copyright committee report - malaysia

ASIAN PATENT ATTORNEYS ASSOCIATION

COPYRIGHT COMMITTEE REPORT – MALAYSIA

COPYRIGHT COMMITTEE MEETING

1. Proposals for Changes in Copyright Law in Malaysia

The proposed Bill for the Copyright Act is still being debated in Parliament.

2. Copyright Cases

The following cases relating to Copyright were reported in the past year.

Syed Ahmad Jamal v. Dato Bandar Kuala Lumpur [2011] 2 CLJ 569

Facts:

In this case, the plaintiff is a highly respected and internationally well-known artist.

Pursuant to a commission by UMBC Harta Sdn Bhd in 1985, the plaintiff designed and completed a sculpture entitled “Puncak Purnama” („Lunar Peaks‟) and the surrounding landscape on a vacant government land. A unique plinth was constructed duly ascribing the authorship of the Lunar Peaks and the said surrounding landscape to the plaintiff. On 20 November 1986, Lunar Peaks and the surrounding landscape were presented to the defendant as a gift from UMBC to the residents of Kuala Lumpur. In 2000, the defendant carried out modifications to the

Lunar Peaks and to the surrounding landscape without notifying the plaintiff or seeking his consent. The plinth was also removed. The plaintiff wrote to the defendant to state his objection against the defendant‟s modifications and demanded that the defendant forthwith restore Lunar Peaks and the surrounding landscape to its original condition. The plaintiff‟s demands were not complied with. Thus, the plaintiff filed this action claiming that the defendant had infringed his moral right pursuant to s. 25 (2) of the Copyright Act 1987 („the Act‟).

Issue:

Whether the modification of Lunar Peaks by the defendant amounts to the distortion or mutilation which significantly alters the work; and as such that it might reasonably be regarded to have adversely affected the plaintiff‟s honour or reputation?

Held/ Findings:

1. Moral rights under the Act focus on safeguarding of the author‟s integrity and reputation. The Lunar Peaks was a sculpture and hence, it was an artistic work protected under the Act. These moral rights are alienable rights and are exercisable during the subsistence of the copyright in the work and at the option of the author only, regardless of whether copyright is at the time of the complaint, vested on the author. Moral rights consist of the following:

(i) the right to be identified as author (the right of paternity)

(ii) the right of integrity

Prepared by Cindy Goh Joo Seong, Copyright Committee Representatives, APAA Malaysia Group.

Comments/Queries to cindy@cheangariff.com

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ASIAN PATENT ATTORNEYS ASSOCIATION COPYRIGHT COMMITTEE MEETING

2. Section 25 (2) of the Act prevents any person from presenting a work without identifying the author or under a name other than that of the author. Removal of the unique plinth by the defendant had resulted in failure to identify the plaintiff as the author of the works. Hence, the moral right of the plaintiff to be identified as the author of the works had been infringed by the defendant.

3. The modification made by the defendant had significantly altered the character and spirit of Lunar Peaks and had completely destroyed the delineation in form and the serenity intended by the plaintiff. Although the altered sculpture was based on the same form as testified by the plaintiff, the significant alterations had completely removed all the traces of the plaintiff‟s artistic work. The significant distortion, which amounted to derogatory treatment of the Lunar Peaks had adversely affected both the plaintiff‟s honour and reputation.

4. Although the defendant has a statutory duty and responsibility under the Local

Government Act 1976 to maintain the public place but the defendant does not have a right to desecrate Lunar Peaks and the surrounding landscape without obtaining the plaintiff‟s consent. In carrying out one statutory duty (in seeking consent) can be disregarded or ignored. There was a breach of statutory duty by the defendant.

5. A declaration was granted in favour of the plaintiff that he would have an absolute right to recreate the Lunar Peak at any other place.

6. Exemplary damages was awarded to the plaintiff in light of the oppressive and arbitrary conduct of the defendant. Aggravated damages was awarded to the plaintiff to compensate for injuries caused by the behaviour and conduct of the defendant to the plaintiff‟s feeling, dignity or reputation. Damages was thus awarded for infringement of the plaintiff‟s moral right in the sum of RM

750,000.

