Law Made Simple

Intellectual Property Law

Note 1 0f 7 Notes

Copyrights

Musbri Mohamed
DIL; ADIL ( ITM )
MBL ( UKM )

1
The preamble of the Statute of Anne 1709 states
that the objective of copyright is:

... for the encouragement of learned men to

compose and write useful objects.

The need to achieve a balance between the

conflicting needs of copyright owners and the
public continues to be addressed at the same
time. This is evident with the intensification of
categories of use of copyright which are
considered as legitimate and valid, embodied in
the exception of copyright.

2
Copyright has long served to accommodate the conflicting
interests of the copyright owners and the public. It is to this end
that the law has drawn certain constraints on these exclusive
rights and imposes certain behavioural limits to obviate the
creation of monopolistic situations and the perceived danger of
abusing the competitive advantage conferred by intellectual
property.

This paramount need for a balancing exercise is expressed in art

27 of the Universal Declaration of Human Rights which
provides that:

Everyone has the right to freely participate in the cultural life of

the community, to enjoy the arts and to share in scientific
advancement and its benefits; and

Everyone has the right to the protection of the moral and

material interests resulting from any scientific, literary or
artistic production of which he is an author.

3
A renewed awakening of the role of intellectual property
in the countries of the various regions of the world has
led more recently to the adoption or revision of national
legislation on patents for inventions, industrial designs,
trademarks, copyright and related rights and the transfer
of technology, as well as to the establishment or
modernization of government structures that administer
such legislation.

At the same time, the legal profession, consisting of law

officers in the various government ministries, judges
and legal practitioners, are attempting to respond to the
need for a better understanding of the problems
presented by the new technologies and by the new
technological means of communication of information
and ideas and of their impact on industry and commerce
and on the quality of life.

4
Following a round table organized by WIPO in 1979
for professors interested in teaching industrial
property law, the International Association for the
Advancement of Teaching and Research of
Intellectual Property (ATRIP) was established in
1981.

The Association meets annually, and is composed of

teachers and researchers from all over the world,
with a President and Executive Committee elected
for a two-year term.

5
The importance of intellectual property in the modern world goes far beyond
the protection of the creations of the mind. It affects virtually all aspects of
economic and cultural life. As a result, intellectual property education at the
university level is of increasing relevance in educational programs.

The purpose of what follows is to highlight the importance of intellectual

property educational programs at the university level, and to give some
guidance to university teachers and administrators as well as Government
officials on how to establish an effective university curriculum in intellectual
property.

In addition to business programs, all basic university training programs for

lawyers include courses in commercial law and property law, as well as
courses dealing with civil and criminal procedures. Such courses are an
indispensable foundation for a basic understanding of the concepts that are
reflected in intellectual property law. Lecturers teaching such courses,
particularly those on commercial, economic or property law, often include
sections on various types of intellectual property protection, especially those
which are of interest to the business or economics student.

6
Peter Drucker presents a case for k-economy
when he says in The Age of Social
Transformation that the future is 'an economic
order in which knowledge, not labour or raw
material or capital, is the key resource; a special
order in which inequality based on knowledge is
a major challenge'.

Effectiveness of intellectual property protection

in Malaysia however depends heavily on the
enforcement of laws in Malaysia.

In the eyes of the international community,

Malaysia is generally lax when it comes to this.
Not surprisingly, Malaysia had been on the US
Government’s Special 301 watch list since 2002.
Intellectual property protection is also an
ongoing issue on the US-Malaysia Free Trade
Agreement negotiations.

7
Enforcement of intellectual property rights did
make great strides in Malaysia, especially for the
past year. The USTR on its 301 watch list report
are amongst those who commend Malaysia for
‘strong commitment to strengthening IPR
protection and enforcement’.

The International Intellectual Property Alliance

(IIPA) also noted that ‘the Malaysian Government
has made a significant effort over the past several
years to preserve intellectual property rights.’

8
Copyright is a property right which protects a wide
variety of works.

The Malaysian Copyright Act 1987 provides

comprehensive protection for copyrightable works. The
Act outlines the nature of works eligible for copyright
(which includes computer software), the scope of
protection, and the manner in which the protection is
accorded. There is no registration of copyright works.
 
