In principle the act of reverse engineering is considered as an act of infringement in Malaysia
In principle the act of reverse engineering is considered as an act of infringement in Malaysia. According to the case of Peko Wallsend Operations Ltd. v. Linatex Process Rubber Bhd, the defendants were alleged of copying the plaintiffs’ engineering drawings of pump parts and moulds by way of reverse engineering. The High Court of Malaya under the judgment of Siti Norma Yaakob J. held that that a direct copying of drawings or other forms of artistic work as defined by the Act (Malaysian Copyright Act), is an infringement and enforceable under the Act; since the Act makes direct copying an infringement, it is only right and proper that indirect copying (reverse engineering) is also an infringement. The decision in this case set out the illegality of the act of reserve engineering under the Malaysian Copyright Act.
In Peko’s case the reverse engineering act was conducted on a mechanical product as an artistic work in a commercial environment. The case did not relate the act of reverse engineering on job define under the literary work which include computer software. So, whether the case be determined differently if the infringing product was computer software.
Furthermore, one may ask of the clause on fair dealing can be lengthened to cover reverse engineering of a computer software if such actions are done for one of the objectives set out in the clause of fair dealing. It seems to be desirable that the provision of fair dealing under the Malaysian law is lengthened. An action of reverse engineering of computer software may be a protection if the act is finished on the excuse of non-profit personal research and thus able to depend on the provision of fair dealing. However, such defence has yet to be contested by the Malaysian court.
2.1.3 Relevant Legal Cases
In Megnaway Enterprise Sdn Bhd v Son Lian Hock 2009 3 MLJ 525, the court held that drawings of metal components are artistic works under the CA, 1987. The same position was taken by Justice Azhar Mohamed in Elster Metering Ltd & Anor v Damini Corp Sdn Bhd & Anor 2011 8 MLJ 253, where His Lordship finds that engineering drawings falls within artistic works under the same Act, which means among others, a graphic work. Accordingly, Drawings constitute an “artistic work”. In the Federal Court case of DuraMine Sdn Bhd v. Elster Metering Ltd & Anor 2015 1 CLJ, at paragraph 14, Jeffrey Tan FCJ held as follows: – “It is settled that technical drawings are artistic works eligible for copyright.”
For artistic work to be eligible for copyright, it must also comply with section 7(3) of the CA 1987, which states that: – “A literary, musical or artistic work shall not be eligible for copyright unless: (a) sufficient effort has been expended to make the work original in character; and (b) the work has been written down, recorded or otherwise reduced to material form.”
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.
2.2 Bt Engineering Sdn Bhd v. Team United Resources Sdn Bhd & Anor
Infringement over ownerships of copyright and patents
The plaintiff, BT Engineering Sdn Bhd is in the business of manufacturing and distributing automatic folding gates. The plaintiff alleged that the 1st defendant, Team United Resources Sdn Bhd and Oui Kee Lai who is the director of the 1 st defendant infringed the copyright and patent. The plaintiff also claim that the 2nd defendant had breached of confidentially.
1st Defendant offer the auto gate for sales, and into the agreement with the plaintiff for business regarding to automatic gates. The second defendant was initially acted as the plaintiff’s employee for consultation matters before he join the first defendant as its shareholder and director. The events unfolded when the plaintiff patented an improvised invention which aimed to rectify the problem of excessive weight carried by hinges of automatic gates. The essential features of the plaintiff’s patent were hinges with vertical and horizontal adjustments, its usage of rollers and the nature of the functions. However, when the defendants produced a design sharing similar characteristics with plaintiff’s one, the plaintiff alleged that the first defendant had infringed the patent and its copyrights over the design drawings and photographs. The plaintiff further stated that the second defendant, as its former employee, had breached confidentiality over the information regarding its manufacturing technique, discount structure and price.
The defendants, in turn, sought for an order to revoke the patent for its invalidity as it lack of inventiveness and novelty while further add on that the invention was not new. In challenging the novelty of the plaintiff’s patent, the second defendant claimed that the automatic folding gate had already existed and had been used in a housing project in 1995, prior to the plaintiff’s patent.
The issues for this case for determination before the court were whether the patent was valid and if it was valid, whether there was infringement on the defendants’ part. Besides, if copyright subsisted in the said drawings, whether the defendants infringed the said copyright. Lastly, whether the second defendant had breached the alleged confidential information of the plaintiff’s business.
2.2.3 Relevant Legal Cases
The test for infringement formulated by the House of Lords in the case of Rodi ; Wienenberger AG v Henry Showell Ltd 1969 12 RPC 367 has been approved in numerous cases in Malaysia. Particularly, this test has been adopted by the court in the case of Lim Choong Huat ; Ors v Syntlz Enterprise Sdn Bhd ; Ors 20101 CLJ 860. In summarizing the test, the court said as follows: ” In essence, the infringement tests require one to consider three factors, namely: (i) determine the “essential” integers (ii) once the “essential” integer is determined, one must then consider whether “each” and “every” “essential” integer is taken by the defendants; (iii) determine whether each of the defendants’ integers “works” the “same way” as claimed by the plaintiff in their Patent.” To determine whether a patent is infringed, the specification in particular its claims, must be construed purposively to determine its essential integers. As provided in the case of Codex Corporation v Racal-Milgo Limited 1983 RPC 369 at 380-382. If it then appears that the alleged infringement falls entirely within the words of some claim, no further question arises, then the Patent is infringed.
