Abstract
The Copyright Act 1987 of Malaysia was last amended in 2012. The introduction of an entirely new part, Part VIB entitled ‘Limitation of liabilities of the service provider’, was among the substantive amendments brought by the Copyright (Amendment) Act 2012. Part VIB provides for the limitation of liabilities of certain categories of online service providers, including hosting service providers which provide storage of content at the users’ direction. Notably, Part VIB introduced a notice and takedown procedure with which hosting service providers are required to comply. The design and provisions of Part VIB, as a whole, bear significant impact on the balance of interests of the relevant stakeholders, namely, copyright owners, online service providers and the public. Hence, the object of this chapter is to examine the provisions of Part VIB relating to hosting service providers, with the concern in mind whether the provisions strike a balance of interests between the said stakeholders. The chapter begins with an introduction on Part VIB of the Copyright Act 1987, particularly Section 43E which provides for hosting service providers. This is followed by a more in-depth analysis of the problems which may arise in relation to the requirements that hosting service providers must satisfy in order to enjoy the limitation of liabilities under Part VIB. Thereafter, the chapter focuses on the notice and takedown procedure implemented under Part VIB, specifically analysing whether the procedure adequately caters to or strikes a balance between the interests of the concerned stakeholders. The chapter concludes with some thoughts and suggestions on how the relevant provisions may be improved to achieve a balance of interests between the relevant parties.
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Notes
- 1.
‘Internet service providers’ herein refers to service providers who provide services for connecting to the internet.
- 2.
‘Online service providers’ herein refers to service providers who provide facilities and information resources on the internet.
- 3.
The Online Copyright Infringement Liability Limitation Act, which is a part of the Digital Millennium Copyright Act (DMCA), inserted Section 512 into Title 17 of the US Code.
- 4.
‘Service providers’ herein refers to both internet service providers and online service providers.
- 5.
The Copyright (Amendment) Act 2012 (Act A1420) came into force on February 9, 2012.
- 6.
Section 43B of the CA 1987 defines a ‘service provider’ other than a mere conduit service provider as ‘a person who provides, or operate facilities for, online services or network access’.
- 7.
Section 43E(1)(a) of the CA 1987. Section 43B defines ‘primary network’ as ‘a network controlled or operated by or for the service provider’.
- 8.
Section 43E(1)(i) of the CA 1987 provides that the service provider ‘(A) does not have actual knowledge that the electronic copy of the work or activity is infringing; or (B) in the absence of such actual knowledge, is not aware of the facts or circumstances from which the infringing activity is apparent’.
- 9.
Section 43E(1)(ii) of the CA 1987. Section 43E(2) of the CA 1987 lists down the factors to be considered in determining whether a financial benefit is directly attributable to the infringement.
- 10.
Section 43E(1)(ii) of the CA 1987.
- 11.
Section 43E(1)(iii) of the CA 1987.
- 12.
Section 43E(1)(a) of the CA 1987.
- 13.
620 F. Supp. 2d 1081 (C. D. Cal. 2008).
- 14.
Id at 1089.
- 15.
718 F. 3d 1006 (9th Cir. 2013).
- 16.
Id at 1031.
- 17.
164 F. Supp.2d 688 (D.Md. 2001).
- 18.
586 F. Supp.2d 1132 (N.D. Cal. 2008). The plaintiff, the copyright owner of various adult entertainment works, applied for summary judgment on liability of copyright infringement against the defendant, which was an internet TV network providing software and a website on which the sharing of user-submitted video was facilitated.
- 19.
This case was followed in Viacom International, Inc. v YouTube 718 F. Supp. 2d 514 (SDNY, 2010).
- 20.
Id.
- 21.
The files uploaded by the users were copied and formatted by the defendant’s computer systems and were then made available for viewing on its website.
- 22.
Supra n 19 at 527–28.
- 23.
Section 43E(1)(i) of the CA 1987 states that the service provider ‘(A) does not have actual knowledge that the electronic copy of the work or activity is infringing; or (B) in the absence of such actual knowledge, is not aware of the facts or circumstances from which the infringing activity is apparent.’ In Perfect 10, Inc. v CCBill LLC 488 F.3d 1102 (9th Cir. 2007), the court held that a service provider may lose the safe harbour ‘if it fails to take action with regard to infringing material when it is aware of facts or circumstances from which infringing activity is apparent’ (at 1114).
- 24.
Supra n 19.
- 25.
Id at 520.
- 26.
Ibid.
- 27.
Id at 520–521.
- 28.
Ibid.
- 29.
