Beyond the Boundary : Non-traditional Trade Marks

Trade mark is one of the branches of intellectual property. It is a sign which distinguishes the goods and services of one trader from those of another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these. Below are examples of trade marks that people are familiar with:

petronas  1901ferragamo-header

Trade business is ever-changing; it does not remain constant especially with the current advancement of technology. Due to its harshly competitive nature, entrepreneurs are constantly searching for novel means to identify and safeguard their brands thus giving births to a new groups of trade marks called non-traditional or non-conventional trade marks.

So, what is a non-traditional trademark? Is it the same as the marks shown above? Non-traditional trademark is a mark that does not belong within any existing conventional category of trade marks which includes but not limited to sound, scent, taste and motion. These are the marks that has risen thanks to the creativity of trade owners and in order to enhance the scope of mark owners’ rights, some nations have allowed for the registration of such marks.

Among all the nations in the world, the United States could be said to be the first country that has allowed for the registration and protection of non-conventional marks through the Lanham Act. Other countries such as Canada, Japan, and China are relatively new in managing non-conventional trade marks and rumour has it that Malaysia is also intending to allow the registration of these trade marks. In 2016, MYIPO announced that they intended to amend the ‘outdated’ Trade Marks Act 1976 and the new Act should be in force in the first quarter of 2018. Alas, here we are in the second quarter of 2018 yet the supposedly new Trade Marks Act 1976 is nowhere to be seen or heard. Disappointed, but not surprised though. It will be interesting to see how MYIPO will set the criteria of non-traditional marks and how to manage them so the new amendments is surely anticipated.

Traditionally, trade marks must be capable of being presented graphically. Meaning that it must be something that could only be perceived visually thus sounds, tastes and scents are not eligible as a trade mark. However, as time passes, international treatise such as TRIPS and Singapore Treaty on the Law of Trademarks recognised marks perceptible by other senses as trade marks.

In the United States, quite a number of non-conventional marks have been given protection. If you are a movie lover, you would know of Metro Goldwyn Mayer’s lion roar at the beginning of their movies. That roar has been registered and is protected as a sound trade mark. The famous Nokia start-up ringtone? Yes, that has been registered and protected as a sound mark as well. Oh, and also the widely-known Tarzan’s yell. That too, is a registered sound mark owned by Edgar Rice Burroughs, Inc.

Scent is also considered as a mark and is registrable in US. However, unlike the other categories of non-conventional mark, the olfaction mark has few registrations in the US. Among the few applications that was granted sound trade mark are the minty smell of Hisamitsu’s pain-relief patches, toothbrushes with the scent of strawberries and bubble gum scented sandals.

Although taste mark is registrable under the Lanham Act in US, there is a huge problem in accepting the registration of such mark due to the fact that it is not inherently distinctive and is generally viewed as a characteristic of the goods. Rarely are there attempts to register taste marks because of the difficulty of successfully proving a non-functional purpose.

Another non-traditional mark is motion marks. Motion marks is depicted as movement of objects, figures or a combination thereof. Marks of this type may be presented as film, recordings or a moving logo. Motion mark is significant especially in this digital age. One of the eminent motion trade mark is that of Nokia’s. Nokia was granted trade mark protection on its handshake motion which appeared in its old model during start-up. Motion mark has been accepted as a trade mark in the US decades ago, with the first-ever motion mark registered in 1957. Northwestern Bank of Commerce was granted registration for its mark of a coin spinning on top of a hard surface by the US Patent and Trademark Office.

Allowing registrations for unconventional marks indeed would enhance the law to be in line with current developments but it pose challenges as well. For example, trade marks need to be gazetted and keep in the register. Of course, it is easy to keep register for graphics but how about smells or tastes? How do you keep those in the register? Merely describing the smells and taste would not be enough as these two involve the use of other sensory organs. A smell could not be stored for a long period of time. It gets affected by temperature, humidity and wind conditions and will eventually disperse. In the case of sound marks, the patent offices of other countries do accept a description of the sound by musical notation. However, it must be noted that not all people can read musical sheets. As for motion marks such as in the case of Nokia, the mark is described through a sequence of pictures. However, stills of a motion mark do not demonstrate in its true nature and how it will be used in commerce.

