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Copyright Article- Telekung

2nd November, 2018

MALAYSIA: COPYRIGHT DISPUTE ON TELEKUNG

In the case of SITI KHADIJAH APPAREL SDN BHD (hereinafter known as “the Plaintiff”) vs ARIANI TEXTILES & MANUFACTURING (M) SDN BHD (hereinafter known as “the Defendant”), the High Court of Malaya has decided on whether there is any copyright subsisting in “telekung”, which is an outfit usually worn by Muslim women during prayers.

The four issues which were decided by the Court in relation to this case are as follows:

  • Does a telekung constitute a “graphic work” or a “work of artistic craftsmanship” within the meaning of Section 3 of the Copyright Act 1987?
  • If a telekung constitutes a “graphic work” under Section 3 of the Copyright Act, (a) whether a telekung is eligible for copyright under the Copyright Act in view of its religious function (for prayers) (which is by the way a novel question regarding the interpretation of Sections 7(2A) and (3)(a) of the Copyrights Act) and (b) does the Plaintiff own copyright in the Plaintiff’s telekung?;
  • If the Plaintiff indeed owns copyright in the Plaintiff’s telekung (Plaintiff’s Copyright), whether the Plaintiff’s Copyright has ceased under the then applicable Section 7(6) of the Copyrights Act (Section 7(6) of the Copyrights Act has now been repealed by Copyright (Amendment) Act 2012 (Act A1402)); and
  • If the Plaintiff’s Copyright has not ceased under s 7(6) CA, has the Defendant infringed the Plaintiff’s Copyright (Copyright Infringement) under the first limb of s 36(1) CA? In this regard, in a claim of Copyright Infringement, can the Defendant raise as a defence that the Defendant is not aware of the Plaintiff’s Copyright and Copyright Infringement?

In relation to issue no. (1), the Court held that two-dimensional drawings regarding the design of the Plaintiff’s telekung constitutes a “graphic work” under Section 3(a) of the Copyrights Act and the Plaintiff’s telekung in itself, constitutes an “artistic work” under Section 3(a) of the Copyrights Act. However, the Court also ruled that Plaintiff did adduce any evidence to prove that the Plaintiff’s telekung is a “work of artistic craftsmanship” in Section 3(c) of the Copyrights Act.

In relation to issue no. 2, the Court held that Section 7(2A) of the Copyrights Act provides that copyright protection shall not extend to any idea, procedure, method of operation or mathematical concept as such. In view of this matter, the Court held that Section 7(2A) of the Copyrights Act does not bar copyright protection of a telekung on the ground that the telekung is purely functional. In any event, the Plaintiff’s telekung is not purely functional so as to be disentitled to copyright under Section 7(2A) of the Copyrights Act. The Plaintiff’s telekung not only enables its user to pray but also gives comfort and elegance to the user.

The Court was also of the view that the Plaintiff owns copyright in the Plaintiff’s telekung by reason of fulfilment of all the conditions under the Copyrights Act, in that:

  • sufficient effort had been expended by the Plaintiff’s designer to make the Plaintiff’s telekung original in character;
  • the Plaintiff’s telekung had been reduced to “material form”;
  • the Plaintiff’s telekung was made by the Plaintiff’s employee designer, a Malaysian citizen, who is a “qualified person” under Section 3(a) of the Copyrights Act;
  • the Plaintiff’s telekung is first “published” in Malaysia within the meaning of Section 4(1)(a) of the Copyrights Act because it is first sold in Malaysia;
  • the Plaintiff’s telekung is made in Malaysia;
  • the design in the Plaintiff’s telekung had not been registered as an industrial design under Industrial Designs Act.

Furthermore, evidence submitted by the Plaintiff in relation to the Plaintiff’s Copyright was not rebutted by the Defendant.

In relation to issue no. 3, the former provision of Section 7(6) of the Copyrights Act had provided that copyright in any design which is capable of being registered under any written law relating to industrial design, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or, with his license, by any other person.

The Court held that the Plaintiff’s Copyright had not ceased under the previously applicable Section 7(6) of the Copyrights Act because the Plaintiff’s telekung does not constitute an “industrial design” under Section 3 of the Industrial Designs Act. The Plaintiff’s telekung is not applied to an “article” “by any industrial process or means” as defined in Section 3 of the Industrial Designs Act.

In relation to issue no. 4, the Court was of the opinion that the Defendant had infringed the Plaintiff’s Copyright on the basis that Defendant had reproduced and distributed the Plaintiff’s telekung, which constitutes an “act the doing of which is controlled by copyright” as provided in Section 36(1) of the Copyrights Act:

  • There was a sufficient objective similarity between the Plaintiff’s telekung and the Defendant’s telekung.
  • The Defendant did not adduce any credible evidence to prove that the Defendant’s telekung had been created without copying the Plaintiff’s telekung. In fact, the Defendant’s telekung was sold in the market subsequent to the Plaintiff’s telekung.
  • The Court opined that the Defendant’s telekung had copied a substantial part of the Plaintiff’s telekung. This is because the features regarding the Sufficient Objective Similarity constitute a substantial part of the Plaintiff’s telekung. Additionally, applying Lord Scott’s decision in Designers Guild, the Sufficient Objective Similarity shows that the Defendant’s telekung had directly copied an identifiable part of the Plaintiff’s telekung .The quality of the Identifiable Part constitutes a substantial part of the Plaintiff’s telekung. And even if it is assumed that there is no Identifiable Part, there is altered copying because, on an application of Laddie’s Test, the Defendant had incorporated in the Defendant’s telekung a substantial part of the Plaintiff employee designer’s independent skill and labour in creating the Plaintiff’s telekung.

In this regard, the Court further held that Defendant cannot claim that – (a) the Defendant was not aware of the Plaintiff’s Copyright; (b) the Defendant had no knowledge of the Copyright Infringement; and (c) the Defendant does not intend to commit Copyright Infringement, by applying the Court of Appeal case of Elster Metering Ltd & Anor v Damini Corporation Sdn Bhd & Anor [2012] 1 LNS 959. In other words, these are not to be regarded as defences to copyright infringement. 

Having said that, the Court held that the Defendant’s lack of knowledge of the Plaintiff’s Copyright is certainly a relevant factor for the Court to decide whether to award damages for copyright infringement and their quantum.