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MEDIA LAW NOTES 2020COPYRIGHT FOR MEDIA1. DEFINITIONCopyrights provide the creator of literary, musical, or artistic work with the exclusive rights to such a work. The protection of such works also helps in providing the owner from unauthorized adaptations or reproduction of the works involved. Copy...

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MEDIA LAW NOTES 2020 COPYRIGHT FOR MEDIA 1. DEFINITION Copyrights provide the creator of literary, musical, or artistic work with the exclusive rights to such a work. The protection of such works also helps in providing the owner from unauthorized adaptations or reproduction of the works involved. Copyright laws also protect any related organization by safeguarding its revenue-earning assets which are derived from any work which could be copyrighted. The Copyright Act 1987 provides for the enforcement of the law by the Intellectual Property Corporation of Malaysia (MyIPO), an agency under the Ministry of Domestic Trade, Cooperation and Consumerism , apart from the Police.

Authorship in History (Section 3 interprets ‘author’) In fact, early forms of copyright practiced by the book trade showed more of an economic interest by the book sellers in the physical embodiment of a text rather than the text itself. Rights of Copyright Owners in Malaysia The government of Malaysia has provided certain rights to copyright owners. These include legal, moral, and economic rights. Legal rights allow the owner, author, creator, or designers of any copyrighted work in Malaysia to protect their work according to the copyright laws of Malaysia. If there is any copyright infringement, the creator or author is allowed to take action against those at fault. The making of a work is commissioned or where a work is made by and employee in the course of his employment, unless there is any contrary agreement, the copyright in the work shall be deemed to vest in the person who commissioned the work or the employer. The author’s right is transferable by assignment testamentary disposition or by operation of law, in which case the assignee shall be the owner. (THIS) Moral rights allow the author to claim the rights to originality of the creation. These rights also involve the right to prevent any user from mutilating, distorting, or modifying the author’s work in an unauthorized manner. Economic rights are granted to to the owner of the work so that the owner will receive the right of communication to the public, right of reproduction, right to perform, right to distribution, and right of commercial rental. These rights may be exercised according to the Copyright Act 1987. Economic rights also allow creators to receive financial benefits through the use of their works for commercial purposes

If copyright has been infringed, the owner of the copyright is entitled to commence an action in the appropriate High Court in Malaysia. 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. Where a work is commissioned by a person who is not the author’s employer under a contract of service or apprenticeship, 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. The term “commission” has been defined in Motordata Research Consortium Sdn Bhd v Ahmad Shahril bin Abdullah & Ors [2017] MLJU 1187 to mean “an order or agreement by one person to another person to create the work in question”.

2. SECTION -

The main governing legislation for copyright law in Malaysia is the Copyright Act 1987 (Copyright Act), which came into force on 1 December 1987, replacing the earlier Copyright Act 1969. The law has undergone various significant updates since then, with amendments to the Act taking effect in 1990, 1999, 2000, and 2003 and most recently in 2012. Malaysia became a signatory to the WIPO Berne Convention for the Protection of Literary and Artistic Works 1971 (Berne Convention) in 1990. Under the Berne Convention, the Copyright (Application to other Countries) Regulations 1990 were made and came into force on 1 October 1990, the same day that Malaysia acceded to the Berne Convention. Malaysia is also a party to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS). Malaysia joined the WIPO Copyright Treaty 1996 and WIPO Performances and Phonograms Treaty (WPPT) 1996, which was effective as of 27 December 2012.

3. TYPES Literary works Section 7(1) of the Copyright Act 1987 provides that works eligible to be protected for copyright are literary works, musical works, artistic works, films, sound recordings, and broadcasts. Section 7(3) further provides that any literary works, musical works and artistic works will only be eligible for copyright if sufficient effort has been made to ensure the work is original in character and has been written down, recorded or otherwise reduced to a material form. It was held by the High Court in Megnaway Enterprise Sdn Bhd v Soon Lian

Hock [2009] 8 CLJ 130 that the degree of effort, skill or labour expended is inextricably linked to the originality of the work. It is the authors' view that Malaysian law provides for a closed list of copyrightable works. Computer programs are listed as an example of a literary work (paragraph (h), Section 3, Copyright Act). Therefore, by virtue of section 7(1) of the Act, a computer program, being a literary work, is eligible for copyright. A 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/both (section 3, Copyright Act): 

Conversion to another language, code or notation.



