High Court red cards restaurant bar for illegal screening of English Premier League matches

With the FIFA World Cup Qatar 2022 raging on, it is apt that the Malaysian Court has recently decided on a copyright infringement claim, the subject matter of which is “the beautiful game” – football. As unprecedented as Morocco’s recent performances of beating Spain and Portugal to become the first African nation to qualify for the semi-finals in World Cup history, the decision in The Football Association Premier League Ltd & Anor v Bar Theory Sdn Bhd & Ors [2022] MLJU 2950 breaks new ground as it is the first reported judgment (and a very eloquently written one at that) on the interpretation of the right of “communication to the public” under the Copyright Act 1987.
The 1st Plaintiff, The Football Association Premier League Ltd, is in the business of organising the English Premier League competition and controls the most lucrative and much envied worldwide audio-visual rights to all telecasts of Premier League matches. In Malaysia, the licence to those audio-visual rights is given exclusively to the 2nd Plaintiff, MEASAT Broadcast Network Systems Sdn Bhd, the operator of Malaysia’s premier (pun very much intended) television and broadcasting service, Astro. Meanwhile, the 1st Defendant, Bar Theory Sdn Bhd, had live-screened several Premier League matches in February and March 2022 to the patrons at its restaurant bar in KL using a set-top box device without the requisite subscription, authorisation, license or permission of the Plaintiffs.
The Plaintiffs commenced proceedings in the Kuala Lumpur High Court, alleging that the Defendants had infringed their copyrighted works, including onscreen graphics, logos and promotional materials. In addition, the 1st Plaintiff also claimed copyright over the English Primer League football matches that were screened by the 1st Defendant at its restaurant bar. The Plaintiffs sought various orders from the Court, including a declaration that the acts of the showing, playing, screening, streaming to the public and/or communicating to the public of the whole or a substantial part of the Plaintiffs’ copyrighted works without their consent, is an infringement of copyright under Section 36 of the Copyright Act 1987.
To provide some context, copyright is a bundle of exclusive rights prescribed under Section 13(1) of the Copyright Act 1987, which are exclusively owned by the copyright owner. This includes the right to reproduce a copyrighted work and, crucially for the purposes of this case, the rights under Section 13(1)(aa) for “communication to the public” and under Section 13(1)(b) for “performance, showing or playing to the public”. These rights are sometimes colloquially referred to as “performing rights” which allow a person to perform or play a piece of media (most often music or film) in public. A key distinction between the two is that the former is meant to cover the transmission of a copyrighted work to the public through wire or wireless means. Although the words “livestream” and “internet” do not appear anywhere in the definition of “communication to the public”, it is widely known in the industry that this right is meant to cover the right to transmit works through the internet, but there had been no legal authority to interpret and confirm this understanding – until now.       
In November 2022, the High Court found that the Plaintiff had established its claim for copyright infringement against the Defendants. It was held that the Defendants’ acts of showing, playing, screening and/or streaming the Plaintiffs’ copyrighted works on a set-top box set up to its patrons was an act of “communication to the public” under Section 13(1)(aa) of the Copyright Act 1987. Similarly, the High Court held that the Defendants’ acts also amounted to “performance, showing or playing to the public” under s. 13(1)(b) of the Copyright Act 1987.
In so doing, the High Court referred to legislation and authorities from the UK and EU on the interpretation of both “communication to the public” and “performance, showing or playing to the public” and found that the Defendants had infringed both rights. Among the principles referred to and adopted by the High Court are those established in the EC Court of Justice’s judgment of 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, which held among others that, for there to be infringement by way of “communication to the public”, the copyrighted work must have been broadcasted to a ‘new public’, i.e. a public outside the contemplation of the copyright owners of the copyrighted works when they authorised the initial broadcast use by the communication to the original public. On the facts, the initial authorisation by the Plaintiffs was for transmission to subscribers of Astro only, to receive only in their own private or family circles1. Thus, the Defendants’ transmission to its patrons was to a “new public”, as the patrons of the Defendants viewing the English Premier League matches at the 1st Defendant’s restaurant bar were not a segment of the public contemplated by the Plaintiffs when they authorised the initial transmission, per the ECJ’s decision.
It should be noted that this case is peculiar on its facts, insofar as its litigation process is concerned, as the Defendants opted not to put up any substantive defence against the Plaintiffs’ claim. No trial took place either, as the action was commenced by way of an originating summons, and disposal of the case was by consent limited to determination of a declarative prayer sought in the originating summons.
Nonetheless, the significance of this decision cannot be overstated. While it has been widely known (if not, theorised) among legal practitioners and academicians that the right of “communication to the public” in the Copyright Act 1987 is meant to provide for online transmission of copyrighted works such as livestreaming, this judgment confirms this understanding and provides much needed guidance on the principles to be applied in determining whether a defendant’s acts infringe upon this right. Establishments seeking to attract custom by broadcasting World Cup matches or other copyrighted works without proper licence should pay heed to this decision so as to not find themselves receiving a “red-card” from the Courts.
Case note by Gooi Yang Shuh (Senior Associate) of the Intellectual Property Practice of Skrine.

1 It should be noted that Astro also offers subscription packages for commercial establishments such as malls, hotels, restaurants, bars and pubs, cafés, healthcare establishments and educational institutions.

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