Hoping to reduced the online availability of pirated content in the country, in 2019 the Malaysian Communica­tions and Multimedia Commission (MCMC) and Domestic Trade and Consumer Affairs Ministry said they had blocked 246 sites.

The aim of the blocking was to reduce the usefulness of set-top boxes that are configured to provide access to copyrighted material. Running parallel, Malaysia deployed a secondary tactic to prevent the spread of Android-based devices by demanding that importers and distributors submit samples to ensure they meet quality assurance standards.

What Malaysia really needed, however, was a legal basis to declare all pirate devices illegal to sell or distribute. This week that was achieved.

Ruling From The Malaysia IP High Court

Previously, Measat Broadcast Networks Sdn. Bhd., the service provider for Astro (All-Asian Satellite Television and Radio Operator), brought a case against a seller of set-top boxes that acted as gateways to websites and servers providing access to infringing content.

In a landmark decision handed down yesterday in the matter, the Intellectual Property High Court in Kuala Lumpur declared the sale, distribution, and supply of devices configured to provide unauthorized access to copyrighted content a breach of the Copyright Act 1987.

Rightsholders & Broadcasters Welcome Ruling

The decision was welcomed by Laila Saat, Director, Regulatory of Astro, who noted that it would now be easier to pursue cases in civil courts.

“The declaration by the High Court that sale of ISD [Illicit Streaming Devices] which allow access to unauthorized copyright content amounts to copyright infringement sets a precedent for future civil claims on copyright infringement against ISD sellers in the market, including those on e-commerce platforms,” Saat said.

In addition to local support from the Asia Video Industry Association (AVIA), the decision was also welcomed by the Premier League, which together with Astro has been running the “Boot Out Piracy” campaign in Asia.

“This is an important and welcome declaration by the Intellectual Property High Court, and sends a clear message that the sale of ISDs that provide unauthorized access to copyrighted works constitutes copyright infringement,” said Premier League Director of Legal Services, Kevin Plumb.

“The Premier League is committed to pursuing all those involved with providing illegal access to Premier League content as well as working to raise awareness of the risks fans face when watching via unauthorized sources. We will continue to work with Astro and local authorities as part of our ongoing anti-piracy program in Malaysia.”

Malaysia Previously Achieved Success in Criminal Cases

While the decision from the IP High Court will prove beneficial in future civil cases, Malaysia has already booked recent successes in criminal proceedings.

In February, the director of an IT company was charged under Section 41 of the Copyright Act with promoting Android boxes that circumvented technical protection measures on a copyrighted broadcast. Later that same month, a director of a mobile accessory company pleaded guilty to possessing TV boxes configured to illegally stream Astro content in breach of the Communications and Multimedia Act 1998.

Malaysia Warned United States of “Serious Problem”

In March 2020, during the 50th Meeting of the Intellectual Property Rights Experts Group (IPEG) of the Asia-Pacific Economic Cooperation (APEC) held in Malaysia, the United States presented a proposal to survey members on the domestic treatment of illicit streaming devices.

During the months that followed, the United States Patent and Trademark Office collated the responses and presented the results during the 51st Meeting of IPEG in October 2020.

Malaysia told USPTO that the economic harm being caused to broadcasters and rightsholders in the country was a “serious problem” but noted that the Copyright Act 1987 allowed for action when devices are imported or sold for the purposes of circumventing technological protection measures.

Interestingly, Malaysia also told the US that the law would need to be revised to allow for more efficient action against the sale and distribution of pirate devices.

“Proposed amendment focused on the act of uploading, providing, sharing access to illegal copyright works instead of focusing on fighting the technologies itself,” Malaysia’s representatives wrote (pdf).

Malaysia also reported that just three law enforcement investigations had been launched at the time of the survey, all of them in relation to the sale of set-top devices. In an unspecified number of cases, Malaysia noted that some investigations had been dropped either due to insufficient evidence or a lack of technical expertise to prosecute.

Several Other Countries Reported ISDs as a Minor Problem

While Malaysia was clearly concerned about the pirate set-top box problem, not all countries considered the devices as a particular threat.

Australia, New Zealand and South Korea, for example, reported that they present only a “minor problem” to local broadcasters and rightsholders while Russia and Brunei said there was no problem at all.

China, on the other hand, said it had insufficient information to determine the scale of the threat.