Copyright 2021

Last Updated February 17, 2021

Malaysia

Law and Practice

Authors



Gan Partnership is a leading law firm specialising in dispute resolution, alternative dispute resolution and intellectual property (IP). Known for its solid strength in dispute resolution, this internationally recognised firm provides clients with an arsenal, ranging from senior counsel with over 25 years’ experience to aggressive junior and modern litigators. Following the recent addition of two partners with over three decades' experience between them and the admission of a new partner already in 2021, the firm has doubled its partner team in the span of a year and aims to expand even further. The IP team is known for litigation and enforcement, registration and prosecution, commercialisation, strategy and branding, franchising and licensing, privacy and data protection, confidential information, entertainment, gaming, advertising and media, technology and telecommunications.

The Copyright Act 1987 (CA) governs copyright in Malaysia. The CA may be accessed online at the official website of the Intellectual Property Corporation of Malaysia (IPCM).

In addition to the CA, the following regulations made under the CA and case law form the principal sources of law that regulate copyright:

  • Copyright (Notice of Prohibition of Import) Regulations 1987; 
  • Copyright (Public Libraries and Educational Scientific or Professional Institutions) Order 1987;
  • Copyright (Application to Other Countries) Regulations 1990;
  • Copyright (Licensing Body) Regulations 2012;
  • Copyright (Voluntary Notification) Regulations 2012; and
  • Copyright (Copyright Tribunal) Regulations 2012. 

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

Malaysia is also a signatory to the following international treaties related to intellectual property (in chronological order):

  • Paris Convention for the Protection of Industrial Property (acceded: 23 June 1988; in force: 1 January 1989);
  • Convention Establishing the World Intellectual Property Organisation (acceded: 1 October 1988; in force: 1 January 1989);
  • Patent Cooperation Treaty (PCT) (acceded: 16 May 2006; in force: 16 August 2006);
  • Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (acceded: 28 June 2007; in force: 28 September 2007);
  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (acceded: 28 June 2007; in force: 28 September 2007);
  • 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); and
  • Madrid Protocol (acceded: 27 September 2019; in force: 27 December 2019).

While there is currently no system of copyright registration in Malaysia, copyright holders are advised to make a voluntary notification to the Controller of Copyright (“Controller”), IPCM with a prescribed fee (Section 26A, CA). A Register of Copyright (“Register”) is created which contains all the particulars relating to the copyright. The Register, a public document available for examination, notifies the public of the existence of copyright in a work. The certified true extracts of the Register are prima facie evidence of the particulars in the Register and are admissible in evidence in all High Court proceedings.

After Malaysia acceded to the Berne Convention, the Copyright (Application to Other Countries) Regulations 1990 were enforced on 1 October 1990 in line with the principle of national treatment codified in Article 5(1) of the Berne Convention. 

Under this principle, authors who are nationals or residents of a Berne Union country will enjoy the same copyright protection conferred by another Berne Union country on its nationals. The copyright protection is automatic and not conditional upon any formalities, such as registration. Thus, all works first published in any of the 179 Berne signatory countries are eligible for copyright protection in Malaysia, irrespective of whether they are published in Malaysia. 

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 ruled that as Malaysia is a member of the Berne Convention, under the principle of national treatment, Japanese nationals have the same copyright protection as nationals of the other 179 Berne signatory countries.

Categories of Work

The qualifying requirements for a work to benefit from copyright protection vary according to the categories of work. 

Literary, musical or artistic work 

  • The work must be original (Section 7(3)(a), CA); and
  • the author must show that sufficient effort has been expended to make the work original in character; and
  • the work must be written down, recorded or otherwise reduced to material form (Section 7(3)(b), CA); and
  • 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 Berne Convention (Section 10(1), CA); or
  • the work must be first published or made in Malaysia or a country which is a member of the Berne Convention (Section 10(2) and (3), CA).

Films

  • The work (a sequence of visual images capable of being shown as a moving picture) must be affixed in some material form (Section 3, CA); and
  • 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 Berne Convention (Section 10(1), CA); or
  • the work must be first published or made in Malaysia or a country which is a member of the Berne Convention (Section 10(2) and (3), CA).

