Recently, the Maltese Parliament by virtue of Act XXIV passed an amendment to Article 298B of the Maltese Criminal Code (Chapter 9 of the Laws of Malta) which deals with copyright infringement.

Copyright has for long been shrouded in a lot of ambiguity and grey areas. This has always led the public to regard copyright in a very abstract way.

Besides the enactment of harsher penalties, the amendments relating to Article 298B are meant to bring Malta in compliance with its international obligations to curb copyright infringements when these are carried out as part of the activities of a business concern.

Therefore, it should come as good and positive news to copyright holders who are being given protection not merely in respect of civil infringements of their work but also in situations where their work is being used by the infringer during the course of execution of its business where the latter intends to derive a profit as a result of the infringement itself. In that sense, both the scope and sanctions of copyright infringements included in Article 298B have been widened in order to create deterrence and which may expose companies to severe repercussions.

Intellectual property legislation in Malta is regulated by separate pieces of legislation. The primary IP laws were therefore promulgated together in Chapters 415 to 417 of the Laws of Malta.  Therefore, Chapter 415 deals in the main with copyright, Chapter 416 deals with trademarks while Chapter 417 deals with patents and designs.

Taking the example of the Copyright Act alone, this law brought about a number of revisions to existing rights under the realm of copyright (such as more encompassing exclusive reproduction rights and communication to the public rights in favour of the owners of copyright).

We also saw the introduction of the protection of new rights under copyright, such as the sui generis rights protection in databases and the sui generis rights protection for topographies of semi-conductor products.  There was also the recognition of technological measures and rights management information systems under the new Copyright Act.

All of the above-mentioned intellectual property legislation, bar copyright, contain provisions which provide for the commission of a criminal offence in certain specific situations, in particular where the offender carries out an infringing act vis-à-vis the IP in question with intent to obtain some form of commercial gain or otherwise where there is intention to cause loss to another person.

The reason why a criminal offence was not inserted in the Copyright Act seems to be because of Article 298B of the Criminal Code which already provided for a criminal offence in certain situations of copyright infringement.

The difficulty with Article 298B, hence its required amendment, was due to the fact that it was originally adopted in the Criminal Code way back in 1991.  In the period 1991 till 2014, there was never any real amendment to the said provision.  The effect of this was that the provision did not catch up with various types of criminal behaviour, relating to copyright infringement. In addition, the penalties of the mentioned article of the Code were quite low, especially when compared with their counterparts in Chapters 416 and 417 for trademarks, patents and designs.

Since 1991 Malta became a member of a number of international copyright-related treaties, either directly as a country or through its status as a full member state of the EU.  For instance, in 1995 the TRIPs Agreement (Trade Related Aspects of Intellectual Property Rights Agreement) came into force, to which Malta is a party given its membership status to the World Trade Organisation (WTO). In 1996, the World Intellectual Property Organisation (WIPO) gave the intellectual property world the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  All of these international instruments lay down various measures and rights for protection under the realm of copyright and all of them require member countries to implement under national law adequate protection and enforcement mechanisms especially in situations of infringement of copyright.

For instance, under TRIPs, Article 61 states that “members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity.

In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale”.

It was therefore opportune to revise Article 298B to criminalise not only the channel type of copyright infringement, but also the business end user type where the infringing act is carried out in the exercise of a trade or in the course of a business.

Consequently, penalties have been increased from a fine the maximum of which was of €11,646 to a revised amount whereby the fine now cannot be less than €3,000 and can reach to a maximum of €24,000. The imprisonment term has also been raised from a maximum period of one year to a maximum period of three years.  If convicted, the court could opt to apply either a fine or an imprisonment term, or even both.

Antoine Camilleri is a partner at Mamo TCV Advocates.

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