LEGAL DEVELOPMENTS TECHNOLOGICAL PROTECTION MEASURES IN MALAYSIA. Table of Contents

Transcription

1 e-copyright Bulletin October - December 2004 LEGAL DEVELOPMENTS TECHNOLOGICAL PROTECTION MEASURES IN MALAYSIA Dr. Ida Madieha bt. Abdul Ghani Azmi * Table of Contents I. Introduction...2 II. Copyright Infringement...2 III. TPMs and Fair Use Exceptions...7 IV. Offences...8 V. Conclusion...9 * Assoc. Prof., Private Law Department, International Islamic University Malaysia. Original : English

2 I. Introduction After the setting up of the Multimedia Super Corridor ( MSC ) 1 in 1995, Malaysia has overhauled its copyright law to provide a legal landscape that would support the growth of the information and communication industry. Soon after the conclusion of the World Copyright Treaty in December 1996, though not being member state, Malaysia has incorporated a major part of the treaty in early 1997, in particular a number of provisions concerning technological protection measures (hereinafter referred to as TPM ). 2 The main concern at that time was to extend copyright protection to the on-line environment. Two types of TPMs are provided under the Act, namely technological protection tools and rights information management. As Malaysia was among the first countries to come up with provisions on technological protection measures, the country has not benefited from the debates on these issues in other regions, in particular in the United States of America, in the EU and in Australia. As a result, the provisions are largely unexplored and undeveloped. II. Copyright Infringement The main provision that deals with copyright infringement in the amended Copyright Act is Section 36. Section 36(1) covers primary and contributory infringement whilst Subsection (2) covers secondary infringement. Two additional Subsections have been added to make way for the protection of digital locks used to control access to protected works: Subsection (3) prohibits the circumvention of TPMs, while Subsection (4) deals with rights information management. 1 2 The Multimedia Super Corridor (MSC) is Malaysia s equivalent to the Silicon Valley. This multibillion dollar project is assisted by the International Advisory Panel consisting of leading CEO's and International experts who provide counsel to the Malaysian Government in shaping Malaysia s Multimedia Super Corridor (MSC). The Bill of Guarantees assured by the MSC is to provide a world-class physical and information infrastructure and a world class set of cyber laws sufficient to support the growth of information communication technology industry within the Corridor. The 1997 Amendment Act has revised the 1987 Copyright Act. It came into force on the 1st April The objective of the amendments is espoused in the explanatory statement: Technological development, especially technology, has challenged traditional concepts of copyright protection. The proposed establishment of the Multimedia Super Corridor (MSC) will generate both challenges and opportunities for Malaysia. The success of the MSC will, to a certain extent, be determined by the contents that move through it. These include educational works, entertainment products and information that are protected under the copyright law. For the MSC to realize its full potential, it is essential that adequate legal protection be made available to these works. The Act is proposed to be amended towards this end, taking into account recent international developments in respect of certain copyright works

3 1. Circumvention of Technological Protection Measures Section 36(3) of the Act provides: e.copyright Bulletin 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 the Act and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law. This provision essentially makes it an infringement for those who circumvent or cause someone else to circumvent effective technological measures. The Subsection can be further broken down into several elements: a) Both the primary act of circumventing and the contributory act of causing others to circumvent will fall within the scope of the provision. The term circumvent has however not been defined in the Act. b) The technological measures adopted must be effective. Yet there is no definition for the term effective nor for the term TPM. c) The measures in question must be adopted by the authors, and not by the copyright owners; therein lies the weakness of this provision. d) The use of the circumvention devices must be for the purpose of restricting acts which are not authorized by the authors concerned or permitted by law. Because of this, arguably, the provision will cover copy control but not access control as the latter is not within the power of the copyright authors. As stated earlier, the main dissatisfaction with the provision is the absence of a clear definition for all the key terms, unlike the situation in other countries. This renders Section 36(3) rather vague in its scope. In comparison, in the UK, under the recent Copyright and Related Rights Regulations 2003, technological measures have been defined as any technology, device or component, which is intended in the normal course of its operation to protect a copyrighted work other than a computer program. 3 This definition is the broadest possible as TPM can be developed in any form of digital locks to keep copyright materials secure from unauthorized copying and access, including digital watermarking and copy bots, secure digital music initiative, serial copy management systems, encryption, and content scramble systems for DVDs. As for the circumvention of devices, the position in Malaysia is clear. In Creative Purpose Sdn. Bhd. & Anor v Integrated Trans Corp Sdn Bhd & Ors, 4 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. An equally broad definition can be found in the United States of America. The term, to circumvent a technological measure has been defined to mean to de-scramble 3 4 Section 296ZF(1) of the Copyright and Related Rights Regulations [1997] 2 MLJ 429. This case was decided following the Australian case Autodesk Inc & Anor v Dyson & Ors [1992] RPC