Reproduction in a different material form. Copyright protection is therefore extended to the computer codes written in a computer language as a literary work. Ideas, procedures, methods of operation and mathematical concepts Section 7(2A) of the Copyright Act specifically excludes ideas, procedures, methods of operation and mathematical concepts from copyright protection. The exclusion of ideas from protection was an issue in Goodyear Tyre & Rubber Company & Anor v Silverstone Tyre and Rubber Co Sdn Bhd 1 CLJ 509, where it was held by the High Court that copyright laws were not concerned with the reproduction of ideas (however original). They are concerned with reproduction of the forms in which the ideas are expressed, and in this case the function of the tyre, as opposed to its artistic value, is not protected. Derivative works Derivative

works

including

translations,

adaptations,

arrangements

and

other

transformations of works eligible for copyright, as well as collections of works eligible for copyright by reason of the selection and arrangement of their contents, are protected as original works (section 8, Copyright Act). Published editions of literary, artistic or musical works which do not consist of reproductions of typographical arrangements of previous editions may be, if the edition is first published in Malaysia or if the publisher of the edition was a qualified person at the date of first publication, eligible for copyright (section 9(1), Copyright Act). Industrial design Copyright will not subsist in any design, which is registered under any written law relating to industrial design to address the overlap between copyright and design laws (section 7(5),

Copyright Act). Purely functional designs capable of being registered as industrial designs are precluded from copyright protection. Qualified persons The Copyright Act provides that in order for a work to enjoy copyright protection in Malaysia, the author must be a qualified person. A qualified person is a citizen or permanent resident in Malaysia, or a body corporate established in Malaysia and constituted or vested with legal personality under the laws of Malaysia (section 3, Copyright Act). Other Copyright will also subsist in every work which (section 10(2), Copyright Act): 

Is eligible for copyright and which being a literary, musical or artistic work, film or sound recording is first published in Malaysia.



Is of architecture erected in Malaysia or any other artistic work incorporated in a building located in Malaysia.



Constitutes a broadcast transmitted from Malaysia. Copyright will also subsist if the work is made in Malaysia ( section 10(3), Copyright Act) (aside from the exceptions in section 10(1) and section 10 (2) ( see above)). In Hexagon Tower Sdn Bhd v Polidamic Holdings Sdn Bhd & 3 Ors [2005] 1 LNS 77, the High Court held that the word "made" denotes the point where a work is actually completed. If the above conditions are not met, copyright can still be enjoyed and enforced in Malaysia if the works were first produced in a Berne Convention member country. This is provided for under the Copyright (Application to other Countries) Regulations 1990. Additionally, protection of performers' rights exists under section 10A of the Copyright Act, whereby such protection will subsist in every performance of which the performer is:



A citizen or permanent resident of Malaysia.



Not a citizen or permanent resident of Malaysia but whose performance either: o takes place in Malaysia; o is incorporated in sound recordings that are protected under the Copyright Act; o has not been fixed in a sound recording but is included in a broadcast qualifying for protection under the Act. Separately, any work eligible for copyright which is made by or under the direction or control of the Malaysian Government, and any government organisations or international bodies as may be prescribed under the Copyright Act, will enjoy copyright protection (section 11(1), Copyright Act).

Public Domain Works that are not protected by copyright law belong to the public domain. There is no need to get permission to use a public domain work. It is interesting to note that the Copyright Act does not define the phrase “public domain.” There are two kinds of works that belong to the public domain in the United States: 1. Works whose copyright protection has expired • The length of copyright protection varies depending on when a work was created and if, when, and where it was published. 2. Works that were never protected by U.S. copyright law • This category includes: o Works created by an employee of the U.S. federal government in the course of her employment o Works that did not comply with the formalities by former U.S. copyright regimes o Works published in certain countries that have not joined international copyright treaties

Examples: • The Adventures of Tom Sawyer, first published in the United States in 1876, is in the public domain because its copyright term has expired. • Decisions of the U.S. Supreme Court are in the public domain because U.S. federal government employees create them during the course of their employment.

