Research

The Rights of
Architects
Intellectual
Property on
Copyright In
Malaysia

Prepared by:

Ar Ridha Razak
 INTRODUCTION

• 1709 – first copyright act formed in UK

– Gave sole right and liberty of printing books to
authors and whoever they assigned rights to
– Protection period 14 years
• Later revisions include other creative works
such as engravings and music
• Copyright – new means of distributing
intellectual property
 WHAT IS COPYRIGHT

Copyright is the exclusive right given to the owner of a copyright

for a specific period.

A work that is eligible is protected automatically upon fulfillment

of the following conditions:-

•sufficient effort has been expected to make the work original in

character;
•the work has been written down, recorded or reduced to a
material form;
•the author is qualified person or the work is made in a country
or the work is first published in that country.
 WHY DO YOU NEED COPYRIGHT?

Copyright protection provides

• benefits in the form of economic rights

• which entitle the creators to control use of their
literary and artistic material
• in a number of ways such
 as making copies,
 performing in public,
 broadcasting,
 use on-line, etc.

and to obtain an appropriate economic reward.

 WHO OWNS COPYRIGHT?

Copyrights in a work vests initially in the author (writer,

composer, maker of the work, etc).

However, where the making of a work is made by an

employee in the course of his employment, unless there
is any contrary agreement, the copyright in the work shall
be deemed to vest in the person who commissioned the
work or the employer.

The author's right is transferable by assignment,

testamentary disposition or by operation of law, in which
case the assignee shall be the owner.
 WHO IS THE AUTHOR?
• Under the Act, an author can be a writer, artist,
performer or film maker, as well as an architect or
other designer.

• In Austalia, UK and America, Any design an architect

imagines and creates, is an ‘artistic work’ that will be
protected by copyright under the Act.

• Because an architect is also the author of their work:

 moral rights provisions of the Act applies to the
architect
 to be acknowledged as the original creator of their
design in the work.
 WHAT IS COPYRIGHT ACT?
The Copyright Act is a piece of national legislation that protects and
controls the copyright and rights of the creator.

The Act automatically gives rights to every ‘author’ over the work
they create whether its:
1. literary works;
2. musical works;
3. artistic works;
4. films;
5. sound recordings;
6. broadcasts; and
7. derivative works

doesn’t need to be any assessment of merit in the work, only that a

person creates something original.
 COPY RIGHT ACT AROUND THE WORLD
COUNTRY COPYRIGHT ACT
UNITED UK Copyright Act 1911
KINGDOM
INDIA Indian Copyright Act 1957

AUSTRALIA Australia Copyright Act 1968,

JAPAN Copyright Act 1970

UNITED STATES Copyright Act 1976 – Amended 1990

CANADA Canada Copyright Act 1985

MALAYSIA & Copyright Act 1987

Singapore
China The Chinese Copyright Law (1991) and its
Implementing Rules 2002
COPY RIGHT ACT IN MALAYSIA
 WHO ENFORCE COPYRIGHT ACT IN MALAYSIA?

The Copyright Act (1987) provides :

• the enforcement of the law by the Ministry of Domestic Trade and

Consumer Affairs, specifically the Enforcement Division, apart from the
Police.

• the necessary clout to the enforcement agencies to effectively carry out

anti-piracy measures.

• Copyright Tribunal whose function is to grant Licenses to produce and

publish in the National Language a translation of a literary work written
in any other language.

• Act currently amended to expand the power of the tribunal to include

arbitration of disputes relating to use of copyright works.

Copy Right Act 1987

 COPY RIGHT INFRINGMENTS

Whoever use any copyrighted works without consent or

authorization from the author, copyright owner and performer, it
may constitute an infringement under Copyright Act 1987.

Amongst the act of infringement includes:

1. reproduces in any material form, performs, shows or plays or distributes to
the public,
2. imports any article into Malaysia for the purpose of trade or financial gains;
3. makes for sale or rent any infringing copy;
4. sells, rent or by way of trade, exposes or offers for sale or rent any infringing
copy;
5. distributes infringing copies;
6. possesses, otherwise than for his private and domestic use, any infringing
copy;
7. exhibits in public any infringing copy by way of trade;
8. makes or has in his possession any contrivance used or intended to be used
for the purpose of making infringing copies

Copy Right Act 1987

 WHAT TO DO IF THERES INFRINGEMENT?
Copyright owners shall lodge an official complaint supported by the
necessary document to the Enforcement Division of the Ministry of
Domestic Trade and Consumer Affairs if they suspect infringement.
Immediate action will be taken by the said authority.

