MAIZATUL AQIDAH BINTI SABARUDDIN (01123853974)
which contained information about the product and some
INTELLECTUAL PROPERTY I
CHAPTER ONE: COPYRIGHT WORKS
Definition : Copyright is concerned exclusively with the expression
of the idea on which a work is based.
The copyright owner of a work is granted a bundle of rights to do
various acts in relation to the work. This bundle of rights is exclusive
to the copyright owner in that anyone who performs one of the acts
which fall within the exclusive rights without the permission of the
copyright owner may be liable for copyright infringement.
Requirements for Protection
There are four requirements :
a) The work must be original
b) The work must have been written down, recorded or
reduced in material form
c) The work must satisfy one of the qualifications for
protection under Section 10
d) The work must fall within one of the categories of the work
Originality
Definition : Lord Pearce, in Ladbroke (Football) Ltd v William Hill
(Football) Ltd stated that the word ‘original’ did not demand original
or inventive thought, but only that the work should not be copied
and should originate from the author
i. Originality requires sufficient effort
Kiwi Brand (M) Sdn Bhd v Multiview Enterprises Sdn Bhd
The plaintiff asserted that the back label on its product
artistic works was original because sufficient effort has been
expended in its production. It was held that the assertion
has not been substantiated by plaintiff as he failed to state
how much actual time was expended on the label or what
the nature of the effort was.
Hardial Singh Sekhon v MDC Sdn Bhd
To maintain an action for infringement of copyright, plaintiff
must show that of without permission of the plaintiff had
done an act which has controlled by the copyright. The work
either literary, artistic, that eligible for copyright. He must
show that sufficient effort has expended by him on the
making of the work to give it or original character. He must
also shows that he is the author.
*can mere labour constitute ‘sufficient effort’?
The labour, skill and judgment in the steps preceding the
production of the work had to be taken into account in the
same manner.
In above-mentioned case, the mere exercise of substantial
amount of labour, without any skill, was sufficient to meet
the originality requirement in compilation cases.
ii. Originality is not equated with newness or quality
The requirement for originality should not be equated with
the prerequisite in industrial design law that design must be
new to qualify for registration.
iii. Originality requires work to originate from author
Another person who creates his own independent work
without recourse to any act of copying has created an
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 original work even if his work happens to be identical to an
earlier work.
Copyright protection is more limited in scope than the
monopoly that is granted in patent law or trade mark law.
No originality in trivial works : effort which is trivial, such as the
drawing of a straight line with the aid of a ruler, cannot result in an
original work
Lam Soon (M) Bhd v Forward Supreme Sdn Bhd & Ors – Justice Low
Hop Bing stated that the design of the circle and diagonal stripe was
not a feature which required sufficient effort to be expended to
make the work original. It was held that the combination of the
color red and yellow was commonplace and not original.
Originality where a work is derived from an existing work : where
a work is copied directly from another, such as photocopying or
tracing, the resulting work does not qualify as an original work even
though considerable labour was involved.
Kiwi Brand (M) Sdn Bhd v Multiview Enterprises Sdn Bhd – it was
trite law that there could be no copyright in mere copying or
transcribing.
Interlego AG v Tyco Industries Inc & Ors – the labour and skill that
are applied in the process of copying an earlier work must result in
some amount of alteration or embellishment in the resulting work
for the purpose of conferring originality.
*Protect expression of idea
University of London Press Ltd v Univesity Tutorial Press Ltd –
examination papers which were prepared by examiners were held
to constitute original literary works even though the question were
drawn upon a stock of knowledge common to mathematician. What
is required is not originality of idea but originality of expression of
the idea. The expression of the idea must originate from the author
in the sense that the work must not a copy of another work.
Lam Soon (M) Bhd v Forward Supreme Sdn Bhd – the plaintiff had
applied for injunction to restraint the defendant from using its
artistic work in the form of a label featuring a knife device encased
in a circle with a diagonal shape. It was held that the plaintiff label
was not original because it was identical to the trade mark of the
defendant which has been registered before plaintiff started using
its mark.
Reduction to Material Form
a) Fixation in a material form
- It is required to be written down, recorded or
otherwise reduced to material form in order to be
eligible for copyright. This reduction to a material form
is known as fixation.
- The Register of Copyright set up under the newly
inserted Section 26B(1) serves as notification of
copyright in a work and is prima facie evidence.
- What amounts to material form is defined in section 3
as any form (whether visible or not) of storage from
which the work or a substantial part of it can be
reproduced.
- The requirement of fixation in a material form applies
only to a literary, musical or artistic work.
- The definition of material form is the technology
neutral and is sufficiently broad to encompass future
developments in technology.
- The ‘storage’ is sufficient to constitute ‘material form’.
- The degree of permanency in the embodiment of the
work must last for a period of more than transitory
duration.
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 b) Idea-expression dichotomy
- Copyright does not protect the underlying idea of a
work but protects the expression of this idea
- The rationale is to enable public to enjoy progress /
improvement made in the non monopoly nature
- Any person is at liberty to use those ideas as long as the
expression of his work not taken
- Section 7(2A) – copyright protection shall not extend to
any idea, procedure, method of operation,
mathematical concept
2 kinds of idea in making work :
i. General idea or basic concept of work which formed in the
mind of the author
ii. The expression applies in the exercise to transform the
basic concept into concrete form – reduced into tangible
form
For instances, idea underlying a storybook may be copied by
another person without infringing the copyright in the
storybook. He may not copy the expression which is used in
the book to convey the idea.
Saleha bt Hussin lwn Ab Wahid b Nasir & 2 Lagi
The plaintiff had written a short story entitled Zuriat which
she developed it into script. She submit to the defendant
but was not accepted 8 years later, the defendant has
broadcasted a television drama entitled zuriat. Plaintiff
claimed that the defendant had infringed her copyright in
script written by her. It was held that the judge found
similarities in the plots, characters, story treatment and
usage of certain words in dialogues. There was infringement
of copyright by the defendant.
Goodyear Tire & Rubber Company & Anor v Silverstone
Tire and Rubber Co Sdn Bhd
The plaintiff contended that the defendant tire products
were reproduction either from plaintiff drawing or from the
plaintiff tire product by reverse engineering. It was held that
copyright preserve the right over artistic expression of the
drawing and not to protect functionality of the articles
drawn. The plaintiff asking to protect the idea of the
function of the tire and not its artistic value.
Qualification for Copyright Protection
Section 3 defines qualified person as follows:
a) in relation to an individual, means a person who is a citizen
of or permanent resident, in Malaysia; and
b) in relation to a body corporate means a body corporate
established in Malaysia and constituted or vested with legal
personality under the laws of Malaysia.
Section 10 sets out three different types of qualifying criteria :
i. Section 10(1) : Qualification by reference to the author
(nationality of the author)
Individual : citizen or permanent resident of Malaysia
Company : incorporated in Malaysia
Section 59A : Extension of application of act
ii. Section 10(2) : Place of First Publication (Section 4(3))
Work is either published in Malaysia or it was first published
elsewhere but was subsequently in Malaysia within 30 days
of that first publication [Sec 4(3)].
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 By virtue of our membership in the Berne Convention, all
literary, musical or artistic work or films first published in
any of the Berne Union Country are also entitled to
copyright protection in Malaysia. Similarly, such works
published elsewhere non BUC but subsequently published
in BC within 30 days of its first publication, would be
entitled for copyright.
Honda Giken Kogyo v Allied Pacific Motor
The plaintiff alleged infringement of its copyright in
drawings and the three dimensional form embodied in the
form of a motorcycle, were created in Japan but first
published in Thailand (a Berne Union country). The works
were not published within one month in Malaysia. However,
it was held that as Thailand is a member of BC, the
copyright works were protected in Malaysia by reason of
their publication in BUC.
Television Broadcast v Mandarin Video Holding Ltd
The plaintiff which is the Hong Kong company, the copyright
owner of television films had supplied to dealer in Malaysia
more than 64K video cassettes of the films. It was held that
the video cassettes were in the possession of the Malaysian
dealer, it is sufficient to satisfy reasonable requirements of
the public.
*For works of architecture and broadcasts, separate rules
apply. Architecture – the erection of the building in
Malaysia or the incorporation of any artistic work in a
building located in Malaysia meets the qualification for
copyright. Broadcast – the qualification is met if the
broadcast is transmitted from Malaysia.
iii. Section 10(3) : Work made in Malaysia
The copyright shall subsist in every work eligible for
copyright if the work is made in Malaysia.
Hexagon Tower Sdn Bhd v Polydamic Holdings Sdn Bhd & 3
Ors
The plaintiff was in business of manufacturing and selling
rubber gloves chlorination tumblers. Plaintiff claimed
copyright in the technical and engineering drawings of its
tumblers and its 3D manufactured from the drawing. It was
held that the work made, by virtue of Section 10(3) denoted
the time when the plaintiff drawings were actually
completed. The drawing completed on 1996 hence
protection arose as early as 1995.
*Copyright in works of government – Section 11 & 12
