Revisit the Nature of Copyright Law: Distinctions between Distribution and Making Available, between Civil Liability and Criminal Liability
Mr. Chan Nai-ming might not forecast himself being such a well known name among copyright lawyers when the officers of customs raid his home in the morning of 12 January 2005. Exhausted the litigating process, still, Chan was sentenced in jail for attempting to “distribute” an infringing copy of a copyright work “to such an extent as to affect prejudicially the owner of the copyright”. This case not merely sets “a surprisingly low level” test which is commented as being “counter-intuitive to the goals of curbing the problems piracy poses”, but also interprets “distribution” and “copy” in a broad way which overlaps the conducts of transmitting the digital file through the Internet. Based on the principle of stare decisis, the case, at least in the jurisdiction of Hong Kong, will deeply affect the system of the copyright protection. Nevertheless, this paper will question the rationale of the judgment, and analysis the reasonable outcome in the context of civil law system. Then I will briefly revisit the nature of copyright to illuminate the border between civil liability and criminal prosecution which should be set in coping with the infringement of the copyright in the Internet age. After this explanation, the “parental liability” for copyright infringement by minors will be relatively clearer out of the controversial debates on the issue.
II. “Intangible Medium” and the Distinction between “Making Available” and “Distributing”
Great thinker Jeremy Bentham had distinguished “a book of expository jurisprudence” and “a book on the art of legislation” in the legal discussions. I do not agree with the rationale of Chan Nai-ming case because the judges ignored this distinction and involved themselves into a controversy of legislative choice. In the first instance of the case, because the Magistrate Mackintosh deems that the provision “uses ordinary language”, he ignored the language used in statutes shall not be interpreted in ordinary imagination but has to be restricted in compliance with an integrally self-satisfactory logic, so he audaciously, if not wrongfully, integrate Chan Nai-ming’s “uploading” conducts into the “downloading” conception. Furthermore, left the provision along, he, with the art of legislation, condemn Mr. Chan’s conduct constituting a “prejudicial effect” since “widespread existence of counterfeits tends to degrade the genuine article and undermines the business of copyright owners”. In the second instance of the case, the court, creatively again, included the situation in Section 26 of Copyright ordinance as a part of Section 24. Moreover, Hon Beeson J, like a legislator, endorse the criminal sentence without consideration of the rationale of “prejudicial effect” test. In the final judgment, the court dismissed the appealing, but, selectively like a legislator, “leave open” the pivotal question on whether “distribution of a copy” necessarily requires the transfer of a copy.
According to the principle of nullem crimen (poena) sine lege, i.e. no crime (punishment) without a law, a court shall not exceed the existing law when considering the criminal cases – that is legislators’ job. So if the “distribution” can not be constituted without the transferring of the copies from the uploader’s possession to that of the downloaders, the criminal shall not be found because the statute provision had clearly restricted the punishment to the conduct of distribution, plus the satisfaction of the requirement of “judicial effect”. This is the key issue in the Chan Nai-ming case.
Although Hon Beeson J is right on the opinion of “the ordinance does, and was intended to cover, copies in digital format”, he and other judges in this case not clearly analyze the nature of this kind of “copies in digital format”. This new format of the copy is distinct to the traditional conception in its medium. In the United States, copyright law’s fixation requirement included a test of “tangible medium”, however this test has been widely questioned. The development of technology increased digital files which can still be regarded as a kind of the “fixation” of the “ideas” because copying of these file will not affect the “expression of the ideas”, i.e. “works”, which is the object of copyright protection. To illuminate the distinction between the act of distributing and the conduct of “making available”, one shall understand the relationship between “intangible medium” and “tangible medium”.
From the technological perspective, even in the so-called digital age, intangible medium and tangible medium of the same work may exist at the same time – A CD disk is tangible medium, the digital files stored in the disk is intangible medium. The only difference is: the intangible medium can be separated from the tangible medium. This is actually not a new phenomenon in the digital age, in the age of broadcasting, the transmitting of intangible medium became possible but that is costly. With the emergence of the personal computers, copying of the intangible medium became familiar to ordinary people. But attention, it is still “copying” because the copies, no matter tangible or intangible they are, are duplicated. The revolution happens in the Internet age: the less costly transmitting technology makes the digital files can be easily “moved” from one tangible medium to another – the premise is: the original copy of the digital file is erased at the same time of “moving”.
