Copyright 2020 Comparisons

Last Updated February 18, 2020

Law and Practice

Authors



Lee Hishammuddin Allen & Gledhill is one of the largest firms in the country, and a full-service law firm housing various practice groups, including corporate; dispute resolution; employment; IP and TMT; shipping; and tax, sales and service tax, and customs. LHAG has more than 130 lawyers, with offices in Kuala Lumpur, Penang and Johor Bahru. The copyright practice is part of its wider IP and TMT department. A seasoned team of copyright, trade mark, industrial design and patent agents, litigators and commercial lawyers work closely with in-house counsel to protect intellectual properties, innovation and creativity. The firm’s clients include top-ranked local conglomerates and multinational companies spanning industries such as IT, e-commerce, telecommunications, biotech, healthcare, entertainment and fast-moving consumer goods. The IP and TMT practice group has a team of lawyers who specialise in copyright law and have assisted clients in enforcing their copyright and pursuing or litigating against infringers, as well as defended clients on alleged copyright infringement.

Copyright in Malaysia is governed by the Copyright Act 1987 (“the CA”). The CA may be accessed online at:

In addition to the CA, regulations enacted under the CA and case law are the principal sources of law that regulate copyright in Malaysia.

Malaysia acceded to the Bern Convention for the Protection of Literary and Artistic Works 1886 (“Bern Convention”) as revised by the Paris Act 1971 on 1 October 1990. Malaysia is a member of the WTO and follows the Agreement on Trade-Related Aspects of Intellectual Property Rights including Trade in Counterfeit Goods (“TRIPS Agreement”).

Additionally, Malaysia is also a party to the following international treaties:

  • WIPO Copyright Treaty (acceded: 27 September 2012; in force: 27 December 2012)
  • WIPO Performances and Phonograms Treaty (acceded: 27 September 2012; in force: 27 December 2012)
  • Convention Establishing the World Intellectual Property Organization (acceded: 1 October 1988; in force: 1 January 1989)
  • Madrid Protocol (acceded: 27 September 2019; in force: 27 December 2019)
  • Nice Agreement (acceded: 28 June 2007; in force: 28 September 2007)
  • Paris Convention (acceded: 23 June 1988; in force: 1 January 1989)
  • Patent Cooperation Treaty (acceded: 16 May 2006; in force: 16 August 2006)
  • Vienna Agreement (acceded: 28 June 2007; in force: 28 September 2007)

After Malaysia acceded to the Bern Convention, the Copyright (Application to Other Countries) Regulations 1990 was enacted in line with the principle of national treatment which was codified in Article 5(1) of the Bern Convention. Under this principle, authors who are nationals or residents of a Bern Union country will enjoy the same copyright protection conferred by a Bern Union country to its nationals. The protection is then automatic and not conditional upon any formalities such as registration of copyright. Thus, all works first published in any of the Bern Union countries are entitled to copyright protection in Malaysia, irrespective of whether they are published in Malaysia or not. Currently, there are 177 contracting parties to the Bern Convention.

The Court of Appeal in DNC Asiatic Holdings Sdn Bhd & 2 Ors v Honda Giken Kogyo  Kabushiki Kaisha (also known as Hondo Motor Co. Ltd) Civil Appeal No W-02(IPCV)(W)-2376-12/2016 held at paragraph 19 that because Malaysia is a member of the Bern Convention, under the principle of national treatment, Japanese nationals obtain the same copyright protection as nationals of other Bern countries.

The requirements differ according to the categories of work and are stated below:

  • Literary, musical or artistic work

(a) The work must be original as per Section 7(3)(a) of the CA; and

(b) The author must show that sufficient effort has been expended to make the work original in character; and

(c) The work must be written down, recorded or otherwise reduced to material form as per Section 7(3)(b) of the CA; and

(d) The author must be a citizen or a permanent resident or a corporation incorporated in Malaysia or a country which is a member of the Bern Convention; or

(e) The work must be first published in Malaysia or a country which is a member of the Bern Convention.

  • Films

(a) The work must be affixed in some material form; and

(b) The author must be a citizen or a permanent resident or a corporation incorporated in Malaysia or a country which is a member of the Bern Convention; or

(c) The work must be first published in Malaysia or a country which is a member of the Bern Convention.

  • Sound recordings

(a) The work must be affixed in some material form; and

(b) The author must be a citizen or a permanent resident or a corporation incorporated in Malaysia or a country which is a member of the World Trade Organization; or

(c) The work must be first published in Malaysia or a country which is a member of the World Trade Organization.