Works Eligible for Copyright
Section 7(1) lists down six categories namely literary works, musical
works, artistic works, films, sound recordings and broadcasts.
1. Literary Works
Definition : Section 3 of the Copyright Act 1987 provides a long list
of works which fall within the category of ‘literary works’ such as
pamphlets, books, dramas, etc.
Cases :
University of London Press Ltd v University Tutorial Press Ltd –
Justice Peterson stated that literary works cover work which is
expressed in print or writing or refers to written or printed matter.
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Exxon Corp & Ors v Exxon Insurance Consultants International Ltd
It was held that the word ‘Exxon’ was original, it could not qualify as
a literary work because it had no meaning and suggested nothing in
itself.
a) Novel, stories, books, etc
University of London Press Ltd v University Tutorial Press
Ltd
Examination papers were literary works and hence subject
matter of copyright
b) Dramas, plays, stage direction
Mohd Ramly @ Dzulkifly b Ismail v Sarimah Film
Production Sdn Bhd & Anor
The court held that a manuscript which contained detailed
descriptions of various scenes and sub-scenes of a stage
play but no dialogue came within the category of a literary
work.
-Malaysia Copyright Act 1967 does not provide for
dramatic works as a separate category of copyright works
-A dramatic work, in its natural and ordinary meaning, is a
work of action, with or without words or music, which is
capable of being performed before an audience.
-Dramatic works must have certainty in subject matter and
sufficient unity to be capable of performance.
Saleha bt Husin lwn Ab Wahid b Nasir & 2 Lagi
The court held that the defendants had infringed the
plaintiff’s copyright because of the close resemblance
between the defendant’s television drama and the
plaintiff’s work in terms of plot, storyline, dialogue,
characters and story treatment.
c) Tables and Compilations
Definition (New Oxford Dictionary of English) : A ‘table’ as
a set of facts or figures systematically displayed. A
‘compilation’ as a thing, especially a book, record or
broadcast programme that is put together by assembling
previously separate items.
Penerbit Fajar Bakti Sdn Bhd v Cahaya Surya Buku dan
Alat Tulis
According to the court, the person who compiled each of
the books had copyright in the compilation and since he
had assigned his copyright to the plaintiff, the plaintiff
became the copyright owner in the collection or anthology.
Hardial Singh Hari Singh v Daim Zainuddin
Skill and effort are necessary elements for copyright
protection for compilations
Kiwi Brands (M) Sdn Bhd v Multiview Enterprises Sdn Bhd
Substantial labour is sufficient
d) Computer Programs
Definition : Section 3 defines as a set of instructions or
commands that gives directions to the computer as to the
sequence in which its operation should be conducted in
order to carry out specific functions.
Alfa Laval (M) Sdn Bhd v Ng Ah Hai & Ors
It was held that since expression can be in any language,
code or notation, a computer program is sufficiently broad
to encompass both its source code, object code and any set
of instructions in whatever converted from which could be
read by a computer.
*The source code is the language used by human authors
to write a computer program
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 *The object code is the source code is then converted to a
language which can be read by the computer
Onestop Software Solutions (M) Sdn Bhd & Anor v
Masteritec Sdn Bhd & Ors
It was held that copyright protection of a computer
program extended also to its non-literal elements, such as
its underlying structure.
Ibcos Computers Ltd & Anor v Barclays Mercantile
Highland Finance Ltd & Ors
The court held that copyright protection of a computer
program extended to both the source code as well as the
underlying structure of the program.
Three Elements :
a) Must be an expression of a set of instructions
Dyason & Ors v Autodesk Inc & Anor
It was held that autocad is a computer program
Autodesk Inc v Dyason
Autocad is a computer program used to insist in drafting
architectural and engineering designs and plans.
b) Set of instructions
Orders or directions being numbers or symbols which cause
a computer to perform some specified action & not
something which merely convey in formations.
c) Identification of the particular function for which the set of
instructions is intended to cause a computer or any device
with digital processing capability to perform
Australian Video Retailers Asso Ltd & Ors
Computer program in DVD was hence limited to those
program instructions and commands and did not extend to
the content embodied in the DVD.
The literary work was considered to have been made when
it was first stored on disk, and when stored in computer, it
was reduced to material form.
Autodesk Inc & Anor v Dyason & Ors
The computer program in the copyright act extended to a
computer program regardless whether it be expressed in
the written form or merely embedded or stored in a non-
sensate form such as electrical impulses on a disk, CD ROM
or E PROM.
2. Musical Works
Definition : A musical work is defined in Section 3 as any musical
work and includes works composed for musical accompaniment.
New Oxford Dictionary of English : defines ‘music’ as the art or
science combining vocal or instrumental sounds or both to produce
beauty of form, harmony and expression of emotion, and musical
accompaniment as a musical part which supports or partners a solo
instrument, voice or group.
*mere noise is not music, musical accompaniment include the lyrics,
tune and song lyrics fall within this category, section 7(2) applies,
the arrangement or adaptation has to be done with the consent of
the copyright owner of the original musical work.
Polygram Records Sdn Bhd lwn. Hillary Ang dan empat lain
(kumpulan search)
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Two recording contract entered into by defendant (the Search) with
plaintiff (recording co.) Contract concerned the recording of the
songs to be performed by the defendants and recorded by the
plaintiff. Contract stated that the copyright in all sound recording
belong to the company and the artist assigns to company any
copyright in arrangements or transcriptions of such musical works
which may be made by the artists. Defendant dissatisfied with the
arrangements made by the plaintiff and proceed to record their
new album with a new company. It was held that the condition
under the contract is valid and that no reason existed for any
reassignment of the copyright to the defendants.
PRS lwn. Harlequinn Records
The defendant was a music shop playing music over loudspeaker.
Defendant claimed that playing music in this context was beneficial
to the right holder since it could promote sale. It was held that the
performance to be public hence infringing. Publicity established on
the basis that the audience comprised members of the public
present in the music shops to which public at large were permitted
and encouraged to enter.
3. Artistic Works
Definition : Section 3 of the Act defines widely. This section divides
an artistic work intro three separate categories :
a) Graphic work, photograph, sculpture, or collage
Peko Wallsend Operations Ltd & 3 Ors v Linatex Process
Rubber Bhd
All drawings, regardless of whether or not there is any
aesthetic element in them, would fall within the meaning of
artistic work in Section 3.
- Graphic work
Definition : any painting, drawing, diagram, map, chart,
plan, engraving, etching, lithograph, woodcut or similar
work.
Onestop Software Solutions (M) Sdn Bhd & Anor v
Masteritec Sdn Bhd & Ors
It was held that the computer screen display and
graphic user interfaces were artistic works falling within
the first category of artistic work.
- Logos
Logos which are used as trade marks have been held as
artistic work
BP Plc v Mohd Shariff Abdullah
It was held that copyright subsisted in the plaintiff’s
well known BP Helios Logo and this was infringed by
the defendant who had used the logo in respect of its
letterhead and business card.
- Photographs
Definition : recording of light or other radiation on any
medium on which an image is produced or from which
an image may by any means be produced and which
not part of a film (Section 3).
- Sculpture and Collage
Definition : Sculpture means a cast or model made for
the purpose of a sculpture (Section 3).
New Oxford Dictionary of English : sculpture means a
two or three dimensional representative or abstract
forms, especially by carving stone or wood or by casting
metal or plaster.
A collage is defined as a composition or collection of
various materials such as photographs and pieces of
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 paper or fabric which are arranged and stuck to a
backing.
b) Works of architecture
Definition : a work of architecture being a building or a
model for a building. A building is defined to include any
fixed structure, and a part of a building or fixed structure.
*architectural plan for a building would be regarded as a
graphic work
Section 14 – copyright in a work of architect shall include
the exclusive right to control the erection of any building
which reproduces the whole or a substantial part of the
work either in its original form or in any form recognizably
derived from the original.
*if something happens to the building, reconstruct is
allowed, changing the design of the building without
consent will infringe the moral right.
Section 37(3) – no injunction shall be issued in proceedings
for infringement of copyright which requires a completed ir
partly built building to be demolished or which prevents
the completion of a partly built building
Section 13(2) – the reproduction and distribution of copies
of any artistic work permanently situated in a place where
it can be viewed by the public does not have the right to
control.
For example, the miniature of KLCC could not amount to
infringement of copyright.
c) Works of artistic craftsmanship
It must satisfies the elements of ‘artistic’ and
‘craftsmanship’.
Merlet v Mothercare
The plaintiff argued that the defendant copy his work on
making baby cape. It was held that the prototype baby
cape was not of artistic craftsmanship.
Burke & Margot Burke Ltd v Spicer Dress Design
The sketch of a frock was drawn by Mrs Burke while the
frock was made by the plaintiff company. It was held that
frock was not a work of artistic craftsmanship as the artistic
element did not originate from the plaintiff.
4. Film
Definition : any fixation of a sequence of visual images on
material of any description, whether translucent or not (Section
3)
Definition of fixation : embodiment of sounds, images or both,
or the representation thereof in a material form sufficiently
permanent or stable to permit them to be perceived,
reproduced or otherwise communicated during a period of
more that transitory duration
