Ipsofactoj.com: International Cases [2005] Part 9 Case 3 [CFA]


COURT OF FINAL APPEAL, HKSAR

Coram

Tse

- vs -

Hong Kong SAR

MR JUSTICE BOKHARY PJ

MR JUSTICE CHAN PJ

MR JUSTICE RIBEIRO PJ

MR JUSTICE MORTIMER NPJ

LORD SCOTT OF FOSCOTE NPJ

19 DECEMBER 2003


Judgment

Mr. Justice Bokhary PJ & Lord Scott of Roscoe NPJ

  1. Very many prosecutions have been held in abeyance pending our decision on the two points of law of great and general importance certified for the purposes of this criminal appeal. At the conclusion of the hearing [on 4 December 2003], the Court announced that, for reasons to be handed down in due course, both certified points were decided in favor of the respondent but that the appellant would nevertheless be immediately released. Her immediate release was ordered because it was clear that, by reason of a defect in the affirmation evidence in support of Charge 3, her conviction on that charge could not stand. And, having regard to the time which she had spent in custody before the Appeal Committee granted her bail, the quashing of her conviction on that charge would even of itself lead to her immediate release. Since then it has become clear that the affirmation evidence in support of the other charge on which she was convicted, namely Charge 2 is also defective so that her conviction on that charge, too, must be quashed. In the result, both certified points are decided in favor of the respondent but both of the appellant's convictions are quashed, both of her sentences are set aside, the order for costs made against her at first instance is also set aside and there will be an order nisi (to become absolute 21 days from today) leaving the parties to bear their own costs here and in the courts below. The Court's reasons for arriving at this result are given in this judgment.

    CERTIFIED POINTS OF LAW

  2. The first certified point is one of statutory construction. It has been certified in the form of the following question:

    In an affidavit produced under section 121 of the Copyright Ordinance, Cap. 528, is evidence of copyright ownership admissible from an agent appointed by the copyright owner to attest to that ownership where the fact of ownership is not within the agent's knowledge save from information provided to him by the copyright owner?

  3. The second certified point is a constitutional one which would arise if the point of statutory construction is decided against the appellant. This constitutional point has been certified in the form of the following question:

    If such evidence is admissible on the true construction of the Ordinance is such section constitutional?

    Save where otherwise indicated, all our references to sections, subsections and paragraphs will be to those of the Copyright Ordinance.

  4. A further point, which emerged in the course of the hearing before this Court, is whether the form of the affirmations relied on by the prosecution pursuant to s.121(1) was compliant with the requirements of that section.

    COURSE WHICH THE PROCEEDINGS TOOK BELOW

  5. Shortly stated, the course which the proceedings took in the courts below is as follows. The appellant stood trial before Deputy Judge Levees in the District Court on a Charge Sheet containing four charges. Charge 2 was alternative to Charges 1 and 4. On 29 November 2001 the appellant was convicted on two charges, namely Charges 2 and 3.

  6. Charge 2 was drawn thus:

    Statement of Offence

    Making for sale or hire infringing copies of copyright works without the license of the copyright owner, contrary to section 118(1)(a) and section 119(1) of the Copyright Ordinance, Cap. 528.

    Particulars of Offence

    Tse Minchin, on or about the 12th day of May 2000, at Starry Technology Limited, Unit C-D, 3/F, Mai Wahl Industrial Building, 1-7 Wahl Shang Street, Kwan Chung, New Territories, in Hong Kong, without the license of the copyright owner, made for sale or hire (I) 28,003 video compact discs; (ii) 12,515 video compact discs and (iii) 5,532 CD-ROMs being infringing copies of copyright works, namely (I) films; (ii) films and (iii) literary works.

    And Charge 3 was drawn thus:

    Statement of Offence

    Possession of an article specially designed or adapted for making copies of a particular copyright work which article is used or intended to be used to make infringing copies of copyright works for sale or hire or for the purpose of trade or business, contrary to section 118(4)(d) section 119(2) of the Copyright Ordinance, Cap. 528.

    Particulars of Offence

    Tse Minchin, on the 12th day of May 2000, at Starry Technology Limited, Unit C-D, 3/F, Mai Wahl Industrial Building, 1-7 Wahl Shang Street, Kwan Chung, New Territories, in Hong Kong, had in her possession articles, namely 2 stumpers, specifically designed or adapted for making copies of a particular copyright work, namely films, which articles are used or intended to be used to make infringing copies of copyright works for sale or hire or for the purpose of trade or business.

  7. These are serious offences. That is indicated by the fact that the appellant was sentenced to a total of 28 months' imprisonment (by way of concurrent terms of 24 and 28 months' imprisonment on Charges 2 and 3 respectively). And she was ordered to pay to the prosecution costs in the sum of $4,474 which it had incurred in bringing a prosecution witness from Taiwan to Hong Kong.

  8. On 7 November 2002 the Court of Appeal (presided over by Stuart-Moore VP sitting with Stock JA and Gall J) affirmed the appellant's convictions. She then came to this Court to challenge her convictions on the basis of the first certified point or, failing it, the second one. There is not - and has never been - any discrete complaint by her as to sentence or costs. Everything depends on conviction.

