Malaysia jurisdiction report: The complex interplay between designs and copyright

24-11-2017

Dave Wyatt

Malaysia jurisdiction report: The complex interplay between designs and copyright

koto_feja / iStockphoto.com

A 2015 decision of the Ipoh High Court considered the difficult question of whether copyright can exist in a registered industrial design.

The plaintiff commenced an action against the defendant seeking a declaration that two registered designs owned by the plaintiff, in respect of a water sprinkler and clipper, were protected under the Malaysian Copyright Act 1987. The defendant then took action seeking indemnification from third parties on the ground that the defendant had purchased water sprinklers and clippers that were the subject of the original action from those third parties.

One of the third parties applied to the court for determination of a question of law as a preliminary issue under the rules of court. The question of law was whether the plaintiff was barred by section 7(5) of the Copyright Act from seeking copyright protection for its designs that were registered under the Industrial Designs Act 1996. The action on the preliminary issue was Oh Boon Thiam v Yan Ming Agricultural (Oh Yoke Choon & Anor, third party), hereafter called the Ipoh case.

Section 7(5) of the Copyright Act declares that: “Copyright shall not subsist under this act in any design which is registered under any written law relating to industrial design.”

Since the plaintiff’s designs had been registered under the Industrial Designs Act, it was clear that the plaintiff believed that the drawings of those two designs were indeed of “industrial designs”. This position was further confirmed by the fact that the registrar of industrial designs had seen fit to accept the designs for registration. Therefore, determination of the section 7(5) question in favour of the defendants and third parties rendered the plaintiff’s action for copyright unsustainable.

While the Ipoh case may seem to be black and white at first glance, the underlying legal provisions that determine the interplay of copyright and industrial design registration law in Malaysia are undoubtedly complex. The most famous local case was Peko Wallsend Operations & Ors v Linatex Process Rubber (1993).

In that case the High Court had determined, under the provisions of the Copyright Act in force at the time, that a technical drawing was entitled to copyright protection as an artistic work irrespective of artistic quality. Moreover, the copyright was infringed by making an article according to the drawing, and by copying such an article.

Thus, reverse-engineering of an article was actionable under copyright law, regardless of whether the design of the article was protected by way of a registered design. As a result, copyright law at the time provided protection for 3D products that was seemingly just as powerful and of even longer duration than was available through design registration.

When Malaysia’s Industrial Designs Act 1996 came into force, the Copyright Act 1987 was simultaneously amended to effectively remove industrial designs from the regime of copyright protection. Section 7(5) was plainly intended to deny cumulative protection under both industrial design and copyright law. Furthermore, under the newly-added section 13A there could be no infringement of any copyright in a design document (such as a drawing) or model by making an article according to the design or copying such an article.

This exception to copyright infringement is tied to making articles. It does not impugn the existence of any copyright in a design drawing. Thus, copyright in the drawing may be infringed by reproducing the drawing, for example in an advertisement, instruction manual and the like, but is not infringed by making articles to the design. Protecting the latter was essentially reserved to the realm of registered design law.

Avoidance of doubt

If the function of section 13A is to draw a line between what is protectable through copyright and what is protectable through design registration, in this author’s view the real purpose of section 7(5) is less certain. The “design” mentioned in that provision is not defined other than implicitly as one protectable under industrial design law.

However, the exclusion of a “design” from copyright protection seems to be unnecessary when one considers that section 7(1) already sets out the categories of works eligible for copyright and a “design” (whatever that means) is not among them. Presumably, section 7(5) was added as an avoidance of doubt provision rather than out of legal necessity.

Section 7(6) elaborates that the phrase “any written law relating to industrial design” includes the former laws under which the protection afforded by a UK registered design extended to Malaysia. This seems to reinforce the policy behind section 7(5) as an avoidance of doubt provision. It covers designs registered both before and after the Industrial Designs Act 1996 came into force.

Dave Wyatt is executive director and head of patent and industrial design at Henry Goh. He can be contacted at: dave@henrygoh.com

Malaysia jurisdiction report, designs, copyright, Henry Goh, Ipoh High Court

WIPR