Nevertheless, it is interesting to see how the lawmakers of our country will incorporate these new marks into the Trade Marks Act 1976. Of course, there are pros and cons to every amendment but perhaps it is time for Malaysia to embrace these new marks and take a step further into the future.

 

References:

Teacher, Law. (November 2013). CONSIDER THE CHALLENGES FOR THE LAW OF TRADEMARKS. Retrieved from https://www.lawteacher.net/free-law-essays/business-law/consider-the-challenges-law-essays.php?vref=1

Gile, R. (n.d.). Sound Trademarks – Nokia Gets a Registered Trademark for its Default Ring Tone. Retrieved from http://www.vegastrademarkattorney.com/2007/09/sound-trademarks-nokia-gets-registered.html

Challenging Aspects of Protecting of Non-Traditional Trademarks: The Five Senses and Trademarks. (2017, February 02). Retrieved from http://www.ipwatchdog.com/2017/02/03/challenging-aspects-non-traditional-trademarks-five-senses/id=77676/

Yean, L. Y., & Ying, L. S. (n.d.). PROTECTION OF NON – TRADITIONAL TRADE MARKS – A REALITY SOON IN MALAYSIA.

USPTO Office of Public Affairs. (n.d.). United States Patent and Trademark Office. Retrieved from https://www.uspto.gov/

 

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Beyond the Boundary : Non-traditional Trade Marks

SOCIAL MEDIA AND COPYRIGHT

FB IG TwitterImage from Google

“Technology has always moved faster than the law, and that is especially true with new social media platforms”.

Nowadays, we can say that social media is part of our “needs”. The social media gives us as the users, by using its platform the ability to share the contents easily. When we see other people’s inspiring, beautiful photos and quotes, we post them via Facebook, Instagram or retweet the contents without much thought. Is it lawful to do so?

With new social media platforms and photo sharing apps becoming more and more popular, the risk of copyright infringement through the sharing of contents is more present now than ever before. When so many options allowing you to share someone’s photo at your fingertips, one may not realise the possible legal implications of what you do on social media.

 

In Malaysia, the copyright protection is laid down under Section 7 of Copyright Act 1987 (“the Act”), whereby it states that the following are eligible for copyright:

  1. Literary works;
  2. Musical works;
  3. Artistic works;
  4. Films;
  5. Sound recordings; and
  6. Broadcasts

Section 13(1) of the Act further stated that the owner of copyright works is entitled to exclusive rights of the works, as follows: to reproduce them in any material form, by way of communication to the public, to perform, show or play the work to the public, to distribute the copies to the public by sale or other transfer of ownership and to rent commercially to the public. For example, Yuli a producer of a song who uploaded his song on Youtube may perform his song on the streets, or convert the same to CD format and sell it to the public.

The Act also discusses the exclusive rights for work of architecture, broadcasting, typographical arrangement and performance.

Thus, by doing the act of copying without the permission of the owner may lead to an infringement. Reproduction of material in a material form can also be considered as an infringement.  For example, from a photo that you uploaded from Facebook to disc form.

Any exception?

You may copy other people’s work when the purpose of your act of copying or known as “fair use” falls under one of the categories as mentioned in Section 13(2) of the Copyright Act 1987 :

  1. Research, criticismor review, or news reporter;
  2. Doing a parody;
  3. When the work is on display in public; and
  4. Use for teaching.

  For example, it’s a trend doing parody on YouTube these days.

How to balance between the copying act and the fair of use defense as mentioned above? In the reported case laws, the court will look at these primary factors: The stipulated purpose and motive of the use, the nature of the copyrighted work, the amount and substantiality of the portion taken; and the effect of the use upon the potential market. Copying of only 5% is not always okay if the contents is so substantial to the original creators’ work.

Another exception is under Section 13A of the Act which provides that if there’s design document, i.e. a manual that you follow to create something that is copyrighted, making something by following it is lawful, provided that it is not an artistic work (like painting or statute). Suppose, you use Jamie Oliver’s recipe for your lunchbox business without paying him. That act is lawful. This is because Jamie Oliver cannot copyright his recipe, but the recipe that he wrote down can be copyrighted. In other words, you cannot write down his recipe and call it yours. This is also in line with the copyright’s law that ideas, procedures, or a method of operation cannot be copyrighted.

