Here’s why Nasi Kandar chain Thaqwa ended up having to pay a whopping RM221k to Astro for copyright infringement
Popular Nasi Kandar restaurant chain Thaqwa (Malaysia) Sdn Bhd had to shell out a whopping RM221,773.20 to Astro Malaysia Holdings Berhad subsidiary Measat Broadcast Systems Sdn Bhd recently following a consent judgment by the Kuala Lumpur High Court for breaching subscription agreements on unauthorised use of Astro’s pay-TV broadcasts at multiple locations.
In a statement by Astro, the company revealed that Thaqwa only had subscriptions for 2 specific premises but used them in 8 of its other restaurants through the use of Astro’s smart cards, decoder boxes and other equipment to access and display Astro content. Furthermore, as part of the settlement, Thaqwa also agreed to use their Astro subscription solely at the authorised locations and to respect Astro’s copyright and intellectual property rights.
About the case, Astro Chief of Sales and Marketing, Tai Kam Leong said that the company is fully committed to fighting digital piracy, knowing how much it harms the media and creative industry. He stressed that by taking strong legal steps and protecting intellectual property, Astro helps ensure that creators and artists are paid fairly for their work.
This High Court case has its roots in another case involving Astro in November 2022, which proved to be a landmark ruling for copyright infringement claims in Malaysia. So, what does that case establish and why did Thaqwa end up shelling out over RM221k to Astro?
Well, join us as we break it down below.
The Football Association Premier League Ltd & Anor v Bar Theory Sdn Bhd & Ors [2022] MLJU 2950
The binding precedent for Astro’s civil suit against Thaqwa is from the declaration from the High Court in 2022 that it is illegal for commercial premises to show content from unauthorised sources, whether through pirated foreign channels or broadcasts without the appropriate commercial licence. The case in question is The Football Association Premier League Ltd & Anor v Bar Theory Sdn Bhd & Ors [2022] MLJU 2950, of which Astro, through its subsidiary, Measat Broadcast Network Systems Sdn Bhd, was the 2nd Plaintiff.
In the civil suit, the 1st Plaintiff alleged the Defendants, Bar Theory Sdn Bhd and the directors of 42 East Pub and Restaurant in Kuala Lumpur had infringed their copyrighted works, including on screen graphics logos, promotional materials and all of the Premier League matches. As for the 2nd Plaintiff, it includes the Astro and Astro Supersport logos, promos and other interstitials.
In Malaysia, the licence for audio-visual rights and transmission of audio-visual coverage of English Premier League matches were given exclusively to the 2nd Plaintiff, who provides television and broadcasting under the name and style of “Astro”. This licence includes the right to record, reproduce and/or re-broadcast the matches of its fee-paying subscribers.
Copyright Act 1987
Accordingly, the High Court in November 2022 found that the Plaintiffs had established their claim for copyright infringement against the Defendants and that the latter’s act of showing, playing, screening and/or streaming the Plaintiff’s copyrighted works on a set-top box set up for its patrons was against the Copyright Act 1987.
Section 36 of the Act below prescribes what is considered copyright infringement:
Specifically, Section 36(1) prescribed that copyright is infringed by any person who does, or causes any other person to do, without the licence of the owner of the copyright, an act the doing of which is controlled by copyright under the Copyright Act 1987.
Furthermore, Section 13 of the Act below prescribes the Plaintiff’s exclusive rights of control of the Copyrighted Works in Malaysia.
In the suit, the Plaintiffs contended that the Defendants infringed their exclusive control under Sections 13(1)(aa) and 13(1)(b), which are “the communications to the public” and “the performance, showing or playing to the public” of the whole work or a substantial part thereof, either in its original or derivative form.
As for what is meant by “communications to the public”, Section 3 of the Copyright Act 1987 defined it as:
In its ruling, the High Court referred to legislation and authorities from the EU and UK, including Football Association Premier League Ltd and others v QC Leisure and others; Murphy v Media Protection Services Ltd (Joined Cases C-403/08 and C-429/08) [2012] Bus. L.R. 1321, on the interpretation of both “communication to the public” and “performance, showing or playing to the public”. The Kuala Lumpur High Court Judicial Commissioner Azlan Sulaiman thus found that the Defendants had indeed infringed both rights of the Plaintiffs.
The judgment reads,
“I therefore declare, as per prayer (1) of the Originating Summons (as amended) that the acts of showing, playing, screening, streaming to the public and/or communicating to the public in a business premises or otherwise, copyrighted works of the whole, or a substantial part thereof and/or causing the aforementioned, without the consent of the copyright owners, is an act of copyright infringement under Section 36 of the Copyright Act, 1987.”
With the authorities in mind, both parties in Thaqwa’s case have agreed to resolve the dispute whereupon Consent Judgment was recorded before the High Court for the sum of RM221,773.20 to be paid by Thaqwa to Astro.
Moving forward, let this be a lesson to other business operators out there that copyright infringement could lead to significant financial and legal consequences in Malaysia.
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