How To Be A Savvy IP Blogger

With about 2 blogs created each second every day, blogging is growing at a speed faster than any other web activities on the Internet. Bloggers are not immune from legal consequences, be it civil or criminal liabilities. The relevant IP right in a blogging environment concerns mainly issues of copyright and sometimes, trademarks.

In this article, we will focus on the rights and liabilities under copyright laws in Malaysia. One of the greatest challenges posed by the Internet is the ease with which copyrighted materials may be freely and quickly disseminated, reproduced and modified.

Copyright in Blog Contents

Works placed on a blog are equally protected by copyright, a blog being merely a medium of a sufficiently permanent nature in which thoughts and even images are expressed.

The texts posted in a blog are protected as literary works; the images (pictures or videos) are protected as artistic works or films, and sounds and music are protected as sound recordings and musical works.

Some blogs are purely full of text, but some blogs consist of multiple multimedia works which involve a combination of several separate and distinct types of works in an integrated form. In this case, different forms of copyright may subsist in one blog simultaneously, and the design and the layout of a blog as a whole may also be entitled to a separate copyright. The law gives the original authors the right to exclude others from copying their works or claiming them as their own.

Copyright in URL?

One may wonder whether copyright would subsist in Uniform Resource Locators (“URL”), the electronic addresses of websites on the Internet.

In Exxon Corp v Exxon Insurance Consultants, it was held that the invented word “Exxon” was not entitled to copyright because the word “Exxon” did not instruct nor convey any information, instruction or pleasure in the form of literary enjoyment.

URLs being a string of alphanumeric notation, would unlikely enjoy copyright protection as such.

Posting of copyrighted materials

Contents found on the search engines such as Google and Yahoo! may be in the public domain but it does not mean that they are free to be copied or downloaded.

Most of the time, they are proprietary and copyrighted materials. Posting of pictures, videos or songs on a blog without the permission of the copyright owner is an act of infringement because it reproduces a work in digitized form and it infringes the copyright owner’s exclusive right to control the communication of such works to the public.

There is also the issue of moral rights of the authors.

Our copyright law confers moral rights to authors. These rights include the right to be identified as the author of the work and the right to object to derogatory treatment of his work such as distortion, mutilation or other types of modification of the work which significantly alters the work and might adversely affect the author’s honour and reputation.

Defences on Copyright

One particular important defence to works placed on the Internet is that of fair dealing.

If the act is for purposes of non-profit research, private study, criticism, review or the reporting of current events, it does not tantamount to copyright infringement. However, it must be accompanied by sufficient acknowledgement and attribution of the title of the work and its authorship.

There are no fast and hard rules in determining whether a certain use of a work amounts to “fair use”. However, the following factors are to be taken into consideration:

1. the purpose and character of the use, such as whether such use is of commercial nature or for non-profit purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted works.

For example, if only small portions of the original work or short quotations were copied or cited which are de minimis (bearing in mind that substantial reproduction is judged qualitatively rather than quantitatively in the assessment of infringement), or commenting or criticizing an item someone else has posted, these will likely be fair dealing.

Blogs will usually fall under non-profit use or for purposes of criticism and review.

However, in recent times, some bloggers have started to make profit out of their blogs by earning advertising revenue, engaging in blogs as a marketing strategy for their companies, and some are being paid for doing product review or endorsement. For these types of blogs, it might be argued that use of copyrighted materials can hardly be for non-profit use or would have otherwise exceeded the acceptable standards of “fair dealing” (however nebulous and subjective these standards may be).

The law further requires an acknowledgement of the title of the work and authorship if the work is used in public, which would be applicable in a blog environment.

Inline linking and Thumbnails – Fair Use? Copyright Infringement?

The issue as to whether inline linking is copyright infringement has been decided in the United States. The first of such decision could be found in the case of Kelly v Arriba Soft Corp.

The defendant is an image search engine company. It operates an Internet search engine that displays its result in the form of small pictures called thumbnails rather than the more usual form of text. To provide this service, the defendant developed a computer program that “crawls” the web looking for images to index. The crawler then downloads full-sized copies of the images onto the defendant’s server.