  • Broadcasts

(a) The work must be for reception by the general public; and

(b) The author must be a citizen or a permanent resident or a corporation incorporated in Malaysia or a country which is a member of the Bern Convention; or

(c) The work must be transmitted from Malaysia or from a country that is a member of the World Trade Organization.

  • Architecture

(a) The author must show that sufficient effort has been expended to make the work original in character; and

(b) The work must be written down, recorded or otherwise reduced to material form; and

(c) The author must be a citizen or a permanent resident or a corporation incorporated in Malaysia or a country which is a member of the Bern Convention; or

(d) The work is erected in Malaysia or being any other artistic work is incorporated in a building located in Malaysia or a country which is a member of the Bern Convention.

  • Published editions of works

(a) The edition must be a new edition which does not reproduce the typographical arrangement of a previous arrangement; and

(b) The publisher of the edition must be a citizen or a permanent resident or a corporation incorporated in Malaysia or the United Kingdom; or

(c) The first publication of the edition took place in Malaysia or the United Kingdom.

A work that is eligible for copyright is protected automatically upon the fulfilment of the above-mentioned conditions. In Malaysia, the owner of a copyright work may file a voluntary notification to the Intellectual Property Corporation of Malaysia.

There is a register of copyrighted works filed on a voluntary basis. This provides for notification of the existence of copyright in a work to be made to the Controller of Copyright. A Register of Copyright is created which contains all particulars relating to the copyright in a work made known in a notification. The Register is a public document and may be examined by any person. This notifies the public of the existence of copyright in a work and is prima facie evidence of the particulars in the Register and is admissible in evidence in all High Court proceedings. 

The broad categories of copyrightable works are:

  • literary works;
  • musical works;
  • artistic works;
  • films;
  • sound recordings; or
  • broadcasts.

Literary Works as Defined in Section 3 of the CA

Literary works include:

  • novels, stories, books, pamphlets, manuscripts, poetical works and other writings;
  • plays, dramas, stage directions, film scenarios, broadcasting scripts, choreographic works and pantomimes;
  • treatises, histories, biographies, essays and articles;
  • encyclopedias, dictionaries and other works of reference;
  • letters, reports and memoranda;
  • lectures, addresses, sermons and other works of the same nature;
  • tables or compilations, whether or not expressed in words, figures, or symbols and whether or not in a visible form; and
  • computer programs.

Literary works do not include official texts of the government or statutory bodies of a legislative or regulatory nature, or judicial decisions, or political speeches and political debates, or speeches delivered in the course of legal proceedings, and the official translation thereof.

The Federal Court in Mohd Syamsul Md Yusof & Ors v Elias Idris [2019] 7 CLJ 560 at paragraph 28 held that it was not disputed that a novel is a literary work under the purview of Section 3 of the CA.

The High Court held in Chuah Aik King (sole proprietor of Syarikat B Three Technology) v Keydonesoft Sdn Bhd[2018] MLJU 530 that the plaintiff could not claim copyright in any function of a computer program. The learned Judge, Wong Kian Kheong J held that “[a] function of a computer program constitutes an 'idea' under Section 7(2A) of the CA and is, therefore, not entitled to copyright protection”. Based on the judgment, a function of a computer program, in itself, is not literary work which is protected by copyright under Section 7(2A) of the CA. The definition of a "computer program" in Section 3 of the CArefers to 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 [...]". It is the "expression, in any language, code or notation, of a set of instructions" in a computer program (not its function) which attracts copyright protection. The source code or object code of the computer program, or “the expression of [a] computer screen image or graphic user interface” on a document rather than the function of a computer program is protected under copyright law.

Musical Works

Musical works means any musical work, and includes works composed for musical accompaniment.

Artistic Works

Artistic works means:

  • a graphic work, photograph, sculpture or collage, irrespective of artistic quality;
  • a work of architecture being a building or a model for a building; or
  • a work of artistic craftsmanship.

It does not include a layout-design within the meaning of the Layout-Designs of Integrated Circuits Act 2000.

