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.
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
No comments:
Post a Comment