Copyright protection in literary, musical or artistic works
is for the duration of the life of the author and 50 years
after his death. In sound recordings, broadcasts and films,
copyright protection is for 50 years after the works are
first published or made.

9
A unique feature of the Act is the
inclusion of provisions for its
enforcement.

A special team of officers is appointed

to enforce the Act and empowered to
enter premises suspected of having
infringing copies and to search and seize
infringing copies and contrivances.

10
The Berne Convention for the
Protection of Literary and Artistic
Works (Article 2) states: “The
expression ‘literary and artistic works’
shall include every production in the
literary, scientific and artistic domain,
whatever may be the mode or form of
its expression”.

11
Works eligible for copyright

Section 7(1) of Malaysian Copyright Act 1987 provides

for works eligible for copyright are :-

(a)   literary works;
(b)   musical works;
(c)   artistic works;
(d)   films;
(e)   sound recordings; and
(f)   broadcasts.

12
Copyright relates to artistic creations, such as books,
music, paintings and sculptures, films and technology-
based works such as computer programs and electronic
databases. In most European languages other than
English, copyright is known as author’s rights. The
expression copyright refers to the main act which, in
respect of literary and artistic creations, may be made
only by the author or with his authorization. That act is
the making of copies of the work.

The expression author’s rights refers to the creator of the

artistic work, its author. It thus underlines the fact,
recognized in most laws, that the author has certain
specific rights in his creation which only he can exercise
(such as the right to prevent a distorted reproduction).
Other rights (such as the right to make copies) can be
exercised by other persons, for example, a publisher who
has obtained a license from the author.

13
One main problem with a digitized work is its
ease of reproduction, manipulation and
replication. The creators of digital works argue
that since a digital work can easily be copied at a
lower cost, piracy of these works would be more
rampant . In turn, this prejudices the adequate
remuneration of the copyright owner.

Most discussion of the legal formulation of

copyright proceeds from the proposition that the
owners of intellectual property rights will not be
willing to make their works accessible in the
market that exposes them to a high risk of piracy
and other unauthorized uses, unless appropriate
systems are in place, both nationally and
internationally to permit them to set and enforce
the terms under which their works will be made
available.

14
In the absence of legal formulation, many issues are
unsettled with regards to the scope of exclusive
rights of electronic works. What is the legal
position if a digital work is transmitted to another
location? Will this constitute a reproduction of the
work?

Unlike the distribution of a print work which

involves the transfer of material, the transmission of
a digital work leaves the original work intact and no
material changes hand. Nevertheless, the
transmission of a work involves the making of a
copy of the original work and arguably, can be
considered as a reproduction of the work.

15
The development of case laws in the US supporting the contention that
the placement of copyright material into a computer's memory is a
reproduction of that material. These cases are MAI System Corp v
Peak Computer Inc, Advanced Computer Services v MAI Systems
Corp and Triad Systems Corp v Southeastern Express Co.

These cases illustrate that the loading of software into a computer's

RAM amounts to the making of a copy. Looking at the US Copyright
Act 1976 definition of 'fixed', the courts found that once a computer
program was stored in RAM, it was sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise communicated for a
period of more than transitory duration. Consequently, that storage
resulted in a fixation, and thus in making a copy, violating the copyright
owner's exclusive reproduction rights.

16
Not surprisingly, many writers point to the paradox
resulted from this development. While a person may
browse through print works in a shop, he cannot
simply browse through digital works as every time he
does this he will create a complete copy of electronic
files for replication on a computer screen and hence
committing infringement of copyright.

To extend the logic further, in the world of digital

works, there will be no toleration of a private use of
such a work as this is seen as impending the rights of
the copyright owners. Similarly, that person cannot
lend the work to someone else.

17
Coming back to our local scene. What is
then the position of 'electronic
transmission' under the Copyright Act
1987? Section 13 does not cover such
mode of transfer of work.

One can import the same line of

argument in the US into Malaysia
because the terms 'reproduction' and
'material form' are given a generous
meaning in our Copyright Act to cover
all kinds of reproduction of a work.

18
The unique nature of electronic works posed
innumerable problems. While the owner of
electronic works argue that their works
should be protected under copyright, just as a
print work, the ease of replication of such
work requires special attention.

