Patents for certain biotechnological inventions (genetically modified life forms in particular).

Introduction

Biotechnology, according to the United Nations Convention on Biological Diversity as of 1993, is any technological application that uses biological systems, living organisms or derivatives thereof to make or modify products or processes for specific use. Recently, the fermentation processes have been used in pharmaceutical industry for the manufacture of antibiotics. The milestones for modern biotechnology were set in 1950s and 1970s respectively, when the DNA structure was determined and two basic biotechnological techniques were invented, namely DNA recombination and hybridoma creation.

According to classification proposed by the Europeant Association for Bioindustries (EuropaBio), biotechnology can be divided into the following fields: white field relating to biological systems used in industry and environment protection, red field covering health protection (new medicines, diagnostics, genetherapy and transplantology) and green field connected with agriculture (genetic engineering of plants and animals). There is also a violet field relating to legislation on biotechnology.

Because of fast development in biotechnology and its connections with various areas of science, it is essential to make the public aware of possibilities in relation to patenting biotechnological inventions. However, one must first explain what a biotechnological invention is and what criteria must be fulfilled in order to obtain patent protection.

Possible to patent.

Regardless of the field of technology, shall be granted for inventions which are new, which involve an inventive step (i.e. they do not result in an obvious way from the state of the art) and which are susceptible of industrial application. It is possible to patent the following:

  1. A biological material, isolated from its natural environment or produced by means of a technical method, even if it already exists in the natural state,
  2. A technical method by means of which biological material is produced, worked or used, even if it already exists in the natural state,
  3. Any new application of a biological material or a technical method already patented,
  4. An invention relating to an element isolated from the human body or otherwise produced, by means of a technical method, even if its structure is identical to that of a natural element, provided that its function and industrial application are concretely indicated, described and specifically claimed. By technical method it means what only a human being is able to execute and which nature in itself is not able to achieve.
  5. An invention concerning plants or animals, or a plant group, characterized by the expression of a particular gene and not its whole genome, if their application is not limited, from a technical point of view, to obtaining a particular plant variety or animal species and if only essentially biological methods are not used, in order to obtain them.

Cannot be patented

The following are excluded, and therefore cannot be patented:

  1. The human body, from the moment of conception and in the various stages of its development, and also merely the discovery of one of the elements of the body, including the sequence or partial sequence of a gene, in order to guarantee that the patent right is exerted in full respect of the basic rights to dignity and integrity of the human being and the environment,
  2. Methods for the surgical or therapeutic treatment of the human body or animal, and methods of diagnosis applied to the human body or animal,
  3. Inventions the commercial exploitation of which is against human dignity, public order and morality, the protection of health, the environment and the life of persons and animals, the conservation of plants and biodiversity and the prevention of serious environmental damage.
  4. A simple DNA sequence, a partial sequence of a gene, used to produce a protein or a partial protein, except if an indication and a description of a function used to assess the requisite of industrial application are provided, and the corresponding function is specifically claimed; each sequence is considered autonomous for patent purposes in the event of overlapping sequences only in the parts not essential to the invention,
  5. Plant varieties and animal species, and also essentially biological methods for the production of animals and plants,
  6. New plant varieties with respect to which the invention consists exclusively of the genetic modification of another plant variety, even if said modification is the fruit of a method of genetic engineering.
  7. Inventions whose exploitation would be contrary to public order or morality.

 

Biotechnological Inventions In Malaysia

The usage of biotechnology to produce new inventions has only come to surface more than a few decades ago. At that time, it caused a direct challenge to patent laws that exclude biological material from the domain of patentability. In Malaysia, the effective provision is subsection (b) of s.13 Patents Act Of Malaysia 1983 that excludes:-  “plant or animal varieties or essentially biological processes for the production of plants or animal, other than man-made living micro-organisms, microbiological processes and products of such micro-organism proceses.”  S.30A Patents Act Of Malaysia 1983 is prohibition of publication of information which might be prejudicial to the nation and       S. 85 Patents Act Of Malaysia 1983 is the Registrar in the exercise of his powers shall have the right to refuse to grant a patent for products or processes scheduled under regulations made by the Minister under this Act where it appears to the Registrar that the granting of such a patent would be prejudicial to the interest or security of the nation.
Conclusion

Biotechnological inventions (genetically modified life forms in particular) continue to present intriguing and difficult challenges for 21st century scientists and ethicists, and education and meaningful, respecful discourse are just the beginning of what is required to tackle such complex ethicalissues.

Until we as a society or, perhaps, as a global entity can agree on what beings-human or otherwise-are worthy of moral and legal status and respect, we can expect intense cross-disciplinary debate and discussion as new life forms are created through science and medicine.

 

 

 

 

 

References

  1. http://www.actionbioscience.org/biotechnology/glenn.html
  2. http://www.actionbioscience.org/genomics/crg.html
  3. http://sitn.hms.harvard.edu/flash/2015/the-patent-landscape-of-genetically-modified-organisms/
  4. http://www.wipo.int/wipo_magazine/en/2006/03/article_0006.html
  5. http://www.epo.org/law-practice/case-law-appeals/recent/t900019ep1.html
  6. Patents Act 1983 (Act 291) & Regulation
  7. TRIPS Agreement.
  8. Buku Patent Law in Malaysia Casses and Commentary by Dr Ida Madieha Bt Abdul Ghani Azmi
Patents for certain biotechnological inventions (genetically modified life forms in particular).

Protection of invention via Utility Innovation

What is Utility Innovation ( UI )

UI is an exclusive right granted to an innovator for a “minor” invention or innovation, which can be a product or a process that provides a new way of doing something or solves a specific technical problem in any field of technology.

In most countries where UI protection is available, patent offices do not examine applications as to substance prior to registration. This means that the registration process is often significantly simpler and faster, taking, on average, six months. With quick registration comes quicker publication, which otherwise takes 18 months post-filing in patent applications. Thus, UI is ideal for products with an anticipated short commercial life.

Quick registration also means that the registered UI can be enforced against potential infringers much sooner than a patent application. UI follows the same legal proceedings as patent litigation. Validity of UI is thus assessed by a civil court or similar body.

Though the requirements for acquiring a UI are less stringent than for patents the requirement of “novelty” is always to be met, that of “inventive step” or “non-obviousness” may be much lower or absent altogether. In practice, protection for UI is often sought for innovations of a rather incremental character which may not meet the patentability criteria.

UI can be branched off a pending patent application. It may claim priority from an earlier patent or UI application. It is also possible to use a PCT application as the basis for a UI application in the national phase.

Also, during a limited period, many countries allow conversion of a patent application into a UI application. Some countries even allow conversion after a patent application has been refused. In some countries, it is possible to obtain and keep both a patent and a utility model for the same invention.

Utility models in international agreements and multilateral agreements

PARIS CONVENTION       – Recognizes Ums as industrial property without defining it.  Accords it a right of priority and national treatment

THE TRIPS AGREEMENT      – Establishes the minimum substantive standards for each of the major IP regimes but fails to mention in clear terms utility model protection. Reference to Art 2(1), TRIPS Agreement, the relevant provisions of the Paris Convention (including Art1(2) ) are extended to all WTO countries.

PATENT COOPERATION      – Aimed at facilitating patent applications in more than one

TREATY                                      country via a simplified and cheaper process. This facilitated

means for patents covers UI as well.

Generally, application for acquiring a UI requires novelty but an inventive step or non-obviousness often is not. It also requires an innovation that makes a “substantial contribution to the art” but there is no need for it to be non-obvious. ( Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81)

 UI in Malaysia

In Malaysia, UI is known as Utility Innovation Certificates and the protection of UI is provided under the Patents Act 1983. It is processed similarly to patents, except it does not require an inventive step and can only cover a single claim per application. Its protection lasts for ten years ( renewable twice for up to a maximum of 20 years of protection ). Renewals of UI requires proof of use within Malaysia. The enforcement of UI is the same as patent.

Differences between UI and Patents

Though the application for acquiring a UI requires only novelty, the courts have however imposed a condition that the Ul must be disclosed in a way that is clear and complete enough for it to be performed by a person skilled in the art. ( Kendek Industry Sdn Bhd v Ecotherm (TFT) Sdn BHd [2010] MLJU 333)

 Advantages of UI 

  • UI may encourage local innovation so that local industries produce more goods
  • UI can protect valuable inventions/innovations which would otherwise not be protected  under the standard patent law or other intellectual property laws
  • This type of protection prevents free-riding of inventions by other predatory firms which expend no R&D costs or investment
  • UI can provide revenue to governments in the form of registration, search, publication, etc. fees
  • Registered UI rights can act as a source of valuable information via published specifications

The existence of a UI may reduce incentives for industry to lobby for the inclusion of minor inventions in the patent regime; this in turn would limit the public domain much more than the less expansive utility model system (shorter terms of protection and exclusivity).

Conclusion 

For small to medium sized enterprises (SMEs), patent protection can be complex and costly. And yet, for many of them, patent protection is a must to maintain their competitive edge. This made UI a better option for the SMEs as it is fast and cheap especially for protecting computer software and mechanical inventions and products which are fast developing.