The program then uses these copies to generate smaller, lower-resolution thumbnails of the images. Once the thumbnails are created, the program deletes the full-sized original images from its server.

By clicking on one of these thumbnails, the user can then view a large version of that same image within the plaintiff’s website. This is called “inline linking”. As a result, although the images of the plaintiff came directly from the plaintiff’s website and were not copied onto defendant’s server, they seemed to be present as part of the defendant’s website.

The plaintiff alleged that the defendant’s use of the thumbnails violated his display, reproduction and distribution rights. However, the court ruled in favour of the defendant, stating that use of thumbnails in the search engine was fair use, not copyright infringement.

The court found that the defendant’s use was highly transformative, in that it made available to Internet users a functionality not previously available, i.e. an improved way to search for images.

This factor weighs in favour of the defendant due to the public benefit of the search engine and the minimal loss of integrity to the plaintiff’s images. Furthermore, the defendant’s use of the plaintiff’s images in its thumbnails did not harm the market for the plaintiff’s images. The thumbnails would guide people to the plaintiff’s website rather than away from it.

Recently, the same issue arose again in Perfect 10 v Google and Amazon.com.

The court ruled that inline linking of thumbnails does not tantamount to copyright infringement. Its use was justified under the fair use defence. It was said that because Google’s servers do not store the images, Google does not have any “material objects in which a work is fixed, and from which the work can be perceived, reproduced, or otherwise communicated”.

Google only provides HTML instructions that direct the user’s browser to the website that stores the full-size images.

Providing these HTML instructions is not equivalent to showing a copy. It merely gives the address of the image to the user’s browser. The browser then interacts with the computer that stores the infringing images. While in-line linking and framing may cause some computer users to believe that they are viewing a single Google website, the Copyright Act, unlike the Trademark Act, does not protect a copyright owner against acts that cause consumer confusion.

The issues of linking, framing and inline linking would not be treated any differently when appearing in a blog as with any other website engaging in such a practice.

In Malaysia, a thumbnail may be protected as an artistic work and its reproduction on a blogger’s website without the authorization of the copyright owner would arguably tantamount to copyright infringement as such reproduction would be in a material form.

“Material form” is defined under the Act to include “any form (whether visible or not) of storage from which the work or a substantial part of the work can be reproduced.”

However, if the technical argument made in the Google case is followed, in that the thumbnail is nothing but an HTML instruction, and is not stored in the blogger’s server, but instead directs the user to the copyright owner’s website where the actual image is actually stored and from which reproduction occurs, then there is legally no reproduction and copyright infringement to speak of in the blogger’s website when a user clicks on the thumbnail.

Whether there is copyright infringement, therefore, hinges on how and where reproduction occurs. Should there be a finding of infringement, it is doubtful whether the fair dealing defence will be broad enough to cover an instance of inline linking unless the blog is one which is solely for non-profit research, criticism, review or reporting current events.

Liability of blog owner for posts or comments made by the third party

There is also an issue on the liability of a blog owner. The main purpose and attraction of blogging are to invite third parties to contribute posts or comments to the blogs.

As copyright subsists in the work so long as the work is original and has been written down, recorded or reduced to a material form, the copyright of each post or comment posted belongs to the authors, not the blog owner.

Nevertheless, it has been said that when a person posting comments on a blog for the purpose of public display, he is likely to have given an implied license for that display and for its reproduction.

In Malaysia, the requirement is for copyright licenses to be in writing. As such, a blog owner can always make it clear in the Terms and Conditions of Use that by posting comments, the authors agree to license them to the blog owner whereby the blog owner reserves the right to publish or delete any posts or comments which may be deemed to be inappropriate especially copyrighted materials belonging to others.

There are two interesting High Court decisions which provide a good illustration on the extent of the liability of a blog owner. In The New Straits Times Press (M) Bhd v Ahirudin bin Attan, the plaintiff had commenced a defamation action against the defendant who maintained a popular blog called the “Rocky’s Bru” blog.

