Copyright Infringement: The Case of Alustil Sdn Bhd v Vitally Sdn Bhd

INTRODUCTION

The Plaintiff, Alustil Sdn Bhd (“Alustil“) sued the Defendant, Vitally Sdn Bhd (“Vitally“) for copyright infringement.

Subject Matter

• Technical drawings of its ‘part of frame and shelves’ (“Shelf Profile“)
• 3-D form of the Shelf Profile

(collectively defined as “Works“)

Alustil’s Claim

Vitally’s ‘infringing shelf profile’ infringed Alustil’s copyright in the works.

Vitally’s ‘infringing shelf profile’ are the same or substantially identical to Alustil’s registered industrial design No MY14-00832-0101 (the “ID“).

ISSUES

The Defendant applied for an order under O.14A of the Rules of Court 2012 for the determination of two specific questions of law.

Question 1

“In light of Section 7(5) of the Copyright Act 1987 whether the Plaintiff can maintain the present action which is premised upon a claim for copyright infringement in respect of an alleged work (or part of it) which is the subject matter of an industrial design registered in the name of the Plaintiff.“

Can a person sue for copyright infringement of an alleged work (or part of it) that has been registered as an industrial design?

Answer

No. 

Reasons

There is no dual protection under design and copyright law. If the design is registered under the Industrial Designs Act 1996, Alustil’s claim lies in infringement of industrial design.

Section 7(5) of the Copyright Act 1987

“Copyright shall not subsist under this Act in any design which is registered under any written law relating to industrial design.”

Section 13B of the Copyright Act 1987

Its application is restricted to ‘artistic work’ which are not registrable under the Industrial Designs Act 1996.

Question 2

“Whether Section 7(5) of the Copyright Act 1987 operates to bar the Plaintiff from claiming any copyright in the alleged ‘Works’ of the Plaintiff in view of the existence of the Plaintiff’s registered industrial design bearing Registration No MY 14-00832-0101 (‘Plaintiff’s Registered Design’) registered pursuant to the Industrial Designs Act 1996.“

Outcome

Question is withdrawn by Vitally as Alustil claimed that the scope of the ID is much narrower than its alleged copyrighted Works.

However, the court made note that it is irrelevant even if Alustil has a copyright that is larger in scope than the registered design.

FINAL VERDICT

Alustil’s claim is dismissed with costs of RM10,000.00.

KEY TAKEAWAY

Be careful not to plead copyright infringement when the subject matter is a registered industrial design!