3 characteristics that a film must possess :
i. Must have sequence of visual images
ii. These images are fixated on any material
iii. Capable of being shown as a moving picture
Starsky v Hutch
The defendant only take one frame of picture and enlarge the
picture of that person into a poster. It was held that without
that single frame, the film is not complete and therefore the
defendant has considered to have taken a substantial part of
the film hence he is liable.
Foo Loke Ying & Anor v Television Broadcast Ltd & Ors
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 1st defendant claimed copyright in copies of film sold or hired
out to the public in Malaysia in the form of video case type. It
was held that the defendant had copyright their films in
Malaysia as it was published in Malaysia within 30 days of their
first publication in Hong Kong.
Polygram Records Ltd v Asia Amusement
A plaintiff were recording company claimed that the defendant
which carried on a business of restaurant and karaoke lounge
had infringed their copyright in the sound recording and musical
karaoke videograms by performing the works in public. It was
held that music or karaoke videograms was a film and not
sound recording.
*Section 43A – Offences.
5. Sound Recording
Definition : any fixation of a sequence of sounds or a
representation of sounds capable of being perceived aurally and
of being reproduced by any means, but does not include a
sound-track associated with a film.
*sounds are not confined to music, any verbal communication,
noise/non musical works
*section 41 – offences
6. Broadcast
Definition : the transmitting, 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.
*Radio, television broadcast, webcasts, teletext services fall
within this definition, excludes the private communication
between individuals, does not involve any fixation because it is
a transient act of communication, the transmission can be
varied in nature such as visual images, sounds or any type of
information.
Under section 3, broadcasting service means any service of
radio and television broadcast, operated under the general
direction control of or under license by the government in any
part of Malaysia.
*right granted to TV3, Astro, RTM, etc
Section 15 – nature of copyright in broadcast
Section 16 – broadcasting of works incorporated in films
7. Derivative works
Definition : defined as works in Section 3 as mentioned in
Section 8(1)(a) and (b).
There are two categories :
(a) Translations, adaptations, arrangements, and other
transformations of works eligible for copyright; and
(b) Collection of works eligible for copyright, or compilation of
mere data whether in machine readable or other form,
which constitute intellectual creation by reason of the
selection and arrangement of their contents.
*intellectual creation – selection and arrangements of contents,
a compilation of mere data can also come within the meaning of
compilation in the category of literary works, must obtain the
prior consent of the copyright owners.
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8. Published editions of works
Definition : dealt with Section 9, where this section confers
copyright protection for typographical arrangement of
published editions.
The typographical arrangement includes matters such as
spacing of words, the spacing between paragraphs, the
arrangement of the lines in the text, the type and size of the
font, margin, etc
Section 9(1) – copyright shall subsist in every published edition
Section 9(2) – the entity entitled to copyright in published
editions is the publisher of the published edition
CHAPTER TWO: AUTHORSHIP AND OWNERSHIP
Authorship
It is generally accepted that the person who creates a work is the
author of the work. The first copyright owner is the publisher of
which, according to Section 26(1), is the author of the work.
a) Authorship in literary works
Walter v Lane
The House of Lords held that the reporters who took
shorthand reports of the speeches of Lord Roseberry and
later corrected and revised the reports before publishing in
The Times newspaper were the authors of the reports
because they had exercised sufficient skill and judgment.
b) Authorship in musical works
Section 3 states that the author is the composer.
The New Oxford Dictionary of English
A composer is a person who writes music.
If the musical work solely comprises musical notes for
musical instruments or singers, the composer is the author
of the musical work.
c) Authorship in artistic works
The author is defined as artists. This includes a painter, a
sculptor, an engraver, a ceramist and a printmaker.
The input of skill and effort is by the person who made all
the relevant arrangements prior to the taking of the
photograph, he would be the author of the photograph.
d) Authorship in computer-aided works
The entity most closely linked to the work is the person
who makes the necessary arrangements for the creation of
the work.
e) Authorship in films and sound recordings
The author for films and sound recordings is the person by
whom the arrangements for the making of the film or
sound recording were undertaken.
Rock Records (M) Sdn Bhd v Audio One Entertainment Sdn
Bhd
It was held that the author of the sound recording was the
record company which made the arrangements for the
sound recording to be produced.
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 Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp
Sdn Bhd & Ors
Justice Kamalanathan Ratnam, reasoned that if an author
could fall within the meaning of a qualified person and
qualified person could be a body corporate under its
definition in section 3, there was no ground to limit the
word author to natural persons only.
In the case of films, the author is the producer as he is the
person who makes the arrangements for making the film.
f) Authorship in broadcast
The author is the person transmitting the program
provided he has responsibility for the selection of its
content. In addition any person providing the program who
makes with the person transmitting it the arrangements
necessary for its transmission is also the author of the
broadcast.
MediaCorp News Pte Ltd & Ors v MediaBanc (JB) Sdn Bhd
& Ors
The court stated that the author of a broadcast was the
producer of the broadcast. The author could be a corporate
entity. Furthermore, since the author in relation to films is
the person by whom the arrangements for the making of
the film are undertaken, the authors of the pre-recorder
segments were the editors or individual producers.
g) Authorship in other works
For other works which are not literary, musical or artistic,
films, sound recordings or broadcasts, the author is the
person by whom the work is made.
For derivative works under Section 8, such as the
translation work, the arrangement of a musical work and
collections of work, the author is the person who expends
skill and labour in the creation of the work.
For instance, if a musical work is arranged, the author of
the arrangement is the music arranger. The original author
of the musical work is not a joint author of the
arrangement.
h) Joint authorship
There are three prerequisites that must be satisfied for a
work to be regarded as a work of joint authorship :
i. The work must have been produced by the
collaboration of two more authors.
ii. The contribution of each author is not separable
from the contribution of the other author or
authors.
iii. In order to exclude the peripheral contributors
from claiming to be joint authors, it must be shown
in a work of joint authorship that each author has
expended skill and sufficient effort to make his
contribution original in character.
Ownership
The concept of ownership of a copyright work is to be distinguished
from the notion of ownership in the physical object that embodies
the work. The former is concerned with the protection of an
intangible right which comprises a bundle of exclusive rights spelt
out in Section 13(1) of the CA 1987 while the latter concerned with
the protection of rights in a tangible object.
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The distinction between the ownership of a copyright work and the
ownership in the physical chattel is indirectly recognized in Section
27(7), by its reversal decision in the case of :
Re Dickens – it was held that a copyright owner who bequeathed to
the beneficiary the manuscript containing the copyright work was in
effect bequeathing the physical object that embodied the copyright
work and not the copyright in the work itself.
Section 27(7) reverses this position and provides that under a
testamentary disposition, a person who is beneficially entitled to
the unpublished manuscript of a literary or musical work, or to an
artistic work that has not been published shall be presumed to be
entitled and also to the copyright in the work, unless a contrary
intention is indicated in testator’s will.
The general rule is that the copyright vests initially in the author is
subject to three exceptions :
1) Section 26(2) which contains two situations, namely
commissioned works and works performed under an
employment.
- Commissioned works
Pursuant to Section 26(2)(a), the copyright of the work
shall be deemed to be transferred to the person who
commissioned the work.
*contract of service, contract for service
Two issues to be determined :
Whether an employer-employee relationship exists : in
determining whether this relationship exist, there are
several tests that can be satisfied namely the master
servant test, the organization test and the multiple
factor test. The multiple factor test is the most flexible
test considering the complexity of the working
environment.
Hexagon Tower Sdn Bhd v Polydamic Holdings Sdn
Bhd & 3 Ors
The court accepted the EPF statement of the executive
director as proof of employment and stated that the
drawings were within his job description.
Whether the work made in the course of employment
Stephenson Jordan & Harrison Ltd v MacDonald
It was held that the copyright in the lectures belonged
to the accountant and not the plaintiff because he was
employed to advise clients. Delivering lectures was not
part of the accountant’s normal duties. However, the
copyright of those parts of the books which contained a
report written by the accountant for his employer’s
client belonged to his employer.
2) Section 26(3) which states that copyright subsisting in works
of Government.
3) Section 27(6) which concerned with the grant of an
assignment or a license or the making of a testamentary
disposition.
*prima facie evidence of copyright ownership was provided under
Section 42.
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CHAPTER THREE : DEALINGS IN COPYRIGHT AND DURATION
Ways of dealing with copyright :
(a) Assignment and testamentary disposition
- Section 27(3), an assignment of copyright must be
made in writing.
- Such assignment or testamentary disposition of future
copyright is provided under Section 27(6). The future