Let’s have a look at an example of Facebook’s simplified provision to the users:

You own all of the content and information you post on Facebook, and you can control how it is shared through your privacy and application settings. In addition… For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it...”

Once a photo is shared on a social media platform the terms and conditions of that platform are likely to have an effect on the copyright protection of the photo. The extent of the effect on the copyright of the photo is dependent on the particular platform. Usually the original copyright owner retains all rights in the photo and as a result the same rules apply as set out above.

Copyright infringement’s case

In US, copyright infringement action has been brought against model Gigi Hadid for sharing an image with her 35 million Instagram without attributing it to the photographer.

Gigi Hadid is a well-known public figure, named as International Model of the Year in 2016 by the British Fashion Council. Her famous name gained public’s attention in July last year when she was photographed wearing a personalised Adidas jacket, which had been customised to add an ‘H’ and remove the ‘as’ on the back of the jacket to spell out her surname. Peter Cepeda was the photographer who took the picture in question, which was subsequently licensed to publications such as the Daily Mail and was reported on around the world.

 

Cepeda's PhotoImage from Google

However, on 5 September 2017, Mr Cepeda brought a claim against Ms. Hadid and her agents, IMG Models (“IMG”), for posting a copy of his photograph on Ms. Hadid’s Instagram account. Mr. Cepeda is claiming that Ms. Hadid or her agents removed the credit attributing the photograph to him from the bottom of the image, and also the watermark showing that the image was subject to copyright. As a result, Mr. Cepeda is claiming damages and any and all profits Ms. Hadid and IMG may have made from the Instagram post. He is also asking the court to grant an injunction preventing Ms. Hadid and IMG from using the photograph any further without his consent.

While there is no case law in Malaysia for copyright infringement due to sharing content via social media without the owner’s consent, if the copyright owner wants to sue you, they have the right to do so. You may be also liable for criminal offenses under the Copyright Act.

Here are some tips for social media users:

  • Before posting content on a social media portal, you should consider whether the content is the original work of someone else and whether you have the legal right to post and distribute such content. This can be difficult to determine on social media, as the works can be posted by several hundred users to the point that authorship become unclear.
  • If you cannot determine the authorship of the content, then you should not use it. If you can identify then it is necessary to contact and ask permission to share the content.
  • When it comes to the internet, especially social media, the golden rule is that: always be sure to read the Terms of Use and Privacy Policy of the apps and websites you use.
  • In addition, if you are thinking of posting your photos, images or any contents on social media, make sure you consider the effect that may have on your rights – by taking a look at the terms and conditions of your chosen social media platform.

References:

  1. Khaw Lake Tee 2001 Second Edition Copyright Law in Malaysia
  2.  Ida Madieha bt Abdul Ghani Azmi 2013 Second EditionCopyright Law in Malaysia
  3. Miha’ly Ficsor 2001 Geneva The Law of Copyright and the Internet
  4. Rosniwati Nasir and Vanitha Ponnusamy and Kaw May Lee Munich Personal RePEc Archive 14 December 2007
  5. https://www.courthousenews.com/photographer-says-supermodel-gigi-hadid-bogarted-work/

This article is for informational only and should not be taken as legal advice. Every situation is dependent on the facts of the case.If such advice is needed, consult with your lawyer or qualified legal advisor.

 

SOCIAL MEDIA AND COPYRIGHT

Industrial Design

  1. Question For Assignment

What is secret design law all about? Do you think that it would be a good idea to introduce this law into our Industrial Designs Act 1996?

Discuss this law in relation to laws of two countries having such a provision and its suitability to our country.

  1. Introduction

What is an industrial design and deferred publication of designs? 

An industrial design is the ornamental or aesthetic aspect of an article. The design may consist of three-dimensional features such as the shape and configuration of an article, or two-dimensional features, such as pattern and ornamentation. The design features must be applied to an article by any industrial process or means of which the features in the finished article appeal to eye.

A registered industrial design is given an initial protection period of 5 years from the date of filing and is extendable for a further four consecutive terms of 5 years each. The maximum protection period is 25 years.

An industrial design registered in Malaysia is only protected in Malaysia. In order to have your designs protected in other countries, applications for registration will have to be filed within six month from the earliest date when it was first filed in any of the Paris Convention member countries.