To accommodate electronic works in

copyright, a lot of adjustment has to be made
to the existing copyright regime to the extent
that the present equilibrium in copyright is
distorted.

19
Copyright laws also protect other modes or forms of expression
of works in the literary, scientific and artistic domain, which are
not included in the list.

Computer programs are a good example of a type of work

which is not included in the list in the Berne Convention, but
which is undoubtedly included in the notion of a production in
the literary, scientific and artistic domain within the meaning of
Article 2. Indeed, computer programs are protected under the
copyright laws of a number of countries, as well as under the
WIPO Copyright Treaty (1996). A computer program is a set of
instructions, which controls the operations of a computer in
order to enable it to perform a specific task, such as the storage
and retrieval of information. The program is produced by one or
more human authors, but in its final “mode or form of
expression,” it can be understood directly only by a machine
(the computer), not by humans.

20
Multimedia productions are another example of a type of
work not listed in the Berne Convention, but which clearly
comes within the notion of creations in the literary, scientific
and artistic domain. While no acceptable legal definition has
been developed, there is a consensus that the combination of
sound, text and images in a digital format, which is made
accessible by a computer program, embodies an original
expression of authorship sufficient to justify the protection of
multimedia productions under the umbrella of copyright.

21
Originality

Section 7(3)(a) of the Malaysian Copyright Act 1987 provides that a

literary, musical or artistic work shall not be eligible for copyright
unless there has been sufficient, skill, labour and judgement involved
in creating the work. The test of originality has been discussed by
Peterson J in the case of University of London Press Ltd v University
Tutorial Press Ltd [1916] 2 Ch 601 at p 609.

The practical development of copyright has been supported by the

judges who have usually been sympathetic to the principle of
protecting the results of a person’s skill, effort or judgment as
Peterson J said :-

….. What is worth copying is prima facie worth protecting.

22
In the case of University of London Press v University
Tutorial Press it was held that “the word ‘original’ does not
mean that the work must be an expression of original or
inventive thought…the originality that is required is related to
the expression of thought”. This equates with the principle that
the work must not of course have been copied, and must be the
own work of the person claiming the copyright.
 
Thus, as long as the work is not copied, even if one produces
something which is similar to someone else’s work, the former
could still own the copyright in his own work.

23
In Nottinghamshire Healthcare National Health Service
Trust v News Group Newspapers Ltd [2002] RPC 49 a
photograph of a patient at Rampton Hospital was copied without
permission and published by the defendant with a sensational
article. It was held that defendant had reaped a significant
economy benefit from publication of a photograph that was
obviously stolen and taken without permission from Rampton
Hospital.

24
The right for database protection initiatives is the diminished
ability of copyright and/or other legislation to protect the same.

Factual compilation database could not obtain copyright

protection in the United States, unless some 'modicum of
creativity' is added to enable the database to qualify as
'original‘ see Feist v Rural US Supreme Court, 27 March
1991. Effectively, this means that large compilation database
consisting of comprehensive data that exhaust the applicable
field and which took large investments to build, are not
protected.

Colston suggests that likely no one solution would solve the

problems raised but any solutions must necessarily involve a
cocktail of competition laws, guarantee user access, copy duty,
safeguards regarding technological protection measures and
extended exception to copyright and database rights.

25
First or made in Malaysia

As stated in s 10(2) and (3) of the Act, the

copyright shall also subsist in every work
which is eligible for copyright and which is
first published in Malaysia or if the work is
made in Malaysia.

26
The first work must be the result of skill and judgment. As
Pumfrey J said in Cantor Fitzgerald International v
Tradition (UK) Ltd. [2000] RPC 95:-
….it is possible that entirely mechanical labour may be
saved by copying something produced by entirely
mechanical labour, involving no skill.
Taking a photograph of an object will usually require
some degree of skill extended by the photographer even if
the object photographed is fairly mundane. Skill may
derive from the choice of angle, lighting and positioning
of the object.

27
HONDA GIKEN KOGYO KABUSHIKI KAISHA v ALLIED
PACIFIC MOTOR (M) SDN BHD & ANOR
[2005] 3 MLJ 30

A design is new if it has yet to be disclosed to the public anywhere in

Malaysia and has not been the subject of another registration
application in Malaysia but by a different applicant .

