New Weapons To Combat Copyright Pirates

 

Sri Richgopinath provides an overview of the proposed amendments to the Copyright Act 1987

 

Malaysia is still placed on the “Watch List” of the 2011 Special 301 Report ("301 Report") that was published by the Office of the United States Trade Representative ("USTR") in April 2011.

Since 2006, the USTR has recommended the amendment of the outdated Copyright Act 1987 ("Act") to fully implement the World Intellectual Property Organisation's Copyright Treaty and Performances and Phonograms Treaty and the continuation of enforcement actions to combat the growing problem of piracy on the internet. Last year, the USTR also recommended that Malaysia consider adopting legislation to address unauthorised camcording in cinemas.

The Copyright (Amendment) Bill 2010 ("Bill") that has been tabled before the Dewan Rakyat proposes significant amendments to the Act. The Bill substantially adopts the recommendations by the USTR as described above.

Amongst others, the Bill will introduce a voluntary mechanism for notification of copyright works, anti-camcording provisions, impose responsibilities and set limitations on the liability of internet service providers and strengthen the regulatory framework in the battle against copyright pirates.

 

NOTIFICATION OF COPYRIGHT

The Bill will introduce new provisions (Sections 26A to 26C) whereby a Register of Copyright ("Register") will be maintained by the Controller of Copyright ("Controller"). The author or owner of a work, or an assignee or licensee thereof, may notify the Controller of the existence of copyright in the work by providing prescribed particulars and upon payment of a prescribed fee.

The Register is open for examination by any person who may obtain certified extracts of the same upon payment of a prescribed fee.

A copyright is a property right that subsists in certain types of works provided for under the Act. This right is conferred automatically and is governed by the Berne Convention to which Malaysia is a signatory since 1990. The Berne Convention does not provide for a regime for registration of copyright. This means that copyright will subsist in a work irrespective of whether it is registered or not.

To avoid any doubt that the proposed copyright notification regime will not change the basis on which copyright is conferred under the Act, the explanatory notes to the Bill state that the proposed Register is merely a voluntary notification system which "does not impede the requirement of non-formality for the enjoyment and exercise of the copyright protection under the Berne Convention."

A comparison can be made with the copyright regime in the United States of America. The United States already had an internal registration mechanism for copyright works before it became a signatory to the Berne Convention in 1989. It retained its internal registration mechanism despite becoming a signatory.

As registration is not a requirement for protection under the Berne Convention, copyright law in the United States provides several incentives to encourage copyright owners to register their works. Some of the incentives are as follows –

 

  • Registration made within 5 years of publication will be prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate;
  • Statutory damages and recovery of attorney’s fees will be available to the copyright owner in court actions if registration is made within 3 months of publication or prior to an infringement of the work;
  • Registration will enable the copyright owner to record the registration with the customs service for protection against importation of infringing copies.

 

The new sub-section (5) of Section 26B provides that a certified true extract of the Register is prima facie evidence of the particulars entered in the Register and that such extract is admissible in all courts. This means that once notification of copyright has been recorded in the Register, the onus of disproving that copyright subsists in the work shifts to the infringer.

The owner of a copyright who takes advantage of the copyright notification regime can therefore bypass the often difficult task of proving the subsistence of copyright in an action against an infringer.

However, it remains to be seen whether the Malaysian Government will provide any other incentives, such as those which subsist in the United States, to encourage copyright owners to submit notification of copyright for entry into the Register.

 

ANTI-CAMCORDING

 

The proposed Section 43A makes it an offence to operate any audiovisual recording device in a screening room (i.e. cinema) to record any film. An attempt to do so also constitutes an offence.

The current provisions of the Act merely make it an offence to make for sale, sell, distribute and import pirated goods. The introduction of Section 43A makes it clear that an act of recording a film in a screening room is strictly prohibited. Therefore, it is a significant development in measures taken to curb piracy in Malaysia, which is one of the issues highlighted by the USTR in 2010.

 

RESPONSIBILITY OF INTERNET SERVICE PROVIDER

The proposed new Sections 43B to 43I set out the responsibilities of internet service providers ("service provider") to address issues relating to copyright infringement on the internet.

Presently, a service provider may be held liable for copyright infringement pursuant to Section 36(1) read together with Sections 13(1)(a) and 13(1)(aa) of the Act for reproducing in a material form or communicating to the public copyright work without the permission of the owner.

