What to do when police conduct body search on you?

GENERAL RULE: where no arrest has been made, the police have no right to search your body. You have the right to walk away. Any such body search without your consent is unlawful.

EXCEPTION: body search is allowed under 3 situations:-

i) Body search without arrest
S.17 CPC states that if you are found at a place e.g. karaoke, clubs, entertainment outlet where the police are conducting a lawful raid and looking for something such as drugs, the police may search your body or your bag without arresting you. This must be done in the presence of a police officer who is an inspector or of a higher rank. You may be lawfully detained until the search is completed.

What you should do:
- do not allow the police officer to put his hands into your pockets or bags
- volunteer to empty your pockets or bags in his presence so that you can see all your belongings
- take out your belonging one by one. Each time, say, “purse”, “keys” etc
- when your pockets or bags are empty, turn your pockets o bags inside out

If you are a female:
S.19(2) CPC:
- a female can only be body searched by a female police officer
- the body search must be carried out with strict regard to decency

ii) Body search with arrest
S.20 CPC states that the police have the right to search your body for any object relating to the suspected offence and detain any such object believed to be the instruments/fruits/evidence of the crime until your release.

S.21 CPC states that the police can take away any offensive weapon found on you.

You have the right to request for such body search to be conducted in a private or confined place.

iii) Body search while in lawful custody
S.22 CPC states that this is where you are in a lawful custody but you are unable to give a reasonable account of yourself due to intoxication, illness, mental disorder or infancy, a body search can be carried out for the sole purpose of ascertaining your name and address.

Is strip search legal in Malaysia?
S.20A CPC provides that any body search of a person shall comply with the procedure of search as specified in the Third Schedule of CPC. There are only four types of body search:

(a) pat down search
(b) strip search
(c) intimate search
(d) intrusive search

The procedure of search must be complied strictly for each type of search. With regard to strip search, it can only be done where an arrest has been made and there is a reasonable suspicion that the person is concealing an object, evidence, contraband or weapon on him.

Take note that:
- the search shall be conducted in a private room out of the view of anyone outside the room and no recording or communication devices shall be allowed including phones and cameras.
- Only the officer conducting a search, the second officer and the arrested person shall be present in the private room
- The strip search does not require the arrested person to remove all his/her clothes at the same time
- Therefore, the search shall be divided into upper part and lower part.
- A male person shall be allowed to put on his shirt before removing his trousers
- A female person shall be allowed to put on her blouse and upper garments before removing her pants or skirt

IMPORTANT ADVICE: Should you find that the police officer abuses his power such as use force or threat, remember to take note of his ID or name and lodge a report immediately after the incident.

© 2008 Edwin Lee

What to do when police arrest you?

1st stage (you are outside):
There are two types of arrest, namely, arrest with warrant and without warrant.

Politely ask, “Am I under arrest?”

Immediately after the police inform you that you are under arrest, you have the right to ask, “Why am I under arrest?” If he does not tell you the reason, the arrest is unlawful.

Do not resist a lawful arrest as the police have the right to use reasonable force to arrest you if you resist. The police will immediately take you to the nearest police station and no other places.
Once you are arrested, the police may detain you up to 24 hours for the purpose of investigation. You may be detained at the police station or in a lock-up.

2nd stage (you are in the police station or lock-up):
a) You have the right to be informed reason of your arrest
The police must inform you of the reason of your arrest as soon as possible.

b) You have the right to contact lawyer
GENERAL RULE: S.28A Criminal Procedure Code states that the police must inform you that you may contact your lawyer. The police shall allow a reasonable time for your lawyer to be present to meet you and allow for the consultation to take place.

Thereafter, only the police can begin any questioning or recording of any statement from you.

EXCEPTION : the police may not allow you to exercise this right if he reasonably believe that:
i) it would result in an accomplice taking steps to avoid apprehension; or
ii) it would result in the concealment, fabrication or destruction of evidence or the intimidation of a witness; or
iii) having regard to the safety of other persons, the questioning or recording of statement is so urgent that it should not be delayed

c) You have the right to contact family, relative or friend
GENERAL RULE: You can contact your family, relative or friend and inform them that:
i) you have been arrested
ii) the time, place and reasons of your arrest
iii) the identity of the police officer who arrested you
iv) the police station where you are being detained
v) the duration of your detention

EXCEPTION: the police may not allow you to exercise this right for the reasons similar to the above.

d) You have the right to remain silent
You may choose not to answer the questions asked by the police and say you will answer in court. The police have no right to force you to answer the questions.

f) You have the welfare right such as:
- to have one set of clothing on you
- to take bath twice in a day
- to have proper and adequate food and water
- to have medical treatment if you are sick

g) You have the right to have safe custody of your personal belongings and they must be returned to you upon your release

3rd stage (after 24 hours of detention):
The police may either:
a) release you immediately; or
b) produce you before a Magistrate for a remand order in order to detain you further

How long can a remand order be granted by a Magistrate:
S.117(2) CPC provides that:
If the offence is punishable with imprisonment of less than 14 years:
the detention shall not be more than 4 days on the first application and 3 days on the second application.