7. Plaintiff‟s claim is allowed.



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Ultra Dimension Sdn Bhd v. Ketua Pengarah, Lembaga Penggalakan

Pelancongan Malaysia & Ors [2010] 8 CLJ 245

Facts:

The plaintiff claimed copyright in a photograph with images of the Kuala Lumpur

Skyline with emphasis on sceneries and landmarks such as the KLCC and KL

Towers. According to the plaintiff, the first defendant infringed its copyright in the photograph when the latter published the Visit Malaysia Year Brochure 2007 (the brochure) incorporating the photograph. The plaintiff therefore sought, inter alia , damages, delivery up, declaratory relief, and inquiry as to damages or an account of profits against the first defendant. To establish ownership, he plaintiff relied on the affidavit affirmed by Bok Tak Siew (PW1) (the affidavit) made pursuant to s. 42 of the

Copyright Act 1987 (the Act). However, the original photograph was not annexed to the affidavit. Learned counsel for the first defendant submitted that the s.13 (2) (i) of the Act clothed the first defendant with statutory protection against the plaintiff‟s claim.

Issues:

1. Whether the plaintiff owned the copyright in the photograph?

2. Whether the Malaysian Tourist Promotion Board (“the Board”) fell under the protection of s. 13(2) (i) of the Act?

Held/ Findings:

1. It was held that s. 42 of the Act lays down a pre-condition for the admission of the affidavit, namely, a true copy of the work must be annexed to the affidavit.

The requirement to annex the photograph to the affidavit is a condition precedent and mandatory; the court will require strict compliance. The failure to comply with the prerequisite of s. 42(1) (a) rendered the affidavit defective and invalid. Therefore, there was no prima facie evidence to show that the plaintiff was the copyright owner of the photograph.

2. There was material discrepancy in PW1‟s evidence concerning who actually took the photograph in question. The first version was that PW1 personally took the photograph. On the other hand, the other version was that a group of photographers were involved in taking the photograph. It was not established that the photographers in the group were the employees of the plaintiff when the plaintiff took the photograph. Therefore the court was unable to make a finding that PW1 personally took the photograph. More than one party had collaborated to create the photograph and the contribution of each photographer was not distinct or separate from the other. As such, s. 26(2) of the Act did not in any way assist the plaintiff.

3. Since the plaintiff failed to prove on the balance of probability that he was the owner of the copyright in the photograph, the plaintiff had no locus standi to sue for infringement as s.37(1) of the Act provides that infringements of copyright shall be actionable at the suit of the owner of the copyright.



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4. The board is a statutory body established by The Malaysian Tourism

Promotion Act 1992 under the purview of the Minister of Tourism and therefore under the control of the Government of Malaysia. The brochure was published and distributed to the public to promote tourism. Thus, the photograph was used in the public interest to generate tourism revenue. The first defendant had distributed the brochure free of charge and derived no profit from the publication and distribution of the brochure. Therefore, the first defendant was accorded statutory protection under s. 13 (2) (i) of the Act against the plaintiff‟s claim.

5. The plaintiff‟s claim is dismissed with costs.



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Kuang Pei San Food Products Public Company Limited v Wees Markerting Co.

Sdn Bhd [orted]

Facts:

The plaintiff contended that sometime in 2009 they discovered that the defendant had been distributing canned sardines under this brand name which is similar to the get-up of their fried canned sardines in terms of the colour, the packaging, the picture of the blue fish, chillis and vegetable dish depicted in their get-up, thereby causing confusion to their customers. The plaintiff had therefore commenced an action on 12.11.2009 for the alleged infringement of their trade mark, and of their copyright and for passing off of their registered trade mark. [For purposes of this paper, only the issue relating to copyright infringement will be reported]

Issues:

1. Whether the defendant had infringed the plaintiff‟s copyright subsisting in the artistic work?

Findings/ Held:

1. There are two requirements in law to prove copyright infringement. They are firstly, an objective similarity and secondly, a casual connection between the infringing work and the copyright work.

The plaintiff has adduced evidence to show that the plaintiff‟s get-up was designed by a company in Thailand, Constant Advertising Co Ltd and with a statutory declaration by Mdm Khimpring Tohtubtiang, there is prima facie evidence as provided by s. 42 of the Copyright Act read with Copyright

(Application to Other Countries) Regulations 1990 that the plaintiff is the copyright owner in the get-up plastered on their canned sardines.