 

UI could effectively be used to stimulate local innovation in developing countries in the South Asian region in particular those that are predominantly created by SMEs.

This by no means denies that larger enterprises may benefit from this system even though the UI system targets a different class of user. It has also been observed that most of the innovations based on traditional knowledge may effectively be protected under the utility innovation system if they are given modern technological touches.

However, despite the many advantages, a threat of frivolous filing of UI looms large which would in turn make the system a mockery. Therefore, appropriate safeguards need to be placed in order to prevent misuse. Grant of protection for UI without examination could lead to misuse of the system. Therefore, it would be advantageous of having an examination system with proper examination guideline in place for grant and enforcement of UI along with remedies available in case of infringements.
Rerences :

  1. http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm 2
  2. https://ec.europa.eu/growth/industry/intellectual-property/patents/utility-models_en
  3. http://www.youripinsider.eu/patents-utility-models-malaysia/
  4. http://www.author.com.my/information/utility-innovation
  5. http://iswip.com.my/patent/
  6. https://en.wikipedia.org/wiki/Utility_model
  7. http://www.wipo.int/patents/en/topics/utility_models.html
  8. http://www.invents.com/define-a-utility-patent/
  9. http://www.weickmann.de/en/taetigkeitsgebiete/patente-und-gebrauchsmuster/ 
  10. http://www.lexology.com/library/detail.aspx
  11. Patent Law in Malaysia, Cases and Commentary by Dr Ida Madieha Bt Abdul Ghani Azmi
Protection of invention via Utility Innovation

Filing a Patent Application in Malaysia: What Applicants Should Know?

 

2017-05-15 15.47.19

Filing a patent application in Malaysia is not an easy task. There are several information that the Applicant or the patent agent needs to know in order to file a complete straightforward application. This article sets as a general guide to applicants on requirements and timelines for patent prosecution in Malaysia. It may be set as a guide to avoid unnecessary office actions from the Registry.

The ultimate requirement for filing a patent application in Malaysia is set out in Sections 11, 12, 13, 14, 15 & 16 of the Patents Act 1983. The applicant must ensure that the invention is novel, involves an inventive step and has industrial application.

Appended below are requirements for pending patent applications currently being processed by the Malaysian Intellectual Property Office (MyIPO):-

a. Patent application under the Paris convention

An applicant for a conventional application claiming priority under the Paris Convention must file his application within 12 months from the priority date. The following items are required for filing the same:-

1.    Name, address and nationality of the Applicant(s);

2.    Name and address of the Inventor(s);

3.    Priority data (date, priority number and country of the basic application);

4.    Specification in English/Malay;

5.    Form 1 (Request for grant of patent);

6.    Form 17 (Power of Attorney); and

7.    Form 22 (Statement Justifying the Applicant’s Right to a Patent);

Items 5) and 6) must be filed at the time of filing the patent application at the Patent Registration Office. Electronic copies may be sent ahead.

b. National Phase application under the PCT

An applicant for a PCT application entering the national phase may file his application within 30 months from the priority date. The following items are required for filing the same:-

1.    Name and address of the Applicant(s);

2.    Name and address of the Inventor(s);

3.    Priority data (date, priority number and country of the basic application);

4.    Specification in English/Malay;

5.    Form 2A (Fee for entering the national phase);

6.    Form 17 (Power of Attorney);

7.    Form 22 (Statement Justifying the Applicant’s Right to a Patent);

8.    PCT request form (PCT/RO/101) in English; and

9.    Search or Publication page (if available).

Items 5) and 6) must be filed at the time of filing the patent application at the Patent Registration Office. Electronic copies may be sent ahead.

c. Utility Innovation Application

An applicant for a utility innovation application claiming priority under the Paris Convention must file his application within 12 months from the priority. The following items are required for filing the same:-

1.    Name, address and nationality of the Applicant(s);

2.    Name and address of the Inventor(s);

3.    Priority data (date, priority number and country of the basic application);

4.    Specification in English/Malay;

5.    Form 14 (Application for grant of certificate for utility innovation);

6.    Form 17 (Power of Attorney); and

7.    Form 22 (Statement Justifying the Applicant’s Right to a Patent).

Items 5) and 6) must be filed at the time of filing the utility innovation application at the Patent Registration Office. Electronic copies may be sent ahead.

d. Divisional Application

An applicant for filing a divisional application must file his application within 3 months from the date of mailing of the examiner’s first report. The following items are required for filing the same:-

1.     Name, address and nationality of the Applicant(s);

2.     Name and address of the Inventor(s);

3.     Priority data (date, priority number and country of the basic application);

4.     Specification in English/Malay;

5.     Form 1 (Request for grant of patent);

6.     Form 17 (duly signed by the applicant);

7.     Form 22 (duly signed by the applicant);

8.     Form 5 or Form 5A; and

9.     Information of the parent application (application number and date of filing).

Items 5), 6) and 7) must be filed at the time of filing the divisional application at the Patent Registration Office together with a request for full or modified substantive examination. Electronic copies may be sent ahead.


e. Request for Substantive Examination Under the Paris Convention

An applicant requesting for a substantive examination for conventional / non-conventional/ utility innovation application claiming priority under the Paris Convention must be filed within 18 months from the filing date. The following items are required for filing the same:-

 

Full substantive examination:

1.    Particulars of corresponding patent applications: application number, filing date and status; and

2.    Results of searches and/or office actions and/or granted patents from the prescribed countries namely Australia, Japan*, Korea* UK, US, EPO, ASPEC member states or the International Search Report / International Preliminary Report on Patentability issued via PCT.

OR

Modified substantive examination

1.                  A certified true copy of the granted patent from any one of the prescribed countries namely Australia, Japan*,   Korea* UK, US or the EPO.

 

*a certified translation in the English language of the search report and/or office action and/or granted patent is required for filing at the Patents Registration Office.

f. Request for Substantive Examination Under the PCT

An applicant requesting for a substantive examination for a PCT application entering the national phase must file the application within 48 months from the international filing date. The following items are required for filing the same:-

 

Full substantive examination:

1.    Particulars of corresponding patent applications: application number, filing date and status; and

2.    Results of searches and/or office actions and/or granted patents from the prescribed countries namely Australia, Japan*, Korea* UK, US, EPO, ASPEC member states or the International Search Report / International Preliminary Report on Patentability issued via PCT.

OR

Modified substantive examination

2.                  A certified true copy of the granted patent from any one of the prescribed countries namely Australia, Japan*,   Korea* UK, US or the EPO.

*a certified translation in the English language of the search report and/or office action and/or granted patent is required for filing at the Patents Registration Office.

g. Amendment of clerical errors

An applicant requesting for amendment of clerical errors or obvious mistakes may file his application at any time while the patent is pending or has been granted. The following items are required for filing:-

 

1.     Form 16 (Request to amend application for grant of patent); OR

2.     Form 16A (Request to amend patent); and

3.     A copy of the amended page(s).

h. Recordation of change of name or address
An applicant filing a recordal of change of name may do so at any time, and supply the following documents:-

 

1.     Form 17 (Power of Attorney duly signed by the applicant); and

2.     Certified true copy of the certificate of change of name

i. Recordation of a Merger

An applicant filing a recordal of Merger may do so at any time, and supply the following documents:-

 

1.     Form 17 (Power of Attorney duly signed by the applicant); and

2.     Certified true copy of the certificate of merger

j. Recordation of an assignment

An applicant filing a recordal of Assignment may do so at any time, and supply the following documents:-

 

1.     Form 17 (Power of Attorney duly signed by the assignor);

2.     Form 17 (Power of Attorney duly signed by the assignee); and

3.     The original or a certified true copy of the deed of assignment.

All relevant forms should be accompanied by the prescribed fee. Applications and requests can be submitted by hand or via e-filing through the IP online system. Generally the e-filing fees is more cost saving.

It is hoped that the information above will be of help to potential applicants or patent agents. Please note that this article is merely a guide and is purely for academic purposes only. Further information may be obtained from The Patent Registration Office itself http://www.myipo.gov.my/en/myipo/ or a patent agent.

Filing a Patent Application in Malaysia: What Applicants Should Know?

ENFORCEMENT OF COPYRIGHT IN MALAYSIA

Copyright is one of the component of Intellectual Property Law. Intellectual Property (IP) is that property which is created by an intellect. Property is either tangible/material like a constructed building which can be touched and felt or an intangible/immaterial which cannot be touched and felt like IP. Intellectual Property Law is that area of law which concern legal rights associated with creative efforts, commercial reputation and good will. IP includes patent for the protection of inventions and ideas, copyright for the protection of literary and artistic works including phonograms and sound recordings, trademark for the protection of mark, sign and names used for the purpose of trade at the market place, industrial design for the protection designs associated with industry and geographical indication which is used for the protection of geographic location and things associated with that place. Copyright laws aims to encourage and promote learning and progress by protecting copyright owners work for a limited time. It was hope that through giving incentive to the authors, more learning materials could be created for the benefit of the community. In order to address the needs of the public to access of copyright work in the area of education, copyright law provide for exceptions and limitations to copyright protection. The issue of balancing the rights of authors, publishers and copyright owners with the users’ right and need for the free flow of information is however left to the respected individual countries and governments to apply the law that best suits their developmental needs. Enforcement of copyright law is either through border protection by the customs authority of member country, which is mentioned under article 6 of the Berne Convention that infringing copies of literary and artistic works are required to be seized by customs authority in member countries of World Intellectual Property Organization (WIPO). Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) contains detailed rules of enforcement of IP in member countries of World Trade Organization (WTO).