Sound recordings

  • The work (a sequence of audible sounds or representation of sounds) must be affixed in some material form; and
  • 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 Berne Convention (Section 10(1), CA); or
  • the work must be first published or made in Malaysia or a country which is a member of the Berne Convention (Section 10 (2) and (3), CA).

Broadcasts

  • The work (transmission of images, sounds or other information) must be transmitted to or received by the general public; and
  • 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 Berne Convention (Section 10(1), CA); or
  • the work must be transmitted from Malaysia or from a country that is a member of the Berne Convention (Section 10(2) & (3), CA). 

Published editions of works

  • The typographical arrangement of a published edition of a literary, artistic or musical work must be a new edition, which does not reproduce the typographical arrangement of a previous edition; and
  • the publisher of the edition must be a citizen or a permanent resident or a corporation incorporated in Malaysia or the United Kingdom; or
  • the first publication of the edition must have taken place in Malaysia (Section 9, CA).

A work which is qualified for copyright protection under the CA is initially automatically vested in the author, upon the fulfilment of the conditions in 2.1 Copyright Protection: Essential Elements (Section 26, CA).

In Malaysia, the owner of a copyright work, an assignee or licensee of the copyright may make a voluntary notification to the Controller, IPCM with a prescribed fee (Section 26A, CA). A Register is created which contains all the particulars relating to the copyright. The Register, a public document available for examination, notifies the public of the existence of copyright in a work. The certified true extracts of the Register are prima facie evidence of the particulars in the Register and are admissible in evidence in all High Court proceedings.

Section 6 of the CA states that no copyright shall subsist other than by virtue of the CA, which provides a comprehensive list. The broad categories of copyrightable works under the CA are:

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

Literary Works

These include:

  • novels, stories, books, pamphlets, manuscripts, poetry and other writings;
  • plays, dramas, stage directions, film scenarios, broadcasting scripts, choreographic works and pantomimes;
  • treatises, histories, biographies, essays and articles;
  • encyclopaedias, 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.

The scope of literary work does not cover official legislative or regulatory texts of the government or statutory bodies, judicial decisions, political speeches and political debates, speeches delivered in the course of legal proceedings, and the official translation thereof. 

Musical Works

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

Artistic Works

This 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.

“Artistic works” does not cover a layout-design within the meaning of the Layout-Designs of Integrated Circuits Act 2000.

All graphic works, regardless of their artistic quality – including technical and engineering drawings – are entitled to copyright (Peko Wallsend Operations Ltd & Ors v Linatex Process Rubber Sdn Bhd and another (1993) 1 MLJ 225; Dura-Mine Sdn Bhd v Elster Metering Ltd & Anor (2015) 3 MLJ 1). The Malaysian courts have also ruled that three-dimensional work produced from two-dimensional drawings is also eligible for copyright protection in Malaysia (DNC Asiatic Holdings Sdn Bhd & 2 Ors v Honda Giken Kogyo Kabushiki Kaisha (2019) AMEJ 1514). 

Films

“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 the 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 shown.

It also includes the sounds embedded in any soundtrack associated with a film.

Sound Recordings

“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.

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.

Derivative Works

The following derivative works are protected as original works:

  • translations, adaptations, arrangements and other transformations of copyrightable works; and 
  • collections of copyrightable works, or compilations of mere data whether in machine-readable or other form, which constitute intellectual creation by reason of the selection and arrangement of their contents (Section 8, CA).

“Computer program” is statutorily defined as “an expression, in any language, code or notation, of a set of instructions (whether with or without related information) intended to cause a device having an information processing capability to perform a particular function either directly or after either or both of the following: 

  • conversion to another language, code or notation; and/or
  • reproduction in a different material form.”

Although the definition of “computer program”, as part of “literary works” does not refer to “software” explicitly, decided cases have shown that the definition of “computer program” is wide enough to encompass “software”. Hence, software is eligible for copyright protection (Alfa Laval (M) Sdn Bhd v Ng Ah Hai & 2 Ors (2008) 5 MLJ 344). The protection covers both its source code, object code (binary code) and any set of instructions in whatever converted form, which could be read by a computer (Petraware Solutions Sdn Bhd v Readsoft Aktiebolag & Anor (2014) 1 AMCR 112; Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors (1997) 2 MLJ 429). Therefore, software is copyrightable as “literary works” and the same requirements would apply.