copyright shall be transferable by operation of law as
movable property.
(b) License
- A license is basically a permission given by the
copyright owner to another to do an act in connection
with the copyright work that would otherwise amount
to an infringement of copyright.
- Section 27(3) requires all license, whether exclusive or
non-exclusive to be in writing.
- A license does not involve any transfer of proprietary
interest in the copyright unlike assignment.
Duration of copyright :
(a) Literary, musical and artistic works
- Refer Section 17.
(b) Published editions, sound recordings, broadcasts, films and
works of government
- Refer Section 18 : published editions
- Refer Section 19 : sound recordings
- Refer Section 20 : broadcast
- Refer Section 22 : films
- Refer Section 23 : works of government
CHAPTER FOUR: MORAL RIGHTS AND PERFORMERS RIGHTS
Moral rights under Malaysia Copyright Law can be identified under
Section 25(1) CA 1987. It states that no person may, without the
consent of the author, to do or authorize;
a) The presentation of a copyright by any means whatsoever,
without identifying the author or under a name other than that
of the author. (RIGHT OF PATERNITY)
b) The distortion, mutilation or other modification of the work if
the distortion, mutilation or modification ‘significantly alters the
work and is such that it might reasonably be regarded as
adversely affecting the author’s honour or reputation. (RIGHT
OF INTEGRITY)
RIGHT OF PATERNITY – Section 25(1)(a) CA 1987
- This right entitles the author the right to be identified for his
work and to prevent a work from being attributed to another. If
such happens, it is known as false attribution of authorship.
- MOKHTAR HJ JAMLUDIN V PUSTAKA SISTEM PELAJARAN: P is a
writer and D is a publisher. When the works were published, the
name ‘Mokhtar AK’ was printed on the covers of the works
while P’s pen-name was printed only on the first sheet of the
tittle page. It turned out that there was a writer by the name
‘Mokhtar AK’ and P was upset with the mistake. By consent, P
obtained a declaration that he was the sole author and owner
of the copyright in the literary works in question.
RIGHT OF INTEGRITY
- It is a right to prevent distortion, mutilation or other
modification. It is not right to preserve, restore or repair a work
13
 nor it is a right to prevent a destruction of the work. This
includes a right to prevent ‘significantly altering’ the work.
- SYED AHMAD JAMAL V DBKL: Puncak Purnama/Lunar Peaks is a
public sculpture by Datuk Jamal which was originally
constructed from ceramic-glass. This was later on altered by
DBKL to stainless steel w/o the consent of the artist, Datuk
Jamal, which was then awarded with a compensation of RM75k
for infringing his moral rights.
REMEDIES AVAILABLE
- Civil remedy: The author or his estate is entitled for damages.
PERFORMERS’ RIGHT
SCOPE OF PROTECTION
- Section 3 CA1987: Definition of ‘performer’
- No requirement of originality is required like other type of
works as contribution made by the performer to the
performance of the work is recognized.
QUALIFICATION OF PERFORMER FOR PROTECTION
- S.10A(a) CA 1987: For Malaysian citizen or permanent resident
- S.10A(b) CA 1987: For non-Malaysian citizen or permanent
resident
PERFORMERS’ RIGHT
- S.16A(1)(a-e) CA 1987: Gives the performer the exclusive right
to control in Malaysia.
- S.16A(1)(a) CA 1987: Communication to the public of live
performance unless the live performance used in such
communication is itself a live broadcast performance.
 This covers the transmission by wire or wireless means as
well as transmission via the internet.
- S.16A(1)(b) CA 1987: Fixation of an unfixed performance.
 The performer has the rights to control the first fixation of
his performance.
- S.16A(1)(c) CA 1987: Reproduction of the fixation of a live
performance if the fixation in the first place was done w/o the
consent of the performer, the reproduction was done for
purposes different from those for which the performer gave
consent to, fixation was done made in accordance with S.16A(3)
and reproduction is made for purposes different from those
referred to in those provisions.
 Example; can control the making of copies of illegal
recordings.
- S.16A(1)(d) CA 1987: First making available to the public if
fixation has not been done by third party.
- S.16A(1)(e) CA 1987: Rental right is only available if fixation is
not done by a third party.
- S.16B(1) CA 1987: Equitable remuneration shall be payable to
the performer by the user of the sound recording.
14
- S.16A(2): If the performer has granted a license or gives consent
to a third party to fix his live performance, he loses his exclusive
rights stated in S.16(A)(1) CA 1987.
DURATION OF PERFORMERS’ RIGHTS
- S.23A CA 1987: 50 years beginning of the calendar next year
following the year of publication and if not published, following
the year of fixation.
MORAL RIGHTS
- Similar as authors of copyright works.
DEFENCES
- For the purposes of:
1. Private and domestic use of the person who made it
2. Scientific research
3. Reporting of news and current affairs
4. Criticism or review
5. Judicial proceeding
6. For educational institution for educational purposes
CHAPTER FIVE: EXCLUSIVE RIGHTS, INFRINGEMENT, REMEDIES
Exclusive rights of a copyright owner
There are two types of rights which are the right over commercial
exploitation and the moral rights of the author.
The exclusive rights are negative in nature in the sense that they are
rights to prevent others, without his consent, from performing the
restricted acts. Exclusive rights or acts restricted by copyright,
means that those rights listed in the copyright provisions are meant
for the owner of copyright work.
*The right of the copyright owner extends to control the whole
work or substantial part of the work, and it encompasses not only
the copyright work in its original form but also in derivative form.
1. Literary, musical or artistic works, films, sounds recordings or
derivative works
It is provided under Section 13(1), where the copyright owner
has the exclusive right to control in Malaysia :
i. The reproduction in any material form
ii. The communication to the public
iii. The performance, showing/playing to the public
iv. The distribution of copies to the public by sale or other
transfer of ownership
v. The commercial rental to the public
The reproduction in any material form
Definition : Section3, reproduction means the making of one or
more copies of work in any form or version, meanwhile ‘copy’
means reproduction of a work in written form, in the form of
recording or film, or in any other material form.
Peko Wallsend Operation Ltd v Linatex Process Rubber Bhd – the
plaintiff, which was an Australian based company, claimed the
defendant were infringing their artistic copyright in their
engineering drawing relating the parts, three-dimensional form of
their pump parts. It was held that the engineering drawing is an
artistic work. Since direct copying is an infringement, indirect
copying is also an infringement
15
King Features Syndicate v Kleeman Ltd – the plaintiff was the
owner of copyright in drawing of ‘Popeye’. The defendant
reproducing it into form of dolls and brooches based on those
designs. It was held that there was clear evidence of copying. The
court examined the drawings and the feature of the dolls and noted
the similarities. Thus, there was an infringement.
Chabot v Davies – Chabot was a designer and a fixer of shop fronts
has prepared a drawing for the defendant who was just about to
open a fish & chip shop. Chabot able to prove that the contractor
had handed his drawing by the defendant and had made a tracing
from it. Defendant argued that a plan cannot be produced by a shop
front. It was held that the erection of shop front was an
infringement of copyright of the owner’s plan.
The communication to the public
Definition : the transmission of a work through wire or wireless
means to the public (Section 3).
- This includes broadcasting and communication by cable
rights.
- This does not confined to the simultaneous reception
by the public but extends to cover interactive-on-
demand transmission such as video-on-demand
services
- The uploading of a work, such as film onto youtube falls
within this category, this is because, members of the
public can access the work from a place and a time
chosen by them.
- This must be distinguished from the performance,
showing or playing
- Right of communication to the public arises when work
is transmitted
- It also covers where transmission is encrypted, not
directed to general public but received by subscribers
who obtain a decoder.
Performances, showing or playing to the public
Definition by the New Oxford Dictionary of English : performance –
act of staging or presenting a play, concert or other form of
entertainment, showing – the action of showing something or the
fact of being shown, playing – making a record, record player, radio
etc.
Telstro Corporation Ltd v Australasian Performing Right
Association – it was held that the performance was in public since
all adult women of the village could become members of the W1.
Australian Performing Right Association Ltd v Commonwealth
Bank of Australia – playing an instructional video which
incorporated music at a bank to the employees before doors
opened to customer was considered a public performance by court.
It was held that if a performance occurs as an adjunct to a
commercial activity, the performance is likely to be regarded as a
public one. Even the numbers present were small and the audience
paid no fee.
PRS Ltd v Harlequin Records – it was held that performance in a
record shop was a performance in public. A performance given to
an audience consisting of persons present in a shop into which the
public at large are permitted and encouraged to enter without
payment or invitation with a view to increase the shop owner profit.
This can be described as performance in public.
Jenning v Stephen – Jenning was the author and owned the
copyright in a play. The defendant arranged for performance of that
play at the monthly meeting of a women’s institute without consent
(performance made in public).
16
Distribution of copies to the public
Section 13(1)(e)- the copyright owner has the right to control the
first distribution in Malaysia of copies of the work to the public by
sole or other transfer of ownership.
Distribution rights as follow :
i. Right to deals with distribution copies of the work
ii. Distribution is by sale/transfer of ownership
iii. Right to control the first distribution of copies of the work
to the public in Malaysia
iv. Distribution right does not apply to any subsequent
distribution of those copies after 1st distribution and to any
subsequent importation of those copies into Malaysia.
*Copyright owner have right to bring an infringement action of
anyone who distributes a copy of his work to the public for 1st time
without consent.
