Dura-Mine Sdn Bhd v Elster Metering Ltd & Anor [2015] 3 MLJ 1

Federal Court (Putrajaya)

Copyright – Infringement of Copyright

1. The Appellant, Dura-Mine Sdn Bhd, was sued by the Respondents, Elster Metering Ltd (‘First Respondent’) and another company (‘Second Respondent’). The core dispute centered on the copyright infringement of six specific engineering drawings belonging to a rotational water meter known as the Kent PSM water meter (‘Kent meter’).
2. The Respondents initiated a legal action alleging that Dura-Mine had infringed their copyright by manufacturing, importing and/or offering for sale a similar product, the PD97 TRP water meter, which was substantially modeled on the Kent meter. Copyright ownership was claimed by the First Respondent through acquisition, while the Second Respondent asserted rights via an exclusive license covering Malaysia and three other countries.
3. The Appellant’s defence at trial was that its PD97 TRP meter possessed an original design and was manufactured by a Chinese company. However, the crucial point raised in the appeal challenged the validity of the Respondents’ Statutory Declaration (‘SD’), filed under section 42 of the Copyright Act 1987 (‘the Act’). The Appellant contended that the SD was fatally defective and could not raise prima facie evidence of copyright because it failed to annex the original drawings of the Kent meter, providing only modified versions instead.
4. Both the High Court and the Court of Appeal rejected the Appellant’s arguments. They definitively found that the Appellant had infringed the copyright, ruling that the PD97 TRP water meter was substantially copied from the Kent meter. Crucially, they held that the Appellant had failed to rebut the prima facie evidence of the Respondents’ valid copyright ownership, upholding the infringement finding.

1. Whether there must be strict compliance with the requirements of the section 42 of the Act to raise the statutory presumption of copyright ownership.
2. Whether sub-paragraph 42(1)(a)(iii) of the Act requires the claimant to annex the earliest or original drawings to the SD or merely a “true copy” of the work in which copyright subsisted.

(a) The Court ruled that section 42 of the Act provides a convenient means of proving copyright through an affidavit or SD, but it is not the exclusive or “be-all and end-all” method of proof.

(b) While an affidavit or SD must strictly comply with the requirements of sub-paragraphs 42(1)(a)(i)–(iii) to be admissible as prima facie (at first sight) evidence, failure to comply does not automatically defeat a copyright claim.

(c)  A claimant may adduce oral evidence or other evidence to prove their case. The Court held that oral evidence has a higher evidential value than an SD because it is subject to cross-examination. Therefore, it can be used to “augment, correct or even supplant” a defective section 42 affidavit or SD.

(2)  Whether sub-paragraph 42(1)(a)(iii) of the Act requires the claimant to annex the earliest or original drawings to the SD or merely a “true copy” of the work in which copyright subsisted.

(a) The Court clarified that sub-paragraph 42(1)(a)(iii) explicitly requires a “true copy” of the work to be annexed and there is no legal requirement to produce the “original” copy in the sense of the very first or earliest version created.

(b) The definition of a “true copy” in this context refers to a true and accurate depiction or representation of the work in which copyright currently subsists.

(c)  Within the meaning of section 42, the definition of the “original” is simply the work in which copyright resides at the time of the claim (which may be a modified or final version) and an accurate representation of that work fulfills the statutory requirement.

(d) Under sub-sections 7 and 10 of the Act, copyright protection arises automatically and extends to every work eligible for copyright, including each revision or modification of a drawing. Providing accurate copies of the final drawings, rather than the initial sketches, is sufficient to establish ownership because the final product is itself an artistic work in which copyright subsists.

1. For the purpose of establishing prima facie evidence under sub-paragraph 42(1)(a)(iii) of the Copyright Act 1987, a claimant must annex a true copy of the work in which copyright subsists. This does not mandate the production of the earliest or first-draft original document.
2. Section 42 of the Copyright Act is merely a means, but not the only means, of proving copyright.
3. The Court will adopt a pragmatic approach to allow oral evidence and other evidence to augment, correct or even supplant a defective statutory declaration or affidavit filed under section 42 .
4. Where a copyright owner owns the entire chain of works (original design and subsequent modifications), the works should be viewed as a whole and are considered original, defeating the argument that later versions are unoriginal due to insignificant alterations.