UIP2612 Intellectual Property Law

Tutorial 3: Copyright (Part II)

August 2021
1. With reference to decided cases, discuss the meaning of the phrase “made in the course
of the author’s employment”.
Ownership of copyright is distinct from the authorship of a work, even though the author of a
work may also be the owner of the copyright. As seen in the case of Yeoh Kee Aun v PI
Capital Asset Management Sdn Bhd, it was held that authorship and ownership is distinct. An
employee who is the author of a copyright is not the owner of the copyright if the subject
copyright is made in the course of the copyright is made in the course of the author’s
employment or pursuant to a commission. S.26 of Copyright Act 1987 speaks about the first
ownership of copyright. Subsection (1) states that copyright conferred by s.10 shall initially be
bested in the author Except, where a work is commissioned by a person (not employer)
(contract for service), is made under the course of employment (employer) (contract of service).
Copyright subsisting in works of Government shall best in the relevant bodies and not the
author Copyright shall be deemed to be transferred to the person who commissioned the work
or to the employer, subject to agreements.
Based on the case of Megnaway Enterprise Sdn Bhd v Soon Lian Hock, the plaintiff’s
managing director holds 2 identities. One is the managing director and the other as the
employee of the company. Court referred to Inchape Malaysia Holdings Bhd v RB Gray &
Anor. The governing director who is also controlling shareholder of a company may at the same
time be employee of it. It was held, since found that managing director also is employee, the
design of the anti-theft system by the managing director is transferred to the employer, plaintiff.
However, it MUST BE DONE IN THE COURSE OF THE AUTHOR’S EMPLOYMENT.
In the case of Stephenson Jordan & Harrison Ltd v MacDonald & Evans, it was held that it
cannot be shown that the lectures were part of Mr. Evans-Hemming’s duty to write them. Not
shown that the lectures were written in the course of Mr. Evans-Hemming’s employment under
his contract of service. Proposed book will not publish secret or confidential information.
Defendant was an accountant and it was not part of an accountant’s duty to write lectures.
Copyright belonged to the plaintiff except for some report written by the accountant for his
employer’s client belonged to his employer.
In the case of Patchett v Sterling Engineering Company Limited, it can be seen that, the
phrase “In the course of employment” does not necessarily mean alleged work must be made
during working hours using employer’s equipment.
One approach to answering the question is determining the job scope of employee or job
description as contained in the contract of employment. If yes, it suggests that work was
created in the course of employment. In the case of Missing Link Software v Mage, the
employee left the company and joined with another similar to P’s software company. He wrote
software outside work time and on his own equipment. Court found it to be in the course of
employment and employer was given the ownership rights since employee was hired to write
programs of the kind in dispute. It fell within the scope of tasks he was employed to carry out
and he was employed at the time of writing it. Therefore, the court held that the work was done
in the course of employment.
2. Ben works as a copywriter for an e-commerce company. In his spare time in the office,
he writes 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.
3. Explain the various modes of qualification for copyright protection in Malaysia.
1. Requirements for protection

Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd = Court
held that a work is eligible for copyright if all the 4 elements of copyright are satisfied.
First, it must be considered as a work. Second, it is original in that sufficient skill and
effort had been expended in the creation. Third, it complies with the requirements as to
form and lastly, it complies with the qualification for copyright, qualifications either by
reference to its making or publication. In short, it means that work is eligible for
copyright if it is a work, original, complies with requirement as to form and complies
with qualifications for copyright.
- Under the Berne Convention, Article 5(2) = no registration or formality is required for
subsistence of copyright
- However, the Copyright (Amendment) Act 2012 had introduced voluntary
notification of copyright to act as prima facie evidence in relation to the ownership of
copyright. This is to prove the ownership of copyright by statutory declaration or
voluntary notification. This added a degree of comfort and assurance to copyright
owners. Akin to the registration of other intellectual property rights with the
Intellectual Property Corporation of Malaysia (MyIPO), the evidence of the copyright
notification with the MyIPO is prima facie proof of ownership and is admissible as
evidence in any proceedings under the Act. This will ease the owner of a copyright to
claim its rights and to prove his or her ownership over such copyright in event of a
dispute.

