Answer

Question 1(a)

ISSUE
The issue is whether Future Tech Sdn Bhd have amounted to direct infringement of Section 36 of
the Copyright Act 1987 by way of communication to the public, by publishing selected diagrams and
portions of her report on their website. Next, the second issue is whether the act of John, who is a
university researcher attached with Future Tech Sdn Bhd, published a research paper regarding the
current trend in innovations amounted to a direct infringement by way of communication to the public
under Section 36 of the Copyright Act 1987.

LAW

Section 13(1) of the Copyright Act of 1987 provides that the owner of the copyright to a literary,
musical, or artistic work, a film, a sound recording, or a derivative work is granted with exclusive right in
dealing with his work. This exclusive right also covers actions related to a substantial part of the work,
whether in its original or modified form. In the case of Longman Malaysia Sdn Bhd v. Pustaka Delta
Pelajaran Sdn Bhd [1987] 1 CLJ 588, the term "substantial part of the work" is defined as (1) whether
there was a high degree of skill and labour by the author in construing the originality of the work, (2) the
object and purpose of the work, and (3) whether the use of the part taken is to interfere with the sales or
to compete. The court in this case looks at the quality of the part that has been copied rather than the
quantity of the copyright work that has been reproduced by the defendant.

The list of different acts that the copyright owner has the exclusive authority to control in relation
to such works is provided in Section 13(1) of the Copyright Act 1987 in which paragraph (aa) that deals
with communication to the public will be discussed in this question. One of the exclusive rights conferred
to the copyright owner of a literary, musical, or artistic work, a film, a sound recording, or a derivative work
is the right to communication to the public as indicated under paragraph (aa) of Section 13(1) of the
Copyright Act 1987. The definition of "communication to the public" according to Section 3 of the
Copyright Act of 1987 is the transmission of a work or performance through wire or wireless means to the
public, including the making available of a work or performance to the public in such a way that members
of the public may access the work or performance from a place and at a time individually chosen by them.

This demonstrates how a copyright work restricts the transmission of a work to the public via wire
or wireless means. The definition provides an example of one of these transmissions: making a work
available to the public in a way that allows members of the public to access the work from any place at
any time that they choose.The preposition "including" signifies that every further act that constitutes a
public transmission of a work is also regarded as a copyright-restricted act. Such an act is prohibited by
the copyright in films as well as the copyright in the underlying works, such as musical, artistic, and
literary works. Further, it's worth noting that only when the public is not present when the work is
transmitted, the right of communication to the public arises.

Therefore, any person other than the copyright owner who engages in any act that constitutes
communication to the public as defined in Section 13(1)(aa) without the copyright owner's consent is
liable for copyright infringement under Section 36(1) of the Copyright Act 1987. It should be noted that
Section 13(1) must be read in conjunction with Section 36(1) to fully understand that any act undertaken
by a person who is subject to a copyright restriction without the owner 's consent or a licence is regarded
an infringement to copyright, regardless of whether it involves the the whole work or a substantial part of
it.