 

Historical Background

 

The Guild of Writers was formed of text letters, book binders and book sellers in 1403 for the protection of copyright in United Kingdom. Printing technology was introduced in 1477 through which piracy started, thereafter the concept of an arbiter came into being, which comprised of two wardens appointed by the mayor of London to stop piracy and to punish pirates but the basic purpose of the appointment of arbiters was to stop printing any seditious material against Queen. Royal charter of Queen Marry was introduced in 1557 according to which a company had given the right of perpetual succession, right to take legal action, right to make rules for itself, right to meet together and right to elect a master and two wardens, right to own property in London and surroundings and an exclusive permission to print throughout England. A company was given more powers in 1586, and punishment were increased to printing press destruction, ban on printing and imprisonment for six months. Printing Licensing Act was introduced in 1662, according to which it was required that every issued license must be printed verbatim at the beginning of each book. Printing Licensing Act was repealed in 1695. The Statute on Anne is the first Copyright Act, which was passed and enforced in the reign of Queen Anne in 1710. It had eleven sections, the Preamble of the Statute of Anne 1710 states that: “An act for an encouragement of learning by vesting the copies of printed books in the authors or purchasers of such copies during the times therein mentioned” A new Copyright Act was introduced in 1911, which was amended in 1956. The Copyright, Designs and the Patents Act was introduced in 1988, which is the existing law of copyright applicable in the United Kingdom nowadays.[1]

Copyright law was created for the encouragement of learning, by vesting the copies of printed books in the authors or purchasers of such copies, during the times therein mentioned and for the encouragement of learned men to compose and write useful books. This was expressly stipulated in the Statute of Anne 1710, the first formal copyright law document when the concept began in England since the revolution of printing machines in 1557. This shows that the goal of copyright was originally aimed at encouraging wider access to works by the public. The framers of the United States Constitution also had a similar purpose in mind when enacting the US Copyright Law, which is to ensure the advancement of learning by promoting the progress of science and useful Arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries, as provided under Article 1, Section 8, Clause 8 of the United States of America (USA) Constitution. In other words, the original concept of providing copyright protection for a limited time was primarily to encourage or promote learning and progress, thereby acting for the public good. The philosophy behind the copyright system is that whoever expends skill and labour to create, as well as taking the financial investment risks, in order to produce and market a material, should be allowed to reap the benefits. Accordingly, s/he should have the right to be protected so that there is an incentive to create materials for the betterment of the public. Copyright presupposes that the guarantee of protection and the possibility of controlling and being paid for the exploitation of copyright works would encourage authors and more learning materials would be created for the benefit of the wider community. The concept of copyright protection for private interest aimed for the benefit of public and has led to some believing that the purpose of copyright law is to advance public interest, whilst others think to secure the private interests of authors and publishers.[2]

Intellectual Property

 

Intellectual Property Law is that area of law which concerns legal rights, associated with created efforts, commercial reputation and good will. Intellectual Property (IP) is that property which is created by an intellect and main components of IP include the patent for the protection of inventions, copyright for the protection of literary and artistic work, trademark for the protection of word, name, sign, mark, smell or a sound which distinguishes goods and services of one undertaking from those of other undertakings, industrial design law for the protection of industrial designs and geographical indication for the protection of goods associated with a particular region.[3] Property is either material like a constructed building or immaterial like IP. It is either owned by one person or collectively owned by more than one persons. The legal owner of property has right to use it and take all its potential benefits and to give it to another partially or fully. A right is an interest recognized and protected by a rule of right. A right is an interest, respect of which is a duty and disregard of which is a wrong. Essentials of legal rights are subject of right, object of right, content of right, subject of duty and title in the owner. Subject of right is the owner who has a right over a particular property. Object of right is a particular property which carries a right. Content of right means that an owner may use his property exclusively, takes all its potential benefits and gives it to another temporarily or permanently. Subject of duty is the third person whose duty is not to interfere and trespass in the property owned by another and the title in the owner is the reason and cause that how the right was created and transferred into the owner.[4]

Copyright

 

Copyright is a branch of IP right, amongst other rights, namely, design, patent, trademark and database rights. Copyright is the name of the protection of literary and artistic works including phonograms and sound recordings. Copyright is not merely the right to prevent copying but it grants many other rights to the owner. Once a work has met the criteria for protection, authors are automatically given a bundle of rights to reproduce the work, or to authorize others to do so (in whole or in part) within the constraints of the relevant copyright law. Owners of copyright works acquire economic and moral rights. Through the economic rights, the owner has an exclusive right to copy or reproduce the work, to rent out or lend, to publish or issue copies of the work to the public, to perform, show or play the work in public, broadcast the work or include it in a cable programme service, to make an adaptation of the work in relation to an adaptation. These economic rights may also be bought or sold (like property) or be assigned or licensed for a specified period. This gives the copyright owner the opportunity to control the ways in which his/her copyrighted material may be used or exploited for profit. By giving all these exclusive rights to the copyright owner, all other people are restricted from copying, renting, lending, or issuing copies of the work to the public. It is also an offence to perform, broadcast, show or adapt the work without the consent of the copyright owner. Here, the copyright owner or his/her exclusive licensee therefore has the right to bring proceedings before the courts. Any infringement or secondary infringement of copyright law could subject the alleged perpetrator to criminal liability. Copyright owner has right to adopt administrative procedure, civil or criminal procedures or to adopt border measures for the enforcement of his registered copyright.[5]

Copyright owner possesses moral rights, which include the right of paternity, i.e. the right of the author to be identified, the right of integrity, i.e. to prevent or object to derogatory treatment of their work, false attribution, i.e. the right not to have a work falsely attributed to them, and the right to disclosure, i.e. the author’s right to withhold their work from being published. These rights, unlike economic rights, are inalienable or cannot be given away. The principal remedies for breach of copyright (known as piracy) are an action for damages and account of profits, or an injunction. An author of copyright work may also be liable for libellous statements made in the material, defamation, plagiarism and, of course, copyright infringement. An author is referred to as the person who creates a work or is responsible for first reducing an intellectual idea into the relevant material form. When a copyright work is jointly created, all those who contribute to the final product may have a claim to some legal rights in the work. However, if a work is produced as part of employment, then it normally belongs to the person or company who hired the individual creator. Copyright only protects the expression of an idea, not the idea itself. This principle is expressly recognised in Article 9(2) of TRIPS and in Article 2 of WIPO Copyright Treaty which limits copyright protection only to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such. Copyright is not infringed if two works are very similar to each other but produced wholly independently of one another. The mere taking of a sufficiently general idea is also not infringing copyright. Only when an idea is worked out in some detail in the plaintiff’s work and the same expression of that idea is reproduced by the defendant, may there be an infringement. Copyright protection is automatic as there is no legal requirement to register in order to obtain protection.[6]

Works protected by copyright are generally the expression of creative authorship, which includes original artistic, dramatic, literary and musical works, sound recordings, films (and videos), broadcasts (including cable and satellite broadcasts), and the typographical arrangements of published editions of a literary, dramatic or musical work. These works may either be published or unpublished or in an electronic format. Thus, letters, e-mail messages, works included in an electronic database (CD-ROMs) and material on websites are also protected. Copyright however does not protect individual bibliographic citations, facts and headlines, although a collection would be protected by copyright and/or database right. Ideas that are in general circulation, having been expressed in written and other forms frequently and over a long period of time are also not subject to copyright claims. In order for a work to be protected under copyright law, it is required that the literary, dramatic, musical and artistic works be original. To be original, the work cannot be simply copied, but must be the result of independent creative effort. However, a work that is similar to another work that already exists, but where there has been no copying either directly or indirectly, can still be considered original. The term original also involves a test of substantiality. Literary, dramatic, musical and artistic works are not considered original if there has been insufficient skill and labour expended in their creation, although significant investment of resources without significant intellectual input can still sometimes count as sufficient skill and labour. Copyright and its related rights are essential to human creativity, by giving creators incentives in the form of recognition and fair economic rewards. Creators are assured that their works can be disseminated without fear of unauthorized copying or piracy. This in turn helps increase access to and enhances the enjoyment of culture, knowledge, and entertainment all over the world.[7]

