LITERARY WORKS (computer programs)

- Starts off with Section 6, linked it with Section 7 (literary works)

- Define literary works under Section 3, then define computer programs under Section
3 as well.
- Alfa Laval (M) Sdn Bhd v Ng Ah Hai & Ors where it was held that a computer
program is sufficiently broad to encompass both its source code, object code and
any set of instructions in whatever converted form which could be read by a
computer.
- The source code is the language used by human authors to write a computer
program.
- 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
where it was held that the copyright protection of a computer program extended also
to its non-literal elements, such as its underlying structure.
- This is affirmed in an English case of Ibcos Computers Ltd & Anor v Barclays
Mercantile Highland Finance Ltd & Ors where 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.
- A case which examined the boundaries of computer programs under the Copyright
Act 1987 is the case of Creative Purpose Sdn Bhd & Anor v Integrated Trans
Corp Sdn Bhd & Ors. In this case, the plaintiffs were companies engaged in the
business of designing, developing and marketing software programs. In around
January 1991 the plaintiff make a software program called MEP3 and improve the
MEP3 program. So far they have four upgrades, namely MEP 3.30, MEP 3.31, MEP
3.32 and MEP 3.33 and they were published for the sale and distribution in Malaysia.
This particular software was never published in Singapore or anywhere. The plaintiffs
argued that the defendants had infringed the copyright of their software programs by
reproducing and distributing them to the public. The plaintiffs submitted that the
defendants had hacked or modified the programs to circumvent the ‘dongle’ which
was a security feature of the programs. The court opined that the definition of Section
3 of Copyright Act 1987 should be read broadly so as to include all manifestations of
that set of instructions which could be read by a computer in whatever form. Apart
from the main program and the loader program which were clearly computer
programs, the court also held that the ‘dongle device’ was a computer program.
MUSICAL WORK

- Starts off with Section 6, linked it with Section 7 (musical work)

- Define musical work under Section 3
- PRS v Harlequinn Records whereby 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.
ARTISTIC WORK (artistic craftsmanship)

- Starts off with Section 6, linked it with Section 7 ( works)

- Define artistic work under Section 3
- Artistic craftsmanship is the third category stated in the definition of an artistic work.
The Copyright Act 1987 does not define what constitutes a work of artistic
craftsmanship but it appears clear that a work which falls within this category must
satisfy the elements of ‘artistic’ and ‘craftsmanship’.
- Merlet v Mothercare where the first plaintiff was a clothes designer who also made
clothes. She made a prototype baby's cape (The Raincosy) for her own child which
was later manufactured for sale by the second plaintiff. The defendants, a substantial
enterprise selling a large range of baby's clothes and equipment, having seen the
plaintiff's garment, obtained such a garment, caused it to be copied and began to sell
a baby's cape made in accordance with the copy. The plaintiffs commenced
proceedings for copyright infringement, basing their claim both on the allegation that
the handmade prototype garment was a work of artistic craftsmanship and upon two
drawings made after the creation of the prototype by the first plaintiff. The court held
that in approaching the question of whether the prototype garment was a work of
artistic craftsmanship, the garment had to be considered by itself and neither as worn
nor as containing a baby. The test under Section 3(1)(c) of the Act was whether the
work in question was a work of art. Though the prototype Raincosy was a work of
craftsmanship, it was not a work of artistic craftsmanship. The onlooker derived no
aesthetic satisfaction from contemplating the garment itself; if any such satisfaction
was derived, it was from the contemplation of the ensemble, mother, child and
garment, in which the garment played only a very small part. Thus, the prototype
baby cape was not a work of artistic craftsmanship.
- Another issue would usually arise as to whether the artistic and craftsmanship
elements must originate from the same person. In an English case of Burke v
Spicer’s Dress Designs, the court held that both elements must emanate from the
same person and therefore, a dress was not a work of artistic craftsmanship because
the sketch of the dress did not emanate from the dressmaker.
DEALING WITH COPYRIGHT (testamentary disposition + duration)