From the legal perspective, however, this revolution was ignored and the law interpreted the transmitting of the digital files by “temporary copying”. Furthermore, in most digital transmissions, the original file will not be deleted, which also happens in the Chan Nai-ming case, so legally speaking, any transmitting is a conduct of duplication. The act of transmitting copies without authorization is infringing author’s and / or copyright owner’s right of duplication, which is clearly a branch of copyright in civil law system. However, this approach still can not fulfill the requirement of copyright protection since the subjects of “duplicating” are those “downloaders”, so by this approach, if a person share a intangible medium, which is licensed to him, through the Internet, his liability will at most the secondary liability of the copyright infringement. To find the secondary, or adjuvant liability, the direct conduct of the downloading should be proved firstly. To strengthen this weakness, the right of “making available” is emerged and finally be accepted by both international treaties and domestic legislations. This right is reasonable because the nature of copyright is a kind of “exclusive right” which can be developed by the law. In other words, as a legal but not “ordinary” term, the right of “making available” is by its nature differentiating to the right of duplication, the right of distribution and any other branch of the copyright.
As to the “distribution”, as a legal term, it can not be interpreted arbitrary. Seem to the right of “making available”, the reason of prohibiting “unauthorized distribution” is to
supplement the right of duplication in another aspect. For instance, if a printing manufactory duplicated a great amount of copies of a book with permission of the copyright owner, then it distributes these copies without the copyright owner’s permission, it is the infringement of right of distribution. This term by its nature is based on the tangible medium because only in the circumstance of transferring “hard copy” of a work, it can be distinct to the right of duplication.
III. The “Prejudicial Effect”
As a refraining of the abuse of the copyright in its “distribution” branch, the copyright ordinance employed “prejudicial effect” as a premise. I think it reasonable because it can avoid the conflict between the provisions of exhaustion of rights, i.e. the first sale principle. Hence as a refraining, it shall not be so broad. However, on interpreting prejudicial affect, Magistrate Colin Mackintosh found that:
“It was a distribution in a public open forum where anyone with the appropriate equipment could obtain an infringing copy from the defendant. The technology has developed to such a point that the prejudice to the copyright owners when their films are distributed in this fashion is, in my judgment, manifest. And these were attempts to commit offences even if the completed offences had not been committed.”
This argument was supported by the appealing courts and no more substantial narration of this issue since the appellant did not questioned this issue. Nevertheless, even forget the misunderstanding of the term distribution, this reasoning is still inappropriate. From my opinion, this argument will find its legitimacy only when the following facts are proved: firstly, how many people (normally) visit the forum; secondly, how many authorized copies of the films have been sold in the market; thirdly, how much percentage if these movies are for sale the downloaders will still buy it; fourthly, how long were Mr. Chan connecting the line, etc. Before these de facto situation are confirmed, how can a court find the conduct of placing a seed in the open forum would, even possibly, causes the prejudicial effect to the copyright owner? Do not forget it is in a criminal procedure, in which if the evidence is not clear, the principle of the Presumption of Innocence will prevent the finding of guilty. In his article, Michael Filby has estimated that after “an uncomfortable and ongoing battle between the law and cyberspace”, and after the passing of many years, litigation and expense, eventually result in the industries recognizing the new opportunities for e-commerce. However, in my opinion, this battle could be avoid if the courts insist on the basic principle of criminal law.
IV. The Nature of Copyright and the Parental Liability
What is the nature of copyright? Three distinct school has discussed it for years. The first school, based on the system of natural law, derivates the theory from the Locke’s notion of the right from labor. The second believes that the law copyright is mostly emerged from the demanding of the intellectual products, and publication and obtaining reward is the ultimate aim of copyright owner. The third is a positive and historical approach; it believes the copyright is by its nature a kind of statute right transforming from the right of the printing manufactures and can is continuously being adjusted by the development of the social circumstance. I argue for the third one because it is simply telling the real story of the evolution of copyright law. Positively speaking, the copyright is a kind of exclusive right, which means if some right is given to the right owner, right owner may preclude obstacles of exploring the right. So in the civil aspect, the parental right is reasonable because the minor’s behaviors may reverse the owner’s purpose, and the nature of the copyright is to preclude this obstacle.
Some scholars suggest that Courts should extend the doctrine of parental liability for the tortious acts of children to copyright infringement committed by minors in order to curtail such illegal acts. A more sensible solution would be to impose a rebuttable presumption of parental liability. Others suggest that it is possible that parents could still be held liable if the child engaged in the infringement under the doctrine of contributory infringement. These solutions are reasonable in the civil procedures since it dose not exceed the right owner’s own exclusive right. From the “art of legislation”, some scholars questioned this idea since they said that there is little evidence that parental liability laws have affected juvenile delinquency, I can not comment to this argument because the correction of it can only be proved by the empirical research.