In each copyright system, there is a need to balance the copyright owner’s interest in receiving adequate reward and the public interest in accessing works but all such systems should stress the importance of utilizing information as a foundation for growth and expansion of creativity and science for the benefit of all. The balancing of rights is necessarily inherent to copyright; indeed, those rights may even be regarded as a human right. Article 27 of the Universal Declaration of Human Rights (UDHR), deals with the right of an individual author and the rights of an organized society, stating that: Everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits and everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author. UDHR is merely aspirational or advisory in nature, as it is not a binding treaty. Nevertheless, the UDHR has gradually gained importance, acquiring the status of customary international law, and has greatly enhanced the standing of copyright as a Human Right, although the provision is still deemed weak compared to provisions on basic civil and political rights. The inclusion of copyright in the international Human Rights instruments is highly controversial; there have been many criticisms and rejections. The copyright and IP components of the various articles were only included because they were seen as tools to protect other stronger human rights, as the rights of authors and creators are understood to be an essential precondition for cultural freedom and for the participation in and access to the benefits of scientific progress. Preamble of WIPO Copyright Treaty 1996 recognizes the need to maintain a balance between the rights of authors and the larger public interest, particularly education, research and access to information, as reflected in the Berne Convention.[8]

Copyright benefits the public when it acts as an incentive for private entities to expend time and labour in engaging in costly and risky research in order to produce more innovative and creative works for the benefit of the public. Thus, it is in the interest of the private copyright owners as well as the public to have strong copyright protection. However, when the public interest refers to a private user or consumer of copyright works, excessively strong protection of copyright will hamper free access to copyright works; this is an important consideration in research and scholarship. This can happen when private individuals are constrained from gaining access to copyright works due to high prices and availability problems. Here, conflict arises between the interest of the users, who want easy access to copyright works, against the interest of the copyright owners, who want robust protection of copyright law, enabling them to fully control and exploit their work. The expansion of copyright protection has further raised concerns that excessive enforcement of copyright law can actually limit public access to copyright works.

Enforcement of Copyright under International Treaties

 

The Berne Convention for the Protection of Literary and Artistic Work 1971 was first made in 1886 in Switzerland. World Intellectual Property Organization (WIPO) revised the Berne Convention in 1971. The United Kingdom incorporated the Berne Convention in 1988 under the Copyright, Designs and Patents Act and the United States of America ratified the Berne Convention in 1988. Berne Convention is the first international treaty of copyright, which deal with the enforcement of copyright in member countries of WIPO. Article 16 of Berne Convention 1971 states that: Infringing copies of literary and artistic works are required to be seized by customs authority in member countries of WIPO. The procedure of seizure would be adopted by member country as per a domestic law of the state. The World Copyright Treaty was made in 1996. Article 14 of the World Copyright Treaty states that: Member countries of WIPO are required to adopt a suitable measure to enforce provisions of the World Copyright Treaty and there should be an adequate enforcement procedure available for the effective protection of literary and artistic works and adequate remedies should also be available to punish infringer and to reduce infringement of copyright in member countries of WIPO. The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is the only treaty of the World which contains exhaustive provisions of Intellectual Property protection in member countries of World Trade Organization (WTO). TRIPS is part of the General Agreement on Tariffs and Trade (GATT) and divided into seven parts, consisted of seventy-three articles. Part I deals with general provisions. Part II is consisted of principles related to scope, availability and use of different IP rights. Part III contains provisions about enforcement of IP rights in member countries of WTO.[9]

Enforcement of Copyright in Malaysia

According to the International Intellectual Property Alliance 2010 Special 301 Report on Copyright Protection and Enforcement (2010), Malaysia remains on the Watch List, with an Out-Of-Cycle Review to monitor the Malaysian government ‘s progress in order to ensure a decrease in the level of copyright piracy, by concentrating on certain areas of concern. Malaysia is placed at the lower level of the Watch List, which indicates that copyright is an issue of concern but not such a big issue that it poses a threat to US businesses, unlike China, Russia, Canada, Algeria, Indonesia, Argentina, Chile, India, Israel, Pakistan, Thailand and Venezuela. Similar to situations in other countries, most copyright infringement cases in Malaysia involve software, films and music. Books and literary works remain the least pirated copyright works i.e. only 10% in Malaysia. Spurred by a desire to enhance the attractiveness of its Multimedia Super Corridor (MSC) to high-tech investments, Malaysia has already taken a number of steps towards updating its copyright laws to meet the challenges of the internet era. In response to the explosion of the internet industry, The Malaysian Copyright Act 1987 was replaced by the Copyright Act 1997 which came into force on the 1st April 1999. The provision of the new Act makes unauthorised transmission of copyright works over the Internet and infringement of copyright. As for the definition of the literary work, it now includes table of compilations “whether or not expressed in words, figures of symbols and whether or not in a visible form”. The amended Act recognize the copyright owner’s exclusive rights to control work that is transmitted via wire or wireless means to the public, including making available this work to the public in such a way that members of the public may access the work from a place and at a time individually chosen by them.[10]

The Copyright Act 1997 certainly would help to overcome any effective technological measures aimed at restricting access to work, removal or alteration of any electronics rights management information without authority, or distribution, importation for distribution or communication to the public, without authority, works or copies of works in respect of which electronic rights management information has been removed or altered without authority. All in all, the new Act make it clear that an author has the right to be identified and has moral right against any mutilation and distortion of his work. These provisions are aimed at ensuring adequate protection of IP rights for companies investing in the IT and multimedia environment. As a member of the Berne Convention, Malaysia recognises a wide variety of artistic works which are copyrightable, including literary, artistic, and musical works, sound recordings and films, drawings, computer codes, and more. All artistic works receive protection for the form of the work’s expression meaning, for example, that the work is protected, but the owner cannot prevent someone from creating a different work which accomplishes the same thing by using copyright. There is no formal requirement for the work to be registered in Malaysia in order for the copyright to be claimed or recognised. Nevertheless, as of 2012 a copyright owner may voluntarily register their copyright in Malaysia by notifying Malaysia’s Copyright Controller of their claims and giving Intellectual Property Corporation of Malaysia (My IPO) a copy of the copyrighted work. Voluntary registration is strongly recommended for copyright owner, as the registration can be extremely useful in enforcement proceedings as evidence of ownership. Without registration, it may be difficult for the copyright owner to prove the ownership of the copyright. However, it should be kept in mind that voluntary registration can only be done by a citizen or by a permanent resident of Malaysia.[11]

Copyright registrations are not subject to substantive examination, so the application itself is taken as proof that the facts within the application are true. If the notification is in order, a notice will be sent to the applicant that the information and work has been recorded in the copyright register. After examination, an applicant may ask for a certificate which can be presented to Malaysian courts as evidence in cases of enforcement. As according to the Berne Convention, in Malaysia, copyrights extend protection for the life of the author and an additional 50 years thereafter. For unpublished works, copyright protection lasts for 50 years from the beginning of the calendar year following the publication date. Once the right of the copyright owner is infringed, he can start administrative, civil or criminal actions but before going to start litigation, copyright owners should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement. Beyond mediation, the two main avenues of enforcement in Malaysia are the Enforcement Division of the Ministry of Domestic Trade, Cooperatives, and Consumerism (for criminal enforcement) and IP court litigation. Before any enforcement action, you should always gather proof of your ownership of the IP in question and proof of infringement. In criminal enforcement with the Enforcement Division (ED), counterfeiting and piracy cases can quickly yield goods seizures, injunctions, and prosecutions.

To prepare for such actions, owner should provide proof of copyright, the proof of infringement and a letter of complaint. After raids or product seizures, copyright owners should assist the ED by providing identification and analysis of seized goods to prove infringement. Enforcement by the ED is also recommended for the copyright owners because it would provide for immediate confiscation of infringing goods.

 

 

In litigation through IP courts, IP owners can bring cases before specialised Malaysian IP courts. These courts are empowered to issue injunctions which halt infringement and to assign damages to be paid to the rights owners. Nine months is the prescribed maximum waiting time for these cases between filing and their day in court, offering a reasonable expectation of timely resolution. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines. No matter which enforcement rout a copyright owner decides to take, it must be ready to prepare and collect evidence to show that it is the owner of the copyright in Malaysia and show proof that the copyright has been infringed by a third party.  It is pertinent to mention here a case of copyright infringement in High court of Malaya between Microsoft Corporation v/s Conquest Computer Centre, in which the plaintiff alleged the defendant sold a personal computer without the plaintiff’s consent and without providing the plaintiff’s original and licensed software in CD- ROMs/discs, the end-user license agreements, manuals, product registration cards and certificates of authenticity (CA) to the purchaser. The defendant contended there was a trial version of the works whereby the software could be used free for a certain time. The defendant relied on internet print-outs of articles arguing there was a ‘free trial version’ of the works and that professionals normally consult or refer to books and articles written regarding their fields. The court of law stated that the defendant could have easily verified the alleged ‘free trial version’ by logging into the Microsoft website and, in resorting to depend on other websites and articles from the internet to support the defendant’s contention, the defendant was merely attempting to ‘argue’ its way out of an infringement action.[12]

This case sets the record straight for both consumers and traders alike to be mindful of the terms and conditions of downloading and installing any computer program. The court’s approach also possibly refutes the general belief among software users that there is such a ‘free trial version’ that excuses illegal use of computer software. Another recorded case on the copyright is the lawsuit by the Recording Industry Association of Malaysia against a shopping complex in the central of Pahang for renting out it’s premised to VCD pirates. To win conviction against the culprit in court, for example, an offender was fined RM7.3 million besides ordered to serve a three-year jail sentence in January 2005. In one of the raids conducted by the enforcement officers, 31 computers and 211 copies of suspected unlicensed software from five companies were seized. If found guilty in a court of law the directors could face jail terms up to five years, on top of a possible fine of anywhere between RM2,000.00 to RM20,000.00 for each infringing software. In December 1998 Sun Movie sued against US Motion Pictures. Section 2 of Malaysia’s Copyright Act held that a different on ownership and copyright must be executed by the representative of the company. It is very costly to bring a witness from US to give live testimony and it was a threat to KPDNKK. This case is still pending. Besides this, in May 1999, the local recording association filed a case against Sony Music Entertainment v/s Wilayah Computer. KPDNKK agreed to allow test cases to be filed in which claims of subsistence of ownership of copyright would be based on affidavits filed by the local anti-piracy agent of US Films Studios. The looming unauthorised copyrighted materials in Malaysia has made headlines and tainted the IP industry, due to this in 1999, Malaysian political leader denounced optical media piracy, and enforcement authorities mobilised to conduct and active programme of raiding retailers and other vendors of pirate products within the country.

