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Malaysia: Conditions for Statutory Declaration For Copyright To Be Acceptable

24th December, 2013

This is an appeal case against a Malaysian High Court decision pertaining to copyright infringement involving Lee Chye Yen & Lee Boon Hui and EoneNet. Com Sdn. Bhd.

EoneNet. Com Sdn. Bhd. (hereinafter referred to as “the Respondent”) is one of the pioneers in Internet Marketing Seminar and Internet Marketing Coaching in Malaysia and Hong Kong and was also an expert in search engine optimization.

Lee Chye Yen & Lee Boon Hui (hereinafter referred to as “the Appellants”) are partners of a business known as Ebiz Solution Network.

The Chief Operating Officer of the Respondent, Fione Tan, and her partner, Harrance Lau Hock Chung, are co-authors for a large number of materials for their Internet marketing seminars and coaching programs in the course of their employment with the Respondent. The Respondent claimed that it owns rights over all creations by EoneNet. Com Sdn. Bhd. and had declared its ownership on all course documents, DVDs, printed materials, audio, video and all information related to the company.

In September 2011, the Respondent came across an advertisement published by the Appellants in a local Chinese daily offering Internet marketing seminars and coaching with similar modules and materials as that being used by Respondent. Further, the Appellants claimed that the Appellants were former students of its Internet seminars and coaching course back in 2010. The Respondent claimed that the Appellants have infringed its copyright works having regard to the teaching and course materials belonging to the Respondent.

The Appellants counter-claimed the Respondent’s claim by arguing on the basis that the claimed copyrighted works are not original and are not capable of being protected under the Copyright Act 1987 (the Act).

The Judge at the High Court ruled in favour of the Respondent and allowed the Respondent’s claim that it was the rightful owner of the copyright works and that the Appellants had carried out an act of infringement.

The Appellants then went on to file an appeal to the Court of Appeal.

During the hearing at the Court of Appeal, the Appellants argued that the Respondent had failed to prove that EoneNet. Com Sdn Bhd. is the rightful owner of the copyrighted works, hence, not capable to be protected under the Act. Furthermore, the Appellant submitted that these works are obtainable in websites and books which are accessible to the public.

The Appellants also argued that the statutory declaration which the Respondent relied on to prove that they are the rightful owner of the copyright works was defective and that the exhibits were not produced in court during the hearing. Also, the Appellants submitted that the certified true copy of the copyright works was not annexed to the statutory declaration.

According to Section 42 of the Act, the admission of the statutory declaration as evidence is a great advantage for a proprietor to establish his claim over ownership of the copyright in question by establishing facts that at the time specified therein, copyright subsisted in such work and that the person named therein is the owner of the copyright.

However, to rely on this section as grounds of argument, the proprietor must or shall comply with all the necessary requirements under the said section, namely:

  • the affidavit or statutory declaration must be made before any person having authority to administer oath;
  •  it must be made by or on behalf of any person claiming to be the owner of the copyright;
  •  a true copy of the work must be annexed to the affidavit or declaration; and
  • if the deponent or maker of the affidavit is authorized to act on behalf of the owner of the copyright, he is required to produce such authorization in writing.

The Court of Appeal found that the Respondent had failed to provide a statutory declaration claiming ownership of copyright accompanied by a certified true copy of the copyright works and that the statutory declaration was not signed before a Commissioner of Oaths.

Therefore, the Court of Appeal held that the statutory declaration cannot be accepted and held that the High Court had made a mistake in admitting the statutory declaration tendered by the Respondent, therefore, allowing the Respondent’s claim against the Appellants.