The Division will conduct the necessary investigation and prosecutions.

Perbadanan Harta Intelek Malaysia

( Intellectual Property Corporation of Malaysia )
Tingkat 32, Menara Dayabumi
Jalan Sultan Hishamuddin
50623 Kuala Lumpur
Phone No: 03-22748671 (Counter)/
03-2263 2100 (Operator)
Fax No: 03-22741332
 PENALTY

Copy Right Act 1987

 PENALTY

Copy Right Act 1987

 RELATION
OF
COPYRIGHT
TO
ARCHITECTS

Prepared by:

Ar Ridha Razak
WHY DO YOU NEED COPYRIGHT IN ARCHITECTURE?

http://www.chinaiplawyer.co
m/protection-architecture-
works-china-copyright-law/
 RULE FOR ARCHITECT COPYRIGHT PROTECTION

1. An idea is given no copyright protection until put into a

tangible form, such as a drawing.

• Example: When the architect draws some lines on a piece

of paper, this expression is automatically given copyright
protection.

2. The drawing is the expression of the idea and is given copyright

protection by the Copyright Act, unless, however, the drawing is
not original.

• Example: If the architect merely sketches what someone

else has already drawn, the element of originality is missing
and there is no protection.
 2008: ARCHITECT SUE DEVELOPER

DEVELOPER BUILD A HOME

MIMICK ARCHITECT DESGIN

Mcintyre, Capron & Associates

V
CBS PROPERTIES

https://www.law360.com/ip/arti
cles/61099/architect-sues-over-
copyright-for-house-blueprint
 2008: ARCHITECT SUE DEVELOPER

HUMPHREYS & PARTNERS

ARCHITECT

V
HRV LOUISE VILLE

http://www.wdrb.com/story/270
60284/architect-sues-developer-
of-student-apartment-building-
near-university-of-louisville
 2016 : OWNER SUE ARCHITECT/ PROPERTY OWNER

ARCHITECT ALLEGE COPYING OF

HOME OWNER DREAM HOME
DESIGN

RIVKA FORTGANG V
1. PEREIRAS ARCHITECTS
UBIQUITOUS
2. PROPERTY OWNERS DANIELLA
AND ARI SCHWARTZ

http://nypost.com/2016/07/07/co
uple-sues-architect-for-copying-
custom-dream-home/
 2017: ARCHITECT ( COMPETITION WINNER) SUE LOCAL
AUTHORITY
DEVELOPER ERECT
BUILDING WITHOUT
CREDITING THE
AWARD WINNER

Fernando Donis V
Dubai Municipal

https://www.artforum.
com/news/id=67050
 2017: ARCHITECT SUES ARCHITECT

JEEHON PARK V SOM

http://www.archdaily.com/87
3750/architect-sues-som-for-
stealing-one-world-trade-
center-design
OCT 2017 : OWNER SUE NEIGHBOUR/ARCH/ REAL ESTATE
AGENT/ CONTRACTOR
Jason & Jodi Chaprik
V
1. neighbour Barbara Ann
Kirshenblatt, her builder husband
2. architect brother-in-law for
copyright infringement
3. real estate agent who profited
from the house’s recent sale
4. anonymous contractors who
worked on the house.

They were seeking $1.5 million in

damages, $20,000 in statutory
copyright damages, $1 million in
punitive damages, and a mandatory
injunction on the defendant to change
the design of the home.

https://www.thestar.com/news/gta/2
017/10/05/forest-hill-homeowners-
claim-neighbours-duplicated-their-
house-design.html
 2007: CALATRAVA vs ARATA ISOZAKI

http://www.independent.
co.uk/news/world/europe
/calatrava-sues-for-
violation-of-copyright-
over-bridge-changes-
397965.html
2017: ARCHITECT EXCLUDED FROM AWARD DUE TO ALLEGE
COPYRIGHT INFRINGEMENT
Caroline Hickey of Bosske
Architecture — was excluded
by the Australian Institute of
Architects which run the
awards, after an unnamed
French architect lodged a
claim of copyright
infringement.