In his speech addressing a roundtable talk on IP rights co-operation between Malaysia and United States in Kuala Lumpur on 20 April 2006, the Domestic Trade and Consumer Affairs Ministry (KPDNKK), Datuk Mohd Shafie Apdal said efforts are taken to amend several laws and holding talks with countries where the products were originally produced. This he said should be able to clear Malaysia’s image of once being alleged as a leading exporter of pirated products. This is continued by holding discussions with countries like Hong Kong and some ASEAN countries on ways to overcome the influx of such products in this part of the region. An interagency task force under the direction of KPDNKK launched “Ops Bungkus” to crack down on optical media piracy. By mid-January 2000, over 10,700 raids had been carried out by the task force throughout the country, with some operations involving more than 100 officers. On the retail level, large quantities of pirate product were seized, and the raids garnered widespread publicity. The Hologram sticker programme under the Trade Description (Original Label) Order 2002 of the Trade Descriptions Act 1972 (Act 82), which requires all distributors to pay for and apply stickers inside the shrink-wrap of all optical discs of copyrighted materials distributed in Malaysia has tremendously reduced the number of pirated materials. Another reform in the Copyright Act would be the amended Copyright Act 2003, Act A1195, which was enforced on August 14, 2003, whereby strengthened criminal penalties and generally gives enforcement authorities more ability to carry out enforcements against copyright piracy, for example Section 50A gives KPDNKK officials the ability to carry out arrests for copyright piracy. The Malaysian Copyright Act provides for a Copyright Tribunal whose function is to grant Licenses to produce and publish in the National Language a translation of a literary work written in any other language. The Act is currently amended to expand the power of the tribunal to include arbitration of disputes relating to use of copyright works.

Enforcement of Copyright in USA

 

United States Constitution Article 8, Section 8, clause 8 is the copyright clause which states that to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. The United States of America (USA) copyright law is governed by the Copyright Act 1976, which spells out the basic rights of copyright holders, codified the doctrine of “fair use,” and for most new copyrights adopted a unitary term based on the date of the author’s death rather than the prior scheme of fixed initial and renewal terms. It became Public Law number 94-553 on October 19, 1976 and went into effect on January 1, 1978. Copyright law of the United States of America (USA) grants authors and artists the exclusive right to make and sell copies of their works, the right to create derivative works, and the right to perform or display their works publicly. These exclusive rights are subject to a time limit, and generally expire 70 years after the author’s death. In USA, any music composed before January 1, 1923, is generally considered public domain. The United States Copyright Office, it is a part of the Library of Congress and the official USA government body that maintains records of copyright registration in the United States, including a Copyright Catalog, handles copyright registration, recording of copyright transfers, and other administrative aspects of copyright law. The head of the Copyright Office is called the Register of Copyrights. The mission of the Copyright Office is to promote creativity by administering and sustaining an effective national copyright system. While the purpose of the copyright system has always been to promote creativity in society, the functions of the Copyright Office have grown to include the administering of copyright in USA and work for the effective administrative enforcement of copyright in USA and providing information services to the public.[13]

Enforcement of Copyright in Singapore

 

The Intellectual Property Office of Singapore is a statutory board under the Ministry of Law, which deals with the registration of all components of IP and administer executive enforcement procedure of copyright in Singapore. Copyright protects works like literary, computer programs, plays, music and paintings and generally the author of a copyright work has the right to reproduce, publish, perform, communicate and adapt his work. Infringement occurs when one has not obtained consent from the copyright owner to do something that only the copyright owner has the exclusive right to do. For example, a person infringes copyright if he photocopies an article without the consent of the copyright owner. It is important to note that one does not need to have reproduced the entire copyright work before infringement takes place. It is an infringement as long as a substantial amount of the original work, quality wise, has been copied. In an infringement dispute, a substantial amount is not measured merely in terms of the quantity that has been copied. The court of law also takes into account the nature of the portion that has been copied or reproduced. If the portion copied constitutes the primary part or essence of the copyright work, the court of law may construe that a substantial amount has been copied. Infringement also occurs when one deals commercially with infringing copies, like a person imports infringing copies for sale or distribution, sells or offers to sell. The copyright owner may take legal action against a person who infringes his copyright. In civil lawsuits, remedies for copyright owners include injunctions, damages and account of profits. In determining the amount of statutory damages, the court of law is to consider nature and purpose of the infringing act, flagrancy of infringement, bad faith, any loss suffered or likely to be suffered, any benefit taken, conduct of both parties, the need to deter similar instances of infringement and all other relevant matters.

In Singapore, criminal offences under copyright law include the manufacture of infringing copies for sale, sale of infringing copies, possession or importation of infringing copies for the purposes of sale or distribution. The infringing party is required to know or ought reasonably to know that the copies are infringing copies. The penalties for manufacture for sale, sale of infringing copies and possession or importation of infringing copies a fine not exceeding $10,000 per infringing copy, up to a total of $100,000 per charge; and/or imprisonment up to five years. The penalties for distribution of infringing copies for trade or for other purposes to such an extent as to affect the copyright owner prejudicially are a fine not exceeding $50,000; and/or imprisonment up to three years. The making or possession of an article specifically designed for making infringing copies, e.g. machinery for manufacturing infringing copies, is also an offence attracting a fine not exceeding $20,000 per article; and/or imprisonment up to two years. Copyright owner may serve on the Director-General of Customs a written notice stating that he objects to the impending importation of infringing copies of his works. The applicant would have to provide sufficient information to enable the Director-General of Customs to identify the alleged infringing copies and to ascertain the time and place where the copies are expected to be imported. The applicant would also have to satisfy the Director-General of Customs that the copies are infringing copies. Upon receipt of such a notice, the Director-General of Customs will take appropriate action to seize the infringing imports and inform the applicant and importer of the seizure. The applicant can then decide whether to institute an action for copyright infringement in the court of law and notify the Director-General of Customs accordingly within a period of 10 working days from the Director-General of Custom’s notice of seizure. If the objector does not institute an action in Court and there is no written notice from the importer consenting to the seized copies being forfeited to the Government, the Director-General of Customs shall then release the seized copies to the importer.

Any appropriate officer of Customs or Police may also exercise his power to detain goods that he reasonably suspects are infringing copies. The goods may be imported into or exported from Singapore or are goods in transit that are consigned to a person with a commercial or physical presence in Singapore. Upon detention, the Director-General of Customs shall notify the copyright owner and the importer/exporter/consignee, and hold the infringing copies for 48 hours. If no further action is taken by the copyright owner, the detained copies will be released to the importer/exporter/consignee. However, during the 48-hour period, in the case of imports, the copyright owner may serve a formal notice requesting the further detention of the seized copies. If the copyright owner serves such a notice, the seized copies will be detained for a further period of 10 working days within which the copyright owner has to institute an action for copyright infringement in the court of law and notify the Director-General of Customs. If the copyright owner does not do so, the detained copies will be released to the importer. In the case of goods that are to be exported from Singapore or are in transit with a local consignee in Singapore, the copyright owner has 10 working days to institute an action for copyright infringement in Court and serve on the Director-General of Customs a court order authorizing further detention of the copies, if he first places a security within 48 hours of the Director-General of Custom’s notification. The authorized officer has wide powers to examine any goods, including goods in transit, that he reasonably suspects to be infringing copies of any copyright material. The duration of copyright protection varies according to the type of copyright work concerned. Literary, dramatic, musical and artistic works, 70 years. Published editions of literary, dramatic, musical or artistic works, 25 years. Sound recordings and films, 70 years. Broadcasts and cable programs, 50 years and performances, 70 years.[14]

Enforcement of Copyright in Thailand

 

Thailand has stated its commitment to improve IP protection and enforcement, with the help of the National Intellectual Property Right Canter of Enforcement, launched in March 2013, Thailand is expected to be able to improve coordination and allow more effective enforcement actions among Thai enforcement. Copyright law in Thailand governs the legally enforceable rights of creative and artistic works under the Copyright Act 1994. Copyright is automatically protected for 50 years after the death of a known author or 50 years after publication in the case of an unknown author. It does not need registration however; it can be filed with the Department of Intellectual property (DIP). Disputes are first heard in the Intellectual Property and International Trade Court. Infringement in Thailand includes reproduction or adaptation of the work, communication to the public, letting of the original or copies of the work, rebroadcasting whole or in part, making a work to be heard or seen in public by charging money or another commercial benefit, selling, occupying for sale, offering for sale, letting, offering for lease, selling by hire purchase or offering for hire purchase and distribution that may cause damage to the owner of a copyright. Whosoever infringes copyright or the performers in Thailand shall be punished with a fine from 20,000-200,000 baht. If the offence is committed for commercial purposes, the offender shall be punished with imprisonment for a term from six months up to four years or a fine from 100,000-800,000 baht or both imprisonment and fine. Whosoever infringes copyright by selling the work for profit, distribution which may cause damage to the owner of copyright, or communicating the work to the public by knowing that the work is made by infringing the copyright of another person shall be punished with a fine from 10,000-100,000 baht. If the offence is committed for commercial purposes, the offender shall be punished with imprisonment for a term from three months up to two years or a fine from 50,000-400,000 baht or both imprisonment and fine.