*Distribution right continues so long as copies of the work have not
been put into circulation in Malaysia.
*once the owner of the copyright has released a copy of a work by
way of sale, he is taken to have consented to any future disposition
of that copy
Class One Video Distribution v Chanan Singh – it was held that the
distribution right applied to all copies of the work, whether lawfully
or unlawfully made.
Commercial rental to the public
Section 13(1)(f) – right to control the commercial rental to the
public.
Definition by the New Oxford Dictionary of England : rental – the
action of renting something, rent – letting someone use something
in return of payment.
*The commercial rental connotes the making available to the public
of the work or a copy of it for profit purposes on the understanding
that it will be returned.
*Rental must be commercial in nature, which means that some
form of economic or commercial advantage
*The commercial rental right enables the copyright owner to profit
from rental activities such as video, sound recording
*The commercial rental right is not exhausted by the first sale of
copies of the work.
2. Section 14 CA 1987 deals with copyright in works of architecture.
- The rights to control the erection of any building which
reproduces the whole or a substantial part of the work.
- This excludes the right to control reconstruction and
rehabilitation.
3. Section 15 CA 1987 deals with copyright in broadcasts.
Copyright owners have the right to control;
- Recording
- Reproduction
- Re-broadcasting
- Performance, showing or playing to the public in a place
where an admission is free or charged.
- The taking of still photographs in a broadcast
17
MediaCorp News Pte Ltd & Ors v MediaBanc (JB) Sdn Bhd & Ors –
the defendant were recording, copying, storing, and then editing,
compiling, selling and distributing the plaintiff’s news programs. It
was held that the defendant had infringed section 15 by recording
or reproducing a substantial part of broadcast.
4. Section 9 CA 1987 deals with copyright in published editions of
work.
- Making of a reproduction of the typographical
arrangement of the edition.
5. Section 16A CA 1987 deals with rights for work of live
performance.
- The communication to the public of a live performance,
- The fixation of an unfixed performance
- The reproduction of the fixation of a live performance
- The first making available to the public of a fixation of a live
performance, or copies thereof, through sale or other
transfer of ownership
- Rental to the public of a fixation of a live performance
INFRINGEMENT
There are 2 types of infringement;
- Direct infringement - Section 36(1) CA 1987: It occurs when
a person does, or causes another person to do, w/o the
license of the copyright owner, an act the doing which is
controlled by copyright.
- Indirect infringement - Section 36(2) CA 1987: It occurs
when a person imports an article into Malaysia for
commercial purposes when he knows or ought reasonably
to know that it is an infringing article.
Direct infringement (1st limb) – infringement by doing an act
restricted by copyright without consent :
- 3 ELEMENTS FOR 1ST LIMB S.36(1) CA 1987 SPECIFICALLY
FOR EXLCLUSIVE RIGHT S.13(1)(a) CA 1987
(REPRODUCTION) :
a) Sufficient objective similarity
– Plaintiff (copyright owner) has a burden to show a sufficient
degree of similarity exists between the alleged infringing
work and the whole or substantial part of the copyright
work. (HEXAGON TOWER SDN BHD V POLYDAMIC
HOLDINGS SDN BHD)
– Objective test:
By comparing the two works either visually or orally,
depending on the type of work.
 If the copying of work is exact, similar and
identical, no problem shall arise.
 Similarity must be sufficient if the copying
of work is not exact. Example; Translation of
a script to a film.
 MOHD RAMLY v SARIMAH FILM
PRODUCTION: In comparing a stage
play script and film, it is difficult to
show the substantial similarities in
the plot, scenic effect and incidents.
18
  FRANCIS DAY V BRON: sub-
concious copying.
 FRED FISHER V DILLINGHAM: A
composer (D) was accused of
infringing the copyright in piece
called “Dardanella” by including its
ostinato (melody phrase that is
persistently repeated) in his own
composition. Court held that D had
infringed a copyright. Due to the
higher degree of familiarity by the D
of the P’s work, it is a concious act
of copying.
 DEFENCES: similarities could be the
result of a common source from
which both works are derived /
mere coincidence / both works is of
the type that end result must
necessarily be similar.
- No copyright in an idea per se. No infringement if only the
idea is taken but not the particualar expression of the idea.
 LB (plastic) v SWISH: P sued the D for
infringement of copyright in 10 drawings of
their furniture – drawer. D argued that the
only thing that was taken was merely on
idea and the similarities of their drawers
arose only for commercial necessity. Court
held that there is no copyright in mere idea.
However, D had failed to show that the
similarities between the designs was not
the result of copying as the evidence of
letter given by D to their lawyers instructing
to look at the P’s drawings and then
reproducing a copy was a strong evidence
that there was an intention to copy.
b) Causal connection
- Plaintiff must prove that the alleged infringing work was
derived from his copyright work.
- Causal connection is a matter of fact that needs to be
established by the plaintiff. For example; a third part gives
evidence that he witnessed the copying as in LB (PLASTIC) V
SWISH / D’s access to the copyright work / D’s actual
knowledge of the work as in FRED FISHER V DILLINGHAM /
Opportunity to copy the copyright work. All of these
contribute toward proving that it is not a mere coincidence.
c) Taking a substantial part of the copyright work
- By virtue of Section 13(1) CA 1987, right of owner includes
the right to control the whole or substantial part of the
work.
- Section 13(1) and Section 36(1) = An act that is restricted
by copyright without prior consent of the owner amounts
to copyright infringement if it is either done in relation to
the whole of the copyright work or to a substantial part of
the work.
19
- The copyright owner must identify the parts of his work
that have been used by the D and prove that those parts
comparise a substantial part of his work.
- What consitutes substantiality:
o Quality > quantity
 LONGMAN V PUSTAKA DELTA: Even though only
small quantity had been copied, the parts copied
were substantially significant. Thus, D has infringed
the copyright of the P’s work.
 SPELLING GOLDBERG PRODUCTION INC V BPC
PUBLISHING LTD: D had a magazine and had a
poster which embodied photographs which were
reproduction of individual frames by Claiman
Starsky and Hutch Film. Infringement was held to
be established as single frame amounts to
substantial work.
 LADBROKE FOOTBALL LTD V WILLIAM HILL
(FOOTBALL) LTD: P alleged copying of their football
pools coupon and thus sued D for copyright
infringement. Court held that the part taken by the
D was substantial.
o Originality (expression of idea)
 LB (PLASTIC) V SWISH PRODUCTS LTD
o Purpose of taking and using the part is the same as P’s
purpose
o Competition: Whether the part taken is used in away
which interfere with the sales of the original work or
competes with it.
o Unaltered copying
o Extents of the D’s alteration
o Nature and extent of P’s effort (whether there’s a
unique element)
o The manner which the D had taken advantage of the P’s
work (exploitation)
- Factors that are relevant in determining whether a subtantial
part has been taken by LADBROKE FOOTBALL LTD V WILLIAM
HILL (FOOTBALL) LTD and has been followed by LONGMAN
MALAYSIA V PUSTAKA DELTA:
o Part taken must be original
o Part taken involved a higher degree of skill and labour
on the part of author (effort of P)
o Purpose of D taking the copyright work is similar as P’s
purpose
o Competition: Whether the part taken is used in away
which interfere with the sales of the original work or
competes with it.
Direct infringement (2nd limb) : infringement by causing others to
do an act restricted by copyright
- Section 36(1): 'Causes any other person to do' // Authorizing
another
- Oxford dictionary: Causing
 Bring about, produce, induce or make
20
 RUSSEL V BRIANT: It was held that the landlord could not be
held liable for the unauthorized performance of dramatic piece
despite he had provided the venue, advertising & allowed
tickets to be sold from the place. Letting a room, providing the
furnishing & lighting for the staging of public performance not
amounted to representation or cause to be represented.
- LYON V KNOWLES: Faraday could not have authorized the
performance of the songs by the band, since the band members
were not his servants/ agents. There will be no infringement
unless the offender or his agent actually took part in the
representation.
o Control test: Whether there was any control exercised
by the defendant over the 3rd party
- MARSH V CONQUEST: Manager of a theatre who had no
involvement in the performance of a play was found to be liable
because he was the owner of the theatre & his son in charge of
the representation was acting with his permission. The
company & all persons employed for the performance for the
performance of a play was held to have control of the play.
- 3 STEPS TEST TO DETERMINE THE MEANING OF AUTHORIZING
ANOTHER
i. The person must be under control of the other
 Easy if there is an employer-employee relationship
 Can sue the employer
ii. There must be an infringing action
 Somebody must do an act of infringing
iii. The means to infringe must provided for (no such thing as
authorizing at large)
 Must have apparatus of infringement
 Eg: Photocopy machine
- MOORHOUSE V UNIVERSITY OF NEW SOUTH WALES
(Benchmark case for copyright infringement via authorizing act):
The High Court held that the University of New South Wales
library had authorized the reproduction of copyrighted material
by operating photocopying machines that exercised no
supervision or control over what materials were being copied by
students, which amounted to the authorization of making
infringing copies of protected materials. The students are also
under the control of the university. Plus, the warning notices
provided by the university about copyright infringement were
found to be ineffective precautions that did not displace the
inference of authorization.
21
INDIRECT INFRINGEMENT o If that particular person still continues to do the act then
only can take action
- Section 36(2): Copyright is infringed by any person imports an
infringing articles into Malaysia for the purpose of o Because by sending a letter, it will amount to an
commercializing/distributing the infringing article for evidence
commercial purpose.
REMEDIES FOR COPYRIGHT INFRINGEMENT
o Applies when the infringer has knowledge that the
goods are infringing copies - Depend on the cause of action

