Cinepoly Records Co Ltd and Others v. Hong Kong Broadband Network Ltd and Others

HCMP 943/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO. 943 OF 2006

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BETWEEN

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Before: Deputy High Court Judge L. Chan in Chambers

Dates of Hearing: 6 June and 28 August 2006

Date of Decision: 28 August 2006

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D E C I S I O N

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1.This is an application by the 10 plaintiffs against the four defendants for Norwich Pharmacal relief.  It is for disclosure of the full names, postal addresses and identity card numbers of 49 internet account subscribers.  The plaintiffs are members of the recording industry and the defendants are internet service providers.

2.A similar application has been made in January 2006 before Deputy Judge Poon.  After hearing contested submissions, Deputy Judge Poon ordered the disclosure of information on the identity of 22 internet subscribers who were involved in alleged infringement of the copyrights of the plaintiffs therein.  The reasons of decision are at Cinepoly Records Company Limited & Others v Hong Kong Broadband Network Limited & Others [2006] 1 HKLRD 255.

“P to P” copying

3.In this case, the International Federation of the Phonographic Industry (Hong Kong Group) Limited (hereinafter called “the IFPI (HKG)”) and the plaintiffs conducted an investigation into infringing copying activities in the internet on 1st, 2nd and 3 April 2006.  The subject of the investigation was “peer to peer” or “P to P” copying activities.

4.Many internet users have installed in their computers “P to P” software.  The type of “P to P” software widely used in Hong Kong is the WinMX type because it can support Chinese characters and can search songs by their Chinese titles and the Chinese names of the performers. 

5.A computer user who uses his computer as a source for others to copy songs or music (hereinafter called “an uploader”) would firstly install the WinMX software in his computer.  He would then make copies of his chosen songs and music and store them in a file in his computer for sharing with others on the internet.

6.A computer user who wants to make copies of a song or music (hereinafter called “a downloader”) has also to install the WinMX software in his computer.  If he wants to copy any song from the computer of an uploader, he only needs to click on the software, type in the name of the song or the artist and then click the search button.  The WinMX software will conduct a search on the internet for computers that have the relevant song or artist uploaded in their sharing files.  Once the search produces a fruitful result, the downloader can browse through the index of songs in the sharing file of any available uploader.  He can then decide which song to copy.  Once he has decided to copy a particular song or songs by clicking the relevant button or buttons, the copying will be accomplished by the software automatically.  Signals will be transmitted from the uploader’s computer to the downloader’s computer and a new copy of the song or songs will be made in the downloader’s computer.  The new copy of the song or songs can then be stored in a permanent disc either in CD or MP3 format as the downloader may choose.  It is all free of charge.  The quality of the illicit copy is also good because the copying is done through digital technology.

Investigation

7.Through the investigation on the 1st, 2nd and 3 April, the plaintiffs and IPFI (HKG) have discovered 49 uploaders.  Each uploader had at least 82 songs in their sharing folders to share on the internet.  Most of these folders had hundreds of songs and some had over 1,000 songs.  There was one folder which had 5,000 songs to share.  Some of the songs had not yet been released to the public. 

Information obtained

8.However, the investigators through their computers and special software could only identify the internet protocol addresses of the uploaders and downloaders.  Such addresses were represented by sets of numbers.  These addresses were assigned by the internet service providers to their subscribers for billing purpose.  Apart from the internet protocol addresses, the uploaders were anonymous. 

9.These internet protocol addresses may also change with time so that the same protocol address may be assigned by the internet service provider to different subscribers at different times, hence only the relevant internet service provider knows which account is being used to surf the internet at a particular time under a particular internet protocol address.  Even in cases when names are seen, such are mostly user names and not the real names of the subscribers. 

Aspects of infringement

10.The plaintiffs say that their copyrights are infringed by the uploaders in three aspects, namely the issue of unauthorised copies to the public contrary to section 24(2) of the Copyright Ordinance, Cap. 528; the making available to the public unauthorised copies contrary to section 26(2) and the unauthorised transmission of a work for making infringing copies contrary to section 32(2).  These provisions are:

“24(2).  References in this Part to 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.

26(2).  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.

32(2).  Copyright in a work is infringed by a person who, without the licence of the copyright owner, transmits the work by means of a telecommunication system (otherwise than by broadcasting or inclusion in a cable program service), knowing or having reason to believe that infringing copies of the work will be made by means of the reception of the transmission in Hong Kong or elsewhere.”

11.I have no difficulty with sections 24(2) and 26(2).  I agree that the making of a copy of a song and storing it in a sharing file that can be shared by others using the WinMX software constitute infringement of these two sections. 

12.However, for section 32(2) I have some difficulty.  The only evidence of transmission available here is the transmission of signal from the uploaders to the computers of the investigators.  The investigators were making copies for the owners of the copyrights.  I have doubt on whether such copy obtained for the purpose of the owner is unauthorised.  The owner might not have consented to a copy being placed in the sharing folder, but that is not transmission. 