 

Dilemma in Enforcement

 

The issue of copyright deals as such with intangible matters and it does not deal with ownership of tangible matters but with rights in a spiritual content. To enforce rights in such intangible matters poses of course certain dilemma. The dilemma seems to be of three kinds: The first dilemma area lies exactly in the fact that the law deals with intangible matters which are not easy to grasp immediately. The second dilemma area lies in the practical difficulties in finding ways to make police, prosecutors and other law enforcement officials aware of the issues and interested in taking efficient action. The third lies in the fact that sometimes political and economic interests oppose actions against piracy and counterfeiting.

Copyright concerns intangible matters

 

The fundamentals of copyright law are comparatively easy to understand. Stated in a simplified form, the law grants exclusive rights to authors in order to stimulate creativity. Thus the basics are comparatively easy to understand. What is more difficult is the technically complicated structure of the law. This is due to primarily two factors. One is that the society is becoming more complicated and the technology has become more sophisticated and thus the law very complex. The other one is that the international conventions and in particular TRIPS have set standards which in themselves makes the law more complex. This situation means that it is not always easy to make the law understandable to the general public. It is, for instance, not easy for the public to understand and accept that a CD which someone has bought cannot be played freely on the radio or in public places (because this is a public performance under copyright law), or that is would not be allowed to photocopy works freely. It also means that it is not always easy for judges who are not specialised in the field to grasp the mechanisms of copyright law and to implement them properly.

 

What is then the solution? As far as the judiciary is concerned, part of the solution is to understand the rationale of copyright law. It is there in order to stimulate creativity, offer protection for authors economic and moral interests and also to form a necessary condition for transfer of certain kinds of technology. Consequently, copyright law is not an end in itself but is there to serve certain interests. It is with this in mind that the judge has to look into the law and apply it in concrete cases.

How to make enforcement authorities interested in IP

Of course enforcement authorities have many priorities and copyright may not be on top of the list. It happens also in the countries of the West that police and public prosecutors are uninterested in violations of intellectual property law for the simple reason that they ignore or do not understand it and they have other priorities. There is certainly no easy solution to this dilemma. One solution is to devote money and resources to training activities directed at enforcement officials. Such activities have been undertaken in a number of countries and have given fairly good results. Another solution is to show the close links which sometimes exist between piracy of, for instance CD´s and computer programs and organised crime. Information available shows that a certain number of illegal activities, including terrorism, are financed from piracy activities. Those are comparatively easy to carry out, yield considerable returns and are generally not particularly risky as the sanctions are normally much weaker than in the case of drug trafficking.

Forces opposing actions against piracy

In certain countries considerable interests are involved in piracy and counterfeiting activities which form part of what one could call “the alternative economy.” Those interests are  sometimes politically well connected. Because the economic stakes are sometimes very high, the perpetrators do not hesitate to use violent measures to defend their interests. It could consequently be difficult for the enforcement authorities to act properly in such situations.

Effects of piracy

The impact of piracy among others will cause the country’s economic decline. This is because the national income tax to be reduced as a result of the production-based printing industry cannot be fully generated. Manufacturers who produce a valid printing industry is suffering losses due to natural products and goods produced have a decrease in sales of the company. Therefore, the original producers cannot cope with the tax burden imposed by the government, is thus counts the impact on the country’s economic collapse. Instead operator’s piracy is lucrative, they are more concerned with their own interests without considering the consequences. As for example in the computer industry in Malaysia, the income that can be generated from this industry in 1996 is more than RM300 million and the number is expected to increase in subsequent years, but the problem arises with the existence of pirated computer softwares, this situation led to national income for the industry has been reduced. Actually, if the national income is increasing, then such expenses and provisions used to develop social facilities used for the comfort and prosperity of the people in this country. The rampant piracy in the country has also led to the country’s good name tarnished. Touching on the problem of piracy is in fact since 2004, Malaysia was placed as the country is on the list of major observations by the International Intellectual Property Alliance (IIPA) as among the countries most seriously affected by piracy. This situation has led to the outside give the impression that the country is gathering nest of piracy and the impact on Malaysia’s good name in the eyes of the world. But on the efforts of all parties to curb this problem, Malaysia finally come off the watch list by the alliance in 2007. Piracy has also caused a direct impact on the entertainment industry in this country. This arises because of the existence of pirated VCD and CD albums music artist and local movies is rampant in this country. Dissemination of these materials on the Internet that was taken without permission legitimate producers also cause this problem occurs.

According to entertainment industry revenues generated in 1996 through 2000, it declined from RM80 million in 1996 to RM20 million in 2000. It also estimated that about 60 percent of the total value of the entertainment industry countries dominated by piracy. According to statistics released by the International IP Alliance in 2003, revenue in the entertainment industry suffered losses at a high level. From 1998 to 2003, losses incurred by record companies is more than 70 percent. Album sales popular artists also experienced a decline from year to year. The most significant impact as a result of piracy against the entertainment industry in this country will lead investors from abroad are not confident to invest in the entertainment industry in this country. While producers from foreign countries are also less interested in placing their products in the country. Socially, piracy can have negative consequences on society. With the existence of this activity, the videos are negative elements such as bad videos readily available to customers, it is because of this kind of video can be printed easily and produced in large quantities by means of piracy. Customers particularly impressionable teenagers and students with videos like this and their impact is involved with cases of sexual crimes and vices such as rape and involved with conducting extramarital sex. This clearly shows that the impact of pirated goods can lead to moral decadence, especially those from the younger generation. In addition, piracy can also lead to other crimes. In summary, all of these situations will result in an increase of criminal cases in the country, thus demonstrating that the country is labelled as a country that is insecure. The raids by Malaysian enforcement agencies indicate the country’s stand to wipe out the widespread of copyrighted materials.  One of the key indicators to this stand is the amendment of governing Copyright Laws and increasing number of filed cases.  As said by Datuk Mohd Shafie Apdal in his continuing speech, while the government would continue to take the necessary steps to put an end to piracy and counterfeiting activities, he reminded IP owners of their roles to protect their own products.  “Take civil actions against the violators of your IP, the IP owners, not the government, are the immediate losers”.

Conclusion and Recommendations

 

Intellectual Property Law is that property law which concerns legal rights associated with creative efforts commercial reputation and goodwill. Copyright is one of the component of IP, which is used for the protection of literary and artistic works including phonograms and sound recordings. The Berne Convention is the first International Treaty, which contains a provision about the seizure of pirated goods but the customs authority of the member states of WIPO. TRIPS contains exhaustive enforcement provisions of IP, required to be implemented in member countries of WTO. Copyright owner has exclusive right to use it and to take all its potential benefits and to give it to another fully or partially. Copyright owner has right to start litigation against infringer and pirate of his registered copyright. Copyright is an intangible property which cannot be touched and felt and does not have a material shape, thus there are certain points to be addressed for the better enforcement of copyright. First of all, copyright is intangible property thus it is not easy to be grasped by the people and understand and to avoid it infringement and piracy. Secondly, there is a difficulty to teach laws of IP to the police officials, prosecutors and other law enforcement officials because it is not easy to understand as it is a modern day law and attached with the modern technology thus an old man in an administration somehow do not understand IP in true sense. Sometimes there are political and economic interests which oppose taking actions against pirates and infringers. One more thing is that the Ministry of Trade and Development do not have fresh blood and man power to suitably enforce copyrights as well as new technologies should be adopted like new search machines by the customs authorities to check the pirated material and to seize them to protect copyrights. Better steps should have been taken by the Government of Malaysia to stop import and export of infringed and pirated material to enter Malaysia and to give a property opportunity to the right holder to take a prompt action against infringement of his registered copyright in Malaysia.