The fact that similar designed vehicles had been sold in Thailand
earlier than the registration of the plaintiffs exclusive right, was
irrelevant for purposes of the definition of 'new'. It is thus conclusive
that prior to or on the date of the plaintiff's registration of its designs
(on 7 December 2000), no industrial designs similar in material details
or features, or even differing only in immaterial details or in
features to the plaintiff's designs were disclosed in Malaysia or had
been registered in Malaysia . On the day the designs were
registered, they were indeed new. With all the material requirements of
the Industrial Designs Act having been adhered to, the final act of the
registrar to issue the certificates was certainly above criticism .

28
A qualified person

Section 10 of the Copyright Act 1987 provides that 'copyright shall

subsist in every work eligible for copyright of which the author ... is, at
the time when the work is made, a qualified person'. According to s 3 of
the Copyright Act 1987, a qualified person means

(a)   in relation to an individual, a person who is a citizen of, or

      permanent resident in, Malaysia; and
(b)   in relation to a body corporate, a body corporate established in
      Malaysia and constituted or vested with legal personality under the
      laws of Malaysia.

29
Infringement of Copyright

Section 36(1) of the Copyright Act 1987 states that copyright is infringed by
any person who does, or causes any other person to do, without the licence of
the owner of the copyright, an act which is controlled by copyright under the
Act. According to s 13(1) of the Act, copyright in a literary, musical or artistic
work, a film, a sound recording or a derivative work shall be the exclusive right
to control in Malaysia:

(a)   he reproduction in any material form;

(aa)  the communication to the public;
(b)   the performance, showing or playing to the public;
(c)   (deleted); (d)   (deleted);
(e)   the distribution of copies to the public by sale or other transfer of
      ownership; and
(f)   the commercial rental to the public, of the whole work or a substantial part
thereof, either in its original or derivative form.

30
Who owns the copyright to the computer-generated
work?

As computer technology increasingly becomes sophisticated, it allows

copyrightable work to be created automatically even with no human
intervention. Nevertheless, we have to bear in mind that the computer
program used to produce the work is a creation of a human being. The
computer program in certain circumstances should be recognized as the
author and the owner of the computer-generated work. To the user of the
computer program (in a situation whereby a user is needed to use his
skill and to contribute inputs in making the work), the computer
program still functions as a tool to him and the user should be
considered as the copyright owner. This situation has to be made clear in
the Copyright Act 1987 so as to avoid disputable issues of ownership in
the future.

31
The Malaysian Copyright Act 1987 does not define the meaning of a
computer-generated work, unlike the Copyright, Design and Patent Act
1988 (United Kingdom) which gives a specific definition of such a work.
Due to the advances of computer technology, it is rather important to define
this work clearly in the Act so as to avoid disputes in the future, particularly
on the issue of ownership.  

Although the CDPA 1988 UK is a close example for Malaysia, it is not the
best model since the definition given in s 178 of the CDPA 1988 UK and the
provision regarding ownership in s 9 of the same Act are in contradiction
with one another. Section 178 defines the computer-generated work as a
work created by the computer with no human author. Whereas s 9 of the said
Act provides that the author is the person by whom the arrangements
necessary for the creation of the work are undertaken. This will generally
mean that the person who has control of the computer will be the author of
any computer- generated work.

32
Even though the Copyright Act 1987 does not mention about
computer-generated work, the Act in s 3 has categorized computer
programs as literary works.

The word 'computer program' is defined as an expression, in any

language, code or notation, of a set of instructions (whether with or
without related information) intended to cause a device having an
information processing capability to perform a particular function
either directly or after either or both of the following:

(a)   a conversion to another language, code or notation; and

(b)   reproduction in a different material form.

33
Copyright or Trademark ? Framing

Framing is part of the powerful internet technology, and the

practice must be considered because it concerns the display of
the content of another website which is protected by
copyright. As far as US law on framing is concerned, the legal
issues raised by the Total news case are still unsolved as the
parties settled the case before the court could have ruled on
the matter. Guidelines as to the law applicable to framing
have yet to be established.