If the offence is punishable with death or imprisonment of more than 14 years:
the detention shall not be more than 7 days on the first application and shall not be more than 7 days on the second application.

© 2008 Edwin Lee

What to do when police start questioning you?

Politely ask, “Am I under arrest?”

You are under arrest when one of the following occurs:
a) the police say, “You are under arrest”; or
b) he uses force to restrain you. e.g. he handcuffs you; or
c) by words or conduct, he makes it clear that he does not allow you to leave or he wants to take you to the
police station.

What if you are not under arrest?
GENERAL RULE: Apart from giving him your personal particulars such as name, identity card number and home address, you have no legal duty to help the police with their enquiries. You only owe a moral duty to do so. You can walk away and refuse to follow the police to the police station or anywhere else.

EXCEPTION: if you are aware of the commission of a crime or the intention of any person to commit a crime, you are under legal duty to give such information to the police. Failing which you may be guilty of an offence punishable under S.176 or S.202 Penal Code. If you give false information, you may be guilty under S.177 Penal Code.

© 2008 Edwin Lee

What to do when police stop you?

If he is in uniform:
Take note of his name and ID number on his uniform.

If he is in plainclothes:
Politely ask, “Can you show me your Police Authority Card?” Then, take note of his name and ID number on his uniform.

If the card is in:
Red colour : He is a suspended police officer. He has no authority to stop you or do anything
to you. You have all the rights to walk away.
Blue colour : Rank of inspector and above
Yellow colour : Below the rank of inspector
White colour : Police reserve

© 2008 Edwin Lee

Companies using pirated software

A Warning To Company Directors and Senior Management For Using Pirated Software : Your Employees May Be Watching At You

According to the May 2007 Global Piracy Study conducted by Business Software Alliance (BSA) and International Data Corporation (IDC), software piracy in Malaysia is responsible for over USD$ 289 million of the estimated USD$ 40 billion losses to the software industry worldwide. Compare with last year, the losses in revenue have increased USD$ 140 million although the piracy rate remains 60%. In view of the seriousness of software piracy, the Malaysian Government has shown serious commitment to combat software piracy. The enforcement division of the Ministry of Domestic Trade and Consumer Affairs, as well as the Police, is empowered to raid the premises of an infringer and seize the infringing articles.

BSA is an organization that represents the world’s commercial software industry. BSA works with the Malaysian Government in bringing legal action against companies that use illegal software. As part of their initiative to eradicate software piracy, BSA offers monetary reward of RM 20,000 to informant who reports software piracy which lead to a successfully raid. This offer is open to anyone, includes ex-employee of a company and since the informant can file a report anonymously and all reports will be treated in the strictest confidentiality to protect the identity of the informant, there is even an incentive for informant to report.

In May and July 2007, two informants were given the RM 20,000 reward for reporting software piracy in their company. One of the informant said, “ I had no option but to protect myself as I did not want to be incriminated against should the company be raided for its unethical practice of using pirated software. There is no way I am going to jail for something that I had no part in.” Another informant said, “We kept losing all our work when the computers kept crashing. When that happens, everyone had to start redoing everything from scratch. It was very frustrating when we constantly lost our work although it was no fault of ours. The morale in the company was very low.” Hence, this serves as a warning to company directors that your employees may be watching at you.

Software piracy is the unauthorized copying or distribution of copyrighted software. It can be committed by various means such as copying, downloading, sharing, selling or installing multiple copies onto personal or work computers. Under the Malaysian Copyright Act 1987, use of software without proper licences in the course of conducting business is illegal. If found guilty in a court of law, the business and/or its directors or senior management not only face a criminal record, but also liable to a fine of between RM2,000 and RM20,000 for each infringing copy of software charged, and/or up to five years jail. The offenders may also face possible civil suits by copyright owners, claiming damages, an injunction, an account of profits and other remedies.

Many people do not realize that when you purchase software, you are actually purchasing a license to use it, not the actual software. In that license, it tells you how many times you can install the software. You commit a piracy offence if you make more copies of the software than the license allows. Hence, as a software user, you should only purchase original software for use and it must be used according to the license agreement. It should be noted that each and every copy used in every computer is authorized by the copyright owner. You are not allowed to purchase a single set of original software to load onto more than one computer.

Software piracy is not only a crime, but it can destroy computers and data. Illegal software lacks the quality controls built into original software. As such, using illegal software will put the computer prone to computer viruses, corrupted disks etc. You may lose your data resources due to illegal software. This will in turn lead to loss of time, money, business and credibility. Ethical companies that value integrity should only use original software to run their daily businesses.

