TUTORIAL 2 [COPYRIGHT PART I]

1. With reference to different types of ‘works’, explain the three distinct

standards of originality in Malaysian copyright law.

The three distinct standards of originality in Malaysian copyright law are

sufficient efforts, newness or quality, and expertise in selecting and compiling.

For sufficient efforts, the requirements are laid out in Section 7(3)(a) of the
Copyright Act 1987 whereby a literary, musical, or artistic work is not eligible for
copyright unless sufficient effort was made to make the work original in nature. In the
case of University of London Press v University Tutorial Press [1916], the University
of London appointed two professors to make examination papers of elementary
mathematics. University London Press intended to publish these examination
papers. But, the University did not appoint these professors for the full-time job,
instead, they provided their “services” to the University. The defendant, University
Tutorial Press Ltd, published various question papers, three of them similar to that of
the plaintiff’s examination papers. As a result, University of London Press
commenced legal action and the question of copyright arose.The issue was whether
a question paper was to be considered as a literary work which enjoys a copyright
protection? The court found that at the relevant time, the literary work included maps,
charts, plans tables and compilation. To define ‘literary work’ the court relied on
various precedents where the copyright was granted to work other than literature.
Besides, the court noted that even a question paper required compilation of
questions with the application of intelligence and reasonable consideration. Hence,
the works concerned will be included in the ambit of ‘literary work’ even when it is not
‘literature’ as such.Further, another question emerged, namely, who had the
ownership of copyright. The court answered that the press held the title to publish
the papers. The University of London had actual ownership of papers.Finally, the
defendant contended that the purpose of publishing the examination paper was for
educational purposes and therefore they should be given exemption from the
punishment. Ignoring the argument, the court gave a very famous legal maxim still in
use even after so many years of the decision – “What is worth copying is prima facie
worth protecting”. Hence the plaintiff enjoyed the right over the question paper and
the defendant is liable for the violation of copyright.

The next standard of originality in Malaysian copyright law is newness or

quality. This also follows from the same Section 7(3)(a) of the Copyright Act 1987
that says the term ‘original’ was not to be equated with in its ordinary meaning of
new but rather the expression of it should originate from the author irrespective of
quality or purpose of creation. In the case of Kiwi Brands Sdn Bhd v Multiview
Enterprises Sdn Bhd, the plaintiff failed to satisfy that sufficient had been put as by
inserting a black label on the product which contained information about the product
and some artistic work. The court held that such assertion was not sufficient enough
as the plaintiff had failed to state matters such as how much actual time was
expended on the label or what the nature of effort was.

- S7(3)(a) : Sufficient effort is made to make the work original in character

- University of London Press Ltd v University Tutorial Press Ltd :That the work
must not be copied from others, it must originate from the authors
- Magnaway Sdn Bhd v Soon Lian Hock : Sufficient effort
- Kiwi Brands Sdn Bhd v Multiview Enterprises Sdn Bhd : “A great deal of
painstaking effort/hard work is sufficient
- Hardial Singh Hari Singh v Daim Zainuddin [Table/Compilation/Arrangement] :
A mere listing of facts is not enough to be a literary work
: Some sort of unique pattern
: S8(1)(b) of the CA

2. Section 7(2A) of the Copyright Act 1987 states: “Copyright protection shall not
extend to any idea, procedure, method of operation or mathematical concept
as such.” Nevertheless, the concept of an idea-expression dichotomy is a
fallacy in English copyright law. Discuss.

The idea-expression dichotomy was originally formulated to ensure that the

manifestation of an idea is protected rather than the idea itself.’ Copyright in general
does not protect ideas, facts, news, or information, but only the expression of such
ideas, facts etc. This principle is an internationally recognised principle of copyright
law because of the harmonisation of copyright laws of most developed countries
through treaties such as the WIPO (World Intellectual Property Organisation)
Copyright Treaty 1996 article 2.