As far as UK law is concerned, there is no specific provision

on framing under the CDPA 1988. This is not surprising since
there is no express provision regarding framing in the EU
Information Society Directive. Thus the UK has no EC Treaty
obligation to adopt legislative measures concerning framing.

34
In Malaysia, the situation is similar to that in the UK: there is no
specific provision regarding framing. As a Commonwealth country,
Malaysia is influenced by the development of the law in the UK.
Therefore, it is submitted that, in the absence of a legislative
provision on framing in UK and Malaysian law, then the principles of
copyright and trademark law may be the best solution to the problem.
The Malaysian Copyright law is similar to UK law.

The existing principles of Copyright law are relevant and can be

applied to framing, but trademark law and passing off are even more
relevant to acts of framing. It is concluded that there is no need for
any legislative action, since the existing laws can deal with
difficulties arising from the action of framing the contents of
another's website.

35
Who Controls the Internet is a manifesto, or perhaps
more accurately, a counter-manifesto. It targets the
“visions of a post-territorial order” popularized during
the Internet boom of the mid-1990s . Internet
enthusiasts such as Julian Dibbell and John Perry
Barlow created a powerful vision of the Internet in the
1990s as “a new frontier, where people lived in peace,
under their own rules, liberated from the constraints of
an oppressive society and free from government
meddling”

36
The jurisdictional complications of the Internet have led to a
number of international disputes and efforts at resolution among
traditional territorial governments.

Government representatives within the Council of Europe created a

cybercrime convention, although relatively few countries have
joined it; continuing disagreement over the root authority now
focuses on perspectives of representatives of different countries; the
World Trade Organization has jumped into the fray over the
legality of Internet gambling by adjudicating a complaint by
Antigua and Barbados against the United States; and the European
Union data protection directive has a global impact on privacy
practices in the United States (pp 165-78). In all of these cases,
traditional governments are taking the primary role in representing
the interests of their citizens in how the Internet is regulated.

37
The utopians of the 1990s were “in the grips of a strange
technological determinism that views the Internet as an
unstoppable juggernaut that will overrun the old and outdated
determinants of human organization” . But the utopians were
wrong, as they failed to see that ultimately it is governments
that control the Internet, not the Internet that controls
governments.

The Internet is not borderless; rather, it is becoming

increasingly bordered, and the experience of Internet users
increasingly hinges on their physical location. The future of
the Internet thus hinges on which governmental visions of the
Internet win out: “struggles between nations and their national
network ideologies . . . will do much to determine how life on
the bordered Internet is lived” .

38
When can law successfully regulate the
Internet?

It suggests that the effectiveness of a legal regime

designed to regulate Internet transactions will depend
heavily on four factors:

(1) who the law regulates,

(2) the cost and political viability of enforcement

strategies,

(3) how much compliance is needed for the law to

achieve its goals,

(4) and which side is winning the technological arms

race at any given time.

39
DEALINGS IN COPYRIGHT S.27(1)

Assignment
The transfer of ownership of the proprietary in the
copyright work can be made through sale, hire, under a will
for natural love and affection .

License
An authorization or permission to do the exclusive rights of
the copyright owner, without it , the act will amount to an
infringement of copyright.

Testamentary Disposition
This method of transmission must be dealt in accordance to
the provision stated in the Distribution Act 1958.

40
DEFENCES OR GUIDANCE OF USE OF FAIR DEALING

i.  the question of fairness or otherwise of a dealing with a copyright

work must be judged in relation to one of the stipulated purposes that
is, non-profit research, private study, criticism, review or
reporting current event.

ii. the purpose or motive of the defendant in infringing the copyright

of the Plaintiff may also be relevant in deciding whether the dealing
is relevant.

iii.the proportion of the work taken in relation to the whole work.

iv. although there may be an industry practice or custom to reproduce

copyright works, this does not necessarily mean that the defense is
available.

41
The requirement to established direct infringement was set out in the
case of Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd (1955)
72 RPC 89. The requirements are as follows;
 
-There must be sufficient objective similarity between the original work
or a substantial part thereof, and the infringing copy;
 
-There must be a causal connection between the original work and the
infringing copy, that is, the infringing copy must have been copied from
the original work, whether directly or indirectly; and
 
-What has been infringed must constitute a substantial part of the
original work.

