EFFECTIVE ENFORCEMENT OF COPYRIGHT

• Citation: (1990) 2 SAcLJ 91
• Date: 01 December 1990
• Published date: 01 December 1990

Introduction

In the last ten years, many countries including several countries in the Pacific Rim Region have revised their copyright legislation to give more adequate protection to copyright owners in order to combat piracy of copyright works or other materials. The term “piracy” is used to refer to the making of unauthorised copies of a copyright work or other materials for sale, hire and distribution. In the early 1980s, the piracy of phonograms and films was rampant in many parts of the world.1 Video tapes of the film “E.T.” by Stephen Spielberg were sold and distributed in the United Kingdom although it had never been legitimately released in video form. The Times of London reported that E.T. was voted “Top Video of the Year” in 1984.2 The film titles which were found in the United Kingdom video market in pirated form included “Ghandhi”, “Raiders of the Lost Ark”, “Octopussy” and “Superman 3” and the loss to the film industry in the United Kingdom caused by film piracy was estimated to be in the region of 100 million pounds in 1987.3 Video piracy was also rampant in Singapore, India, Japan and many other countries.4 In less than 10 days after the video release of TOP GUN in the United States, thousands of copies of videotapes of this film flooded Japanese video stores, some six months before the legitimate release in Japan of TOP GUN in pre-recorded video cassette form.5 In this paper, I shall examine the measures which can be taken by copyright owners to combat piracy of copyright works and other materials and to enforce their copyright in their creative works.

All copyright legislation provides the copyright owner with civil remedies against any infringement of his copyright work and at the same time makes certain copyright infringements punishable as a crime with imprisonment or a fine or both.

Criminal Liability for Copyright Infringements

Many countries create offences for the making, selling, hiring, trading in or importing infringing copies of copyright works without the licence of the copyright owner, including the possession of infringing copies for the purposes of trade. The penalties for such offences must be sufficiently severe in order to act as an effective deterrent. Unauthorised commercial exploitation of copyright works can bring in huge profits for the pirates who incur very low overheads for their operations. The cost of developing a piece of computer software or the production of a motion picture is very high. For example, a piece of word-processing software for a microcomputer may cost hundreds of thousands of dollars to develop. The creator of a new software also runs the risk that his product may not be a success in the market place. A pirate who incurs no development cost will simply reproduce a successful software package for sale and distribution at a handsome profit. It cost 20th Century Fox, the makers of the film, ALIEN, more than US$100 million to produce, distribute and market the film.6 It cost the pirates very little to make unauthorised copies of that film on video tapes for sale and distribution.7 The pirates can sell an infringing copy of a software or a video-tape of a film at a fraction of the cost of the authorised copy and yet make a huge profit. They have no studio costs, they pay no royalties or fees to authors, performers and technicians. They take no commercial risks. They only reproduce works which become successful.

In Singapore, the offences of making, selling, hiring, trading in or importing infringing copies of works, and possessing infringing copies for the purposes of trade, carry penalties of up to S$10,000 per infringing copy or a total of S$100,000 or imprisonment up to 5 years or both.8 The distribution for the purposes of trade of infringing copies of a work is an offence punishable with a fine up to S$50,000 or imprisonment up to 3 years or both.9 Possession of a plate or similar contrivance for making infringing copies of sound recordings or audio-visual productions is an offence punishable with a fine up to S$20,000 per plate or contrivance or with imprisonment up to 2 years or both. 10 A person who causes a copyright work to be performed in public for profit is guilty of an offence punishable with a fine up to S$20,000 or imprisonment up to 2 years or both.11

In January 1989, a man was jailed for two and a half years in Singapore when he failed to pay a total fine of S$126,000 for having 6,163 pirated video tapes and 26 recorders in his possession.12 The recorders were used for making the pirated video tapes. The man was charged under the Singapore Copyright Act of 1987 and was fined a total of S$ 100,000 for having the pirated video tapes, the maximum penalty permitted under the new law. The remaining $26,000 was a fine of S$ 1,000 each for each of the 26 video recorders found in his possession. The tapes and equipment were seized as a result of the efforts made by Golden Crown Video Pte Ltd, an authorised distributor of Hongkong serials, in tracking down unauthorised reproductions and sale of film productions made in Hongkong.