In the case of DNC Asiatic Holdings Sdn Bhd & 2 Ors v Honda Giken Kogyo  Kabushiki Kaisha (also known as Hondo Motor Co. Ltd) Civil Appeal No W-02(IPCV)(W)-2376-12/2016, the Court of Appeal at [26] had agreed with the findings of the High Court judge which cited the case of Peko Wallsend Operations Ltd & Ors v Linatex Process Rubber Sdn Bhd and another, [1993] 1 MLJ 225. The learned Judge Azizah Nawawi J (in the High Court) held that the three-dimensional works produced from the drawings are also eligible for copyright protection. In the Peko Wallsend case (supra), both the two-dimensional engineering drawings and the three-dimensional finished product manufactured according to the drawing are afforded copyright protection. Pursuant to this, the Hondacase (supra) held that a motorcycle, being a three-dimensional product of a drawing is afforded copyright protection. Furthermore, the learned Judge held that “there is no necessity that the three-dimensional representation to be an exact reproduction of the two-dimensional drawings...[s]o long as there is evidence to show that the three-dimensional representation is based on the two-dimensional drawings.”

Films

Films 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:

  • of being shown as a moving picture; or
  • of being recorded on other material, whether translucent or not by the use of which it can be so shown.

It also includes the sounds embodied in any sound-track associated with a film.

Sound Recordings

Sound recordings 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 sound-track associated with a film.

Broadcasts

Broadcast means a transmission, by wire or wireless means, of visual images, sounds or other information which:

  • is capable of being lawfully received by members of the public; or
  • is transmitted for presentation to members of the public.;

It includes the transmission of encrypted signals where the means for decrypting are provided to the public by the broadcasting service or with its consent.

No copyright shall subsist otherwise than by virtue of the CA, which provides a comprehensive list.

Software benefits from copyright protection. Although the definition of “literary works” does not make express reference to “software”, case law has shown that the definition of “computer program” is wide enough to encompass “software”. To illustrate, in Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors[1997] 2 MLJ 429,the High Court held that the definition under Section 3 of the CA should be read broadly so as to include all manifestations of that set of instructions which can be read by a computer in whatever converted form. Therefore, software is copyrightable as “literary works” and the same requirements would apply.

Malaysia acceded to the TRIPS Agreement (which expressly makes reference to “source code” and “object code” being copyrightable as literary works) in 1995. However, Malaysia has yet to incorporate the said provision into its domestic legislation. It is arguable that software is patentable, however the threshold may be high.

The CA makes no express reference to “database” being copyrightable. However, it is arguable that a “database” may fall within the category of literary works under the head of “tables and compilations”. “Database” may also be deemed derivative works under the collection of works or collection of mere data, both of which are copyrightable as literary works and the same requirements would apply. Depending on the database and information therein, it may also be protected by the common law on confidential information.

It is express legislation that a copyright shall not subsist in any design which is registered under any written law relating to industrial design.

Provided that aspects of the above illustrations fulfil the essential requirements for copyright (eg originality, reduced into material form), it is arguable that copyright would subsist depending on the type of work.

Subsistence of TV format copyright remains untested in Malaysia. However, in the recent decision of Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor [2017] EWHC 2600 (Ch), the High Court of England and Wales did indicate that TV formats may be copyrightable as dramatic work. Considering that Malaysia is a common law country, this English decision may be of persuasive nature to the Malaysian courts.

The “Author” of a work is defined in Section 3 of the CA, which provides:

  • in relation to literary works, means the writer or the maker of the works;
  • in relation to musical works, means the composer;
  • in relation to artistic works other than photographs, means the artist;
  • in relation to photographs, means the person by whom the arrangements for the taking of the photographs were undertaken;
  • in relation to films or sound recordings, means the person by whom the arrangements for the making of the film or recording were undertaken;
  • in relation to broadcasts transmitted from within any country, means

(a) the person transmitting the programme, if he has responsibility for the selection of its contents; or

(b) any person providing the programme who makes with the person transmitting it the arrangements necessary for its transmission; and

  • in relation to any other cases, means the person by whom the work was made.

Where a name which purports to be the name of the author appears on the work, there is a presumption that the named person is the author. However, this presumption may be rebutted.

Section 3 of the CA defines work of joint ownership as 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 author(s). It may be deduced that there are three prerequisites for a work to be regarded as a “work of joint authorship”, which are:

  • the work must be produced by the collaboration of two or more authors;
  • the contribution of each author is not separable from the contribution of the other author or authors; and
  • it must be shown in a work of joint authorship that each author has expended skill and sufficient effort to make his contribution original in character.

There exists a rebuttable presumption that the publisher whose name is indicated in the work is the legal representative of the anonymous or pseudonymous author. Being the legal representative, the publisher shall be entitled to exercise and protect the rights belonging to the author under the CA. Additionally, in the case of unpublished work where the identity of the author is unknown, but where there is every reason to presume that he is a citizen of Malaysia, the copyright conferred shall be deemed to vest in the minister charged with the responsibility for culture.

