The Copyright (Amendment) Act 2022 (“CAA”)
Eugene Ee and Kok Eu Jin discuss the key changes to the Copyright Act 1987 introduced by the CAA.
The CAA recently received royal assent on 26 January 2022 and came into force on 18 March 2022 save for certain provisions which are pending Malaysia’s accession to the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled 2013 (“Marrakesh Treaty”). The key changes introduced by the CAA broadly encompass three areas, namely:
(i) exemptions to copyright infringements under the Copyright Act 1987 (“CA 1987”) in line with Malaysia’s impending accession to the Marrakesh Treaty;
(ii) changes to the collective management organization system; and
(iii) new offences to address the advent of streaming technology.
EXEMPTION TO COPYRIGHT INFRINGEMENT FOR PERSONS WITH DISABILITIES
The Marrakesh Treaty is administered by the World Intellectual Property Organisation (“WIPO”) with the aim of helping people who are blind, visually impaired or otherwise print-disabled to have access to books and other literary works in accessible formats. Signatories to the Marrakesh Treaty will be able to access publications in Braille and in large print, audio and digital formats, and other reading materials without the threat of copyright infringements.
Towards this end, several provisions in the CA 1987 have been amended to include new exemptions to copyright infringement that cater to the making and distribution of an accessible format copy of any copyrighted work for the exclusive use of a person with print disability. A “person with print disability” has been defined to mean a person who is registered as a person with disability under the Persons with Disabilities Act 2008 who is (i) blind; (ii) visually impaired or has a perceptual or reading disability which cannot be improved to give visual function substantially equivalent to that of a person without such impairment or disability, and due to such impairment or disability is unable to read printed works to substantially the same degree as a person without such impairment or disability; or (iii) unable to hold or manipulate a book or to focus or move the eyes, to the extent that would be normally acceptable to read due to physical disability.
CHANGES TO THE COLLECTIVE MANAGEMENT ORGANISATION SYSTEM
The CAA replaces all references to ‘licensing bodies’ appearing in the CA 1987 with the term ‘collective management organisation’ (“CMO”), which is in line with the term used by WIPO to refer to an organisation that manages the rights of copyright owners, authors, performers and other rights holders.
Pursuant to the new amendments, only a company limited by guarantee may apply to be declared as a CMO for a renewable period of two years. Previously, any society or organisation could apply to be declared as a CMO for an indefinite period. A key change introduced by the CAA is that the functions of the different CMOs are no longer allowed to overlap with one another.
The new section 27M of the CA 1987 empowers the Controller of Copyright (“Controller”) to issue guidelines relating to the declaration and operation of a CMO. The failure to comply with such guidelines may result in the revocation of the declaration given to a CMO.
NEW OFFENCES RELATING TO STREAMING TECHNOLOGY
The development and popularity of online content streaming in recent years have witnessed the proliferation in the sale of illicit streaming devices (“ISDs”) or commonly known as TV boxes that facilitate the infringement of copyrighted content. To counter this, a new Part VIAA has been introduced into the CA 1987 which makes it an offence for anyone to manufacture, import, sell, possess, distribute or provide any service of streaming technology – which includes any computer program, device or component which when used, whether in part or in whole, results in an infringement of the copyright in a work.
This amendment comes on the back of a recent unreported High Court decision in Measat Broadcast Network Systems Sdn Bhd v Koo Kok Wee (Civil Suit No. WA-22IP-61-10/2020) which declared that the sale, offer for sale, distribution and/ or supply of TV boxes that can provide unauthorised access to copyrighted works to constitute copyright infringement under the CA 1987.
In the case where an offence is committed by a body corporate or by a partner in a firm, any person who is responsible for the management of the affairs of the body corporate or firm shall be deemed to be guilty of the offence and may be charged severally or jointly in the same proceedings with the body corporate or firm unless he proves that the offence was committed without his consent or connivance and that he has exercised all due diligence to prevent the commission of the offence.
Any person who has been convicted for an offence under Part VIAA shall be liable to a fine of between RM10,000 (approx. US$2,500) to RM200,000 (approx. US$50,000) or to a maximum imprisonment term of 20 years or to both.
In connection with the above, the newly enacted subsection 41(1)(k) makes it an offence for any person to provide or share access to an online location of any works or copies of works to any other person without authority.
OTHER NOTABLE AMENDMENTS
- The right of an author of a work or a licensee to apply for a voluntary notification of copyright has now been removed by the CAA. Moving forward, only the owner or an assignee of the copyright may apply for such notification. Further, the applicant will no longer be required to attach a statutory declaration stating that it is the owner or assignee of the work when making the notification.
- Under the new section 41A, the Minister is empowered to prescribe any offence to be a compoundable offence and prescribe the method and procedure for compounding such offence. A compound may be issued for any compoundable offence before prosecution is instituted provided that the amount compounded shall not exceed 50% of the amount of the maximum fine to which the person would have been liable to if he had been convicted of the offence.
- The CAA also confers additional investigative and enforcement powers on the Assistant Controller including the power to search for and seize any infringing copies which are prohibited from being imported into Malaysia on his own initiative without an application being made by the copyright owner beforehand; to direct the copyright owner or authorised person to make a test purchase for the purpose of determining compliance with the CA 1987; and to direct any person to provide or produce any document or information that is relevant to the performance of the Assistant Controller’s powers and functions under the CA 1987.
The timely amendments introduced by the CAA represent a significant milestone in the development of copyright laws in Malaysia that would certainly be welcomed by various quarters. With Malaysia’s accession to the Marrakesh Treaty on the cards, the visually impaired community stands to greatly benefit from the enforcement of the CAA as it will be easier for them to have access to reading materials that cater to their needs without being wary of possible copyright infringement and thus, a step closer to ending what many have referred to as the “book famine”.
While attempts to create a CMO in the past have resulted in operational issues and the dissolution of Music Rights Malaysia Berhad, it is also hoped that the enhancement to the CMO system will not only provide much needed clarity and practical solutions to the stakeholders in the music industry but also to members of the public in general who wish to obtain licenses from the CMOs.
Lastly, the introduction of the new Part VIAA on the offences relating to streaming technology coupled with the additional investigative and enforcement powers conferred upon the enforcement authorities would likely spur the enforcement authorities’ efforts in combating the blatant sale of ISDs in public and accordingly, address the issue of illegal content streaming in Malaysia.
Eugene is a Senior Associate at Wong Jin Nee & Teo. Apart from representing the firm’s clients in contentious IP matters, Eugene’s practice includes brand enforcement and advisory on regulatory compliance matters.
Eu Jin is an Associate at Wong Jin Nee & Teo. His practice focuses on enforcement, brand protection, as well as commercial and compliance matters including data protection issues.