Supra n 18.
- 30.
Id at 1149.
- 31.
Corbis Corp. v Amazon.com, Inc. 351 F. Supp. 2d 1090 (W.D. Wash., 2004) at 1108 quoted: Id at 1148.
- 32.
Ibid.
- 33.
Supra n 23.
- 34.
Id at 1114. The court observed that ‘When a website traffics in pictures that are titillating by nature, describing photographs as ‘illegal’ or ‘stolen’ may be an attempt to increase their salacious appeal, rather than an admission that the photographs are actually illegal or stolen’ (at 1114).
- 35.
Ibid.
- 36.
357 F.3d 1072, 1076 (9th Cir. 2004).
- 37.
Id at 1079.
- 38.
98 U.S.P.Q.2d (BNA) 1152 (SDNY, 2011).
- 39.
Reference was made to Perfect 10, Inc. v CCBill LLC, supra n 23 at 1117; and Ellison v Robertson, supra n 36 at 1079.
- 40.
Supra n 38 at 1157–1158.
- 41.
Supra n 18.
- 42.
Id at 1151. Section 43E(1)(ii) of the CA 1987 also provides that the SP ‘does not have the right and ability to control the infringing activity’.
- 43.
Ibid. See also Corbis Corp. v Amazon.com, Inc., supra n 31 at 1110; Perfect 10, Inc. v CCBill LLC, supra n 23 at 1098; Hendrickson v Ebay, Inc. 165 F. Supp. 2d 1082 (C.D. Cal. 2001), at 1093. In Tur v YouTube, Inc. No. CV064436, 2007 WL1893635 (C.D. Cal., 2007), it was held that the phrase ‘right and ability to control’ ‘presupposes some antecedent ability to limit or filter copyrighted material.’
- 44.
Supra n 18 at 1153.
- 45.
Ibid. The court found no evidence of failure on the part of the defendant in policing its system to the fullest extent permitted by the architecture of its system. The case of A & M Records, Inc. v Napster, Inc. 239 F.3d 1004 (9th Cir. 2001) was distinguished on the basis that the sole purpose of the existence of Napster was to offer the site and facilities for copyright infringement and its control over its system was directly intertwined with its ability to control the infringing activity. However, the defendant in Io Group, Inc. v Veoh Networks, Inc., supra n 18, did not aim to promote copyright infringement on its system.
- 46.
Supra n 19.
- 47.
Id at 527.
- 48.
Supra n 23.
- 49.
Id at 1113.
- 50.
Supra n 38.
- 51.
Id at 1156.
- 52.
An exception to this is found in Section 512(m)(1) which states: ‘… except to the extent consistent with a standard technical measure complying with the provisions of subsection (i)…’
- 53.
See also Section 43F(4) of the CA 1987 which stresses that a service provider shall not be regarded as having authorized the doing of any infringement under the CA 1987 solely by reason of the service provider having provided a facility that was used by a person to carry out the infringing act.
- 54.
The proviso to Section b43F(3) of the CA 1987 explains further that in such circumstances the service provider shall be furnished with the proper documentation about the settlement or the judgment or decision of the court or tribunal.
- 55.
See proviso to subsections (1) and (3) of Section 43H of the CA 1987 respectively.
- 56.
Section 43H(5) of the CA 1987 prescribes the information that shall be included in a counter notice served by users. Oddly, there is no corresponding provision with regard to a notification from copyright owners.
- 57.
Section 512(c)(3)(A) of the 17 USC provides, ‘To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
- 58.
See UMG Recordings, Inc. v Veoh Networks, Inc., supra n 13.
- 59.
Supra n 19.
- 60.
Section 512(c)(3)(A)(iii) of the 17 USC.
- 61.
Section 512(c)(3)(B)(i) of the 17 USC provides that a notification from a copyright owner or his agent that fails to comply substantially with Section 512(c)(3)(A) shall not be considered in determining whether a service provider has actual or apparent knowledge about infringement.
- 62.
Section 43H(2) of the CA 1987.
- 63.
Section 43F(2) of the CA 1987.
- 64.
Section 43H(3) of the CA 1987.
- 65.
Section 43H(4)(a) of the CA 1987.
- 66.
Section 43H(4)(b) of the CA 1987.
- 67.
Section 43F(2) of the CA 1987.
- 68.
Section 43H(4)(a) of the CA 1987.
- 69.
‘Practicable’ is defined in the Oxford English Dictionary as ‘Able to be done or put into practice successfully; feasible; able to be used; useful, practical, effective.’
- 70.
