Copyright in Malaysia is governed by the Copyright Act (1987) and the Berne Convention (to which Malaysia acceded in 1990). As a member of the Berne Convention, Malaysia recognises a wide variety of artistic works which are copyrightable, including literary, artistic, and musical works, sound recordings and films, drawings, computer codes, and more. All artistic works receive protection for the form of the work’s expression—meaning, for example, that your code is protected, but you cannot prevent someone from writing different code which accomplishes the same thing by using copyright.
In today’s article we explore the Malaysian copyright system, with a focus on how European SME’s can best exploit it to protect their materials.
Copyright registration and Periods of Protection
Copyright grants moral and economic rights to the author of the work, unless that author was commissioned or employed by another party (in which case the commissioner or employer gains copyright). There is no formal requirement for the work to be registered in Malaysia in order for the copyright to be claimed or recognised. Nevertheless, as of 2012 a copyright owner may voluntarily register their copyright in Malaysia by notifying Malaysia’s Copyright Controller of their claims and giving MyIPO a copy of the copyrighted work.
Voluntary registration is strongly recommended for foreign SMEs, as the registration can be extremely useful in enforcement proceedings as evidence of your ownership. Without registration, it may be difficult for the foreign SMEs to prove the ownership of the copyright. However, it should be kept in mind that voluntary registration can only be done by a citizen or by a permanent resident of Malaysia. As such foreign SMEs need to use agents with Malaysian permanent residency to register their copyright works. The following information is required:
- Details of the owner and author of the copyright, as well as the applicant’s status as representative (if the application is made on behalf of another)
- A (clear and durable) copy of the copyrighted work and a title of the work (translated into Bahasa Malaysia or English if it is not in one of these languages)
- Information on the date and place of publication of the work
- Information on payment of the required fee
- An application form – Form CR-1, when the work to be notified is an original work and the Form CR-2 when it is a derivative work. The typical official fees for a voluntary copyright notification in Malaysia start from RM 155, which is approximately EUR 35. Additional costs will depend on the professional charges of the legal service providers
Copyright registrations are not subject to substantive examination, so the application itself is taken as proof that the facts within the application are true. If the notification is in order, a notice will be sent to the applicant that the information and work has been recorded in the copyright register. After examination, an applicant may ask for a certificate which can be presented to Malaysian courts as evidence in cases of enforcement.
As according to the Berne Convention, in Malaysia, copyrights extend protection for the life of the author and an additional 50 years thereafter. For unpublished works, copyright protection lasts for 50 years from the beginning of the calendar year following the publication date.
Copyright grants two types of rights in Malaysia. Economic rights guarantee that the owner of a copyright is the only one who can engage in or authorise reproduction, performance, distribution, sale, stocking, or other commercial exploitation of the work in Malaysia. On the other hand, moral rights give the author of the work the right to be identified as the author and to object to any use or alteration of the work which would harm his or her reputation or integrity. These moral rights remain with the author of the work regardless of who possesses the economic rights to the work (such as by transfer of rights). As an intangible property, copyright can also be licensed or assigned to third parties for royalties. When licensing, it is important to determine the extent of copyright use that shall be permitted.
Before taking civil or criminal actions, SMEs should strongly consider mediation. Firms with limited budget options and a need to quickly halt infringement can use mediation as a quick and cost-efficient means of halting infringement.
Beyond mediation, the two main avenues of enforcement in Malaysia are the Enforcement Division of the Ministry of Domestic Trade, Cooperatives, and Consumerism (for criminal enforcement) and IP court litigation. Before any enforcement action, you should always gather proof of your ownership of the IP in question and proof of infringement.
In criminal enforcement with the Enforcement Division (ED), counterfeiting and piracy cases can quickly yield goods seizures, injunctions, and prosecutions. To prepare for such actions, you should provide proof of your copyright, the proof of infringement and a letter of complaint. After raids or product seizures, SMEs should assist the ED by providing identification and analysis of seized goods to prove infringement. Enforcement by the ED is also recommended for the SMEs because it would provide for immediate confiscation of infringing goods.
In litigation through IP courts, IP owners can bring cases before specialised Malaysian IP courts. These courts are empowered to issue injunctions which halt infringement and to assign damages to be paid to the rights owners. Nine months is the prescribed maximum waiting time for these cases between filing and their day in court, offering a reasonable expectation of timely resolution. There are six “High Courts” (in Kuala Lumpur, Johor, Perak, Selangor, Sabah, and Sarawak) which focus on civil cases (as the damages are often difficult to quantify), as well as 15 “Sessions Courts” spread among the Malaysian states which focus on criminal cases and which have unlimited power to issue fines.
No matter which enforcement rout an SME decides to take, it must be ready to prepare and collect evidence to show that it is the owner of the copyright in Malaysia and show proof that the copyright has been infringed by a third party.
The South-East Asia IPR SME Helpdesk supports small and medium sized enterprises (SMEs) from European Union (EU) member states to protect and enforce their Intellectual Property Rights (IPR) in or relating to South-East Asian countries, through the provision of free information and services. The Helpdesk provides jargon-free, first-line, confidential advice on intellectual property and related issues, along with training events, materials and online resources. Individual SMEs and SME intermediaries can submit their IPR queries via email (firstname.lastname@example.org) and gain access to a panel of experts, in order to receive free and confidential first-line advice within 3 working days.
The South-East Asia IPR SME Helpdesk is co-funded by the European Union.
To learn more about the South-East Asia IPR SME Helpdesk and any aspect of intellectual property rights in South-East Asia, please visit our online portal at http://www.ipr-hub.eu/.