Registered designs are open to public inspection and the details of the registration and the details of the registration are recorded in the Register of Industrial Designs and published in the Intellectual Property Official Journal.

In a move to permit designers and companies applying for the registration of designs to keep them secret from competitors until these designs are brought to market, Applicants can now opt to file a request for deferred publication of their industrial design application. This request may be filed simultaneously with the filing of the design application or at any time prior to publication of the industrial design. Accordingly, applicants are advised to file the request for deferred publication at the same time as filing the industrial design application to avoid inadvertent publication of the design application when a subsequent request for deferment is to be filed.

The maximum period of deferment is 30 months from the filing or priority date of the design application. When the application to defer publication is made after the filing or priority date, the permitted period for deferment is the remaining time allowed from the 30 month deferred publication period. Applicants may also request the Office to publish the industrial design application at a specific time, provided that such nominated publication date does not go beyond the allowed deferment period of 30 months.

  1. What happens after the period of deferment of publication?

During this deferment period you may decide whether you wish to “extend” protection to five years from the date of filing. You do not have to furnish a separate request for extension. You simply pay the extension fee within the deferment period.

In the case of an extension, the representation of the design is subsequently published after the expiry of the 30-month deferment period. By filing a separate request, the subsequent publication of the representation may be initiated at an earlier date.

If you have deposited only a two-dimensional specimen when filing the application, you must subsequently furnish a photographic or other graphic representation of the design during the deferment period.

 

  1. Secret designs in the Philippines.

Philippines October 10 2014 The Intellectual Property Office of the Philippines (IPOPHL) has issued Memorandum-Circular No. 14-004 on 20 May 2014 allowing applicants to file a request for deferment of publication enabling designers and companies applying for the registration of industrial designs to keep them secret from competitors until the designs are made available in the market.

The request may be filed upon filing the design application in the Philippines or at any time before its publication. Applicants who want to avail the request may defer publication for a maximum period of thirty (30) months from the filing date or priority date of the application. In case the request for deferment is made after the filing date of the application, applicants are only allowed to defer the publication of its design application for the remaining time from the permitted thirty (30) months deferred publication period. Moreover, applicants may also request for specific publication date of the design application provided that the requested time does not exceed the allowed deferment period of thirty (30) months.

It is advisable to file a request for deferment of publication of design in the Philippines at the time of filing the application since industrial design applications which satisfy the formality requirements.

A).       Submission of the description, claim and drawings;

B).       Payment of the filing fee and other required fees;

C).       Submission of the priority documents, if required; and

D).       Submission of other required documents are published immediately by the Patent office.

This is to avoid inadvertent publication of the design application when a subsequent request for deferment is to be filed.

In order to maximize the benefits of the deferment of publication in the Philippines, it is recommended that applicants file the request for deferment at the time of filing the application or as soon as possible.

  1. Secret designs in the Taiwan.

Under existing practice, the content of a design patent will be published once it is issued. According to Article 86 of the Enforcement Rules of the Patent Law (Taiwan), a patent applicant can, on request, postpone the issuance by up to three months. In light of the Hague Agreement, as well as practices in the European Union, Korea and Japan, TIPO proposes to introduce a system of deferred publication for design patent applications. Under the system, a design patent may be issued first and published later. The proposed rules for the system are as follows:-

A).       The timing for requesting a deferred publication commences from the date of filing and ends on the date of payment of the issuance fee and first annuity.

B).       On the date of patent issuance, basic information only (the patent certificate number and the date of filing) will be disclosed. The remaining information will be disclosed on the deferred publication date.

C).       The publication date can be deferred by up to 30 months from the filing or priority date. If the deferred publication date is earlier than 30 months from this date, the applicant can, before such deferred publication, request another deferred publication of up to 30 months from the filing or priority date.

  1. D) TIPO should disclose the publication-deferred design patent to a designated third party in any of the following circumstances:-
  2. i) The design patentee agrees to disclose the publication-deferred design patent to a specific third party; and
  3. ii) Disclosure upon request by:
  4. a) An applicant whose patent application is under examination or re-examination based on the publication-deferred design patent;
  5. b) A party of a patent cancellation action in relation to the publication-deferred design patent; or
  6. c) A party patent litigation in relation to the publication-deferred design patent.