Application
In applying to the current situation, Jamilah has exclusive rights under the Copyright Act 1987 to
restrict certain acts in regard to her report without her consent as the copyright owner of the report for
cutting edge computer program for physiotherapy equipment that would increase chances of recovery for
patients who are rehabilitating after experiencing physical injuries. As her work is a report, it falls under
the category of 'literary work’ that is included among the many works that fall under the definition of
"literary work" in Section 3.
Jamilah has exclusive rights provided in Section 13(1) as the report falls under literary work which
entitles her to control various acts to protect her report that is not yet being published. In this instance,
selected diagrams and portions of Jamilah’s report were published on the website of Future Tech Sdn
Bhd without her consent. Hence, in conjunction with Section 13 CA (1987), which grants the copyright
owner's exclusive rights, and Section 36(1) executing an act that is restricted by the copyright without the
copyright owner's prior consent constitutes copyright infringement. It does not matter whether the act of
copying is only in a substantial part or the whole copyright work.
Thus, by referring to Longman Malaysia Sdn Bhd v Pustaka Delta Pelajaran Sdn Bhd [1987] 1
CLJ 588, there are several factors in determining whether a substantial part has been taken by Future
Tech Sdn Bhd, firstly, the part taken must be original and involved a higher degree of skill and labor on the
part of plaintiff. Next, the purpose of the defendant taking the copyright work is similar to the plaintiff's
purpose and lastly, whether the part taken is used in a way which interferes with the sales of the original
work or competes with it. Certain parts published which consist of selected diagrams and portions of
Jamilah’s report can be considered original and contain expressions of intellectual creations Jamilah as
the author. This is due to the fact that it is not easy to publish a report, therefore Jamilah must have spent
a significant amount of time and effort conducting the necessary research and analysis to ensure that the
report is original before it can be officially published. Hence, the report by Jamilah requires special skills
and labor. Next, it can be proven that the selected diagrams and portions published by Future Tech Sdn
Bhd are similar to those in Jamilah’s report. By publishing the copyright work, it somehow can save
Future Tech Sdn Bhd’s money as they no longer have to finance Jamilah’s research where it also
somehow can save the company’s time and effort from doing their own research given that their name
indirectly showed that they are a company that specialised in technology therefore by taking part of
jamilah’s report on computer program will definitely benefit them. Lastly, the publication of selected
diagrams and portions of Jamilah report on the website of Future Tech Sdn Bhd. John would compete
with Jamilah’s report through references and attraction, as it had been published first before her therefore,
her effort would have come to a waste because later on she can no longer the report wouldnt be
considered new.

The act of Future Tech Sdn Bhd publishing selected diagrams and portions of Jamilah’s report on
their website falls under Section 13(1)(aa), which is a communication to the public, and is an act that
Jamilah has the exclusive right to control. Their act is within the interpretation of 'communication to the
public' as defined under Section 3, which is the transmission of work to the public by wireless means.
Hence, since the report owned by Jamilah has been published on the company’s website, the script is
now available to the public at large. The public can access the report individually at any time, from their
house, office, or anywhere else, by just searching it on the internet. Moreover, given how easily
information is spread nowadays, Future Tech’’s act has indirectly allowed thousands of others to access
the report they had published. The act of making it available to the public by Future Tech Sdn Bhd is an
act of transmitting a work to the public by wireless means, which is a copyright-restricted act.

Since the act of Future Tech Sdn Bhd publishing the selected diagrams and portions of the report
owned by Jamilah without her consent falls under Section 13(1)(aa) of the Copyright Act 1987, hence,
Future Tech Sdn Bhd can be made liable for direct infringement under Section 36(1).

LAW/APPLICATION

However, there is an exception to copyright which is the public interest defence stipulated under
Section 13(2) of the Copyright Act 1987 that provides for the fair dealing exception. In light of this, an
action cannot be considered a copyright infringement. The one that is pertinent to John’s act who is a
university researcher attached with Future Tech Sdn Bhd publishing a research paper regarding the
current trend in innovations is found under paragraph (a), which states where it states that the doing of
any of the acts referred to in subsection (1) by way of fair dealing including for purposes of research,
private study, criticism, review or the reporting of news or current events: Provided that it is accompanied
by an acknowledgement of the title of the work and its authorship, except that no acknowledgment is
required in connection with the reporting of news or current events by means of a sound recording, film or
broadcast.