In March 1989, a Malaysian man, who used a Singapore post office box to sell pirated computer manuals and diskettes brought in from Malaysia, was convicted by a Singapore Court of the offence of selling pirated software by mail order and he was fined a total of S$14,000 after he pleaded guilty to two private summonses of importing pirated copies of the works of two American companies.13 Between January 7th and 22nd, 1989 he brought in IBM’s PC Storyboard manual and five diskettes which were pirated copies. In June 1988 he was caught by the police for having in his possession eight pirated copies of Microsoft manuals. He was fined S$l,000 for each offending article.

In the Republic of Korea, the offence of copyright infringement by means of reproduction, public performance, broadcast or public display carries a penalty of imprisonment up to 3 years or a fine of up to three million Won.14

The Canadian Copyright Act, as amended in 1988, provides that a person who sells, distributes, exhibits or imports for sale any infringing copy of a work commits an offence and is liable on conviction to a maximum fine of CA$25,000 or to imprisonment for a term of 5 years, or both.15

Some countries provide minimum punishments for offences of copyright infringement. Under the Indian Copyright Act, an infringement of the copyright in a work carries a penalty of a minimum term of imprisonment for six months which may extend to three years plus a fine of a minimum 50,000 rupees which may extend to two lakh rupees. For second and subsequent offences, the minimum penalty is imprisonment for a term of not less than one year and a fine of not less than one lakh rupees.16

In order to obtain a conviction for an offence relating to copyright infringement, the prosecution must prove the following elements:

1. (a) that copyright subsists in a work;

2. (b) that the accused knew that he was dealing in an infringing copy of a work; and

3. (c) that the copies were infringing copies of a work made without the licence of the copyright owner.

Presumptions should be introduced in a copyright legislation to facilitate proof of subsistence and ownership of copyright and of the accused’s knowledge that he was dealing with infringing copies of a work. Otherwise the lawyers for the accused will insist on the subsistence and ownership of copyright being proved by direct evidence with corroboration. In the case of an American film which has been illegally transferred onto videotapes and sold in a country such as Singapore, the lawyer defending the accused can insist on the prosecution bring witnesses from abroad to prove that copyright subsists in the film and that the copyright is owned by someone.

In the case ofMusa v La Maitre reported in The Times of 11 December 1986, the defendant was charged and convicted of an offence under section 21(4A) of the United Kingdom Copyright Act of 1956 (as amended in 1982) for having in his possession by way of trade infringing copies of an American film and an Indian film. Defence counsel argued that in proving an offence under that section, it was necessary for the prosecution to call the actual owners of the copyright to establish the subsistence of copyright. The English Divisional Court held that the prosecution was required to prove that copyright subsisted, that first authorised publication took place in a country to which the section extended and that the copies were infringing copies. The Court further held that it was sufficient for the prosecution to establish those elements through the evidence of witnesses other than the makers of the film or the owners of the copyright in the work.

In Singapore an affidavit sworn by or on behalf of the owner of a copyright work asserting subsistence of copyright in the work, giving the name of the owner of the copyright and stating that a copy of the work annexed to the affidavit is a true copy of the work is admissible as evidence in any criminal proceedings and is prima facie proof of the matters stated therein until the contrary is proved, and the Court before which such affidavit is produced shall presume that the affidavit was made by or on behalf of the owner of the copyright.17 The Singapore Copyright Act also gives the Court a discretion to permit such affidavit to be used without having to call the maker of the affidavit to appear before the Court to be cross-examined on the

affidavit.18 In civil proceedings under the Singapore Copyright Act subsistence and ownership of copyright is presumed if the defendant does not challenge them and, if he without good faith challenges them, the Court may order the defendant to pay the costs of proving subsistence and ownership of copyright.19

In a prosecution for a copyright offence under the Singapore Copyright Act, any person who has in his possession five or more infringing copies of a work is...