4 a scrambled work, to decrypt an encrypted work or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without authority of the copyright owner. 5 Another concern relates to the term effective. Would the technological measures be considered effective if the use of the work is controlled either by access control or copy control mechanisms? Must the technological measures be specifically targeting towards copy control in order to be considered effective? Need the devices be used solely for the purpose of circumventing technological measures? Or should they be designed primarily for the purpose of circumventing technological measures? These are some of the issues that arise as a result of the uncertainty of the law in the matter. In the United States for example, a technological measure controls effectively access to a work, if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work. 6 In the United Kingdom, such measures are effective if the use of the work is controlled by the copyright owner through a) an access control or protection process such as encryption, scrambling or other transformation of the work, or b) a copy control mechanism, c) which achieves the intended protection. 7 Thus, it is clear that the UK have provided for both copy and access control. 8 Some lessons on this can be learnt from the Australian decision Kabushiki Kaisha Sony Computer Entertainment And Others v Stevens. 9 In this case the court was mindful of the definition of technological protection measures under the Australian law and noted that there were two particular means of preventing or inhibiting the infringement of copyright, that is by: a) ensuring that access to the work is available solely by use of an access code or process with the authority of the owner or licensee; or b) a copy control mechanism. Thus the judge argues: The definition, so it seems to me, contemplates that but for the operation of the device or product, there would be no technological or perhaps mechanical barrier to a person gaining access to the copyright work, or making copies of the work after Section 1201(3)(A), Digital Millennium Copyright Act Section 1201(3)(B) of the Digital Millennium Copyright Act Section 296ZF(2) of the Copyright and Related Rights Regulations For a deeper analysis of the United Kingdom position, read Brian W. Ester, Technological Self Help: Its Status under European Law and Implications for U.K. Law, 17 th BILETA Annual Conference, April 5 th 6 th I.P.R

5 access has been gained, thereby putting himself or herself in a position to infringe copyright in the work. The definition is intended to be confined to devices or products that utilise technological processes or mechanisms to prevent or curtail specific actions in relation to a work, which actions would otherwise infringe or facilitate infringement of copyright in that work. In other words, a "technological protection measure", as defined, must be a device or product which utilises technological means to deny a person access to a copyright work, or which limits a person's capacity to make copies of a work to which access has been gained, and thereby "physically" prevents or inhibits the person from undertaking acts which, if carried out, would or might infringe copyright in the work. It is in this sense that the device or product must be designed, in the ordinary course of its operation, to prevent or inhibit the infringement of copyright in a work. I do not think the definition is concerned with devices or products that do not, by their operations, prevent or curtail specific acts infringing or facilitating the infringement of copyright in a work, but merely have a general deterrent or discouraging effect on those who might be contemplating infringing copyright in a class of works, for example by making unlawful copies of a CD-ROM. There may be devices which are not necessarily designed, in the ordinary course of their operation, to prevent the infringement of copyright, but to inhibit such infringement. A copy control mechanism, for example, might not prevent all copying that infringes copyright, but might limit the extent of unlawful copying that can take place, for example by reducing the quality of copies that can be made of the copyright work. Such a device could properly be said to be designed, in the ordinary course of its operation, to "inhibit" the infringement of copyright in a work, rather than to prevent such infringement. It may be that access to only part of a work is restricted by a process requiring decryption or unscrambling. In this situation, too, it might be more appropriate to say that the process is designed to inhibit rather than prevent the infringement of copyright in the work. The observations by the learned judge depict the current debate whether the technological protection measures provisions should target only copy control mechanism or should extend to access control mechanism. The Australian ruling seems to indicate that their legislative provisions only target the former and not the latter. Especially so when the devices are designed for the purpose of price discrimination and control of the geographical distribution of works. In the case of the measures taken by Playstation, it was conceded that it did not discriminate between infringing and non-infringing copies. The measures, it seems, were designed to act as regional codes only and thus were not effective technological measures. 10 It is also the stand in the other countries that liability should only attach to devices that are specifically designed or adapted to circumvent copy protection measures. Devices may have other legitimate uses or act as both access and copy restriction (dual use tools). This is the position in US, 11 New Zealand 12 and the UK New Zealand shares the same stand. According to the Government s position paper on the Digital Technology and the Copyright Act 1994, it is not the role of the law to protect access control technology. Such control is referred to other legal measures such as the law of contract. See Section 1201 (2)(A) of the Digital Millennium Copyright Act See fn