4. CASES Case 1: in Rock Records (M) Sdn. Bhd. v. Audio One Entertainment Sdn. Bhd [2005], The ten sound recordings in question were popular Malay songs, first published in the form of sound recordings between June 1990 and November 1995. The plaintiff alleged that the defendant had infringed its copyright in its sound recordings by making a karaoke VCD with the recordings without the licence of the plaintiff, and had thus infringed its copyright. The defence raised by the defendant was that the plaintiff was not the copyright owner in the sound recordings, and that it was licensed by another company, Audio Scope Video Product Sdn. Bhd., to reproduce the sound recordings. The defendant challenged the statutory declaration of ownership produced by the plaintiff under section 42 of the Malaysian Copyright Act, contending that it was inadmissible for this purpose because the originals of

the recordings were not annexed to the declaration. The defendant also contended that it was the copyright owner of the karaoke VCD, which qualified for protection as a film under the Copyright Act, and that the copyright in a film included the sound track of a film. The issues for the court were: (1) Whether the plaintiff had proven its ownership of the copyright in the sound recordings, pursuant to the requirements of section 42 of the Malaysian Copyright Act? (2) Whether the defendant had, by incorporating the sound track of a cinematographic work into the sound track of its karaoke VCD, infringed the plaintiff’s copyright in its sound recordings? The court affirmed that the plaintiff was the owner of the copyright in the sound recordings. By affirming a statutory declaration pursuant to section 42 of the Malaysian Copyright Act, the statutory declaration was admissible as evidence of proof of copyright ownership by the plaintiff, and placed the burden on the infringer to dispute and challenge the prima facie evidence adduced by the copyright owner. The court found that the author of the sound recordings was Suara Cipta Sempurna (Marketing) Sdn Bhd, a sound recording company which made arrangements for the recording of the songs referred to in the works, and that by way of an assignment in writing (in the form of a sale and purchase agreement), copyright in the recordings was assigned to the plaintiff. There was no legal requirement for the assignment to be expressed in any particular form of words. As the exclusive owner of the copyright in the sound recordings, the plaintiff had the right to control the reproduction of sound recordings in various material forms, including the various media in which the sound recordings could be embodied, such as cassettes, laser discs (LD), video compact discs (VCD) or digital video compact discs (DVD). A licence granted by the rightholder to reproduce the sound recordings in one format did not extend to the right of reproduction in another format. Case 2: In Sheikh Abdullah Ahmad v Universal Music (M) Sdn Bhd [2017] 8 CLJ 79, the Plaintiff was an active singer in the entertainment business since the 1980’s. He entered into a contract with a recording company, Malaysian Recording Corporation (“MRC”) in 1983 to produce an album. The Plaintiff claims that he was entitled to 20% royalty from the sale of each album and/or songs from the album. The album eventually produced by the singer was owned by its producer, Nawab Production Sdn Bhd who then entered into a Sales and Purchase Agreement with the Defendant in 2005 (“2005 Agreement”). The Plaintiff was informed that his album could be downloaded from iTunes for the price of USD 4.99. The Album had been uploaded by the Defendant. Thus, the Plaintiff claimed

