Tutorial Questions
Weeks 3-4
1. Read the case of Siemens Industry Software Inc v KB Engineering Coatings
Sdn Bhd [2024] MLJU 3638 and analyze the following-
a. What was the subject matter in dispute, and does copyright subsist in it?
The plaintiff claims that the defendant had infringed its copyright by using unlicensed
copies of the plaintiff’s Software. The plaintiff is seeking injunctive relief and
monetary compensation for the alleged infringement. The plaintiff then applied for
summary judgment against the defendant. Although, it is undisputed that the
defendant employee has used the unlicensed software without consent of the
plaintiff, however, the defendant has argued that, as an artificial entity, it is not
vicariously liable for its employee infringement of copyright, in addition it has no
knowledge nor intention to the copyright infringement.
b. How did the Court of Appeal determine copyright ownership in the subject
matter?
According to s.42 of CA, five prerequisites, which are as follows:
(a) it must be made by or on behalf of the person claiming to be the copyright owner;
(b) it must state the copyright subsist in the work at the time specified; (c) that he or
the person named therein is the owner of the copyright; (d) true copy of the work is
annexed; (e) the person who is authorised to act on behalf of the copyright must
produce such an authorisation in writing ...”.
Accordingly, the court held that the copyright ownership of the software vested in the
plaintiff on the grounds that it’s prima facie evidence ie the submitted affidavit,
certified abstract of evidence or SD, has not been rebutted by the defendant through
adducing any sort of evidence.
c. What was the court’s finding on copyright infringement?
The court held that there is a copyright infringement for downloading an unlicensed
software into computer storage which constitutes copying and reproduction of a
work, infringing the exclusive right of reproduction under s.13 (a) of CA. read
together with s.36 (1) of infringement, the employer is liable becos of secondary
liability.
d. What key takeaways can be drawn from the court’s decision regarding:
i. Defences to copyright infringement
In Mohd Syamsul Md Yusof & Ors v. Elias Idris & Elster Metering Limited & Anor v.
Damini Corporation Sdn Bhd, the court held that neither the defendant’s intention
to infringe nor knowledge of the infringement is required to establish a cause of
action for copyright infringement, thus innocence is not a defence for copyright
infringement.
DR Sik: cos the provision ie s.13 does not bother with state of mind of the defendant
thus strict liability
ii. Vicarious liability
Although the defendant has argued that, as an artificial entity, it is not vicariously
liable for the copyright infringement committed it’s employee. Nevertheless, the court
held the defendant to be vicariously liable for the infringement on the grounds that
the wrongdoer was its employee and it happened in the course of employment
ie to improve his skill.
Dr Sik: vicarious liability also includes principal and agent. this had happened
becos all of them ie employer has the control over it’s employee. very
restrictive
s.36- the words causes is more restrictive comparing to uk act and australian
act that use the word authorise,
2. Read the case of Veronica Sainik v Meluha Life Sciences Sdn Bhd & Ors
[2024] 3 CLJ 631 and address the following:
a. Summarize the key facts of the case and the copyright issues involved.
The plaintiff alleged that the defendant (company) has infringed her moral right for
copying more than half of her master dissertation contents in the it’s patent,
contravening s.25 of the Copyright Act 1987.
b. How did the court assess the question of originality in this case?
First, the court held that the moral and statutory duty in determining the originality of
the master dissertation is subject matter between the university and the plaintiff, not
the court. Second, the court has found the dissertation to be an original work on the
ground that the University Senate must have committed necessary examination to
plagiarism before conferring its master’s degree to the plaintiff.
c. What insights does the court’s decision provide regarding moral rights?
First, the court held that the rationale of the s.25 of CA is to safeguard the integrity.
Second, the court has divided moral rights into 1) integrity rights (right to object
to undesirable significant changes) and 2) paternity rights (identification right).
Third, the court held that an infringement of moral rights requires 2 elements namely,
a) significant alteration of the work and b) reasonably adverse effects against
the claimant reputation and honour. Both elements are to be read conjunctively
and are mandatory in proving a breach of moral rights in s.25 of CA.
d. Consider possible scenarios in the online/digital environment where similar
copyright issues may arise.
Wrongdoer or fraudster might try to circumvent the protection of moral rights under
s.25 of the CA, by claiming that the alterations are minor and thus reasonably there
is no adverse effect against the author’s reputation or honour. Alternatively, even if
the alterations are significant the wrongdoer could claim that there is no evidence
adduced to prove the adverse effect of the alteration of the work against the original
author’s reputation. Therefore, there is no infringement of moral rights under s.25 of
the CA. Consequently, as the onus of proving the adverse effect of the alteration of
the work lies on the author, it is foreseeable that the proof of moral infringement will
be significantly harder as proving the adverse effects to the author reputation, which
is so subjective and vary from the perspective of different persons, is now a
mandatory requirement of s.25 of CA.