A Tale of Two Telekung Trendsetters

By Sajjaratul Yaqeen

What is Copyright? Copyright is an Intellectual Property right which grants the creator of an original literary or artistic work exclusive rights in exploiting or commercialising their work.

What happens when one’s original work is similar to others? What happens when someone uses one’s original work without the owner’s consent? The answers for these can be witnessed in a Malaysian case between Siti Khadijah Apparel Sdn Bhd (“Plaintiff”) and Ariani Textiles Sdn Bhd (“Defendant”) whereby both are known for selling fashionable outfits for Muslim women.

Here, the Plaintiff commenced an action against the Defendant for copyright infringement of the “telekung” (a Muslim prayer outfit for women) produced by the Plaintiff on the ground that the Defendant’s telekung is copied from the design of the Plaintiff’s telekung. The Defendant, on the other hand, contended that as the telekung is generally available to the public, the design of any telekung is freely available and for this reason, the Plaintiff is not the owner of the copyright of its telekung and there is no copyright infringement. The four main issues which were considered by the High Court in deciding whether any copyright subsists in the telekung and whether the Defendant had infringed the said copyright are as follows:

Whether the design of the telekung constitutes “graphic work” or “work of craftsmanship”.
Whether the design of the telekung is eligible for copyright and if the Plaintiff owns any copyright for its telekung.
Whether copyright ceases to exist under Section 7(6) of the Copyright Act.
Whether the Defendant has infringed the Plaintiff’s copyright.

Whether the design of the telekung constitutes “graphic work” or “work of craftsmanship”

The court ruled that the Plaintiff did not put forth any evidence to prove that the telekung is a “work of craftsmanship” but was satisfied with the evidences adduced by the Plaintiff (i.e., the 2D drawings of the design of the telekung and the Plaintiff’s telekung) and held that the 2D drawings constitute a “graphic work” and the telekung itself is an artistic work.

Whether the design of the telekung is eligible for copyright and does the Plaintiff own any copyright for its telekung

The Defendant relies on section 7(2A) of the Copyright Act which provides that “copyright protection shall not extend to any idea, procedure, method of operation or mathematical concept as such” and submitted that the telekung is not eligible for copyright based on Section 7(2A) on the ground that it is purely functional (for prayers).

The Court in its judgment held that there is ample proof that the Plaintiff’s telekung not only enables its user to pray but also gives comfort and elegance to the user and therefore, the Plaintiff’s telekung is not purely functional. As such, it is not barred from copyright protection.

In addition, the Court also held that the Plaintiff owns the copyright of its telekung by fulfilling all the following conditions laid under the Copyright Act:

sufficient effort had been expended to make the Plaintiff’s telekung original in character [Section 7(3)(a) CA];
the Plaintiff’s telekung had been reduced to “material form” [Section 7(3)(b) CA];
the Plaintiff’s telekung is made by a “qualified person” i.e., a Malaysian citizen [Section 3(a) CA];
the Plaintiff’s telekung is first published in Malaysiae., made available to the public [Section 4(10)(a) CA] (in this case, the Plaintiff’s telekung was first sold in Malaysia);
the Plaintiff’s telekung is made in Malaysia [Section 10(3) CA];
the design of the Plaintiff’s telekung had not been registered as an industrial design under the Industrial Design Act.

Whether copyright has ceased under Section 7(6) of the Copyright Act

The Defendant argued that the copyright in the Plaintiff’s telekung has ceased as more than 50 pieces of telekung were reproduced by the Plaintiff. Briefly, Section 7(6) provides that copyright that is contained in any design which is capable to be registered as an industrial design but has not been registered will cease at the moment the design has been reproduced more than 50 times.

The Court held that for this Section to be applicable, the telekung needs to fall within the ambit of an “industrial design” [Section 3 of the Industrial Design Act] whereby the following three elements need to be fulfilled:

“features of shape, configuration, pattern or ornament” which in the finished article appeal to and are judged by the eye;
the Eye Appeal Features are “applied to an article by any industrial process or means”;
the Eye Appeal Features cannot include any of the matters stated in Section 3(a) or (b) of the Industrial Design Act.

The Court then decided that the Plaintiff’s telekung failed to fulfill the second element and therefore the Plaintiff’s telekung does not constitute an industrial design and the Defendant’s contention on this ground is unacceptable.

Whether the Defendant infringed the Plaintiff’s copyright

The Defendant will be at fault for infringing the Plaintiff’s copyright if the Plaintiff is able to prove the following three elements:

there is a SUFFICIENT OBJECTIVE SIMILARITY between the Plaintiff’s and the Defendant’s telekung;
there is a CAUSAL CONNECTION between the Plaintiff’s and the Defendant’s telekung;
the Defendant’s telekung had copied a SUBSTANTIAL PART of the Plaintiff’s telekung.

Once the first element is proven, then there is a rebuttable presumption that the Defendant has copied the Plaintiff’s telekung and the Defendant was unable to put forth any credible evidence to prove to the contrary. Moreover, the “Sufficient Objective Similarity” indicates that the Defendant’s telekung had directly copied an identifiable part of the Plaintiff’s telekung which indirectly constitutes a substantial part of the Plaintiff’s telekung.

Pursuant to the above, the Court is of the view that the Defendant’s lack of knowledge of the Plaintiff’s copyright is not a relevant defence and the Defendant is held liable for infringing the Plaintiff’s telekung.

Business owners need to be careful about the designs they use, as it may be a substantial copy of an existing design. Proper due diligence should be carried out to avoid legal battles and tarnishment of image.

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