    BACKGROUND TO THE ISSUE OF ADMISSIBILITY

  9. Turning now to the background to the issue of admissibility underlying the first certified point, this issue arose in the following way. The appellant was a licensed optical disc manufacturer. She was the company secretary and a director of and a shareholder in the company mentioned in both of the charges on which she was convicted, namely Starry Technology Ltd. This company manufactured optical discs at its factory premises mentioned in those two charges ("the Premises").

  10. On the day mentioned in those two charges, namely 12 May 2000, a quantity of cartons containing optical discs were delivered from the Premises to the public cargo loading area in Yamani where, on the same day, those cartons were seized by customs officers. Found inside those cartons were 155,000 optical discs. These included the first batch of video compact discs ("Vices") mentioned in Charge 1, namely the one comprising 28,003 Vices.

  11. Later that day customs officers raided the Premises where they seized another batch of Vices and a batch of CD-ROMs. The Vices seized at the Premises during this raid comprise the second batch of Vices mentioned in Charge 2, namely the one comprising 12,515 Vices. And the CD-ROMs seized at the Premises during this raid comprise the 5,532 CD-ROMs mentioned in Charge 2. Also seized in the course of this raid were four stumpers including the two stumpers mentioned in Charge 3.

  12. The Vices mentioned in Charge 2 were of seven cartoon films: Aladdin and the King of Thieves; Beauty and The Beast; Milan; One Hundred and One Dalmatians; The Lion King; The Lion King II, Simba's Pride and The Little Mermaid. We will refer to these films as "the Seven Films". The CD-ROMs mentioned in Charge 2 contained a sound recording of the song My Heart Will Go On sung by Ms Celine Dion. We will refer to this sound recording as "the Song". As for the two stumpers mentioned in Charge 3, they were for sides A and B respectively of the disc for one of the Seven Films, namely Aladdin and the King of Thieves.

  13. The issue which has led to the appeal to this Court is as to the nature of the evidence to be adduced in order to prove the existence of subsisting copyright in the works in question and in order to prove that the allegedly infringing copies were made without the consent of the copyright owners. Section 118 provides, so far as relevant for present purposes, as follows:

    (1)

    A person commits an offence if he, without the license of the copyright owner -

    (a)

    makes for sale or hire ....

    an infringing copy of a copyright work.

    (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.

    (4)

    A person commits an offence if he -

    ....

    (d)

    possesses ....

    an article specifically designed or adapted for making copies of a particular copyright work which article is used or intended to be used to make infringing copies of the copyright work for sale or hire ....

    (5)

    It is a defence for the person charged with an offence under subsection (4) to prove that he did not know and had no reason to believe that the article was used or was intended to be used to make the infringing copies for sale or hire ....

  14. In order to establish that a s.118(1)(a) offence has been committed, the prosecution needs to prove:

    1. that there was subsisting copyright in the work in question;

    2. that the defendant had made a copy of the work in question;

    3. that the defendant had done so in order to sell or hire the copy he had made; and

    4. that the defendant had done so without the consent of the copyright owner.

    As to a s.118(4)(d) offence, the prosecution has to prove:

    1. that the defendant was in possession of stumpers;

    2. that the stumpers were specifically designed or adapted for making copies of a particular copyright work;

    3. that the stumpers had been used, or were intended to be used, for making copies of the work in question for sale or hire;

    4. that there was subsisting copyright in the work in question; and

    5. that the copyright owner had not consented to the making of the copies otherwise the copies would not have been "infringing copies": [See sections 22(1) and (2) and sections 35(1) and (2)]

    And in order to prove that the copyright owner had not consented to the making of the copies, the prosecution needs to identify the copyright owner.

  15. In the present case the prosecution took it upon itself to prove that the copyright owners of the works in question had not consented to the appellant making copies of the works i.e. she had not been granted a license. The Court of Appeal, no doubt with s.94A of the Criminal Procedure Ordinance, Cap. 221 in mind, and perhaps with Lord Woolf's comments in Attorney-General v Lee Kwong-kut [1993] AC 951 at p.969E also in mind, expressly left open the question whether the burden was on the prosecution to prove the absence of a license when prosecuting charges under s.118. We have no doubt that the prosecution was correct in shouldering that burden. The absence of a license by the copyright owner is an express, and therefore essential, ingredient in a s.118(1) offence. The making of "infringing copies" is an express and essential ingredient in both s.118(1) and s.118(4) offences. An "infringing" copy is a copy made without the consent of the copyright owner. The absence of the requisite consent is not an "exception or exemption from or qualification to the operation of the law creating the offence" (see s.94A(1) of the Criminal Procedure Ordinance). It is an ingredient of the offence itself. It must therefore be established by the prosecution.

