Police v Ah Chong [2011] WSSC 1 (20 January 2011)

IN THE SUPREME COURT OF SAMOA
HELD AT MULINU'U

BETWEEN:

POLICE
Prosecution

AND:

ROMEO AH CHONG of Saleufi.
Defendant

Counsel: L Taimalelagi for prosecution
L R Schuster for defendant

Sentence: 20 January 2011

SENTENCE BY SAPOLU CJ

The charges

1. This is only the second prosecution for copyright infringement that has come before the Samoan Courts. It involves forty-three (43) charges of rental of an audiovisual work, namely, a digital video disc (DVD) of a movie, in contravention of s.6 (1) (e) of the Copyright Act 1998. In terms of s.27 (1) of the Act, the maximum penalty for each charge is a fine not exceeding 250 penalty units, which appears from the prosecution's summary of facts to be equivalent to $25,000, or a maximum term of imprisonment not exceeding 5 years, or both.
   
2. The defendant had initially entered a not guilty plea to all the charges against him. However, on the morning of the hearing of this matter the prosecution withdrew a number of the charges. In consequence, the defendant vacated his not guilty plea and entered a plea of guilty to the 43 remaining charges. It is on those remaining charges that the defendant is now appearing for sentence.
   

The relevant provisions of the Copyright Act 1998

3. As this is only the second copyright prosecution in Samoa, it will be appropriate to refer briefly to the relevant provisions of the Copyright Act 1998.
   
4. The term "audiovisual work" is defined in s.2 of the Act as follows:
   

"'Audiovisual work' means a work that consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible, and where accompanied by sounds, susceptible of being made audible"

5. A film or movie consists of a series of related images of a motion picture which are susceptible of being made visible. A film or movie is normally accompanied by sounds which makes it susceptible of being made audible. It follows that a digital video disc (DVD) of a movie would be an "audiovisual work" in terms of the definition of that term in s.2.
   
6. Section 6 (1) of the Act gives the owner of copyright certain economic rights. In terms of s.6 (1) (e), these economic rights of the owner of copyright include the exclusive right to carry out or to authorise rental of the original or a copy of an audiovisual work. It is this economic right of the owner of copyright under s.6 (1) (e) which is alleged by the prosecution to have been infringed by the defendant.
   
7. Section 27 (1) of the Act then provides:
   

"'(1) Any infringement of a right protected under this Act, if committed willfully or by gross negligence and for profit – making purposes, shall be punished by a maximum fine of not exceeding 250 penalty units where the offence involves the breach of copyright relating to a computer or computer program, and in every other case, or to imprisonment for a term not exceeding five years or both. The amount of the fine shall be fixed by the Court, taking into particular account the defendant's profits attributable to the infringement".

8. Section 27 (3) empowers the Court to apply the measures and remedies referred to in ss. 25 and 26 in criminal proceedings if there have been no civil proceedings.
   

The facts

9. The defendant is a businessman and a planter. He owns a video shop in Apia. It is called Video Shack. As the name of the shop implies, its business involves the hiring out of DVDs to the public.
   
10. According to the prosecution's summary of facts, on Wednesday evening 22 August 2007, the police executed a search warrant at the defendant's Video Shack following reports of DVD piracy. The term "piracy" is used in this context to refer to dealing in commercial copyright infringement: R v Houston (2006) (CRI 2004 – 92 – 1040: judgment of the New Zealand District Court at Manukau delivered on 25 August 2006 by Harvey DCJ).
    
11. The items found and seized by the police from the defendant's video shop included one colour printer, one laptop, one DVD burner, DVD copies of various movie titles, and a receipt book. The said DVD copies were pirated products, that is to say, they were infringing copies made without the authorisation of the owners of the copyrights in the movies.
    
12. The DVD burner seized from the defendant's video shop had three DVD drives which can copy three DVDs at one time thus making mass production of DVDs faster and easier. The term "burn" in this context seems to mean "copy" or "make a copy": New Zealand Police v Felafoai Vile (2006) (Sentence passed by the New Zealand District Court at Manukau by Harvey DCJ. So a burner would be a device used to make an infringing copy of a copyright DVD. The colour printer seized by the police was used to print a movie title and artwork on a DVD's exterior and the movie cover picture on the plastic DVD itself. The DVD copies that were seized had movie titles printed on the exterior in computer form. Computer software tools for burning DVDs were also discovered in the laptop seized by the police. All of this clearly shows that the defendant's video shop was engaged in making pirated DVD copies. The operation also involved a high level of sophistication and clearly displays a high degree of premeditation.
    
13. The receipt book seized by the police shows that a number of infringing DVD copies of movie titles were rented out to the public at a fee. Such DVD copies were rented out prior to the official release dates of the DVDs without the authorisation of the copyright owners, namely, Paramount Pictures NZ Ltd and Twentieth Century Fox Corporation. The infringing DVD copies that were rented out to the public were of the movies "Transformers", "Die Hard", Fantastic", and "Shrek". This was done from 21-28 July 2007. So the defendant's business was not only involved in making infringing DVD copies but also in renting out such DVD copies to the public.
    