6 2. Manufacture of Devices Capable of Overriding Technological Protection Measures In some countries, the act of manufacturing devices or systems capable of overriding technological protection measures is prohibited. This prohibition would also cover the possession or distribution of circumvention devices or technology. This is in particular 14 the position in the United States of America 15, the United Kingdom 16 and New Zealand. 17 By contrast, the position in Malaysia is unclear. Reading Section 36(3) literally would mean that it does not cover the manufacture of devices capable of being used to override technological protection measures. Would those who manufacture such devices or systems run the risk of being liable for contributory infringement for causing others to circumvent technological protection measures? Taking the cue from the common law cases on the liability of manufacturers of devices capable of infringing copyright, 18 this seems possible. In the US, by contrast, it has been expressly provided that the prohibition against technological protection measures does not enlarge or diminish vicarious or contributory liability for copyright infringement in connection with any technology, product, service, device, component, or part thereof Section 296(6) that provides: In this section references to a technical device in relation to a computer program are to any device intended to prevent or restrict acts that are not authorized by the copyright owner of that computer program and are restricted by copyright. In other countries, litigation involving digital tools is in the increase. One such classic example is in the US the case Universal City Studios, Inc, Et Al., v. Shawn C. Reimerdes, Et Al., United States District Court For The Southern District of New York (2000). In this case, the defendants distributed through the Internet a software called the DECSS which decoded the scrambled signal on plaintiffs motion picture studios digital versatile disks (DVDs) so that owners of DVDs could reproduce flawless copies of those movies in violation of copyright laws. The plaintiffs filed a suit in order to enjoin the defendants from distributing such DECSS programming. One of the issues raised was whether the defendants have offended the TPM provisions by circumventing the technological tools adopted by the copyright owner to secure access to his works, in this case the CSS-tool. The CSS requires the application of information or a process, with the authority of the copyright owner, to gain access to their works. Without the scrambling of the CSS, one would not ordinarily have access to the works. On this issue, the United States District Court for the Southern District of New York found that there was a clear-cut transgression of the TPM provisions. One point to be noted of the case is that the digital locks were used for access control, and not copy control. Yet, they have been held to be offending the TPM provisions. Section 1201(2) of the Digital Millennium Copyright Act Section 296ZB(1) of the Copyright and Related Rights Regulations In fact, in New Zealand, only the act of manufacture is prohibited while the act of circumvention is not. As made explicit in the position paper (op. cit.), liability to actual circumvention would only make sense where circumvention occurs on a commercial scale. RCA Corporation v John Fairfax & Sons Ltd & Ors [1981] 1 NSWLR 251, A & M Records Inc v Audio Magnetics Inc [1979] FSR 1 and CBS Songs v Amstrad [1988] RPC 567. Section 1201(c)(2) of the Digital Millennium Copyright Act

