven [1944] 1 WWR  !"#$%&'$%()  !" !"#$%&
127 at 128, per Doiron J  !  !" #$%&'()*  !"#$%&'()*+
distribute delivery of  !"#$%&'()*+  !"#$
 1  19 

something to several persons  !"#$%&'()*+  !"#$ 118(1)(f) 
 !"#$%  !"#$%&'()*+  !"#$%&'()$(*+
 !"#$%&'()*+,  !"#$%&'()*+  !"#$%&'()*+,-
 !"#$%&'()*+,-  !"#$%&'()*+  !"#$%&'()*+,-
 !"#$%&'%()*+  !"#$%&'()*  !"#$%Donna R Hotaling
 !"#$% !"#$%  !"#$%&'()*+ & Others v Church of Jesus Christ
 ! !"#$%&'(  !"#$%&& !' of Latter-Day Saints !"#$
 !"#$%&'()*+,- = ! !"#$%  !"#$%&'()$*+,
 !"#$%&'()  !"#$%&'()*+  !"#$%&'()*+,
 !"#$%&'(  !"#$%&'()*+,-
 !"#$%&'()*  !"#$%&'( )*+
 !"#$% !&'$  ! !  !"#$%&'()
 !"#$%&'()*+  !"#$%&\  !"#$%&'()*+,
 !"#$%&'()*+  !"#$%&'()*+!,  !"#$% Butzner 
 !"#$%&'() distribute !"#to
 !"#$%&'()*+ hand or share out to a number of  !"#$%&'()
 !"#$%&'()*+ recipients !"# $%&'  !"#$%& '()
  !"#$%&'()*+,-  !"#$%&'()
 !"#$%&'()$*  !"#$%&'()*
 !"#$%&'()*+,  !"#$%&'()*+,-  !"#$%&'()*
 !"#$%&'()*+,-  !"#$%&'()*+,  !"#$%&'()*
 !"#$%&'()*+,  !"#$%&'()"*+,  !"#$%&'()*
 !"#$%&'()*+,-   !"#$%

48 Hong Kong Lawyer = ! 01 • 2007


 !"# Intellectual Property Practice

 !"#$%&'()*+  !"#$%&'()*+  !"#$%&'()*


118(1)(f)  !"# !  !"#$%&'()* Secretary for Justice v Choi Sai Lok
 !"#$%&'()*+,-  !"#$%&'()* [1999] 4 HKC 334  !"#
 !"#$%&'()*+,  !"#$%& 118(1)(d) 
23(2)  !"#$  !"#$%&  !"#$%&'()*
 !"#$%\  !"# Leonard J  R v Ng
 !"#$% !&'()  !"#$%&'()*+, Wai Ching (HCMA 1309/96) 
 !"#$%&'()*+  !"#$%&'()*+,  !"#$%&'()*+,-
 !"#$%&'(  !"#$%&'()*+,  !"#$%&'()*+,-
 !"#$%&'()*+,  !"#$%&
 !"#$%&'()!*%  !"# !"#$%&'
 !"#$%&'()*+,-  !"#$%&'()*+,  !"#$%&'()*+
 !"#$%&'( = 23  !"#$%&'()*+,  !"#$%&'(&)
(2)  198  23(6)    !"#$%&'()*+,  !"#$%&'(()*
 !"#$%&'()*+,-  !"#$%&'()*+,  !"#$%&'()*+
 !"#$%&' 2(1)  !"#$%&'()*+,
(a) 4(a) 17(6) 23(2)   !"#$%&'()*+,  !"#$%&'()*+,
(6) 26(1)  (2) 29(1)   !"#$  !"#$ !"#
(4) 32(2)  198   Donna R Hotaling v Church of  !"#$%&'()*+,-
 !"#$%& 24  ! Jesus Christ of Latter-Day Saints=  !"#$%&'()*+,-

 !" 24  !"#$%  !"#$%&'()*  ! !"#$%&'
 !"#$%&'()*+,- Playboy Enterprises, Inc v 484= 32  !" !
26  !" !"# HKSAR Chuckleberry Publishing, Inc   !"#$%&$'()*+
v Yau Mee Kwan (2004) 1 HKC 525  !"#$%&'()*+,-  !"#$%&'()*+,
 !"# Pepper v Hart (1993)  !"#$%&'()*+,-  !"#$%&'()*+,-
AC 593  !"#$%&'()*  !"#$%&'()*+ ,  !"#$%&'()*+,-
 !"# !"#$%&'  !"#$% !"#$%  !"#$%&'()*+,-
 !"#$% 26  !"#$  !"# !"#$%&'  !"#$%&'!()*+
 !"#$%&'()*+,-  !"#$%&'( 
 !"#$%&'()*+!,
 !"#$%&' 26  !" 
 !"#$  !"#$%&'()*+,-
 !"#$%&'($)*+
 !"#$%&'()*+  !"#$%&'()*+  !"#$%
 !"#$%&'()*+  !
 !"#$%&'()*+  !"#$%&'()*+ 
 !"##$%&'()*  !"#$%&'!"( wingl.cheung@klgates.com
 !"#$%&'(  !"#$%&'()
 !"#$%& !  !"# $%&'()
 ! !"#$%&'  !"#$%&'()*+
 !"#$%&'()  !"#$%&'(&)*  !"#$%&'()*+",
 !"#$%&'()%*  !"#$%&'  !"#$%

==01 • 2007  ! Hong Kong Lawyer 49