o Parallel importation (Section 13(1)(a)) is not included. o Civil action

o Enforcing a criminal prosecution (Section 31)

- Infringed by any person who without the consent license of the o Border measures
owner of copyright, imports of an article into Malaysia for
Civil action
a) Selling, letting for hire or by way of trade, offering or exposing
Advantages Disadvantages
for sale or hire the article. (commercial exploitation)
Right to control the case Need to gather all evidences
b) Distributing the article for trade or other purpose prejudicial to
the owner. Damages at the end of the Cost to be self borne
c) Trade, exhibiting the article in public. trial (Monetary implication)

- Secondary infringer

 Have to prove that person sale without the knowledge & Criminal action
consent of the owner of copyright
Advantages Disadvantages
 Reasonable test: Reasonable knowledge of reasonable person
No cost borne by the litigant No control over the case
- Commercial exploitation
(The gov will take over the (Where the gov feels like the
 How to show that the person has no knowledge? case the moment people case is not important because
make report) there is a bigger issue, the
o By writing a letter or notice case will be postponed)

22
No problem on witness & No award of damages to the 3) Balance of convenience - Adequacy of damages as a
evidence owner remedy

( Gathering evidence will be (Award will go to the gov) 4) Special factors - Preserve the discretionary nature of
done by the prosecution) remedy

1.1.2. Special injunction (Anton piller order)

1. Civil remedies: For copyright infringement & the prohibited - Ability to take the defendant by surprise so that he has no
acts under section 36A & 36B available under Section 37 opportunity to dispose of infringing items & documents

- Without telling the other party

1.1 INJUNCTION - Mandatory injunction which require the defendant to permit

entry into his premise & to secure incriminating evidence of
1.1.1 Interlocutory injunction infringement which plaintiff believes might be destroyed
 Before trial (pre trial remedy) - Ex parte (One party apply)

 A judicial process whereby a party is required to do an act or to - Serve with a lawyer

refrain from doing an act for a period of time until further
judicial order or until the final hearing of the case - Anton Piller KG: pre conditions

 Temporary protection of the copyright owner against the losses 1) There must be an extremely strong prima facie case
caused by the continuing infringing activities
2) Damage, potential or actual must be very serious for the
 Inter parte applicant

 AMERICAN CYONAMID V ETHICAN LTD: Principles to be 3) There must be clear existence that defendant have in their
applied by the courts possession incriminating document or things that there is a
real possibility that they may destroy such material before
1) Determine whether the serious question to be tried application inter parte can be made

2) Whether the balance of convenience lay in favour of 1.1.3. Mareva injunction

grant or refusing to grant the interlocutory injunction
- Application inter parte

23
- Application to freeze all the assets within Malaysia jurisdiction - Monetary remedies

- To pay damages - Damages are purely compensatory in nature

- Safeguard- tools of trade, expenses for maintenance (cannot - Purpose: To compensate the plaintiff for wrong done to his
freeze) copyright as an incorporeal right

- Requirement - Put the plaintiff in position he would have been if the

1. Good arguable case - Better than 50% chance of success
2. Real risk & dissipation - Real risk that defendant would
dissipate his asset with the intention of
frustrating the enforcement of a judgment
infringement had not occurred
- Damages will not be granted if it is proved that the defendant
was not aware of his action was an infringement of copyright
- Liquidated or unliquidated

3. Just & convenient - Effect granting injunction to - Licensing fee: Royalty

promote justice
- Aggravated damages: When ordinary damages is not sufficient

1.1.4. Final injunction (Section 37(9))

1.3 Account of profit
- Granted at the end of trial
- Equitable remedy
- To prevent any further repetition of the infringing action
- Discretion of the court: Ask court for quantum
- Declaratory effect that indirectly confirm the plaintiff as the
owner of the copyright - Restitutionary in that the defendant is made to account for
profits
- Damages alone is not sufficient
- Defendant to restore it to the plaintiff
- Restrain further commission of infringing act by defendant, his
servants/ agents - Defendant should be prevented from being unjustly enriched at
the expense of the plaintiff
1.2 Damages
- Section 37(1): If damages is not granted only then plaintiff may
- To compensate for loss claim account of profit, because its either damages or account
of profit (Cannot be both)

24
- Section 37(3): Order account of profit, prohibited act that have
not taken into account in computing damages
1.6 Criminal penalty (Section 41(1))

- Additional assistant to copyright owner

1.4.Statutory damages
- Section 8Trade Description Act 2011
- Extent of losses cannot be ascertained
o Provision of offences failure to apply for original label to
- Section 37(1)(d) optical disc.

- Definition of work: Section 37(5), all parts of a collective work Eg: Compact disc video & audio, CD Rom, DVD & laser disc
shall constitute one work
CHAPTER SIX : DEFENCES TO COPYRIGHT INFRINGEMENT
- Section 37(10(b), collective work: A work in which relevant
materials, constitute separate & independent work

- Section 37(8)(a)-(h): Matters to take into consideration

1.5 Delivery up

- Non monetary remedies

- Destruction of all articles made in violation of the copyright

owner's proprietary work (can ask the court to destroy the CD)

- Means of protecting the copyright owner's fruit of success in

the action

- Not preclude the court from awarding monetary remedies

- Inherent jurisdiction of court

- Not acquire the owner right to keep the articles as his own

- Order for destruction of the infringing articles

25
REGISTERED INDUSTRIAL DESIGN iii. The design must not be contrary to public order or morality
under Sec 13
INDUSTRIAL DESIGN
- inclusive religion and moral standards
To protect the appearance of articles which are commercially mass-
produced by granting the owner of the registered industrial design
the exclusive right to the use of the design. ID are features of shapes,
configuration, pattern or ornament applied to an article by any Characteristics of protection
industrial process with the aim that these elements will make the
Sec 3(1) – Def
finished commercial article more attractive in appearance and
therefore more appealing to customers.  Shape & Configuration

3D features which is the form of articles itself

Justification for design protection
The art of designing is a skill and the designing process demands the
expenditure of a considerable amount of time, labour and cost. The
law in ID is justified on the basis that it protects the creator’s
investments and rewards him for his effort. The creation of design
benefits the public because it contributes towards a higher level of
competitiveness in the industry.
The novelty of the design for which the protection is sought lies in
the shape and configuration of the article
 Pattern & Ornament
2D features which are put or articles for decorative purposes
The novelty of the design for which the protection is sought lies in
the shape and configuration of the article as shown in the
representation

What is a design?  Can be combination of both

Ian Morris: Design, the modern law and practice Main element of ID

 Designs must have some reference to some articles

Requirements for the grant of a registered design  Part of an article
i. The design must meet the meaning of ID in Sec 3  Industrially applied
ii. The design must be new at the date of application for  The design must appeal and judged by the eye
registration as required under Sec 12(2)

26
 a. Designs must have references to some articles
Sec 3(1) – Def of articles and set of articles
Designs must be applied to specific article. Each article of the set
must also meet the requirements of an ‘article’ as defined in Sec
3(2).
article attractive aesthetically to customers. The feature of ‘shape’
in an ID must refer to something more than the basic or
fundamental work that the article has to assume in order to be able
to perform the task which required of it and the basic shape cannot
be the subject matter of an ID registration.

Case: RH Collier & Co. Ltd Design Application

Case: Littlewoods Pools Ltd’s Application An application of a design for a petrol filling station was
unsuccessful.
Articles in ID must have some purpose other than that of merely
carrying the design if not, the design is not applied to an article of c. Part of an article
manufacture within the meaning of an ID and hence the design
cannot be registered. A design applied to a part of an article is only registrable if that part
is made and sold separately.
Case: Dover v Nurnberger Celluloid

Per Buckley LJ: Designs means a conception/suggestion/idea of a

shape/a picture/device/some arrangement that can be applied to
an article by some manual, mechanical or chemical means. It’s a
conception, suggestion or idea and not an article, which is a thing
capable of being registered. Therefore, protection does not prevent
other manufacturers from producing or dealing in similar articles
fulfilling the same utilitarian function, provided that such substitute
articled so not embody or reproduced the protected design.
Case: Sifam Electrical Instrument Co Ltd v Sangama Western
Whether front of an ammeter to measuring electrical current was
registrable, the meter front was sold separately.
Held: The manufacture of ammeter and meter front were not
separate operation but part of the same operation. Thus, meter
front was not an article and not registrable.

b. Industrially applied
d. The design must appeal and judged by the eye
Production in quantity
The design must be calculated to attract the attention of the
It’s a requirement that the shape, configuration, pattern or beholder
ornament be applied to an article by any industrial process or
means – mass-production technique. It is the design that makes the

27
TEST: Eye Appeal Test – influencing customer preference
Design should appeal to the eye of the customer and not the judge
/disinterested person on the street because it is created for
commercial reasons
Case: Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd
Two cumulative aspects
- There must be in some way a special, peculiar,
distinctive, significant or striking appearance
- Excludes from the category of ID in those case where
customer might choose an article of that hape not
because of its appearance but because he thought that
the shape made it more useful to him.
Case: Amp Inc v Utilux Pty Ltd
Whether the design for washing machines had eye appeal?
Lord Reid: reason for this was to preserve owner of the design the
commercial value resulting from customer preferring the
appearance of articles which had the design to that which do not
have it
Lord Morris: the ‘eye appeal’ requirement did not mean that the
features of design must possess some aesthetic or artistic quality,
but rather that they must have some ‘individual characteristic’
which is calculated to attract the attention of the customer.
Exclusion/What is not considered as ID?
1. A method or principle of construction
- Process/operation by which a shape is produced and
not the shape itself
Case: Moody v Tree
The registration was invalid as it was an attempt to register a
conception as to the method of construction of a basket
2. The features of the article are dictated solely by function
Case: Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd
Not registrable because of the characteristics which lacks design
freedom
However, designs features incorporating functional ability to a
lesser degree are allowed
3. The features of the article depend upon the appearance of
another article which forms an integral part of that article
- It must fit as in no other feature is possible in order to
maintain the function of that object
- It must match. Design features must not be dependent
upon the appearance of another article
28
Case: Dyson Ltd v Qualtex Case: Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd

Pattern spare parts for vacuum cleaners that were designed to The design would not be novel if the differences between the
merely as replacement parts to repair a complex product intended design and the prior art only resides in immaterial details/features
to look the same as original part were excluded from protection as that were common trade variants.
unregistered design

4. It differs only in immaterial details or features

Totality of the design to be taken into account in considering novelty
An ID is not considered to be new if it only differs in immaterial
details Case: CKE Marketing Sdn Bhd v Virtual Century Sdn Bhd & Anor

