COPYRIGHT
(PART II)
DR MA KALTHUM ISHAK
AZMAN HASHIM INTERNATIONAL
BUSINESS SCHOOL
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Authorship &
Ownership
Ma Kalthum Ishak (PhD, LL.M, LL.B)
INTRODUCTION
JOINT
AUTHORSHIP
AUTHORSHIP
LITERARY, MUSICAL AND
ARTISTIC WORK
FILM, SOUND
RECORDINGS,
BROADCAST
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Introduction
The person who creates the work is the author
Goodyear Tire & Rubber Company & Anor v Siverstone
Tire and Rubber Co Sdn Bhd
[1993] 2 AMR 3538
Ma Kalthum Ishak (PhD, LL.M, LL.B)
AND ARTISTIC WORK
LITERARY, MUSICAL
Literary
Musical
Artistic
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 3: the writer or the maker of the work
The person who records the work is also the maker
provided he has given additional specific contribution
A) Literary
Robin Ray v Classic FM plc
Walter v Lane
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 3: Author is the composer
Oxford Dic: composer is a person who writes
music
Situation: musical accompaniment is written by
another person as background support for a
B) Musical musical part.
Issue: Whether there is a single musical copyright in
the resulting work or whether a separate musical
copyright attach to the author of musical instrument?
Case: Rock Records (M) Sdn Bhd v Audio One
Entertainment Sdn Bhd
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 3:
in relation to artistic works other than photographs, means the
artist
C) Artistic in relation to photographs, means the person by whom the
arrangements for the taking of the photograph were undertaken
Sherinna Nur Elena Bt Abdullah v Kent Well Edar [2011]
MLJU 454
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Film, Sound
Recordings,
Broadcast
Film, Sound
Broadcast
Recordings
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 3: means the person by whom the
arrangements for the making of the film or
recording were undertaken
Emphasis on the person who makes the
A) Film, Sound arrangements undertaken
Recordings Rock Records (M) Sdn Bhd v Audio One
Entertainment Sdn Bhd
Can also refer to body corporate
Creative Purpose Sdn Bd & Anor v Integrated
Trans Corp Sdn Bhd & Ors
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S.3: in relation to broadcasts transmitted from
within any country, means—
the person transmitting the programme, if he has
responsibility for the selection of its contents; or
any person providing the programme who makes
B) Broadcast with the person transmitting it the arrangements
necessary for its transmission
MediaCorp News Pte Ltd & Ors v
MediaBanc (JB) Sdn Bhd & Ors
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Joint Authorship
S. 3: means a work produced by the collaboration of two or more authors in
which the contribution of each author is not separable from the contribution of
the other author or authors.
Prerequisites:
Must have been produced by the collaboration of 2 or more authors; and
Contribution is not separable from the contribution of the other authors; and
Must be shown that each author has expended skill and sufficient effort to make his
contribution original in character
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Ownership
V
Authorship
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 26. (1): Copyright conferred by section 10 shall vest initially in the author.
Exception:
is commissioned by a person who is not the author’s employer under a contract of service or
apprenticeship; or
not having been so commissioned, is made in the course of the author’s employment
Radion Trading Sdn Bhd v Sin Besteam Equipment Sdn Bhd
the copyright shall be deemed to be transferred to the person who commissioned the work or the author’s
employer, subject to any agreement between the parties excluding or limiting such transfer.
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Employer and employee relationship
How to determine the relationship?
Written contract
Absence of written contract?
Whether a person is an employee?
Megnaway Enterprise Sdn Bhd v Soon Lian Hock
Hexagon Tower Sdn Bhd v Polydamic Holdings Sdn Bhd & 3 Ors
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Work made in the course of employment
Issues:
Whether the skill and effort exerted in the creation of a work are part of the employee’s
normal duties?
Stephenson Jordan & Harrison Ltd v Macdonald
Whether the work was made during normal working hour?
Eg: journalist who is employed by a newspaper writes an article during office hours to be
published in the newspaper
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Proving ownership
Affidavit or Register of
SD copyright
Ma Kalthum Ishak (PhD, LL.M, LL.B)
1) Affidavit of SD
42. (1) An affidavit, or statutory declaration made before any person having
authority to administer oath by or on behalf of any person claiming to be—
the owner of the copyright in any works eligible for copyright under this Act stating that—
at the time specified herein copyright subsisted in such work;
he or the person named therein is the owner of the copyright; and
a copy of the work annexed thereto is the true copy thereof; or
Ma Kalthum Ishak (PhD, LL.M, LL.B)
the performer in a performance eligible for performers’ right under this Act stating that—
at the time specified therein performers’ right subsisted in such performance;
he or the person named therein is the performer; and
a copy of the document annexed thereto is the document which proves that he or the person named therein
performed in the performance,
shall be admissible in evidence any proceedings under this Act and shall be prima facie evidence of
the facts contained therein.
PP v Sim, Odita, Muhammad Architects Sdn Bhd
Ma Kalthum Ishak (PhD, LL.M, LL.B)
HE, prima facie evidence can be rebutted.
Microsoft Corporation v Yong Wai Hong
Lam Soon (M) Sdn Bhd v Forward Supreme Sdn Bhd & Ors
Affidavit / SD does not automatically become proof of those facts
Elster Metering Ltd & Anor v Premier Amalgamated Sdn Bhd
Ma Kalthum Ishak (PhD, LL.M, LL.B)
2) Register of Copyright
S. 42. : certified extracts of the Register of Copyright
referred to in section 26B shall be admissible in
evidence any proceedings under this Act and shall be
prima facie evidence of the facts contained therein.