 

Exemption from liability

The proposed new Sections 43C to 43E exempt a service provider from liability for copyright infringement by reason of the following activities –

 

  • transmitting, routing or providing connections of an electronic copy of the work through its primary network or any transient storage of the electronic copy of the work in the course of the aforesaid activities (Section 43C);
  • making any electronic copy (system caching) of the work from an electronic copy of the work made available on an originating network, or through an automatic process, or in response to an action by a user of the service provider's primary network, or to facilitate efficient access to the work by a user (Section 43D);
  • storing an electronic copy of the work at the direction of a user of the service provider's primary network or linking a user to an online location on an originating network at which an electronic copy of the work is made available by the use of an information tool such as a hyperlink or directory, or an information location service such as a search engine (Section 43E).

 

A service provider must satisfy the various conditions set out in Sections 43C to 43E in order to obtain the benefit of the exemptions under the respective provisions.

 

Take-down provision

The proposed Section 43H confers the right on the owner of a copyright which has been infringed to notify (in the manner determined by the Minister) a service provider to remove or disable access to the electronic copy on the service provider's network. A service provider who has received a notification as aforesaid is required to remove or disable access to the infringing electronic copy on its network within 48 hours from the time of receipt of the notification. Otherwise, the service provider may be held liable for the infringing activity.

The person whose electronic copy of the work was removed or to which access has been disabled may issue a counter-notification (in the manner determined by the Minister) to the service provider, requiring the latter to restore the electronic copy or access to it. The service provider must promptly provide a copy of the counter-notification to the issuer of the notification and inform him that the removed material or access to such material will be restored in 10 business days.

The service provider must restore the removed material or access to it not less than 10 business days after its receipt of the counter-notification, unless it receives a further notification from the issuer of the notification that he has filed an action seeking a court order to restrain the issuer of the counter-notification from engaging in any infringing activity in relation to the material on the service provider's network.

Section 43H requires the owner of the copyright to compensate the service provider or any other person against any damages, loss or liability arising from the service provider's compliance with the notification. The provision also imposes a corresponding obligation on the issuer of a counter-notification.

The section also renders it an offence for a person who issues a notice to make any statement which is false, which he knows to be false or does not believe to be true, and which touches on any point material to the object of the notice. For this purpose, a person who makes a statement outside Malaysia may be dealt with as if the offence was committed in Malaysia.

One of the issues in relation to Sections 43B to 43I is the scope of the term “service provider”. The definition provided in Section 43B is wide enough to encompass internet service providers (e.g. TMNet and P1) as well as any person who provides or operates facilities for online services or network access. Therefore, it is possible for the operators of websites, such as Facebook and YouTube, to fall within the definition of “service provider” for the purposes of the aforementioned provisions.

 

STRENGTHENING THE POWERS OF ENFORCEMENT

 

The proposed Section 45A extends the powers of search and seizure by authorised officers under Section 44 of the Act to include the right of access to any computerized or digitalized data stored in a computer or any other medium.

A new Section 50B gives the Public Prosecutor the power to allow authorised officers to intercept or to listen to any communications that is likely to contain information that is relevant for the purpose of any investigation into an offence under the Act.

The proposed Section 51A provides for the admissibility of evidence given by an agent provocateur (e.g. trap purchaser). The purpose of this provision is to eliminate any allegation of entrapment by the accused person.

A new Section 52A will make it an offence to disclose information in relation to an investigation in such a manner which is likely to prejudice the investigation. This covers tipping-off situations and is applicable not only to the public but also to any officers who are privy to the information.

 

CONCLUSION

The amendments to be introduced under the Bill are much welcomed as a revamp of the outdated Act is long overdue.

The regime of voluntary notification of copyright will greatly assist owners of copyright to discharge the burden of proving the existence of copyright.

There will finally be provisions that set out the responsibilities and liabilities of internet service providers and website operators. However, these provisions are ambiguous and more studies should be conducted into refining and clarifying the same.

The anti-camcording provisions coupled with the Optical Discs Act 2000 show that the Malaysian Government is taking serious steps to combat copyright piracy in Malaysia.

To quote Datuk Seri Ismail Sabri Yaakob, the Minister of Domestic Trade, Cooperatives and Consumerism, “We hope steps taken by my ministry to combat the menace will be noticed by the US authorities and they will take us off the list (the Special 301 Report’s Watch List)” ("Malaysia may be out of DVD piracy watch list", The Star Online, 10 March 2010).

 

SRI RICHGOPINATH ( This e-mail address is being protected from spambots. You need JavaScript enabled to view it )

 

 
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