It is recommended that there are a variety of measures to address the problem of piracy in real. One step that can be done is to carry out basic boycott of pirated goods. We are aware that consumers have purchasing power in an economy. Thus the problem of piracy is to manifest pirated goods in the market is unlikely to happen if the demand from the consumers does not exist. In this case, the user request is to be considered as it will affect the purchasing behaviour of consumers against pirated goods, and it is actually known as “the dark side of consumer behaviour”. Indeed, consumers play a key role in addressing this issue, the emphasis on awareness of copyright or patent awards are important in every layer of society. Awareness is meant here is the awareness of the effort and hard work that has been undertaken by the original manufacturers, businesses that run them eventually were copied and taken arbitrarily without their consent, even those who mimic and scored piracy is also getting returns compared to the original manufacturer. Therefore, the users in these countries should be aware of how they feel when they are in the same fate as the original manufacturers. Business boycott by the user one can curb piracy. Measures such as exercising maximum control over the price of natural goods is also able to curb this problem. The maximum price control is meant here is the maximum price fixing by certain bodies to establish a genuine item such as VCD and DVD have been reasonable for purchase by consumers. The price set must take into account the quality of the goods, we are aware that one of the factors leading to purchase pirated goods this is a cheap price, so pricing control a maximum of natural goods is important not to become a burden on the user to have, although pricing is not as cheap as the original stuff pirated goods prices, consumers need to be aware that the quality of the original stuff is better quality than pirated goods.

 

 

References

Alexandra, A. (1999). “Copyright in Teaching Materials.” Educational Philosophy and Theory 31(1): 87-96.

 

Bainbridge, D. (1999). Cases and Materials in Intellectual Property Law. United Kingdom, Longman Publishing Group.

 

Cahir, J. (2005). “The Moral Preference for DRM Ordered Markets in the Digitally Networked Environment.” New directions in copyright law 1.

 

Copinger, W. A. (2014). Copinger and Skone James on Copyright. United Kingdom, Sweet and Maxwell.

 

Dreyfuss, R. C. (1987). “The Creative Employee and the Copyright Act of 1976.” The University of Chicago Law Review 54(2): 590-647.

 

Ficsor, M. (2001). Law of Copyright and the Internet: The Wipo Treaties and Their Implementation. United Kingdom, Oxford University Press.

 

IM Azmi (2008). “Copyright and Access to Knowledge: Country Study-Malaysia.” Consumer International Malaysia.

 

Microsoft Corporation v/s Conquest Computer Centre Sdn Bhd. (2014). Malaysian Law Review, High Court Malaysa: 578.

Phillips, J. (1997). Whale on Copyright. United Kingdom, Sweet & Maxwell.

 

Salmond, J. W. (1966). Salmond on Jurisprudence. United Kingdom, Sweet & Maxwell.

 

Subramanian, A. (2000). “Can Trips serve as an Enforcement Device for Developing Countries in the WTO.” Journal of International Economic Law 3(3): 403-416.

 

Tee, K. L. (2001). “Copyright Law in Malaysia.” Malayan Law Journal: 10-11.

 

WEI, S. S. (2000). The Law of Copyright in Singapore. Singapore, Research Collection School of Law.

 

Zimmerman, D. L. (2010). “Statute of Anne and its Progeny: Variations without a Theme.” Housten Law Review 47: 965.

 

 

[1] Zimmerman, D. L. (2010). “Statute of Anne and its Progeny: Variations without a Theme.” Housten Law Review 47: 965.

 

[2] Cahir, J. (2005). “The Moral Preference for DRM Ordered Markets in the Digitally Networked Environment.” New directions in copyright law 1.

 

[3] Bainbridge, D. (1999). Cases and Materials in Intellectual Property Law. United Kingdom, Longman Publishing Group.

 

[4] Salmond, J. W. (1966). Salmond on Jurisprudence. United Kingdom, Sweet & Maxwell.

 

[5] Phillips, J. (1997). Whale on Copyright. United Kingdom, Sweet & Maxwell.

 

[6] Copinger, W. A. (2014). Copinger and Skone James on Copyright. United Kingdom, Sweet and Maxwell.

 

[7] Alexandra, A. (1999). “Copyright in Teaching Materials.” Educational Philosophy and Theory 31(1): 87-96.

 

[8] Ficsor, M. (2001). Law of Copyright and the Internet: The Wipo Treaties and Their Implementation. United Kingdom, Oxford University Press.

 

[9] Subramanian, A. (2000). “Can Trips serve as an Enforcement Device for Developing Countries in the WTO.” Journal of International Economic Law 3(3): 403-416.

 

[10] IM Azmi (2008). “Copyright and Access to Knowledge: Country Study-Malaysia.” Consumer International Malaysia.

 

[11] Tee, K. L. (2001). “Copyright Law in Malaysia.” Malayan Law Journal: 10-11.

 

[12] (2014). Microsoft Corporation v/s Conquest Computer Centre Sdn Bhd. Malaysian Law Review, High Court Malaysa: 578.

 

[13] Dreyfuss, R. C. (1987). “The Creative Employee and the Copyright Act of 1976.” The University of Chicago Law Review 54(2): 590-647.

 

[14] WEI, S. S. (2000). The Law of Copyright in Singapore. Singapore, Research Collection School of Law.

 

ENFORCEMENT OF COPYRIGHT IN MALAYSIA

The global expansion of e-Commerce has sparked the discussion on potential patent protection for business methods. My side of the coin by M Thavasegaran

The History and Evolution of Business Method Patents Business methods is a rapidly evolving topic in patent law. Business methods originally could not be patented at all, but they are now considere…

Source: The global expansion of e-Commerce has sparked the discussion on potential patent protection for business methods. My side of the coin by M Thavasegaran

The global expansion of e-Commerce has sparked the discussion on potential patent protection for business methods. My side of the coin by M Thavasegaran

SHELL OUT = Eating seafood masses on table?

As an introduction, I have chosen this topic mainly on the reason that I have been personally asked by a good friend of mine specifically, in relation to the Intellectual Property (“IP”) issues. As such, it would be interesting to write an article on this topic as part of the Individual Activity 1 instructed by our beloved Pn Nuha.

Foremost, let us have a look at the registered trade marks involved.

REGISTERED TRADE MARKS:

(1) Word mark

2015071792detail.gif
Class 16,  35 and 43

(2) Composite marks

2015071790detail.gif
Class 16 and 35
2013060752detail.gif
Class 43
(Retrieved from  https://iponline.myipo.gov.my/ )

 

CLASSES (in general as provided under the Nice Classifications).

Class 16 – Refers to goods which includes paper, cardboard and certain goods made of those materials as well as office requisites incorporating the said trade mark.

Class 35 – Refers to services which includes advertising, business management, business administration and office functions.

Class 43 – Refers to services providing food and drink and temporary accommodation.

ISSUES RAISED BY THE PUBLIC (as observed via Facebook posts):

1) The pattern ‘shell out’ has been patented?

Public are easily confused with the different terminologies used in the field of IP especially with regards to the word ‘pattern’, ‘patent’ and ‘trade mark’ (probably due to lack of exposure on the same). As such, it would be best to clarify the same here as follows:

a) Pattern – This term is usually used under the Industrial Design Act 1996 which refers to a ‘two-dimensional features which are put on articles for decorative purposes’.  For example, the patterns on the surface of a vase.

b) Patent – Patent generally involves an invention which is new, involve inventive steps and industrially applicable as provided under the Patents Act 1983. Method of doing business however is not patentable. Nevertheless, the apparatus of doing the business may be patentable if it fulfills the statutory requirements of an invention.

c) Trade mark – A trade mark is used as an indicator of origin of a goods or services to the owner of the said mark. As defined under Section 3 of the Trade Marks Act 1976, ‘mark’ include ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof’.

In this situation the mark “2015071792detail.gif” and the logo “2015071790detail.gif” has been registered under the Trade Marks Act 1976.

Further, as you may note and as pointed out above, the mark “2015071792detail.gif” is a word mark, and the mark “2015071790detail.gif” is a composite mark being a combination of the crab claw device and the word “shell” + “out”.

2) Can the owner stop other business from using “shell out”?

YES. The owner of the trade mark enjoys exclusive rights over his marks which is also deemed to have been given to the use of the marks in relation to the goods or services for which it is registered.

For example, the “2013060752detail.gif” mark has been registered under Class 43 in relation to the services of providing foods and drinks. As such the protection granted extended to the goods in relation to the services as well such as the food itself.

In the current situation, the owner of the marks has put up a cautionary notice on 14th April 2017:


(Retrieved from http://faizalpatent.com/2017/05/09/larangan-penggunaan-trademark-shell-out/)

 

It is a general practice by the owner of a registered trade mark to put up a cautionary notice on the newspaper as a medium to show that he/she is the owner of the said trade mark in order to defend the mark against any act of  infringement. Nevertheless, following to the issuing of the cautionary notice he/she may still initiate legal action against any act of infringement of his registered trade marks.

Please also note that the owner may take legal action not just from the date of the registration of the trade mark, but he may also do the same to any infringement occurring between the filing date and the registration.

3) Can other business use “shell out”?