Nevertheless, the important thing lies in the criminal liability. As it has been said above, the copyright by its nature is just a kind of exclusive right. So it can not be compared with the real property unless the statute clearly provides the criminal responsibility to the parents.
The Chan Nai-ming case, the discussions on the parental liability and other issues in copyright law is controversial. To clearly answer these questions, the key approach is distinguishing the “legal interpretation” and the “art of legislation”. Chan Nai-ming case has been rule as law in the common law system, but the reason of it is actually not a persuasion. The distinction between “right of making available” (for intangible medium) and “right of distribution” shall be kept in mind especially when a court is considering the criminal case. Because of the same reason, the reasonable parental liability for copyright infringement by their children, especially via the internet, should be restricted in the civil perspective. For the criminal liability, as what shall be considered to the “prejudicial effect”, the fact and empirical research can support or oppose the idea, but the ultimate decision shall still not be provided by the judicial organs because the nature of copyright is a statute exclusive right.
 HKSAR v. Chan Nai Ming TMCC 1268/2005, para 6.
 Chan Nai Ming v. HKSAR FACC No. 3/2007.
 Section 118(1)(f) of the Copyright ordinance, Cap 528 HKSAR 2001, which was replaced by 15 of 2007 s. 31 as s. 118(1)(f) of the Copyright ordinance, Cap 528 HKSAR 2007.
 Michael Filby, Big Crook in Little China: The Ramifications of the Hong Kong BitTorrent Case on the Criminal Test of Prejudicial Effect, Working Paper, February 2007, available at http://www.bileta2007.co.uk/papers/images/stream_6/WeinsteinS_WildC.pdf.
 Jeremy Bentham, An Introduction to the Principles of Morals and Legislation (London: Printed for W. Pickering, 1828), p. 256.
 Although, at least in the common law tradition, the judicial branch often produce somehow legislative outcomes in their decisions, a decision not complying with the existing statute provision should be avoid prudentially. In my opinion, when reasoning a case decision, the “art of legislation” shall be given place to the positive legal interpretation, or the arguments will be easily confused into economic, religionary and even ideological controversy.
 HKSAR v. Chan Nai Ming TMCC 1268/2005, para 30.
 Ibid, para 33.
 Ibid, para 38.
 HKSAR v. Chan Nai Ming HCMA 1221/2005 HKSAR, para 75.
 Chan Nai Ming v. HKSAR FACC No. 3/2007, para 58.
 Ibid, para 82.
 17 U.S.C. § 102 (2000).
 See Kelly M. Slavitt, Fixation of Derivative Works in a Tangible Medium: Technology Forces a Reexamination, 46 IDEA 37 (2005).
 I have written an essay including this issue in details. See DONG Hao, The Right of Communication of Information on Networks: An Analysis to the Text of Copyright Law of People’s Republic of China, pending for publication.
 It has been proved that the “lost” of the film and recording industries are not so huge because in many situations, the downloader will not buy the authorized copy.
 See James Cooper Morton, Scott C. Hutchison, The Presumption of Innocence (Carswell, 1987).
 Michael Filby, Confusing The Captain With The Cabin Boy: The Dangers Posed To Reform Of Cyber Piracy Regulation By The Misrepresented Interface Between Society, Policy Makers & The Entertainment Industries, Journal of International Commercial Law and Technology, Vol. 2, Issue 3 (2007).
 Peter Drahos, A Philosophy of Intellectual Property (Dartmouth Pub. Co. Ltd. 1996), pp.41-42.
 John Locke, Two Treatises of Government (China Social Sciences Publication House, 1999), pp.287-290.
 Ronald V. Bettic Copyright Culture, the Political Economy of Intellectual Property (Westview Press 1996), p.33.
 L. Ray Patterson & Stanley W. Lindberg, The Nature of Copyright: A Law of User’s Right (The U. of Georgia Press, 1991), pp. 22-26.
 Chad Silver, Censure the Tree for Its Rotten Apple: Attributing Liability to Parents for the Copyright Infringement of Their Minor Children, 3 Cardozo Pub. L. Pol’y & Ethics J. 977, p. 979.
 Janelle A. Weber, Don’t Drink, Don’t Smoke, Don’t Download: Parents’ Liability for Their Children’s File Sharing, 57 Fla. L. Rev. 1163, p. 1179.
 Amy L. Tomaszewski, From Columbine to Kazaa: Parental Liability in A New World, 2005 U. Ill. L. Rev. 573, p. 587.