Copyright claim withdrawn

The building's owner Mark
Braddock has hit out at the
Australian Institute of
Architects (AIA) for denying
the award entry.

http://www.abc.net.au/news
/2017-06-23/copyright-
dispute-sees-architectural-
nominee-removed-from-
awards/8647022
2015: CHAIR DESIGN BY NORMAN FOSTER- EMECO SUE IKEA
FOR PRODUCT INFRINGEMENT

https://www.dezeen.com/2015/03/25/ikea-
faces-legal-action-over-alleged-copyright-
infringement-melltorp-dining-emeco-norman-
foster-20-06-stacking-chair/
2017: HOCKEY STADIUM PENANG- ORIGINAL ARCHITECT Ar
YUSOF ALI TAKING ACTION FOR COPYRIGHT INFRINGEMENT
 COPYRIGHTS IN ARCHITECTURE INDUSTRY

Exclusion Inclusion
Protection Copyright does not protect Copy right protects the
• ideas, form of expression
• information or whether it be an
• concepts, • idea,
• nor does it extend to all • style or
features of architectural works • information which
which are generic to all copyright protection
buildings, such as doors, is given.
windows and roofs.

Example if an architect formulates an idea a drawing or model

of a open plan house with high which incorporates the
ceilings, arched doorways and a features of the idea will
flat roof, the idea is not in itself be protected.
protected by copyright.
 EXAMPLE
The expression
Idea/ Concept/
Information Sketch
of bioclimatic
3D model
tower Tower
VS Physical
Model
Working
Green tower,
Drawing
planting, sky garden,
terraces, wind
End
catcher
Product
 QUESTIONS ON COPYING THE WORKS OF
ARCHITECT/ ARCHITECTURE
ANY ACT OR PROVISION PROTECT COPYRIGHT WORKS OF ARCHITECT?
1. INFRINGER OBTAINING THE BLUE PRINT, REPRODUCE , COMMUNICATE TO
PUBLIC AND DISTRIBUTE TO PUBLIC AND SELLS.

ANY ACT OR PROVISION PROTECT COPYRIGHT OF THE BUILDING

(ARCHITECTURE)?
1. INFRINGER OBTAINING THE BLUE PRINT , COPY AND CONSTRUCT EXACTLY
2. INFRINGER OBTAIN BLUE PRINT, MAKE MINOR ALTERATION AND CONSTRUCT
3. INFRINGER VISUAL, MEASURE AND CONSTRUCT
4. INFRINGER USE VISUAL, MEASURE , SKETCH/DRAW,MINOR ALTERATION AND
CONSTRUCT

CONSIDERATION
1. ORIGINALITY - WHETHER COPYING INVOLVES GENERAL NORM OF
CONSUMER EXPECTATIONS AND STANDARD DESIGN
2. IF DERIVATIVE WORK, HOW TO DETERMINE WHICH IS ORIGINAL AND WHICH
IS NOT
 PROTECTING YOUR TECHNICAL DRAWINGS

REFER SECTION 10 OF THE COPYRIGHT ACT 1987:

10. Qualification for protection

(1) Copyright shall subsist in every work eligible for copyright of which the
author or in the case of a work of joint authorship, any of the authors is, at the
time when the work is made, a qualified person.

(2) Copyright shall also subsist in every work which is eligible for copyright and
which—

a) being a literary, musical or artistic work or film or sound recording is first

published in Malaysia;
b) being a work of architecture is erected in Malaysia or being any other
artistic work is incorporated in a building located in Malaysia;
c) being a broadcast is transmitted from Malaysia.
 PROTECTING YOUR DESIGN OF THE BUILDING

REFER SECTION 13 OF THE COPYRIGHT ACT 1987:

Nature of copyright in literary, musical or artistic works, films
and sound recordings

(1) Copyright in a literary, musical or artistic work, a film, or a sound recording or

a derivative work shall be the exclusive right to control in Malaysia—

(a) the reproduction in any material form;

(aa) the communication to the public;
(b) the performance, showing or playing to the public;
(e) the distribution of copies to the public by sale or other transfer of ownership;
and
(f) the commercial rental to the public, of the whole work or a substantial part
thereof, either in its original or derivative form

Refer Section 17 (2) & 17(3) For works un published scenario.