NO. Any use of an identical or so nearly resembling the registered marks so likely to deceive or cause confusion in the course of the trade in relation to goods or services in respect of which the trade marks are registered will amount to a trade mark infringement except where such act is permitted by the owner of the marks. 

However, other business which is beyond those for which the trade mark is registered can still use “shell out”. This would include any attempt to register the same. Such application would rarely be acceptable since it lacks inherent distinctiveness in itself unless the new applicant can show that there is no likelihood of confusion or capable of distinguishing the applicant’s goods or services from the registered owner’s marks.

4) Does this also means that other business should stop selling foods with the same concept – eating seafood masses on table?

NO. Trademark protects the mark itself, having associated with the owner of the mark in respect of the goods and services the owner offers. However, this does not extend to the way or method of doing the business itself.

In other word, other business may still serves foods with the same concept provided that they did not refer it as ‘shell out’.

5) But most business has been using ‘shell out’ for the past few years! 

A generic mark refers to the use of the mark as a name or description of an article, substance or service such as Tupperware or Aspirin. However, there are few other instances whereby the mark remains validly registered despite the same has become generic in some other countries such as Cola or Xerox. In this situation particularly, the public claimed that “shell out” referred as eating seafood masses on table.

Though it is a legal principle under the trade mark law that a generic mark may be deemed as an entry wrongfully remaining in the Register of the MyIPO (as provided under Section 33 of the Trade Marks Act 1976) the general principle has always been that the registration of the trade mark remain valid even if the mark has become generic by the use of the public after the registration of the said marks.

However, if other business owner (traders) can prove among others, that the word has become generic which is used by them not in relation to the goods connected in the course of trade with the owner of the registered mark they may apply to the Court to remove the registered mark from the MyIPO’s Register.

6) What if the other business have been using “shell out” before or at the same time with the registered owner?

There are 2 ways to go about the above situation:

(a) Prior use

In the event that other business has been using “shell out” before the registered mark, he/she can show that he/she have used the same in the past over a period of time.

This is usually done by showing substantial evidence of use of the mark in Malaysia to the MyIPO (prior to the filing date of  the current registered mark) to substantiate arguments that his/her mark has acquired a secondary meaning by way of its extensive use in relation to the goods / services applied for.

(b) Honest concurrent use

New applicant may need to convincingly argue that he/she has honest concurrent use of his/her mark since at least the date of application of the registered marks.

If the new applicant can prove honest concurrent use, this amounts to an exception to which the Registrar may then exercise his discretion to allow the new applicant’s mark to proceed to registration despite the fact that there may already exists a confusingly similar mark for similar goods or services.

For this purposes, the new applicant needs to adduce evidence which is capable of showing to the Registrar that the relevant public has had sufficient opportunity to become aware that there are two such marks which are in use in the same market and that they are able to be alert to the possibility of confusion and as such some degree of actual confusion may be tolerated.

(c) Application to expunge / remove the registered mark by an aggrieved person:

There are several grounds provided under the Trade Marks Act 1976 to remove / expunge any registered mark such as:

(i) Non use – If  the new applicant is able to gather evidence to show that the registered mark has not been used for a period of 3 consecutive years, the new applicant will be able to apply to the High Court to expunge the cited mark on the grounds of non-use.

(ii) The mark has become generic (as discussed earlier).

(iii) Entry made in Register without sufficient cause – This refers to the registrability of the registered mark.

As a conclusion, it is important for the public to be more aware of the various field of protection and the right entails under the Intellectual Property provided under our statutory laws. Trademark particularly did not just merely serve as an indicator of origin of a goods or services to the owner of the said mark but it also protect the quality associated with the mark.

There is no business without monumental hurdles from marketing to branding in order for them to achieve to their current position in the market. To have it widely known using the mark is an effort to distinguish the owner goods from other traders and to built a reputation is not a ONE DAY business. Without the protection accorded by the registration of the trade mark, third parties can easily and unfairly ride on and profit from the owner’s goodwill and reputation present in his/her mark. 

AZARITH SOFIA BINTI AZIZ
GP04821

*The above article is purely for academic purposes only and does not constitute legal advice, opinion or any other form whatsoever.
SHELL OUT = Eating seafood masses on table?

Apple Vs Samsung Patent Case

APPLE

The U.S. Court of Appeals for the Federal Circuit has  reopened the years-long case between Apple and Samsung in which Samsung has been accused of copying the design of the iPhone for its Galaxy S series.

To be clear, the case doesn’t come down to whether or not Samsung infringed on Apple patents. At issue before the court is how the damages will be calculated. Samsung, which was ruled to have violated Apple’s design patents by a jury in 2012, initially found itself on the hook for the profits generated by each of the 11 patents determined to have to been infringed. Effectively, the company would have had to pay Apple a percentage of each sale. The justices disagreed, ruling that the company only needed to pay damages on the infringing components of those smartphones.

In throwing out the case in December, they were persuaded by the “text of the law,” The Hill reports. In delivering the court’s majority opinion, Justice Sonia Sotomayor wrote that “article of manufacture” — the legal term that refers to both a product sold to a consumer and a component of said product — has a “broad meaning,” and that an “article” could refer to “a particular thing.” In Samsung’s case, an “article” could be an infringing smartphone’s appearance, for instance, or software feature.

Samsung initially faced $1 billion in penalties, a total representing all profits generated by the infringing smartphones. That fine was subsequently reduced to $548 million, and then again to $399 million.

Design patents, as the name suggests, protect the unique look of a product. Utility patents protect the functional parts of a product. In the original 2012 case, Apple sued Samsung saying it copied various design patents of the iPhone. The jury ended up siding with Apple, agreeing that Samsung copied the black rectangle shape and rounded corners, the bezel, and a patent that covered the graphical layout of icons on the iPhone. The Korean giant was ordered to pay “total profits” of the phones in question.

“Whoever during the term of a patent for a design, without license of the owner, applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties,” the law states.

Samsung, and many of its supporters, believe the reward for infringing a design patent should not involve the “total profits.” Since a smartphone is filled with thousands of patented components, infringing design patents should not amount to the total profit of the smartphone. Apple counters that the whole design sells the phone — removing the need to pay total profits would hamper legal protection for new products and design.

In recent court filings, Apple has said while “total profit” should mean that Samsung has to pay the total profit of a sale, “article of manufacturer” could mean specific features and not the whole product. The company said in court that significant financial damage would deter people from stealing designs of products.

In October 2010, executives from Samsung and Apple met and Apple execs suggested Samsung pay $30 per phone and $40 per tablet for infringing on design patents for the iPhone and iPad. Earlier in the year, HTC agreed to pay Microsoft $5 for every Android device ever sold. Apple’s suggestion was too high for Samsung and the company declined.

Apple sued Samsung the following year for “slavishly” copying the iPhone’s design. Samsung countersued for 3G patents, and filed claims in Germany, Japan, and South Korea.

The next six years involved Apple getting judges to ban Samsung devices in various countries, failed settlement talks, and Samsung and Google being forced to scale back the universal search bar on the Galaxy Nexus and Galaxy S3. In the U.K., Apple also had to post a public apology that said Samsung did not copy its designs.

In 2012, however, a trial court verdict was reached in the U.S. The jury sided with Apple, awarding the U.S company $1 billion in damages. That did not stop the iPhone maker, as it quickly followed up with another lawsuit that targeted newer Samsung devices. In 2013, the judge that presided over the first case found that the damages Samsung had to pay were calculated incorrectly. Around $450 million of the $1 billion was invalidated and a retrial kicked off later in the year.

In another blow to Samsung, the retrial earned Apple an additional $290 million in damages, bringing the total Samsung has to pay to $929 million, a little short of the original $1 billion victory. Samsung immediately appealed the decision. In December 2015, Samsung agreed to pay $548 million to Apple, of which $399 million was in dispute — in other words, $149 million was the lowest amount Samsung would have to pay.

That amount was based off total profits made by Samsung — and this is where the Supreme Court comes in. Now, Samsung is arguing that the $399 million is far too excessive.

More than a hundred designers and educators support Apple. They are industry professionals and have provided product design services to companies such as Apple, AT&T, Calvin Klein, Coca-Cola, Ford, General Electric, General Motors, Hewlett-Packard, Google, IBM, the New York Stock Exchange, NASA, Samsung, and more.

Some other notable names include Raymond Riley, executive creative director at Microsoft, Bruce Claxton, the former senior director of design at Motorola Solutions, Calvin Klein, the founder of the fashion brand, Sohrab Vossoughi, a former senior industrial designer at HP, and others.

Who’s with Samsung

A host of Silicon Valley companies are rooting for Samsung, including Google, Facebook, eBay, Dell, HP, Newegg, Vizio, and a smaller coalition of other tech firms. Non-profits like the Electronic Frontier Foundation also support the South Korean giant, as do 50 intellectual property professors from universities like Stanford, Georgetown, Notre Dame, and more.

The decision won’t impact consumers, but it will affect how future design patent disputes are handled.

 

PREPARED BY:

MASLEE GP04834

 

REFERENCE

  1. HTTP://TEKNOKOMPAS.COM
Apple Vs Samsung Patent Case