Nevertheless, for the purposes of section (2)(a) of Section 13, there are factors needed to take
into account in determining whether John’s dealing constitutes a fair dealing is firstly, the purpose and
character of the dealing, including whether such dealing is of a commercial nature or is for non-profit
educational purposes. Here, John’s act of publishing a research paper regarding the current trend in
innovations is of non-profit educational purposes as he is a university researcher attached with Future
Tech Sdn Bhd, therefore the research paper will eventually help the students, academic scholars or even
wider audience that studied in the same field to have more in-depth knowledge of the subject. Next, is on
the nature of the copyright work. Since the research paper published by John is informational works in the
field of science with regards to innovations, thus it will encourage the free spread of ideas and encourage
the creation of new scientific innovations, all of which benefit the public. Last but not least, is on the
amount and substantiality of the portion used in relation to the copyright work as a whole; and the effect of
the dealing upon the potential market for or value of the copyright work. John is a university researcher
that is attached with Future Tech Sdn Bhd, and there is possibility that John can refer to information from
Jamilah’s report since it has been published in the company website. However there was no mention that
John had taken parts of Jamilah’s final report it can be assumed that research paper published by John is
not copied from anyone and given that John had acknowledged Jamilah as an innovator that will bring
breakthroughs in the field of science through her works shows that he is exploiting the work of Jamilah
and will not harm the original copyright owner, Jamilah.

CONCLUSION
In conclusion,

Q 1(B)

ISSUE
The issue is whether there are remedies available for Jamilah under Section 37 of the Copyright
Act 1987.

LAW
In terms of the actions that can be taken by the owner of the copyright, as well as the relief that
could be sought following an infringement, Section 37 of the Copyright Act 1987 provides that (1)
infringements of copyrights and the prohibited acts under sections 36A and 36B shall be actionable at the
suit of the owner of the copyright and, in any action for such an infringement or prohibited act, the court
may grant the following types of relief: (a) an order for injunction; (b) damages; (c) an account of profits;
(d) statutory damages of not more than twenty-five thousand ringgit for each work, but not more than five
hundred thousand ringgit in the aggregate; or (e) any other order as the court deems fit.
Question 2

ANSWER

ISSUE
The issue is whether Landmark Pewter can register the pewter decorative items designed by
Saffiyah under the Industrial Designs Act 1996.

The design must, first and foremost, comply with the meaning of an "industrial design" under
Section 3 of the Industrial Designs Act 1996 in order for the applicant to be successful in registering his
industrial design. Next, in accordance with Section 12(2), the design must be new at the date of
application for registration. Lastly, Section 13 stipulates the design must not be contrary to public order or
morality

The first requirement is that the design must meet the meaning of ‘industrial design’. Industrial
design is defined by Section 3(1) of the Industrial Designs Act 1996 as "features of shape,
configuration, pattern, or ornament applied to an article by any industrial process or means, being
features which in the finished article appeal to and are judged by the eye." Moreover, a method or
principle of construction, or features of shape or configuration of an article that are solely dictated by the
function that the article has to perform, or that are dependent upon the appearance of another article of
which the author of the design intends for the article to form an integral part, are also excluded by Section
3(1).

Hence, from the interpretation of industrial design stated in section 3(1) of the Industrial
Designs Act 1996 (hereafter mentioned as the Act), a design must fulfill all three requirements in order to
be covered under industrial design. The first element is that the design must have reference to some
articles. The term "article" is defined in Section 3(1) of the Industrial Designs Act of 1996 as ‘any
article of manufacture or handicraft, and includes any part of such article or handicraft if that part is made
and sold separately but does not include an integrated circuit or part of an integrated circuit within the
meaning of the Layout‐Designs of Integrated Circuits Act 2000 [Act 601], or a mask used to make such
an integrated circuit’. In accordance with Section 3(2), "article" includes a set of articles in a set of articles
or both a set of articles and each article in that set. A number of articles that are typically sold together or
intended to be used together and have the same general character are referred to as "a set of articles."

The court in Littlewoods Pools Ltd.'s Application, held that an article in the context of an
industrial design must serve some purposes beyond merely displaying the design. Therefore, if an
article's sole purpose is to display the design, the design is not applied to an article of manufacture within
the meaning of industrial design and cannot be registered. Further, in Sifam Electrical Instrument Co
Ltd v Sangamo Weston Ltd, the court held that a spare part is frequently recognised as an article to
have an independent life as an article of commerce and not only as an appendage of some larger article
of which it formed part.