By construing purposively, the plaintiff’s patent claims monopoly over inter alia the following essential features, in relation to use in automatic gates are the use of rollers, hinges having mean for vertical and horizontal arrangement. The 2nd defendant sought to challenge the novelty of the plaintiff’s patent by claiming that automatic folding gate already existed prior to the plaintiff’s patent, as it was used in a housing project in Kuching in year 1995. However, the 2nd defendant failed to produce evidence that the gate used in housing project in Kuching was similar to the gate from plaintiff’s patent. The 2nd defendant also failed to show the evidence of prior art to show that the plaintiff’s patent lacked novelty.
Based on the above reasons, in my view, the plaintiff has proved on the balance of probabilities that the defendants had infringed its patent and copy right. Thus, the defendants’ counter claim to invalidate the plaintiff’s. Patent is dismissed with costs. Further, it was satisfied that the 2nd defendant has breached the plaintiff’s confidential information in relation to plaintiff’s list of sales agent and the pricing and costs of the plaintiff’s automatic folded gate. Thus, the plaintiff’s claim is allowed with a sum of costs. It was clear from the evidence that the defendant had access to the pricing information, discount structure and the manufacturing technique of the plaintiff. The plaintiff had demonstrated that the lists of the plaintiff’s sales agents, supplier and the pricing and costing information as confidential and it was evident that there was misuse of this information by the second defendant.
2.3 Coco v AN Clark (Engineers) Ltd
Breach of Confidential information
Coco, the plaintiff designed a moped engine and sought the co-operation of the defendants in its manufacture. After the plaintiff had disclosed to the defendants all the details of his design and proposals for its manufacture, the parties fell out and the defendants decided to manufacture their own engine. The plaintiff alleged that the defendants had deliberately broken with him with a view to using his design without compensation, and when the defendants brought out their own design which closely resembled the plaintiff’s, he brought a motion for an interlocutory injunction to restrain the defendants from misusing information communicated to them in confidence solely for the purposes of the joint venture. The defendants denied that any confidential information had been supplied to them, or used by them in their engine that of the three elements essential to a cause of action for breach of confidence, namely that the information was of a confidential nature, that it was communicated in circumstances importing an obligation of confidence and lastly that there was an unauthorized use of the information, only the second condition was satisfied by the plaintiff.
Coco was developing a motor-assisted cycle or moped. He entered into negotiations with AN Clark to develop the moped and provided information to A.N. Clark about his moped. After some time, A.N. Clark decided to not further develop the Coco moped and instead of it he began to develop his own moped.
Coco became suspicious that A.N. Clark was using some of his designs for the new moped. He therefore applied for an injunction to stop A.N. Clark making or sell any moped using his confidential information. When A.N. Clark just released its moped on the market, Coco had stopped developing his moped by that time.
On the issue of whether there was a breach of confidence, Megarry J began by observing that the equitable jurisdiction in cases of breach of confidence is ancient and was ‘reasserted’ by Prince Albert v Strange. As there was no contract between the parties, Megarry J had to consider ‘the pure equitable doctrine of confidence’ and asked ‘what are the essentials of the doctrine?
2.3.3 Relevant legal cases
Having set out these legal principles, Megarry J applied them to the facts of the case. He found there was plainly an obligation of confidence since ‘the whole object of the discussions was that the defendant company should manufacture a moped based on the plaintiff’s design, and the plaintiff imparted his information with that object alone’. The first and third requirements of the three-step test were not, however, satisfied. There was insufficient evidence about whether the information was confidential and whether there had been unauthorised use by the defendant.
Here it is important to remember that the evidence before the judge included a report of a consultant engineer pointing out the resemblances between the two engines. There had not, however, been any cross-examination of this expert and the defendants argued that the similarities in design were a function of common knowledge in the field. As such, Megarry J felt ‘in almost complete darkness as to the extent to which the ideas were common to the moped world’. The plaintiffs thus failed to show a strong prima facie case.
For the sake of completeness, it is also worth addressing the second issue in Coco—namely, whether to grant injunctive relief. As mentioned above, the lack of a strong prima facie case of breach of confidence pointed to the refusal of interlocutory relief. However, Megarry J also distinguished Terrapin Ltd v Builders’ Suppiy Co (Hayes) Ltd from the facts of this application. The important differences were that, in this motion, there had been an absence of cross-examination of witnesses; the plaintiff’s alleged fraud, which could not be determined on affidavit evidence; and the plaintiff’s engine was not in production.
Coco had failed to establish that the similarities between the two mopeds were achieved by the use of information provided by him to A.N. Clark. Besides, an injunction was not appropriate because evidence adduced for the case had not been properly tested. Coco also had not developed his own moped and therefore it did not need protection from the sale of the rival moped.
When claiming that confidential information is being misused it is important to be able to clearly identify the information and explain how it is being misused. A Court may not order an injunction to prevent the use of confidential information if the plaintiff is not themselves using that information.