According to the study, for every two dollars of software purchased legally, one dollar was obtained illegally. Software piracy not only affects the software industry, but it also deters the software development as there would be no financial incentive for future innovation and the development of new technologies.

Although the global losses in revenues increased by more than USD$ 5 billion, of the 102 countries covered in this year’s study, the piracy rates dropped moderately in 62 countries while increasing in 13. Overall, the steady decline in term of piracy rates is a good progress. In reducing the software piracy, the Malaysian Government has shown serious commitment. The government works with the IT industry, strengthening IP policies, educating consumers and businesses on the benefits of using legal software, introducing companies way to manage their software assets. In respect of enforcement, the government keeps launching raids on premises that use pirated software. The government also employs 2 professionally-trained tracking dogs, “Lucky” and “Flo” which has since helped to bust several optical discs syndicates worth RM 15 million. Last month, the Malaysian Government set up its very first Intellectual Property Court to deal with IP infringement cases. This will help the enforcement actions to be done more efficiently. With all these enforcements and the fact that employees are encouraged to be watchdog i.e. to report software piracy, company directors should not attempt to flout the law and put themselves at risk.

© 2008 Edwin Lee

Comparative Advertising in Malaysia

Comparative Advertising in Malaysia – Allow or not allow?

Comparative advertising occurs when one advertiser compares its goods or services directly or indirectly with others. Such comparison will usually refer to differences in price, quality or value. For instance, where an advertiser lists his goods or services alongside the competitor using the competitor’s trademark.

Comparative advertising is commonplace in the US,[1] but it is not widely used in most other countries, due to cultural norms or government regulation. In the UK, the English courts had decided that when an advertiser used the competitor’s registered trademark for comparative advertising, this was a form of trademark infringement under S.4(1)(b) Trade Marks Act 1938 because one cannot seek to gain on the “good virtues” of the competitor’s goodwill and reputation in selling or promoting its goods.[2] However, in the interest of consumers information, comparative advertising is now allowed under S.10(6) UK Trade Marks Act 1994 which repealed S.4(1)(b) Trade Marks Act 1938. The recent English Court of Appeal case of O2 Holdings v Hutchinson 3G (2007) affirms this proposition of law. In the European Union, comparative advertising is also allowable as can be seen in Art 3a of the Comparative Advertising Directive 97/55/EC.

In Malaysia, the Trade Marks Act 1976 does not expressly disallow comparative advertising. There has yet to be a reported decision of the High Court or higher court on the issue of comparative advertising in Malaysia. However, since S.38(1)(b) Trade Marks Act 1976 is very much similar to the old UK trademark law which disallows comparative advertising, and the fact that UK courts precedent is highly persuasive but not binding to the interpretation of Malaysian law, it is submitted that it is highly likely that comparative advertising is not allowed in Malaysia.

However, it is noted that not all forms of advertisement will be prohibited from comparative advertising. According to the Malaysian Communications and Multimedia Content Code (“Content Code”), comparative advertising is allowable for advertisements communicated electronically i.e. this includes television, radio, online services and audiotext hosting services. The Content Code set out guidelines and procedures for good practice and standards of content disseminated for public consumption by service providers in the communications and multimedia industry. A Complaints Bureau has also been established to deal with complaints.

Part 3 of the Content Code states that:
(a) comparison advertising is allowable in the interest of vigorous competition and public information. It shall, however, respect the principles of fair competition and shall be so designed that there is no likelihood of the consumer being misled as a result of the comparison.

(b) The subject matter of a comparison shall not be chosen in such a way as to confer an artificial advantage upon the advertiser or so as to suggest that a better bargain is offered than is truly the case.

(c) Points of comparison shall be based on facts that can be substantiated and should not be unfairly selected.

(d) Advertisers should not attack or discredit other businesses or their products.

(e) Advertisers should not make unfair use of the goodwill attached to the trademark, name, brand, logo, slogan or the advertising campaign of any other organizations.

Comparative advertising can be in the form of direct or indirect. Direct comparative advertising occurs where the competitors are explicitly named whereas indirect comparative advertising occurs where the name of the competitors are not precisely identified. Famous examples are such as Pepsi over Coca-Cola, Burger King over McDonald’s and Hewlett-Packard over IBM. In Malaysia, since direct comparative advertising is not allowed for printed advertisement, indirect comparative advertising is commonly used as can be seen in the picture 1 where Tesco compares their price of goods with two hypermarkets; picture 2 and 3 where BMW and Audi “congratulate” each others; picture 4 where KFC alleges that their Alaskan Fish Combo has “30% more fish compared with KFC’s nearest competitor” and picture 5 where a telecommunication company added another two different coloured ducks into the advertisement implicating the other two telecommunication companies in which it is a known fact that these three companies are using these three different colours as their companies’ representative colours respectively.

