Malaysia - Intellectual Property Update.

Legal News & Analysis - Asia Pacific - Malaysia - Intellectual Property

30 September, 2019

 

Any resemblance is entirely coincidental, or not? 
 
It is not uncommon to see a disclaimer in a movie or drama, or even a book, stating that:

This is a work of fiction. Names, characters, businesses, places, events and incidents are either the products of the author’s imagination or creation. Any resemblance is purely coincidental.” 

The question which arises is whether the work is really purely coincidental or not. The Federal Court case of Mohd Syamsul bin Md Yusof & Others v Elias bin Idris[1] may shed some light on this question.
 
This is a case where the respondent Elias initially brought a copyright infringement action in the High Court against the appellants who were the filmmaker, director and distributor of a movie. The respondent contended that the appellants had infringed his copyright in his novel by allegedly making a movie based on the novel without his consent. The High Court dismissed the respondent’s claim.  

The Court of Appeal allowed the respondent’s appeal and this case went on appeal to the Federal Court where the appellants were granted leave on the following questions of law: 
 
  1. Is publication itself sufficient satisfaction to the legal requirement of casual connection in order to succeed in a claim on infringement of copyright (“Question 1”); and
  2. In carrying out the test in Megaway Enterprise Sdn Bhd v Soon Lian Hock (sole proprietor of the firm Performance Audio & Car Accessories Enterprise)[2], is there a legal duty for the court to examine and evaluate both the distinct materials being the subject matter under the claim on infringement of copyright (“Question 2”). 
 
The Federal Court in this case has reaffirmed the long established position in law that ,in order to establish an act of infringement of copyright, the copyright owner must prove that: 
 
  1. There is sufficient degree of objective similarity between the two works; and
  2. There is some causal connection between the copyright work and the alleged infringing work. 
 
In deciding whether the alleged infringing work is similar or substantially similar to the copyright work, the Federal Court held that the degree of objective similarity in each case needs to be evaluated from the evidence to determine this issue. Put another way, determination of the degree of similarities between the works is essentially a question of fact.

The Federal Court in this case agreed with the findings of the trial judge that the alleged similarities between the book and the novel were not the result of copying, as both works discussed the “bohsia” phenomenon and the issue of “mat rempit” which were common social issues that existed even before the novel’s publication and continues to be relevant even today. Again, the Federal Court has also reaffirmed the basic principle that copyright protects the expression of idea but not the idea itself.
 
Question 2 has been answered in affirmative. The issue of causal connection (Question 1) arises only after the issue of substantial similarity between the two works has been established. As such, the appeal was allowed with costs.
 
In conclusion, whether two works are sufficiently similar is a question of fact. Unless the main ideas discussed in the two disputed works are common issues, the abovementioned disclaimer may not be able to save one from a potential liability for copyright infringement. 

 

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For further information, please contact:

 

Ameet Kaur Purba, Partner, Shearn Delamore & Co​

ameet@shearndelamore.com

 

[1] [2019] 4MLJ 788.
[2] [2009] 3 MLJ 525.