Measat Broadcast Network Systems Sdn Bhd v Lui Kim Seng (WA-24IP-41-11/2024)

The plaintiff filed an originating summons, seeking inter alia, a declaration that the defendant had infringed the plaintiff’s copyright by selling, distributing and/or providing TV boxes which allowed access to content owned by the plaintiff. The plaintiff also sought an injunction to restrain the defendant from infringing its copyright.

The court allowed the originating summons, for the reasons set out below.

The plaintiff provides satellite broadcasting services and offers content to its customers under the trade name “Astro”.

The defendant is the sole proprietor of a business, trading under the name and style of KS Home Gadgets. The defendant’s principal place of business is at 70-G, Jalan Dwitasik, Dataran Dwitasik, Bandar Sri Permaisuri Cheras, 56000 Kuala Lumpur (“Defendant’s Business Premises”).

The defendant sells home gadgets, including TV boxes, which are internet-connected devices that plug into televisions via HDMI, or high-definition multimedia interface, allowing users to stream content.

On or around 31 July 2024, the defendant sold a TV box bearing the brand name “SVI 9s MAC: ECF72BFF3E52” (serial no: 90507242607690) to a senior police officer who was acting on behalf of the plaintiff, at the Defendant’s Business Premises. In addition, another TV box bearing the brand name “SVI 9s EC72BFAB0AC” (serial no: 90507230104834) was also in the defendant’s possession and was seized by the plaintiff from the Defendant’s Business Premises at the material time. The two TV boxes shall collectively be referred to as the “TV Boxes”.

The TV Boxes were found to have been pre-installed with a software application, “Yogurt TV” (“Yogurt TV App”), which provides access to, amongst others, the following content from Astro: a. A television show, Tazkirah Malam Jumaat, shown on Astro Oasis HD channel 106, produced by Astro Productions Sdn Bhd; and b. A television show, Sehari Dalam Hidup, shown on Astro Oasis HD channel 106, produced by Infusion Sdn Bhd (collectively, the “Astro Content”).

The plaintiff claimed that it is the owner of the copyright in the Astro Content, and that access to the Astro Content was provided to the public through the TV Boxes without its consent.

The plaintiff therefore sought inter alia, a declaration that the defendant had infringed the plaintiff’s copyright by selling, distributing and/or providing the TV Boxes which allowed access to the Astro Content. The plaintiff also sought an injunction to restrain the defendant from infringing its copyright. C. Issues

This action was commenced by the plaintiff under section 37 of the Copyright Act 1987 (“CA 1987”). Section 37 grants a copyright owner the right to take action and seek reliefs for infringement of its copyright and for the prohibited acts under sections 36A and 36B of the CA 1987. The reliefs that may be sought include an order for injunction, damages, an account of profits and statutory damages.

The act of copyright infringement is addressed in section 36 of the CA 1987, which provides that: “(1) 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 this Act.” (emphasis added)

Based on the action commenced by the plaintiff under section 37 of the CA 1987 and from the facts of this case, the main question before the court is whether the defendant had infringed the plaintiff’s copyright by selling, distributing and/or providing the TV Boxes which allowed access to the Astro Content.

To prove copyright infringement in respect of the Astro Content, the plaintiff must establish that: a. The plaintiff is the owner of the copyright in the Astro Content; and b. The defendant infringed the plaintiff’s copyright in the Astro Content. D. Considerations and Findings Is the plaintiff the owner of the copyright in the Astro Content?

Section 7(1) of the CA 1987 lists out works eligible for copyright. They are: “(a) literary works;

musical works;

artistic works;

films;

sound recordings; and

broadcasts.” (emphasis added) [15] The term “films” is defined under section 3 of the CA 1987 as: “… any fixation of a sequence of visual images on material of any description, whether translucent or not, so as to be capable by use of that material with or without any assistance of any contrivance –

of being shown as a moving picture; or

of being recorded on other material, whether translucent or not by the use of which it can be so shown, and includes the sounds embodied in any sound-track associated with a film;” (emphasis added) [16] In addition, the term “broadcasts” is defined under section 3 as: “… a transmission, by wire or wireless means, of visual images, sounds or other information which –

