Introduction to UK 4543

Intellectual Property
Law
Zinatul Ashiqin Zainol
shiqin@ukm.edu.my

This Photo by Unknown Author is licensed under CC BY-SA

Intellectual Property is
all around us
• Intellectual property (IP) refers to
creations of the mind, such as
inventions; literary and artistic
works; designs; and symbols,
names and images used in
commerce.
Patent Trademark

Copyright

Trade Secret
Industrial Design
Geographical
Indication
Copyright Protects creative literary or artistic works
E.g. books, movies, songs, drawings

Trademark Protect brands, phrases, symbols, designs, logos, sound, smell and
shape relate to products
E.g. Samsung, Vivo, Apple for cell phones

Patent Protects inventions that provides a new way of doing something

E.g. swipe feature on cell phones

Industrial design Protects ornamental aspects of an object

Geographical indication Protects signs use on goods that have a specific geographical origin,
with qualities and characteristic attributable to that place of origin.
E.g. Pinggu peaches, Darjeeling tea
Trade secret Protects information
Can you
identify IPs
of this smart
phone?

This Photo by Unknown Author is licensed under CC BY-SA

IPs in a
handphone
Can you identify IPs
of these drink?
Assessment for UK
4543
• No Final Exam
• 2 Tests (15 marks each)
• Journalling – Respect for
Intellectual Property (30 marks)
• Individual task
• Problem Based Learning – Case
Analysis (40 marks)
• Group work of 3
Ideas for Journalling
Ideas for Journalling
Ideas for
Journalling
COPYRIGHT LAW IN MALAYSIA

The right to control and stop others from

copying one’s work

Zinatul Ashiqin Zainol

shiqin@ukm.edu.my
What is copyright?
Copyright (or author’s right) is a legal term
used to describe the rights that creators have
over their literary and artistic works. Works
covered by copyright range from books, music,
paintings, sculpture, and films, to computer
programs, databases, advertisements, maps,
and technical drawings.

This Photo by Unknown Author is licensed under CC BY-NC

International Treaties &
National Law on Copyright
• Berne Convention for the Protection 1886
• WIPO Copyright Treaty 1990 (WCT)
• WIPO Performances and Phonogram Treaty 1990
(WPPT)
• Marrakesh Treaty to Facilitate Access to Published
Works for Persons who are Blind, Visually Impaired,
or otherwise Print Disable 2013
• Rome Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting
Organizations
• Beijing Treaty for Audiovisual Performances 2020
Basic concepts for copyright

Works eligible for copyright (subject matter of copyright)

Originality Fixation

Qualification for protection

Personal criterion Territorial criterion

Subject matter of copyright (s. 7, 8, 9, 10A)

S 7. Literary works; Musical

works, Artistic works; Films;
S. 8 Derivative works
Sound recordings; and
Broadcasts.

S. 9 Published editions works,

S.10A Performers
artistic or musical works
S. 7
• S. 7 - the following works shall be eligible
for copyright

• Literary works;
• Musical works;
• Artistic works;
• Films;
• Sound recordings; and
• Broadcasts.

• S. 3 defines all these works

 (a) novels, stories, books,
pamphlets, manuscripts,
poetical works and other
writings;
(b) plays, dramas, stage
directions, film scenarios,
broadcasting scripts,
choreographic works and
pantomimes;
(c) treatises, histories, (d) encyclopedias,
biographies, essays and dictionaries and other works
articles; of reference;

Literary works
includes (s. 3)
(e) letters, reports and (f) lectures, addresses, (h) computer programs,
memoranda; sermons and other works of
the same nature; (g) tables
or compilations, whether or
not expressed in words,
figures or symbols and
whether or not in a visible
form; and
but does not include official texts of the Government or statutory bodies of a
legislative or regulatory nature, or judicial decisions, or political speeches and
political debates, or speeches delivered in the course of legal proceedings, and the
official translation thereof
 Literary works – single word, advertisement
• The word ‘literary works’ covers works which is expressed in print
or writing, irrespective of the question whether the quality or style
is high - University of London Press [1916] 2 Ch 601
• A single word - e.g. ‘Exxon’ was not an original literary work
because it conveyed no information, provided no instruction and
gave no pleasure – Exxon Corp & Exxon Insurance Consultants
International Ltd. [1981] 3 All ER 241
• Advertisements – the ordinary type of advertisement…is in fact
literary work - Machinery Market Ltd v Sheen Publishing Ltd
[1983] FSR 431
Literary works –
fictional character
• Fictional works – taking of characters from
literary work considered as infringement? Far
from clear!
• Plots, sub-plots, themes, incidents
• Harman Pictures NV v. Osborne [1967] 2 All
ER 324 - The taking of plots, incidents and
situations may be prima facie prima facie
evidence of copying even if not a single word
used is reproduced.
Fictional character
Harry Potter Saga

• Allen (acting a Trustee of Jacobs (deceased) v

Bloomsbury Publishing Plc & Anor [2010]
• Whether plot, sub-plots, themes, incidents in The
Adventures of Willy the Wizard – No. 1 Livid Land
had been copied into Harry Potter and the Goblet
of Fire?
• Main characters – wizard and wizard contest
Fictional character – bohsia
Elias bin Idris v Novel ‘Aku Bohsia (I am Movie Bohsia: Jangan Pilih Jalan
Mohd Syamsul bin Bohsia ) published in 1995 Hitam (Bohsia : don’t
Md Yusof [2019] choose the dark road) released
Court of Appeal in 2009