In the English case of Ibcos Computers Ltd & Another v Barclays Mercantile
Highland Finance Ltd & Ors, the judge held that copyright protection also extended
to both source code and the underlying structure of a computer program. The facts
of the case were, a programmer created a code for his employer and when he
switched employers, developed a similar code, structure and module arrangements
much to the one that he did for his previous employer. The judge found that there
was literal copying of the source code and regarding non-literal copying, stated that
copyright could not prevent copying of a mere idea but a detailed idea. The judge
also stated that the program structures and design features were not literal
similarities but expressions of a computer program that was entitled to copyright
protection.

In essence, what this case meant is that the taking of an idea that is general
or common in nature is not an infringement. But if someone took a detailed
underlying concept behind a work and reproduced that detailed idea elsewhere, then
they would be liable for infringement of copyright on the basis that it too was an
expression of the work.

In my opinion, it is a fallacy in English copyright law, because where the idea

and expression are difficult to be ‘detached’ it is said that they have merged. When
this is the case, the expression may not be copyrighted as it would mean that the
idea itself has been copyrighted. If the expression is copyrighted in such a case, it
would create a monopoly of the idea of the copyright owner.

- Idea : Expressed
- Designers Guild Ltd v Russell William Ltd : Destruction of idea and expression
- Article 9.2 TRIPS Agreement : “Copyright protection shall extend to
expression but not to idea”
- S8 of the CA
- Bakar v Seldal
- University of London Press v University Tutorial Press Ltd : “The word
‘original’ does not in this connection mean that the work must be the
expression of original or inventive thought. Copyright Acts are not concerned
with the originality of ideas, but with the expression of thought, and, in the
case of “literary work,” with the expression of thought.
- LB (Plastics) Ltd v Swish Products Ltd : “It all depends on what you mean by
‘idea’.
- Kenrick & Co v Lawrence & Co : It is on this ground that the mere notion of
combining stripes and flowers would not have amounted to a substantial part
of the claimant’s work. At that level of abstraction, the idea, though expressed
in the design, would not have represented sufficient of the author’s skill and
labour as to attract copyright protection.
- Derivative Work : Translations, Adaptations, Arrangements and other
transformation of works eligible for copyright
- S3 of the CA
- Definition of Adaptations : The interpretation of adaptation suggest that what
copyright protect is beyond the literal aspect of an expression
- Onestop Software Solutions (M) Sdn Bhd v Masteritec Sdn Bhd - “A computer
programme also comprises non-literal elements which are protected under the
law”
 TUTORIAL 3 [COPYRIGHT PART II]

1. (i) Explain the advantages and disadvantages of recognising the concept of

corporate authorship. (10 marks)

The definition of author was provided under Section 3 of the Copyrights Act
1987 whereby it means in relation to literary works, means the writer or the maker of
the works.

An author may be a corporation. This stems from the definition of “qualified

person” under S3 of the Copyright Act, which states that 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. Under the same section,
the corporate authorship was ascertained whereby it provided a qualified person can
mean a body corporate established in Malaysia with legal personality under
Malaysian laws.

The first advantage that can be seen is where the works that were eligible
for copyright can be commissioned to the employees but still allow the
company to gain authorship. Section 26(2)(a) of CA 1987 has mentioned that the
copyright is deemed to be transferred to the person who commissions the work.
Therefore, if a person is commissioned by a company to research on the public’s
perception and to write a detailed report on it, the person writing the report is not the
copyright owner but the corporate who commissioned the work. The second
advantage can be seen where a corporate authorship allows more participants
as it usually involves a huge team in the corporation to create the work. For
example, a high quality research for works needs various levels of knowledge and
specialty that is rare to find in a single research. Therefore, a team effort becomes
valuable. Besides, identifying authors is important in copyright for 5 reasons. They
are to fulfil the qualification requirement (Section 10), As first owner of copyright
(Section 26), To determine whether copyright protection has expired (Section 17), To
enforce moral rights (Section 25) and To be given acknowledgement under fair
dealing (Section 13(2))

The disadvantages that can be seen is that corporate authorship might

impose unfairness on the part of the employees. This is because when the
employees were commissioned to carry out the works, they are technically the one
who did the job but the credits were being taken by the corporation due to corporate
ownership. In the case of Radion Trading Sdn Bhd v Sin Besteam Equipment Sdn
Bhd & Ors [2010] 9 MLJ 648, the plaintiff claimed that its director created the
technical design drawings for the automatic swing gate actuator and claimed
copyright. It was held that pursuant to Section 26(2)(b), copyright in the design
drawings had been transferred from the director to the plaintiff by virtue of his
employment with the plaintiff. Under corporate authorship, an owner cannot die. This
leads to questions about moral rights, as given under S25.