  16. No particular practical problem need arise in relation to proof by the prosecution of what the defendant has actually done and of his intention in doing it, e.g. the making of the copies for sale or hire, the possession of stumpers of the requisite character etc. In relation to these acts, the essentially inculpatory acts of the defendant, the prosecution evidence might or might not be good enough for proof at a criminal trial in any given case. If the offence charged had indeed been committed, there would be no obvious problem in collecting the requisite evidence and adducing it at trial. But not so in relation to proof of the subsistence of copyright and in relation to proof of the identity of the copyright owner. Proof of these matters, particularly where the work in question had been made some years previously and where the copyright had been the subject over the years of various assignments and licensing agreements, would often present serious practical difficulties. A chain of assignments and exclusive licensing agreements might need to be taken into account. The relevant documents would often be located abroad. Some might not be easily accessible or, indeed, might no longer be in existence. The individuals with personal knowledge of the relevant events and documents would be likely to be resident abroad. Insistence on strict proof in the manner usually required in criminal cases might so hobble those responsible for trying to police copyright piracy as to enable wide scale piracy to flourish. And wide scale copyright piracy is a known scourge on an international scale. Hence the provisions of s.121 - and also the provisions of sections 115 to 117 which apply only to civil proceedings.

  17. In order to understand the significance of the provisions of s.121 it is helpful to keep in mind some of the other provisions of the Copyright Ordinance. Section 2(1)(b) says that copyright is a property right which subsists in (among other things) sound recordings and films. Under s.19(2) copyright in a film expires

    .... at the end of the period of 50 years from the end of the calendar year in which the death occurs of the last to die of the following persons -

    (a)

    the principal director;

    (b)

    the author of the screenplay;

    (c)

    the author of the dialogue; or

    (d)

    the composer of music specially created for and used in the film ....

    If the identity of any of these persons is not known, the s.19(2) reference to the death of the last of them to die is taken to be a reference to the death of the last whose identity is known (s.19(3)). And if the identity of none of them is known, copyright expires at the end of the period of 50 years from the year in which the film was made or was first made available to the public (sections 19(4) and (7)). As to sound recordings, copyright expires at the end of 50 years from the year in which it was made or the year in which it was first released (see s.18).

  18. It follows from these provisions (sections 18 and 19) that during the period of 50 years from the time a film or sound recording was made, copyright subsists. Once that period has expired, copyright may still subsist, either because 50 years from the first release of the work has not yet expired, or, in the case of films, because 50 years from the death of the last to die of the s.19(2) individuals has not yet expired. But during the 50 year period from the making of the work there can be no question but that there is subsisting copyright. In relation to films, if that 50 year period has expired, the details referred to in section 19(2)(a), (b) and (d) will need to be known if subsistence of copyright is to be established.

  19. As to ownership of copyright, the "author" of the work is, prima facie, the first owner of the copyright (s.13). But if the "author" has made the work as an employee in the course of his employment, the employer is the first owner of the copyright (s.14). Note that the employee remains the "author" but the employer owns the copyright.

  20. The "author" in relation to a sound recording is "the producer" and in relation to a film is "the producer and the principal director" (see sections 11(1) and (2)(a) and (b)). There is no statutory definition of "director" or "principal director" but "producer" is defined, in relation to a sound recording or a film, as [see s.198(1)]:

    .... the person by whom the arrangements necessary for the making of the sound recording or film are undertaken.

    In order to establish that a copy of a work is an "infringing" copy, it is necessary to establish that it was made without the consent of the owner of the copyright (see sections 22 and 35). Establishing the identity of the copyright owner is, plainly, a necessary first step towards establishing that the consent of the copyright owner to the making of the copy has not been given.

    SECTION 121

  21. Section 121 provides, so far as relevant for present purposes, that:

    (1)

    An affidavit which purports to have been made by or on behalf of the owner of a copyright work and which states -

    (a)

    the date and place that the work was made or first published;

    (b)

    the name, domicile, residence or right of abode of the author of the work;

    (c)

    the name of the owner of the work;

    (d)

    that copyright subsists in the work; and

    (e)

    that a copy of the work exhibited to the affidavit is a true copy of the work,

    shall, subject to the conditions contained in subsection (4), be admitted without further proof in any proceedings under this Ordinance.

    ....

    (3)

     

    The court before whom an affidavit which complies with the conditions in subsection (4) is produced under subsection (1) .... shall presume, in the absence of evidence to the contrary -

    (a)

    that the statements made in the affidavit are true; and

    (b)

    that it was made and authenticated in accordance with subsection (4).

    (4)

    An affidavit may be tendered in evidence under subsection (1) .... if -

    (a)

    it is made on oath -

    ....

    (b)

    it is authenticated, so far as relates to the making thereof, by the signature of the solicitor, commissioner or notary public before whom it is made;

    (c)

    it contains a declaration by the deponent to the effect that it is true to the best of his knowledge and belief; and

    (d)

    subject to subsection (6), not less than 10 days before the commencement of the hearing at which the affidavit is tendered in evidence, a copy of the affidavit is served, by or on behalf of the prosecution or plaintiff, on each of the defendants.

    (5)

    Notwithstanding that an affidavit is admissible as evidence by virtue of this section, a defendant or his solicitor may, within 3 days from the service of the copy of the affidavit, serve a notice requiring the attendance of the deponent to the affidavit in court.

    (6)

    The parties may agree before the hearing that the requirements of subsection (4)(d) may be dispensed with.

