FACULTY OF LAW

INTELLECTUAL PROPERTY LAW I

LAW 536

INDIVIDUAL ASSIGNMENT

NAME : SITI NURANI BINTI MD ZAHIDI

STUDENT ID : 2011270612

GROUP : LWB05A

LECTURER : ASSOCIATE PROFESSOR ROHAZAR WATI ZUALLCOBLEY

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QUESTION

The reality of the global village is that creators and owners of copyright works have the

ability to enlarge their target audience. The downside is the inability to control infringing

used of their copyright works. Thus, the circumvention provision and the right management

information provision provided by the WIPO Copyright Treaty (WCT) seem to be an

adequate solution. Discuss the Malaysian response to the distribution work over the internet

today.

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ANSWER

In general, copyright refers to the exclusive rights given by law for a specific

term of years to the authors, composers and others to print, publish and sell the copies of their

original work. It is the exclusive right given to the owner of a copyright for a specific period

of time. Nevertheless, copyright is concerned not only with the rights of the copyright owners

of created works, but also with what are known as related rights which are the rights given to

the producers, publishers and performers. Copyright is essentially negative right and not

positive right, in which it does not confers on the copyright owner to do those acts, but

prevent those acts from happening. The rationale for copyright protection appears to be two-

fold, where it is first, to encourage progress in the arts and science or the benefit of the

public, and secondly, to secure a fair return for the creators of works so as to ensured

continued creativity.

In Malaysia, the law on copyright is governed under the Copyright Act 1987

which came into force on 1 December 1987. Other than that, with regards to the international

protection, Malaysia is a member of the World Intellectual Property Organisation (WIPO)

and a signatory to the Paris Convention and Berne Convention which govern these

intellectual property rights. In addition, Malaysia is also a signatory to the Agreement on

Trade Related Aspects of Intellectual Property Rights (TRIPS) signed under the auspices of

the World Trade Organisation (WTO). Malaysia had also ratified the WIPO Copyright Treaty

(WCT) and the WIPO Performance and Phonograms Treaty (WPPT).

The Digital Age has added new challenges to copyright law. In relation to

copyright in digital area, one of the issues worth mentioning is on the “circumvention of

technological barriers”. Literally, circumvention is a term that is used to refer to an act of

strategically avoiding something. In other words, it refers to a deliberate act of an individual

in avoiding a rule that restricts him from doing something, especially in a clever or dishonest

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way.1 In copyright world, the issue centred on the act of an individual in circumventing, or

cause or authorise anyone to circumvent, technological protection measures used by

copyright owners to protect their works, such as passwords, encryption, access codes, and

watermarking. Such technological protection measures are necessary to prevent copying and

restrict accessing to copyright works.

Other than that, another significant issue is on the “rights management

information”, which refers to the information embedded in, or affixed to copyrighted

material. It identifies the persons who hold rights to that material. Rights management

information also frequently specifies conditions of use of a work and often interacts with

technical devices that control access, track usage, and handle payments.2 In copyright world,

the problem concerning rights management information arose due to the existence of some

irresponsible individuals who purposely removes the electronic rights management

information of a work and distributing the work for the benefit of themselves.

These kinds of problems confronted by the copyright owners have given rise

to anti-circumvention and right management information provisions around the world, with

the intent to prohibit such acts. The requirement for these laws was globalized in 1996 with

the creation of the WIPO Copyright Treaty (WCT). This treaty requires countries to provide

not only the rights to themselves, but also two types of technological adjuncts to the rights.

These are intended to ensure that the copyright owners can effectively use technology to

protect their rights and to license their works online. The first, known as the “anti-

circumvention” provision, tackles the problem of hacking. The second type of technological

adjuncts safeguards the reliability and integrity of the online marketplace by requiring

countries to prohibit the deliberate alteration or deletion of electronic “rights management

information”.3

1 (2005). Longman dictionary of contemporary English. (4th ed., pp. 1-1949). England: Pearson Education Limited.

