Malaysia: Spell It Right

June 25th, 2013

In the case of The New Straits Times Press (Malaysia) Sdn Bhd & Anor v Admal Sdn. Bhd, the Malaysian Court of Appeal overturned the decision of the High Court and declared The New Straits Times Press (Malaysia) Sdn. Bhd. & Anor to be free from the alleged copyright infringement.

The New Straits Times Press (Malaysia) Sdn. Bhd. & Anor (hereinafter referred to as “the Appellants”) entered into discussions with Admal Sdn. Bhd. which is a company incorporated in Malaysia (hereinafter referred to as “the Respondent”) to organize a spelling competition program.

The Respondent formulated the concept of the spelling competition and with inputs from the Appellants, finalized the rules and guidelines of the competition. The Respondent, by causing its directors to swear a statutory declaration, claimed ownership of the copyright in the concept paper titled ‘NST Spell It Right’.

However, the collaboration between the parties did not materialize into a joint venture as they were unable to attract sufficient sponsors. Following the aborting of the joint venture, the Appellants placed their own spelling competition ‘RHB-NST Spell It Right’. The Appellants also registered the name ‘RHB-NST Spell It Right’ as a trademark.

The Respondent had commenced these proceedings in the High Court claiming copyright infringement and breach of confidence on the part of the Appellants. The Respondent claimed that the concept behind RHB-NST Spell It Right incorporated features contained in the NST Spell It Right. The High Court had ruled in the favor of the Respondent to which the Appellants appealed in the Court of Appeal.

The Appellants submitted that the Respondent’s NST Spell It Right was not eligible for copyright protection as copyright protection was not afforded for an idea and as the Respondent failed to demonstrate that skill and labor had been expended to prepare the written work. The Appellants stated that the NST Spell It Right merely contained the rules governing the competition and there was nothing original in the rules in the context of a language competition. The Appellants pointed to the fact that the Respondent had themselves admitted that they had copied the idea and concept from the American Spelling Bee competition, and therefore, the expression of the idea behind a spelling competition lacked originality. The Appellants further claimed that the concept incorporated in the NST Spell It Right was not the sole effort of the Respondent as it also included the ideas and the skill and efforts of the Appellants and therefore the Respondent was not eligible for copyright protection.

The Respondent refuted the Appellants’ claim and stated that the objective behind the concept was to develop, command and market the English language amongst Malaysians and as such the NST Spell It Right had gone well beyond an idea and considerable skill and effort had been put into the formulation of the concept.

The Court of Appeal stated that the NST Spell It Right was not entitled to copyright protection since it was nothing more than mere compilation of rules and regulations to regulate the holding of a spelling competition and such competitions had been around for ages.

The Appellants also asserted that even if the NST Spell It Right was eligible for copyright protection, the Appellants had not infringed the copyright. The Appellants submitted that the portions of the concept copied by the Appellants constituted only commonplace objects or themes and similarities in such matters should be disregarded.

The Court of Appeal adjudged the High Court of having failed to take into account the “functional object” behind the competition, stating that the NST Spell It Right was not eligible for copyright because the concept contained features which related to the very function of any competition of this nature involving similar rules and regulations with minor modifications. The Court of Appeal further stated that in determining the extent of copying, it was not the amount of copying that was relevant but rather the quality of the copying, and therefore any information which was commonplace need to be excluded from the consideration. Hence, the Court of Appeal adjudged that any similarities found between the Appellants’ RHB NST Spell It Right and the Respondent’s NST Spell It Right were to be expected as both must necessarily incorporate these very same features.

As a result, the Court of Appeal set aside the judgment of the High Court and declared the Appellants free from the alleged copyright infringement.