TOPIC :

SUBJECT MATTER OF COPYRIGHT

PROTECTION
SUBSISTENCE OF COPYRIGHT

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“I own all the characters I copyrighted, thanks to the
Writers Guild, so nobody can do anything without
me. The way it works is: If the copyright owners
instigate a project, like the movie, then I get a fee as
copyright creator. If I instigate a project, like the
musical, I pay a percentage to the copyright
owners.” - Sherwood Charles Schwartz

- Sherwood Charles Schwartz was an American

television producer. He worked on radio shows in
the 1940s, and created the television series
Gilligan's Island on CBS and The Brady Bunch on
ABC. On March 7, 2008, Schwartz, at the time still
active in his 90s, was honored with a star on the
Hollywood Walk of Fame. That same year, Schwartz
was also inducted into the Television Hall of Fame.

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 Copyright….
• Exclusivity….
• Freedom to use…..

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 Introduction
• Copyright law is a branch of IP law that protects the
proprietary rights of authors in relation to their
copyrighted works.
• The rationale for protection:
 to encourage progress in the arts and science for the
benefit of the public;
 to secure a fair return for copyright creators of works
so as to ensure continued copyright creativity.
• Protect: economics, moral and neighbouring rights.

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 Copyright Act 1987
• The Copyright Act of 1987 governs copyright
protection in Malaysia and provides comprehensive
protection for copyrightable works.
• The act outlines the nature of works eligible for
copyright, the scope of protection and the manner in
which the protection is accorded.

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 What is Copyright?
• Copyright protects a variety of works, including i.e
literary works, artistic works, musical works, sound
recordings, films and broadcasts.
• Copyright law is intellectual property in creative
works, such as books, music, movies and
presentations.
 The “Happy Birthday” song was copyrighted in 1935.
Until 2030, royalties must be paid if it is publicly
performed (Mathew Devlin, US Attorney’s Office).

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 …What is Copyright?
• Copyright protect works of authorship, composition
or artistry.
• Copyright covers backs, sculptures, paintings or
photographs, computer programs, architectural
works, movies and records, musical compositions,
etc. In the case of musical recordings, the copyright
may extend to the music itself (tune and lyrics) and
the recording of the performance.

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 Basic Concepts:
(a)The Idea/Expression Dichotomy
• The principle: Copyright PROTECTS the expression and NOT the underlying
idea or concept.
• S.7(2A) of the CA 1987: copyright protection shall not extend to any idea,
procedure, method of operation or mathematical concept as such.
 Similar provisions: Art 2 WIPO copyright Treaty and Art 9 (2) TRIPS 1994
• US case: Baker v Seldon (1879) 101 US 99
Charles Selden, the testator of the complainant in this case, in the year
1859 took the requisite steps for obtaining the copyright of a book,
entitled 'Selden's Condensed Ledger, or Book-keeping Simplified,' the
object of which was to exhibit and explain a peculiar system of book-
keeping. In 1860 and 1861, he took the copyright of several other books,
containing additions to and improvements upon the said system. The bill
of complaint was filed against the defendant, Baker, for an alleged
infringement of these copyrights. The latter, in his answer, denied that
Selden was the author or designer of the books, and denied the
infringement charged, and contends on the argument that the matter
alleged to be infringed is not a lawful subject of copyright.

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 Basic Concepts:
(a)The Idea/Expression Dichotomy
• UK case: Peterson J in Uni of London Press v. Uni Tutorial Press [1916] 2 Ch
601.
It was expressed that the originality requirement was concerned
with the expression of the thought or idea. The amount of skill and
judgement that has been used by the appellant is far from sufficient in
order for it to be seen as an original work.
• Malaysian case: Saleha Hussin v Ab Wahid Nasir & Yang Lain [2004] 2 CLJ
204.
Plaintiff claimed that defendants had infringed her copyright in script
written by her for a tv mini series. Based on the similarities (plots,
characters, the story treatment, and the usage of certain word in the
dialogue) it was held that defendant had infringed the plaintiff’s
copyright.
• For song, minimum number of notes to be copyrighted? It's 8. Stephen
Schwartz speak on writing the music for the hit Broadway
musical Wicked on how he would borrow some tunes from The Wizard of
Oz, but only 7 notes, because that's the limit to avoid copyright issues.