The second element is that the design must be industrially applied. The design must go through
the industrial process, in which the shape, configuration, pattern, or ornament is applied to an article, and
must be produced in a large quantity. The court held that anything can be "industrially applied" without
necessarily indicating that machines manufactured it in RH Collier & Co Ltd Design Application Ltd.
The "industrially applied" requirement has thus been satisfied if it was produced by humans on a
mass-production scale.

The third element is that the design must appeal to and be judged by the eye, in which the design
must be calculated to know whether it attracts the audience's attention. This element must be fulfilled by
using the Eye Appeal Test. Instead of appealing to the general public, the design must be appealing to the
customers purchasing the design. The question of "what actually influenced the customers' preference in
purchasing a particular design compared to other designs?" should be addressed in light of this. A design
should be viewed from the perspective of the customer, the court held in Amp Inc. v. Utilux Pty Ltd, and
it is unreasonable to believe that the only limitation is that the features must be visible in the finished
article. The requirement for "eye appeal" as highlighted by Lord Morris in the same case, did not imply
that the design's features must possess an aesthetic or artistic quality, but rather that they must have
some "individual characteristic" that is calculated to attract the attention of the consumer.

The second requirement that the applicant must fulfill in order to successfully register his
industrial design is that the design must be new at the date of the registration application. According to
Section 12(1) of the Industrial Designs Act of 1996, an industrial design shall not be registered if it is
not novel. Pursuant to Section 12(2), an industrial design shall not be considered to be new if, before the
priority date of that application, it or an industrial design differing from it only in immaterial details or in
features commonly used in the relevant trade was disclosed to the public anywhere in Malaysia or
elsewhere. A design that has been sold or rendered to the public cannot be considered to be new and
novel as held by the court in Besalon International Ltd v South Strong Industries Sdn Bhd.

The third requirement that must be fulfilled by the applicant for his industrial design to be
registered successfully is that the design must not be contrary to public order or morality. This
requirement is specified under Section 13 of the Industrial Designs Act of 1996, where it states that
industrial designs that are contrary to public morality or order shall not be registrable. Whether a particular
factual situation is covered by this section is a decision that must be made by the Registrar. The designs
that are offensive, blasphemous, immoral, or incite hatred towards the other or the country appear to be
covered by this section, despite the fact that there are no local cases with regards to this.

APPLICATION
In applying to the current situation, the company can only register Saffiyyah's designs under the
Industrial Designs Act 1996 if the pewter decorative items she designed satisfy all three requirements.
First, in accordance with section 3, Saffiyah must be able to identify the features of her designs, including
whether they fall under "shape," "configuration," (three-dimensional form), "pattern,", "ornament,"
(two-dimensional form), or both (1). In this case, Pewter decorative items have their own shape and
features, are the subject matter, therefore it can be regarded as a three-dimensional form. The elements
will be discussed below to determine if Landmark Pewter can successfully register the designs to be
protected under industrial design.

First and foremost, Saffiyah must fulfill the first element, which stipulates that the design must
have reference to some articles for her design to fit under the definition of industrial design. The pewter
decorative items can be classified as articles under the meaning of "article" in Section 3(1) since they are
manufactured, and have been sold separately. By applying Littlewoods Pools Ltd Application, since the
pewter decorative items serve a function as interior decoration rather than just carrying the design, thus,
the design is registrable under the Act.

Since the pewter decorative items are articles that are sold separately, the Sifam Electrical
Instrument Co Ltd v Sangamo Weston Ltd [1973] RPC 899 concept applies in this case. According to
Graham J., the manufacture and sale of the disputed part must both be independent from the production
and sale of the entire piece that the 'part' is a part of. The pewter decorative items are sold as perfectly
functioning and complete objects. As a result, the first requirement has been satisfied for the pewter
decorative items to be registered.

Further, Saffiyah must demonstrate that the designs have been applied to an article. If Saffiyah
only makes one of such a design, it cannot be claimed to be "industrially applied". Based on the facts
given, Saffiyah is the lead designer for the division of the company that focuses on pewter decorative
items for interior decorations, indicating that she specializes in designing pewter decorative items.
Pewters are typically made industrially, which implies the use of machines and techniques for mass
production. Saffiyah is an expert in this field, so the pewter decorative items she produced are
undoubtedly of the finest quality.