is capable of being lawfully received by members of the public; or

is transmitted for presentation to members of the public; and includes the transmission of encrypted signals where the means for decrypting are provided to the public by the broadcasting service or with its consent;” (emphasis added) [17] Section 7(1) of the CA 1987 provides that films and broadcasts are eligible for copyright. From the definitions of the terms “films” and “broadcasts” in section 3 of the CA 1987, I find that the Astro Content, which consists of television shows broadcast through Astro channels, fall within the definitions. As such, the Astro Content is eligible for copyright. [18] The plaintiff claimed it is the owner of the copyright in the Astro Content, and exhibited two statutory declarations dated 12 November 2024, as evidence of its ownership of the copyright (“Statutory Declarations”). The Statutory Declarations were made under section 42 of the CA 1987, which provides that: “(1) An affidavit, certified extracts of the Register of Copyright referred to in section 26B or statutory declaration made before any person having authority to administer oath by or on behalf of any person claiming to be –

the owner of the copyright in any works eligible for copyright under this Act stating that –

at the time specified therein copyright subsisted in such work;

(ii) he or the person named therein is the owner of the copyright; and

(iii) a copy of the work annexed thereto is the true copy thereof; or … shall be admissible in evidence in any proceedings under this Act and shall be prima facie evidence of the facts contained therein.” (emphasis added) [19] The Statutory Declarations: a. Were made by Mohd Suhaimi Mohd Mokhtar, an Associate of the Investigation, Security Department of the plaintiff, who was authorised to make the declaration on behalf of the plaintiff; b. Contain the following statements: i. That copyright subsists in the Astro Content; and ii. That the plaintiff is the owner of the copyright in the Astro Content; and c. Contain a copy of the Astro Content. [20] From the content of the Statutory Declarations, I find that they comply with the requirements in section 42 of the CA 1987. The Statutory Declarations are therefore prima facie evidence of the plaintiff’s ownership of the copyright in the Astro Content. [21] In DNC Asiatic Holdings Sdn Bhd v Honda Giken Kogyo Kabushiki Kaisha [2020] 1 CLJ 799, the Court of Appeal held as follows on the effect of a statutory declaration under section 42 of the CA 1987: “[35] … s. 42 of the CA is a statutory mechanism specifically provided to prove authorship of the impugned works in question. The Rock Records (M) Sdn Bhd v. Audio One Entertainment Sdn Bhd [2005] 1 CLJ 200 case ("the Rock Records case") is an authority for the proposition that once a prima facie case has been made out by the affidavit or the SD, the burden can only be discharged by the appellant by way of leading factual evidence to doubt the subsistence of copyright in the respondent.” (emphasis added) [22] As the Statutory Declarations are prima facie evidence of the plaintiff’s ownership of the copyright in the Astro Content, the burden is now on the defendant to disprove such ownership, by way of factual evidence. [23] The defendant has not provided any evidence to raise doubt on the plaintiff’s ownership of the copyright in the Astro Content. Instead, the defendant merely raised a bare allegation that the plaintiff had not proven its ownership of the copyright in the Astro Content, without providing any particulars of the allegation. [24] In view thereof, I find that the plaintiff’s ownership of the copyright in the Astro Content has been conclusively proven. Did the defendant infringe the plaintiff’s copyright in the Astro Content? [25] Having concluded that the plaintiff owns the copyright in the Astro Content, the next issue to be considered is whether the defendant had infringed the copyright. [26] It is not disputed that: a. One of the TV Boxes had been sold to a senior police officer representing the plaintiff on 31 July 2024, and the other TV Box was found and seized at the Defendant’s Business Premises; and b. The TV Boxes contain the Yogurt TV App, which allows access to television shows, including the Astro Content. [27] The nature of copyright protection is provided in section 13 of the CA 1987, which states: “(1) Copyright in a literary, musical or artistic work, a film, a sound recording or a derivative work shall be the exclusive right to control in Malaysia –

the reproduction in any material form; (aa) the communication to the public;

the performance, showing or playing to the public;

(Deleted by Act A994:s.13)