Section 114A(1) of the Evidence Act 1950 provides that “[a] person whose name, photograph or pseudonym appears on any publication depicting himself as the owner, host, administrator, editor or sub-editor, or who in any manner facilitates to publish or re-publish the publication is presumed to have published or re-published the contents of the publication unless the contrary is proved.” “Publication” is defined under  Section 4(b) of the Evidence Act 1950 as “a statement or a representation, whether in written, printed, pictorial, film, graphical, acoustic or other form displayed on the screen of a computer."

Copyright of compilations exist separately from and independently of the copyright in the items themselves. A distinction should be made between the copyright in the individual items and the copyright in the collection.

In the case of Aktif Perunding Sdn Bhd v ZNVA & Associates Sdn Bhd[2017] 10 CLJ 226,  Wong Kian Kheong JC (as his Lordship then was) held that Section 25(2)(a), (b)(i) and (ii) of the CA only confer moral rights on the author of a work who is a natural person. Therefore, based on the case of Aktif Perunding Sdn Bhd, supra, and considering that moral rights in a work vest and remain in the author of the work even if the copyright is assigned or licensed to another party, it suggests that an “author” is a natural person.

Additionally, as stated in 3.1 Authorship, “author” is defined in Section 3 of the CA. From its plain and ordinary meaning, it further buttresses the proposition that an “author” is a natural person.

Malaysia has a work for hire doctrine, the provisions of which include the following.

  • Copyright conferred under the CA shall vest initially in the author.
  • However, works created by employees or works specifically commissioned shall be deemed to be transferred automatically from the author to the employer or to the person who commissioned the work as the case may be. This presumption may be rebutted by parties agreeing otherwise.
  • Although the first owner of the copyright is the author, an exception is made with respect to works made by or under the direction or control of the government, government organisation or international body. Copyright subsisting in works of government, government organisations and international bodies; or works made under the direction or control of the government, government organisations and international bodies shall vest in these relevant bodies and not in the author.
  • Universities are not expressly provided under the CA. In practice, copyright in student-university relationships may be governed by contract.

The copyright owner shall have exclusive rights, amongst others:

  • rights of reproduction;
  • rights of communication to the public;
  • rights to performing, showing or playing to the public;
  • rights of distribution; and
  • rights of commercial rental.

The duration of the exclusive rights varies with the categories of the copyrighted work.

  • For literary, musical and artistic works, the duration of the copyright is the life of the author plus 50 years after his death. For work of joint authorship, the computation of 50 years begins from the date of the death of the last surviving author.
  • For published editions, sound recordings, broadcasts, films and works of government, the copyright shall continue to subsist until the expiry of 50 years computed from the beginning of the calendar year following the year in which the work was first published.

Copyright may be transferable by assignment, testamentary disposition, or by operation of law, as movable property. No assignment of copyright and no licence to do an act, the doing of which is controlled by copyright, shall have effect unless it is in writing.

The CA suggests that economic rights are transmissible as they are exercisable upon the author’s death, for a period of 50 years by their heirs. Section 25(2), (4), (5) and (6) of the CA have expressly provided for the scenario in which an author of a work has died and the author's personal representative may then act for the author's estate. 

The CA and case laws are silent on this matter. Section 11 of the Contracts Act 1950 and Section 2 of the Age of Majority Act 1971 suggest that the minimum age for an individual to enter into a valid and binding agreement is 18.

A copyright owner has the right to control the first distribution of his work to the public only

There are two types of moral rights under Section 25(2) of the CA:

  • the right of paternity, which is the prohibition of presentation of the work, by any means whatsoever, without identifying the author or under a name other than that of the other; and
  • the right of integrity, which is the prohibition of distortion, mutilation or modification which significantly alters the work and is such that it might reasonably be regarded as adversely affecting the author’s honour or reputation.

In the case Aktif Perunding Sdn Bhd v ZNVA & Associates Sdn Bhd[2018] 7 MLJ 692, the High Court held that moral rights pursuant to Section 25(2)(a) and (b) would apply to drawings even if they are not "purely artistic and/or creative endeavour", as the wording of the provision is not restricted as such.

Furthermore, the Court held that moral rights pursuant to Section 25(2)(a) and (b) are only conferred on a natural person.