S. 26A. (1) A notification of copyright in any work may
be made to the Controller by or on behalf of the author
of the work, the owner of the copyright in the work, an
assignee of the copyright, or a person to whom an
interest in the copyright has been granted by licence.
Ma Kalthum Ishak (PhD, LL.M, LL.B)
COPYRIGHT
VOLUNTARY NOTIFICATION
SYSTEM
What is A Voluntary
Notification?
No Formality requirement
Copyright protection is automatic but to proof
ownership is difficult
Initially, a person use a postal service to send own
work by stamped unopened enveloped as evidence
MyIPO take the initiative to introduce a
registration services by way of voluntary basis
Copyright Voluntary Notification
Under Section 26A, Copyright Act 1987
Established a Mechanism for Voluntary
Notification of Copyright Works
To support and
assist Prima-facie DATABASE KEEP AND
copyright evidence of Research MAINTAINED
owner/user in ownership & Education BY
issue/disputes GOVERNMENT
of ownership
Dealings & Duration
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Dealings
Assignment
License
Ma Kalthum Ishak (PhD, LL.M, LL.B)
27. (1) Subject to this section,
copyright shall be transferable by assignment
(2) An assignment may be limited so as to apply
only to some of the acts which the owner of the
copyright has the exclusive right to control, or to
only part of the period of the copyright, or to a
A) Assignment specified country or other geographical area.
No assignment shall have effect unless it is in
writing.
Syed Alwi v Dewan Bahasa dan Pustaka
Polygram Records Sdn Bhd v The Search & Anor
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 27 (3): no licence to do an act the
doing of which is controlled by
copyright shall have effect unless it is in
writing.
B) License
License provide defence for the licensee
in the case of copyright infringement
Vision Tech Entertainment Sdn Bhd v
Movie Master Distributors Sdn Bhd
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Duration
Literary, musical and artistic work
Published edition, sound recordings,
broadcast, films and work of gov.
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 17. (1) Except as otherwise provided
in this Act, copyright in any literary,
Literary, musical or artistic work which subsists
musical and in such work under this Act shall subsist
artistic work during the life of the author and shall
continue to subsist until the expiry of a
period of fifty years after his death.
Ma Kalthum Ishak (PhD, LL.M, LL.B)
50 years:
Published edition,
Published edition (S.18)
sound recordings, sound recordings (S.19)
broadcast, films and
work of gov. Broadcast (S.20)
Films (S.22)
work of gov (S.23)
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Exclusive Rights of
Copyright Owner,
Infringement,
Remedies
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Exclusive Rights of Copyright Owner
S.13. (1) Copyright in a literary, musical or artistic work, a film, or a sound recording or a
derivative work shall be the exclusive right to control in Malaysia—
the reproduction in any material form;
(aa) the communication to the public;
the performance, showing or playing to the public;
the distribution of copies to the public by sale or other transfer of ownership; and
the commercial rental to the public,
of the whole work or a substantial part thereof, either in its original or derivative form
Ma Kalthum Ishak (PhD, LL.M, LL.B)
S. 15. (1) Copyright in a broadcast shall be the exclusive right to control in
Malaysia the recording, the reproduction, and the rebroadcasting, of the whole or
a substantial part of the broadcast, and the performance, showing or playing to
the public in a place where an admission fee is charged of the whole or a
substantial part of a television broadcast either in its original form or in any way
recognizably derived from the original.
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Infringement
Causing others
w/out consent
to do an act
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Infringement
36. (1): 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 the doing of which is controlled by copyright under this Act.
36 (2): Copyright is infringed by any person who, without the consent or licence of the owner of the copyright,
imports an article into Malaysia for the purpose of —
selling, letting for hire, or by way of trade, offering or exposing for sale or hire, the article;
distributing the article —
for the purpose of trade; or
for any other purpose to an extent that it will affect prejudicially the owner of the copyright; or
by way of trade, exhibiting the article in public,
where he knows or ought reasonably to know that the making of the article was carried out without the consent or
licence of the owner of the copyright.
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Hexagon Tower Sdn Bhd v
Polydamic Holdings Sdn Bhd &
Doing and act
3 Ors
w/out consent
Elements:
Sufficient objective similarity
Causal connection
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Sufficient objective similarity
Work which expressed the same idea need
not necessarily be infringement Similarity amounted to infringement
• Elster Metering Ltd & Anor v Damini Corp Sdn Hexagon Tower
Bhd & Anor
Honda Giken Kogyo
• 1 P claimed that it owned the copyright in the
st
drawings of a type of water meter
• P sued D for selling water meters which reproduced
the drawings
• There are similarities but both belonged to the same
type of water meter.
• Held: since the similarities resulted from the same
idea = no infringement
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Causal connection
Case
Need to show connection Hexagon Tower
Show direct evidence Dabur India
Onestop Software
Ma Kalthum Ishak (PhD, LL.M, LL.B)
REMEDIES FOR INFRINGEMENT
SECTION 37
TYPES OF RELIEF
GENERAL RELIEF &
STATUTORY
DAMAGES
DAMAGES (d)
(a) – (c)
Injunction Damages Not more than RM25,000 for Order as court
each work but not more thinks fit
than RM500,000 in the
Accounts of aggregate
profits
40
Ma Kalthum Ishak (PhD, LL.M, LL.B)
Ma Kalthum Ishak (PhD, LL.M, LL.B)
This Photo by Unknown Author is licensed under CC BY-NC-ND
