MALAYSIA: Thinking about using someone’s IP? Think again!
Copying and pasting in this technological age is as easy as pie. A few clicks of a button and boom…. someone else’s pictures, logo and videos are “yours”… Well not really. Exercise caution when copying and pasting. Using third party trademarks and copyrighted materials without consent of the owners can lead to expensive legal proceedings and paying damages, as it did in Bayland Sdn Bhd & Anor (hereinafter referred to as “the Plaintiff”) v Paulus De Kruijff (hereinafter referred to as “the Defendant”).
In this case, the Plaintiff is a property developer who is renowned for one of their projects, Verve Suites Mont’ Kiara (hereinafter referred to as “VSMK”) which goes to the heart of this dispute. The Plaintiff alleged that the Defendant used the Plaintiff’s registered trademark (hereinafter referred to as “the Plaintiff’s Mark”) as well as copyrightable materials including a promotional video (displaying the Plaintiff’s Mark), photos of the interior of VSMK units and VSMK site plans (hereinafter referred to as “the Plaintiff’s materials”), which were collectively used on the Defendant’s real estate website. The Plaintiff sued the Defendant for trade mark infringement, passing off, copyright infringement and unlawful interference of trade.
The Defendant argued that the Plaintiff had given implied consent to use the mark and materials since they were published on YouTube. The High Court disagreed.
Trade mark infringement
The Defendant was using a mark identical to the Plaintiff’s, where he was not the registered user, in the course of trade to promote the sale of VSMK units. This fell within the scope of the Plaintiff’s services and rendered the use likely to deceive or cause confusion. The High Court established that trade mark infringement had been made out.
Passing off
The Plaintiff contended that the Defendant’s piggy-backed off the goodwill and reputation of the Plaintiff’s brand which was cultivated over many years in Malaysia and acknowledged through many national and international awards. From adopting almost identical URLS to using the Plaintiff’s mark and materials in a similar layout within the real estate industry, the Court was satisfied that confusion or misrepresentation had been established. This resulted in the diversion of the general public from the Plaintiff’s website and promotional materials which caused damage to the Plaintiff’s goodwill.
Copyright infringement
The High Court deemed the Plaintiff’s materials as copyrightable. The Defendant attempted to argue that the materials did not belong to the Plaintiff, however, in an admission to the Counsel, the Court found that the Defendant was aware the materials did not belong to him but belong to the Plaintiff, and did in fact, lift and copy the Plaintiff’s material without prior consent.
The conduct of trade mark infringement, passing off and copyright infringement meant that the Defendant had also interfered with the Plaintiff’s trade and business.
No consent, no defence.
The Defendant’s implied consent defence fell short due to another admission of the Defendant’s revealing he was aware the video belonged to the Plaintiff, and he did not seek consent to use it. In conjunction with this, the Defendant embedded the Promotional Video rather than the link on his personal VSMK website, the court held these actions evidenced the Defendant deliberately used the video to obtain clients and potential clients to make sales. The court, therefore, rejected the argument of implied consent. The key takeaway of this case is to copy and paste with extreme caution or with consent. Using another person’s registered marks and materials can lead to legality issues. In cases like this, imitation is not a form of flattery and can get you into serious trouble.
The Court ordered the Defendant to pay MYR60,000.00 (approximately USD13,0000.00) in damages to the Plaintiff.