2 Assessing economic impacts of copyright reform on selected users and consumers, (2011, 10 19). Retrieved from http://www.ic.gc.ca/eic/site/ippd-dppi.nsf/eng/ip01188.html

3 International Bureau of WIPO. The advantages of adherence to the WIPO copyright treaty (WCT) and the WIPO performances and phonograms treaty (WPPT). 1-12. Retrieved from http://www.wipo.int/export/sites/www/copyright/en/activities/pdf/advantages_wct_wppt.pdf

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According to Article 11 of the WCT contracting states are obliged to provide

legal protection and legal remedies against the circumvention of technological measures that

are used by authors in connection with the exercise of their rights and that restrict acts which

are not authorised by them or permitted by law.4 Article 12 of the WCT requires contracting

parties to provide adequate and effective legal remedies against any person knowingly

performing an act of removing or altering any electronic rights management information

without authority or an act of distributing or broadcasting to the public of the works or copies

of works, without authority, knowing that electronic rights management information has been

removed or altered.5

The WCT have formed useful starting points for the amendments to

Malaysia’s copyright law for the digital era, even though at the time WCT was concluded,

Malaysia had not yet ratified the treaty. It was only in 2012 that Malaysia deposited at WIPO

its instrument of accession to the WCT where the treaty came into force locally on 27

December 2012.6

For the purpose of this assignment, we will start with the discussion on the

anti-circumvention provision in the Malaysia Copyright Act 1987. Under section 36A(1) of

the Malaysia Copyright Act1987, the general rule is that copyright is infringed by any person

who circumvents or causes any other person to circumvent any effective technological

measures that are used by authors in connection with the exercise of their rights under this

Act, and that restrict acts, in respect of their works, which are not authorised by the authors

concerned or permitted by law.7

The exceptions to that general rule are provided under Section 36A(2) of the

Act, where there are five situations in which the act of circumvention does not amounted to

an offence. The exceptions include the circumstances where the circumvention is done for the

sole purpose of achieving interoperability of an independently created computer program

4 WIPO Copyright Treaty (WCT). Art 11 5 WIPO Copyright Treaty (WCT). Art 12 6 HENRY GOH MALAYSIA. (n.d.). Malaysia commits to fuller copyright protection. Retrieved from

http://www.henrygoh.com/malaysia-law-practice-malaysia-commits-to-fuller-copyright-protection.html7 Malaysia Copyright Act 1987. Sec 36A(1)

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with the original program or any other programs; for the sole purpose of identifying and

analyzing flaws and vulnerabilities of encryption technology; for the sole purpose of testing,

investigating or correcting the security of a computer, computer system or computer network;

for the sole purpose of identifying and disabling an undisclosed capability to collect or

disseminate personally identifying information about the online activities of a natural person;

done in relation to anything lawfully done for the sole purpose of law enforcement, national

security, performing a statutory function; or done by a library, an archive or an educational

institution for the sole purpose of making an acquisition decision in relation to a work in

which copyright subsists.8

Section 36A was modelled on Article 11 of the WCT. This provision was

inserted following the development of digital era, in which copies of a protected work could

be made easily and without loss in quality and transmitted world-wide instantaneously. The

Internet has made the authorship of digital media a particularly complex issue. Thus, there is

a need for sufficient protection on the rights of the copyright owner over the works in the

digital environment. Accordingly, Malaysia have chose to treat the act of circumvention as an

infringement of copyright under Section 36A of Malaysia Copyright Act 1987, in its efforts

to ensure an adequate intellectual property framework in the digital environment.9

In defining the term “technological protection measures”, reference may be

made to Section 3 of the Malaysia Copyright Act 1987 which defines “technological

protection measures” as any technology, device or component that, in the normal course of its

operation, effectively prevents or limits the doing of any act that result in an infringement of

the copyright in a work.10 It can be seen that the provision of Section 36A(1) covers the

circumvention conduct or may be described as a provision which apply the “conduct

approach”.

8 Malaysia Copyright Act 1987. Section 36A(2)9 Tee, K. L. (2008). Copyright law in malaysia. (3rd ed., pp. 1-534). Malaysia: LexisNexis Malaysia Sdn Bhd.10 Malaysia Copyright Act 1987. Section 3

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An example of case is Creative Purpose Sdn. Bhd. & Anor v Integrated

Trans Corp Sdn Bhd & Ors,11 where Kamalanathan J found the liability of the defendant for

the circumvention of a “dongle”, a piece of hardware that is used by the plaintiff to secure the

work from unauthorized access

Malaysia has gone even further in dealing with the problem of circumvention

where the anti-circumvention provision through Section 36A(3) of the Malaysia Copyright

act 1987, which can be described as a provision which apply the “devices approach”. It

prohibits the act of manufacturing, importing, selling, exposing, advertising, possessing,

distributing and offering any technology, device or component for the purpose of the

circumvention of technological protection measure.12 This shows that the provision of anti-

circumvention in the Malaysia Copyright Act 1987 deals not only with behaviour (act of

circumvention), but it also extends to the manufacture, sale or distribution of technology,

tools or devices, or the posting of information, for enabling or assisting the activity of

circumvention. In fact, this a good move taken by Malaysia in protecting the copyright works

because in any event, most people will not undertake the time and effort to crack a copyright

protection measure on their own, in which they prefer to purchase devices or services that

defeat these measures.