The learned Judge Wong Kian Kheong J held at paragraph 43:

“Section 25(2)(a), (b)(i) and (ii) of the CA only confer moral rights on the author of a work who is a natural person. This decision is based on the following reasons:

  • Section 25(2), (4), (5) and (6) of the CA have expressly provided for the scenario where an author of a work has died and the author's personal representative may then act for the author's estate. The express reference to the author's death and the author's personal representative in Section 25(2), (4), (5) and (6) of the CA indicates Parliament's intention to confine moral rights in Section 25(2) of the CA to an individual author only;
  • Section 25(2)(b)(ii) of the CA has expressly provided for 'distortion, mutilation or modification' of a work which 'might reasonably be regarded as adversely affecting the author's honour'. The word 'honour' as used in Section 25(2)(b)(ii) of the CA, can only refer to an author who is a natural person (not a company). It is difficult, if not impossible, to envisage a company having 'honour' in a work within the meaning of Section 25(2)(b)(ii) of the CA; and
  • the entire provision of Section 25 of the CA does not refer at all to the winding up or dissolution of a corporate author. Such an omission by the legislature is deliberate so as to confine moral rights in Section 25(2) of the CA to individual authors only.”

The duration of moral rights is not expressly provided for under the CA. However, reading the sections together, it is arguable that moral rights would subsist only during the duration of copyright protection. This is consistent with the Bern Convention under Article 6 bis,which provides that moral rights of the author shall, after his death, be maintained, at least until the expiry of copyright.

Moral rights may be alienable. However, this issue remains unclear as the legislation is silent on the requirements. When applying the requirement for copyright transfer or license, it should at the very least be in writing.

Moral rights may be transmissible, in the manner that they are exercisable upon the author’s death, for a period of 50 years by their heirs.

The prohibition against circumvention of technological protection measures was included into the CA in 1997 by way of Section 36(3), which was modelled on Article 11 of the WIPO Copyright Treaty. Section 36(3) of the CA has since been repealed and replaced by Section 36A of the CA.

Section 36A of the CA prohibits the circumvention of technological protection measures but does not make such acts infringing acts. Section 36A lays down two prohibited acts:

  • pursuant to Section 36A(1), if a technological protection measure is applied to a copy of a work by or with the authorisation of the owner of the copyright in the work, no person shall circumvent or cause or authorise any other person to circumvent the technological protection measure; and
  • pursuant to Section 36A(3), commercial dealings relating to circumvention devices are prohibited.

Section 36A(2) provides for six exceptions to the act of circumventing technological measures provided in Section 36A(1), which are as follows:

  • for the sole purpose of achieving interoperability of an independently created computer program with the original program or any other programs;
  • for the sole purpose of identifying and analysing flaws and vulnerabilities of encryption technology;
  • for the sole purpose of testing, investigating or correcting the security of a computer, computer system or computer network;
  • for the sole purpose of identifying and disabling an undisclosed capability to collect or disseminate personally identifying information about the online activities of a natural person;
  • in relation to anything lawfully done for the sole purpose of-

(a) law enforcement;

(b) national security; or

(c) performing statutory function; or

  • done by a library, an archive or an educational institution for the sole purpose of making an acquisition decision in relation to a work in which copyright subsists.

Copyright management information was first introduced into the CA in 1997 by way of Section 36(4). The now repealed Section 36(4) made it an act of copyright infringement to remove or alter any electronic rights management information without authority or deal with works knowing that electronic rights management information has been removed or altered without authority.

A new section 36B was inserted in 2012, which prohibits the doing of acts mentioned in the provision but does not regard it as copyright infringement. Section 36B is based on Article 12 of the WIPO Copyright Treaty. This new section is argued by well-respected and renowned Malaysian academicians, Prof. Datuk Dr Khaw Lake Tee and Prof. Dr Tay Pek San, to be more in line with the well-established notion of the exclusive rights of a copyright owner and copyright infringement. 

The legal remedies for the prohibited acts under Section 36A or 36B is provided under Section 37 of the CA, which includes:

  • an order for injunction;
  • damages;
  • an account of profits;
  • statutory damages of not more than MYR25,000 for each work, but not more than MYR500,000 in the aggregate; or
  • any other order as the court deems fit.

It is noteworthy that where in an action under Section 37 for the commission of a prohibited act under Section 36A or 36B is established, the court may, in assessing damages for the commission of the prohibited act, award such additional damages as it may consider appropriate if it is satisfied that it is proper to do so having regard to-

  • the flagrancy of the prohibited act;
  • any benefit shown to have accrued to the defendant by reason of the prohibited acts; and
  • all other relevant matters.

