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Copyright

Copyright Registration: Is It Necessary or Just Optional?

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Copyright protection is granted automatically upon the creation of a work, without the need for registration. In fact, many jurisdictions do not maintain an official copyright registry.

Under the Berne Convention, a copyrighted work created by an author in any member state will be recognized and protected in all other member states.

In cases of copyright infringement, the copyright owner must provide evidence as proof of ownership. The evidence may be in the form of an affidavit or affirmation made by the owner that may serve as the proof of copyright ownership.

Though copyright registration is not mandatory, some jurisdictions have official authorities or business organizations that offer voluntary copyright registration services. These entities will issue copyright registration certificates, which can serve as proof of ownership and the date of creation of the copyrighted work.

These official authorities or business organizations will typically issue copyright certificates within one to three months, provided all required documents are properly submitted and in order.

The table below shows the availabilities of copyright registration in Asia and other popular countries for your easy reference:

Copyright Registration available in Asia
JurisdictionsRegistration AuthoritiesRemarks
AfghanistanMinistry of Information and Culture of AfghanistanVoluntary, provides proof of ownership.
ChinaChina Copyright Protection Center (“CCPC”)Voluntary but strongly recommended as it serves as prima facie evidence of ownership, in particular for software.
IndiaCopyright Office of IndiaVoluntary, establishes prima facie evidence of the facts contained on the registration certificate and may be used in court as proof of those facts.
IndonesiaDirectorate General of Intellectual Property of IndonesiaVoluntary but highly recommended as it provides official proof of ownership, which is crucial in legal disputes involving copyright infringement.
JapanAgency for Cultural AffairsVoluntary, establishes presumption of facts contained in registration for use in court.
Korea (South)Korea Copyright CommissionVoluntary, provides proof of ownership and date of creation.
MalaysiaIntellectual Property Corporation of MalaysiaVoluntary Notifications is to assist in providing prima facie evidence of ownership and evidence of date of creation, which aids the copyright owner to present to the court as proof of the facts made.
PakistanCopyright Office under the Intellectual Property Organization of PakistanVoluntary, provides official proof of ownership.
PhilippinesNational Library of the PhilippinesCopyright Certification is issued for the purpose of giving information on the fact of copyright registration and deposit of the copyrighted work in the National Library of the Philippines.
Taiwan (not a member of Berne Convention)Taiwan Copyright Association   Taiwan Development & Research Academia of Economic & Technology (“TEDR”)#Voluntary, provides prima facie evidence of ownership and date of creation.   #Copyright registration with the TEDR is subject to payment of annual fees starting from the 2nd year onwards.  Otherwise, the TEDR will destroy the copyright work file and only retain the certificate on their record.
ThailandDepartment of Intellectual Property of ThailandVoluntary, provides official proof of ownership.
VietnamCopyright Office of VietnamVoluntary, provides official proof of ownership.
Copyright Registration available in other popular countries
JurisdictionsRegistration AuthoritiesRemarks
CanadaCanadian Intellectual Property OfficeVoluntary, provides copyright owners with the official proof of ownership in case of infringement
USUnited States Copyright OfficeVoluntary, but copyright registration is still necessary for U.S. copyright owners to sue for infringement in federal court.  For foreign copyright owners, it is only required when suing.  However, copyright owners cannot claim statutory damages and/or attorney’s fee for pre-registration infringements.
FranceNational Institute of Industrial Property*   OR via voluntary deposit (1) Société des Auteurs et Compositeurs Dramatiques (SACD) (for dramatic works); (2) Société des Auteurs, Compositeurs et Éditeurs de Musique (SACEM) (for musical works) ^* Voluntary, provides official proof of ownership           ^ SACD and SACEM assist their members (copyright owners) to collect the royalties pertaining to the exploitation of their works.
PortugalGeneral Inspection of Cultural ActivitiesVoluntary, provides official proof of ownership
SpainSpanish Intellectual Property RegistryVoluntary, provides official proof of ownership
How We Can Help

We can assist clients in preparing affidavits or affirmations as proof of ownership for their copyrighted works. Additionally, our Shanghai office holds a registered account with the CCPC, allowing us to directly facilitate copyright recordal in China on behalf of our clients.

Disclaimer: This article is for reference only. Nothing herein shall be construed as Hong Kong legal advice or any legal advice for that matter to any person. Oldham, Li & Nie shall not be held liable for any loss and/or damage incurred by any person acting as a result of the materials contained in this article.

How Hong Kong’s Legal System Protects Your Creative Works on Online Sharing Platforms

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Online sharing platforms (OSP), like YouTube and TikTok, have revolutionized the distribution of creative works. While these OSP provide unprecedented opportunities for exposure, they also present significant risks of copyright infringement. Notably, infringers have taken advantage of the borderless nature of the Internet, believing either that their actions are extraterritorial and beyond legal reach, or that copyright owners are unlikely to pursue legal action in the foreign jurisdictions where these infringers reside. Infringers who believe they can act with impunity have inflicted significant harm on copyright owners.