E).        Once the publication-deferred design patent application is issued, no derivative design patent application can be filed based upon it.

  1. F) On the issuance date of the publication-deferred design patent application, the applicant can effect the post-grant amendment to the issued design patent. Once the post-grant amendment is granted, its content should be published. However, if the amendment is related to the substance of the claimed design, TIPO should delay publication until the design patent is published.
  2. G) A cancellation action can be filed against the publication-deferred design patent application once it is issued. If the cancellation action is sustained by TIPO during the publication-deferred period, the deferred publication is waived and TIPO should publish all the information and drawings of the design patent in the patent gazette.
  3. H) A design patentee that has not waived deferred publication should not issue a cease and desist letter to a potential infringer.

TIPO will further consider whether to revise Point 2(8) to read “a design patentee who has not waived deferred publication shall not issue a warning (cease-and-desist) letter to, or file a design patent litigation against, a potential infringer”.

Attendees of the hearing expressed concerns over the likelihood that the deferred publication may inhibit a good-faith effort to design around an issued patent, because the public would not have a chance to know the content of an issued design patent if its publication is deferred. TIPO will deliberate on this and take it into consideration.

 

  1. Secret designs in the Malaysia.

An industrial design registered in Malaysia is only protected in Malaysia. In order to have your designs protected in other countries, applications for registration will have to be filed within six month from the earliest date when it was first filed in any of the Paris Convention member countries.

Procedures an application for registration is as follows:

An application will proceed directly to registration once it is found to be in order. The details of the registration are published in the Official Journal. There is no option of deferring publication on registration. An applicant that wishes to defer publication may seek to delay prosecution. However, an application that is not in order for registration within 12 months of the filing date, due to any default or neglect on the part of the applicant, shall be deemed withdrawn.

  1. Basic Hague Agreement Principles.

The international design application satisfies all applicable requirements, the International Bureau will register the international design application in the International Register and accord a date of international registration. Pursuant to Hague Agreement Article 10(2), the international registration date will be either the filing date of the international design application or the date of receipt of any additional mandatory content item required under Hague Agreement Article 5(2), if such date is later than the filing date. The international registration includes all the data contained in the international design application (including any priority claim where the earlier filing is not more than six months prior to the international filing date),the reproduction(s) of the design, the registration number and registration date, and the class of the International Classification determined by the International Bureau.

The international registration is published by the International Bureau. The applicant may request that publication occur immediately after registration or that publication be deferred for up to 30 months from the filing date (or priority date, if applicable). Deferment of publication is not possible if a Contracting Party is designated that does not permit deferred publication. Absent a request for immediate publication or deferment, the registration will be published approximately six months after the date of international registration. The publication includes the data from the international registration and the reproductions of the industrial design.

 

 

 

  1. Comparison between Malaysia, Taiwan and Philippines about Deferment of Publication of designs.

 

No Title Malaysia Philippines Taiwan
1 National Law provide any Provisions related to Deferment Publication No No, There are no other ways to defer publication. Publication is an essential requisite in the filing of an application. Yes.
2 It would be related to have a provision related to  deferment of publication in Design Law Yes, It would be desirable to have provisions related to deferment of publication in our Design Law as it would give a designer the advantage of keeping a design secret until such time as the applicant chooses and yet be able to enjoy the priority of the original application. No, publication must not be deferred. The requirement of publication aims to protect other interested parties in the registration of the industrial design. With the publication of the application of the design, any interested party may provide any adverse information on the design applied for and any party may also file within the period allowed by the rules to file a petition for cancellation of the application/registration. .
3 System for the deferment of publication of design There is no system for deferment of publication of designs in Malaysia. Deferment can however be achieved by applying for extension of time to pay the publication fees. Once the publication fees are paid, the application proceeds to registration and as soon as possible thereafter, it is published in the Gazette. Thus, by delaying payment of the publication fees, publication will effectively be delayed.

A fee is payable for each extension requested. A request for an extension longer than 6 months will require the applicant to submit a statutory declaration explaining the reason/ s necessitating the period of extension required.