13.For the uploader who has 5,000 songs in his folder, it may well be that many infringing copies have been made with his computer as the source and he may have breached the copyrights of many of the plaintiffs herein.  However, I cannot rule out the possibility that of the 5,000 songs, there may be a small number which are not favoured by the downloaders and thus have not been copied from.  For such songs, though the mere uploading of copies into the sharing file constitutes breaches of sections 24(2) and 26(2), the lack of any further copying by transmission means no breach of section 36(2).  If s section 36(2) is not breached, it may result in a smaller award of damages.

14.Furthermore, for the popular songs, there may be many sites available and one cannot assume that copies or numerous copies have been made from any particular site without evidence of transmission.  Such evidence is material on the quantum of damages.  Since there is no evidence of transmission except to the investigators, I would only find that each of the 49 uploaders as identified may have infringed the copyrights of one or more of the plaintiffs in terms of sections 24(2) and 26(2) but not section 36(2).

No pooling of information of identity

15.I would also point out that I am not finding that all 49 uploaders may have infringed the copyrights of all 10 plaintiffs.  Hence, I would not allow the plaintiffs’ solicitors to make available all information of identity of the 49 uploaders to all the plaintiffs.  Each of the plaintiffs will be entitled to the information of the identity of those uploaders who have infringed its copyrights.  If there should be no infringement by any uploader of the copyright of any particular plaintiff, the information of this uploader shall not be passed on to this plaintiff.  There is no justification for such disclosure.

16.For saving time and costs, I understand that some or all of the plaintiffs may seek help from the IFPI (HKG) to enforce their copyrights and related rights against the uploaders.  I allow them to divulge the information of the uploaders to the IFPI (HKG) for this purpose.

Order

17.Subject to what I have stated above, I find that the plaintiffs are entitled to the information of identity of the 49 uploaders from the defendants pursuant to the Norwich Pharmacal principle.  I also agree with Deputy Judge Poon that the protection under the Personal Data Privacy Ordinance is not available to the four defendants or the 49 uploaders by reason of section 58(2) of the ordinance.  I have also considered the contracts between the defendants and the uploaders and the terms of the licences of the defendants.  None of these documents can prevent an order for disclosure to be made by this court. 

18.In the premises, I make the following order upon undertakings:

“Upon the plaintiffs’ solicitors through counsel undertaking:

(a)  to disclose the information of each particular internet account holder obtained pursuant to this order only to:

(i)    those plaintiff(s) whose copyright had allegedly been infringed through the activities of that particular internet account, and

(ii)   at the option and express direction of those plaintiff(s) whose copyright had been infringed through the activities of that particular internet account, the IFPI (HKG), but only for the purpose of enforcing the copyrights and related rights of those plaintiff(s);

(b)  to deposit with the court revised annexure to the originating summons showing, in respect of each internet protocol address therein, the plaintiff(s) entitled to the information as aforesaid at least two days prior to the disclosure of the information to the said plaintiff(s); and

(c)  to deliver a copy of each of the revised annexure on the relevant defendant’s solicitors

And upon the IFPI (HKG), through counsel for the plaintiffs undertaking that they will not use the information acquired pursuant to this Order other than for the purposes of taking or co-ordinating legal actions or enforcement in respect of the plaintiffs’ copyright and related rights,

It is ordered that:

1. that the 1st defendant do within 14 days of today disclose to the plaintiffs’ solicitors (if or to the extent known or otherwise available to the 1st defendant and in documentary form so far as reasonably practicable and convenient to the 1st defendant) the full names, postal addresses (and billing and installation addresses) and identity card numbers of the persons whose internet accounts were assigned the internet protocol addresses listed in Annex A hereto on the days and times (according to the Hong Kong time of the Hong Kong Observatory) shown therein.”

19.And I make similar orders against the 2nd, 3rd and 4^th defendants with minor adjustments as shown in the draft presented by counsel.  I continue:

“5   That each of the defendants shall by an officer duly authorised make and file an affidavit or affirmation and serve a copy thereof on the plaintiffs’ solicitors verifying that it has duly complied with the applicable provisions of the order within 7 days of its compliance;

6. That the plaintiffs are only permitted to use the documents and information disclosed pursuant to this order for the purposes of enforcing their copyrights and related rights against all and any persons identified pursuant to this order;

7. That the IFPI (HKG) be at liberty to use the documents and information disclosed pursuant to this order for the purposes of enforcing or co-ordinating the enforcement of the copyrights and related rights of the plaintiffs herein against all and any persons identified pursuant to this order but not for any other purpose;

8. That nothing contained in this order shall prevent the plaintiffs or any of them from bringing an action as joint plaintiffs against any of the alleged infringers;

9. That the plaintiffs shall pay all the defendants’ legal costs:

(a) of this application (including reserved costs) on an indemnity basis in any event, and

(b) of compliance with this order on an indemnity basis; and reimburse all the defendants’ all other reasonable costs for compliance of this order. 

All such costs are to be taxed if not agreed; and

10. Liberty to apply.”

Mr Martin Liao, instructed by Messrs Pang, Wan & Choi, for the Plaintiffs

Mr George Sit, of P C Woo & Co., for the 1st Defendant

Mr Peter Yuen, of Messrs Freshfields Bruckhaus Deringer, for the 2^nd Defendant

Mr Bernard Siu, of Messrs Johnston Stokes & Masters, for the 3^rd Defendant

Mr N Dentice, of Messrs Richards Butler, for the 4th Defendant