DOES THE MALAYSIA COPY RIGHT ACT PROTECT WORKS OF
ARCHITECTURE?
REFER SECTION 14 OF THE COPYRIGHT ACT 1987:
14. Nature of copyright in works of architecture
Copyright in a work of architecture shall include
• the exclusive right to control the erection of any building
• which reproduces the whole or a substantial part of the work
• either in its original form or in any form recognizably derived
from the original:

 Provided that the copyright in any such work shall not

include
 the right to control the reconstruction or
 rehabilitation in the same style as the original, of a building
to which that copyright relates.
 COPYRIGHTS IN ARCHITECTURE INDUSTRY

Idea/ Concept The expression

Bee hive &
Protect
Housing under
Sec 13

VS
Protect
under
Sec 13

Protect
under
Sec 14
RIGHTS OF
THE
COPYRIGHT
OWNER

Prepared by:

Ar Ridha Razak
 WHO OWNS THE COPYRIGHT

1.The owner of copyright will generally be the Architect

as per COE 20 of Architect Rules unless:

(a) the architect is an employee (depending on the

employment contract)

(b) the architect has entered into an agreement with

terms to assign his right to the person who
commissions him.

(c ) mutual agreed copyright to be assign to Client.

 WHO OWNS THE COPY RIGHT OF THE DESIGN?

THE ORIGINAL ARCHITECT OWNS THE COPYRIGHT

COE RULE 20 Copyright in respect of works executed by the Professional Architect. Act
332.

Pursuant to section 14 ‘Nature of copyright in works of architecture’

of the Copyrights Act 1987,
• copyright in all documents and drawings prepared by the Architect,
• including any works executed from such documents and drawings, shall remain the
property of the Architect,
• unless otherwise transferred to the client upon such terms and consideration as may
be agreed between the Architect and the client.

Questions
1. Does the copyright remain with the Deceased Architect forever?
2. Is it transferred to the ACP (Partnership or Body Corporate) as the right for
providing the service belongs to the ACP?
3. Is it copyright transferable to deceased Architect inheritors?
4. Does the copyright be transferred to the client in the case of Sole prop being
removed ?
 WHO OWNS THE COPY RIGHT OF THE DESIGN?

ACP Condition Situation Who owns the Copy

right?
1 Sole proprietorship Architect Firm dissolved The Architect
deregister due
to incapable
2 Sole proprietorship Deceased Firm dissolved Deceased Architect
3 Sole proprietorship Deceased/ Qualified Heir Deceased Architect
Incapable take over
4 Partnership/BC/MDP Deceased/ Partner / Who owns copyright?
Incapable Director take • The architect who sign
over as PSP the agreement or
5 Partnership/BC/MDP Deceased/ Company wind • the PSP Or
Incapable up • The staff designer or
• the Company?
6 Partnership/BC/MDP Deceased/ Another ACP • base on share holding
Incapable take over work
According to Stanford Uni
Copyright research – the
person who hire ie the
company owns the copyright
 HOW LONG IS OUR ARCHITECTURAL WORK COPYRIGHT?
Copyright Protection for an architectural work created
UNITED USA Copyright Act 1976 – Amended 1990
STATES work made for hire on or after December 1, 1990,
• lasts for 95 years from the date of publication of the work or
• for 120 years from the date of creation of the work, whichever term is less
AUSTRALIA Australia Copyright Act 1968,
• 70 years from the end (i.e., after 31 December) of the year in which the architect died, or
• 70 years from the end of the year in which the work was first ‘published’ to the public.
UNITED UK Copyright Act 1911
KINGDOM • lifetime of the creator, and a further 70 years from the end of the year in which they died

VENEZUELA • copyright in his/her work protects the work for the life of the architect plus 60 years

CANADA Canada Copyright Act 1985

• copyright in his/her work protects the work for the life of the architect plus 50 years

JAPAN Copyright Act 1970

An architect’s copyright in his/her work protects the work for the life of the architect plus 50 years
PAKISTAN Copyright Ordinance, 1962 as amended by the Copyright (Amendment) Ordinance, 2000
An architect’s copyright in his/her work protects the work for the life of the architect plus 50 years
MALAYSIA Malaysia Copyright Act 1987
S17 copyright in any literary, musical or artistic work
• Shall subsist during life of the author and continue until the expiry of 50 years after his death.
S18 - Copyright in published editions
• subsist until the expiry of a period of 50 years computed from the beginning of the calendar year
next following the year in which the edition was first published.
 WHAT IS THE RIGHT OF A COPYRIGHT OWNER?