against the Defendant for performer’s rights under Sec. 16A of the Copyright Act 1987 and sought the 20% royalties from the Defendant. The Court partially allowed the Plaintiff’s claim stating that the Defendant was liable to pay equitable remunerations to the Plaintiff when it uploaded songs from the Plaintiff’s album onto iTunes. However, the Plaintiff was not entitled to claim 20% royalty from the Defendant as it could not prove that such term existed in the 1983 contract. Furthermore, the 1983 contract only binds the Plaintiff and Nawab Productions Sdn Bhd. As such, the 20% royalty can only be claimed against Nawab Productions Sdn Bhd. An action should have been brought against Nawab Productions if the Plaintiff wanted to claim for the alleged 20% royalties based on the contract. Pursuant to the terms of the 2005 Agreement, the Plaintiff was only entitled to 8% royalty from the sale of his album from iTunes. Case 3: Longman (M) Sdn. Bhd. vs Pustaka Delta Pelajaran Sdn. Bhd [1987], The action taken by plaintiff (Longman (M) Sdn. Bhd.) for infringement of copyright in a text-book translated from English to Bahasa Malaysia. The text-book that was believed to be the one who copied has their general arrangements, languages and errors similar to the plaintiff’s text. The action taken due to the text-book which was translated from a manuscript in English to Bahasa Malaysia by three Malay translators who was commissioned by it. The plaintiff claimed that they were the sole owner of the copyright in a book entitled “Kursus Ulangkaji Rampaian Sains” (the said book). The said book was published in 1979 and it was a book for a student to preparing in SPM examinations. The legal issues that is trying to be address here are that whether book protected under Copyright Act 1969 – Substantial part of plaintiff’s book – whether in the context of Copyright Act 1969 s.8(1). This is to be understood that probably the plaintiff has brought this case to the court because they has been badly affected by the pirated version of it. They also stated that the vital part of the plaintiff book was being pirated by them and that leads to the decreasing of sale for their book. Case 4: Kuang Pei San Food Products Public Company Limited v. The Wees Marketing Co Sdn Bhd [2009] [LOGO TRADEMARK COPYRIGHT] The plaintiff claim that the defendant copy their name and trademark and change a bit of their brand name as well as their trademark and it is confusing the consumers. The plaintiff alleges that the depiction of these marks on the defendant’s canned sardines is an infringement of their copyright, causing irreparable damage to their business goodwill, reputation and causing them to suffer loss and damage. The plaintiff company is a company from Thailand.

The court adjudged that Section 38(1)(a) of the Trade Marks Act 1976 (“the TMA 1976” for short) provides that there is infringement if a person uses a mark which is “identical with” or “nearly resembling” the registered trade mark “as is likely to deceive or cause confusion in the course of trade in relation to goods or services in respect of which the trade mark is registered when the use of such a mark is likely to be taken (as in the facts of this case) as being use as a trade mark”. It is clear to me when I compared the two get-ups in this case, the colour scheme, the picture of the blue fish, the angle of its depiction, the vegetable dish behind it and the chillis at the bottom of the tin, the similarities between them are simply astounding. When I 20 throw in the word ‘Smiling’ into the whole assemble I cannot but draw the conclusion that there is trade mark infringement by the defendant. The competition in 15 the market for canned sardines is indeed stiff and similarities abound but what the law does not condone is when the similarities, such as in this case, have the real potential of causing confusion amongst consumers. Case 5: Siti Khadijah Apparel Sdn Bhd v Ariani Textiles & Manufacturing (M) Sdn Bhd [2019], The High Court in this matter held, amongst others, that: (a) Clothing, such as a “telekung” (clothing worn by Muslim women during their daily prayer), may be considered “graphic work” as provided in Section 3(a) of the Act. (b) In a copyright infringement claim, the courts may draw adverse inference against the party who suppresses material evidence regarding the creation and/or design of a creation eligible for copyright. In this case, the defendant failed to adduce evidence that the clothing was designed by the defendant’s designer

5. DEFENCE [SECTION 13(2) OF COPYRIGHTS ACT) -

REFER TO ARTICLE SHIN ASSOCIATES

How is copyright infringement assessed? 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 that is controlled by copyright under the Copyright Act (section 36(1), Copyright Act). In the case of Megnaway Enterprise Sdn Bhd v Soon Lian Hock [2009] 3 MLJ 525, the application of section 36(1) of the Copyright Act read together with section 13(1) was relied on, and it was held that for direct infringement, it must be established that:  There is sufficient objective similarity between the original work and the infringing copy.  There is a causal connection between the original work and the infringing copy.  What has been infringed must constitute a substantial part of the original work.

The High Court determ...