LECTURE

4:LAW OF
COPYRIGHT
Authorship, Ownership,,
Duration & Infringement
 AUTHORSHIP
Author = creator/originator of work
S3 defines of author for various CR (Copyrights) works =
person who 1st reduced work into material form
Literary works writer; Musical work Composer;
Artistic work artist
Photograph person who made arrangements for the
taking of the photos; expended skill & effort to create
photograph
Films, sound recordings person who made
arrangements i.e. producer
Broadcast person who transmits program, if he has
responsibility in selecting content; Or person(s)
providing program & making arrangements for
transmission
Only author, not CR owner has moral rights s25
 AUTHORSHIP
Moral rights focus on preservation of authors
integrity and reputation; created work is extension
of authors intellect & personality
2 types of moral rights
a) Right to be identified as author s25(2)(a)
Prevents any person for presenting work without ID
author/using name other than authors name
b) Right of integrity s25(2)(b)
Prevent any unauthorised distortion, multilation/other
modification of work if significantly alters; adversely
affects honour & reputation
Right is limited; not right to preserve, restore,
repair/prevent destruction
CONT..
 OWNERSHIP
CR owner has exclusive rights to control the doing of
various acts
S26(1) CR conferred by s10 vests initially with
author = 1st owner
CR = movable property, can be sold, assigned,
licensed, willed
I.e. author can sell/transfer CR ownership to others
Subsequently author CR owner
s26(2) work commissioned under contract of
service/apprenticeship, or made during employment,
CR deemed transferred to person who
commissioned/employer
If person acts just as mere scribe/ secretary, hasnt
put in sufficient skill & effort to make work original,
no CR
 PERFORMERS RIGHTS
Authors of literary, artistic & musical works have exclusive
right to control public performance of their works e.g.
author can control reading of book in public
Law traditionally doesnt recognise performers rights
because performance temporary, not reduced to material
form
If performances recorded, then its a recording (different
type of CR)
View that performers sufficiently protected by contract
Only way for performer to make money is to charge cash
for live performance problem is audience recording live
performance (bootlegging). Bootleg copies affect
marketability
CRA (Copyright Act) amended in 2000 to protect
performers
 PERFORMERS RIGHTS
S3 Performers = person who performs live performance
S3 Live performance = performance of works eligible for
CR e.g. dramatic, musical, literary, improvisations, dances,
circus acts, variety acts, performance with puppets,
expressions of folklore (e.g. wayang kulit)
NB: doesnt include reading, recital, delivery of news
item/info; sports, audience participation
No requirement of originality
Performance neednt be of CR work as long as delivered
live by 1/more persons in Malaysia
S10A(a) Performers right subsist in each performance if
performer = Malaysian citizen/ PR (Permanent Resident)
S10A(b) If performer not qualified person, then
performance must take place in Malaysia, incorporation
into sound recordings in CRA or included in broadcast for
Malaysia
 PERFORMERS RIGHTS
S16A(1) Performer has exclusive rights to control
(a) Communication to public of unfixed live performance
Rights only if performer hasnt given consent to fixation
of live performance
S16A(2) Once consent given to 3rd party, lose all
exclusive rights
S16B But still have right to equitable remuneration on
certain uses of any sound recording made of performance
Performer has exclusive rights to control transmission
except for live broadcasting performance
Once live performance broadcasting ends, performers
right also ends i.e. restricted to original broadcasting
Only broadcaster can re-broadcast
 PERFORMERS RIGHTS
(b) Fixation of unfixed performance
Performers right to control 1st fixation of performance;
once fixed, right ends
Fixation = sounds, images of performance fixed into
permanent material form
If live performance fixed by performer, he retains all
exclusive rights under s16A(1) e.g. right of communication,
1st publication, rental
But if consent to fixation by 3rd party, lose all rights
(c) Reproduction of fixation of live performance
Limited to controlling the making of bootleg copies
No right to control pirated copies of lawful copies right
belongs to CR owner
(d) 1st making available 2 public of fixation of live performance
& copies thereof (sale or transfer of ownership) only if
fixation done by performer himself
(e) Rental to public of fixation of live performance/copies
 COPYRIGHT
INFRINGEMENT
S36(1) Direct; S36(2) Indirect
Direct infringement occurs when any act(s) controlled by CR
in S13 done without consent of CR owner
S13: CR owner in literary, musical, artistic work; film, sound
recording/ derivative work, has exclusive right to control, in
Malaysia, of whole work or substantial part, either in
original/ derivative form; the following acts:-
 RESTRICTED ACTS S13
(a)Reproduction in material form
Making 1/more copies in any form/version
Extends to different medium e.g. recording of book into
tape/disc
Includes making sound recording/film of literary work
(b) Communication to public
S3 transmission of CR work through wire/ wireless
means to public, including making available of work to
public in such a way that they may access the work
from a place & time individually chosen by them
Incorporates previous broadcasting & communicate by
cable rights
Allows CR owner to control transmission of works via
Internet
Must be communicate to public, not individual
 RESTRICTED ACTS S13
(c) Performance, showing, playing to public
Performance = delivery of work eg reading, reciting literary
work, singing a song, performing a musical work
Playing includes playing sound recording