A. Categories of Protected Works

- Section 7(1) = Literary works; musical works; artistic works; films; sound recordings
and broadcasts are works which are eligible for copyright
- Section 8(1) = shows that derivative works are protected as original works. Example
of derivative works are (a) translations, adaptations, arrangements and other
transformations of works eligible for copyright; and (b) collections of works or
collections of mere data, whether in machine readable or other from, eligible for
copyright which, by reason of the selection and arrangement of their contents,
constitute intellectual creation.
- In relation to that, Section 3 had defined the meaning of “adaptations” as (a) literary
work which had been converted into a dramatic work; (b) dramatic work which had
been converted into a literary work; (c) in relation to a literary or dramatic work— (i)
a translation of the work; (ii) a version of the work in which the story or action is
conveyed wholly or mainly by means of pictures in a form suitable for reproduction in
a book or in a newspaper, magazine or similar periodical; (d) in relation to a literary
work in the form of a computer program, a version of the work, whether or not in the
language, code or notation in which the work was originally expressed not being a
reproduction of the work; (e) in relation to a musical work, an arrangement or transcription of
the work; (f) in relation to a literary or artistic work, a version of the work (whether in its
original language or a different language) in which it is converted into a film.

i. LITERARY WORKS
- Section 7(1) = Literary works; musical works; artistic works; films; sound recordings
and broadcasts are works which are eligible for copyright.
- Section 3 = provides the definition for literary work which includes (a) novels, stories,
books, pamphlets, manuscripts, poetical works and other writings; (b) plays, dramas,
stage directions, film scenarios, broadcasting scripts, choreographic works and
pantomimes; (c) treatises, histories, biographies, essays and articles; (d)
encyclopaedias, dictionaries and other works of reference; (e) letters, reports and
memoranda; (f) lectures, addresses, sermons and other works of the same nature; (g)
tables or compilations, whether or not expressed in words, figures or symbols and
whether or not in a visible form; and (h) computer programs. It is important to note
that it does not include the official texts or judicial decisions of Government or
statutory bodies. It also does not include the speeches in legal proceedings.
- University of London Press Ltd v University Tutorial Press Ltd = Two examiners
were appointed for a matriculation examination of the University of London, a
condition of appointment being that any copyright in the examination papers should
belong to the university. The university had agreed with plaintiff company which is
the University of London Press Ltd to assign copyright and by deed purported to
assign to plaintiff’s company. After the examination, defendant company which is the
University Tutorial Press Ltd issues a publication containing a number of examination
papers and answer to the question including 3 papers which had been set by the 2
examiners. The plaintiff then commenced an action against the defendant. Court held
that the term ‘literary work’ has not been defined in Act but according to the Act,
‘literary work’ includes maps, charts, plans, tables and compilations. The word
‘literary’ also refers to written or printed matters. This means that it cover what is
expressed in printing or writing, irrespective of the question whether the quality or
style is high, thus, the papers set by the examiners are ‘literary work’.
- Exxon Corp v Exxon Insurance Consultants International Ltd = Court held that the
word “Exxon”, although invented and original, it has no meaning thus it was not a
literary work. In order to give it meaning, it is usually accompanied with other texts.
However, since it was not, and it did not denote any indication of quality and could
not be able to distinguish itself, it is an invented word, which is then more suitable to
be protected under trademark. As such, a single word does not amount to literary
work.
- Francis Day & Hunter Ltd v Twentieth Century Fox Corp Ltd = In this case, a song
titled “The Man Who Broke the Bank at Monte Carlo” was published in London
while a motion picture with the same title was published in Canada. It was found that
except having the same title, both does not have any similarities. Court held that a title