- A copyright owner can transfer the right to another by way of an assignment or

licence to others to do the act restricted by copyright in relation to the work.
- Copyright can also be transmitted by testamentary disposition either through a will or
in cases of intestacy, the distribution will be in accordance to the Distribution Act
1958.
- Section 27(7) provides that a person, who through a testamentary disposition, is
entitled beneficially to the manuscript of a literary or musical work or to an artistic
work which has not been published before the death of the testator, shall also be
entitled to the copyright in the work so in so far as the testator was the owner of the
copyright immediately before his death.
- With regards to the issue of the duration of copyright where the work has not been
published before the death of the author, Section 17(2) provides that the copyright in
the work shall continue to subsist until the expiry of 50 years computed from the
calendar year next following the year in which the work was first published.
Consequently, it is possible for a work to enjoy a perpetual copyright if it remains
unpublished.
QUALIFICATIONS (not member of convention nor a Malaysian)

- Identify the type of work and define according to Section 3.

- There are 3 connecting factors to be considered which are the nationality of the
author, the publication of the work and the place where the work is made.
1. Define author as accordance to Section 3
- For non-convention country, Section 59A(1) (a) provides the extension of
application of the Act as to include persons who may not be a party to a treaty or a
member to any convention or union relating to copyright, applying for copyright
protection in Malaysia after the work was first published in that specified country.
2. Define publication as accordance to Section 4(1) (a), a literary, musical or artistic
work or an edition of such work shall be deemed to be published only if a copy or
copies of the work have been made available with the consent of the author in a
manner sufficient to satisfy the requirement of the public either by way of sale or
otherwise.
- What amounts to first publication can be referred to Section 4(3). First, a publication
is deemed to be a first publication in Malaysia if the work was first published in
Malaysia and not elsewhere. Secondly, the publication is also deemed to be a first
publication in Malaysia if the work was first published elsewhere but subsequently
published in Malaysia within 30 days after such publication elsewhere. Lastly, a
publication shall be deemed to be first publication if it is published elsewhere but
subsequently published in any Berne convention countries within 30 days after its
first publication.
- After being published, the duration of the copyright protection will be according to
Section 17/18/19 (depends on the work).
- Thus, for any copyright infringement, that person may then take legal actions.
MORAL RIGHTS

- (MUST COMPARE BERNE AND ACT) Article 6bis of Berne Convention concerns
with the moral rights of the author and not the economic or the copyright itself. This
Article further provides 2 types of moral rights namely the right of paternity and the
right of integrity.
- Under the Copyright Act 1987, moral rights are dealt particularly under Section 25(2)
where it also provides both the right of paternity and the right of integrity.
- The right of paternity as under Section 25(2) (a) provides the rights entitled for the
author 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 where the plaintiff
is a writer and the defendant is a publisher. When the works were published, the
name ‘Mokhtar AK’ was printed on the covers of the works while plaintiff’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 plaintiff was upset with the mistake. By consent,
plaintiff obtained a declaration that he was the sole author and owner of the copyright
in the literary works in question.
- The right of integrity as under Section 25(2) (b) provides the right to prevent
distortion, mutilation or other modification. It is not right to preserve, restore or repair
a work nor that 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 where Puncak Purnama 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.
- HOWEVER, it should be noted that there will be no moral rights when the duration of
copyright protection expires.
THE QUESTION ON FEIST’S CASE