14. It was conceded on behalf of the defendant that the infringing DVD copies were rented at $10.00 each. So the total revenue the defendant would have earned from the 43 counts with which he is being charged would be $430. Counsel for the defendant told the Court that that is the total profit made by the defendant from the rentals.
    

The defendant

15. The defendant is 50 years of age. He is both a businessman and a planter. He is also a well-known figure in Samoan rugby. He represented Samoa in the under 19 and under 20 national rugby teams. He was the coach of the Samoa Sevens Team from 1997-2003. In 1998 and 2003 he was both coach and manager of our Sevens Team. In 2005, he became the manager of the Manu Samoa 15s Team. The testimonial from the Samoa Rugby Union testifies that the defendant is a highly competent and capable rugby administrator and a dedicated and honest servant of Samoan Rugby. The testimonial from the defendant's church shows him to be an honest and trustworthy person. At the age of 50 years, the defendant is also a first offender. So this offending is out of character.
    
16. The defendant and his wife have also repeatedly aplogised to the owner of Magik Cinemas Ltd which is the local agent and distributor for the owners of the copyrights in the movies copied in the infringing DVDs. The owner of the Magik Cinemas Ltd has fully forgiven the defendant and has even written to the prosecution to withdraw all charges against the defendant.
    
17. The defendant also told the probation service that the counterfeit DVDs were brought into the country by his sister's children and they started renting out infringing copies to the public using his video shop until 2007. That statement, of course, was not the subject of cross-examination by the prosecution.
    

Aggravating factors

18. This is a case of commercial infringement of copyright. Not only were the infringing DVDs made in the defendant's video shop but they were also rented out to the public. The type of implements and materials that were used to make the infringing DVDs show that this operation involved a high level of sophistication and therefore a high degree of premeditation.
    
19. Copyright infringement also involves dishonesty. It is analogous to theft. In the case of R v Houston (2006) (CRI 2004 – 92 – 14030; judgment of the New Zealand District Court at Manukau delivered on 25 August 2006) cited by counsel for the prosecution, Harvey DCJ describes copyright infringement of a movie as "film theft". In R v Carter (1992) 13 Cr App R (S) 576, the English Court of Appeal, Criminal Division, said at p.577:
    

"[To] make and distribute pirate copies of films is to steal from the true owner of the copyright, the property for which he has to expend money in order to possess it. It is an offence really of dishonesty".

20. In R v Duckett [2009] EWCA Crim 88; [1998] 2 Cr App R (S) 59 at p.60, the English Court of Appeal, Criminal Division, said:
    

"Infringement of copyright is widespread. It does, in an ethical sense, involve stealing other men's property".

21. Even though the total amount of profit derived from the rental of pirated DVDs in this case is modest, it is the motive for unlawful profit at the expense of the owner of copyright and the actual and potential consequences which may follow that make this type of offending very serious. If the defendant's business had purchased the pirated material legitimately, it would have cost it a lot more money. But that was avoided by pirating the infringing material in order to increase personal gain.
    
22. The detrimental impact (actual and potential) of the present offending on its immediate victim the Magik Cinemas Ltd which seems to be the authorised local distributor for the owners of the copyrights in the pirated movies is also to be taken into account.
    

Mitigating factors

23. The defendant's plea of guilty to the charges, though belated, is a mitigating factor. I say this because the number of charges against the defendant that were withdrawn suggests that he might have pleaded guilty earlier if those charges had been withdrawn earlier than the morning the trial was to start.
    
24. The defendant at the age of 50 years is also a first offender. He is a person of good character. As the pre-sentence report and the attached testimonials show, this offending is out of character.
    
25. I also accept that the defendant has learnt his lesson and that he is genuinely remorseful. It is highly unlikely that he will re-offend in the future. This matter has also been settled between the defendant and the complainant.
    
26. I also take into account the defendant's long and outstanding service to Samoan Rugby not only as a player but especially as a coach and administrator. It is unfortunate for the defendant that after such a long and outstanding career in rugby he got himself involved in this offending. I am confident that he has fully appreciated the gravity of his offending and will not appear in Court again.
    

Policies behind copyright legislation

27. As this is not a familiar or well-known area of Samoan law, I think it is appropriate to refer to the policy considerations behind copyright legislations which are designed for the protection of owners of copyrights generally. In R v Houston (supra), Harvey DCJ said at paras [14] and [15]:
    

"[14] [In] considering the sentencing process as far as copyright infringement is concerned, one must actually look at the policies that are in existence behind [the copyright] legislation. There is a significant community interest as far as copyright infringement is concerned. Our copyright regime is set up to protect those who as a result of their initiative and innovation produce products which other people can enjoy. The onset of the digital age means that copying items when they are produced in digital format like DVDs is very, very easy indeed and there are a number of ways in which copyright owners can try to protect their property, such as technological protection measures as is the case with DVDs and they have to be circumvented by those involved in piracy. That of course pre-supposes a high level in my view of premeditation and planning.