does not involve literary composition and is not sufficiently substantial to justify a claim for
protection.
- Saleha Hussin v Ab Wahid Nasir = Plaintiff brought an action against defendant for
infringing her TV drama script. The drama script had originated from plaintiff and
was published in local newspaper. Plaintiff further modified the work into a drama
script for a television drama. Plaintiff presented the script to defendant, a television
station, who asked plaintiff to work with first defendant to expand on the script. After
further work, script eventually rejected by defendant. Later, plaintiff found out that
defendant had broadcasted a TV Drama where the plot, dialogues, characters were
deemed to be a resemblance of her earlier work. In this case, court held that a
dramatic work such as the script falls within the definition of a literary work and is so
protected.
- The copyright ‘tables or compilations’ exists separately from the copyright of the
individual item in the tables or compilations. This is best shown in Penerbitan Fajar
Bakti Sdn Bhd v Cahaya Surya Buku dan Alat Tulis where defendant argue that
plaintiff had no copyright in the works. The actual authors of stories and poems had
the copyright in them and no evidence show that they had assigned their intellectual
property of the works to plaintiff. Court dismiss the defendant’s application as
plaintiff is not claiming copyright to the stories or poems but to the collection or
anthologies. As such, the distinction should be made between individual stories and
collection.
- Henceforth, following the case, it can be said that tables or compilations are protected
as literary works because of the skills and efforts that have been expended in
collection, selecting and arranging the materials. This is because the making of table
or compilation may look simple but the process of selecting, compiling and arranging
the individual items together usually involves a considerable amount of work which
makes them original literary works.
- Computer programs are unique in the list of literary works because they are functional
instead of expressive in nature. They are included as a subject matter of copyright for
historical reasons and ease of obtaining protection compared to patent law. Section 3
had defined “computer program” 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 or both of the following: (a) conversion to another
language, code or notation; (b) reproduction in a different material form.
- Alfa Laval (M) Sdn Bhd v Ng Ah Hai & Ors = Plaintiff was manufacturer of plate heat
exchanges and claimed that it had developed a computer program to calculate and
configure the specifications of the plaintiff’s plate heat exchanges. Plaintiff claimed
defendant had infringed its copyright in CAS program. The court held that a set of
instructions consisting of expressions, notations or codes in whatever language in disc
format or material form of program is protected by copyright.
ii. ARTISTIC WORKS
- Section 3 = defined “artistic work” means (a) a graphic work, photograph, sculpture
or collage, irrespective of artistic quality; (b) a work of architecture being a building
or a model for a building; or (c) a work of artistic craftsmanship, but does not include
a layout-design within the meaning of the Layout-Designs of Integrated Circuits Act 2000.
- Section 3 = In relation to graphic work, the said section had defined “graphic work”
includes (a) any painting, drawing, diagram, map, chart or plan; and (b) any
engraving, etching, lithograph, woodcut or similar work.
- Important to note that, Section 3 is also wide enough to include engineering drawings.
- Peko Wallsend Operations Ltd v Linatex Process Rubber Bhd = The defendant were
alleged to have copied plaintiffs’ slurry pump by way of reverse engineering.
Plaintiffs contended that they had not given their consent or licence to the defendant
to copy, reproduce or manufacture any slurry pump part. High court had determined
in the affirmative that two-dimensional engineering drawings were capable of being
eligible for copyright protection and more importantly it was held that the copyright
protection has been extended to cover finish products which is the three-dimensional
objects as well which had been manufactured from the drawings. Court found favour
in plaintiffs.
- Section 7(5) = Copyright shall not subsist under this Act in any design which is
registered under any written law relating to industrial design.

