COPYRIGHT COMMITTEE REPORT MALAYSIA 1. Proposals for Changes in Copyright Law in Malaysia There have been proposals to amend the Copyright Act and comments have been given by stakeholders to the proposed amendments. Some of the crucial proposed amendments are as follows: a) A new section on Infringement of copyright in relation to technological protection measure is proposed. This new provision caters for acts amounting to infringement of copyright other than the act of circumvention and causing / authorizing other person to circumvent. b) To insert a new section on Liability of the Owners of Premises Used for Infringing Activities where the owner of the premises or the person who is entitled to the reversionary interest in the possession of the premises shall also be liable for the infringement where he knows or ought reasonably to know that the activities have been carried out in contravention of that section. This will encourage the owners of premises to play a vital role in government s policy to reduce piracy. c) To restructure the entire section on Action by owner of copyright and relief to include statutory damages. This is to provide statutory damages in noncriminal claims. The amendment will provide monetary relief to the copyright owners for infringement where actual damages and the defendant s profits are difficult or expensive to prove. d) To introduce a new Part on Anti-Camcording to combat camcording activities in a place for the screening of any film or cinematography. 9
2. Copyright Cases The following cases relating to Copyright were reported in the past year. MediaCorp News Pte Ltd & Ors v. Mediabanc Johore Bahru Sdn Bhd & Ors [Unreported]. Facts: The defendant, being a monitoring agency, provides for a fee, particulars, data and information requested by their clients which is routinely supported by clips of news segments and commercials from their database. The plaintiff claims the continuous recording, compiling and archiving of the plaintiffs broadcasts and media programs by the Defendant without their consent amounts to a breach of copyright. Issues/Held/Findings: 1. Have the plaintiffs established ownership of copyright in the television and radio news programmes produced and broadcast by them? The plaintiffs have established ownership of copyright in the plaintiffs television broadcast from Singapore and the pre-recorded film segments of the plaintiffs television news programmes. 2. Have the defendants infringed the plaintiffs copyright in the works? The defendants acts in recording the plaintiffs television news programmes off air have infringed the plaintiff s copyright in broadcast and film vis a vis the pre-recorded segments. 10
3. Is the defence of fair use / fair dealing available to the defendants? The defence of fair use / fair dealing is not available to the defendants. The Court for the first time formulated a 'fair use' test consisting of the following factors: i. the purpose of the dealing and whether it falls within the specified exceptions in the statute; ii. the nature of the work; iii. whether it can be said that a substantial part of the work has been copied or utilized when compared with the original work; iv. on an objective assessment, what is the impression created by the reproduced / copied dealing? v. the effect of such dealing upon the potential market for, or value of the work; v. what is the motive of the party in its dealing with the work? In evaluating these factors, the Court would also need to take account the public Interest. Radion Trading Sdn Bhd v. Sin Besteam Equipment Sdn Bhd & Ors [2010] 6 CLJ 334. Facts: The plaintiff claims copyright ownership in the technical design drawings for the Automatic Swing Gate Actuator and the second and third defendants have infringed the copyright subsisting in the drawings by distributing the infringing articles based on the drawings to the public by sale without the consent or license of the plaintiff. The defendant claims that the design drawings were copied from 11
an earlier works found in a UK patent application and hence the Plaintiff s drawings are not eligible for protection. The plaintiff seeks a permanent injunction to restrain the defendants infringing the copyright subsisting in the design drawings of the plaintiff s Automatic Gate Actuator or the identified component parts, an order for delivery up and inquiry as to damages for infringement of copyright or at the plaintiff s option an account of profits. The defendant counterclaimed for losses caused by an interlocutory injunction which was obtained against them earlier. Issues/Held/Findings: 1. Whether the first and second works is in fact original works are eligible for copyright protection under the Act. The Court held that design or engineering drawings are protectable as artistic works and would cover both 2 dimensional work and 3 dimensional finished products. Sections 13A, 13B and 13C of the Copyright Act 1987 ( the Act ) on certain exclusion of copyright protection to design documents do not apply in this case as the drawings in question were made prior to the sections coming into force. There are various differences between the drawings in question and the UK patent application. Hence, the plaintiff s design drawings were created with sufficient skill and effort to make it original in character. The relevant design drawings of the Plaintiff s Automatic Swing Gate Actuator and its components qualified as artistic works. The copyright ownership belongs to the Plaintiff. 2. Whether the second and third defendants Automatic Swing Gate Actuator infringes the plaintiff s copyright subsisting in the first and second Works 12