Showing of film/exhibiting artistic work

Must be to public (not private)

Jennings v Stephens [1936] Ch 469 Play was performed
without CR owners consent at meeting of womens club. About
62 club members present. No fee charged, no guests. Court held:
True test is character of audience. Where audience is present in
capacity as members of section of public performance is given
in public. On the other hand, if performance is part of
domestic/home life of person performing private. Thus
performance in club is public performance. Audience is CR
owners public & any performance to them requires consent.
Where work is performed in commercial setting, unlikely to be
private/domestic
 RESTRICTED ACTS S13
(e)&(f) Right of Distribution & Rental
CR owner granted right to control 1st distribution of copies
of work to public by sale or other transfer of ownership
Once CR owner releases copy of work for sale, presume
consent to future sales of that copy ie his distribution right
ends
No control over sale of 2nd-hand books

As long as owner of physical copy doesnt infringe CR, can

use/distribute/sell without having to compensate CR owner
CR law traditionally doesnt restrict rental & lending of
copies of CR works
S13(1) proviso exclusive right to control distribution of
copies = act of putting into circulation copies not previously
put into circulation in Malaysia
 S36(1) DIRECT
S36(1) CR is infringed when any person does/causes
INFRINGEMENT
others to do any activities under CR owners
exclusive control without licence/consent
S36(1) CR is also infringed when person causes
another to do the act e.g. employer-employee,
principal-agent
Relevant factor is what Defendant had control over
3rd party as principal/employer
Proof of copy establish by direct evidence/ inferences/
circumstances & similarities between to works
Plaintiff has to prove sufficient objective
similarities & that Defendant had prior access
(causal connection) to work. Defendant can rebut
 CAUSAL
CONNECTION
Similarities between CR work & infringing copy may be
coincidental/made independently; or both could have copied
from 3rd source
Infringement depends on copying; no legal action if no causal

connection
Sufficient objective similarities indicate prima facie copying;
Defendant to rebut presumption
Francis Day & Hunter v Bron [1963] Ch 587: Whether there
was copying = question of fact in 2 stages
 CAUSAL CONNECTION
1st stage objective, 2nd stage subjective
1. Whether, in fact, alleged infringing copy similar to original
authors work
Objective question of fact, depends on aural perception of
judge & expert evidence
Most important is degree of similarity
2. Has Defendant copied Plaintiffs work/or was it his own
independent work?
Question of fact; subjective. Judge must draw proper
inference from facts
Degree of similarity most important in reaching subjective
conclusion
Copying may be direct or indirect ie infringing copy can be
made from original/copy/reproduction of original
SUFFICIENT OBJECTIVE
Objective test of fact & degree, compare visually or aurally
SIMILARITY