On March 3, 1998, the Comparative Advertising Sub Committee of INTA[3] has unanimously passed a resolution encouraging all countries to permit comparative advertising so long as there are legal controls to prevent harm or damage to the mark of competitors, and to prevent explicit or implicit false or misleading representations or other forms of unfair competition.

The issue on comparative advertising is controversial. On one hand, it is said that the use of another’s trademark without permission of the trademark owner, even if used to identify the goods or services of the trademark owner, constitutes a trademark infringement. Furthermore, a claim by owners of lesser known trademarks that their goods or services are comparable with those well-known marks, constitute an unfair riding on the reputation and goodwill of the trademark owner even if the claims are truthful and not misleading.

On the other hand, however, it is believed that comparative advertising which is not false or misleading, consistent with principles of fair competition and not harmful to the trademark of competitors would encourage innovation and improvements to goods or services. Such a healthy competition would increase the options available to consumers and provide consumers with useful information that can encourage consumers to make more informed purchasing decisions. Moreover, comparative advertising would assist the consumers to evaluate the performance of the competing brands.

The very advantage of comparative advertising is that it is informative. A competing brand can highlight the superiority of their goods or services and thereby compare it with the competitor brand that is something that consumers are unable to do so before they purchase the goods. A check and balance is provided in which trademark owners have several legal remedies. If the advertisement is found out to be false or misleading, severe punishment will be imposed accordingly. They can also seek for injunctions to stop offending advertisements. A common law remedy under tort of injurious falsehood can also be initiated if the advertisement goes beyond mere puff whereby it serves to denigrate or disparage the trademark owner’s brand. This in effect would reduce the chances of false advertisement.

Although the Content Code is merely a self-regulation that based on voluntary compliance, as opposed to enforceable laws, however, by virtue of it being a voluntary Code, those subscribing to it have undertaken the commitment and responsibility to uphold its objectives and principles. Failure to comply with the Content Code will subject to sanction imposed by the Complaints Bureau and also the adverse publicity which most advertisers will wish to avoid.

Conclusion:
Comparative advertising is a young phenomenon in Malaysia, but it is excited to see advertisers started to make use of it. A lot of advertisers shun away from comparison advertising for the fear of trademark infringement lawsuit which to some extent it is true because comparative advertising is itself a trademark infringement in the first place. However, with the increase pressure for fair competition, we can anticipate that the trademark law may be amended in the near future to accommodate comparative advertising.

Comparative advertising is the most effective way for companies to tell the truth. Hence, businesses are encourage to be a little more aggressive and use comparative advertising to inform consumers of the best option available.

Therefore, businesses, feel free to compare!

reference:
[1] In the US, federal advertising legislation is found in two major laws : the Federal Trade Commission Act and the Trademark (Lanham) Act
[2] Bismag Ltd. v. Amblins (Chemists) Ltd. [1940] RPC 209
[3]http://www.inta.org/index.php?option=com_content&task=view&id=217&Itemid=153&getcontent=3

© 2008 Edwin Lee

Copyright Law Protects Reverse Engineering?

How Far Does the Malaysian Copyright Law Protect Reverse Engineering?

When a product or a substantial part of a product is reproduced by indirectly copying through inspecting and measuring the product or substantial part of the product (three-dimensional or 3D) without looking at the drawings of the product (two-dimensional or 2D), this amounts to a copyright infringement of the product and this method is known as reverse engineering. Reverse engineering has become a feasible method to create a 3D model with the help of 3D scanning technologies such as CMMs, laser scanners, structured light digitizers or computer tomography which is used to measure the physical aspects of a product.

In Malaysia, the Copyright Act 1987 is silent on the question of reverse engineering. In this instance, the question of whether reverse engineering is a copyright infringement was considered for the first time in the case of Peko Wallsend Operations Ltd v Linatex Process Rubber Bhd [1993] 1 MLJ 225. This case delved on the scope of protection afforded for engineering drawings originating from a member country of Berne Convention since Malaysia became a member in 1990. It was held that :

(1) Since the Copyright Act 1987 states that any work shall be protected irrespective of their quality and the purpose for which they were created, hence engineering drawings would be included as a form of artistic works and 2D work is entitled to copyright protection.

(2) A finished product (3D work) manufactured from an engineering drawing (2D work) may be protected in its own right as an artistic work, provided it is original. Therefore, 3D work is also afforded copyright protection.

(3) Since direct copying is a copyright infringement, it is only right and proper to conclude that indirect copying of an engineering drawing is also an infringement.

The court followed the English case of British Leyland Motor Corp. Ltd. v Armstrong Patents Co. Ltd. [1986] 1 All ER 850 and held that any material reproduction of the whole or a substantial part of the 3D works by reverse engineering amounts to a copyright infringement in the 3D works.

The question then arises as to whether it is a copyright infringement if someone reproduces an identical spare part of a product by way of reverse engineering for the purpose of repair. In British Leyland case, the House of Lords held that there cannot be a monopoly in the supply of spare part because car owners have an inherent right to repair their cars in the most economic way and they should therefore have access to a free market in spare parts.