The Malaysian courts further extended the copyright protection of a computer program to non-literal elements, such as the underlying structure on which the computer program operates, and the design elements. The user interface and the design of the computer screen display are protected as artistic works under the CA and the same qualifying criteria would apply (Onestop Software Solutions (M) Sdn Bhd & Anor v Masteritec Sdn Bhd & 2 Ors (2009) 8 MLJ 528). 

However, the function of a computer program is not copyrightable (Chuah Aik King (sole proprietor of Syarikat B Three Technology) v Keydonesoft Sdn Bhd (2019) 8 MLJ 515; Flexsoft Technology Sdn Bhd v First E-Formatics Sdn Bhd & 4 Ors (2020) MLJU 369).

While the CA does not make an express reference to a “database” being copyrightable, a database may fall within the category of literary works under the heading of “tables and compilations”. Additionally, a database may also be deemed a “derivative work” as a collection of work or compilation of "mere data”, both of which are copyrightable as literary works and the same requirements would apply. See 2.3 Categories of Copyrightable Works.

Subject to the database and information therein, it may also be protected by the common law on confidential information.

In Malaysia, industrial designs are protected by the Industrial Designs Act 1996.

The protection does not cumulate, as the CA stipulates that a copyright shall not subsist in any design which is registered under any written law relating to industrial design (Section 7(5) and (7), CA). 

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.

See 2.1 Copyright Protection: Essential Elements.

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

According to Section 3 of the CA, the “author” of a work means different things in different contexts:

  • in relation to literary works, it means the writer or the maker of the works;
  • in relation to musical works, it means the composer;
  • in relation to artistic works other than photographs, it means the artist;
  • in relation to photographs, it means the person who arranged the taking of the photographs;
  • in relation to films or sound recordings, it means the person who arranged the making of the film or recording;
  • in relation to broadcasts transmitted from within any country, it means:
    1. the person transmitting the programme, if they have responsibility for the selection of its contents; or
    2. any person providing the programme who makes the necessary arrangements for its transmission with the person transmitting it; and
  • in relation to any other cases, it means the person by whom the work was made.

By virtue of Section 26(4) of the CA, 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 a “work of joint ownership” as 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(s). 

There are three prerequisites for a work to be regarded as a “work of joint authorship”:

  • 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 their contribution original in character.

Section 26(4)(b) of the CA provides a rebuttable presumption that the publisher whose name is indicated in anonymous or pseudonymous 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. 

Section 26(4)(c) of the CA addresses the copyright of “orphan works”. For unpublished work where the identity of the author is unknown, but where there is every reason to presume that they are 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 states 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 collective works exists 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 (Section 13, CA). 

Pursuant to Section 10 of the CA, copyright subsists in every copyrightable work by a “qualified person”, who is:

  • an individual who is a citizen of or permanent resident in Malaysia; or
  • a body corporate established in Malaysia and constituted or vested with legal personality under the laws of Malaysia. 

Wong Kian Kheong JC (as his lordship was then) in Aktif Perunding Sdn Bhd v ZNVA & Associates Sdn Bhd (2017) 10 CLJ 226 held that copyright subsisted in the mechanical and electrical engineering drawings authored by a “qualified person”, a private limited company incorporated under the Companies Act 1965 (now Companies Act 2016). However, 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. Hence, a body corporate does not have moral rights.

Although Section 26(1) of the CA states that the first owner of the copyright is the author, Malaysia has a work-for-hire doctrine.

  • 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 (Section 26(2), CA).
  • Copyright subsisting in works of government, government organisations or international bodies; or works made under the direction or control of the government, government organisations or international bodies shall vest in these relevant bodies and not in the author (Section 11, CA).

There is no specific standard to be met by the parties in the CA.

Work produced at universities is not expressly provided for under the CA. In practice, copyright in student-university relationships may be governed by contract.