However, an exception is that, the Minister for the time being charged with the

responsibility for intellectual property may prescribe any technology, device or component

which may operate as a technological protection measure to be exempted from the

application of this section.13

Other than the anti-circumvention provision, another important provision in

the Malaysia Copyright Act 1987 which related to the copyright protection in the digital era

is Section 36B. Section 36B provides the general rule relating to the rights management

information, in which it provides that, any person who knowingly removes or alters any

electronic rights management information without authority, or distributes, imports for

11 [1997] 2 MLJ 429.12 Malaysia Copyright Act 1987. Section 36A(3)13 Malaysia Copyright Act 1987. Section 36A(4)

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distribution or communication to the public, without authority, of works or copies of works

knowing that electronic rights management information has been removed or altered without

authority, commits a copyright infringement if he knows or has reasonable grounds to know

that his actions will induce, enable, facilitate or conceal an infringement of any right under

the Act.14

The exceptions to that general rule are provided under Section 36B(2) of the

Act, where there are two situations in which the act done in relation to the electronic rights

management information does not amounted to an offence. The exceptions cover situations

when the removal or alteration of any electronic rights management information without

authority is done in relation to anything lawfully done for the sole purpose of law

enforcement, national security, or performing a statutory function; or done by a library, an

archive or an educational institution for the sole purpose of making an acquisition decision in

relation to a work in which copyright subsists.15

There definition on the term “rights management information” is provided

under Section 36B(3) of the Copyright Act 1987, where it refers to information which

identifies the work, the author of the work, the owner of any right in the work, the performer

or the terms and conditions of use of the work, any number or codes that represent such

information, when any of these items is attached to a copy of a work or appears in connection

with the communication of a work to the public16. Similarly, according to International

Federation of the Phonographic Industry (IFPI), rights management information is

information that identifies content protected by copyright or related rights, the rights owner in

such content, and the terms and conditions of use associated with it.17

The provision of Sec 36B is based on Article 12 of the WCT, where the treaty

requires effective legal protection of rights management information. The adoption of this

article shows that Malaysia recognised the new challenges faced by the copyright owners in

14 Malaysia Copyright Act 1987. Section 36B(1)15 Malaysia Copyright Act 1987. Section 36B(2)16 Malaysia Copyright Act 1987. Section 36B(3)17 IFPI. (2003). The wipo treaties: Protection of rights management information. 1-3. Retrieved from

http://www.ifpi.org/content/library/wipo-treaties-rights-management-information.pdf7

the digital environment, in which works that appear in a digital form can easily be changed,

mutilated, misappropriated, reproduced and put into distribution channels without the consent

of the copyrights owners. Accordingly, besides of the act of circumvention, Malaysia have

also chose to treat the act of removal or alteration of any electronic rights management

information without authority under Section 36B of Malaysia Copyright Act 1987 as an

offence, in its efforts to ensure an adequate intellectual property framework in the digital

environment.

Rights management information is very important because the copyright

owners need to label their works as well as to let users identify the works and their conditions

of use, particularly in the digital environment where activities move quickly and often leave

few residual traces. The information found on the copy, booklet or cover of a copyrighted

product helped copyright owners track and prove such illegal activities in the analogue world

and the rights management information fulfils this function in the electronic environment.

Other than that, it plays an important role in controlling and tracking down

uses of a work for the collection of license royalties. It is no wonder that the tampering of the

rights information management must be curbed to enable the copyright owner to have a full

control over his work. Whilst the prohibition against technological measures targets the

tampering of digital locks, the provision relating to “rights information management” relates

to the tampering with digital codes that are added to a digital work.

The essential element provided under Section 36B(1) is “knowledge”, where

knowledge of committing the act must present in order for the act done to constitute an

offence. Generally, there are two types of knowledge, which are actual knowledge and

constructive knowledge. Actual knowledge refers to the direct awareness or understanding of

circumstances or facts.18 On the other hand, constructive knowledge means knowledge of a

circumstance or inference a fact which, in the eyes of law, a party must have gained upon

18 IT Law Wiki. Actual knowledge. Retrieved from http://itlaw.wikia.com/wiki/Actual_knowledge8

application of reasonable care or diligence.19 Under Section 36B(1), knowledge that is

required is either actual or constructive knowledge.