The plaintiff had applied for an interlocutory injunction to restrain the defendant from posting further or similar defamatory statements against the plaintiff. Subsequently, the plaintiff applied for leave to commence committal proceedings against the defendant on the grounds that there was a breach of the defendant’s undertaking by linking his blog to another anonymous blog called “Walked With Us” which contained discussions of the pending defamation suit.

The plaintiff alleged that such linking amounted to a re-publication of the contents of the “Walk With Us” blog based on the New Zealand case of International Telephone Link Pty Ltd v IDG Communications Ltd [CP No 344/97].

The court ruled that the defendant could not be held liable for the contents of the “Walk With Us” blog.

He was neither the author nor the publisher of that blog. The court held that in that New Zealand case, there were “active/ direct” references to the contentious website in question by the author of the article whereas in the present case, there was only a “passive” reference to the “Walk With Us” blog where only the name of the blog appeared on the right column of the defendant’s blog together with the names of about 85 other hyperlinks.

In Stemlife Berhad v Bristol-Myers Squibb (M) Sdn Bhd, the plaintiff filed an application for pre-action discovery against the defendant for defamatory postings on the defendant’s website and in an external blog linked to the defendant’s web forum by two users of the forum operating under the pseudonyms “stemlie” and “kakalily”. The plaintiff sought the identification of the two users so that they can initiate the defamation suit against the users.

The defendant opposed the application on the grounds that the defamatory article was posted on an external blog and not on the defendant’s website and the defendant was neither the author nor publisher of the external blog.

However, the court held that based on the Norwich Pharmacal principles, the plaintiff was allowed to seek disclosure from the defendant who had information identifying the wrongdoer so that action can be brought against the wrongdoer.

There was evidence on the defendant’s website showing a posting expressly inviting users to visit the offending blog and a posting that published accusations against the plaintiff’s company. There was also evidence in the plaintiff’s affidavit which showed that the defendant’s website had terms and conditions that reserved the defendant’s editorial rights in that the defendant in its sole discretion could edit or completely remove postings on the website if it so desired without prior notice or explanation.

Hence, the defendant by providing and controlling the website that enabled defamatory materials or hyperlinks to be posted freely with no editorial editing clearly facilitated the wrongdoing. The defendant was not a mere bystander. The defendant’s website featured not a passive hyperlink but an active hyperlink that could be actively and independently used by users to visit the said offending blog. Therefore, the defendant was ordered to disclose the identity of the two users.

These two cases seem to suggest that where there is “active/direct” reference to a particular hyperlink website/blog, coupled with control over the external blog or posting, a blog owner may be liable for the contents published in the hyperlinked website/blog.

Although these two cases did not involve issues of copyright infringement, they are instructive on how Malaysian courts may find liability of a blog owner who may facilitate the reproduction or republication of infringing materials by providing the necessary links and write up to sites containing such infringing materials.

Under our copyright law, any person who causes any other person to infringe is liable for copyright infringement. The Malaysian courts have not decided on the ambit and scope of “causing infringement”, and it remains to be seen if a blog owner, having control over its website with full editorial rights, could be held to be causing infringement by facilitating the third party through active promotion and encouragement of visits to links containing such materials, resulting in the subsequent download and reproduction of infringing materials.

Conclusion

Bloggers should always bear in mind that the Internet does not exist in a legal vacuum.

In recent times, there have been occasions where bloggers including the prominent local blogger Raja Petra Kamaruddin, politicians and social activists were arrested and charged for defamation and sedition.

However archaic or conventional a set of laws or existing legal principles are, there are always means and ways of extending them to a new medium and environment, rightly or wrongly so. Violating copyright laws in the blogging sphere should therefore not be taken lightly and copyright infringement is likely to be one of the means of subjecting reckless bloggers to legal persecution.

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About the author:
This article was written by Edwin Lee Yong Cieh, Partner of LPP Law – law firm in Kuala Lumpur, Malaysia (+6016 928 6130, [email protected]). Feel free to contact him if you have any queries.

This article was first published in CHIP Magazine Malaysia.

The view expressed in this article is intended to provide a general guide to the subject matter and does not constitute professional legal advice. You are advised to seek proper legal advice for your specific situation.