Section 13(1) of the CA provides that a copyright owner shall have exclusive rights, including:

  • rights of reproduction;
  • rights of communication to the public;
  • rights to perform, show or play to the public;
  • rights of distribution; and
  • rights of commercial rental.

There is no provision in the CA for non-consensual termination and/or recapture of copyrights by an author, as copyright automatically vests in the author of a copyrightable work. See 2.1 Copyright Protection: Essential Elements.

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

For published literary, musical or artistic works, the duration of the copyright is the life of the author plus 50 years after their death. For works of joint authorship, the computation of 50 years begins from the date of the death of the last surviving author (Section 17(1) and (4), CA).

For unpublished literary, musical or artistic works, the copyright shall continue to subsist until the expiry of 50 years computed from the beginning of the next calendar year following the year in which the work was first published (Section 17(2), CA). 

For literary, musical or artistic works published anonymously or under a pseudonym, the duration of the copyright is 50 years from the beginning of the calendar year following the year in which the work was first published, or first made available to the public, whichever is the latest. If the identity of the author becomes known, the duration shall be calculated in accordance with published work (Section 17(3), CA). 

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 next calendar year following the year in which the work was first published (Sections 18, 19, 20, 22 and 23, CA).

Economic rights may be transferable by assignment, testamentary disposition, or by operation of law, as movable property under Section 27 of the CA. No assignment of copyright or licence to do an act, the doing of which is controlled by copyright, shall have effect unless it is in writing. 

The assignment or testamentary disposition may be limited to:

  • certain acts which the copyright owner has the right to control;
  • certain parts of the period of the copyright; or
  • a specified country or other geographical area. 

For co-ownership, the assignment or licence by one copyright owner will be effective as if the assignment is also granted by the co-owners, subject to any agreement or financial arrangement between the co-owners. 

The CA suggests that economic rights are transmissible as they can be exercised upon the author’s death, for a period of 50 years by their heirs (Section 27, CA).

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 years old. The CA and case laws are silent on this matter.

By virtue of Section 13(1)(A) of the CA, a copyright owner has the right to control only the first distribution of their work to the public.

There are two types of moral rights protected 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 author; 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.

The High Court in Aktif Perunding (supra) held that moral rights pursuant to Section 25(2)(a) and (b) would apply to drawings even if they are not a "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 CA does not expressly provide for the duration of moral rights. 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 Berne Convention under Article 6 bis, which provides that the moral rights of the author shall be maintained after their death, at least until the expiry of copyright.

The alienability of moral rights which are personal to the author remains unclear, as the legislation is silent on the requirements. In Syed Admad bin Jamal v Dato Bandar Kuala Lumpur (2011) 2 CLJ 569, Azahar Mohamed J (as his lordship was then) noted that moral rights are alienable rights, in obiter. If modifications are required by a licensee to commercially exploit the work, this should at the very least be in writing when applying for a copyright transfer or licence.

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

The prohibition against circumvention of technological protection measures was included in 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. Two acts are prohibited:

  • 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 (Section 36A(1), CA); and
  • commercial dealings relating to circumvention devices are prohibited (Section 36A(3)).

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 inter-operability 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 –
    1. law enforcement;
    2. national security; or
    3. performing a statutory function; or
  • in the case of 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 to deal with works knowing that electronic rights management information has been removed or altered without authority.

In 2012, a new Section 36B (based on Article 12 of the WIPO Copyright Treaty) was inserted, which prohibits the doing of acts mentioned in the provision, but does not regard it as copyright infringement. This new section is argued by well-respected and renowned Malaysian academicians, Professor Datuk Dr Khaw Lake Tee and Professor 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 are 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, and not more than MYR500,000 in the aggregate; or
  • any other order as the court deems fit.

It is noteworthy that where 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 acts; and
  • all other relevant matters.

See 6.2 Collecting Society.

The establishment of a single licensing body called Music Rights Malaysia Berhad (MRM) was first proposed by the Ministry of Domestic Trade, Cooperation and Consumerism in December 2016. 

Effective 1 January 2017, MRM was the sole collecting society, while the present four licensing bodies focus on distributing the monies collected among their members.