There are 3 rights of the Author:

1. Legal Right – to control and report

2. Economic Right- reproduce/ publish/communicate

3. Moral Right – to claim originality and alter

http://www.myipo.gov.my/en/copyright-basic/?lang=en%2F#copyright-owners
 LEGAL RIGHTS

Author legal rights

• exclusive right to control under the copyright law.

Take Action against Infringement

• to enforce their copyrighted works in cases for

infringement either by civil or criminal action.
• For criminal prosecution
Enforcement Division of Ministry of Domestic
Trade, Cooperative and
 Consumerism (MTDCC) or
Royal Malaysian Police.

http://www.myipo.gov.my/en/copyright-basic/?lang=en%2F#copyright-owners
 ECONOMIC RIGHTS

Author Economic rights of

• reproduction,
• communication to public,
• perform, showing or playing to the public,
• distribution and rights of commercial rental.

Economic rights to:

• be Protected by the Act for period stated.
• derive financial reward from the use of his works
by the user or commercial purposes.
• Give rights to others by way assignment, licensing
and testamentary disposition.

http://www.myipo.gov.my/en/copyright-basic/?lang=en%2F#copyright-owners
 MORAL RIGHTS

Paternity Rights
• Rights for author to claim the originality rights of his or
her creation.

Integrity Rights
Right for author to prevent any users from :
• distortion,
• mutilation or
• other modifications

of his or her works whereby the result of the modification

will significantly alter the original work and adversely
affect the author’s honor or reputation.
http://www.myipo.gov.my/en/copyright-basic/?lang=en%2F#copyright-owners
 THINGS TO
KNOW ON
ARCHITECTURAL
COPYRIGHT

Prepared by:

Ar Ridha Razak
 THINGS TO KNOW ABOUT ARCHITECTURAL COPY RIGHT

1. CONSTRUCTING A SUBSTANTIALLY SIMILAR BUILDING

WITHOUT PERMISSION MAY INFRINGE THE COPYRIGHT
OWNER'S RIGHTS.
• builders, architects and owners should not attempt to mimic other architectural
works in any form.

2. MAKING MINOR CHANGES TO PLANS DOES NOT NECESSARILY

AVOID COPYRIGHT INFRINGEMENT.
• "substantially similar“ - 2 Test
• Test 1: total look and feel
• Test 2 : "filtration" test - court filters out the unoriginal portions of the work
before examining the original/protectable portions of the work

3. INNOCENT INFRINGEMENT IS NOT A DEFENSE TO COPYRIGHT

INFRINGEMENT.
• a builder or owner may be liable for copyright infringement even if they did not
intentionally copy a protected architectural work.

http://mobile.nexsenpruet.com/insights/the-10-things-you-must-know-about-architectural-copyrights
 THINGS TO KNOW ABOUT ARCHITECTURAL COPY RIGHT

4. THE LACK OF A COPYRIGHT NOTICE MAY NOT PREVENT A

SUCCESSFUL SUIT FOR COPYRIGHT INFRINGEMENT
• builders, architects and owners should assume that all architectural works are
protected under copyright law regardless of whether the author includes a
copyright notice.

5. COPYRIGHT INFRINGEMENT CARRIES THE RISK OF ENHANCED

DAMAGES, ATTORNEYS' FEES, AND COURT COSTS.

6. ARCHITECTS AND DESIGNERS SHOULD TIMELY REGISTER

THEIR COPYRIGHTS TO OBTAIN ENHANCED REMEDIES
AGAINST POTENTIAL INFRINGERS.

7. IF YOU ARE GIVEN PLANS BY OTHERS, ENSURE THAT YOU

HAVE THE RIGHT TO CONSTRUCT, COPY AND/OR MODIFY
THOSE PLANS BEFORE USING THEM
http://mobile.nexsenpruet.com/insights/the-10-things-you-must-know-about-architectural-copyrights
 THINGS TO KNOW ABOUT ARCHITECTURAL COPY RIGHT

8. IF YOU ACCEPT PLANS FROM OTHERS, INSIST ON

INDEMNIFICATION FOR ANY COPYRIGHT INFRINGEMENT
ARISING FROM THOSE PLANS.

