The Growing Influence of Digital Platforms
As the usage of Digital Platforms such as Facebook, software and applications (“apps”) is growing immensely, businesses are starting to use digital platforms to market and sell their products. This naturally will also lead to wrongdoers deliberately copyrighting what has been established by the mark holder to advertise and sell their products.
It is therefore important for copyright holders to know their rights especially since they may have an action in copyright infringement against the wrongdoers.
What is copyright?
Copyright is essentially the legal means of protecting an author’s work. The purpose of copyright law is to protect the hard labour/effort/innovation of the author who created the works.
Copyright law in Malaysia is governed under the Copyrights Act 1987.
What are the rights of a copyright holder?
Section 13 of the Copyright Act 1987 states what rights does a copyright owner have which include but not limited to the following:
- the reproduction in any material form;
- the communication to the public;
- the performance, showing or playing to the public;
- the distribution of copies to the public by sale or other transfer of ownership; and
- the commercial rental to the public.
Elements of copyright
Section 7 of the Copyright Act 1987 establishes the three elements that are required for copyright protection which are:
- The work has been written down, recorded or otherwise reduced to material form; and
- It belongs to one of the categories of the type of works.
It is important to know that for this element, the work must have originated from author and some effort must have gone into the creation of the work. This means that not allworks have to be 100% original, i.e. completely derived from the brain of the author however, some effort has to be shown that the work done is sufficiently original.
For what amounts to being original for each copyright work, it will be determined according to a case-to-case basis.
The work must be recorded
The concept of this element is simple. To show that work has been done, it has to be recorded down in some form in order for it to be protected by copyright law.
A simple example of this would be where an author has created a poem and such poem would have to be recorded down anywhere for example a piece of paper, in order for it to be eligible to be protected under copyright law.
Types of works
Section 7 of the Copyright Act 1987 establishes the category of works which are covered under copyright protection which are as follows:
A) Literary works;
B) Musical works;
C) Artistic works;
E) Sound recordings; and
Authorship and ownership
Authorship will initially vest with the author who created the works. However, for ownership, in some cases even though authorship lies with the author, it may not necessarily mean that ownership will lie with the author.
This is especially so in cases where the author is commissioned by someone to do the work, if this is the case, then ownership will vest with the person who commissioned the work following the case of Motordata Research Consortium Sdn Bhd v Ahmad Sharil bin Abdullah & Ors MLJU 1187.
Copyright infringement in Digital Platforms
Section 36 of the Copyright Act 1987 states that “Copyright is infringed by any person who does, or causes any other person to do, without the licence of the owner of the copyright, an act the doing of which is controlled by copyright under this Act.”
It is important to note that Section 36 of the Copyright Act 1987 provides 2 bases for copyright infringement which are:
(a)when a person (X) does an act which is controlled by copyright under CA (first limb); and
(b)when a person causes X to do an act which is controlled by copyright under CA (second limb).
(Source: Sykt Faiza Sdn Bhd & Anor v Faiz Rice Sdn Bhd & Anor and another suit [2019} 7 MLJ175)
In the case of Sykt Faiza Sdn Bhd & Anor v Faiz Rice Sdn Bhd & Anor and another suit [2019} 7 MLJ175, the court has established three elements to prove copyright infringement which are:
i)There is sufficient similarity between the Plaintiffs work and the infringed work; (the works must have been sufficiently similar)
ii)There is a causal connection between the copyrighted work and impugned work (the impugned work must have been copied from the copyrighted work); and
iii)What has been copied must amount to constitute a substantial part of the original work. (Determined by a case-to-case basis).
Remedies for Infringement of Copyright in Digital Platforms
The court applies a flexible approach in terms of its reliefs for a copyright infringement action.
The Court has granted the following remedies over the years:
A) Exemplary damages (damagesgiven to punish the defendant);
B) Additional damages (that the court considers appropriate in the circumstances);
C) Account of profits (defendant gives the profitsthat they have earned);
D) Statutory Damages(not more than twenty-five thousand ringgit for each work but not more than five hundred thousandringgit in the aggregate); and
E) Injunction (Either a mandatory injunction (compel the Defendant to remove their infringed acts or a prohibitory injunction to prevent the Defendant from copying the Plaintiffs product)
In the case of Juris Technologies Sdn Bhd & Anor v Foo Tiang Sin & Ors  MLJU 157, the Defendants worked for the Plaintiffs Company. They secretly used confidential information (the source code by the Plaintiffs Company) and built a new software to compete against the Plaintiffs Company.
When the new software was completed, the Defendants resigned accordingly and started competing with Plaintiff. The Plaintiffs then commenced an action against the Defendants for a copyright infringement action for using the confidential information.
The Court decided that the Defendants had committed copyright infringement on the Plaintiffs and awarded the Plaintiffs the remedies of RM 600,000.00 as a global sum of Statutory Damages, Additional Damages, exemplary and punitive damages to be paid by the Defendants to the Plaintiffs(Global Sum), as well as an account of profits.
It is important that in this case, the Court held that as the Defendants were trusted with the confidential information thus, they were to be subjected to a higher level of duty making their copyright infringement an even more serious infringement.
Know your rights
As the usage of digital platforms such as Facebook and Instagram is growing immensely, it is, therefore, advisable for business owners to know their rights fully as to what cause of action they can employ if their copyright has been infringed.
The usage of digital platforms such as social media as well as software and applications (“apps”) to promote businesses is increasingly popular now for businesses to market their products while movement control order is still ongoing in Malaysia.
Copyright holders have the right to commence an action of infringement of copyright against a person who has infringed their copyright on digital platforms as seen in the case of Juris Technologies.
The courts apply a flexible approach to the remedies of copyright infringement and therefore a large variety of remedies such as the account of profits and exemplary damages are available to copyright holders.
Written by Esther Ong:
- Legal Council and Board of Council Member in Federation of Malaysian BusinessAssociations (FMBA) 2022-2023
- Board of Council Member in ASEAN Retailers and Franchise Federation 2022 – 2023
- Finalist Woman Lawyerof the Year 2022 (ALB Award)
- LexFalcon Awardee 2022
- Founder of International Entrepreneur Network (IEN)
- President of YayasanWholistic Family Association (YWFA)
- Senior Partnerof Messrs. Esther Ong Tengku Saiful & Sree (ETS) [www.lawyermalaysia.com]