5. The features of the article do not have a clear aesthetic The court must take into account the totality of the design as a
appearance whole and overall appearance of the article

Novelty Novelty to be judged by the eye

Sec 3(1) – def Case: Arensi-Marley (M) Sdn Bhd v Middy Industries Sdn Bhd

It must be new The applicant was a manufacturer of rainwater gutter system. The
respondent was the owner of a registered design in respect of rain
Sec 12(1) - cannot register unless it is new gutters and gutter fittings. The applicant applied to expunge the
respondent’s registered design on the ground that the registered
Sec 12(2) - 2 situations where the ID is not new design was not new because it was almost identical to the
applicant’s.
Sec 12(2)(a) – disclosure of the design to the public anywhere in
Malaysia or elsewhere Held: the resp’s design was new because it was looked at entirely
and there were only immaterial differences.
Sec 12(2)(b)

Sec 17(1) – priority date

Malaysia now apply international novelty

Case: The Teik Boay v Chuah Saik Loo

29
P had obtained a UK design registration for its stool but the D
challenged the validity of the registration on the ground that the
stool was similar to stools manufactured by the D and sold to the
public 5 years ago
Held: P design was not new at the time of the application
The scope of prior art
Case: Besalon International Ltd v South Strong Industries Sdn Bhd
P was a registered proprietor a design in relation to a roof tile
registered in the UK. D obtained registration of a design that P
claimed was similar to its registration design. P claimed that the
design was not new in Malaysia at the time of the application as
there was prior publication during exhibition in Malaysia
Held: D design was not new
Disclosure which are made in confidence do not amount to
disclosure to the public
Case: Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd
The A contended that the design was not new because it was
already disclosed to its directors and employees.
Held: the contention was rejected because the disclosure was made
on a confidential basis and the contents were supposed to be kept
secret.
Novelty is territorial in nature
Case: Honda Giken Kgyo Kabushiki Kaisha v Allied Pacific Motor (M)
Sdn Bhd Anor
The P sued the D for infringement of its registered ID in relation to
the body of one of its motorcycles. The D challenged the validity of
the registration because the P had sold the motorcycles in Thailand
Held: the provision specifically mentioned ‘in Malaysia’
Disclosure not affecting novelty
Within the period of 6 months preceding the filing date –
i. It appeared in an official or officially recognized exhibition;
or
ii. It has been disclosed by a person other than the applicant
as a result of an unlawful act section 12(3)
Sec 23 - The owner of a registered design makes an application to
register the same design in respect of other articles
Filing Date
The earliest date on which all of the following conditions are
satisfied
 The documents mentioned in previous slide identify the
applicant or applicants
 The prescribed number of representations is filed
 The prescribed filing fee is paid
30
Priority Date Who is the owner?

 The filing date of the application Sec 11

 The earliest date of an earlier applications filed by an Sec 10

applicant in any of the member states of the Paris
Convention for the Protection of Industrial Property the author = original owner

 Convention priority claim must be within 6 months from

such earliest date Sec 10(2) + (3) – Exception

- commission work

- of service (employee)

Rights of owner

Sec 29

Before and after registration. Exclusive right to make or import for

sale or hire, or for use for the purposes of any trade or business, or
to sell, hire or offer or expose for sale or hire, any article to which
the registered industrial design has been applied. Also concerning
personal property

Rights accorded by Registration

Sec 32(1) + (2)

Monopoly right

Case: Gaskell & Chambers v Measure Master

Per Aldous J: Whether or not copying took place is, I believe,

irrelevant. The test of infringement is an objective test based on a

31
comparison of the registered design and the alleged infringement.
Thus a bad copy or a copy of only a part may not infringe but an
independent design may do so. Registrar satisfied – publish in the Gazette - intention to restore the
lapsed registration

Within 3 months – no opposition – restore

Registration
File Form ID 2 + fees + surcharge
- Upon grant of certificate, 5 years from the filing date

- Option to be extended for further FOUR consecutive

terms of 5 years each Post Registration Procedure

- Total period of protection is 25 years  Rectification

Sec 24

Lapse Application to court from the aggrieved person

Sec 25(3)

Registration lapses when application for an extension is not made or
an extension fee is not paid (6 months after expiry date)
Restoration of lapsed registration
Lapsed registration may be restored within a year of date of notice
in the Gazette by:
i. Filing a request for restoration (Form ID3 + fees + surcharge)
Case: CKE Marketing Sdn Bhd v Virtual Century Sdn Bhd & Anor
Considered an application to rectify the Register of Industrial Design
on the ground that the first defendant’s design was wrongfully
remaining on the register in accordance with the provision of s 24 (1)
(a) of the Industrial Designs Act 1996. The main ground relied by the
plaintiff for rectification of the first defendant’s wrongful
registration was that it was not new at the time of the application
for registration. No observation was made to as to the correctness
of the application under section 24 for this purpose.

ii. Payment of outstanding extension fee and surcharge for

restoration.

iii. Filing a statement setting out the circumstances that led to

failure to extend

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  Revocation
Sec 27(1)
At any time after registration any person may apply to the Court for
- The revocation of registration on the ground of
disclosure prior to priority date
- The cancellation of registration on the ground that the
registration procured by unlawful means
- The grant of compulsory license on the ground that
design not applied in Malaysia
Infringement
Having the same designs or imitations
TEST: “Not substantially different”
Case: Hecla Foundry Co v Walker, Hunter & Co
Case: Bourjois Ltd v British Home Stores Ltd
Without the license or consent of the owner a person does any of
the following things
 Applies the design or any fraudulent or obvious imitation of
it to any article
 Imports into Malaysia for sale, for use for the purposes of
any trade or business, any article to which the industrial
design or any fraudulent or obvious imitation of it has been
applied outside Malaysia without the license or consent of
the owner
 Sells, or offers or keeps for sale, or hires, or offers or keeps
for hire, any of the articles described above.
*Its not an infringement if it is for own use or private (non-
commercial use)
Sec 32(3)
Exhaustion
Sec 33 - Proceedings
Institute legal proceedings against any person who –
- Has infringed or is infringing any of the rights conferred
- Has performed acts that make it likely that an
infringement will occur.
The proceedings may not be instituted after 5 years from the act of
infringement.
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Remedies Sec 36

Sec 35 Offences

For infringement committed or being committed:

- Damages or an account of profit CONFIDENTIAL INFORMATION

- An injunction to prevent further infringement, etc. Protection of a wide range of information, which is confidential in
character

For acts which may make it likely that an infringement will occur:
Is information property?
- An injunction to prevent further infringement, etc.
Case: Electro Cad Australia v Mejati

CI in the form of technical ideas and technical information on

Infringement and invalidity
 Not fulfilling novelty is ground of invalidation.
• Important in infringement action.
• There must be no prior publication
operating system and marketing, pricing and sale information
should be conferred a proprietary status. Legal interest that
protected is the right to enforce the obligation of confidence arise
between a person who imparts CI and the recipient of that
information

Rationale
Meaning of prior publication
- Competitive business
• Disclose to the public.
- It doesn’t fit into any particular IP
• Available to members of the public

• Prior user.
• Shown and disclosed to members of public.
• Not necessary design should have actually been used.
Role of contract and equity
Malaysian cases of CI decides on the basis of contract (rely
express/implied) or on equity principle of good faith

