Copyright and judicial proceedings

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A previous column in Lexicon explored issues concerning copyright (China Business Law Journal volume 5, issue 3: Copyright). As that column noted, copyright belongs to that category of rights that we refer to as “intellectual property rights”. It confers both economic rights on the owner (e.g., the right to copy and sell a written work) and moral rights (e.g., the right to claim authorship of a written work).

The origin of the term “copyright” in English is quite straightforward: the word literally means “the right to copy”. There are two words that have been used in Chinese to express this concept: banquan, which is close to the English word and means “printing rights”, and zhuzuoquan, which derives from the concept of the “right of authorship” under German law and is the statutory term used in China.

An important point to recognise is that copyright law is “territorial” and national in scope, and there is no “international” copyright law. As a result, the copyright law of a jurisdiction will only apply to acts of infringement that occur in that jurisdiction.

The previous column explored the work products that lawyers create and considered whether lawyers enjoy copyright in relation to written documents and, accordingly, whether they enjoy the exclusive rights that copyright confers, such as the right to copy, revise, re-arrange and translate.

This column considers a different issue: whether copyright is infringed if documents are copied for the purposes of judicial proceedings. Let’s say, for example, that a party to a judicial proceeding wants to provide copies of a newspaper article or blog to a court as part of the evidence in support of its case. Is it possible to do this without infringing the rights of the copyright owner?

Of course, it might be possible for the party to provide an expert witness report to support its case (for discussion of expert witnesses, see China Business Law Journal volume 10, issue 4: Expert evidence). However, let’s say that the party does not need to prove a technical point, but simply wishes to provide a copy of a newspaper article to the court to explain the general context, and to strengthen its case. This column considers the issues in selected common law jurisdictions (namely, Australia, the UK, the US and Hong Kong SAR) and then explores the issues in mainland China.

Australia, HK SAR, UK and US

Australia, Hong Kong SAR and the UK expressly recognise an exception in circumstances involving judicial proceedings. In Australia, section 43 of the Copyright Act 1968 (Commonwealth) provides as follows:

Reproduction for purpose of judicial proceedings or professional advice

(1) The copyright in a literary, dramatic, musical or artistic work is not infringed by anything done for the purposes of a judicial proceeding or of a report of a judicial proceeding.

Subsection (2) also recognises an exception in the case of professional advice:

(2) A fair dealing with a literary, dramatic, musical or artistic work does not constitute an infringement of the copyright in the work if it is for the purpose of the giving of professional advice by:

(a) a legal practitioner; or

(b) a person registered as a patent attorney under the Patents Act 1990; or

(c) a person registered as a trademarks attorney under the Trade Marks Act 1995.

The legislation defines a “judicial proceeding” as a proceeding before a court, tribunal or person having by law the power to hear, receive and examine evidence on oath.

Similarly, section 54 of the Copyright Ordinance (Cap. 528) of Hong Kong provides as follows:

54. Judicial proceedings

(1) Copyright is not infringed by anything done for the purposes of judicial proceedings.

(2) Copyright is not infringed by anything done for the purposes of reporting such proceedings; but this is not to be construed as authorizing the copying of a work which is itself a published report of the proceedings.

As it relates to judicial proceedings, the above provision is substantially the same as section 45 of the Copyright, Designs and Patents Act 1988 (UK).

It is relevant to note that in the above-mentioned jurisdictions, the exception that applies in the case of judicial proceedings is not subject to a fairness or “fair dealing” requirement. So long as the relevant act, such as copying a document, is undertaken for the purposes of judicial proceedings, it will be entitled to the exception. All of the legislation in the above-mentioned jurisdictions additionally recognise fair dealing exceptions to copyright infringement. These exceptions arise in a number of situations, including: fair dealing for the purpose of research or study; fair dealing for the purpose of criticism or review; and fair dealing for the purpose of reporting news.

By contrast, US law recognises a general defence of “fair use”, under which a person will not be liable for copyright infringement if the use of copyright material was non-commercial and the copyright owner is unable to prove that the particular use was harmful, or that it could adversely affect the potential market for the material. Section 107 of the US Code makes provision for the “fair use” defence. Courts have recognised that “fair use” will be satisfied when a work is copied for judicial proceedings or judicial reports.

It is generally accepted in the above-mentioned common law jurisdictions that the law should allow copyright material to be copied for the purpose of judicial proceedings in order to facilitate the administration of justice. As the New South Wales government in Australia noted in a submission to the Australian Law Reform Commission:

It is frequently the case that copyright material, such as correspondence and a company’s internal documents, constitute important evidence in litigation, often to support points that may be detrimental to the author or copyright owner. In other cases, it may be necessary to use works owned by third parties, or in which ownership is uncertain. Multiple copies are needed of all material brought before a court or tribunal.

The above quote provides a useful explanation of the reasoning behind recognising an exception to copyright infringement in the case of judicial proceedings. In Australia, it has been suggested that the exception should be expanded to include administrative proceedings as well as judicial proceedings.

Mainland China

In mainland China, copyright is governed by the Copyright Law, which was promulgated in 1990 and subsequently amended in 2001 and 2010. The law recognises certain exceptions to infringement of copyright. The main provision in this regard is article 22, which does not recognise an exception to copyright infringement in the case of judicial proceedings. However, it recognises in sub-article (7) that a state organ, which would include a court, may use a published work for the purpose of fulfilling its official duties:

Article 22

In the following cases, a work may be exploited without permission from, and without payment of remuneration to, the copyright owner, provided that the name of the author and the title of the work shall be mentioned, and the other rights enjoyed by the copyright owner by virtue of this law shall not be prejudiced:

(7) Use of a published work, within proper scope, by a state organ for the purpose of fulfilling its official duties;

The law in mainland China does not recognise a general “fair use” defence, as in the case in the US, and this has been the subject of debate among scholars, some of whom argue that such a defence should be adopted. Nor is there a specific exception or defence that allows a party to judicial proceedings to copy a work that is subject to copyright for the purposes of those proceedings. Accordingly, if a party were to copy a work for the purpose of supporting its case in judicial proceedings without obtaining the permission of the copyright owner, it is likely that this would constitute an infringement of copyright.

It might be argued that the absence of an exception in the case of judicial proceedings is less problematic in mainland China for the reason that PRC courts have broad powers to collect evidence. Article 64 of the Civil Procedure Law provides as follows (see Citation 1):

Accordingly, it appears that a PRC court may collect and copy a work that is subject to copyright pursuant to article 22(7) of the Copyright Law. However, under article 64 of the Civil Procedure Law, a people’s court may only collect evidence where it deems that the evidence is necessary for the trial of the case. This provides less certainty than the laws in the other jurisdictions as outlined above.

Commercial courts
葛安德
Andrew Godwin

A former partner of Linklaters Shanghai, Andrew Godwin teaches law at Melbourne Law School in Australia, where he is an associate director of its Asian Law Centre. Andrew’s new book is a compilation of China Business Law Journal’s popular Lexicon series, entitled China Lexicon: Defining and translating legal terms. The book is published by Vantage Asia and available at www.vantageasia