    ....

    (8)

     

    Without prejudice to subsection (5) -

    (a)

    the party by whom or on whose behalf the affidavit was served may call the deponent to give evidence; and

    (b)

    the court may of its own motion or, if the defendant who has served a notice under subsection (5) satisfies the court that the subsistence or ownership of the copyright is genuinely in issue, either before or during the hearing, require the deponent to attend before the court and give evidence.

    (9)

    Without prejudice to subsection (8)(a), a deponent of an affidavit which is admissible under this section shall attend before the court and give evidence if, and only if, the court so requires under subsection (8)(b).

    ....

    (13)

     

    Without prejudice to the powers of the court to award costs, the court may award costs against a defendant who -

    (a)

    was served with an affidavit described in subsection (1) ...;

    (b)

    by himself or through his solicitor served a notice under subsection (5); and

    (c)

    was subsequently convicted of the relevant offence or found liable for the infringement, as the case may be.

  22. A few preliminary comments about s.121 may be helpful:

    (1)

    The special means of proof of copyright subsistence and ownership allowed by s.121 can be used both in civil and in criminal proceedings (see e.g. the reference in subsection (4)(d) to "the prosecution or plaintiff" and in subsection 13(c) to ".... convicted of the relevant offence or found liable for the infringement, as the case may be."

    (2)

    The language of subsection (1), specifying what the affidavit must state if it is to be admissible under the subsection, caters for all copyright works of all types and not simply films and sound recordings which is all that the present case is concerned with.

    (3)

    The statements as to the identity of the copyright owner (para. (c)) and that copyright subsists (para. (d)) that are to be presumed true in the absence of evidence to the contrary (subsection (3)) are all that a prosecutor/plaintiff will need. But the details that paragraphs (a) and (b) require to be stated may assist the defendant, and also the court, in forming a view as to the weight to be attributed to the paragraphs (c) and (d) statements. If, for example, it appeared from the paragraph (a) details that the work had been made over 50 years ago, the present subsistence of copyright would, in the absence of some knowledge about the longevity of the author, be in doubt. The details in paragraph (b) would enable those doubts to be followed up.

  23. Two affirmations were tendered in evidence under s.121 by the prosecution at the trial. One was made by a Mr. Lam Man Kit, and was produced with a view to proving that the copyright in each of the Seven Films subsisted and was owned by Disney Enterprises Inc. ("Disney"). The other was made by a Miss Tsang Pak Lin, and was produced with a view to proving that the copyright in the Song subsisted and was owned by Sony Music Entertainment (Canada) Inc. ("Sony"). These affirmations are to be treated as affidavits for the purposes of s.121. This is because s.7(1) of the Oaths and Declarations Ordinance, Cap. 11, provides that "[a] person, upon objecting to being sworn, shall be permitted to make his affirmation instead of taking an oath for any purpose for which an oath is required by law".

  24. Neither of those affirmations were made by a Disney or Sony employee. Mr. Lam was an employee of a Hong Kong company, Hong Kong Film and Video Security Ltd ("FVSL"). Affirming on behalf of FVSL and Disney, Mr. Lam named Disney as the owner of subsisting copyright in each of the Seven Films. Miss Tsang was an employee of a Hong Kong company, International Recording Copyright Ltd ("IRCL"). Affirming on behalf of IRCL and Sony, Miss Tsang named Sony as the owner of subsisting copyright in the Song.

  25. In addition to making those affirmations, Mr. Lam and Miss Tsang gave oral evidence as prosecution witnesses at the trial. This was not due to any order or direction of the trial judge. The prosecution called Mr. Lam because it wanted his evidence on some other matter as well as on the matter of copyright subsistence and ownership. And it called Miss Tsang at the defence's request. In the witness-box Mr. Lam and Miss Tsang acknowledged that they had no personal knowledge as to any copyright subsistence or ownership of any of the copyright works. Mr. Lam said that he relied on information which Disney had provided to his employer FVSL. Miss Tsang said that she relied on her employer IRCL's computer database compiled from information provided by Sony.

  26. Apart from Mr. Lam and Miss Tsang, no one gave or purported to give any evidence of copyright subsistence or ownership whether on affidavit, on affirmation or orally.

    FIRST CERTIFIED POINT: STATUTORY CONSTRUCTION

  27. The appellant contends that, on its true construction, s.121 does not permit an affidavit or affirmation admissible under the section to contain hearsay statements. The contents of the affidavit or affirmation stating the matters required by subsection (4) to be stated must, it is contended, be within the personal knowledge of the deponent. This is a contention that it is difficult to accept. First, the details required to be stated by paragraph (b) are bound to be, and those required to be stated by paragraph (a) are highly likely to be, outside the personal knowledge of the deponent. How could anyone other than the author himself have personal knowledge of the author's domicile, residence or right of abode? And unless, in the case of a film, the deponent had attended its world première, how could he have personal knowledge of the date it was "first published"? (See s.121(1)(a)).

