Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2010 MarsdenLR 2472

HIGH COURT MALAYA KUALA LUMPUR
ELSTER METERING LIMITED & ANOR – Appellant
Versus
DAMINI CORPORATION SDN BHD & ANOR – Respondent
[Suit No: D5 (IP)-22-1279-2006]

Petitioner Advocates:Timothy Siaw,Teng Wei Ren ,Respondent Advocate: Lua Ai Siew

Plaintiffs must prove sufficient objective similarity and causal connection for copyright infringement, and mere similarity is insufficient if independent development is established.

Headnote:(A) Copyright Act - Sections 7 and 42 - Infringement of copyright in drawings for water meters claimed by plaintiffs - Defendants accused of unauthorized use of plaintiffs' designs - Plaintiffs must prove sufficient objective similarity and causal connection between works - Court finds no infringement as defendants successfully establish independent development of Ningbo water meter. (Paras 1-68)

(B) Artistic works and Copyright Ownership - Original artistic works are protected as copyright upon demonstration of ownership under Section 42 of the Act - Court concludes drawings qualify as artistic works and ownership is established via statutory declarations satisfying five prerequisites of the Act. (Paras 14-34)

(C) Reverse Engineering - No evidence of copying from the plaintiffs' designs found - Plaintiffs failed to demonstrate sufficient similarity or access to their drawings by defendants, establishing the independent development of Ningbo water meter. (Paras 52-67)

Facts of the case:
The plaintiffs assert copyright ownership over six original water meter drawings. Defendants dispute copyright subsistence, claiming the Ningbo water meters are independently developed without reproduction of plaintiffs' designs. (Paras 1-11)

Findings of Court:
The court finds that the defendants did not infringe copyright as they established independent design and development efforts for their products. Court notes that plaintiffs failed to provide sufficient evidence proving infringement. (Paras 60-67)

Issues: The main issues pertain to the ownership of copyright in the drawings, the subsistence of validity, and whether the defendants' products infringe upon the plaintiffs' copyright by constituting a reproduction. (Paras 9-10, 38-39)

Ratio Decidendi: The court ruled that in order for copyright infringement to occur, there must be sufficient objective similarity and causal connection between the original and the infringing works, which plaintiffs were unable to establish. (Paras 42-44)

Result: The plaintiffs' claim is dismissed with costs.

Table of Content
1. copyright ownership in water meter drawings. (Para 1 , 2 , 3 , 4)
2. authority of plaintiffs and copyright basis. (Para 5 , 6 , 7 , 8)
3. defendants' contestation of copyright. (Para 9 , 10 , 11)
4. legal status of artistic works under the act. (Para 12 , 13 , 14 , 15)
5. admissibility of the statutory declaration under section 42. (Para 18 , 20 , 21 , 22)
6. requirements for proving copyright ownership. (Para 24 , 25 , 26 , 27)
7. prima facie evidence of copyright ownership. (Para 28 , 29 , 30 , 31)
8. plaintiff meeting burden of proof for ownership. (Para 32 , 33)
9. legitimacy of 2nd plaintiff as exclusive licensee. (Para 34 , 35 , 36 , 37)
10. rights of copyright owners regarding reproduction. (Para 38 , 39 , 40 , 41)
11. standard for determining copyright infringement. (Para 42 , 43 , 44 , 45)
12. design concept vs. copyright protection. (Para 46 , 47 , 48)
13. significant differences between products. (Para 49 , 50 , 51)
14. issues in proving copyright infringement. (Para 52 , 53 , 54 , 55 , 56 , 57 , 58 , 59)
15. ningbo's independent development of water meter. (Para 60 , 61 , 62 , 63)
16. distinguishing prior cases from current judgment. (Para 64 , 65 , 66)
17. conclusion on plaintiffs' failure to prove infringement. (Para 67)

Azahar Mohamed J:

[1] The plaintiffs' cause of action against the defendants is for the infringement of copyright subsisting in the drawings for a type of water meter.

[2] A water meter is a device used to quantify the volume of water usage at each residential and commercial building in a public water supply system.

[3] Elster Metering Limited (the 1st plaintiff) claims to own copyright in six (6) original drawings (the drawings) set out in the following schedule A of the statement of claim for a type of water meter known as Kent PSM water meter, and its predecessor Kent JSM water meter (collectively referred to as "plaintiffs' water meters").

[4] For ease of reference, the drawings are referred to as follows:-

(i) Drawing No MEB 4930/4931 (General Assembly) is referred to as "Drawing No 1";

(ii) Drawing No 7/MKH 822 (Counter Case) is referred to as "Drawing No 2";

(iii) Drawing No 4 MEB 7333 (Chamber Assembly) is referred to as "Drawing No 3";

(iv) Drawing No 9 MEB 2315 (Top Plate) is referred to as "Drawing No 4";

(v) Drawing No 10 MEB 428 (Piston) is referred to as "Drawing No 5"; and

(vi) Drawing No MEB 2305 (Working Chamber) is referred to as "Drawing No 6".

[5] According to the plaintiffs, one Ningbo Water Meter Co Ltd (Ningbo), had without the license or authority of the plaintiffs manufactured, possessed for the purpose of trade or business, offered for sale, sold or otherwise dealt in and or with water meters under model reference LXH-15B (Ningbo water meters) and or parts thereof that reproduce in material form the drawings and the plaintiffs' water meters.

[6] It is the contention of the plaintiffs that Damini Corporation Sdn Bhd and Delta Perdana Sdn Bhd (the defendants), have without license or authority of the plaintiffs, possessed for the purpose of business, offering for sale, selling, supplying, importing, or otherwise dealing in or with the infringing Ningbo water meters and the infringing parts.

[7] George Kent (Malaysia) Berhad (the 2nd plaintiff) claims that it is the exclusive licensee of the copyright in the drawings and the plaintiffs' water meters in Malaysia and three other countries.

[8] The 1st plaintiff's claim to copyright subsisting in the drawings is based on the following grounds. The drawings are original artistic works made by employees of the 1st plaintiff or the 1st plaintiff's predecessor in the course of their employment whilst resident in the United Kingdom. By an assignment in writing dated 1 June 2000, the 1st plaintiff acquired the copyright in al the drawings relating to, inter alia, the plaintiffs' water meters owned by the 1st plaintiff's predecessors.

[9] On the other hand, the defendants dispute the subsistence of any copyright in the drawings and contend that t

Click Here to Read the rest of this document

2010 MarsdenLR 2472

HIGH COURT MALAYA KUALA LUMPURELSTER METERING LIMITED & ANOR – AppellantVersusDAMINI CORPORATION SDN BHD & ANOR – Respondent[Suit No: D5 (IP)-22-1279-2006]

Plaintiffs must prove sufficient objective similarity and causal connection for copyright infringement, and mere similarity is insufficient if independent development is established.

Cases Referred (2)

HIGH COURT MALAYA KUALA LUMPUR
ELSTER METERING LIMITED & ANOR – Appellant
Versus
DAMINI CORPORATION SDN BHD & ANOR – Respondent
[Suit No: D5 (IP)-22-1279-2006]