In addition to the prohibition on removal and alteration of the electronic rights

management, Section 36B(1) of the Copyright Act 1987 also prohibits the dealing with works

which have been tampered with. Possibly, the rationale behind this is to avoid any further

infringement on the copyright of the protected works. In relation with the anti-circumvention

provision provided in Section 36A(1) of the Copyright Act 1987, the similarity between these

two provisions is that both provisions are tied directly to the existence of a valid underlying

right. Therefore, the removal or alteration of such rights management information should be

allowed when the legal protection for the underlying work has lapsed or is non-existent.20

Rights management information often takes the form of an electronic

watermark placed in protected content. This type of technology is commonly known as

digital watermarking which refers to a method where digital information is encoded into

content that helps to uniquely identify it. It is also known as information hiding because it

involves the act of hiding a message related to a digital signal within the signal itself.21 Unlike

printed watermarks, which are intended to be somewhat visible, digital watermarks are

designed to be completely invisible, or in the case of audio clips, inaudible.

Transaction tracking is one of the interesting applications of digital

watermarking. In this case the watermark embedded in a digital work can be used to record

one or more transactions taking place in the history of a copy of this work. For example,

watermarking could be used to record the recipient of every legal copy of a movie by

embedding a different watermark in each copy. If the movie is then leaked to the Internet, the

movie producers could identify which recipient of the movie was the source of the leak.22

19 Business Dictionary. Constructive knowledge. Retrieved from http://www.businessdictionary.com/definition/constructive-knowledge.html

20 Tee, K. L. (2008). Copyright law in malaysia. (3rd ed., pp. 1-534). Malaysia: LexisNexis Malaysia Sdn Bhd.21 Melinos , A. Digital watermaking. 1-18. Retrieved from

http://www.cl.cam.ac.uk/teaching/0910/R08/work/essay-ma485-watermarking.pdf22 Ibid.

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This system of digital identification may thus facilitate licensing and payment of royalties,

and at the same time, combat the problem of piracy.

Nevertheless, one of the weaknesses of this system is it may require

registration of the relevant works. Thus, in such situation, there will be issues relating to

privacy as well as its potential conflict with one of the fundamental tenet of copyright law,

that is, copyright protection is not dependent on any formalities. For this reason, the Agreed

Statement to Article 12 of the WCT makes it clear that contracting parties will not rely on

Article 12 to devise or implement rights management systems that would have the effect of

imposing formalities which are not permitted under the Berne Convention on the WCT,

prohibiting the free movement of goods or impeding the enjoyment of rights under the

treaty.23

Other than the provisions concerning the act of circumvention and the rights

management information, another important provision which shows Malaysia’s response to

the distribution work over the internet today, is the provision on the limitation of the liability

of Internet Service Provider (ISP). Sections 43B to 43I of the Malaysia Copyright Act 1987

set out the responsibilities of ISP to address issues relating to copyright infringement on the

internet. According to Section 43B(a), for the purpose of section 43C, ISP means a person

who provides services relating to, or provides connections for, the access, transmission or

routing of data. In the contrary, Section 43B(b) provides that other than for section 43C, ISP

means a person who provides, or operates facilities for, online services or network access and

includes a person referred to in paragraph (a).24

The general rule is that an Internet 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 Malaysia Copyright Act 1987 for reproducing in a material form or

communicating to the public copyright work without the permission of the owner.

23 Tee, K. L. (2008). Copyright law in malaysia. (3rd ed., pp. 1-534). Malaysia: LexisNexis Malaysia Sdn Bhd.24 Malaysia Copyright Act 1987. Section 43B

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Nevertheless, sections 43C to 43E of the Malaysia Copyright Act 1987 exempt

an Internet Service Provider from liability for copyright infringement by reason of some

activities. Section 43C provides for 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 43D provides for

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 43E provides for 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.

In conclusion, referring to Isaac Newton’s 3rd Law of Motion, “for every

action there is an equal and opposite reaction”, it suggests that in our situation here, for all the

benefits, there are disadvantages to what we call “global village”. Even though global village

makes it possible for the creators and owners of copyright works to enlarge their target

audience, they have to suffer more burdens in controlling the infringing used of their

copyright works. Therefore, the provisions on anti circumvention, the rights management

information, as well as limitation of liability of the ISP can be considered as a good move

taken by the government in protecting these people’s rights in today’s digital era.

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