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 Basic Concepts:
(a) The Idea/Expression Dichotomy
• Lord Hoffman of the HOL in Designers Guilt Ltd v Russell Williams
(Textiles) Ltd. [2001] FSR 113 at 116.
It was alleged that the song “Where are you” (WAY) was a reproduction of
the song “Where are you now” (WAYN). The judge ruled that the case in
relation to the literary work relied on four elements, namely the title, the
works of the hook line, certain other lines and the general message and
story of the lyrics.
 No copyright in idea
 Certain expression of ideas are not protected.
• See also Pritchard J comment in Plix Products Ltd v Frank M Winstone
(Merchants) & Ors [1986] FSR 63 at 92.
• In Mazer v Stein, 347 US 201, 217 (1954), the Supreme Court stated;
“Unlike a patent, a copyright gives no exclusive right to the art disclosed;
protection is given only to the expression of the idea – not the idea itself.”

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 Basic Concepts:
(b) Work
• Copyright subsists in certain descriptions of works
 S.7 (1) Subject to this section, the following works shall be
eligible for copyright: (a) literary works; (b) musical works; (c)
artistic works; (d) films; (e) sound recordings and (f) broadcasts.
• No statutory definition but case law suggests the requirement
of minimum level of effort.
 Sinanide v La Maison Kosmeo (1928) 44 TLR 371
• In this case the plaintiffs used the advertising slogan:-
"Beauty is a social necessity not a luxury". The defendants used
the slogan - "A youthful appearance is a social necessity".
It was held that the reproduction of the two words "social
necessity" in the context was too small a mater on which to
base an action for copyright infringement.

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 Basic Concepts:
(b) Work
•De minimis non curat lex: “a common law principle whereby judges will not
sit in judgement of extremely minor transgressions of the law”
•In Exxon v Exxon Insurance (1982) RPC 69, Exxon took the position that there
is copyright in the word "Exxon" for two reasons. First, because they put
considerable time and energy into the development of the name, and
second, as there was a significant investment into creating the name it was
an "original literary work". Further, they argued that size of a literary work
does not matter.
The Court found that the name Exxon, while a trade mark, is only a
word and as such is not capable of copyright protection. A word alone does
not convey any information beyond its dictionary meaning and thus cannot
be a literary work. Furthermore, allowing copyright in single words would
overlap trademark law entirely and would make use of the word in public
troublesome

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 Basic Concepts:
(c) Automatic Protection
• When all the statutory requirements have been fulfilled, copyright is
conferred upon a work.
• Protect in all states (Berne Convention members)
• Difficulties in proving the title?
 copyright notice
 S.26(4)(a): Subject to subsection (3), the name on a work purporting to be
the name of its author shall be considered as such, unless the contrary is
proved
Creative Purpose Sdn. Bhd. v Integrated Trans Corp Sdn. Bhd [1997] 2 MLJ
429.
 S.42(1) Affidavit admissible in evidence
Solid Gold Publisher Sdn. Bhd. v Chan Wee Ho [1998] 5 CLJ 735
“P alleged that they have possessed copyright to certain items as a result of
an assignment from the overseas-based owners vide an exclusive licensee.
However, no documentary evidence was brought before he judge to prove
the relationship between the plaintiff and the copyright owner of the
work.”
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 Basic Concepts:
(c) Automatic Protection
Voluntary Notification
•Section 26A. (1) A notification of copyright in
any work may be made to the Controller by or
on behalf of the author of the work, the owner
of the copyright in the work, an assignee of the
copyright, or a person to whom an interest in
the copyright has been granted by licence.

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 Basic Concepts:
(c)Automatic Protection
Register of Copyright
•26B. (1) The Controller shall keep and maintain
a register called the Register of Copyright.

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 Elements Of Copyright:
(1) Originality
• Work must be original to be eligible for copyright protection.
• S.7(2): Work shall be protected irrespective of their quality
and the purpose for which they were created.
• S.7(3): A literary, musical or artistic work shall not be eligible
for copyright unless sufficient effort has been expended to
make the work original in character.
• S.7(4): A work shall not be ineligible for copyright by reason
only that the making of the work, or the doing of any act in
relation to the work involves an infringement of copyright in
some other work.