(Deleted by Act A994:s.13)

the distribution of copies to the public by sale or other transfer of ownership; and

the commercial rental to the public, of the whole work or a substantial part thereof, either in its original or derivative form …” (emphasis added) [28] Applying the above section, as the plaintiff owns the copyright in the Astro Content, the plaintiff has the exclusive right to control in Malaysia, the acts set out in section 13(1) of the CA 1987, including the communication to the public of the Astro Content. [29] Section 3 defines “communication to the public” as: “… the transmission of a work or performance through wire or wireless means to the public, including the making available of a work or performance to the public in such a way that members of the public may access the work or performance from a place and at a time individually chosen by them;” (emphasis added) [30] Applying the above definition to the facts of the present case, I am of the view that the defendant’s act of selling, distributing and/or providing the TV Boxes, which are pre-installed with the Yogurt TV App that allows users of the TV Boxes to access the Astro Content from a place and at a time individually chosen by them, is sufficient to constitute the communication to the public of the Astro Content. [31] Learned counsel for the plaintiff referred to the judgment of the Court of Justice of the European Union (“CJEU”) in Case C-527/15 Stichting Brein v. Jack Frederik Wullems, also trading under the name Filmspeler, which involves a request for a preliminary ruling from the CJEU on the interpretation of, among others, article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society ("Directive 2001/29"). [32] The case concerns the sale by Frederik Wullems (“Wullems”) of a multimedia player called the “Filmspeler”. The device came pre-installed with an open source software, which allows files to be played through a user-friendly interface integrated with add-ons containing hyperlinks to websites, where copyrighted films and television programmes are available without the consent of copyright owners. Stichting BREIN, a Dutch anti-piracy foundation, brought proceedings in the Netherlands, claiming that the sale of the “Filmspeler” amounted to copyright infringement under European Union laws. [33] The Dutch court referred the following question to the CJEU on the interpretation of Directive 2001/29: “Must Article 3(1) of Directive 2001/29 be interpreted as meaning that there is “communication to the public” within the meaning of that provision, when someone sells a product (multimedia player) in which he has installed add-ons containing hyperlinks to websites on which copyright-protected works, such as films, series and live broadcasts are made directly accessible, without the authorisation of the right holders?” (emphasis added) [34] Article 3(1) of Directive 2001/29 provides that: “1. Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.” (emphasis added) [35] The CJEU held that the concept of “communication to the public” includes two cumulative criteria, namely an “act of communication” of a work, and the communication of that work to the “public”. [36] In respect of the first criterion, which raises the question of whether the sale of a multimedia player amounts to an “act of communication”, the following reasoning of the CJEU in its judgment is of relevance: a. The author’s right of communication to the public, provided for in article 3(1), covers any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. b. The mere provision of physical facilities to enable communication does not in itself amount to “communication” within the meaning of Directive 2001/29. c. However, the case does not concern the mere provision of physical facilities. Instead, Wullems, with full knowledge of the consequences of his conduct, had pre-installed onto the “Filmspeler”, add-ons that specifically enable purchasers to have access to protected works – without the consent of copyright holders – on streaming websites, enabling purchasers to watch those works on their television screens. The CJEU went on to hold as follows: “That intervention enabling a direct link to be established between websites broadcasting counterfeit works and purchasers of the multimedia player, without which the purchasers would find it difficult to benefit from those protected works, is quite different from the mere provision of physical facilities …” d. Consequently, the provision of a multimedia player that enables through pre-installed add-ons, access via structured menus to links when activated by the remote control of that multimedia player, offer users direct access to protected works without the consent of the copyright holders, is an “act of communication” within the meaning of article 3(1) of Directive 2001/29. [37] Further, as regards the second criterion, which raises the question of what constitutes communication that is made to the “public”, the CJEU held as follows: “44. In that regard, the Court has stated, first, that the concept of ‘public’ encompasses a certain de minimis threshold, which excludes from the concept groups of persons which are too small, or insignificant. Second, in order to determine that number, the cumulative effect of making the works available to potential recipients should be taken into account. Thus, it is relevant to know not only how many persons have access to the same work at the same time, but also how many of them have access to it in succession (see, to that effect, judgments of 15 March 2012, Phonographic Performance (Ireland), C-162/10, EU:C:2012:141, paragraph 35; of 27 February 2014, OSA, C-351/12, EU:C:2014:110, paragraph 28; and of 31 May 2016, Reha Training, C-117/15, EU:C:2016:379, paragraph 43 and the case-law cited).

In the present case, it must be observed that, according to the referring court, the ‘filmspeler’ multimedia player has been purchased by a fairly large number of people. Furthermore, the communication at issue in the main proceedings covers all persons who could potentially acquire that media player and have an internet connection. Those people may access the protected works at the same time, in the context of the streaming of the works at issue on the internet. Thus, that communication is aimed at an indeterminate number of potential recipients and involves a large number of persons (see, by analogy, judgment of 7 March 2013, ITV Broadcasting and Others, C-607/11, EU:C:2013:147, paragraphs 35 and 36).