In order to evaluate whether Malaysia applies the same principle in granting the copyright
protection, it is important to look at the reasoning of judgement held, and laws applied in
Feist Publication v Rural Telephone Service Co. (1991). The issue in the said case was
whether the names, addresses, and phone numbers in a telephone directory was able to be
copyrighted. This case started from the Kansas District Court stating that Feist’s employees
were obliged to travel door-to-door or conduct a telephone survey to discover the information
they had copied. The District Court granted a summary judgement to Rural (respondent) that
telephone directories are copyrightable. Appeal was made and the Court of Appeals for the
Tenth Circuit affirmed the decision of the District Court. The Supreme Court later granted the
writ of certiorari to finally adjudicate upon the matter. It was held by the Supreme Court that
facts cannot be copyrighted.
The ratio of this case are the three distinct elements (as derived from the Supreme
Court’s decision); (1) the collection and assembly of pre-existing materials, facts, or data; (2)
the selection, coordination, or arrangement of those materials, and (3) the creation, by virtue
of the particular selection, coordination, or arrangement, as an original work of authorship. In
the field of Copyright law, facts are not copyrightable as they are a product of a mere
discovery but the compilation thereof in different arrangements would be copyrightable as it
satisfies the originality requirement (an original work of authorship). Thus, in determining
whether a fact-based work in an original work of authorship, it must be tested on the manner
in which the collected facts have been selected, coordinated and arranged.
The raw data which Rural had certainly did not satisfy the originality requirement.
Rural may have been the first to discover and report the names, towns and telephone numbers
of its subscribers, but this data does not “owe its origin” to Rural. Rather, these bits of
information are not copyrightable facts. They existed before Rural had reported them and still
would have continued to exist even if Rural had never published a telephonic directory. On
another note, Rural did not truly ‘select’ to publish the names and telephone numbers of its
subscribers, rather it was required to do so by the Kansas Corporation Commissions as part of
its monopoly franchise. Rightfully, it can be derived that the selection was dictated by state
law, not by Rural. Therefore, the names, towns and telephone numbers copied by Feist were
not original to Rural and therefore are not protected by the copyright in Rural’s combined
white and yellow pages directory.
 Section 7(3)(a) of the Copyright Act provides that a literary, musical or artistic work
shall not be eligible for copyright unless sufficient effort has been expended to make the
work original in character. This can be seen in the case of Megnaway Enterprise Sdn Bhd v
Soon Lian Hock where the learned judge refers to the case of Peko Wallsend Operations
Ltd v Linatex Process Sdn Bhd in order to determine the necessary effort for copyright
protection to arise; in the present case, plaintiff’s drawings was created by means of
expended substantial amount of skill, labor and effort in making it which go well beyond a
single straight line drawn with the aid of a ruler. The plaintiff had not copied the drawings
from other sources and thus it is genuine. From this, it is apparent that plaintiff’s drawings
come within the scope of Section 7(3)(a) of the Copyright Act in the sense that sufficient
effort that had been expended substantial amount of skill, labor and effort to make and create
the plaintiff's drawings thus it is inextricably associate to the originality of work.
In some cases such as compilations of facts and information, the labor and skill which
is expended in the form of selection and arrangement of data usually takes place before the
final version of the is completed. Such work which involves the collecting of materials, is
usually not manifested in the resulting compilation but is often a process which the creator of
the compilation has to undertake. The question arises as to this matter is that whether such
skill and labor, which are not obviously manifested in the final compilation, can be taken into
account in determining of whether the compilation is original.
Sometimes, a compilation may involve expenditure of a considerable amount of time
and labor with little skill required, such as an alphabetical list of patients in a clinic, with their
personal details, records of illness and medical history. To illustrate, in Kiwi Brands (M)
Sdn Bhd v Multiview Enterprises Sdn Bhd, Abdul Malik Ishak J suggested that mere
exercise of substantial amount of labor, without any skill, was sufficient to meet the
originality requirement in compilation cases. The judge further stated that Section 7(3) of the
Copyright Act merely requires that ‘sufficient effort has been expended to make the work
original in character’. Effort and hard work must be hand in hand to make the copyrighted
works protectable.
However, a contrast approach was taken in the case of Hardial Singh Hari Singh v
Daim Zainuddin, where the plaintiff conducted an advisory service on customs duties,
tariffs, surtaxes and the like. He copied into a single document the import and export duties
contained in the Government’s Customs Duties Orders. The import and export duties in the
Orders were found in two separate sections and the plaintiff compiled the information into an
alphabetical sequence in a single document. The issue before the court was whether there was
copyright in the plaintiff’s compilation. Mahadev Shankar J noted that the case involved a
compilation of data and stated it would only be protected as an original work if the plaintiff
had expended sufficient labor and skill in compiling and arranging his material. The judge
observed that the framework and alphabetical sequence of the plaintiff’s compilation
followed the Government’s Orders and information contained in it was also obtained from
the statutory sources. The fact that the plaintiff’s compilation followed the format of the
Government’s Orders was crucial to the court’s finding that the work lacked originality. The
judge highlighted that the palintiff’s compilation was not original because he had not
imposed any sort of unique pattern or order on the material he had copied which was not
found in the Government publications.
EXCLUSIVE RIGHTS (determine first what type of work, then the exclusive right, then
the infringement and then put the remedy)