9. THE ORIGINAL ARCHITECT OR DESIGNER REMAINS THE

OWNER OF ANY COPYRIGHTS IN THE ARCHITECTURAL
DESIGN, EVEN IF THE CONTRACTOR OR OWNER PAID FOR THE
DESIGN

10. ENSURE THAT YOUR INSURANCE COVERS COPYRIGHT

INFRINGMENT.

http://mobile.nexsenpruet.com/insights/the-10-things-you-must-know-about-architectural-copyrights
 CAN ARCHITECT TRANSFER ITS LICENSE TO OTHERS?
Article : Architects and Intellectual
Property: Copyright of
Protecting Your Building Plans and
Designs the architect
Michael Bampton, Partner
(Owner)

Licensee

Exclusive Non-Exclusive Implied

License
Circumstances
• licensee to exercise the
rights granted to the
exclusion of all others
• enables the licensee to take
action against others
infringing copyright,
including the former
copyright owner
License License
Circumstances Circumstances
• allows the licensee to use regardless of client has paid an architect
the work in a way that is or not, a client has an implied licence to
negotiated between the use the architect's work for the purposes
copyright owner and the for which the client commissioned the
licensee preparation of the works by the
architect,
unless there is a written agreement, that
expressly states the contrary position
between the architect and the client.
SAMPLE CASES

Prepared by:

Ar Ridha Razak
 INFRINGEMENT OF DESIGN BY BUILDER

HELWETT CUSTOM DESIGN HOMES V. FRONTIER CUSTOM

BUILDERS
Case facts Judgement
In a Texas case, Federal district court in Houston awarded Hewlett
Custom Design Homes $1.3 million against Frontier
Frontier constructed Custom Builders.
and marketed 19
houses of Hewlett’s • That award was based on the profits Frontier earned
copyrighted designs. from the sale of the 19 houses.

• The court also ordered Frontier to destroy the

infringing materials in the firm’s possession.
 OWNER INFRINGE PREVIOUS ARCHITECT DESIGN
NOVA DESIGN V. GRACE HOTELS
Case facts
Plaintiff was an architect
who had designed a
Holiday Inn Express.
The owner and architect
had a falling out and the
owner hired another
architect to complete the
project.
The original architect sued
the owner and others for
copyright infringement.
Judgement
CLAIM FOR COPYRIGHT INFRINGEMENT DENIED
The design was based on prototype drawings prepared by Holiday Inn.
• The architect added an additional floor to the prototype.
• The court found, was not original and did not deserve copyright
protection.
• Other elements claimed to be original were the result of requests
from the owner accompanied by graphic designs.
COURT JUDGEMENT
• The court found there was no creative element to these features.
• Since the aspects of this architect’s designs that went beyond the
prototype were insufficiently original to qualify for copyright
protection, the claim for copyright infringement failed.
Problem with the architect’s claim was the failure to identify what
was original in the drawings and thus protectable under copyright
law.
 PREVIOUS ARCHITECT ALLEGE BUILDER/ARCHITECT
INFRINGING HIS DESIGN
ZALEWSKI V. CICERO BUILDERS
Case facts Judgement
Architect sued for copyright CLAIM FOR COPYRIGHT INFRINGEMENT DENIED
infringement, asserting he had
created and licensed various The court conducted a lengthy examination of the design and
designs for colonial homes to explained why most of the elements deserved no copyright
two construction companies, but protection.
the designs were infringed upon • many of the similarities between the plans are a function of
when contractors used them consumer expectations and standard house design generally.
after the license expired.
• plaintiff makes no attempt to distinguish those aspects of his
The Architect alleged the designs that were original to him from those dictated by the
defendants, using other form in which he worked.”
architects to create infringing
designs, had copied the overall COURT JUDGEMENT
size, shape, and silhouette of his • Although the plaintiff had undoubtedly spent many hours on
designs, as well as the placement his designs, as long as the plaintiff adhered to a pre-existing
of rooms, windows, doors, style, his original contribution was “slight—his copyright was
closets, stairs, and other thin.”
architectural features.
• The court thus set a high standard for proving such a
copyright infringement case.
 ARCHITECT SUED FOR INFRINGING STUDENT DESIGN
SHINE V. CHILDS

Case facts Judgement

IN 2004, Courts Comments

A graduate of Yale’s Master of 1. The twisting, undulating shape of the Freedom

Architecture sued David Childs, a
high-profile architect and
partner at Skidmore, Owings, &
Merrill.
The dispute was over Childs’
design for One World Trade
Center, then-dubbed the
Freedom Tower.
Tower was similar enough to Shine’s design to
suggest infringement.
2. More importantly, it didn’t matter that Shine
hadn’t developed a technical, structural scheme
for the Olympic Tower.
Even conceptual renderings can be protected under
copyright law.