  28. Mr. Gerard McCoy SC for the respondent pointed out that s.121 can also be used by a defendant. He is correct but that may not have been at the forefront of the legislature's thinking: subsection (5) makes provision for the defendant to serve a notice seeking the deponent's attendance in court, but makes no provision for the prosecutor or the plaintiff to serve such a notice. That said, it is to be remembered that the trial court may of its own motion require the deponent to attend. And it is of course open to a prosecutor or plaintiff to invite the trial court to exercise this power and to assist it by argument on the question of whether or not to do so. But in criminal cases it will normally be the prosecutor who makes use of s.121, as in the present case. Indeed the main theme of Mr. McCoy's case is that s.121 is a very important tool in the prosecution of copyright offences, which it certainly is.

  29. It must be recognised at once that s.121 does not say in so many words that hearsay evidence is admissible. Indeed Mr. Andrew Bullett for the appellant submitted that there were indications to the contrary. He pointed to the requirement in subsection (4)(c) that the affidavit or affirmation contain "a declaration by the deponent to the effect that it is true to the best of his knowledge and belief". This requirement, Mr. Bullett submitted, envisages deponents with first hand knowledge of the matters to which they depose. Mr. Bullett also pointed to the trial court's power under subsection (8) to require the deponent to attend before the court and give evidence. This power, Mr. Bullett submitted, envisages deponents who are able to give evidence on copyright ownership based on first hand knowledge. Otherwise, he said, requiring them to attend court and give evidence would be pointless.

  30. The language of subsection 4(c) does not assist the appellant. We think that it is against her. The addition of the words "and belief" to the word "knowledge" contemplates, we think, knowledge acquired through information rather than at first hand. As for the court's power under subsection (8), it is neutral on the hearsay issue. A reason for calling the deponent could often be to ascertain whether he has first hand knowledge or, if not, what the source is of his information and what weight should be given to his evidence.

  31. The question of construction must be answered by looking at s.121 realistically, as a whole and in context. This context includes recognising how cumbersome prosecutions and claims would generally be if evidence of the matters mentioned in items (a) to (e) of s.121(1) could not be given on the basis of information. And it also includes the fact that it is by no means unknown or even uncommon for hearsay evidence to be made admissible by statute (as, for example, by various provisions in Part III of the Evidence Ordinance, Cap. 8).

  32. The scheme of s.121 is obviously predicated on the premise that in most cases copyright subsistence and ownership, even if not actually admitted, would not be genuinely in issue. Experience has shown that this premise is rooted in reality. Of course there can be cases in which copyright subsistence or ownership is genuinely in issue. Thus a court before which a s.121 affidavit or affirmation is placed may require the deponent to attend before it and give evidence. It may exercise this power either of its own motion or because the defendant satisfies it that copyright subsistence or ownership is genuinely in issue. Naturally the trial court will be vigilant to ensure that justice is not defeated, or even delayed, through spurious contentions about copyright subsistence or ownership. Such contentions should receive short shrift. But in cases, which we think are likely to be rare, where the trial court is satisfied that copyright subsistence or ownership is genuinely in issue, it will of course address that issue. And the power to require a s.121 deponent to attend and give evidence will then come importantly into play.

  33. Evidence given by a s.121 deponent in the witness-box may show that there is a genuine issue as to copyright subsistence or ownership. Or it may be sufficient to resolve such an issue in favor of the party who had tendered the s.121 affidavit or affirmation. Or it may fail to do that. It may even be that once the trial court is satisfied that copyright subsistence or ownership is genuinely in issue, the party who had tendered the s.121 affidavit or affirmation will not simply rely on what the s.121 deponent can say but will lead other evidence. There is a range of fact sensitive possibilities, and it must always be borne in mind that the weight to be attributed to admissible hearsay evidence will always depend upon the circumstances and nature of the sources from which the witness or deponent obtained the information in question. The more remote a s.121 deponent appears to be from the person or persons likely to have personal knowledge of the relevant facts, the less will be the weight of the hearsay evidence.

  34. For these reasons, we conclude that a s.121 affidavit or affirmation may contain hearsay evidence. We answer the first certified question in the affirmative.

    SECOND CERTIFIED POINT: UNCONSTITUTIONALITY

  35. Mr. Bullett submitted that s.121 would be unconstitutional if it permits hearsay evidence. For this submission he relied on arts 39 and 87 of our constitution the Basic Law. Article 87 entrenches the right to a fair trial and the presumption of innocence. Article 39 provides (among other things) that the provisions of the International Covenant on Civil and Political Rights as applied to Hong Kong shall remain in force.

  36. It is well established that the Bill of Rights (contained in the Hong Kong Bill of Rights Ordinance, Cap. 383) is the embodiment of that Covenant's application to Hong Kong, so that art. 39 entrenches the Bill of Rights. This Court so said in the flag desecration case of HKSAR v Ng Kung Siu (1999) 2 HKCFAR 442 at pp 455 B-E and 463 J and repeated in the misconduct in public office case of Shum Kwok Sher v KHSAR (2002) 5 HKCFAR 381 at p.400 H. The articles of the Bill of Rights on which Mr. Bullett placed reliance are arts 10, 11(1) and 11(2)(e). He relied on art. 10 for the guarantee that "[i]n the determination of any criminal charge against him .... everyone shall be entitled to a fair .... hearing by a competent, independent and impartial tribunal". He relied on art. 11(1) for the presumption of innocence. And he relied on art. 11(2)(e) for the right that "[i]n the determination of any criminal charge against him, everyone shall be entitled .... to examine, or have examined, the witnesses against him".

