Copyright Infringement by a Streaming Device – Is this the Beginning of the End for TV Boxes in Malaysia?
Wendy Lee Wan Chieh, Shook Lin & Bok (Malaysia)
In a much-lauded decision, the Malaysian Intellectual Property Court found on 24th May 2021 that the sale or distribution of TV boxes or illicit streaming devices that are able to provide unauthorised access to works protected by copyright would amount to copyright infringement under the Copyright Act 1987.
In the case of Measat Broadcast Network Systems Sdn Bhd v Koo Kok Wee (Civil Suit No. WA-22IP-61-10/2020), the plaintiff (“Measat”) filed an action against the defendant (“Koo”) for copyright infringement.
Koo had been selling, offering for sale, distributing and / or supplying streaming devices (more commonly known as TV boxes) which were pre-loaded or pre-installed with software applications or add-ons which provided unauthorised access to work which were protected by copyright without the consent or license of copyright owners. Amongst the works were films owned by Measat and Measat therefore claimed that Koo had infringed its copyright.
Measat’s ownership in its works were not disputed, and the core issue to be determined in so far as copyright infringement was concerned was whether Koo’s act of distributing TV boxes fell within the definition of “communication to public” under the Copyright Act 1987. Hence, Measat applied for summary disposal of the action on the determination of the following questions of law:-
a) Whether an act of selling, offering for sale, distributing and / or supplying a device, including a TV box, that provides unauthorised access to copyrighted works without the consent or license of the copyright owners is an infringement of the exclusive right of communication to the public within the meaning of Sections 3 and 13 of the Copyright Act 1987; and
b) If yes to (a), whether an act of selling, offering for sale, distributing and / or supplying a device, including a TV box, that provides unauthorised access to copyrighted works without the consent or license of the copyright owners is an act of copyright infringement under Section 36 of the Copyright Act 1987.
In this regard, Measat argued that actual transmission a work is not required to be proved to satisfy the requirement of “communication to the public” in circumstances where a work is made available in such a way that a member of the public may access it from a place and time individually chosen by them.
The Court agreed with the submission of Measat’s counsel and found that Koo’s act of selling or making available such TV boxes to the public fell within the requirement of “communication to the public”, and therefore answered Question (a) in the affirmative. With an affirmative answer to Question (a), the learned Judge proceeded to answer Question (b) in the affirmative as well, and found Koo to have infringed Measat’s copyright. No appeal was filed subsequent to the finding of the High Court.
While the learned Judge qualified his decision by confining it to the facts and evidence before the Court, this decision puts Malaysia one step closer to joining the ranks of countries that have taken a stringent stance in finding copyright infringement in similar fact cases. It is therefore a much-welcomed development which would hopefully open more doors for copyright owners to enforce their rights against infringers.