However, the court in Peko Wallsend case distinguished the British Leyland case on the ground that since Malaysian copyright law does not have such a similar concept of “access to a free market in spare parts”, any reproduction of identical spare part by way of reverse engineering is a form of copyright infringement.

The local court in a recent case of Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd [2005] 3 MLJ 30 also reaffirmed the protection as propounded in Peko Wallsend case. A Japanese company, Honda brought a suit against a local company, alleging infringements of its registered designs and copyright works in the design of motorcycle by the local company. The court followed the decision Peko Wallsend case and confirmed that the plaintiff’s 2D drawings and 3D works, embodied in the form of a motorcycle, are protected by Malaysian copyright law. It was held that the plaintiff’s drawings were similar to the eventual product of the defendant products and hence there was a copyright infringement when the defendant’s products were produced or substantially reproduced.

It is worth mentioning that the court in the Honda Giken case also followed the decision in Peko Wallsend case and ruled that according to the Copyright (Application to Other Countries) Regulations 1990, any work originating from any of the specified countries under the Berne Convention, regardless of time, subject to the eligibility under the Act, shall be entitled to copyright protection in Malaysia, regardless of whether it enjoyed protection or not in that specified country.

As a conclusion, it is clear that reproducing the 2D or 3D works, either directly or indirectly, is a copyright infringement. Hence, manufacturers are rest-assured that their 2D engineering drawings and 3D products are given adequate protection under the Malaysian Copyright Act 1987.

© 2008 Edwin Lee

Setting Up of IP Courts

Setting Up of IP Courts : A Step in the Right Direction

Following the recent success of “Lucky” and “Flo”, 2 professionally-trained sniffer dogs which helped the Malaysian Government to bust several pirated optical discs syndicates worth RM 15 million, the Government has taken another big step in enforcing IP rights by setting up IP courts. Malaysia has always been criticized of not giving sufficient enforcement to IP rights, particularly in the area of copyright. At 60%, it has one of the highest rates of illegal software piracy in the Asia Pacific region. In response to the criticisms, the Government has decided to set up IP courts as part of its initiative to give better enforcement to IP rights.

The study on setting up Intellectual Property courts (“IP Courts”) in Malaysia, which include several visits to IP courts in other countries, has finally cultivated. On 17th July 2007, our very first IP court has come into operation. 15 Session Courts in every state have been designated to handle IP cases. Meanwhile, 6 High Courts will sit as “special designated courts” in states with the most number of IP infringements i.e. Kuala Lumpur, Selangor, Johor, Perak, Sabah and Sarawak. Due to the highly complex, technical and constantly changing nature of IP cases, it is reported that judges and court personnel who possess skill and knowledge in IP field will be appointed to ensure they are capable to handle IP cases efficiently. Furthermore, IP savvy judges will also be in a better position to appreciate the IP laws and give sound judgments.

As IP cases usually involve high commercial interests, the problems of delay and lengthy legal proceedings will deter IP right owners to enforce their rights. For instance, a court can take between four months to a year to decide whether to grant an interim remedy application such as injunction. By the time the injunction is granted, the IP right owner would have already suffered losses or the infringer would have disappeared. Last year alone, it is estimated that there were more than 1,600 IP cases filed in courts. Acknowledged the notion of “justice delay is justice denied”, the Government hopes that by setting up the IP courts, it will help to clear the backlog of IP cases and expedite the hearing and resolution of IP cases.

According to the Domestic Trade and Consumer Affairs Minister Datuk Shafie Apdal, the setting up of IP courts is the real and tangible evidence of Malaysia showing commitment to protect IP rights. He further said that it is hoped that such move will remove Malaysia from being on the international watch list for IP offences. Besides, as Malaysia is a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and other related conventions, the setting up of IP courts is a step to fulfill its international commitments. The former Chief Justice of Malaysia, Tun Ahmad Fairuz Sheikh Abdul Halim said he hoped the new court would receive due recognition from foreign investors. More investors will be encouraged to come to Malaysia since it has specific courts to efficiently deal with IP disputes.

Besides, this is also in line with the Government’s commitment to eradicate piracy and counterfeiting activities in the country. Also, the public may be more aware of the importance of protecting their IP rights. Malaysia’s commitment to IP protection will also help in its ongoing negotiations with the United States on a free trade agreement (FTA) as the US is asking for stronger protection of IP rights.

The IP courts is part of the initiative set out under the National IP Policy in which the Government has decided to allocate RM 5 billion to boost the development and protection of IP. Malaysia aims to become a regional intellectual property hub with measures taken by the Government to beef up the commercialization aspect of IP. The next major step will be to encourage investment, innovation and technological development within the country. The Government also plans to establish an IP academy to be launch in 2009. Therefore, the setting up of IP court is indeed a step in the right direction in the effort to develop a strong IP infrastructure. It also creates a new milestone in the country’s judicial history.