iii. OTHER TYPES OF WORK

- Section 3 = defined “musical work” means any musical work, and includes works
composed for musical accompaniment
- Section 3 = “sound recording” means any fixation of a sequence of sounds or of a
representation of sounds capable of being perceived aurally and of being reproduced
by any means, but does not include a soundtrack associated with a film as this will be
considered under the category of film.
- Section 3 = “film” means any fixation of a sequence of visual images on material of
any description, whether translucent or not, so as to be capable by use of that material
with or without any assistance of any contrivance (a) of being shown as a moving
picture; or (b) of being recorded on other material, whether translucent or not by the
use of which it can be so shown, and includes the sounds embodied in any soundtrack
associated with a film.
- Section 3 = “broadcast” means a transmission, by wire or wireless means, of visual
images, sounds or other information which (a) is capable of being lawfully received
by members of the public; or (b) is transmitted for presentation to members of the
public, and includes the transmission of encrypted signals where the means for
decrypting are provided to the public by the broadcasting service or with its consent.
- Section 9 = Copyright shall subsist in every published edition of any one or more
literary, artistic or musical work. However, the Act restricted by copyright is the
making of a reproduction of the typographical arrangement of the edition.

B. Originality
- Section 7(3)(a) = 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.
- University of London Press Ltd v University Tutorial Press Ltd = Court held that
“original” does not mean that work must be expression of original or inventive
thought. Copyright Act does not concerned with the originality of ideas but with the
expression of thought. Furthermore, expression does not need to be in original or novel form
but the work must not be copied from another work. In this case, plaintiffs had proved that
they had thought out the question which they set and that they made notes or memoranda for
future question which they set. The papers set by examiners entailed the exercise of
brainwork, memory and trained judgment and even selection of passages from other authors’
works involved careful consideration, discretion and choice. As such, the papers which they
prepared originated from themselves and were within the meaning of the Act, original.
- Donoghue v Allied Newspaper Limited = the court illustrated the concept by stating
that "the person who has clothed the idea in form, whether by means of a picture, a
play or a book" owns the copyright.
- Designer Guild v Russel William (Textiles) Ltd = In this case, plaintiff, Designer
Guild Ltd and defendant, Russel Williams (Textiles) Ltd, both design and sell fabrics
and wallpaper. Plaintiff alleged that defendant’s design, Marguerite, had infringed
with their Ixia design, which they had copyright in it. Although both the copyrighted
work and the infringing design were different in detail, the overall impression of the
design was the same. At first instance, court held that there had been copying by
defendant and that considering plaintiff’s design as a whole, what had been copied
amounted to a ‘substantial part’ of the plaintiff’s design. Defendant did not challenge
the judge’s finding that there had been copying but appealed against the conclusion
that such copying was of a “substantial part” of the plaintiff’s design. Court of appeal
concluded that defendant’s design had not involved the copying of a substantial part
of the plaintiff’s design as the 2 designs did not look sufficiently similar. Plaintiff
appealed. House of Lord allowed the appeal stating that Court of Appeal had erred in
overruling the decision of judge. It had erred in its belief that defendant did not copy a
substantial part of the expression of Ixia design but rather the idea. The techniques
used in Ixia to form the expression required sufficient skill and labour from the
author, thus, it formed a substantial part of the originality of Ixia. Court concluded
that the Ixia expression was more than just the idea of a flower-stripe combination and
therefore original enough to represent the author’s skill and labour to form a
substantial part of the originality of work.
i. Tables and Compilations
- Section 8(1)(b) = Collections of works or collections of mere data, whether in
machine readable or other from, eligible for copyright which, by reason of the
selection and arrangement of their contents, constitute intellectual creation. As such, it
is a derivative works which are protected as original works.
- There are 2 differing standards to determine whether a table or compilations is
original. The first is mere labour or ‘sweat of the brow’ and the second is skills in
selecting and or arranging the content.
- It should be noted that tables and compilations were historically protected as literary
work as part of a book, although in modern form, they commonly exist as a
computerised database.
- Kiwi Brands (M) Sdn Bhd v Multiview Enterprise Sdn Bhd = High Court appears to
favour the view that in Malaysian law, sufficient effort even without skill is sufficient
to make a work original in character. Court referring to Football League Ltd v
Littlewoods Pools Ltd which was held that even if the compilation of the
chronological list had merely consisted of the reproduction of the clubs’ fixtures lists, there
was no skill and ingenuity, there was nevertheless sufficient painstaking hard work to justify a
claim for copyright.
- However, in contrast, in the case of Hardial Singh Hari Singh v Daim Zainuddin, it
provide a different opinion compare to Kiwi’s case as it support the skills
requirement. In this case, the plaintiff conducted an advisory service on customs
duties, tariffs and surtaxes. He copied into a single document regarding the import and
export duties contained in the Government’s Customs Duties Orders. The import and
export duties were found in 2 separate sections whereby plaintiff compiled them into
alphabetical order in a single document. The issue in this case is whether there was
copyright in the plaintiff’s work. Court stated the fact that plaintiff’s work followed
the format of the Government’s order was crucial to court’s finding that the work lack
originality. Court further stated that plaintiff’s work was not original because he did
not impose any unique pattern or order on the material he had copied which was
found in the Government Publications.

C. Reduced to Material Form

- Section 7(3)(b) = A literary, musical or artistic work shall not be eligible for copyright
unless the work has been written down, recorded or otherwise reduced to material
form. This show that copyright cannot be succeeded if it was not in writing, recorded
or otherwise as just having idea in your head is not suffice.
- This ‘reduced to material form’ is also known as a fixation where in order for a work
to be protectable, it must be fixed in a tangible medium of expression. A work is
considered fixed when it is stored on some medium in which it can be perceived,
reproduced or otherwise communicated. Henceforth, for example, it can be said that
sand drawing, ice sculpture, water printing have no copyright as it has no fixation and
keep changing.
- For other categories of work, namely films, sound recordings and publish editions,
there is no express requirement for fixation as by their name, these are inherently
fixed. As for broadcasts, there is no requirement for any fixation in order to acquire
copyright protection.