Depends on type of work, similarities & differences between

original & infringing copy
Purpose is to determine with similarities are sufficiently
close, numerous or extensive to be more likely to be the result
of copying rather than of coincidence Designers Guild Ltd
v Russell Williams (Textiles) Ltd [2001] FSR 113
When identifying similarities, common, unoriginal, general
features/ideas usually disregarded
But similarities in trivial/unimportant details/mistakes often
indicate copying
Infringement not always clear-cut; exact/ identical copying
rarely happens
Usually Defendant modifies parts from original work or
infringing copy may have been derived from Plaintiffs
original work
 SUFFICIENT
OBJECTIVE SIMILARITY
Mohd Ramly@Dzulkifli bin Ismail v Sarimah Film
Production Sdn Bhd v Anor [1984] 1 CLJ 105: When
comparing stage-play script (one-act) to film, hard to show
substantial similarity in plots, scenic effects & incidents.
Test is whether reasonable person would conclude that
Defendant has reproduced substantial part of Plaintiffs
work. Compare similarities, not differences
Permissible to read all relevant artistic works/technical
drawings together (Solar Thomson Engineerin v Barton
[1977] RPC 537); including any accompanying written
matter to interpret
Although information can help interpret drawings, whats
important is visual comparison
 SUBSTANTIAL PART
CR entitles owner to rights of whole/ substantial part of work
CR infringement = the doing of any of restricted acts (s13)
with respect to whole/substantial part(s) of work
Defendant need not copy whole work, substantial part is

sufficient for infringement

NB: Copy form of expression, not idea
 SUBSTANTIAL PART
Substantiality based on evidence & inferences drawn from
existence of objective similarities between 2 (two) works &
causal connection ie Defendant copied Plaintiff's work
Unless part copied is substantial part of Plaintiff's work, no

CR infringement
Focus is whether substantial part of Plaintiff's work has been
copied, NOT whether part copied is a substantial part of
Defendant's work

SUBSTANTIAL PART
Where discrete parts of Plaintiff's work has been
copied/where similarities are sufficiently numerous/extensive
to support inference of copying, likely that substantial part
has been copied
Meaning of substantial part determined by referring to
some factors
Longman Malaysia v Pustaka Delta Pelajaran [1987] 2 MLJ
359 Plaintiff book publisher, alleged Defendant infringed
CR by copying 3 tables & 8 diagrams. Plaintiff's textbook had
304 diagrams, Defendant 366
Issue: whether Defendant had reproduced substantial part of

Plaintiff's work
 SUBSTANTIAL
Court
PART
adopted Ladbroke (Football) v William Hill
(Football) Ltd [1964] 1 WLR 273:Plaintiff = bookmakers,
ran weekly football pool competition. Clients would
complete football betting coupons. Plaintiff claimed CR
in coupons infringed by Defendant. Held: Skill,
judgement, labour expended in selection of bets,
matches, odds & also presentation in coupons - original
literary works. Also held that Defendant had copied
substantial part of coupons, liable for infringement. Lord
Reid: Substantiality depends on quality rather than the
quantity of what had been taken. One way to determine
this is whether part taken was novel or striking, or
merely a common arrangement of ordinary words or
well-known data. Lord Evershed: Matter of fact &
degree, depends not only on physical amount but
substantial significance of what had been taken.
 SUBSTANTIAL PART
Court relied on 3 factors to determine if substantial part
was taken
1. Originality of part taken ie whether considerable skill &
labour has been expended into making that part
If so, then part is substantial even though small in
amount/size
Reproduction of part thats not original not substantial
part of CR, not protected
 SUBSTANTIAL PART
2. What Defendant's object in taking & using part concerned
is same as Plaintiff's
3. What part taken is used by Defendant to interfere/compete
with sales of original
Court in Longman found certain amount of skill had been
expended to prod diagrams. By copying, Defendant didnt
use own skill & labour; sales of Defendant's books affected
Plaintiff
Even though small quantity copied, parts substantially
significant; Defendant infringed Plaintiff's CR
 SUBSTANTIAL PART
To decide what amounts to substantial part of work, must
consider nature of CR work & rationale for protection
Eg Literary CR protects original literary work, similar with
artistic
For compilations, what is protected is selection &
arrangement of materials
Compilation of publicly-available material or historical facts,
no infringement if similarities in incidents, facts/characters
 SUBSTANTIAL PART
Author doesnt have monopoly over facts ie
another person can produce work based on same
theme & refer to 1st work
What person cant do is to use 1st authors skill &
effort into his own work
Can use 1st work as starting reference part for
his own work but must not infringe CR
For musical works, substantiality depends on
whether both are substantially similar aurally
Eg Michael Jacksons Beat It even if only take
a few notes, if theyre so distinctive, can amount
to copying of substantial part - infringement.
Same with extracts/riffs

