Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2025 MarsdenLR 1443

HIGH COURT MALAYA KUALA LUMPUR
BENTLEY SYSTEMS INCORPORATED – Appellant
Versus
PUSB ENGINEERING SDN BHD – Respondent
[Civil Suit No: WA-22IP-58-09/2023]

Petitioner Advocates:Cyndi Chow Li Kian,Chan Wei Yang,Peh Khaik Kew,Chin Hau Zhe ,Respondent Advocate: Subramaniyan,Melisa Ooi,Lily Ho

A copyright infringement claim requires proof of ownership and unauthorized use, with unchallenged evidence establishing infringement leading to dismissal of counterclaims lacking merit.

Headnote:(A) Copyright Act 1987 - Sections 36(1), 37(1), and 42(1) - Copyright infringement action by Plaintiff against Defendant - Plaintiff established copyright in software and proved infringement through unchallenged evidence of unauthorized use detected by security mechanisms embedded in software - Defendant's counterclaim for abuse of process dismissed as baseless. (Paras 1, 2, 29, 30, 37, and 49)

(B) Elements of Copyright Infringement - To succeed in a claim for copyright infringement, the Plaintiff must establish ownership of copyright and demonstrate infringement - The Defendant's failure to provide evidence of lawful use negated its defenses. (Paras 7, 17, 26)

Facts of the case:
Plaintiff, a software development company, claimed copyright infringement against Defendant, which was found to have unlicensed copies of Plaintiff's software on its premises. Defendant's counterclaim was based on alleged abuse of process due to the copyright action.

Findings of Court:
Plaintiff succeeded in proving copyright infringement, and Defendant's counterclaim was dismissed as it lacked substantive evidence.

Issues: The main issues were whether the Defendant infringed the Plaintiff's copyright and whether the Plaintiff's action constituted an abuse of process.

Ratio Decidendi: The court found that the Plaintiff's evidence of infringement was sufficient and that the Defendant's defenses were unconvincing, emphasizing that a genuine action for redress cannot be deemed an abuse of process.

Result: Plaintiff's claim for copyright infringement was upheld, and the Defendant's counterclaim was dismissed with costs.

JUDGMENT

Azlan Sulaiman J:

[After full trial]

Introduction

[1] In a nutshell, this action by the Plaintiff ("Bentley") against the Defendant ("PUSBE") is for copyright infringement. PUSBE's counterclaim against Bentley as pleaded at first glance is, however, not one that can easily be fitted into a nutshell of the usual categories of causes of action. Push come to shove to put a name on it, I would say it is for damages against Bentley for the very bringing of this copyright infringement action against it. In simple terms, PUSBE says that Bentley's action against it is an abuse of process.

Copyright Infringement

[2] In a second nutshell, a successful action for copyright infringement consists of two essential elements, namely establishing the copyright and then establishing the infringement of it.

[3] The first element is not really in dispute here. Bentley, a US-based software development company, develops, manufactures and distribute computer software for numerous industries worldwide, including the design, construction, and infrastructure industries.

[4] The software in issue here is an offshore structural analysis software that it calls as SACS Connect Edition ("SACS Computer Programs") (note the American spelling). SACS Computer Programs come in various versions (the latest being Version 16) and contain the Bentley's copyrighted language, codes or notations ("Works"). It is used and utilised by offshore engineers and structural engineers to design, analyse, and simulate the response of, inter alia, offshore platforms The SACS Computer Programs come with various integrated modules that were developed and designed to carry out different functionalities, and include SACS Offshore Structure, SACS Pile Structure Design and SACS Fatigue.

[5] PUSBE does not really dispute Bentley's copyright in the SACS Computer Programs It pleaded in paras 14.1, 14.2 and 14.3 of its Amended Defence and Counterclaim:

"Petrokon Utama Sendirian Berhad (Petrokon) is a multi-discipline engineering consultancy established in Brunei Darussalam since January 1984. Petrokon provides design engineering and project management services to the oil and gas, petrochemical and construction industries.

Petrokon owns a 30% stake in the Defendant's issued share capital, thereby establishing its affiliation within Petrokon1s consortium of corporate entities ("the Consortium''). As a member of the Consortium, the Defendant and Petrokon co-work on projects awarded to Petrokon and vice versa.

Petrokon has subscribed for the ensuing software applications from the Plaintiff:

(a) SACS Offshore Structure Ult. SELECT Sub

(b) SACS Pile Structure Design SELECT Sub

(hereinafter collectively referred to as "the Software")."

The part that Petrokon fits into the narrative of PUSBE's defence and counterclaim will be looked at in due course.

[6] That concession by PUSBE is probably due to pragmatism, all the more because of the Statutory Declaration that Bentley adduced under s 42(1) of the Copyright Act, 1987 ("Act"), which provides:

"42. Affidavit admissible in evidence

(1) An affidavit or statutory declaration made before any person having authority to administer oath by or on behalf of any person claiming to be:

(a) The owner of the copyright in any works eligible for copyright under this Act stating that:

(i) at the time specified therein copyright subsisted in such work;

(ii) he or the person named therein is the owner of the copyright; and

(iii) a copy of the work annexed thereto is the true copy thereof;

...

shall be admissible in evidence in any proceedings under this Act and shall be prima facie evidence of the facts contained therein. "

Whether Pusbe Has Infringed Bentley's Copyright

[7] Section 36 (1) of the Act provides:

"Copyright is infringed by any person who does or causes any other person to do, without the license of the owner of the copyright, an act the doing of which is controlled by copyright unde

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2025 MarsdenLR 1443

HIGH COURT MALAYA KUALA LUMPURBENTLEY SYSTEMS INCORPORATED – AppellantVersusPUSB ENGINEERING SDN BHD – Respondent[Civil Suit No: WA-22IP-58-09/2023]

A copyright infringement claim requires proof of ownership and unauthorized use, with unchallenged evidence establishing infringement leading to dismissal of counterclaims lacking merit.

Cases Referred (2)

HIGH COURT MALAYA KUALA LUMPUR
BENTLEY SYSTEMS INCORPORATED – Appellant
Versus
PUSB ENGINEERING SDN BHD – Respondent
[Civil Suit No: WA-22IP-58-09/2023]