MRM was the sole licensing body authorised by the Controller and the Ministry of Domestic Trade, Cooperation and Consumerism to carry out music licence issuance and fee collection activities in Malaysia on behalf of the members of the following bodies:

  • Music Authors’ Copyright Protection Berhad (MACP);
  • Public Performance Malaysia Sdn Bhd (PPM);
  • Recording Performers Malaysia Berhad (RPM); and
  • Performers' 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 pursuant to Part IVA of the CA by the IPCM. The licensing bodies are under the control of the IPCM, and where the licensing bodies fail to comply with the requisite code of conduct or the rules made by the IPCM, or fail to act in their agent’s best interest, the declaration as a licensing body can be revoked by the IPCM.

It was reported in April 2019, that PRISM was terminated and is no longer allowed to collect and distribute royalties.

In July 2020, the Controller of Copyright revoked the declaration given to MRM to declare the agency as a licensing body based on Section 27A(6)(a) of the CA on the basis that MRM did not function adequately as a licensing body.

Currently, there appear to be three licensing bodies – MACP, PPM and RPM.

Synchronisation rights are managed by the rights management bodies/collecting societies as discussed in 6.2 Collecting Society.

The CA provides a comprehensive list of exceptions to copyright infringement. The statutory exceptions for copyright include:

  • fair dealing (which includes research, private study, criticism, review or the reporting of news or current events, accompanied by acknowledgement of the title of the work);
  • private and domestic use;
  • use by the government and other organisations;
  • use of a work for judicial and legal purposes;
  • artistic use of a 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 does not constitute an infringement of copyright (Section 13(2), CA). 

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 (Section 13(2), CA).

Although copyright protection grants exclusivity to the author or copyright owner, thereby potentially or indirectly affecting creativity, innovation and freedom of expression, the CA provides several exceptions to copyright infringement (see7.1 Fair Use Doctrine/Fair Dealing). 

Section 10A of the CA provides for performers’ rights. 

For protection of performers' rights, two conditions need to be met: 

  • the individual must be a “performer” within the meaning of Section 3 of the CA, which includes –
    1. actor;
    2. singer;
    3. musician;
    4. dancer; or
    5. any person who acts, sings, delivers, declaims, plays in, interprets or otherwise performs a performance; and
  • the performer must –
    1. be a citizen or permanent resident of Malaysia; or
    2. if not a citizen or permanent resident of Malaysia, their performance must –
      1. take place in Malaysia;
      2. be incorporated in sound recordings that are protected under the CA; or
      3. if not fixed in a sound recording, be included in a broadcast qualifying for protection under the CA.

The CA does not provide for specific types 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, as provided in Section 16A of the CA, are:

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

  • the private and domestic use of the person who made it;
  • scientific research;
  • reporting of news or current affairs;
  • criticism or review; or
  • judicial proceedings or the giving of professional 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 (including a copy of such recording) was made by or on behalf of:

  • an educational institution solely for the educational purposes of that institution; or
  • an institution assisting persons with a visual, aural, intellectual and/or print disability.

With respect to the making by a broadcaster authorised to do so of a direct recording (including a copy of such recording) for the purpose of making a broadcast.

Fraudulent or innocent misrepresentation made to a person who makes a direct or indirect copy and who reasonably believes that the performer has authorised the making of the recording (including a copy of such recording) by that person.

The CA recognises two types of infringement, ie, direct and indirect. There will be infringement only if the alleged infringing act takes place in Malaysia as the exclusive rights owned by the copyright owner pursuant to Section 13(1) of the CA are limited to controlling the performance of the acts in Malaysia. See 4.1 Economic Rights of the Copyright Owner.

Direct infringement occurs when a person performs, or causes another person to perform, an act, the performance 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 the person 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 provided by the CA for 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 the economic interests of the copyright owner.

Copyright infringement is a civil action brought by a copyright owner or their exclusive licensee to enforce their private proprietary right over the copyright work. Thus, the copyright owner may institute a legal proceeding before the High Court for legal recourse or remedies. There are no formalities provided in the CA, before initiating legal proceedings.