The applicant can, upon receipt of the Notice of Allowance and in the application for attending the payment of sealing fee and the first annuity, file a request for “deferment of publication” for a period of no more than three months (Enforcement Rules of the Patent Act, Article 56)
4 Can the applicant request for the deferment of publication only once at time of filling the application No No
5 Time when the applicant can request the deferment of publication No The applicant can, upon receipt of the Notice of Allowance and in the application for attending the payment of sealing fee and the first annuity, file a request for “deferment of publication” for a period of no more than three months (Refer to the answer for Question 3 above).
6 What is the longest period that can be allowed as a deferment term or secret term for a case? Payment of the publication fees (and hence, publication) can be delayed by applying for extension of time to pay the fees. Longer extension of more than 6 months can be requested but it is subject to the discretion of the Registry to grant the same. The Registry will allow the extension if it satisfied that there is a bona fide need or valid reason for the extension. 3 months
7 When does the period of deferment of publication start? The maximum period of deferment of publication for three months starts from the date when the applicant, upon receipt of the Notice of Allowance and in the application for attending the payment of sealing fee and the first annuity, files the request for “deferment of publication” (
8 What benefits/disadvantages do you see in “Deferment of Publication” in your country? In general “No”, so long as some bona fide need or valid reason can be given to the Registry when requesting extension of time to pay the publication fee. If the publication is deferred, third parties who have an interest in the registration will not have an adequate remedy in case any of their rights are violated. They will not be able to provide any adverse information regarding the design applied for and/or file a petition for cancellation. For this purpose, there must be immediate publication. In one way the applicant could file a deferment of publication; however, in another way since the duration of a design patent is 12 years starting from the filing date, and the actual protection period starts from the publication date, so the deferment of publication will shorten the actual protection period of a design patent

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

  1. Conclusion

Registering an Industrial Design is not like taxing a car. An RID protects the designer’s creativity and enhances his presence in the market. However, the value of the design is not fixed – one must realize its potential. The strategy to be adopted to do this will be unique to each ID owner. It will reflect the company’s wider interests and intellectual property portfolio.

It is opined that Malaysian Industrial Design law should provide for deferment of publication. The delay in publication would keep the ID secret from competitors and provide additional time for market survey and preparation for mass production.

 

The maximum period of deferment is 30 months. This means that for up to 30 months after the filing date there is no publication of the representation and claimed priority, the 30-month deferment period begins on the priority date.

If the publication of the representation is deferred, only the bibliographic data will be published at first. This allows the applicant to save costs, since the application fees will be reduced accordingly. The deferment may be useful if the applicant wishes to wait and see whether his product is accepted in the market or if, for other reasons to keep the design secret for the time being. Furthermore, in that case, the applicant may deposit a two-dimensional specimen for example, samples of lengths of fabrics or wallpapers instead of furnishing a representation of the design.

However, during the period of deferment there is no monopoly protection which prevents any third party use of the design but only protection against copying.

If the applicant have filed a request for deferment of publication, protection is initially limited to 30 months. The deferment period begins on the date of filing the application. If the applicant claim priority, the deferment period begins on the priority date.

As long as the publication is deferred applicant can further develop your marketing strategies or take final preparations for production. During the deferment period the registered design is kept secret. This is very important in the fashion and car industries among others. In these sectors of industry early publication of a registered design might jeopardise the commercial success of the product.

 

References :

  1. http://www2.myipo.gov.my/web/guest/reka-bentuk-perindustrian
  2. http://www.lexology.com/library/detail.aspx?g=2db787a6-544f-4d15-8ca9-494056e1be10
  3. http://www.lexology.com/library/detail.aspx?g=b7d359e0-43ed-4059-a8ef-9c66dccfe438
  4. http://www.lexology.com/library/detail.aspx?g=67ea2a2e-9cf5-49a2-8af8-eff0d0194d98
  5. https://euipo.europa.eu/ohimportal/en/rcd-strategy
  6. https://www.dpma.de/english/designs/procedures/
  7. https://www.dpma.de/english/designs/faq/index.html#a16
  8. http://www.lexology.com/library/detail.aspx?g=24c5b27d-b673-4001-b459-bb02b293f189
  9. http://www2.myipo.gov.my/web/guest/reka-carta
  10. https://www.uspto.gov/web/offices/pac/mpep/mpep-2900.pdf

 

 

 

 

 

 

 

 

 

Industrial Design

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