© 2008 Edwin Lee

Q&A about Copyright

What is copyright?
Copyright is the exclusive right given to the owner of a copyright for a specific period. In Malaysia, copyright protection is governed by the Copyright Act 1987.

If it does not have a copyright notice such as ©, is it still a copyrighted work?
It is irrelevant as to whether there is a copyright notice. You should assume that if a work is copyrightable, it is a copyrighted work and may not be copied unless you know otherwise. Using the © symbol is not required for copyright protection but it is useful to warn others of your ownership in the work and it serves as a potential warning to infringers.

A copyright notice should contain the following 3 elements:
© (year of first publication) (your name)
e.g : © 2008 Edwin Lee

How does a work eligible for copyright protection?
A work is protected by copyright automatically upon fulfillment of 3 conditions:

i) sufficient effort has been put in to make the work original;
ii) the work has been written down, recorded or reduced in a material form;
iii) the author is a qualified person / the work is made in Malaysia / the work is first published in Malaysia

Do you have to register your work to get copyright protection?
No. In Malaysia, there is no system of registration for copyright. Copyright protection arises automatically as soon as the work is created i.e. fulfilled the 3 conditions.

I have an idea in my mind. Do I therefore own the copyright in the idea?
Copyright only protect the expression of idea, not idea per se. Therefore, you only own the idea if you have made effort to reduce the idea in a material form such as write or record it down. Besides, procedures, methods of operation or mathematical concepts as such are also not protected under copyright law.

Do I enjoy the copyright protection even if my work is not of high quality?
All works shall be protected under copyright irrespective of their quality and purpose for which they were created.

How long is the copyright protection?
The duration of copyright protection depends on the type of work involved. Generally, copyright protection in Malaysia is for the life of the author plus 50 years after his death.

If I only copy a small portion of the copyrighted work, will I infringe the copyright?
Copying a small portion of a copyrighted work may infringe the copyright if there is a substantial taking of the copyrighted work. Substantial taking means the taking of the crucial and distinctive part of the copyrighted work. Whether there is a substantial taking depends on quality, not quantity. The court may compare between the copyrighted work and your work and see if there is any material defference between both works, the overall impression of both works.

Is anything on the internet free to be copied since it is in the public domain?
This is a wrong perception. There is no difference between articles published on the newspaper and articles published on the internet. They both are under copyright protection. The internet is just another medium of publication. Materials published on the internet are generally available for viewing by the public for private purposes, unless the copyright owner specifically and explicitly notfify that the works are not copyrighted.

If I tape-record the speech in a talk or seminar, is that a copyright infringement?
Although a speech given verbally does not attract copyright protection, it is not the same if the speech is tape-recorded. As the recording is done through a tool, the copyright would still belongs to the person behind the recording i.e. the speaker as soon as the speech is tape-recorded.

Can I use a portion of a copyrighted work without getting permission from the copyright owner and plead the defence of fair dealing?
You may use a portion of a copyrighted work for the purposes of non-profit research, private study, criticism, review or reporting the current event if such use is considered as fair dealing. However, it must be accompanied by an acknowledgment of the title of the work and its authorship if such work is made public.

Does it mean I can make a photocpy of the whole textbook since I can plead fair dealing for private study or educational purposes?
No, fair dealing is generally a short excerpt and you should not use much more of the work than is needed to make the research, private study or commentary. Reproduction of the whole textbook is definitely a copyright infringement and you have no defence for it.

Is it ok to copy a copyrighted work as long as I acknowledge, give full credit or attribute as to the title of the work and the authorship?
No, simply giving acknowledgment does not help you to avoid copyright infringement. It must be borne in mind that only the copyright owner has the right to reproduce the work. It does not matter whether you attribute your work to the copyright owner unless it falls under the limited exceptions of fair dealing.

I am an employee of a company. Do I own the copyright for the work I created?
As a general rule, copyright in a work vests in the author. However, where the work is created by an employee in the course of his employment, the copyright shall be deemed to vest in the employer or anyone who commissioned the work, unless there is any contrary agreement.

Can I make copies of the original CD I bought since it was an original CD?
The mere fact that you bought an original CD does not mean you own the copyright in that CD. Therefore, you are not allowed to make copies of the original CD in any format. This also means that you are not allowed to copy to contents in the CD to your computer, and then subsequently burn it or share the files on the internet.

© 2008 Edwin Lee

Q&A about Trade Marks

What is trade mark?
Trade mark acts as a badge of origin. The purpose is to indicate a connection between the goods or services and the person having the right to the trade mark. A trade mark is also a mark which distinguishes the goods and services of one trader from those of another. Today, trade mark is used as a marketing tool to enable customers in recognizing the goods or services of a particular trader. In Malaysia, trade mark protection is governed by the Trade Marks Act 1976.