- Determine what type of work (S7/8/9) and the definition under S3.
- The exclusive rights of the 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.
- Section 13(1) provides where the copyright owner has the exclusive right to control in
Malaysia:
a) The reproduction in any material form;
- Define reproduction as under Section 3.
- Peko Wallsend Operations Ltd v Linatex Process Rubber Bhd where the court
stipulated that since a direct copying is an infringement, it is only fair to make indirect
copying an infringement as well. OR
- King Features Syndicate v Kleeman Ltd where 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. OR
- British Leyland Motor Corp v Armstrong Patent where it involved the exhaust
pipes of car. The defendant in this case had measured the 3D exhaust pipe and then
drew and measure it on paper and then made the exhaust pipe into 3D and sold it as
spare parts. It was held by the court that such act constituted reproduction.
aa) Communication to the public;
- Define communication to the public as under Section 3
- Works that put on internet would also constitute a communication to the public.
b) The performance, playing or showing to the public;
- No definition under Copyright Act.
- Under the New Oxford Dictionary of English, performance is an act of staging or
presenting a play, concert or other form of entertainment.
- MUST DETERMINE WHO IS THE PUBLIC - If it is showing to any member of the
public regardless of the venue or event or even how small the number of the public, it
would still be considered a showing to the public.
- Australian Performing Right Association Ltd v Commonwealth Bank of
Australia where 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.
- Jenning v Stephen where 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.
e) The distribution of copies to the public;
- The copyright owner has the right to control the first distribution in Malaysia of copies
of the work to the public by sale or other transfer of ownership.
- 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.
- However, 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.

- There are 2 types of infringement; direct infringement and indirect infringement.