Where the infringement occurs on an OSP, a request may be made by the copyright owner for the removal of the infringing contents. Due to the unregistrable nature of copyright, the OSP may require copyright owners to initiate legal action as further proof of ownership. However, an OSP would usually not express on the specific jurisdiction in which such legal action should be filed.

Choosing the right jurisdiction

There are potentially three options a copyright owner may choose.

A common belief is that a copyright owner may only sue the infringer in accordance with the jurisdiction clause in the Terms and Conditions with the OSP. However, since there is no privity of contract between the owner and the infringer, the jurisdiction clause is likely to be irrelevant.

On the other hand, as copyright is territorial in nature, copyright owners are often advised to pursue legal action in the jurisdiction where the infringer is domiciled. This approach has the apparent advantage of making it difficult for the infringer to evade legal proceedings and enforcement. However, many copyright owners may hesitate to take this route due to their unfamiliarity with the specific foreign legal system, as well as the disconnect between the economic loss incurred and the forum chosen for the lawsuit. Additionally, infringers may intentionally exploit the subtle differences in copyright regimes.

Another option is to initiate legal action in the jurisdiction where the copyright owner is based or has a business presence. Traditionally, it was believed that actions taken abroad could not infringe upon local intellectual property rights, making this option seem unviable.  However, given the borderless nature of the Internet, it is increasingly accepted that the “targeting” of residents within a jurisdiction should be regarded as an act occurring within that jurisdiction. For instance, in the recent English case of Entertainment One UK Ltd & Anor v Sconnect Co Ltd & Ors [2022] EWHC 3295 (Ch), the English Court acknowledged its jurisdiction to adjudicate a dispute involving IP infringements on an OSP where the consumers in the UK were specifically targeted, even though the alleged infringer was based in Vietnam.

Once the option to sue in jurisdictions other than the infringer’s hometown becomes available, pursuing legal action in Hong Kong can be a strategic choice if the copyright owner is based in Hong Kong or if the economic value of their creative works is realized here.

Hong Kong’s advantages in safeguarding copyright

At the heart of Hong Kong’s copyright protection is the Copyright Ordinance, which extends to various forms of creative expression, including music, art, literature, and audiovisual content. This legislation grants creators exclusive rights to reproduce, distribute, and publicly display their works. Under the Copyright Ordinance, no registration is required. Hong Kong also adopts an open system which does not require the claimant to be domiciled or incorporated in Hong Kong.

Where the infringer is domiciled in another jurisdiction, the Court needs to consider whether it should extend its authority to a body outside its jurisdiction. In such case, Order 11 Rule 1(1)(f) of the Rules of the High Court provides a suitable jurisdictional gateway. This rule permits a claim based on a tort to be served on the defendant outside of the jurisdiction if the damage was sustained or resulted from an act committed within Hong Kong.

As explained, “targeting” may now be considered an act within Hong Kong. If Hong Kong customers are targeted, this may also lead to a loss incurred in Hong Kong since the Hong Kong customers may now prefer the infringing content over the infringed content. While the law requires that such loss should be “significant”, there is no requirement for the copyright owner operating in multiple jurisdictions to demonstrate that Hong Kong is the sole or primary location of those losses.

Even if the above is satisfied, the Court still has a discretionary power to decline jurisdiction, especially when there is a more appropriate forum for the specific case. In Entertainment One UK Ltd, the English Court has taken into account the following in finally accepting jurisdiction:

  • The location where the copyright was created or implemented
  • The location where the loss is primarily incurred
  • The location of relevant witnesses

Depending on the objectives of the claimant, an OSP may sometimes only require the commencement of legal action as proof of ownership. In such case, a claimant in Hong Kong may opt to file a writ without further pursuing the matter by serving the writ on the defendant. If the writ remains unserved within one year from the date of its filing, it will automatically expire without any consequences to the claimant.

Conclusion

While navigating jurisdictional complexities can sometimes be daunting, copyright owners can strategically choose where to initiate legal action based on critical factors such as the locations of the owner and the infringer, the nature of their losses, and their imminent and long-term objectives.

In particular, when the infringing act or content in question is connected to Hong Kong, the evolving interpretation of “targeting” enhances the prospects for legal redress in the region. This shift allows copyright owners to leverage local legislation more effectively, ensuring their rights are protected against infringement in this increasingly borderless world.

Disclaimer: This article is for reference only. Nothing herein shall be construed as Hong Kong legal advice or any legal advice for that matter to any person. Oldham, Li & Nie shall not be held liable for any loss and/or damage incurred by any person acting as a result of the materials contained in this article.