30 Jul 2010

Taiwanese company successfully sued in Australia for infringing copyright in Hong Kong TV program

by Mary Still, Timothy Webb

Chinese copyright holders should be confident that, in the event of infringing activity in Australia, their rights can be swiftly enforced in Australia.

Chinese media giant Television Broadcasts Limited (TVB) has claimed victory in the recent Australian Federal Court decision of TVBO Production Ltd v Australia Sky Net Pty Ltd (2009) 82 IPR 502. The case related to the alleged copyright infringement of a television series called "Twin of Brothers" which was made in Hong Kong.

Twin of Brothers - the original broadcast and the retransmission

The infringement claims were instigated by three subsidiaries of TVB, the world's largest producer and distributor of Chinese language programs. TVB owned the copyright in the series Twin of Brothers for the territory of Hong Kong, while its subsidiary TVBO owned the copyright for the rest of the world.

Chinese Satellite Communications Inc (CSC) retransmits 16 free-to-air programs available in Taipei from Taiwan to the east coast of Australia, which are then broadcast on a subscription television service. It intercepted the broadcast of Twin of Brothers and retransmitted it to Australia without the permission of the appropriate entities. TVB's subsidiaries brought an action against, CSC and its chairman of directors, Mr Chih-Lung Wang, for infringement of the copyright in the cinematograph film.

How did Australian copyright laws apply to a Chinese television series?

Australia's Copyright Act 1968 (Cth) and its regulations protect a cinematograph film made or first published in a Berne Convention country or in a WTO country, which includes China and Hong Kong. As a result of Twin of Brothers being made in Hong Kong, it is protected by the Act.

Direct infringement

One of the exclusive rights that copyright confers is the right to communicate the film to the public (within or outside Australia).

The main issue for the Court was whether CSC's interception and transmission of the cinematograph film amounted to an infringement of TVBO's exclusive rights in the copyright.

It held that CSC infringed TVBO's rights since:

  • the electronic transmission was a form of communication; and
  • although CSC's transmission emanated from Taiwan, this circumstances did not absolve it from liability because the transmission was received by pay TV subscribers within Australia.

The director's liability

The TVB companies claimed that Mr Wang authorised CSC's infringement of TVBO's copyright in the Twin of Brothers series, and was thus separately liable for copyright infringement.

The Court concluded that, as the most senior executive active in the business of CSC, he played a significant role in CSC's conduct which resulted in the unlawful transmission of Twin of Brothers. Mr Wang was thus found to have authorised the infringement.

The Court made orders restraining both CSC and Mr Wang from any current or future communication of episodes of Twin of Brothers to the Australian public.

What are the lessons from this case?

The decision should provide comfort to Chinese (and other foreign) copyright owners and licensees. Australian courts will recognise and enforce copyright in a work that was made or first published in many foreign countries including those countries who are parties to the Berne Convention or who are members of the World Trade Organisation. Chinese copyright holders should be confident that, in the event of infringing activity in Australia, their rights can be swiftly enforced in this jurisdiction.

In addition, the case should put company directors on notice that their decisions and involvement in the business, or lack thereof, may make them personally liable for authorisation of copyright infringement.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.