Thomas Shine, the former A court’s ruling, in other words, is based on whether
student, claimed that Childs had it recognizes originality or not. It’s murky territory.
ripped off Shine’s Olympic Tower
design, which he’d submitted as Both Party Withdrew Claims
a studio project.
 INFRINGEMENT OF VEHICLE DESIGN

MALAYSIA COPYRIGHT INFRINGEMENT CASE : HONDA GIKEN KOGYO KABUSHIKI KAISHA V

ALLIED PACIFIC MOTOR (M) SDN BHD & ANOR [2005] 3 MLJ 30

Case facts Judgement

famous Japanese marque for bikes and
cars applied for an interlocutory
injunction against a local manufacturer
of a motorcycles in respect of two
models manufactured by them.
CLAIM 1
The first model was the COMEL MANJA
JMP 125, to which Honda claimed had
infringed its industrial design in respect
of various designs filed embodying its
HONDA WAVE 125 model motorcycle.
CLAIM 2
for manufacturing the COMEL MANJA
JMP-100 (GS-5) motorcycle, for copyright
infringement, on the grounds that the
manufacture of the same was infringing
the copyright of the design drawings
embodying the plaintiff’s HONDA EX-5
DREAM motorcycle.
COURT FINDINGS
• The court concluded that there were serious questions to be tried.
• In considering the balance of convenience, the court stated that the
grant of an injunction pending final disposal of the suit would have a
negative and perhaps irreversible impact on the defendants, as an
injunction would affect third parties and the government.
• that damages for loss of profits would be an adequate remedy for
Honda should its claims succeed at trial.
• observed that Honda had not denied the defendants' assertion that
JMP 125 was based on the design of the defendants' sister company
and, despite the JMP 125, the EX5 remains Honda's best-selling
motorcycle in that category.
JUDGEMENT : COURT DISMISSING HONDA'S APPLICATION,
INFRIENGEMENT OF INDUSTRIAL DESIGN
 ACUMEN MARKETING VS PUTRAJAYA HOLDING
D5(IP)-22-404-2005

Case facts Judgement

Putrajaya Corporation (PJC) is the local authority incorporated to develop,
administer and manage the Federal Territory of Putrajaya (Putrajaya).

PJH awarded architectural consultancy services for road landscape works at

Precinct 2, Putrajaya to a company known as Sabit Acla Sdn Bhd.

Acumen in collaboration with Sabit Acla presented the designs known as the
“Tepak Sireh”, “Keronsang” and the “Hairpin” designs (N&B streetlamps) to
PJC and PJH. The fact that Acumen designed the concept as a separate entity
was not known to PJH until they were subsequently informed of the same by
Sabit Acla. The N&B streetlamp designs were approved by PJH and PJC.

The proposed technical specifications for the N&B streetlamps presented by

Acumen included DW Windsor’s patented Diamond Optic luminaire and its
proprietary lanterns, but insofar as PJH is concerned, they were not aware of
DW Windsor’s connection in the N&B streetlamps.

The design, Vide Malaysian industrial design registration No. MY 01- 00304,
the industrial design of the N&B streetlamps (for the poles as well as the
lantern) was registered in the name of Advance Industries on 14.6.2001 .
 ACUMEN MARKETING VS PUTRAJAYA HOLDING
D5(IP)-22-404-2005

Case facts High Court Judgement

Acumen was awarded a direct contract for the project of installing the ALASAN PENGHAKIMAN OLEH YANG ARIF
street lighting poles and its accessories at Road 6 and Precinct 2 West, HAKIM DATO’ TENGKU MAIMUN BINTI
Precinct 2 Putrajaya. TUAN MAT