[15] The artists, the actors, the producers, the authors, the composers, all provide material for the benefit of the community both for enjoyment, and more importantly, for cultural advancement. Underlying copyright is a very heavy element of cultural protection and cultural development. Those who involve themselves in copyright infringement and matters of that nature prejudice not only the makers of the product, the authors, the movie makers, the artists, the bands, the record companies, but they also prejudice the greater community because what happens as a result of the piracy is that prices must increase, access to material becomes difficult and of course the desire of authors and innovators to engage in creative activity becomes lessened if they feel that people are going to be ripping them off. So there is a very large community interest involved in ensuring that a copyright regime is maintained and protected".

28. As to the potential impact of copyright infringement, Harvey DCJ said in R v Houston (supra) at paras [21] and [22]:
    

"[21] What we have to remember is that copyright infringement causes losses and the losses may be direct or indirect. Most of them of course are indirect. They involve losses of royalties that would otherwise be received from the sale of copyright works by artists and the whole theory that underlies copyright is that a monopoly is given to the copyright owner to control the copying of works so that the copyright owner will be able to exploit and derive an income from the sale of the work and be encouraged to continue to produce creative works for the benefit of the community. And there are those permitted uses which do allow a certain limited level of copying so that we can improve and enhance some of the cultural benefits that the work provides. It is all part of a carefully designed statutorily created social contract for the benefit of artists and for the benefit of the wider community.

[22] It is important to remember however that it is not only the artists who suffer. It is also the creators, the writers of songs, the actors in the movies. It is everyone else associated with that, the record producers, the session musicians in the cases of music, or the movie producers, the distributors, every person who is involved in that long list of credits at the end of a movie is going to be affected by copyright infringement, and particularly commercially based copyright infringement".

29. His Honour at para [23] of his decision then refers to the matters to be taken into account in considering the appropriate sentence for copyright infringement. I need not list those matters but the matters relevant to this case have already been taken into account.
    
30. In the Australian copyright infringement case of Vu v New South Wales Police Service [2007] FCA 1508, Rares J says at paras 33 and 34:
    

"33. One purpose of providing copyright protection to those who own or have the right to licence copyright material is to enable that person to exploit an exclusive legal right to earn a return from it. That right among other things, enables authors or the creators of original works such as films or other entertainments to receive royalties. Copyright protects their intellectual property from being appropriated and sold by persons who have no legal right to use or to exploit it. In particular the protection of the copyright owner's rights which the [Copyright]. Act creates is intended to prevent strangers using the copyright material without providing any recognition or return to those who created it or did the work to produce it.

34 In a colloquial, but real, sense, to counterfeit, sell or hire DVDs is equivalent to stealing the author's, creator's or owner's work which is contained in the reproduction..."

The decision

31. We have had only one previous prosecution under the Copyright Act 1998. That is the case of Police v Falevalu [2007] WSSC 63 which was concerned with the copyright infringement of a musical work in the form of a compact disc (CD). The defendant in that case was penalised with a total fine of $400 and the infringing materials seized by the police were ordered to be destroyed. So there is very little guidance in this area of Samoan law. However, some assistance is given by the prosecution seeking a monetary fine instead of a custodial sentence.
    
32. In my opinion, a monetary fine is appropriate in this case given the aggravating and mitigating factors. In saying so, I have not overlooked the very serious nature of this type of offending which is reflected in the high maximum penalties of $25,000 fine or 5 years imprisonment or both provided by Parliament. I have also not overlooked the extent of the offending and the fact that it covered a period of only about seven days from 21-28 July 2007.
    
33. I also have to bear in mind the need for special deterrence so that the offender will be discouraged from re-offending as well as the need for general deterrence so that potential offenders will be discouraged from being tempted to commit copyright infringement.
    
34. I also have to take into account the total gravity of the offending. This is not a case of one but 34 charges of copyright infringement. Applying the totality principle, I impose a total fine of $2,500. This fine is to be paid in four weeks. The DVD burner, the software tools, the infringing DVDs and copies, as well as the receipt book used in the commission of these offences and seized by the police are to be destroyed. The prosecution has not sought an order for reparation. May be they have reasons for not doing so. I therefore make no order in that regard.
    
35. It remains for me to thank counsel for the production of the decision in R v Houston by Harvey DCJ and other sentencing decisions on copyright infringement by the same Judge. I have found those decisions very helpful.
    

CHIEF JUSTICE

Solicitor
Attorney General's Office, Apia for prosecution
Schuster Law Firm for defendant