In awarding statutory damages, the court shall have regard to-

  • the nature and purpose of the infringing act or prohibited act, including whether the prohibited act was of a commercial nature or otherwise;
  • the flagrancy of the prohibited act;
  • whether the defendant acted in bad faith;
  • any loss that the plaintiff has suffered or is likely to suffer by reason of the prohibited act;
  • any benefit shown to have accrued to the defendant by reason of the prohibited act;
  • the conduct of the parties before and during the proceedings;
  • the need to deter other similar prohibited act; and
  • all other relevant matters.

See 6.2 Collecting Society.

In December 2016, the Ministry of Domestic Trade, Cooperative and Consumerism proposed the establishment of a single licensing body called Music Rights Malaysia Berhad (MRM). As of 1 January 2017, MRM is the sole collection agency, while the present four licensing bodies  focus on distributing the monies collected amongst their members.

MRMis the sole licensing body which has been given authority by the Controller and the Ministry of Domestic Trade, Cooperative and Consumerism to carry out music licence issuance and fee collection activities in Malaysia on behalf of the following bodies:

  • Music Authors’ Copyright Protection Berhad (MACP);
  • Public Performance Malaysia Sdn. Bhd. (PPM);
  • Recording Performers Malaysia Berhad (RPM); and
  • Performer’s Rights and Interest Society Malaysia Berhad (PRISM).

The collecting societies collect royalties on behalf of their members and manage the following rights:

  • reproducing the work;
  • performing, showing or playing the work in public;
  • communicating the work to the public;
  • rebroadcasting the work;
  • the commercial rental of the work to the public; or
  • making an adaptation of the work.

Before any collection can be made by a licensing body, it is mandatory for the agency to be declared as a licensing body by the Malaysian Intellectual Property Office (MyIPO).

The licensing bodies are under the control of MyIPO, and where the licensing bodies fail to comply with the requisite code of conduct or the rules established by MyIPO, or fail to act in their agent’s best interest, the declaration given to declare the agency as a licensing body can be revoked as a result.

Synchronisation rights are managed by the rights management bodies/collecting societies (see 6.2 Collecting Society).

Malaysian statute provides for a comprehensive list of exceptions to copyright infringement. This list is based on statute only.

The list of exceptions which apply to all copyright are:

  • fair dealing (which includes research, private study, criticism, review or the reporting of news or current events and accompanied by acknowledgement of the title of work);
  • private and domestic use;
  • use by the government and other organisations;
  • use of work for judicial and legal purposes;
  • artistic work on public display;
  • parody, pastiche and caricature;
  • back-copies of computer programs; and
  • any other exceptions which are not considered damaging to the economic interests of the owner of the copyright.

The CA permits the practice of time-shifting, whereby the private recording of broadcasts for the purpose of watching them at a later time is not an infringement of copyright.

The inclusion or reproduction of any artistic work in a film or broadcast of copyrighted work that can be viewed by the public is not an infringement of copyright.

The CA limits the liabilities of service providers including internet service providers. The limitation of liabilities applies to service providers who carry out the following activities:

  • transmission, routing and provision of connections;
  • system of caching;
  • provision of space on the service provider’s system for the storage of digital materials at the direction of its users; and
  • provision of information location tools.

It is not an infringement to carry out any act restricted by copyright if the act is done by way of parody, pastiche or caricature. However, “parody, pastiche and caricature” are not expressly defined in the CA.

Copyright may interfere with freedom of expression. However, although copyright protection grants exclusivity to the copyright owner, thereby potentially affecting creativity, innovation and freedom of expression, the law provides exceptions to copyright infringement (see 7.1 Fair Use Doctrine/Fair Dealing).

The CA provides for performers’ rights. There are two conditions to be a subject of performers’ rights, which are:

  • The individual must be a “performer,” which includes:

(a) actor;

(b) singer;

(c) musician;

(d) dancer; or

(e) any person who acts, sings, delivers, declaims, plays in, interprets or otherwise performs a performance; and

  • the performer must:

(a) be a citizen or permanent resident of Malaysia; or

(b) not a citizen or permanent resident of Malaysia but whose performance takes place in Malaysia, is incorporated in sound recordings that are protected under the CA, or has not been fixed in a sound recording but is included in a broadcast qualifying for protection under the CA.

There is no specific type of contract to transfer/license/sell neighbouring rights in Malaysia. Parties are free to negotiate the terms of a contract to transfer/license/sell neighbouring rights in Malaysia on a bespoke basis. 