Characters • 2 bohsia girls

• 2 mat rempit
• lady pimp
• a father (an alcoholic and raped own daughter)

theme/plot similar • sexual victims (raped by their fathers)

Nove • often involved in illegal racing

l U

Significant similarities • father (alcoholic, gambler, irresponsible, raped own daughter)

• tea dance
• sexual scenes of bohsia girls
• place of meeting spots (Bukit Bintang area, Dayabumi, old
Federal Court building)

Movi
 Musical Work
s. 3 musical works means
“means any musical work,
and includes works Musical composition
composed for musical
accompaniment”

Sound recording – if
Literary work – lyrics the musical work is
recorded

Broadcast – if the
Performers right – for
musical work is being
the performer
broadcast
Artistic works
• artistic work‖ means—
(a) a graphic work, photograph, sculpture or collage, irrespective of
artistic quality;
(b) a work of architecture being a building or a model for a building; or
(c) a work of artistic craftsmanship.

• graphic work‖ includes—

(a) any painting, drawing, diagram, map, chart or plan; and
(b) any engraving, etching, lithograph, woodcut or similar work;
Artistic work – engineering drawing
• Peko Wallsend Operations Ltd. v Linatex Process
Rubber [1993] –leading case on engineering
drawing capable of being eligible for copyright as
artistic works
• Elster Metering Ltd v Premier Amalgamated Sdn
Bhd [2010]
• Radion Trading Sdn Bhd v Sin Besteam
Equiptment Sdn Bhd [2010]
• Hexagon Tower Sdn Bhd v Ploydamic Holdings
Sdn Bhd [2005]
s. 8 Derivative works
• 8. (1) The following derivative works are protected as
original works:
• (a) translations, adaptations, arrangements and other
transformations of works eligible for copyright; and
• (b) collections of works eligible for copyright, or
compilation of mere data whether in machine readable or
other form, which constitute intellectual creation by
reason of the selection and arrangement of their contents.
s. 9 published editions
• 9. (1) Copyright shall subsist, subject to the provisions of this Act, in every
published edition of any one or more literary, artistic or musical work in the
case of which either—
• (a) the first publication of the edition took place in Malaysia; or
• (b) the publisher of the edition was a qualified person at the date of the first
publication thereof:
s. 10A
Performer
• S. 3 performer‖ means an
actor, singer, musician,
dancer or any person who
acts, sings, delivers,
declaims, plays in, interprets,
or otherwise performs a
performance;
How many
works can
you identify?
How many works can you identify?
How many
works can you
identify?
How many
works can you
identify?
Let’s draw

Jom Lukis

This Photo by Unknown Author is licensed under CC BY

Originality S. 7(3)(a) Copyright Act – A
literary, musical or artistic work
shall not be eligible for copyright
unless sufficient effort has been
expanded to make the work
original in character
• Work original is not copied
• Author expanded sufficient effort to make
the work original in character
• What is worth copying is worth protecting
 University of London Press Ltd
Originality v. University Tutorial Press Ltd
[1916]
• The word ‘original’ does not in this
connection mean that the work be an
expression or original or inventive
thought. Copyright Act does not
concern with the originality of ideas,
but with the expression of thought, and
in the case of ‘literary work’ with the
expression of thought in print or
writing.
 Originality
Originality in drawings (Issue preliminary drawings and
final version)

Interlego AG v. Tyco Industries Inc [1988]

If in the course of producing a finished drawing, the author
produces one or more preliminary versions, the finished
product does not cease to be his original work simply
because he adapts it with minor variations, or even if he
simply copies it from an earlier version. Each copy having
been made by him, each is his original work..
FIXATION (put in
material form)
•S. 7(3)(b) Copyright Act –A literary, musical or
artistic work shall not be eligible for copyright
unless the work has been written down, recorded
or otherwise reduced to material form

•Designers Guild Ltd. V Russell Williams

(Textiles) Ltd [2001]
•Copyright subsists not in the ideas but in the
form in which the ideas are expressed. Plainly
there can be no ideas which is merely in the head,
which has not been expressed in copyrightable
form as a literary, dramatic, musical or artistic
work.
Basic concepts for copyright

Works eligible for copyright (subject matter of copyright)

Originality Fixation

Qualification for protection

Personal criterion Territorial criterion

Qualification for Protection

s. 10 two connecting factors Berne Convention

Territorial criterion – first

Personal criterion – National treatment for
published/erected in
qualified person member countries
Malaysia
Malaysian accession to Berne Convention
National treatment for all works from Berne
Convention countries.

Each member states of Berne Convention must

treat authors of other member states in exactly
the same way as it treats its own native authors

Countries belonging to Berne Convention

automatically enjoys copyright protection in
Malaysia

S. 10 (first publication) only relevant for foreign

works of countries not yet to be members of
Berne Convention
Voluntary Notification
of Copyright
• Copyright protection is automatic,
without the need for registration or other
formalities. Proof of ownership through
statutory declaration.
• Malaysia and some other countries has
Copyright Voluntary Notification.
• That’s all for today. See
you again next week.
• Start journaling –
Respect for Intellectual
Property