By referring to the RH Collier & Co Ltd Design Application Ld, the pewter decorative items don't
have to be manufactured by machinery. It is sufficient if they were produced in mass by humans.
Furthermore, the fact that Landmark Pewter is a company that focuses on pewter decorative items for
interior decorations implies that they have been manufactured and sold in a substantial amount. It proves
that the pewter decorative items are mass produced and not for personal use. Therefore it is indeed
industrially applied.

Lastly, the third element of the eye appeal test, in which the finished articles are judged by the
eyes, must also be fulfilled as per Section 3(1). According to Saffiyah, she began designing decorative
items that resembled the ones that she saw at the lobby of Sinar Berhad Office, therefore it is reasonable
to assume that there is no aesthetic value and uniqueness in her design. In determining if the pewter
decorative items appeal to the eye of the customer, Lord Pearson’s judgment in Amp Inc. v Utilux Pty
needs to be taken into account. Given that the decorative items resembled the one that she saw indicates
that it is not unique and exquisite. Hence, the eye appeal test is not satisfied.

Next, Saffiyah needs to fulfill the second requirement which is the design must be new at the date
of application for registration. By applying Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd, the
pewter decorative items designed by Saffiyah would not be considered to be novel if features of the
designs are immaterial and do not make any significant visual impact

Further, the first aspect under the requirement of novelty which is the totality of the designs needs
to be discussed. The court would consider the totality of the design features as a whole and the
appearance of the article in regard to the principle applied in CKE Marketing Sdn Bhd v. Virtual Century
Sdn Bhd & Anor and CKE Marketing Sdn Bhd v. Virtual Century Sdn Bhd & Anor. Since Saffiyah's
designs for the pewter decorative items were remarkably similar to those for the pewter decorative items
that were in the lobby of Sinar Berhad's office, even though she had made a few minor changes, the court
would consider these similarities when deciding whether the designs were novel. Therefore, she failed to
fulfill the first aspect of novelty.

Next, the aspect of the novelty is a question of fact that is to be judged by the eye. By referring to
the principle applied in Anchorsol Sdn Bhd v Nehemiah Reinforced Soil Sdn Bhd, the imperfect
recollection test and the designs would be compared side by side by the court. There won't be any
distinction between the pewter decorative items designed by Saffiyah and those in the office lobby of
Sinar Berhd because they are so similar to one another, and the minor changes she made won't have a
big impact and would not make any significant changes in the designs. Therefore, it can be inferred from
the imperfect recollection test that the designs failed to fulfill the second feature of novelty as well if a
normal person could not recognise the difference between the two designs of pewter decorative items if
they were to see those from a comparable distance.
 By applying the third aspect of novelty, the court would consider the priority date of a registration
application because the pewter decorative items that Saffiyah saw at the Sinar Berhad company were
already on display. As a result, the application for the registration of the design of the pewter decorative
items by Sinar Berhad would be earlier than the registration for the designs of pewter decorations by
Landmark Pewter, and the court would take this into consideration. Furthermore, in applying Section
12(2)(a) of the Act and the principle of public disclosure applied in Teh Teik Boay v. Chuah Siak Loo and
Anchorsol, it is evident that the designs of the pewter decorative items by Sinar Berhad have been
revealed to the public and are not made confidentially, in addition to the fact that they were available
earlier than the pewter decorative items by Landmark.

Last but not least, design must not be contrary to public order or morality according to Section 13.
Saffiyah is lead designer that works for Landmark Pewter which is a company that focuses on pewter
decorative items for interior decorations. Generally, pewter is an attractive metal that is used in the
production of household goods but the pewter decorative items designed by Saffiyah are for interior
decorations. Thus, these pewter decorative items are not contrary to public order or morality and are
registrable.

In conclusion, Landmark Pewter may not register the pewter decorative items designed by
Saffiyah under the Industrial Designs Act 1996 as it does not fulfill all the requirements for the designs to
be registered.