42
Although the Law on Copyright in Malaysia is not
precise, as Copyright exists automatically upon
creation of work. There are no definite and actual
processes to register a Copyright in Malaysia. But by
way of considering case laws and facts; the law on
Copyright still remain just and fair protecting the
innocent or injured party. There could be infringement
even though the imitation is not an exact replica. It
does not matter the size or whether the whole or part
of the original was copied.

Therefore in Malaysia, in order for a work to be

protected under the laws of Copyright, it is
essential to execute a Statutory Declaration to
assert ownership of a Copyrighted work.

43
Megnaway Enterprise Sdn Bhd v Soon Lian Hoc (Sole proprietor of
the firm Performance Audio & Car Accessories Enterprise) [2009] 3
MLJ 525
 
The Plaintiff's claim was base on the Defendant's infringement of their
Copyright and unlawful interference with the Plaintiff's trade or business.

The learned defense counsel submitted that the Plaintiff had failed to
establish that sufficient effort has been expended on the artistic work and
so it is not eligible for Copyright according to the law, Section 7 (3)(a) of
the Copyright Act 1987 (hereinafter referred as the Act). However, the
Plaintiff's managing director was able to submit that the artistic work
(drawings) were completed almost 20 years ago and has expended
substantial amount of skill, labor and effort and the artistic work was
therefore original.

44
Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd [2001]
FCA 612, the Federal Court of Australia ruled that Telstra, the Australian
owner/publisher of the innocuous White Pages and Yellow Pages telephone
directories, had copyright in the content of the directories. Consequently, the use
of the data by the Desktop Marketing constituted an infringement of the
copyright, and therefore, the offending product was removed from sale. 
 
It is, therefore, to be noted that copyright was conferred to the compilation by
Telstra, because in calling it into existence, it attracted much skill, labour and
judgement from the creators.
 
Hence, regardless of the fact that extraneous sources had been tapped in the
creation of lecture notes, by lecturers of institutes of education, it would be the
case that such created teaching materials would bear copyright, and the copyright
would belong to the employer of the creator if it was so created pursuant to the
terms of his employment.

45
European countries have already in place commendable
practices to fight copyright violations and piracy online,
according to the recently adopted European Charter for
the Development and the Take-Up of Film Online. The
Charter was signed by top executives from the film and
online industries and high government officials during
The 59th Cannes International Film Festival and seeks to
extend the number of existing practices to fight copyright
infringements and piracy. The Charter serves as reference
for commercial agreements to distribute film online and
also for the Content Online Policy of the European
Commission.

46
The Danish Supreme Court has established the need to comply
with the Copyright Directive and allowed for the issuance of
preliminary injunctions to protect plaintiffs against extensive IPR
infringements, while The Austrian Supreme Court has ordered
ISPs to disclose the names and addresses of users who have
committed said infringements. The Swedish Data Protection Board
has allowed the Swedish Anti-Piracy Bureau to process the IP
numbers of individuals who make copyrighted material available
to others, inform ISPs of serious copyright infringements and take
violators to Court.

47
The French Syndicate of Recreational Software has
in place a system to automatically detect IPR
infringements when Internet users illegally share
videogames, while the French Data Protection
Authority views positively the issuance of warning
messages to surfers who illegally download
software or make available videogames in peer-to-
peer, file-sharing networks. A representative of the
French Syndicate of Recreational Software, vetted
by the Ministry of Culture, may retrieve the IP
addresses of individuals who make available the
videogames.

48
17th July 2007 marked the advancement of intellectual
property enforcement in Malaysia, when an
intellectual property court was established, in line with
the TRIPS Agreement.

This was applauded by the international community as

another indication of Malaysia’s resolve to protect
intellectual property rights. Aussino (M) Sdn Bhd
earned the dubious distinction of being the first local
company to be found guilty in the Court for
possessing copies of pirated software.

49
As what Branding Association of Malaysia
President Lewre Lew said :-

‘It is time for business owners to change

their mindset to become brand owners, to
build intellectual property’.

Malaysia’s intellectual property rights will

never be fully protected as long as businesses
are ignorant on the rights that they have.

Thank you.

50