Alyshea Low explains the use of infringing website lists to enhance the protection of intellectual property rights
In the late 1990s, government authorities in countries such as China and Hong Kong actively took steps to crack down on the production and distribution of pirated optical media products. These products included films, music, videos, and various entertainment, educational, and business software and literary material.
Organized criminal enterprises found Malaysia to be an attractive alternative for their production and distribution bases, as it did not have effective legislation or regulations to combat piracy then.
THE OPTICAL DISCS ACT 2000
On 15 September 2000, the much-anticipated Optical Discs Act 2000 ("Act") came into effect. It contained provisions to deal with the licensing and regulatory framework to control the manufacture of optical discs in Malaysia.
The Act, together with the Optical Discs Regulations 2012, proscribed piracy and fraudulent activities and strengthened the protection of intellectual property rights in Malaysia. The Act was an important legislative tool to combat the increasing manufacture and distribution of bootleg products.
Under the Act, manufacturers are required to obtain a license and licensees must mark each optical disc with their assigned manufacturer's code for ease of identification. The Act defines "optical discs" to mean compact discs (CD), digital versatile discs (DVD), laser discs (LD), mini discs (MD), and any other medium or device on which data may be stored in digital form and read using laser, and includes any such medium or device manufactured for any purpose, whether or not any data readable using a laser or other means has been stored on it.
OTHER RELEVANT LEGISLATION
Other than the Act, penalties are stipulated under other relevant legislation such as the Trade Descriptions Act 2011 and the Copyright Act 1987. Section 41 of the Copyright Act 1987 prescribes a list of offences and a range of penalties. Depending on the severity of the piracy, penalties range from a fine of not less than RM2,000 and not more than RM250,000 for each infringing copy, or imprisonment for a term not exceeding five years or both, and for every subsequent offence, a fine of not less than RM4,000 and not more than RM500,000 or imprisonment for a term not exceeding 10 years or both.
The Trade Descriptions (Optical Disc Label) Order 2010 was introduced as part of the Government's initiative to eradicate copyright piracy. Under the aforesaid Order, any person found guilty of an offence, is liable to a fine not exceeding RM100,000 or imprisonment for a term not exceeding three years or both, and for a second or subsequent offence, to a fine not exceeding RM200,000 or imprisonment for a term not exceeding six years or both. A body corporate, if convicted, would be liable to a fine of not exceeding RM250,000 for the first offence and not exceeding RM500,000 for the second and subsequent offences.
Pirated optical discs, although less pervasive than in the past, still remain available. However, as the age of the Internet has taken globalisation to a new level, piracy in Malaysia is no longer limited to media in a physical form.
With the boom of the dotcom era, piracy has diversified into online piracy through illegal copying and dissemination of copyrighted works such as audios, videos, books, and software over digital platforms. Although there is access to content from legitimate digital platforms such as Netflix and Spotify, a large number of pirate websites remain present on the World Wide Web. While consumers obtain 'free' content from pirate websites, the owners of these websites benefit by earning revenue from advertising.
In late 2017, Malaysia became the third country, after Vietnam and Hong Kong, in the Asia Pacific region to launch the Infringing Website List ("IWL") initiative. The initiative was launched by stakeholders in the creative and advertising communities, e.g. Media Prima Bhd, Astro, Communications and Multimedia Content Forum of Malaysia, Motion Picture Association, Centre for Content Promotion and Media Specialists Association, in their effort to combat digital piracy. The IWL identifies websites that have been illegally providing copyrighted content, and the list of these websites is shared with advertisers, agencies, and other intermediaries to stop the placement of advertisements on these illegal websites.
Since then, other Asian countries such as Taiwan, Indonesia and India have also put in place the IWL initiative. In 2018, the Hong Kong Creative Industries Association (HKCIA) and the Taiwan Intellectual Property Alliance (TIPA) signed a Memorandum of Understanding (MOU) on the mutual exchange of the IWL, marking the creative sector's first step towards expanding regional collaboration in the fight against online piracy.
OPERATION CREATIVE AND THE UK IWL
The IWL initiative takes its lead from the UK's Operation Creative, an initiative led by the City of London Police's Police Intellectual Property Crime Unit ("PIPCU") in 2013. Operation Creative was designed to disrupt and prevent websites from providing unauthorised access to copyrighted content, in partnership with the creative and advertising industries.
Based on the City of London Police's website (www.cityoflondon.police.uk), as part of Operation Creative, rights holders in the creative industries identify and report copyright infringing websites to PIPCU, providing a detailed package of evidence indicating how the site is involved in copyright infringement. Officers from PIPCU then evaluate the evidence and verify whether the websites are infringing copyright.
If the website is found to be providing infringing content, the site owner will be contacted by PIPCU officers and offered an opportunity to engage with the police. This provides the site owner with a favourable option to correct their behaviour and to operate legitimately.
However, if the owner of the website fails to comply or otherwise cooperate, then a variety of other tactical options are available. These include contacting the domain registrar to seek suspension of the site, advert replacement, and disruption of advertising revenue through listing on an infringing website list.
The UK Infringing Website List is an online portal containing an up-to-date list of copyright infringing sites, identified by the creative industries and verified by PIPCU. This list is not publicly available. It is only available to the partners of Operation Creative and those involved in the sale and trading of digital advertising.
Operation Creative now lists over 2,000 pirate websites involving over 130 advertising associations and companies and as at January 2019, has suspended over 1,800 websites. In February 2019, it was
reported that the safeguarding arm of the London Grid for Learning (LGfL) came to an agreement with the City of London Police to block all websites on the PIPCU IWL. This will prevent computers belonging to LGfL's 3000 member schools from entering pirate sites and prevent any possible copyright infringement. Reports have shown a significant decrease in mainstream advertisements appearing on pirate websites, and the initiative appears to be a successful ground-breaking method to combat digital piracy.
As there has been rapid evolution in the development of technology, particularly in the last decade, combating piracy is now more complex than ever. Digital piracy is a relatively new crime and Malaysia continues to face challenges in ensuring the effective protection of copyright.
With the age of the internet providing borderless access to limitless information, the introduction and implementation of the IWL in Malaysia is a clear sign that stakeholders in the local creative and advertising industries have taken heed of the successfully implemented Operation Creative and the UK Infringing Website List and have taken significant steps to improve protection and enforcement of intellectual property rights in Malaysia. By cutting off advertising revenue flowing to these websites, the IWL is a promising tool in combating a new era of piracy.
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