  37. On this part of the appeal, we begin by dealing with the basis on which Mr. Bullett placed reliance on art. 11(1) of the Bill of Rights. His argument on art. 11(1) was that by making hearsay evidence admissible s.121 removes an essential element of the offence from the consideration of the trial court. We do not accept this argument. Making hearsay evidence admissible only affects the nature of the evidence that the trial court can take into consideration when deciding whether certain elements of the offence have been established.

  38. Mr. Bullet's argument on art. 11(2)(e) was that by making hearsay evidence admissible s.121 would deprive defendants of the right to cross-examine witnesses against them. We do not accept this argument either. Section 121 deponents can be required to attend the trial court and give evidence. When they do they are subject to cross-examination. And we think that it would stretch the meaning of the word "witnesses" in art. 11(2)(e) out of shape to read it as including persons from whom s.121 deponents receive information. The trial court will assess the reliability of such information in the course of assessing the weight of the hearsay evidence based on it.

  39. Mr. Bullett referred us to cases in which the European Court of Human Rights had held that there had been violations of the right to a fair hearing and the right to examine witnesses under arts 6(1) and (3)(d) of the European Convention on Human Rights. What had happened in those Strasbourg cases was as follows. In Unterpertinger v Austria (1986) 13 EHRR 175 the applicant had been convicted on statements to the police made by members of his family who had then exercised their legal right not to give evidence. In Kostovski v Netherlands (1989) 12 EHRR 434 the applicant had been convicted on the statements of two anonymous individuals who did not give evidence in court. In Saidi v France (1993) 17 EHRR 251 the applicant had been convicted on the statements of identification witnesses whom he had had no opportunity to cross-examine. And in Luca v Italy (2003) 36 EHRR 46 the applicant had been convicted on the out-of-court statement of a suspect who then exercised his right of silence to avoid giving evidence in court. The situations which led to these cases are not in the least comparable to procedures in copyright infringement cases where s.121 is relied on.

  40. This leaves the presumption of innocence and the right to a fair trial. As to the presumption of innocence, it is true that a reverse-onus provision is involved. But s.121 does no more than impose an evidential burden on defendants. A shifting of the evidential burden only may be safe from a constitutional challenge even where a shifting of the legal burden itself would be vulnerable to such a challenge (see R v Lambert [2002] 2 AC 545 where the House of Lords gave a reverse-onus provision a meaning compatible with the presumption of innocence by reading it down from a shifting of the legal burden itself to a shifting of the evidential burden only). Mr. Bullett rightly recognised this, but submitted that even a presumption that shifts the evidential burden only is liable to have its constitutionality questioned. As an example of this, he cited the decision of the Supreme Court of Canada in Downey v R (1992) 72 CCC (3d) 1. As it happens, the constitutional challenge in that case failed. It is true that it failed only by a majority of four to three; but it failed even though the evidential burden that was shifted extended to the entirety of the offence and was not confined merely to an element or certain elements of the offence. As for the presumption in s.121(3), which only shifts the evidential burden, we are satisfied that it is a reasonable and proportionate response to a real need and that it is consistent with the presumption of innocence under our constitutional arrangements.

  41. It is to be borne in mind that the evidential presumption under subsection (3) only persists "in the absence of evidence to the contrary". In our opinion, a liberal meaning should be given to the word "evidence". If a defendant is able to place any material before the trial court which casts doubt on the truth of the subsection (1) statements, the trial court is entitled, if the weight of the hearsay statements is relatively unimpressive, to treat the subsection (3) presumption as rebutted. But, in the present case, there was no reason for the trial judge to do so.

    • First, it was clear that copyright in each of the Seven Films and the Song was still subsisting. The relevant 50 year periods had not expired.

    • Secondly, no attempt was made by or on behalf of the appellant to suggest that anyone other than the companies named in the two affirmations as owners of the copyright in the works in question was, or even might be, the copyright owner. No attempt was made by the appellant to claim that she was entitled to make the copies under a license granted by someone other than the companies that had been named as copyright owners. No attempt was made by the appellant to assert a s.118(3) or s.118(5) defence. In our opinion, the course taken by the proceedings at trial was fully compliant with the appellant's right to a fair trial.

  42. It only remains on this part of the appeal to stand back, take a long hard look at s.121 and decide whether it operates in a way that runs counter to the concept of a fair trial. In our view, it does not. It does not put any unfair burden on defendants. It enhances the prospects of a correct result without imperilling the innocent. Section 121 is constitutional.

    THE FORM OF THE AFFIRMATIONS

  43. We now come to the point that emerged in the course of the hearing of this appeal. It is a technical point but, nonetheless, a point of substance. A s.121 affidavit or affirmation is not admissible in evidence unless it states the matters required to be stated by paragraphs (a) to (e) of subsection (1). Each of these paragraphs must be complied with. If any is not complied with, the affidavit or affirmation is not admissible. Mr. McCoy rightly accepted that this was so.

