The Malaysian case of Alustil Sdn Bhd v Vitally Sdn Bhd [2020] 2 CLJ 257 [HC] discusses the implications of industrial design regarding copyright infringement. The case talks about discussing and arguing a case of copyright infringement when the subject matter is a registered industrial design. Section 7(5) of the Copyright Act 1987 is applied here, where it is brought that an action based on an allegation of copyright infringement concerning a work that is also the subject of a design registered under the Industrial Designs Act 1996 cannot proceed to IP Court in Malaysia as a copyright infringement case. Judge Wong Chee Lin J dismissed the application as simultaneous protection under copyright and design law is not possible.

In this case, the plaintiff’s claim against the defendant alleges copyright infringement. The dispute arose when the plaintiff discovered that the defendant had copied, reproduced, and offered for sale one of the plaintiff’s key component products, known as the “shelf profile.” The basis of the plaintiff’s claim rests on having created two sets of technical drawings, which are artistic works eligible for copyright protection.

Following the plaintiff’s issuance of a demand letter, the defendant countered, arguing, among other points, that the plaintiff’s registered design did not meet the criteria for registration under the Industrial Designs Act 1996. Subsequently, the plaintiff initiated a civil lawsuit against the defendant.

The defendant then submitted an application seeking an order under Order 14A of the Rules of Court 2012. This was to address two specific legal questions concerning the interpretation of s 7(5) of the Copyright Act 1987 and to seek appropriate consequential orders based on that determination. The questions pertain to whether one can sue for copyright infringement when the dispute involves industrial design and whether Section 7(5) bars the plaintiff from claiming copyright for any work registered under the Industrial Designs Act 1996.

The case addressed two issues. The first was whether the plaintiff could claim copyright infringement as maintainable under Section 7(5) of the Copyright Act 1987, and the second was whether Section 7(5) of the Copyright Act 1987 could ban the plaintiff from claiming copyright over a registered industrial design.

Both issues pertain to copyright infringement brought on initially by the plaintiff.

The defendant filed a motion under Order 14A of the Rules of Court 2012 to resolve two specific legal issues concerning the interpretation of Section 7(5) of the Copyright Act 1987 after the plaintiff sued the defendant for breaching copyright.

The plaintiff argued that they held the copyright for the ‘Works’ and the defendant’s ‘infringing shelf profile’ constitutes a breach of the plaintiff’s copyright in the ‘Works’. The plaintiff also argued that the shape and configuration of the defendant’s ‘infringing shelf profile’ closely resembled or substantially replicated those of the ‘Works’, and the shape and configuration of the defendant’s ‘Works’ were identical or substantially similar to the plaintiff’s registered industrial design No MY14-00832-0101. The plaintiff also stated that the plaintiff’s Registered Design is a valid and subsisting registered industrial design.

On the other hand, the defendant argued that the plaintiff’s claim is twofold: firstly, that the defendant’s ‘infringing shelf profile’ breaches the plaintiff’s supposed copyright; secondly, that this profile is the same or very similar to the plaintiff’s Registered Design. According to the plaintiff’s statements, the work, the plaintiff, claims copyright over and sues for infringement is the same or substantially the same as the work registered as the plaintiff’s Registered Design. Therefore, according to Section 7(5) of the Copyright Act 1987, a lawsuit solely based on copyright infringement is invalid.

The judicial ruling in question was delivered by Justice Wong Chee Lin J, who succinctly declared: “The court has dismissed the plaintiff’s claim as it is not maintainable.” This ruling centres on the interpretation of statutory provisions under the relevant law.

Section 13B of the Copyright Act 1987 outlines the consequences regarding the exploitation of designs derived from artistic works. Notably, upon the plaintiff’s registration of its works as industrial designs, these works consequently fall outside the scope of Section 13 B’s provisions.

Furthermore, Section 7(5) of the Act stipulates that copyright protection does not subsist in any design registered under laws governing industrial designs. This provision underscores that industrial designs by the plaintiff cannot be classified as artistic works deserving of copyright protection.

Ultimately, the Court decided that the plaintiff’s claim failed without concurrent protection under copyright and design laws. Section 13B of the Copyright Act 1987 specifies the effects of exploiting designs derived from artistic works, which is inapplicable to the industrial design registration of the plaintiff’s works. This interpretation is reinforced by Section 7(5) of the Act, which supports the conclusion reached.

The plaintiff’s claim was dismissed with costs of RM10,000.00 (approximately USD2,300.00).