(ii) With reference to decided cases and the Copyright Act 1987, discuss
whether Malaysian copyright law recognises the concept of corporate
authorship, and why such recognition, if it exits, is problematic. (15 marks)
(2019/2022 Final Exam)

Introduction
- Definition copyright
- 5 reasons to identify author
- Corporation can be author (S3)

Content
- Whether Malaysian copyright law recognises the concept of corporate
authorship
- Whether non-human can be an author
- Creative Purposes Sdn Bhd v Integrated Trans Corp Sdn Bhd : It was ruled
that if an author can also mean a qualified person and qualified person is
defined by the Act as including a body corporate, it cannot be right to read the
word author in s 26(4) as referring only to a natural person
- Rock Records (M) Sdn Bhd v Audio One Entertainment Sdn Bhd : It was held
that the author of a sound recording is the sound recording company which
made arrangements for the recording of the songs referred to in the works.
- MediaCorp News Pte Ltd & 3 Ors v MediaBanc (JB) Sdn Bhd & 4 Ors: The
plaintiffs comprised a group of broadcasting and media companies in
Singapore that delivered the information and news to the public through
television, radio, newspapers and all other media. The plaintiff claimed that it
was the producer of the television and was responsible for the transmission. It
followed that the first plaintiff was the author of the broadcast in the television
news programs In relation to authorship. The court ruled that the author of a
broadcast was the producer of the broadcast and could be a corporate entity.
- Aktif Perunding Sdn Bhd v ZNVA & Associates Sdn Bhd : Wong Kian Kheong
JC accepted that a private limited company incorporated under the
Companies Act 1965 is a qualified person and as such it is the author.
- Why is it problematic? : Corporate body doesn't have moral rights - s25 The
copyright depends on author lifetime

Conclusion
- Corporation can be an author
 TUTORIAL 4 [COPYRIGHT PART III]

1) Ben works as a copywriter for an e-commerce company. In his spare time in

the office, he write snippets of text on his employer’s PC using the Google
Drive website, for a personal science fiction project of his. The employer has
not indicated that this behaviour is prevented so long as it does not interfere
with his obligations to his employer. When Ben’s science fiction book comes
to an end after two years’ of hard work, his employer claims that it is the
co-owner of the book because it was done using the company’s resources.
Advise Ben.

Issue 1: Whether the novel made by Ben can be considered as a protected work.
Law:
- Section 3 of Copyright Act : literary work includes— (a) novels, stories,
books, pamphlets, manuscripts, poetical works and other writings;
- Section 7(1)(a) of Copyright Act : Literary work is eligible for copyright
- Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn
Bhd : This case provides that a work is satisfied for copyright if the four
elements are satisfied. It is original in that sufficient skill and effort had been
expended in the creation (Originality). It belongs to one of the categories of
protected works (It must be a work and must fall under the categories
protected). It complies with the requirements as to form (It has to be a
physical form and copyright will not subsist if it is not in physical form). It
complies with the qualifications for copyright, qualifications either by reference
to its making or publication (Qualification)
Application:
- Ben’s science fiction book can be considered as literary work according to
Section 3(a) of CA. Subject in question is a science-fiction book, which shall
fall under books or stories. This is because anything fictional, is imaginative
and therefore a story.
- Section 7(1)(a) of CA stated that literary work is eligible for copyright.
- Under the Honda Case, a work is satisfied for copyright and Ben fulfil the four
elements for copyright.
- Element 1 (Originality): Ben had expanded sufficient skill and effort in the
span of 2 years, as it took his imagination and literary skill to produce such a
book
- Element 2 (Must be a form of work protected by IP): As established, Ben’s
book falls under S. 7(a) of the CA 1987
- Element 3 (Physical Form) The work must be in physical form, Ben’s work
however was done in GDrive meaning that is a softcopy or a digital copy.
Unless Ben has printed or rewrites it physically, this element is not fulfilled. /
Ben must print his work.
 - Element 4 (Must meet all Qualifications) S. 10(2)(a) of the CA 1987 - Book
is first published in Malaysia. Ben has not published the book in question. /
Ben must publish his book in Malaysia first.