Looking at the evidence in totality, I find

The infringing acts of the defendants complained of consist of the that the plaintiffs have failed to establish
installation of mock up streetlamps in March 2002 in the compound of their case. The rights in the industrial
PJH modeled on the industrial design in the N&B streetlamps and the design of the N&B streetlamps which
installation of streetlamps substantially similar to the N&B streetlamps includes DW Windsor’s Diamond Optic
at Precinct 2 East, Precincts 3, 4, 5, 6 and 18 Putrajaya without the reflector system had been vested in PJH.
prior consent or permission of the plaintiffs. The plaintiffs’ claim against all the
defendants is dismissed with costs.
The defence of PJH is that pursuant to the express term of the contract
entered into between Acumen and PJH, all intellectual property rights Given my finding that the rights in the
of the drawings, design and products used in the project including the industrial design vests in PJH, it follows
design of the N&B streetlamps belong absolutely to PJH as per their that PJH is entitled to have the same
contract. assigned to it. The counterclaim is allowed
as prayed with costs and with a
PJH counterclaim Acumen for, a declaration that Acumen holds the consequential order that Acumen’s
proprietary rights over the industrial designs on trust for PJH and for Industrial Design Registration MY 01-
an order that Acumen deliver the said rights by re-assigning all the 00304 be declared null and void and
rights in the aforesaid industrial designs to PJH. unenforceable and be cancelled.
 ENHANCED
PROTECTION TO
YOUR WORK
OWNERSHIP

Prepared by:

Ar Ridha Razak
 VISIT MYIPO WEBSITE
http://www.myipo.gov.my
 BEING PRO ACTIVE
You can strengthen your work ownership through apply at MYIPO

1. Voluntary Notification of Copyright ( Copyright Act 1987)

 protection given to authors, copyright owner and performer of their copyright work /
performances as prescribe under Copyright Act 1987.
 PROTECTION LIFETIME + 50 YEARS

2. Applying for Industry Design ( Industrial Design 1996)

 ID means features of shape, configuration, pattern or ornament applied to an article by any
industrial process which in the finished article appeal to the eye and are judged by the eyes.
 FILING INDUSTRIAL DESIGN
 PROTECTON 5 + 25 YEARS

3. Patent your Design –(Patent Act 1983)

 For an invention, which is a product or a process that provides, in general, a new way of doing something, or
offers a new technical solution to a problem.
 PROTECTION 20 YEARS

4. TRADEMARK (TRADEMARK ACT 1976)

 Trade mark is a sign which distinguishes the goods and services of one trader from those of another. A mark
includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination of
these.
 valid for 10 years from the date of application and may be renewed every 10 years.
CONCLUSION

Prepared by:

Ar Ridha Razak
International Union of Architects Revised December 10-12, 1998 Second Edition
UIA Accord on Recommended International Standards of Professionalism in
Architectural Practice- Intellectual Property/Copyright

Definition:
• Intellectual property encompasses the three legal areas of patent, copyright, and trademark.
• It refers to the right (sometimes guaranteed under the law of some nation states) of designers,
inventors, authors, and producers, to their ideas, designs, inventions, works of authorship, and
the identification of sources of products and services.

Background:
• While many countries have some legal protection covering the architect's design, that protection
is often inadequate.
• It is not unusual for the architect to discuss ideas and concepts with a prospective client,
subsequently not be hired, and later find that the client has used the architect's ideas with no
recompense.
• The intellectual property of architects is, to some extent, protected by international regulations.
In the context of the GATS, this is the agreement on trade-related aspects of intellectual property
rights, including trade in counterfeit goods (TRIPS).
• The World Copyright Convention of September 16, 1955, is also of international significance. In
Europe, the Revised Berne Agreement of 1886 is binding in most states.

Policy:
That the national law of a UIA member section should entitle an architect to practice his/her
profession without detriment to his/her authority and responsibility, and to retain ownership of the
intellectual property and copyright of his/her work
 CONCLUSION
Copyright law protects the owner of
copyright works, whether it be a person or
a company, and moral rights protect the
creator of the copyright works.

For a particular work to be considered a

copyright work, it needs to feature more
than common or generic ideas - there
must be some individual or unique feature
to the works that requires protection.

Whilst copyright and moral rights are

designed to automatically protect the
interest of creators such as architects, it is
necessary for architects to be proactive in
order to maximise protection over their
works.
THE END

Prepared by:

Ar Ridha Razak