34

International aspect
Art 39(1) TRIPS Agreement - requires the members states to have
laws to protect undisclosed information
Art 39(2) - natural and legal person can prevent information lawfully
within their control from being disclosed w/o their consent.
Type of information
 Secret (not generally known/accessible)
 Has commercial value because it is a secret
 Subject to reasonable step under circumstances by the
person lawfully in control of the information to keep it
secret
Elements of a breach of confidence action
Case: Coco v AN Clark (Engineers) Ltd
3 elements
o The information which the plaintiff is seeking to protect is of
a confidential nature
o The information is question was communicated in
circumstances importing an obligation of confidence
o There must be an unauthorized use of that information to
the detriment of the party who communicated it
a. The information that the plaintiff is seeking to protect is of a
confidential nature
Types of confidential information
The P must first prove that the information which he has imparted
in confidential in nature. Information remains confidential even if it
has been disclosed to a number of people provided that the
disclosure has been made under circumstances that impose an
obligation of confidence on the part of the confidant.
Case: Electro Cad Australia v Mejati
 Trade secret (method was not available to the public)
Case: Saltman Engineering v Campbell Engineering
P had conceived the idea of some leather punches and it asked
another company to draw up plan for punches. The second
company instructed the D to manufacture according with the plans.
The D company then uses the information to make leather punches
for sale by themselves.
Held: P was successful in his claim for breach of confidence
Case: Faccenda Chicken v Fowler
4 factors to consider whether info amount to trade secret
o Nature of employment (how close the employee to
employer’s trading activities)
Info available only to trusted employee is more likely to constitute a
trade secret than info disclosed to the worker in a shop
35
 o Nature of info (employee must know what is the particular
info
o Whether employer impressed on the employee the
confidentiality of the info if the info was specifically
designated as a trade secret of the employer, it is more
likely to be treated as such by court
o Whether the info can be easily separated from the
knowledge, expertise skill which the employee is free to
disclose
Case: United Sterling Corporation Ltd v Fellow Mannion
If the info received has formed part of his skill and knowledge thus
making him an expert in specific area
 Employer’s secret (Employer-employee rship)
Rationale
- Employer interest to ensure employee do not use/discloses
information which he obtained from company during his
course of employment
- Employee interest to use information for his career
advancement
Case: Faccenda Chicken Ltd v Fowler
The company had employed the D as sales manager. The disclosure
centred upon the characterization of sales information in relation to
business involved the distribution of fresh chicken from vans. The
info related to prices, customers and orders. The contract of
employment made no provision restricting usage of CI. D left to join
in a competing venture.
Held: Info and advantage flowed from it was obtained through
disclosure
 Contractual matter
Basis of obligation
Case: Saltman Engineering v Campbell Engineering
Lord Green: is seems to me that the existence of confidential
obligation in relation to these drawings is abundantly proved. If the
D has proved to have used CI directly or indirectly obtained from a P,
w/o the consent, express/implied of the P, he will be guilty of an
infringement of the P’s right
 Government Secret
Crossman Diaries Case 1976: while Crossman was a minister, he
kept a detailed diary of the inner working at govt. (cabinet
proceeding). Following his death, his executor wished to honour his
instruction by publishing his diaries. Bristish govt claimed for an
injunction.
Held: the fact that 10 years had passed since the first cabinet
discussion – the court still decide there was no reason why the
diaries should be published.
36
  Marital Secret
Case: Argyll v Argyll
The husband wanted to publish an intimate details of their live
together in a national newspaper. However, the wife disagreed
Held: the communication between husband and wife during
marriage were protected against breach of confidence
 Literary and Artistic Secret
Case: Fraser v Thames TV
He contract was between a 3 girl rock group and their manager with
Thames TV pertaining to P’s idea (can be protected as long as it is
logic and can be made) for a television series dealing with a 3 girl
rock group and the services of the group as the actresses in the
series. Thames TV later makes the series w/o the girls
Held: idea for something yet to be established may attract legal
protection as confidential info
 Personal Secret
Fact about individual that they regard as sensitive therefore
becomes private
Case: Barrymore v Newsgroup Newspaper
Actor Michael Barrymore seeking to restrain of info about his
personal life from a former sexual partner to Newspaper.
Held: Info about rship was not for the purpose of publication
Other characteristic of Info
Trivial info and info in public domain
Case: Attorney-General v Observer Ltd & Ors
- Court will not protect trivial matter
- Info in public domain in nature cannot amount to CI
Determining whether info is confidential
Case: Dato’ Vijay Kumar Natarajan v Choy Kok Mun
The P told the D that whatever that had transpired in his office
would be ‘off the record’
Held: the court had to consider the reason for the P to require the D
to keep info confidential and later found out that it was not rational
because his concern was he might be in breach of his professional
etiquette by amending another solicitor’s agreement.
Need to identify the confidential information
The P must identify the info in sufficient detail.
Confidential info need not be recorded in any material form
CI law does not impose any requirement as to the form in which
info is expressed before it can come within the rubric of CI
37
Effect of reverse engineering on confidentiality
Reverse engineering is the process of analyzing the product in order
to determine its individual components so as to discover the
confidential info embodied in party’s prior consent.
Case: Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd
The P produced detailed brochure describing the product and the D
utilized the CI of the P and manufactured similar buildings.
Held: the court refused as to say that substantive work was needed
to obtain the CI through this way.
b. The information is question was communicated in
circumstances importing an obligation of confidence
The P must establish that an obligation of confidence exists from
the circumstances in which the info was imparted.
Obligation may arise from contract and equity
The obligation may arise either from the express/implied terms of a
contract or through equitable principles. In formal contract, it is
usual to have terms that impose an obligation on the party receiving
the info not to use or disclose it w/o the other party’s prior consent.
In the absence of any provision on confidentiality, they will depend
on implied terms if not equity will intervene to impose an obligation
of confidence on the recipient of CI.
Obligations arising from professional rships
E.g: banker-customer, solicitor-client, doctor-patient
Case: Onestop Software Solutions (M) Sdn Bhd & Anor v Masteritec
Sdn Bhd & Ors
Obligations arising from fiduciary rship
There are obligations of good faith imposed by equity on those who
hold positions of trust or confidence in relation to others.
Case: Yeohata Industries Sdn Bhd & Anor v Coil Master Sdn Bhd &
Ors
The P was the inventorof a machine that made mosquito coils. The
D was the managing director of Moscoil Enterprise. The P alleged
that the D had acquired CI relating to the sale, marketing and
customers of the P.
Held: the director of a company holds a position of trust towards
the company of which he is a director and accordingly, is in a
fiduciary rship to the company.
Determining whether an obligation of confidence exists
In the straightforward situation where the CI comes to the
knowledge of a person in circumstances where he knows that the
info is confidential, he is under the obligation of confidence to the
original confider. In determining the circumstances under which the
38
equity will impose an obligation of confidence, guidance may be
obtained –
Case: Electro Cad Australia Pty Ltd & Ors v Mejati
The view of a reasonable man should be applied
Third party recipients of confidential info
Third party of CI are not in any contractual/fiduciary rship with the
original confider. Where a 3rd party knows that he has received CI
from a confidant who has breached his contractual or equitable
obligation of confidence, equity will restrain him from disclosing or
using that info
Case: Schmidt Scientific Sdn Bhd v Ong Han Suan
The D incorporated a company to compete with the P’s business
and disclosed to the company CI obtained from the P. The court
restrained all the D from using or divulging the CI
Employee-Employer rship
Obligation during employement
 Duty of fidelity and good faith
The duty demand that the employee to be loyal to his employer and
prohibits an employee from using any CI obtained during his
employment w/o employer’s consent.
Case: Schmidt Scientific Sdn Bhd v Ong Han Suan
In the absence of express duty of confidence, courts may imply
certain limited obligation. The duty of fidelity will prevent employee
from disclosing info and from competing with their employer
 Implied duties
Senior employer has a higher degree of obligation of fiduciary duty
that they owe to their employer
This implied duty encompasses 3 aspects
- Employee is prohibited from acting contrary to the interest
of the employer
- The employee must not compete with his employer
- Employee must disclose to his employer valuable info which
he has received in his position as employee
Obligations after employment
The ex-employees right to earn his livelihood becomes an important
consideration. An ex-employee is free to compete with his ex-
employer provided he acts fairly. Once the contract of employment
comes to an end, the duty of fidelity continues albeit its scope is
narrower
39
Case: Svenson Hair Center Sdn Bhd v Irene Chin Zee Ling
The D held the position of sales consultant in the P’s company, the
contract of employment contained express provisions of
confidentiality, non-solicitation and non-competition. The P alleged
that the prior to the D’s resignation, she had taken away the P’s
customer treatment cards and had enticed its staff to join them.
Held: the details amount to trade secret.
Confidentiality clauses and restraint of trade
Such clauses restrain the employee from using or disclosing info
about his employer’s business about his employer’s business or
prevent the employee from working for a competitor for a period of
time after the termination of employment contract.
Case: Worldwide Rota Dies Sdn Bhd v Ronald Ong Cheow Joon
Clause 10 prohibited the D from engaging in or owning the same
trade as the P in the geographical areas in Malaysia, Singapore,
Thailand, Philippine and Taiwan for a period of 3 years from the
date of resignation. However, the D disclosed all the CI to its
competitors
Held: the ROT was reasonable and applicable
Duration of the obligation of confidence and the springboard
doctrine
For as long as the info remain confidential or until such time when
the confider releases himself from the obligation.
The Springboard doctrine prevents the confidant from making use
of the CI that had been communicated to him for a period of time
until the info that has been reverse engineered is fully accessible by
the public. It also applies to situations where the confidant had
breached his obligation by disclosing the CI to the public but,
despite the disclosure, time and effort still needed for the public to
synthesise the info so as to be on par to compete with the confidant.
Although the info may have fallen in the public omain through the
breach of confidence, the SD operates to prevent the confidant
from using the info so as to have a head start over the others.
Case: Regent Decorators (M) Sdn Bhd & Anor v Michael Chee &
Ors
The P was interior decorators and were also dealers of furnishing an
interior decorating materials. After leaving employment, the D set
up a company, the 4th D, which carried on the same business as the
P. the P brought an action for breach of confidential info by using
the names and addresses of P’s customers which were obtained
during their employment.
Held: info were confidential and could not be used as springboard
from which to start the D’s business.
c. There must be an unauthorized use of that information to the
detriment of the party who communicated it
40
Unauthorized use must link to the obligation

There has been unauthorized use of the CI to the detriment of the

confider and it must relate to the nature of the obligation of
confidence.

Objective test

For a confidant to be bound by an obligation of confidence, it is

necessary that he actually knows or ought to have known that the
info communicated to him is confidential. Where a confidant
possesses such requisite knowledge, any use or disclosure of info
received under an obligation of confidence would be unauthorized.

Case: Dato’ Vijay Kumar Natarajan v Choy Kok Mun

The test is used to determine if the info is confidential and whether

an obligation of confidence exists.

Case: Seager v Copydex

P had entered into business negotiations with the D regarding the

manufacture of a carpet grip. P disclosed to D his idea of an
alternative carpet grip. Nego broke down and later D designed a
carpet grip similar to the idea. D claimed they have forgotten about
the idea.

Held: D was in brech of his obligation of confidence by using info

‘unconsciously’

Defences & Remedies

*Pls refer to Nisa Bani

41