Outcome: The Federal Court found that there is no error in the finding of facts made by the learned judge where similarities ‘cannot be said to be substantial similarities that go to the root of the novel and the movie’. The Federal Court found that there was no justification for the Court of Appeal to displace the findings of the High Court and substitute its own, based on a party’s assertions in a statement of claim and the absence of a judicial appreciation of evidence adduced in court. The Federal Court allowed the appeal with cost, setting aside the Court of Appeal decision. The decision in the High Court was affirmed and reinstated.

Facts:

1. Three appellants were the defendants in the High Court. The first was the lead actor of the Movie ‘Bohsia: Jangan Pilih Jalan Hitam’, the second was the father of the lead actor who was the producer and the third was the distributor. The respondent is the plaintiff in the High Court, who was the author of the 1996 published novel entitled ‘Aku Bohsia’.
2. In the High Court, the respondent claimed that the appellants had infringed the copyright of his novel on the basis that several contents themes, plots and characters were taken without his consent for the production of the movie. The appellant denied the claims on the basis that their movies were not based on the novel, and there were many dissimilarities between the movie and the novel. The similarities in ideas were purely coincidental as it involves the prevailing social issues involving ‘bohsia’ girls.
3. The respondent sought to stop the distribution of the movie, damages and financial returns enjoyed by the appellants because of the alleged infringement. The appellants counterclaimed that the respondent’s defamatory articles published in his blog on 7 December 2014 and 16 November 2014 had tarnished their reputation and sought general and exemplary damages as well as injunction to restrain the respondent from making statements implying that they had copied his novel.
4. The High Court dismissed the respondent’s claim on copyright infringement and allowed the appellants’ counterclaim based on defamation. The learned judge, after evaluating all the evidence adduced and made a comparison of both works, found that the similarities alleged were not the result of copying as both works, i.e. the novel and the movie revolved around the common issues of ‘bohsia’ phenomenon and the issue of ‘mat rempit’ which were the common issues that existed even before the publication of the novel. The issues continued to be relevant across time. The learned judge ruled that the respondent had failed to establish the element of substantial similarities and the causal connection between the novel and the movie to enable the court to concur with the respondent’s conclusion of copyright infringement.
5. At the Court of Appeal, the respondent appealed on the decision of the copyright infringement. The Court of Appeal, however, reached to a contrary conclusion as opposed to the High Court’s. The Court of Appeal ruled that there were substantial similarities in both works which were not ‘merely coincidental’. The analogies which were too numerous and cumulatively could not be termed as ‘commonplace, unoriginal or consist of general ideas’. The movie was ruled to had mostly reproduced the novel.
6. Dissatisfied, the appellant appealed to the Federal Court. Leave was granted for the two questions of law posed, namely as follows:

a. Is publication itself sufficient satisfaction to the legal requirement of causal connection in order to succeed in a claim on infringement of copyright (question 1); and
b. In carrying out the test in Megnaway Enterprise Sdn Bhd v Soon Lian Hock (sole proprietor of the firm Performance Audio & Car Accessories Enterprise) [2009] 3 MLJ 525, is there a legal duty for the court to examine and evaluate both the distinct materials being the subject matter under the claim on infringement of copyright (question 2).

Decision:

1. In law, the owner of the copyrighted work has an exclusive right to control the reproduction of the whole or substantial part thereof in Malaysia. This was protected under section 36(1) of the Copyright Act 1987. Section 36(2) of the Copyright Act 1987 laid down the instances where copyright is said to be infringed. Based on well-settled authorities, the test for infringement that must be established by the copyright owner against the infringer are as follows:

   a. Sufficient degree of objective similarity between the two works; and
   b. Some causal connection between the copyrighted work and the alleged infringing work.

   The degree of objective similarity must be substantial. [16] and [17]

2. The determination of the elements as outlined in Francis Day, i.e. sufficient objective similarity and a causal connection between the two works is a question of fact, and the burden is on the plaintiff to establish those ingredients by evidence. Proof of both the above elements that give rise to an inference that the defendants had copied the plaintiff’s work is to be rebutted by the defendants. The burden then shifts to the defendants to show there was an independent creation of the movie. In action for an infringement of copyright, as in the present case, the court must first identify those features of the defendants’ movie that the plaintiff alleged to have been copied from his novel. The court undertakes a full comparison of the two works, noting the similarities and differences. This is to determine whether the particular similarities relied on by the plaintiff are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal or consist of general. The question as to whether the defendant has copied the plaintiff’s work can generally and effectively be answered merely by a comparison of the two works in respect of all essential or features. Here, a useful test of copying is that the similarities of the features, come so near to the original as to suggest that the features in the infringing work are the original to the mind of every person seeing it. Whether or not there has been an infringement must be a matter of degree, depending on the facts and circumstances of the case. As precisely said by Upjohn LJ in Francis Day, ‘this is a question of fact and nothing else which depends on the circumstances of each case’. [18]-[23]
3. The learned judge identified (15) alleged similarities gathered from the testimonies adduced by the respondents and his witness during the trial. Items (2), (7) and (10) were excluded because they were not pleaded in the statement of claim. Items 1(b-e), 4, 8, 9, 11, 12,13 and 14 were disregarded and excluded on the basis that they relate to features that both commonplace and general ideas. Similarities under items 1a, 3, 5, 6 and 15 were left to for comparison. The learned judge ruled that those similarities by themselves cannot be said to be substantial similarities that go to the root of the novel and the movie. [30]-[32]
4. The approach adopted by the learned judge in dealing with the matter is correct as it is in line with the established principles dealing with copyright infringement. The decision of the Court of Appeal in reversing and setting aside the findings of fact on the issue of similarities made by the learned judge based on the evaluation available during trial is just based on assertions of the respondents in his statement of claims. There is nowhere in the Court of Appeal’s judgment to indicate that the Court of Appeal had examined and evaluated the evidence available as adduced by both parties during trial. The issue of whether the appellant’s work amounts to a substantial reproduction of the respondent’s work depends on the facts and circumstances of the case. [33], [40] and [41]
5. The learned judge with sufficient reasons, after examining and evaluating all available evidence, and who had the visual advantage of seeing and hearing the witnesses, had made specific findings of facts and that findings were later, reversed and set aside by the Court of Appeal only on the basis of respondent’s assertions in the statement of claim. What is glaring in the judgment of the Court of Appeal is that it had failed to adopt the correct approach in deciding the matter without examining and evaluating the evidence in the case. The objective similarity between two works in question and its substantiality can only be determined by direct comparison between both works. The novel needs to be read in full, and the movie needs to be seen. The learned judge did this but not by the Court of Appeal. [42] and [43]
6. The learned judge had subjected that evidence to a fair and no less meticulous judicial appreciation of the entire evidence; both the oral testimonies of the witnesses as the considerable? Documentary evidence, inclusive of the exhibits of the two works in question. Nothing to be found that the findings and the conclusion arrived at by the learned judge, on the balance of probabilities, were wrong, to justify such findings and conclusion to be reversed and set aside by the Court of Appeal. [46]
7. With the above findings, the learned judge was correct in her conclusion that the similarities in this case ‘cannot be said to be substantial similarities that go to the root of the novel and the movie’. As stated earlier, without substantial objective similarity between the novel and the movie, the first requirement or element as outlined in Megnaway Enterprise Sdn Bhd, following the principle adopted by Sir Rymond Evershed MR in Purefoy Engineering Co Ltd has not been established by the plaintiff in the present case.