The exceptions to copyright applicable to performers’ rights are:

  • The performer has no right to control the direct or indirect sound recording or an indirect film of a live performance where the sound recording or film was made solely for the following purposes:

(a) private and domestic use of the person who made it;

(b) scientific research;

(c) reporting of news or current affairs;

(d) criticism or review; or

(e) judicial proceeding or the giving of profession advice by a legal practitioner.

  • The performer has no right to control the indirect sound recording or film of a live performance if the sound recording or film was made by or on behalf of:

(a) an educational institution solely for educational purposes of that institution; or

(b) an institution assisting those with a print disability for the purpose of assisting persons with a visual, aural, intellectual and print disability.

  • With respect to the making by a broadcaster authorised to do so of a direct recording for the purpose of making a broadcast.
  • Fraudulent or innocent misrepresentation made to the person who makes a direct or indirect copy whom reasonably believes that the performer has authorised the making of the recording by the person.

The CA provides for two types of infringement, direct and indirect. Direct infringement occurs when a person does, or causes another person to do, without the licence of the copyright owner, an act the doing of which is controlled by copyright.

A copyright is indirectly infringed by any person who, without the consent or licence of the owner of the copyright, carries on commercial dealings in the copyright (eg, imports an article into Malaysia for the purpose of selling, letting for hire, distributing or exhibiting the article in public) when he knows or ought reasonably to know that the making of the article was carried out without the consent or licence of the owner of the copyright.

The defences to copyright infringement, include:

  • fair dealing;
  • private and domestic use;
  • use by government and other organisations;
  • use for judicial and legal purpose;
  • artistic work on public display;
  • parody, pastiche and caricature; and
  • other defences such as use not considered damaging to economic interests of copyright owner.

Copyright infringement is a civil action brought by the copyright owner or his exclusive licensee to enforce his private proprietary right over the copyright work. Thus, the copyright owner may seek legal recourse in the court of law by virtue of a civil suit.

The CA also provides for criminal liability. In the event of an offence as stated in Section 41 of the CA, the copyright owner may make a police report followed by giving information under oath to a magistrate for the authorities to obtain a search and seizure warrant. It is noteworthy that a warrant is not a prerequisite in the event the authorities are satisfied that by reason of delay in obtaining the search warrant, the infringing products may be disposed of.

In the case of Government of Malaysia & Ors v Then See Nyuk & Anor[2018] 4 MLJ 262, the Court of Appeal held that a search warrant issued by the magistrate was “good in law and valid”, fulfilling the requirement of Section 44(1) of the Copyright Act 1987. More importantly, the warrant was “issued pursuant to the magistrate’s criminal jurisdiction”. It was held that the High Court in that instance, which was exercising its civil jurisdiction, could not “go behind the search warrant and question its legality or the manner in which it was obtained”, as only the High Court “exercising its criminal, appellate or revision power under the Courts of Judicature Act 1964” could set aside the warrant.

There are no such formalities before initiating legal proceedings.

Save and except for offences under Section 41 of the CA, which are initiated at the Sessions Court, copyright civil infringement proceedings shall be initiated at the High Court. There is also a specialised IP Court in Kuala Lumpur.

Generally, the necessary parties are the copyright owner and the infringer. However, in the event there is an exclusive licensee, the exclusive licensee may initiate legal proceedings and is also entitled to remedies.

Third parties that fall within the ambit of “service providers” under Section 43B would be exempted from liability.

Service providers are defined as a person who:

  • provides services relating to the access, transmission or routing of data;
  • provides connections for the access, transmission or routing of data;
  • provides online services or network access; or
  • operates facilities for online services or network access.

The CA expressly states that a service provider shall not be treated as having authorised the doing of any act which is an infringement of copyright solely by reason of the service provider having provided a facility which was used by a person to perform the infringing act.

The urgent measures available are, amongst others:

  • interim injunctions;
  • Mareva injunctions;
  • Anton Piller orders; and
  • filing a police report.

Dealing first with the urgent measure in relation to criminal action, any person (usually the copyright owner) may lodge a police report, which then initiates the investigation. The authorities will collect information and then decide whether or not to prosecute the suspected infringer.

For civil action, the considerations the Court will take before granting such relief include, among others:

  • interim injunction:

(a) the plaintiff must prove that there is a serious question to be tried;

(b) the plaintiff must prove that damages may not be adequate to compensate the plaintiff for the injuries suffered due to the infringement; and

(c) the balance of convenience leans towards the granting of the injunction.