SUBSTANTIAL PART
Hawkes & Son (London) v Paramount Film Service [1934] 1
Ch 593: Defendants made film, included 20 seconds of march
Colonel Bogey, which would normally take about 4 minutes
to play. Held: Defendants reproduced substantial part
musical work, infringing CR. If amount taken could be
recognized by any person as the musical work in question,
then substantial part had been taken. Copying neednt be
exact, minor changes doesnt avoid infringement especially if
intended to deliberately avoid CR action.
 SUBSTANTIAL PART
Artistic works: Substantiality depends on how visually
significant or important that part is in relation to work as a
whole
Not relevant if much skill & labour expended on ideas
underlying part
What is protected is the artistic work and not the info which
the work conveys
Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183:
Plaintiff argued that its idea of a box girder as found in its
brochures was novel, involved much skill & labour. Because of
its intrinsic importance, it was a substantial part of the
drawings. Held: Whats protected is Plaintiff's artistic work,
not any info its designed to convey. Substantiality of copied
part depends on importance to recognition & appreciation of
artistic work
 SUBSTANTIAL PART
Whats protected is skill & labour devoted to
making artistic work, not developing some
ideas/invention
For works other than literary, musical/ artistic,
substantiality is assessed by referring to quality
rather than quantity
Network Ten Pty Ltd v TCN Channel Nine Pty
Ltd & Ors Ten taped segments from episodes
of Nines TV programs & rebroadcast 20 excerpts
in own programs. Excerpts ranged from 8-42
seconds from original programs of 30 minutes-
5hours. Court held: On issue of substantiality,
focus on quality of parts taken, assessed by ref
to interest to be protected cost & skill in
assembling or preparing & transmitting problem
to public. Thus, there was CR infringement.
 INDIRECT/SECONDARY
INFRINGEMENT S36(2)
Indirect/secondary infringement focus on
commercial transactions/ activities
involved/connected with sale, distribution &
importation of CR works; not owners exclusive
rights
Under CRA, only form of indirect infringement is the
importation of infringing articles into Malaysia for
various purposes under S36(2)
S36(2) Focus on commercial dealings of unlawful
copies of CR work & connected acts eg importation
Liability dependent on existence of some knowledge
on part of infringer
Diff from direct infringement just need to prove
doing of any act controlled by CR owner; strict
liability; no need to prove knowledge of act
 INDIRECT/SECONDARY
INFRINGEMENT S36(2)
To show infringement in S36(2)
1. Importation without CR owners consent/licence
2. Articles imported for purposes of sale, hire, distribution,
trade
3. Articles manufactured without consent/ licence of CR
owner
4. Importer knew/ought to have reasonably known tt articles
not lawfully manufactured
INDIRECT/SECONDARY
INFRINGEMENT S36(2)
Plaintiff's burden to prove infringement
Liability only on importer, not others
Importer must know/ought reasonably to know
that article was made without consent/licence
of CR owner
Proof of actual knowledge inferred from
statements/conduct/circumstances
Infringing copies = made without CR owners
license/consent
Actual making of articles outside Malaysia
should have CR owners consent
Even if plaintiff objects, Defendant can import
articles made outside Malaysia if CR owner
has consented to the making (legal copies)
INDIRECT/SECONDARY
INFRINGEMENT S36(2)
C = CR owner of book in Singapore & Malaysia, reproduces
copies for sale in Singapore & Malaysia
I = Malaysian importer, buys copies of lawfully-made books in
Singapore & imports into Malaysia for sale
S36(2) No infringement even if C objects to importation as
copies made in Singapore with his consent/licence
Parallel imports = articles lawfully made overseas but
imported by person other than CR owner/licence holder in
Malaysia eg authorization person cars, hire purchase
S36(2) doesnt prohibit parallel imports
 S36(3)&(4) INFRINGEMENT VIA
TECHNOLOGY
Legislature also introduced 3 new forms of
infringing activity:
a) circumvention of effective technological
measures used to restrict unauthorized acts with
respect to CR works s36(3)
b) removal/alteration of electronic rights
management information on copies of works
s36(4)(a)
c) distribution of such copies s36(4)(b)
Provides CR owners with legal action when
technological measures used to control rights are
compromised
Different from infringement of CR itself