  44. Mr. Lam's affirmation had two schedules, schedule (a) and schedule (b). In paragraph 3 of his affirmation he addressed the subsection (1) requirements in respect of five of the Seven Films. He did so by reference to the contents of schedule (a). Paragraph 3 said that:

    The columns [of schedule (a)] contain the following information:

    (a)

    The titles of the .... films are set out in column 1;

    (b)

    The owners of the copyright in the said .... films and the country under whose laws the company was incorporated (or organised) are set out in column 2;

    (c)

    The exhibit markings on the true copies of the said .... films are set out in column 3;

    (d)

    The date and place of making of the said .... films are set out in column 4; and

    (e)

    The 'author' of the .... films and the place of incorporation (or organisation) of the authors are set out in column 5."

    Paragraph 4 of the affirmation said that copyright had subsisted in each of those five films since the date set out in column 1 against the name of that film. It said also that the owner of the copyright was the company whose name appeared in column 2.

    Schedule (a) was in the form set out below:

    Column 1

    Column 2

    Column 3

    Column 4

    Column 5

    1.

    Beauty and the Beast

    Disney Enterprises Inc., USA

    DS-1

    13 Nov 1991
    (FPD)
    USA

    Walt Disney Pictures & Television, USA

    2.

    One Hundred and One Dalmatians (Cartoon)

    Disney Enterprises Inc., USA

    DS-2

    29 Sept 1960
    USA

    Walt Disney Productions, USA

    3.

    Aladdin and the King of Thieves

    Disney Enterprises, Inc., USA

    DS-3

    30 Jun 1998
    USA

    Walt Disney Pictures & Television, USA

    4.

    Lion King

    The Disney Enterprises, Inc., USA

    DS-4

    23 May 1994
    USA

    Walt Disney Pictures & Television, USA

    5.

    Little Mermaid

    The Disney Enterprises, Inc., USA

    DS-5

    15 Nov 1989
    (FPD)
    USA

    Walt Disney Pictures & Television, USA

  45. It appears from Mr. Lam's affirmation that:

    (1)

    the requirements of paragraph (a) of s.121(1) are complied with by paragraph 3(d) and column 4 of the affirmation;

    (2)

    the requirements of paragraph (c) of s.121(1) are complied with by paragraph 3(b) and column 2, and by paragraph 4, of the affirmation;

    (3)

    the requirements of paragraph (d) of s.121(1) are complied with by paragraph 4 of the affirmation;

    (4)

    the requirements of paragraph (e) of s.121(1) are complied with by paragraph 3(c) and column 3 of the affirmation.

  46. That leaves only paragraph (b) of s.121(1). Paragraph (b) requires "the name, domicile, residence or right of abode of the author of the work" to be stated. Paragraph 3(e) and column 5 of the affirmation purport to comply with this requirement. But column 5 contains merely the name of a Walt Disney entity followed by "USA". Is this an adequate compliance? In our opinion, it is not.

  47. First, can the "author" of a film be a body corporate, as opposed to a flesh and blood individual? Mr. McCoy submitted that both the "producer" and the "principal director" (see s.11(2)(b)) could be a body corporate. He pointed to the s.198(1) definition of "producer" and said that a company could make the "arrangements" to which the definition refers. So, indeed, it could if the actions of its employees in making the arrangements were attributed to the employer company. Similarly, a company might, via its employees, be a "principal director". Mr. McCoy relied, also, on s.178(1) which says that:

    A work qualifies for copyright protection if the author was at the material time -

    (a)

    an individual domiciled or resident or having a right of abode in Hong Kong or elsewhere; or

    (b)

    a body incorporated under the law of any country, territory or area.

  48. We agree with Mr. McCoy that s.178(1) contemplates in terms that a company may be the "author" of a copyright work. But nonetheless s.178(1) is, we think, against him so far as the requirements of s.121(1)(b) are concerned. Section 178(1) draws a clear distinction between, on the one hand, a flesh and blood "author", with a domicile, a residence or a right of abode, and, on the other hand, a corporate "author" incorporated under the laws of some country or other. This distinction suggests to us that when s.121(1)(b) speaks of the "name, domicile, residence or right of abode of the author ...." it is speaking of a flesh and blood author and is not contemplating a corporate author. If that is right, it would follow that the s.121 means of proof of copyright subsistence and ownership was not available where the "author" was a company.

  49. But we are quite unable to understand what possible legislative purpose there could have been in restricting s.121 to cases where the author of the copyright was an individual, and barring its use where the author was a company. It is not, however, for reasons which we will explain, necessary for the point to be decided on this appeal and we prefer to leave the point for decision in a case where the decision has to be made. For present purposes we will, therefore, assume without deciding that it is possible for s.121(1)(b) to be liberally construed and applied to a case where the author of the copyright work is a company.