Conclusion: Ben’s book cannot be protected by Copyright Law. / Can be protected if

he satisfies Element 3 and 4.

Issue 2: Whether Ben can claim authorship?

Law:
- Section 3 of the Copyright Act defined ‘author’ as “For literary works, the
author shall be the writer or the maker of the work”
- S10 (1) of the CA provides that copyright subsistence shall subsist for any
work which is eligible for copyright if the author, or for a work under a joint
authorship, any of the authors of such work, is deemed a qualified person at
the time when the work is being made.
- S26 of CA stated about first ownership of copyright where it shall vest initially
in the author.

Application: In this case, Ben could be deemed as the author according to Section
3 of CA. Besides, as according to S10 (1) of CA, it stated that the work is eligible for
copyright if the author is deemed as a qualified person at the time when the work is
being made, in which Ben also is the sole author of the book. Hence, he is eligible
for the copyright. Lastly, according to Section 26 of CA, Ben is the first ownership of
copyright as he is the author of the work.

Conclusion: In conclusion, Ben can claim authorship.

Issue 3: Whether Ben or the company has the ownership of the book
Law:
- S26 of Copyright Act,
1. Copyright conferred by S 10 of the CA shall vest initially in the author.
2. Notwithstanding subsection (6) of S 27 of the CA, where a work:
a. is commissioned by a person who is not the author's employer under
a contract of service or apprenticeship; or
b. not having been so commissioned, is made in the course of the
author's employment, 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
- Yeoh Kee Aun v PI Capital Asset Management, the judge held that
‘authorship’ and ‘ownership’ are two different concepts because a person can
be an author of a copyright work but not necessary be the one who own it
- Missing Link v Magee, the court held that even though the defendant wrote
the software after his working hour, it fell within scope of the tasks given by his
 employer, the plaintiff. Hence, the computer programs were created within the
course of employment and the defendant had breached his fiduciary duty in
the course of employment. The plaintiff owned the copyright of the software.

Application: In this current case, excepted by S. 27(6) of the CA 1987, work was
not commissioned by the Company to Ben. (Missing Link v Magee must be
distinguished), defendant’s work fell within the scope of his job. In Ben;s case, it
cannot fall within his job, Copywriting and Story Writing are not the same. One is
imaginative, the other is promotion.

Conclusion: In conclusion, the ownership of the book is Ben’s if he satisfies the

necessary.

2) Ali is a batik designer in Melaka. He makes batik prints and sells them through
an online store. One day, Ali came across a website by a company called Bag
Batik Sdn Bhd, selling school bags featuring a batik design. The batik design
on Bag Batik’s school bags is very similar to one of the designs made by Ali,
although in different colours to the one used by Ali.
Advise Ali on what legal recourse he has against Bag Batik Sdn Bhd.

Issue: Whether Ali’s work is eligible for copyright?

Law/Cases: S.7(1)(c): Subject to this section, the following works shall be eligible for
copyright: artistic works.
Peko Wallsend Operations Ltd v Linatex Process Rubber Bhd [1993] 1 MLJ 225
(HC), the definition of ‘artistic work’ includes “paintings, drawings, etching,
lithographs, woodcuts, engravings and prints and any three-dimensional work
thereof”.
Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd [2005] 3
MLJ 30 (HC), a work is eligible for copyright if the following are satisfied: (a) It is
original in that sufficient skill and effort had been expended in the creation; (b) It
belongs to one of the categories of protected works; (c) It complies with the
requirements as to form; and (d) It complies with the qualifications for copyright,
qualifications either by reference to its making or publication.