D. Qualifications
i. Section 10(1) = Copyright shall subsist when the work is made by a qualified
person. This can be referred as Qualification by Authorship
- Section 3 = defined ‘qualified person’, (a) in relation to an individual, means a
person who is a citizen of, or a permanent resident in Malaysia; and (b) 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. It also defined the meaning
of ‘author’ under the said section.
- Section 3 = defined ‘work of joint authorship’ 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.
ii. Section 10(2)(a) = Copyright shall subsist in every work eligible being a
literary, musical or artistic work or film or sound recording is first published in
Malaysia. This can be referred as Qualification by First Publication.
- Section 4(3) = A publication shall be deemed to be a first publication in Malaysia if;
the work or live performance was first published in Malaysia and not elsewhere; or
the work or live performance was first published elsewhere but published in Malaysia
within thirty days of such publication.
- Section 4(1) = had provided the definition of ‘publication’ where it means made
available with consent of author to satisfy the reasonable requirements of the public.
- Francis, Day & Hunter v Feldman = A song which was composed in America by an
American was published simultaneously in New York and London on 5 May 1913. In
April 1913, the owners of the American copyright in the song had sent to the plaintiffs
12 copies of the song with instructions to copyright the song in UK. On that day,
plaintiffs sent 1 copy to the British Museum, 1 copy they filled for reference in their
office, 6 copies they exposed for sale on the counter of their retail premises in London
and the next day, they sent the remaining 4 copies to the agent for the universities.
There was no immediate demand for the song and after a fortnight the plaintiffs
placed the 6 copies amongst their general stock. In July 1913, the song was first sung
and it was a great success. Plaintiff then purchased the copyright in the song for the
British Empire from the American owners and made large sales. Later, defendant
published a song which was based upon the words of plaintiff’s song and was what
was known as an answer or reply song. Court held that the plaintiff’s song was first
published in London on 5 May 1913 and that there had been “an issue of copies to the
public” within the meaning of the provisions of Copyright Act 1911. Publication
means to satisfy the public demand and in this case, there is an intention to satisfy the
public demand of the country. However, such decision was later reversed as court
held that defendant’s song, although a reply song, was not a colorable imitation to
plaintiff’s song and did not infringe their copyright therein.
- Television Broadcasts Ltd v Mandarin Video Holdings Sdn Bhd = The plaintiff
alleged that defendant had been hiring out pirated copies of their television series on
the black market. They had not given permission to the defendant to make copies of
or put on video cassettes for their films. Plaintiffs therefore sought an Anton Piller
Order before the writ was even served against the defendants. This is to prevent
the defendants from getting rid of incriminating evidence and their stock of infringing
video cassettes. One of the argument by defendant is that the films were not made
available in sufficient quantities to satisfy the reasonable requirement of the public
under the Act. Court held for copyright to subsist, the films must be published in
Malaysia within 30 days of their being shown in any country and in this case, Hong
Kong. For the films to be published within the meaning of the Act, it is enough that
they were on offer and sufficient copies were available to meet the anticipated public
demand. In this case, the video cassettes were with the dealers who being
businessman, were prepared to supply in demand. Plaintiff need not prove any
positive acts of offer.
iii. Section 10(2)(b) = Copyright shall also subsist in every work which is eligible
for copyright and which being a work of architecture is erected in Malaysia or
being any other artistic work is incorporated in a building located in Malaysia
iv. Section 10(2)(c) = Copyright shall also subsist in every work which is
eligible for copyright and which being a broadcast is transmitted from
Malaysia.
 v. Section 10(3) = Notwithstanding subsections (1) and (2), every work is
eligible to copyright if it is made in Malaysia. This can be referred as
Qualification by being made in Malaysia.
- Hexagon Tower Sdn Bhd v Polydamic Holdings Sdn Bhd = Held by Ramly b Ali J
that “in accordance with Section 10(3) of the Act, a copyright shall subsist in every
work eligible for copyright “if the work is made in Malaysia”. The work “made”
denotes when the plaintiff’s drawings were actually completed.
vi. The Copyright (Application to Other Countries) Regulations 1990, as
amended and which came into force on 1 October 1990, extends
qualification in other Berne Convention countries and Members of the
World Trade Organisation as if they were in Malaysia.
- Regulation 3 and 4 had governed the qualification for copyright where Regulation 3
concerned with literary, musical, artistic works, films while Regulation 4 concerned
with sound recordings, broadcasts, published editions. (refer statute)
- ‘Specified countries’ also means countries which are members of the Berne
Convention. (refer statute)