- Direct infringement is dealt under Section 36(1) where it provides 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 the doing of which is controlled by
Copyright Act.
- Basically, direct infringement can be either by way of doing an act restricted by the
Copyright Act or by causing others to do an act restricted by the Copyright Act.
EITHER
- There are 3 elements to be proved for a direct infringement by way of doing an act
restricted by the Act:
1) Sufficient objective similarities
- The copyright owner bears the burden to show that there is a sufficient similarity
between the alleged infringing work and the owner’s whole or substantial part of the
work.
- The test to be applied is the objective test where the copyright owner must compare
the 2 works visually or orally. If the copying of work is exact, similar and identical, no
problem shall arise. However, similarity must be sufficient if the copying of work is not
exact.
- Mohd Ramly v Sarimah Film Production Sdn Bhd where the court stipulated that
to establish infringement of copyright, there must be the two elements of sufficient
 objective, similarity between infringing work and the copyright work and that the
copyright work must be the source from which the infringing work is derived”. Since
the plaintiff did not fulfill these two objectives, the plaintiff could not be considered as
the author and that there was no infringement of copyright committed by the
defendant.
- However, it should be noted that there is no copyright for ideas and thus, there can
be no infringement.
- LB (Plastic) v Swish where in this case the defendant argued that the only thing that
was taken was merely on idea and the similarities of their drawers arose only for
commercial necessity. However, the defendant had a letter where the defendant
instructed his lawyer to look at the design to find a way to come up with a similar
product. The defendant lost this case because there was an intention to copy the
work.
2) Causal connection
- Causal connection must be established by the copyright owner to bring an action for
infringement.
- The copyright owner must be able to prove that the alleged infringing work was
derived from the owner’s work.
3) Taking a substantial part of the copyright work
- Section 13 includes the right of the owner to control the whole or substantial part of
the work.
- The copyright owner must identify the parts of his work that have been used by the D
and prove that those parts comprise a substantial part of his work.
- What constitute substantial part depends on the quality, the originality, whether
there is a competition and the nature of the work.
- A case to illustrate the quality is the case of Longman v Pustaka Delta which relied
on the judgment of the Lardbroke Football Ltd v William Hill. It is highlighted that
substantiality depends on the quality rather than quantity. Although a small quantity
of work had been copied, it would still constitute substantiality and thus, the
defendant was liable for the infringement of the plaintiff’s work.
- A case to illustrate originality is the case of LB (Plastic) v Swish where an
expression of idea has no copyright and that such matter depends on what the
defendant meant by ‘idea’.
- To determine on the existence of competition, copyright owner must look at whether
the part taken is used in a way which would interfere with the sales of the original
work or competes with it. To illustrate, BBC v Timeout where the defendant took the
 plaintiff’s television programme on a weekly basis and put it on magazine. The
defendant add-on additional content to the television programme. It was held that the
part taken issued in a way which interferes with the sale of the original that would
amount to substantial taking.
- A case to illustrate the nature of the work is the case of The Newspaper Licensing
Agency v Marks & Spencer Ltd where the court opined that consideration must be
given to the nature of the protected work.
OR
- Section 36(1) to also include a person authorizing other person to do the act of
infringing.
- Russell v Bryant, it was held that the landlord could not be held liable for the
unauthorized performance of dramatic piece despite that 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.
- It must also be observed that whether there is a control exercised by the defendant
upon the 3rd party.
- Marsh v Conquest where a 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.
- Moorhouse v University of New South Wales where 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.
 - Remedies depends on the course of action.
(if Section 36 and 13 are involved then the remedy will be taking a civil action) (if Section 41
is involved then the remedy will be enforcing a criminal prosecution) (if Section 39 is involved
then the remedy will be border measures)
- If the aggrieved party is to take civil action, there are various possible remedies
available and one of it is injunction. There are 4 types of injunction to be applied
which are the interlocutory injunction, special injunction, mareva injunction and the
final injunction.
- Interlocutory injunction is a pre-trial remedy where a party is required to do an act
or to refrain from doing an act for a period of time until further judicial order or until
the final hearing of the case. It is inter parte and a temporary protection of the
copyright owner against the losses caused by the continuing infringing activities.
- American Cyanamid Co v Ethican Ltd, the court must first determine whether there
is a serious question to be tried. If the court is satisfied that there is a serious
question to be tried, it should consider whether the balance of convenience lay in
favor of granting or refusing to grant the interlocutory injunction. In assessing the
balance of convenience, the crucial question to be considered is the adequacy of
damages as a remedy.
- Special injunction or anton piller injunction is applied ex-parte where the
copyright owner who decides to institute proceedings for the infringement of
copyright or for the contravention of Section 36A and Section 36B must be certain
that he is able to secure the requisite evidence to support his case at the trial on a
balance of probabilities. It is a form of mandatory injunction which required the
defendant to permit entry into his premises and to secure incriminating evidence of
infringement which the plaintiff believes might be destroyed.
- In Anton Piller, Lord Denning emphasised that anton piller injunction should only be
granted where it was essential that the plaintiffs should inspect the premises so that
the justice could be done between the parties and where, if the defendants were
forewarned, vital evidence would be destroyed. The order merely authorised entry
and inspection by the permission of the defendants.
- Mareva injunction is applied inter parte to freeze all the assets within Malaysian
Jurisdiction. The idea is to freeze all the assets in Malaysian jurisdiction but there is a
safeguard where the tool of trade could not be frozen, such as the camera to make a
film, and expenses for maintenance.
- Final injunction is granted at the trial of the action based on the merits of the case
and is directed towards the final settlement and enforcement of the rights of the
parties in dispute. Its purpose is to prevent any future infringement and the same
time has a declaratory effect that confirms the plaintiff as the owner. Section 37(9)
provides that an injunction will not be granted where it has the effect of requiring a
completed or partly built building to be demolished or preventing the completion of a
partly built building.