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 …Originality
(a) not copied (b) skill, labour and judgement
• The meaning of original: University of London Press v. University
Tutorial Press [1916] 2 Ch 601- originality which relates to the
expression of the thought.
 Lau Foo San v. Govt. of Malaysia [1974] 1 MLJ 28, Federal Court
“literary work covers work which is expressed in print or writing,
irrespective of the question whether the quality or style is high.”
• S.7(3)(a): sufficient effort
 Kiwi Brands (M) Sdn. Bhd v Multiview Enterprises Sdn. Bhd [1998] 6
MLJ 38, “The originality required relates to the expression of thought,
not the thought itself, and in the case of literary work, with the
expression of thought in print and writing. It is skill and labour giving
the idea a material form that is protected by copyright. The degree of
originality required for copyright protection is very minimal.

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 …Originality
(a) not copied (b) skill, labour and judgement
 Mac Millan & Co. Ltd. v Cooper (1924)40 TLR 186,
Privy Council, “A publication of which the text
consists of a reprint of passages selected for use in
schools from a work which does not enjoy the
protection of copyright may be entitled to copyright,
if the selection of the passages would require, for the
purpose of effecting the object in view, accurate
scientific knowledge, sound judgment, and literary
skill; but the question of what amounts to such
knowledge, judgment and skill is necessary in order
to acquire copyright is a question of degree.”

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 …Originality
(a) not copied (b) skill, labour and judgement
 Sweat of the brow doctrine: an author gains
rights through simple diligence during the
creation of a work, such as a database, or a
directory. Substantial creativity or "originality"
is not required.
 Database protection – sui generis (in a class by
itself) or by copyright either as a compilation
under the category of literary works (s.7(1(a)
CA) or a compilation of data under the
category of derivative works (s.8 (1)(b) CA).

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 Elements Of Copyright
(2) Fixation
• S. 7(3) (b): A literary, musical or artistic work shall not be
eligible for copyright unless the work has been written down,
recorded or otherwise reduced to material form.
• S.3: ‘fixation’ means the embodiment of sounds, images or
both, or the representation thereof, in a material form
sufficiently permanent or stable to permit them to be
perceived, reproduced or otherwise communicated during a
period of more than transitory duration;
• S.3: “material form”: in relation to a work or a derivative
work, includes any form (whether visible or not) of storage
form which the work or derivative work, or a substantial part
of the work or derivative work can be produced;

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 …Fixation
• S.3 of the Interpretation Act 1948 and 1967: Writing include typewritting,
printing, litography, photography, electronic storage or transmission or
any other method of recording information or fixing information in a form
capable of being preserved.
• Roland Corp & Anor v Lorenzo & Sons Pty Ltd (1991) 105 ALR 623, Pincus J,
“It seems clear that a mere random collection of letters of the alphabet
could not be copyright and presumably a mere random scribble could not
be either, but the devices with which I am concerned are by no means
random and were plainly drawn with care, to obtain an effect. It is true
that they are relatively simple and their simplicity will produce the result
that only an exact or fairly exact copy will infringe; but that is not a
problem for the applicants here.”
• S.3 CA 1987: “recording” means a sound recording or film, other than a
recording made under section 16A(3).

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 (3)Qualifications For Copyright

Section 10 Copyright Act 1987:

(1) Copyright shall subsist in every work eligible for copyright of which the
author or in the case of a work of joint authorship, any of the authors is, at
the time when the work is made, a qualified person.
(2) Copyright shall also subsist in every work which is eligible for copyright
and which— (a) being a literary, musical or artistic work or film or sound
recording is first published in Malaysia; (b) being a work of architecture is
erected in Malaysia or being any other artistic work is incorporated in a
building located in Malaysia; (c) being a broadcast is transmitted from
Malaysia.
(3) Notwithstanding subsections (1) and (2), copyright shall subsist, subject to
this Act, in every work eligible for copyright if the work is made in Malaysia.

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 (3)Qualifications For Copyright
In Rock Records & Tapes Co. Ltd v Season Karaoke Sdn.Bhd [1999] 1 AMR 78.
“For the purposes of the Act, a publication shall be deemed to be a first
publication in Malaysia if –
• the work was first published in Malaysia and not elsewhere; or
• the work was first published elsewhere but published in Malaysia
within thirty days of such publication elsewhere.”

In Bodley Head Ltd. v Flegon [1972] RPC 587 “ a Russian author signed a power of
attorney in Moscow authorising a Swiss lawyer to deal, outside Russia, with his
literary work. The plaintiff was given the exclusive licence to publish a novel by the
Russian author. Held: the book was not first published in Russia, there being no
evidence of any clandestine publication of the novel there. However, the
publication of the author’s work in France constituted “first publication” so that
the plaintiff was entitled to copyright in the United Kingdom

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