Is it true that only words can be registered as trade mark?
Trade mark protection is not limited to words. Word, label, ticket, brand, logo, device, heading, numeral, signature, letter or any combination thereof can be registered as a trade mark. Malaysia still does not have any provision that allow for registration of sound or smell marks.

What marks are registrable as trade marks?
This is provided under S.10 Trade Marks Act 1976. Only one of the following particulars must be satisfied:

· The name of an individual, company or firm represented in a special or particular manner
· The signature of the applicant for registration
· An invented word(s)
· A word that has no direct reference to the character or quality of the goods or services,

geographical name or surname
· Any other distinctive mark
· Not deceptive/confusing, or contrary to law and scandalous/offensive
· Not identical or similar to earlier registered/application trade marks
· Not identical or similar to well-known trade mark

Is trade mark registration compulsory?
In Malaysia, registration of trade mark is not compulsory unlike registration of companies and business. Unregistered trade mark may still obtain protection under common law passing off as long as it has been put to use and it acquires strong goodwill and reputation.

I have registered a business name so I don’t need to register a trade-mark.
Registration of business name is not equivalent to registration of trade mark. Registering business names offers very little protection. Business name registration merely provides a record of the business’s existence, its owners and its contact details. It does not give you exclusive right to use that business name unless you have registered it as a trade mark. Other parties may use a business name that is similar to yours. Hence, register “Powerful Station” as a business name does not stop someone from setting up a business called “Powerful Station”.

Hence, if you intend to use the business name to identify your goods or services, you should register it as a trade mark. Besides, someone may have already registered your proposed business name. It is therefore prudent for you to check with the trade mark office before registering your business name as you may be infringing another person’s trade mark rights.

Is my domain name equivalent to my trade mark?
A domain name provides no exclusive right to you. It is a means of internet navigation. Securing a domain name and a trade mark at the same time will assist you to avoid domain name and trade mark disputes.

When can I use ™ or ® ?
Normally, ™ is used while pending trade mark registration. Nevertheless, you may use ™ at anytime even before filing a trade mark registration. It serves as a notice to others that you intend to protect your rights. However, you may not use ® until the trade mark has been registered. Otherwise, it may amount to an offence of falsely representing a trade mark as registered (see S.81 Trade Marks Act 1976).

How long is the trade mark protection?
Once a trade mark is registered and as long as it has been put into use, the duration of protection is indefinitely, subject to payment of renewal fees for every ten years.

So, if I don’t register my trade mark, I have no protection at all?
An unregistered trade mark, however, is still protected under the common law of passing off. As long as the trade mark is in use, it acquires such a common law right regardless of whether it is registered or not. However, it is very difficult and expensive for you to stop someone else from using your trade mark. You do not have automatic legal right. The only problem is the difficulty in proving strong goodwill and reputation acquired through the use of the trade mark in the business. Substantial evidence is needed to establish goodwill and reputation. You will have to incur expensive surveys and paying for expert witnesses.

What is the protection granted if I register my trade mark?
Upon registration of a trade mark, you are granted the exclusive use of the trade mark for the designated classes of goods or services. The burden of proof for a trade mark infringement action is easier than the burden for a common law passing off action. You will have the automatic legal right to stop anyone in the country to use your trade mark. You will have the right to sue the other party for “Trademark Infringement”, not “Passing Off” law. All you have to prove is that you have a registered the trade mark and the other party is now using the trade mark. The court is likely to order the infringing party to change his trade mark and to pay damages to you. Because the other company's lawyer will tell them this, the case is unlikely to even go to court, and they are likely surrender very quickly. It is strongly advised to register the trade mark as the remedies for trade mark infringement are more cost effective and comprehensive.

Since I have a registered trade mark, my trade mark will always prevail over an identical or similar unregistered trade mark, correct?
Just because your trade mark has been registered, it does not mean it can never be challenged or defeated. The first to show significant use of a trade mark will own that mark even where there is a later registered trade mark. Assuming that the Mr. A has an unregistered trade mark and the trade mark has been in used prior to yours, your trade mark may be challenged by Mr. A if he can prove goodwill and reputation.

If I have a registered trade mark in Malaysia, does it mean I have trade mark protection in every country in the world? Is there a “world trade mark”?
Trade mark rights arise territorially and registration must be done on a country by country basis. If protection of trade mark is required in other countries, it will be necessary to apply for registration separately in each country. However, a Malaysian application can be used as a basis for claiming priority in countries which are party to the Paris Convention and World Health Organisation (WHO).

I have not started to use my trade mark yet. Can I register my trade mark?
S.3 Trade Marks Act 1976 defines trade mark as “a mark that is used or proposed to be used …”. Hence, it is clear it is not necessary to have actual use of the trade mark before registration. An intention to use is sufficient. When you set up a new business, you should register your trade mark at an early stage to ensure that you do not start using a trade mark that owns by others. It can also ensure your trade mark is properly protected against your competitors.