‘Promptly’ is defined in the Oxford English Dictionary as ‘In a prompt manner; readily, quickly; at once, without delay; directly, forthwith, there and then.’
- 71.
The exceptions to copyright infringement are provided under Section 13(2) of the CA 1987.
- 72.
572 F. Supp. 2d 1150 (N.D. Cal., 2008).
- 73.
Id at 1156.
- 74.
Supra n 43 at 1089–1090.
- 75.
Supra n 72.
- 76.
The song was ‘Let’s Go Crazy’ by the artist ‘Prince’. The video was 29 s in length while the song was audible for about 20 s. The sound quality of the video was poor and, thus, the song can be heard with difficulty. The defendant sent a takedown notice pursuant to Section 512(c) of the 17 USC demanding YouTube to remove the said video alleging copyright infringement. YouTube complied with the notice and informed the plaintiff via an e-mail of the removal. The plaintiff served a counter notice on YouTube under Section 512(g) of the 17 USC requesting the reinstatement of her video on the ground that it was fair use of the song and, thus, did not infringe the defendant’s copyright. YouTube complied with the counter notice.
- 77.
Section 512(c)(3)(A)(v) of the 17 USC provides that a notification should include, ‘A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.’
- 78.
Supra n 72 at 1154.
- 79.
The court was of the view that even if fair use only excuses infringement, it remains a lawful use of a copyright: see Sony Corp. of America v Universal City Studios, Inc. 464 U.S. 417 (1984) at 433: ‘[a]nyone … who makes a fair use of the work is not an infringer of the copyright with respect to such use.’
- 80.
Without such a ‘good faith belief’, a copyright owner who has issued a takedown notice may be subject to a misrepresentation claim under Section 512(f) of the 17 USC.
- 81.
US Sen. Rep. No. 105–190 at 21 (1998).
- 82.
The defendant also highlighted that the determination of fair use is a ‘fact-intensive inquiry’ and that it is hard for copyright owners to foresee whether a court may ultimately rule in their favour. Supra n 72 at 1155.
- 83.
Ibid.
- 84.
Id at 1156.
- 85.
Section 43I(1)(b) provides for the punishment for the offence as a fine of maximum RM 100,000 or imprisonment for a term of maximum 5 years or both. In addition, he shall also be liable to compensate any person for any loss or damage resulting from the making of the notification as stated in Section 43I(1)(b). Section 43I(2) further explains that the same applies to a statement made outside Malaysia and the person doing so will be dealt with under Section 43I(1)(a) as if the offence was committed in Malaysia. The offence in Section 43I may be established in circumstances where a false statement is made in either a notification issued by a copyright owner or a counter notification issued by the user whose copy is the subject matter in dispute.
- 86.
Section 512(f)(1) & (2) of the 17 USC. As stated in Section 512(f), the damages could be those incurred by the claimed infringer, copyright owner or copyright owner’s authorized licensee, or by a service provider; which is due to the service provider’s reliance on such misrepresentation in removing or disabling access to the claimed infringing material or activity, or in restoring the removed material to ceasing to disable access to it.
- 87.
391 F.3d 1000 (9th Cir. 2004).
- 88.
Id at 1004–1005.
- 89.
2008 U.S. Dist. LEXIS 44549; Copy L. Rep. (CCH) P29, 540.
- 90.
801 F. 3d 1126 (9th Cir. 2015).
- 91.
337 F.Supp. 2d 1195 (N.D. Cal. 2004).
- 92.
Id at 1204.
- 93.
Id at 1204–1205.
- 94.
Ibid.
- 95.
Rossi v MPAA, supra n 87.
- 96.
Supra n 90.
- 97.
Section 43E(1)(b)(i) of the CA 1987 provides for the requirement on a SP’s knowledge of the alleged infringing material or activity.
- 98.
Section 43E(1)(b)(iii) of the CA 1987 requires a SP to take the necessary action upon being served with a notice under Section 43H. Failure to do so will disqualify the SP from the liability limitation.
- 99.
See Section 2.2.
- 100.
See Section 2.1.
- 101.
See Sections 2.2–2.4.
- 102.
See Section 3.1.
- 103.
See Sections 3.2 & 3.4.
- 104.
See Section 3.3.
- 105.
See Section 3.5.
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Sik, C.P., Tay, P.S. (2017). Hosting Service Providers’ Liability for Third Party Content: A Malaysian Perspective. In: Sinha, M., Mahalwar, V. (eds) Copyright Law in the Digital World. Springer, Singapore. https://doi.org/10.1007/978-981-10-3984-3_13
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