It follows that, by the communication in question, the protected works are indeed communicated to a ‘public’ within the meaning of Article 3(1) of Directive 2001/29.” (emphasis added) [38] The CJEU found that the sale of the “Filmspeler” was made in full knowledge of the fact that the add-ons containing hyperlinks pre-installed on the device gave access to works published illegally on the internet. The device made it possible for a user to watch on a television screen, freely and easily, audiovisual materials available on the internet without the consent of the copyright owners. Further, the “Filmspeler” was supplied with a view to making a profit, with a price being paid for the device, to obtain direct access to protected works without the consent of copyright owners. [39] As such, the CJEU held that “communication to the public” within the meaning of article 3(1) of Directive 2001/29, must be interpreted to cover the sale of a multimedia player with pre-installed add-ons containing hyperlinks to publicly-accessible websites, on which copyright-protected works are made available without the consent of right holders. [40] I found Filmspeler (supra) to be persuasive, for two reasons. First, the right given by article 3(1) of Directive 2001/29 to a copyright owner to authorise or prohibit any communication to the public of his works, is similar to the exclusive right conferred to copyright owners by section 13(1) of the CA 1987 to control in Malaysia, the communication to the public of their works. Second, the facts in Filmspeler (supra) are similar to the present case. Both the “Filmspeler” and the TV Boxes contain software applications that allow access to works that are protected by copyright. [41] Similar to Wullems in Filmseper (supra), the defendant had sold, distributed and/or provided the TV Boxes, which are pre-installed with the Yogurt TV App that allows purchasers of the TV Boxes to gain access to the Astro Content. It is not disputed that the access is given without consent or licence from the plaintiff. [42] In this regard, the defendant had intervened by enabling a direct link to be established between unauthorised online sources of television shows including the Astro Content and users of the TV Boxes, without which the users would not be able to benefit from the unauthorised content. Therefore, I find that the defendant’s act of selling the TV Boxes constitutes an “act of communication”. [43] The defendant’s act of communication covers members of the public who could potentially purchase the TV Boxes from the defendant. The communication is aimed at an indeterminate number of potential recipients, including non-subscribers of the plaintiff’s services. One of the main selling points of the TV Boxes is that they are pre-installed with the Yogurt TV App, enabling users to gain access to television shows including the Astro Content, without having to subscribe to the plaintiff’s services. It is also clear that the sale of the TV Boxes was undertaken with a view to making a profit. [44] Based on the above, I am of the considered view that the defendant’s act of selling, distributing and/or providing the TV Boxes constitutes an act which falls within the definition of “communication to the public” in section 3 of the CA 1987. [45] Section 13(1)(aa) of the CA 1987 states that copyright in a literary, musical or artistic work, a film, a sound recording or a derivative work shall be the exclusive right to control in Malaysia the communication to the public of the whole or a substantial part of the work. It is not in dispute that the “communication to the public” of the Astro Content by way of the TV Boxes is provided without consent or licence from the plaintiff. [46] As such, I find that in selling, distributing and/or providing the TV Boxes, the defendant had committed an act of infringement under section 36(1) of the CA 1987, as the defendant had done an act controlled by copyright i.e. the communication to the public of the Astro Content, without consent or licence from the plaintiff. [47] The defendant contended that he was not aware of the Yogurt TV App installed in the TV Box. However, this contention is a bare denial, unsupported by any evidence. As mentioned above, one of the main selling points of the TV Boxes is that they are pre-installed with the Yogurt TV App, allowing users to gain access to television shows including the Astro Content, without having to subscribe to streaming media services, (including the plaintiff’s services). In these circumstances, it is implausible that the defendant was unaware of the installation of a software enabling such access, particularly when the TV Boxes were sold for that very purpose.

[48] In light of the above findings, the court allowed the originating summons, with costs. The court further ordered damages to be assessed. Dated 25 February 2026 ADLIN ABDUL MAJID Judge High Court of Malaya Kuala Lumpur Counsel: Plaintiff : Kirthana of Narai Alagu & Associates Defendant : Mohd Hafizuddin Khan of S. Kavita & Associates