Once I have registered my trade mark, is it ok if I do not use it?
A registered trade mark must be put into use. If a registered trade mark was registered without a genuine intention to use it or there has been no such bona fide use of the mark for at least 3 years after the registration, the registered trade mark may be removed from the register. This is known as “non-use”.

After I register my trade mark, can I change or amend it without having to file a new registration?
Your registered trade mark only remains valid if it is used as registered. If there is any material changes or amendment, then you should file a new registration.

I got the idea for my new trade mark from another company’s registered trade mark. Is it ok if I change a little bit so that my trade mark is different from the prior registered trade mark?
Trade mark infringement does not only occur where the two different trade marks are exactly identical. If your trade mark is confusingly similar to the prior registered trade mark in relation to the same goods or services such that it will likely to deceive or cause confusion to the member of public or it may import a reference to the registered trade mark owner, that will amount to a trade mark infringement as well.

Therefore, misspellings, used with different graphics will likely to be considered as infringing the prior registered trade mark, particularly if the meaning and pronunciation has not changed. For example, Burger King rather than BurgerKing.

Is it better to register a logo, or the words in a special font style, rather than just plain words?
Registration of the words in standard character form usually provides broader protection. It also allows changes to the font style without re-registration.

If I register the English version of my trade mark, do I automatically obtain protection for the Bahasa Malaysia or Chinese version?
Registering the English version will not protect the Bahasa Malaysia or Chinese version of the trade mark. separate application for Bahasa Malaysia or Chinese will have to be made if you want to protect the trade mark in those languages.

If my company owns a trade mark, can I allow my subsidiary companies or any other person to use it too?
A trade mark will only remain valid if it is used either by the party that registered it or by its licensee. A licensor who allows licensee to use his trade mark must apply for licensee to be entered on the Register as a registered user whether with or without any conditions or restrictions. However, it is a condition of registration that the licensor shall retain and exercise control over the use of the trade mark and over the quality of the goods or services provided by the licensee.

The permitted use of a registered trade mark by a licensee shall be deemed to be used by the licensor, even if the licensor never uses the trade mark himself. This would insulate the licensor from any action of cancellation of the trade mark on the ground of his non-use.

What does well-known trade mark mean?
Under S.70B Trade Marks Act 1976, an owner of well-known trade mark is entitled to protection of the use of a mark in Malaysia which is identical or confusingly similar to the well-known trade mark. A well-known trade mark is protected whether or not its owner carries on any business or has any goodwill in Malaysia.

© 2008 Edwin Lee

My first ever BLOG !

Hello! This is my first BLOG.

BLOG ??? What does it mean? I couldn’t find in any dictionary. Having searched through Wikipedia, it came to my knowledge that BLOG is a new invented technology word, it is a portmanteau of web log. It is used a forum for people to make comments or news, and it has even been used as an online diary. ( since when diary has become so open? I remember diary is suppose to be something which is secretive, that you write your secret into it, and sometimes add on a little pad lock to prevent unauthorised “invasion” into your secret. )

I have seen quite a number of blogs posted by my friends, some were very well-written. To me, blog has become a new culture that has become part and parcel of modern people’s life, irregardless of age. (it’s true, I have seen a blog written by a 60 years old man). Human being do not like to be alone, they want their voice to be heard. In Europe, Article 10 of the European Convention of Human Rights provides that everyone has the right to freedom of expression in the sense that everyone is entitled to hold opinions and to receive and to impart information and ideas without interference by anybody especially the public authority. United Kingdom as part of the European Union, has since incorporated this Article and therefore the Section 12 of the Human Rights Act 1998 provides for the similar right to freedom of expression.

In Malaysia, such right is enshrined in our Article 10 of the Federal Constitution. I believe it was enacted in accordance to the Article 19 of the Universal Declaration of Human Rights. Despite we have such freedom, it is heavily caveated and subject to other laws such as the Sedition Act, the Official Secrets Act, the Printing Presses and Publications Act (PPPA) and the Communications and Multimedia Act. Having said all these, right to freedom of expression is not an absolute right. It is true that everyone is entitled to his / her own freedom of expression. It must, however, not be abused. It must be used appropriately. Yes, blogging allows you to say whatever you want, but please be careful with whatever statement you make.

I would like to share the following statement:
“Laws alone cannot secure freedom of expression; in order that every man (and woman) present his (or her) views without penalty there must be spirit of tolerance in the entire population.” - Albert Einstein

So, blog it but with caution!

My main purpose to start a blog is to post materials about the Malaysian laws, which is intended to promote the awareness of your rights under the Malaysian law. Besides, it is also meant to be a forum for me to express my opinion on the various issues of law.

I will constantly update my blog if I have any idea or opinion to share with you all. Of course, the copyright shall subsist in my works and you are not allowed to copy without getting my permission.

© 2008 Edwin Lee