Section 41 of the CA also provides for criminal liability for certain offences relating to copyrighted work: 

  • making, for sale or hire, any infringing copy;
  • selling, letting for hire or by way of trade, exposing or offering for sale or hire any infringing copy; 
  • distributing infringing copies; 
  • having in their possession, custody or control any infringing copy, other than for private and domestic use; 
  • by way of trade, exhibiting any infringing copy in public; 
  • importing an infringing copy into Malaysia, other than for their private and domestic use; 
  • making or having in their possession any contrivance used or intended to be used for the purposes of making infringing copies; 
  • circumventing or causing or authorising the circumvention of any effective technological measures referred to in subsection 36A(1); 
  • manufacturing, importing or selling any technology or device for the purpose of circumvention of technological protection measures; 
  • removing or altering any electronic rights management information without authority; or 
  • distributing, importing for distribution or communicating to the public, without authority, works or copies of works in respect of which electronic rights management information has been removed or altered without authority. 

A copyright owner may lodge 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 that the authorities are satisfied that by reason of delay in obtaining the search warrant, the infringing products may be disposed of.

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

In general, the aggrieved copyright owner and the infringer are parties to infringement proceedings. However, an exclusive licensee may also initiate legal proceedings and seek remedies. 

Third parties that fall within the scope of “service providers” in Section 43B of the CA are 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 provides that a service provider shall not be treated as having authorised the performance 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, among others:

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

Criminal Action

Dealing first with the urgent measure in relation to a 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.

Civil Action

Interim injunction

The High Court will consider granting this if, among other things:

  • the plaintiff can prove that there is a serious question to be tried;
  • the plaintiff can prove that damages may not be adequate to compensate the plaintiff for the injuries suffered due to the infringement; and
  • the balance of convenience leans towards granting the injunction.

Mareva injunction

The High Court will consider granting this if, among other things:

  • the plaintiff can show that they have a good arguable case;
  • the plaintiff can show that the defendant has assets in Malaysia; and
  • the plaintiff can prove that there is a real risk that the defendant will dispose of the assets before judgment is given. 

Anton Piller order

The High Court will consider granting this if, among other things:

  • the plaintiff can prove an extremely strong prima facie case that copyright has been infringed;
  • the damage, potential or actual, is very serious; and
  • the plaintiff can provide clear evidence that the defendant has in their 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, by giving a written notice to the Controller requesting action during a specified period. If the Controller determines that the application has merit, any infringing copies will 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. 

Subject to the nature of the issue, copyright infringement may be initiated by a civil suit (see9.3 Proceedings Available to the Copyright Holder and 9.4 Jurisdiction for Copyright Proceedings) or criminal prosecution at the discretion of the Attorney General. Parties have no control over criminal prosecution. 

There are no special evidential rules or civil procedures concerning the appellant procedure for copyright proceedings. There are specialised judges in the appellate courts who are 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, is at the full discretion of the court, and does not necessarily equate to the amount spent by the 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.

The Copyright (Amendment) Act 2020 ("the Amendment"), which took effect on 1 July 2020, has introduced a new Section 59C to the Copyright Act 1987. Section 59C 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 order is 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 is final and conclusive, and no such decision may be challenged, appealed against, reviewed, quashed or called into question. Consequently, this means that the right of “appeal” by a member of a licensing body concerning a royalty dispute that originates from the Tribunal will stop at the High Court.

Gan Partnership

D-32-02, Menara SUEZCAP 1
KL Gateway
2, Jalan Kerinchi
59200 Kuala Lumpur
Malaysia

+603 7931 7060

+603 7931 8063

bahari@ganlaw.my www.ganlaw.my
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Law and Practice

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Gan Partnership is a leading law firm specialising in dispute resolution, alternative dispute resolution and intellectual property (IP). Known for its solid strength in dispute resolution, this internationally recognised firm provides clients with an arsenal, ranging from senior counsel with over 25 years’ experience to aggressive junior and modern litigators. Following the recent addition of two partners with over three decades' experience between them and the admission of a new partner already in 2021, the firm has doubled its partner team in the span of a year and aims to expand even further. The IP team is known for litigation and enforcement, registration and prosecution, commercialisation, strategy and branding, franchising and licensing, privacy and data protection, confidential information, entertainment, gaming, advertising and media, technology and telecommunications.

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