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2013 MarsdenLR 1681
COURT OF APPEAL PUTRAJAYA
DURA-MINE SDN BHD – Appellant
Versus
ELSTER METERING LIMITED & ANOR – Respondent
[Civil Appeal No: W-02-2598-09]
The court affirmed that minor modifications to copyright drawings do not negate their originality for copyright protection under Malaysian law.
Headnote:(A) Copyright Act 1987 (Act) - Section 42 - Originality and copyright ownership - Dispute over ownership of copyright in drawings for water meters - Respondents argued violation of copyright due to unauthorized use of drawings by appellants - Appellants contended statutory declaration did not meet compliance requirements of s 42 - Trial judge held modifications did not alter substantial character of original drawings - Court agreed with findings and dismissed appeal. (Paras 1, 15, 17, 21)
Facts of the case:
The respondents, as exclusive licensee of the drawings, claimed infringement by the appellant who was selling a similar product without authorization. The case involved evaluating whether modifications in the drawings affected their copyright status.
Findings of Court:
The trial judge found sufficient evidence supporting the statutory declaration and shifting the burden of proof to the appellant, confirming compliance with s 42 of the Act.
Issues: Whether the drawings provided in the statutory declaration were eligible for copyright and whether the statutory declaration complied with the requirements of s 42.
Ratio Decidendi: The court reasoned that minor modifications to the drawings did not negate their original artistic nature, confirming copyright ownership through previously established assignment agreements.
Result: Appeal dismissed with costs.
| Table of Content |
|---|
| 1. dispute revolves around copyright ownership of water meter drawings. (Para 1 , 2) |
| 2. appellants argue statutory declaration and originality issues. (Para 3 , 4 , 5 , 6 , 7 , 8) |
| 3. respondents assert compliance with copyright ownership declaration. (Para 9 , 10 , 11 , 12 , 13 , 14) |
| 4. court analyzes requirements for compliance with the copyright act. (Para 15 , 16 , 17) |
| 5. court concludes burden of proof shifted; appeals dismissed. (Para 18 , 19) |
Background Facts
[1] The dispute between the parties leading to the subject matter of this appeal are drawings for a type of water meter known as the Kent PSM Water meter and its predecessor, the Kent GSM water meter ('the Kent Water Meter'). It is not in dispute that the original drawings were from time to time modified and such modification is apparent on an examination of the drawings by their current 'MOD Numbers, the previous issue numbers ('issues') are specified on the drawings. It is also not in dispute that the respondents rely on all MOD Numbers and issues of the drawings in respect of their claim that these drawings constitute original artistic work.
[2] The 2nd respondent is the exclusive licensee of the copyright in the drawings and the Kent Water Meter in Malaysia and three other countries. It was the respondents' case that the appellant had, without the licence or authority of the respondents, possessed for the purpose of trade or business, advertising, offering or exposing for sale, selling, supplying, importing, or otherwise dealing in or with water meters under the model reference PD97 TRP ('the PD97 Water Meter') and parts thereof which reproduce in material from the drawings of the Kent Water Meter. The respondents further claimed that the appellant knew or had reason to believe that the import and sale or offer for sale in Malaysia and dealing in or within Malaysia in the PD97 Water Meter constitutes an infringement of the copyright in the drawings of the respondents' Kent Water Meter.
Appellant's Case
[3] The first ground relied upon by the appellants in their memorandum of appeal was that the statutory declaration filed by the respondents pursuant to s 42 of the Copyright Act 1987 (Act) failed to adhere to the requirements of the section. According to learned counsel for the appellant, compliance with s 42 requires the 1st respondent to annex a copy of the drawings eligible for copyright to the statutory declaration. However, learned counsel submitted that this was not the case with the drawings which were annexed to the statutory declaration because the annexed drawings were not the first issues of the drawings of the Kent Water Meter but instead are subsequent issues ie modified versions of the first issues of the drawings. In this respect, learned counsel for the appellant highlighted the fact that the case of the respondent was not that the annexed drawings were the original drawings but that the subsequent issue drawings were substantially the same as the originals with minor modification.
[4] Learned counsel for the appellant then referred to the learned trial judge's finding that His Lordship did not consider this discrepancy to be fatal as evidenced by the following finding of His Lordship:
"The fact that minor modifications had been made on the drawings, these modifications had not had the effects of erasing the substantial character of the original drawings".
His Lordship's reliance on the authority of Allibert SA v. O'Connor and Another [1981] FSR 631 in support of this finding was criticised by learned counsel for the appellant as being wrong. According to counsel, the principle of law pronounced in that case was not applicable to the facts of this case. The distinguishing feature was that in that case, the plaintiff was relying on the later drawings to prove the original, not as in this case where the later drawings were being relied upon to raise the statutory presumption under s 42.
[5] It was the submission of learn