  50. That liberal construction clearly requires some adjustment to be made to the words ".... domicile, residence or right of abode ...." A company can, for various purposes, be regarded as resident in a country. For s.121(1)(b) purposes its "residence" should probably be taken to be the place where its principal place of business is to be found. "Domicile" and "right of abode", on the other hand, are concepts which make little sense when applied to corporate bodies (see Dicey and Morris on the Conflict of Laws, 13th ed.(2000), Vol. 2, pp 1101-1102, para 30-002). Their nearest equivalent would probably be the country under whose laws the corporate body in question had been incorporated. But even on the assumption that a liberal construction on these lines can be justified, Mr. Lam's affirmation is inadequate. All that he has said in paragraph 3(e) and column 5 of schedule (a) is that "USA" is "the place of incorporation (or organisation) ...." of the specified corporate author. It is, however, very well known that USA companies are not incorporated, or organised, under the laws of the USA. They are incorporated, or organised, under the laws of some particular State in the USA, e.g. New Jersey, Delaware etc. And while it is highly likely that the companies specified in column 5 of schedule (a) were resident somewhere or other in the USA, Mr. Lam's affirmation does not so state. It follows that, in so far as the copyright works specified in schedule (a) of Mr. Lam's affirmation are concerned, the requirements of subsection (1)(b) were not complied with and the affirmation should not have been admitted into evidence under s.121(1).

  51. Schedule (b) of Mr. Lam's affirmation specifies only two films, Milan and The Lion King II. In relation to these, the affirmation deals with the requirements of s. 121(1)(a), (c), (d) and (e) unexceptionally and in much the same manner as it dealt with those requirements in relation to the schedule (a) films. Here again the problem arises out of the s.121(1)(b) requirements. Paragraphs 7(e) and (f) of the affirmation refer to schedule (b) and say that

    (e)

    The name and place of domicile of the principal director of each of the said .... films are set out in column 5; and

    (f)

    The name and place of domicile of the producer of each of the said .... films are set out in column 6.

    Under column 5 and 6 are set out the names of individuals and, after each name, the letters "USA".

  52. But, just as a company cannot be described as incorporated under the laws of the USA, the USA cannot be an individual's place of domicile. In the eyes of our law, US individuals are domiciled in individual States, not in the USA. In our opinion, therefore, in relation to the schedule (b) films, as well as in relation to the schedule (a) films, Mr. Lam's affirmation fails to comply with the requirements of s.121(1) and should not have been admitted into evidence.

  53. Miss Tsang's affirmation is open to the same objection. She, like Mr. Lam, purports to satisfy the s.121(1) requirements by reference to a schedule annexed to her affirmation. In paragraph 3 of the affirmation she refers to the contents of the various columns of the schedule and in sub-paragraph (c) says that

    the name and place of domicile of the producer of each of the said sound/featured recordings are set out in column 3.

    Column 3 contains the names of two individuals and, after the name of each, the letters "USA". But in the eyes of our law, the USA was not, and could not be, the place of the individuals' domicile. So this affirmation, too, failed to comply with the requirements of s.121(1)(b) and should not have been admitted into evidence.

  54. The upshot of all this is that there was no admissible evidence before the trial judge of the subsistence of copyright in the works that the appellant was proved to have copied, or for the copying of which she was in possession of the stumpers. Nor was there any admissible evidence of the identity of the copyright owner. There was therefore no basis upon which the prosecution could show that the copies made by the appellant, or intended to be made by use of the stumpers, were, or would be, infringing copies. Both of her convictions must be quashed.

  55. This has resulted from an unnecessary and regrettable sloppiness in the drafting of the s.121 affirmations. The defects in the affirmations may be regarded as only technical. But if a statutory shortcut to the proof of essential matters is to be taken advantage of it is essential that the conditions of the statutory shortcut be strictly observed (see Francis Bennion: Statutory Interpretation, 4th ed. (2002) at p.934).


Cases

Attorney-General v Lee Kwong-kut [1993] AC 951; Shum Kwok Sher v KHSAR (2002) 5 HKCFAR 381; Unterpertinger v Austria (1986) 13 EHRR 175; Kostovski v Netherlands (1989) 12 EHRR 434; Saidi v France (1993) 17 EHRR 251; Luca v Italy (2003) 36 EHRR 46; R v Lambert [2002] 2 AC 545; Downey v R (1992) 72 CCC (3d) 1; HKSAR v Ng Kung Siu (1999) 2 HKCFAR 442

Legislations

Copyright Ordinance, Cap. 528: S.2, s.11, s.13, s.14, s.19, s.22, s.35, s.115, s.116, s.117, s.118, s.121, s.178

Criminal Procedure Ordinance, Cap. 221: s.94A

Oaths and Declarations Ordinance, Cap. 11: s.7

Hong Kong Bill of Rights Ordinance, Cap. 383: Art.10, Art.11, Art.39, Art.87

European Convention on Human Rights: Art.6

Authors and other references

Francis Bennion: Statutory Interpretation, 4th ed. (2002)

Representations

Mr. Andrew Bullett (instructed by Messrs Peter Cheung & Co.) for the appellant

Mr. Gerard McCoy SC (instructed by the Department of Justice) and Mr. Richard Turnbull and Mr. David Leung (both of that department) for the respondent


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