7 3. Rights Management Information Another digital tool that is provided for under the amended Copyright Act is the rights management information. The term rights management information has been defined in Section 36(5) as to mean: information which identifies the works, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public. Rights management information does not only serve the purpose of encoding information concerning copyright ownership, but can also be employed to track subsequent uses of the work. The technology is designed to convey, record and transmit information regarding the licence, authenticity and payment for the use. Rights information management, thus, 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. Subsection (4), which deals with rights management information, provides: Copyright is infringed by any person who knowingly performs any of the following acts knowing or having reasonable grounds to know that it will induce, enable, facilitate or conceal an infringement of any right under this Act: the removal or alteration of any electronic rights management information without authority; the distribution, importation for 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. As made explicit by Subsection (4) itself, the element of knowledge of committing the act must be present; required is either actual or constructive knowledge. This provision prohibits not only removing and altering the electronic rights management information, but also the dealing with works which have been tampered with. Similar to the liability for circumvention, this provision is 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. III. TPMs and Fair Use Exceptions The WIPO Copyright Treaty (1996) in its article 10 is permissive in the extension of copyright limitations to the use of works in the digital environment. Taking this stand, many countries have drawn a number of exceptions to the technological protection measures provisions. For example in the United States of America, there are wide - 7 -

8 exceptions for non-profit libraries, archives and educational institutions. 20 For example, those who have lawfully obtained the right to use a copy of a computer program may reverse engineer technological protection measures for lawful purposes. Likewise, for the purpose of encryption research, security-testing activities are tolerated. 21 The concern that broad prohibition of the circumvention of technological measures might inhibit lawful and legitimate uses of work, such as fair dealing or fair use or reverse engineering, has been raised in many jurisdictions. Many are, rightly so, worried that such broad prohibitions may lead to more restricted access to copyright material and hinder educational use of copyright material as well as hamper research in the field of cryptography. That is why in many countries, wide exceptions are crafted to ensure that the balance between the interests of the right holders on the one hand and the public users on the other is maintained. It is unfortunate that all these debates have not reached this part of the world, otherwise valuable insights and lessons can be drawn from them. In Malaysia, as there have not been many active debates on the issue, the feasibility and the need for exceptions to the technological protection measures provisions is largely ignored. IV. Offences Certain activities pertaining to the circumvention of technological measures have been made criminal offences. For example, Section 41(i) and (j) criminalises the removal and distribution of works that have been altered. Section 41 reads: Any person who during the subsistence of copyright in a work or performers right [ ] (i) removes or alters any electronic rights management information without authority; or (j) distributes, imports for distribution or communicates to the public, without authority, works or copies of works in respect of which electronic rights management information has been removed or altered without authority shall, unless he is able to prove that he had acted in good faith and had no reasonable grounds for supposing that copyright or performers rights would or might thereby be infringed, be guilty of an offence and shall on conviction be liable [ ] to a fine not exceeding two hundred and fifty thousand ringgit or to imprisonment for a term not exceeding three years or to both and for any subsequent offence, to a fine not exceeding five hundred thousand ringgit or to imprisonment for a term not exceeding five years or to both. From the above provision, it seems clear that both the primary act of tampering with electronic rights management information and the distribution of tampered works entail criminal liability. The fine imposed is nothing minimal, ranging from RM 250,000 to RM 500,000 and the imprisonment term is equally harsh from 3 to 5 years See Section 1201(d) of the Digital Millennium Copyright Act Section 1201(f) of the Digital Millennium Copyright Act

9 The criminalisation of such conduct can be seen as an ancillary measure to supplement the civil liability of the alteration of rights information management. Such criminalisation has, unfortunately, made the Malaysian provision one of the harshest by comparison to other jurisdiction and goes beyond the mandate of the World Copyright Treaty of V. Conclusion The language of both Sections 36(3) and (4) follows closely to that of Article 11 and 12 of the World Copyright Treaty This similarity is unavoidable as it is the latter that has influenced and shaped the Malaysian Copyright Act. The situation in Malaysia, however, remains unclear as many issues have not been considered in the decision making process. Though we are among the first countries to incorporate the WCT provisions, we have not had the advantage of taking into account the ongoing debates on the international level. Looking at the divergent approaches in other countries, it is questionable which path Malaysia would ultimately choose to follow