JUDGMENT

Mohd Radzi Harun J:

Introduction

[1] In this Suit, the Plaintiffs claim:

(i) ownership of the copyright under the Copyright Act 1987 ("CA 1987") that they argued subsists in the expression of idea in the pictures, drawings and diagrams (including the literatures) of the components of termite control constituting an underground reticulation system of termite control as enumerated in paras 11 (a)-(c) of their Amended Statement of Claim ("the Plaintiffs' Works");

(ii) infringement of the copyright of the Plaintiffs' Works by the Defendant through the reproduction of the same in the Defendant's termite reticulation system or otherwise from such works ("the Defendant's Infringing Work");

(iii) the Defendant was unlawfully selling the Defendant's Infringing Work or offering to sell the same;

(iv) the Defendant unlawfully used the Defendant's Infringing Work in its tender project documents;

(v) the Defendant was reproducing the Plaintiffs' Works without the Plaintiffs' license and permission; and

(vi) the Defendant had committed the tort of passing off and unlawful interference with the Plaintiffs' trade or business by causing confusion or attempt to cause confusion in the termite reticulation components and drawing as found in the Defendant's Infringing Work which carry high degree of similarity or sufficient similarities and casual connection or substantial similarity of the Plaintiffs' Works. This is particularly so in the literature and artistic works appear in the drawing and the diagram of the components of the Defendant's Infringing Work showing the location of the two-hole system in the Defendant's Infringing Work, similar with the two-hole system found in the Plaintiffs' Works.

[2] This Court had partially allowed the Plaintiffs' claims and declared that copyright subsists in the Plaintiffs' Works and that the 1st Plaintiff is the lawful owner of the copyright in the Plaintiffs' Works.

[3] The Defendant's appeal is against this Court 's decision that:

(i) copyright subsists in the Plaintiffs' Works; and

(ii) the 1st Plaintiff is the lawful owner of the copyright of the Plaintiffs' Works.

[4] The Plaintiffs appeal is against the part of this Court 's decision that decided that the Defendant did not infringe the Plaintiffs' copyright and that the Plaintiffs' case against the Defendants was dismissed with costs.

[5] This Grounds shall apply to both appeals.

The Claim

[6] The Plaintiffs alleged that the Defendant, without the Plaintiffs' permission, consent or license, had reproduced the Plaintiffs' Works as below:

a. the two-hole system created, owned and used by the 1st Plaintiff as below:

b. the reticulation system created, owned and used by the Plaintiffs as shown below:

c. the diagrams and screens as shown below which are screenshots extracted from the Plaintiffs' website existed since 2007 describing the two-hole system created, owned and used by the Plaintiffs:

[7] All the above had been particularised in paras 11 (a) (b) and (c) of the Plaintiffs' Amended SOC.

[8] The Plaintiffs' case is that the 1st Plaintiff has expanded sufficient effort, skill, labour and costs to make the Plaintiffs' Work original in character. The 2nd Plaintiff is the sole and only licensee of the 1st Plaintiff that is permitted to operate trade and business using the Plaintiffs' Works in Malaysia.

[9] Around September 2019, the Defendant submitted tender documents for providing services relating to termite's treatment to a construction project at Hospital Kemaman. The Plaintiffs alleged that the Defendant, without any permission, consent or licence of the Plaintiffs, reproduced the Plaintiffs' Works in the tender documents.

[10] Based on the alleged unlawful act of reproduction of the Plaintiffs' Works by the Defendant, the Plaintiffs claimed against the Defendant for copyright infringement of the Plaintiffs' Works, passing off and unlawful interference with the Plaintiffs' trade and business.

[11] The Plaintiffs sought for, among others, the following relief