Let’s now look at Australia:

In the Australian High Court case Burge v Swarbrick (2007) 232 CLR 336, the Court upheld the appeal by the applicant, asserting that ‘the phrase ‘work of artistic craftsmanship’ is a composite to be construed as a whole’. This case involves Swarbrick, a naval architect, who designed a new class of yacht and hand-built a full-scale model of its hull and deck sections, referred to as a “plug”. This plug was the prototype for creating fibreglass moulds used to replicate the design, leading to the production and sale of several yachts. The appellants acquired a hull and deck moulding from a former employee of Swarbrick and planned to manufacture and sell these yachts. Swarbrick, the respondent and original plaintiff, argued that the plug hull and deck mouldings were works of artistic craftsmanship. He secured an injunction to prevent the appellants from copying his yacht design effectively.

The High Court determined that the yacht’s plug did not qualify as ‘a work of artistic craftsmanship’. The Court stated that the plug was primarily used for functional and practical concerns, such as increasing the yacht’s speed, rather than artistic or aesthetic ones. Consequently, since the plug was not deemed a work of artistic craftsmanship, neither the hull and deck moulds made from it nor the resulting hull and deck mouldings possessed this quality.

The High Court case adopted the analysis by Lord Simon in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd, which describes that a ‘work of artistic craftsmanship’ possesses a ‘special status’ in law due to its ‘genuine artistic quality’. Consequently, in the High Court’s judgment, whether a work has that quality depends on whether it is a work of craftsmanship whose artistic expression is sufficiently ‘unconstrained by functional considerations’.

Therefore, according to the Burge case ruling, designers have two alternatives for securing design rights: employ copyright law, which offers protection for 70 years after the creator’s death, or register a design, which provides protection for ten years.

However, copyright law does not cover designs utilized in industrial processes. This limitation is intended to avoid the potentially constraining effects of recognizing lengthy copyright protection for industrial designs. The limitation is partially balanced by an exception that gives copyright the protection to ‘a work of artistic craftsmanship.’

The Court stated in the case that:

It may be impossible, and certainly would be unwise, to attempt any exhaustive and fully predictive identification of what can and cannot amount to “a work of artistic craftsmanship”. However, determining whether a work is “a work of artistic craftsmanship” does not turn on assessing the beauty or aesthetic appeal of work or on assessing any harmony between its visual appeal and its utility. The determination turns on assessing the extent to which the particular work’s artistic expression, in its form, is unconstrained by functional considerations.

• Burge v Swarbrick (2007) 232 CLR 336

Therefore, the Court’s decision in the Burge case is unlikely to provide considerable reassurance to designers or their clients about designs generated in potentially confusing fields such as printing, weaving, and furniture manufacturing. As a result, designers or their clients who expect their designs to be exploited for mass production should seek advice on how to best safeguard their original design rights.

In either Alustil Sdn Bhd v Vitally Sdn Bhd or Burge v Swarbrick, the courts have confirmed that a copyright infringement and an issue regarding the design of industrial craftsmanship cannot be counted within the same scope. In Alustil Sdn Bhd v Vitally Sdn Bhd, the courts affirmed that ‘the plaintiff cannot maintain the present action which is premised upon a claim for copyright infringement’ due to the work being the subject matter of an industrial design registered in the name of the plaintiff, and that 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 industrial design infringement.

Whereas, the case of Burge v Swarbrick stated that ‘it does not follow, for the purposes of s 77(1), that a work cannot simultaneously be both an artistic work, such as a sculpture, and a ‘work of artistic craftsmanship”, and that determining whether a work is a ‘work of artistic craftsmanship’ is not based on its beauty, aesthetic appeal, or the harmony between its visual appeal and utility. Instead, it is based on determining how much of the artistic expression embedded is free by functional considerations.

As such, the two cases provide relative judgment, which provides a clearer picture of the law and a more accessible, more straightforward explanation of those cases that give rise to fewer ambiguities in the law.

The case of Alustil Sdn Bhd v Vitally Sdn Bhd [2020] 2 CLJ 257 [HC] examines the implications of industrial design on copyright infringement. It highlights that when a work is protected under a registered industrial design, pursuing a claim for copyright infringement under Section 7(5) of the Copyright Act 1987 is not feasible. Judge Wong Chee Lin J dismissed the application, underscoring that simultaneous copyright and design law protection is legally untenable. This case is later compared to the Australian High Court case of Burge v Swarbrick (2007) 232 CLR 336.