Blocking of illegal streaming websites in Malaysia

Despite the persistent enforcement efforts of content owners and law enforcement authorities, pirated content ranging from movies, music, software to even live sports remain rampant and easily accessible through innumerable illegal online streaming websites and platforms in Malaysia. Its negative impact is significant. In 2016, the Malaysian film and broadcasting industry suffered revenue losses of RM1.05 billion and approximately 1,900 people lost their jobs while the Malaysian government lost tax revenue of RM157 million. 1 In 2019, the numbers continued to rise resulting in the local media industry losing RM2.3 billion in revenue.2 1 2 ILLEGAL STREAMING WEBSITES IN MALAYSIA BLOCKING OF CURRENT GOVERNMENT INITIATIVES The relevant authorities involved in tackling illegal streaming sites are the Malaysian Communications and Multimedia Commission (“MCMC”) and the the Enforcement Division of the Ministry of Domestic Trade and Cost of Living (“MDT”). The former regulates the communications and multimedia industry based on powers provided for in the Communications and Multimedia Act 1998 (“CMA”) which broadly covers all media and internet services as well as service providers. On the other hand, the MDT is generally tasked with, amongst others, enforcing intellectual property rights based on powers provided in various legislations including the Copyright Act 1987 (“CA”). That said, the blocking of access to illegal streaming websites would require the involvement and compliance by internet service providers (“ISPs”) as discussed below. In 2021, the MDT established the Cyber Copyright Enforcement (CyCORE) programme as a platform for 1 https://www.mcmc.gov.my/ms/media/press-releases/mcmc-rallies-efforts-to-curb-digital-piracy 2 https://themalaysianreserve.com/2021/10/14/astro-may-lose-to-media-piracy-says-analyst/ Novitas March 2023 Blocking of Illegal Streaming Websites in Malaysia 2 THE GOVERNING LAWS IN PRACTICE local content owners to collaborate with the authorities to combat copyright infringement or digital film piracy. The CyCORE programme resulted in the blocking of 298 websites and 1,418 content removals since its launch. The MDT and MCMC have also taken actions against dealers or sellers of Android-based TV boxes which stream pirated content and blocked many major peer-to-peer torrent websites such as thepiratebay. In brief, section 43H of the CA is the only provision specifically addressing the matter. It provides content owners the option of notifying ISPs of any infringement of their content online. The ISPs are then required to disable access to infringing copies of the content owners’ copyrighted content on their networks. This is provided that the content owners undertake to indemnify the ISPs or any other person if the ISPs comply with such notifications. If a notification is issued under section 43H of the CA, the ISPs are required to block access to infringing electronic copies or streams on their networks within 48 hours upon receiving suwch notification. The said provision then essentially goes on to detail further steps including, among others, that the owner of the blocked website may issue counter-notifications in response to the notifications submitted by the content owners. Under section 263 of the CMA, ISPs owe a general duty, upon the written request by the MCMC or other authorities, as far as reasonably necessary to assist the MCMC in preventing the commission of an offence under any written law of Malaysia or otherwise, in the enforcement of the laws of Malaysia. Notwithstanding the provisions regulating access to illegal content, the CA does not set out the manner or method of issuing such notifications to the ISPs. In practice, a separate complaints procedure involving the MDT and the MCMC has developed independently and differ from the steps laid down in Section 43H of the CA. Content owners can now lodge complaints with the MDT, being the relevant law enforcement authority, which receives complaints and requests for site blocking against illegal streaming sites. When lodging complaints with the MDT, the following supporting documents are required to be submitted: (a) a statutory declaration claiming copyright ownership; (b) a list of illegal streaming websites; and (c) a Letter of Authorisation or Power of Attorney authorising an authorised representative to lodge the complaint on behalf of the content/copyright owner (as applicable). Content owners can now lodge complaints with the MDT, being the relevant law enforcement authority, which receives complaints and requests for site blocking against illegal streaming sites. 3 Blocking of Illegal Streaming Websites in Malaysia Novitas March 2023 “STREAM”-LINING THE FUTURE The illegal streaming site blocking process may seem incoherent or akin to an endless game of whack-a-mole. That said, detailed guidelines from the authorities are expected in the future to streamline the complaint process to be more convenient and effective. Nevertheless, it is still worthwhile for content owners to seek professional advice and engage legal representatives to determine and carry out appropriate actions in protecting and enforcing their copyright and other intellectual property rights including lodging complaints with the MDT to block illegal streaming sites and pursue other remedies at their disposal. Upon receiving such complaint, the MDT will review the supporting information and documents submitted. The MDT will then co-operate with the MCMC which, in turn, directs the ISPs to block sub-domains confirmed to be illegally streaming infringing copies of copyrighted content or works. However, it is worth noting that the timeline from the lodgment of complaints by content owners or their authorised representatives to the MDT until the eventual blocking of access to illegal streaming sites by the ISPs may vary on a case-by-case basis. Further, while certain sub-domains containing infringing copies of copyrighted content may be successfully blocked, the identical infringing content may resurface on other similar sub-domains shortly thereafter. Wai Hoong is a Partner at Wong Jin Nee & Teo. He develops and implements online and offline brand enforcement and anti-counterfeiting programs for multinational clients across various industries. Marcus is an Associate at Wong Jin Nee & Teo. His practice predominantly focuses on brand protection and enforcement, licensing and franchising, as well as advertising compliance work. Novitas March 2023 4 Use it or lose it! High Court provides practical guidance for revocation actions under the Trademarks Act 2019 USE IT OR LOSE IT! BACKGROUND High Court provides practical guidance for revocation actions under the Trademarks Act 2019 Eugene Ee delves into a recent decision by the High Court which addresses some issues relating to revocation actions under the new Trademarks Act 2019. It is trite under trademark law that a registered trademark has to be cont