  • Mareva injunction

(a) the plaintiff must show that he has a good arguable case;

(b) the plaintiff must show that the defendant has assets in Malaysia; and

(c) the plaintiff must prove that there is a real risk that the defendant will dispose of the assets before judgment is given.

  • Anton Piller order

(a) the plaintiff must prove an extremely strong prima facie case that copyright has been infringed;

(b) the damage, potential or actual, must be very serious; and

(c) the plaintiff must provide clear evidence that the defendant has in his possession incriminating documents, and that there is a real possibility that said incriminating documents may be destroyed.

An expert’s role is to assist the Court in understanding the issues. In Malaysia, they are generally not involved in copyright infringement cases. However, where the case concerns technical questions of art or science (eg, infringement of software), the opinions of an expert may be relevant to the Court.

The owner of the copyright may seek to prohibit the importation of any infringing copies/counterfeits. Such prohibition may be imposed by giving a notice in writing to the controller of copyright requesting action during a specified period. If the controller determines that the application is meritorious, any infringing copies shall be prohibited for the duration of the said period. There is no similar mechanism for parallel imports.

Sanctions (for criminal prosecution) include imprisonment, fine or a combination of both depending on the offence committed.

Depending on the issue, copyright infringement may be initiated by a civil suit (see 9.3 Proceedings and 9.4 Jurisdiction for Proceedings) or criminal prosecution at the discretion of the Attorney General. Parties have no control over criminal prosecution.

There are no special provisions concerning the appellant procedure for copyright proceedings. There are specialised judges in the appellate courts assigned to hear copyright proceedings.

Generally, costs follow the event. In other words, the losing party will be ordered to pay costs to the winning party. This, however, varies from case to case and is at the full discretion of the court, and does not necessarily equate to the amount spent by parties. Generally the costs awarded by the court are less than those incurred by the parties.

While alternative dispute resolution is not compulsory, it is gaining popularity. For example, in Malaysia the court offers mediation, which may be explored by the parties. However, due to the adversarial nature of a copyright infringement, it is more likely to be a dispute resolved in court and not by arbitration.

In December 2019, the Copyright (Amendment) Act 2019 ("the Amendment") was passed in both the Dewan Rakyat and Dewan Negara. The Amendment introduces a new provision, section 59C, to the Copyright Act 1987, which extends the Copyright Tribunal’s jurisdiction to include disputes relating to royalties arising between a licensing body and its members.

However, the Tribunal’s jurisdiction to hear and determine royalty disputes may be excluded by the agreement between the licensing body and the members. The Amendment further provides that an order by the Tribunal on royalties may be in perpetuity or for such period as the Tribunal may determine.

The Amendment expands the jurisdiction of the Tribunal and provides for a specific forum for aggrieved members to raise royalty disputes, ie, before the Tribunal. The Tribunal’s orders are deemed to be an order of a Sessions Court and may be referred to the High Court, where it shall be treated as an appeal. A decision of the High Court shall be final and conclusive, and no such decision may be challenged, appealed against, reviewed, quashed or called in question. Consequently, this may mean that the right of an “appeal” by a member of a licensing body concerning a royalty dispute that originates from the Tribunal may stop at the High Court.

Lee Hishammuddin Allen & Gledhill

Level 6,
Menara 1 Dutamas
Solaris Dutamas, No. 1,
Jalan Dutamas 1
50480
Kuala Lumpur

+603 6208 5888

+603 6201 0122

enquiry@lh-ag.com www.lh-ag.com
Author Business Card

Law and Practice in Malaysia

Authors



Lee Hishammuddin Allen & Gledhill is one of the largest firms in the country, and a full-service law firm housing various practice groups, including corporate; dispute resolution; employment; IP and TMT; shipping; and tax, sales and service tax, and customs. LHAG has more than 130 lawyers, with offices in Kuala Lumpur, Penang and Johor Bahru. The copyright practice is part of its wider IP and TMT department. A seasoned team of copyright, trade mark, industrial design and patent agents, litigators and commercial lawyers work closely with in-house counsel to protect intellectual properties, innovation and creativity. The firm’s clients include top-ranked local conglomerates and multinational companies spanning industries such as IT, e-commerce, telecommunications, biotech, healthcare, entertainment and fast-moving consumer goods. The IP and TMT practice group has a team of lawyers who specialise in copyright law and have assisted clients in enforcing their copyright and pursuing or litigating against infringers, as well as defended clients on alleged copyright infringement.