Application: By referring to the above situation, Ali as a batik designer, his work will
largely be regarded as an artistic work under S.7(1). Besides, in the case of Peko
Wallsend which Siti Norma Yaakob J mentioned, artistic work will also include any
prints. Here, Ali designs batik prints and sells them through an online store,
subsequently his work will fall under artistic work as stated in the case of Peko.
Furthermore, Ali as a batik designer also did exercise sufficient skill and effort in his
creation of batik as stated under one of the elements in the case of Honda. Thus, his
work will be eligible for copyright under artistic work.
Conclusion: Ali’s work is eligible for copyright.

Issue- Whether Ali has the exclusive rights towards the batik
Law- S 10 (2)(a) of CA 1987 — copyright shall also subsist in every work which is
eligible for copyright and which being a literary, musical or artistic work or film or
sound recording is first published in Malaysia

S13(1)(a) of CA 1987- 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
where the production in any material form

Application- From the situation mentioned, Ali is a batik designer in Melaka which is
a state located in Malaysia. Hence, by applying S10 to our current situation, the batik
that was produced by Ali in the online store can be considered to be first published in
Malaysia. By applying S13(1)(a),Ali, as the person who designed the batik, has the
exclusive right to control how his batik design is used in any material form. Based on
the facts, Bag Batik Sdn is an online company that sells school bags, which means
that Ali's batik design is being turned into a material form.

Conclusion- In conclusion, Ali has the exclusive rights towards the batik.

Issue: Whether Ali is entitled for his losses

Law: S36 (1) of CA 1987– 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

S37(1) infringements of copyright shall be action-able at the suit of the owner of the
copyright and in any action for such an infringement, all such relief by way of
damages, injunction, accounts or otherwise, shall be available to the plaintiff as are
available in any corresponding proceedings in respect of infringement of other
proprietary rights.

S37 (2) Where in an action under this section, an infringement of copyright is proved
or admitted, and the court, having regard, in addition to all other material
considerations to (a) the flagrancy of the infringement; and (b) any benefit shown to
have accrued to the defendant by reason of the infringement, is satisfied that
effective relief would not otherwise be available to the plaintiff, the court in assessing
damages for the infringement shall have the power to award such additional
damages by virtue of this subsection as the court may consider appropriate in the
circumstances.

Case- American Cyanamide v Ethicon, the appellant was a company that held a
patent for artificial absorbable surgical sutures. The respondent was a company that
intended to launch a suture to the British market which the appellant claimed was in
breach of its patent. In the first instance, the appellant was granted an injunction
preventing the respondent’s use of the type of suture at issue until the trial of the
patent infringement. On appeal, the Court of Appeal discharged the injunction on the
basis that the case for patent infringement was not made out. The appellant
appealed to the House of Lords. The appeal was allowed.

Syarikat Faiza Sdn Bhd & Anor v Faiz Rice Sdn Bhd & Anor, the plaintiffs are in the
business of manufacturing, distributing and retailing of rice under various brand
names since 1968. They filed an action suit against the defendants claiming that the
defendants infringed the plaintiff’s copyright in rice packaging and committed the act
of false trade description as a result of their infringing act. They also filed another
motion that the defendants infringed the Faiza Logo TM. It was held that the
plaintiff’s application was allowed.

Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000], in this case it was
provided that to prove the infringement of the artistic copyright can be seen in the
features of the defendant’s design which the plaintiff alleges have been copied from
the copyright work. Then, only the court will examine the part of the design that was
copied.

Application: Ali as the batik designer which he exercise exclusive rights of his work
and as the owner of copyright, thus the company, Bag Batik Sdn Bhd by selling
school bags featuring a batik design that look similar to Ali’s one had infringe the
copyright of Ali’s work although in different colour as provided under S36(1).

Statutory damages allow successful plaintiffs to recover substantial monetary

damages without any proof that (1) the plaintiff suffered any actual harm from the
infringement or (2) the defendant profited from the infringement.

Injunctions intervene directly to stop infringement. (Any other order by court deems
necessary)

The compensation shall be assessed from the side of the plaintiff according to the
material losses include property loss, decrease in income & profit, loss of business
opportunity, and reasonable expenses for mitigating and remedying the material
damage.

Conclusion: It is most likely that Ali is entitled for remedies for his losses.