for the Automatic Swing Gate Actuator and/or the 3-dimensional form thereon. (i) Having regard to the substantial objective similarities between the second and third defendants Automatic Swing Gate Actuator and the plaintiff s Automatic Swing Gate Actuator, the court held that a prima facie presumption of copying arises. The similarities between the plaintiff s Automatic Swing Gate Actuator and the second and third defendants Automatic Swing Gate Actuator constitute a substantial part of the original work. (ii) (iii) There is a causal connection between the plaintiff s Automatic Swing Gate Actuator and the second and third defendants Automatic swing Gate Actuator through the inference of copying (based on the substantial similarities) and more importantly, the knowledge obtained by the second defendant when he acted as the plaintiff s Agent and/or dealer between November 1999 to December 2000. The plaintiff has established a case of copyright infringement against the second and third defendants. 3. The court also held that the Act does not bar the admission of a statutory declaration by the plaintiff claiming copyright ownership which was affirmed subsequent to the creation of the copyrighted works, 14 years after the drawings were made. There was no legal requirement that the statutory declaration should be made contemporaneously with the creation of the works. 4. Plaintiff s claim is allowed and the counterclaim of the second and third defendants is dismissed. 13
Elster Metering Ltd & Anor v.premier Amalgamated Sdn Bhd [2010] 2 CLJ 149 Facts: The plaintiffs claimed that they were the owner of the copyright subsisting in the original drawing for a water meter known as Kent PSM and its predecessor the Kent Water meter. The 2nd plaintiff was the licensee of the copyright in the drawing and the plaintiffs water meter in Malaysia. According to the plaintiffs, Ningbo Water Meter Co. Ltd ( Ningbo ) had infringed their copyright by reproducing in material form, the drawings and the plaintiffs water meter and the defendant had infringed by selling the infringed water meter. Issues/Held/Findings: 1. It was held that the plaintiffs, to establish copyright, had relied on the statutory declaration made pursuant to s. 42 of the Act and attempted to say it was prima facie proof of copyright. The words in s. 42 are not sufficiently strong enough to override the salient provisions of the Evidence Act 1950. The principle being he who alleges must prove. Prima facie evidence of fact stated in s. 42 cannot be equated as prima facie proof. The facts stated in a s. 42 declaration are treated as prima facie evidence of facts stated therein which only assists the plaintiffs, inter alia to prove the case, provided the strict requirement of the provision is complied with. Section 42 does not dispense with proof as set out in s. 101 of the Evidence Act 1950. Section 42 evidence per se can be negated by other conflicting evidence before the court. 2. The 1st plaintiff by entering into the deed of assignment in 2000 which attempts to take effect retrospectively to 3 April 1966 acknowledged that until 2000 the statutory requirement of assignment under the Act had not been satisfied. The assignor could not be said to be the original owner as 14
set out in s. 37 of the Act. A retrospective assignment for purpose of the Act ought not to be entertained as it may encourage litigation or fraudulent litigation by the execution of self serving statements etc. 3. The court finds that there is no copyright infringement due to the following: (i) the plaintiffs did not know who the actual makers were and in what capacity they did the drawings. These are some of the essential ingredients under the Act to establish copyright which the plaintiffs failed to comply. Statutory declaration alone was not sufficient; (ii) the plaintiffs had failed to produce any employment records in relation to the makers. The drawings only carried the initials of the maker. In consequence, the 1 st plaintiff had failed to prove ownership of the copyright subsisting in the drawings; (iii) the statutory declaration did not annex the 1st issue of the drawings but subsequent issues only. The drawings did not carry dimensions. In consequence, s. 42 of the Act was not complied with; (iv) the drawings were subsequent issues. In consequence, they did not have sufficient originality as required under copyright law; (v) the plaintiffs should have produced a full set of the drawings that described the Kent PSM meter but in the present matter only six drawings were relied on; (vi) the plaintiffs had failed to prove that a substantial part of the Kent PSM meter had been copied; (vii) the defendant s meter had been independently developed; and 15
(viii) the plaintiffs had tendered no evidence beyond the letter of demand to impute knowledge on the part of the defendant. 3. The plaintiffs claim is dismissed with costs. Report prepared by Cindy Goh Joo Seong for the Copyright Committee of the Malaysian APAA Country Group 16