For the first requirement, the Court found that there were similarities in the two get-ups. As for the second requirement, the plaintiff‟s get-up being the first one in the market the logical inference when viewed in the light of the strong association between the defendant and the plaintiff‟s former distributor, Wee

Ping Trading Sdn Bhd is that the plaintiff‟s get-up „ must be the source from which the infringing work is derived …‟. Thus, the court held that an action for copyright infringement had been made up.

2. On these considerations, the court granted a permanent injunction to restrain the defendant in the manner and along the lines as prayed in the statement of claim and reproduced in the plaintiff‟s counsel‟s written submission in reply.

3. Refund security deposit of RM100,000.00 to the plaintiff.



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4. Cost of the action which the court fixed at RM50,000.00.



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Elster Metering Limited & Ors v Dura-Mine Sdn Bhd [Unreported]

Facts :

The plaintiffs have instituted this suit against the Defendant for alleged infringement of their claimed copyright over artistic works, to wit 6 engineering drawings [„the

Drawings‟] in relation to a rotational water meter, known as Kent PSM [P11] . The 2 nd

Plaintiff is also claiming to be the exclusive licensee of the copyright in the Drawings.

On the other hand, the defendant has also countered by saying that the Plaintiffs‟ said Drawings do not attract copyright protection and that the drawings that have been produced by its supplier of the water meters described as model reference

PD97 TRP [P12], namely the Lianyungang Lianli Meter Water Co. Ltd in China

[„Lianli‟], independently.

Issues :

1. Whether the first plaintiff is the owner of the intellectual property (including copyright) and associated goodwill in the design and drawings of the Kent

PSM water meter and its predecessor Kent JSM water meter?

2. Whether sufficient effort and skill had been expended to make the Drawings original in character?

2.1 whether the Kent PSM water meters were designed or made according to general principles for designing or making of a water meter?; and

2.2 whether the Kent PSM water meters were based on existing designs, models or samples which were available and/or commonly used at the material times?

3. Whether the defendant knew or had reason to believe that import and sale or offer for sale in Malaysia and dealing in or within Malaysia the PD97 TRP water meters constitute acts of infringement of copyright in the Drawings?

4. Whether the defendant committed acts of copyright infringement of the plaintiffs‟ Drawings by dealing with the water meters under reference number

PD97TRP?

Findings

1. The first plaintiff is the rightful owner of the intellectual property such copyrights. The affidavit had clearly established the link that had existed between the 1 st plaintiff and the Drawings, which were produced by its employees. The court also found that the P11 was produced from the

Drawings based on general principles that are related to water meter designing but that the said Drawings from which the P11 was produced by the plaintiff‟s were not based on existing designs, models, or samples which were available and/ or commonly used at the material times. Their design as per the Drawings was original and not one that was copied from available models of water meters at the material time.



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The court found that the P11 water meter belonging to the plaintiffs had been in the market. The court also found that the P11 was produced based on the works put in by the workers of the 1 st plaintiff where sufficient effort and skill had been expended to make the Drawings original in character.

2. The court found that the contents and averments as contained in the affidavit pursuant to section 42 of the Copyright Act 1987 were sufficient to establish evidence at a prima facie level that copyright existed over the said Drawings of the plaintiffs and that it resides in the 1 st plaintiff. Moreover, the plaintiff had also fulfilled the condition precedent in section 42 of Copyright Act 1987.

3. The court found that the defendant‟s PD97 TRP water meters (P12) were not of an original design. The defendant had failed to rebut the prima facie evidence led by the plaintiff that the copyrights over the Drawings were owned by them.

4. The court found that they need to make necessary inference as the defendant had actual knowledge and/ or knew or ought reasonably to know that their model would constitute acts of infringement of copyright in the 1 st plaintiff‟s

Drawings.

5. The court allowed plaintiffs‟ claim and ordered the defendant to pay the plaintiffs costs of RM 50,000.00.

Report prepared by

Cindy Goh Joo Seong for the Copyright Committee of the

Malaysian APAA Country Group



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copyright committee report - malaysia

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