Court of Appeal Highlighted Two Elements in Establishing Infringement of Copyright

Case Review : (Appellate Jurisdiction) Honda Giken Kogyo Kabushiki Kaisha (Appellant) v MForce Bike Holdings Sdn. Bhd. & Malaysian Formula Bikes Sdn. Bhd. (Respondents)

Facts of the Case/Background of the Case

– The Appellant is a multinational corporation and one of the largest manufacturers of automobiles, motorcycles, internal combustion engines and spare parts for automobiles and motorcycles, also known as Honda Motor Co. Ltd.

– The First Respondent is a company incorporated in Malaysia that is involved in business of trading of motorcycles and motorcycle accessories whereby on the other hand the Second Respondent is a company incorporated in Malaysia dealing with the business of assembling and trading motorcycles.

Cause of Action

– The Appellant sued the Respondents in Kuala Lumpur High Court for infringement of copyright in the Appellant’s artistic works of its motorcycle known as “Honda EX-5” and “Honda EX-5 Dream”. The Appellant claimed that the artistic works infringed are firstly, the two-dimensional form drawings of both motorcycles and secondly, the three-dimensional form of both motorcycles.

– The Appellant then in its Statement of Claim sought for the following reliefs from the Honourable Court:-

1. An injunction to forthwith restrain the Respondents (then Defendants) from infringing or encouraging, procuring, causing, enabling, authorizing, assisting and/or permitting to infringe the Appellant (then Plaintiff) copyright in the artistic works.

2. An injunction to forthwith restrain the Respondents (then Defendants) from doing any of the following, encouraging, procuring, causing, enabling, authorizing, assisting and/or permitting to reproduce; manufacture, produce, import, assemble, supply, distribute, market, sell, exhibit, expose or offer for sale of the EX-5 motorcycle; importing into Malaysia any parts for the purposes of assembling, making or producing the motorcycle; converting the Appellant’s copyright which infringes such copyright or in any way howsoever.

3. An Order for the Respondents to deliver up to the Appellant all infringing motorcycle in the possession, custody, power or control for the destruction or disposal in the manner deemed fit by the Appellant.

4. An order for full discovery of all relevant documents, date, record or whatever information and delivery up of such documents to the Appellant.

5. An order for the publication of a full apology by the Respondents for their wrongful infringement.

6. Other damages, interests and costs.

– This case has went to full trial in 2016 in High Court of Kuala Lumpur whereby the learned trial judge decided in favour of the Respondents and dismissed the Appellant’s claim with costs. The learned trial judge decided that albeit copyright existed in the Appellant’s artistic works, however there was no infringement of the Appellant’s copyright in artistic works by the Respondents. – Dissatisfied with the decision of the learned trial judge, the Appellant filed an appeal.

Law Principles Highlighted by the Court of Appeal

– Main issue: Whether there is an infringement by the Respondents in the reproduction of the Appellant’s copyright in the artistic works or a substantial part thereof.

– Court of Appeal held that in order to establish infringement by reproduction of the Appellant’s artistic works or a substantial part thereof, the Appellant must prove on the balance of probabilities these two factors; firstly, there is a sufficient objective similarity between SYM E-Smart Motorcycle and the artistic works and secondly, there is a causal connection between the SYM E-Smart Motorcycle and the artistic works.

– The Court of Appeal is guided by the Federal Court in the case of Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] 1 All ER 700, the rule is “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…The next question is whether has the defendants copied the plaintiff’s work or is it an independent work of his own.”

– By looking into the evidence, the Court of Appeal upheld the learned trial judge’s decision that there is sufficient objective similarity between the products. Thus, the first element is fulfilled by the Appellant.  

– The next element is Causal Connection. The Court of Appeal referred to Ramly Ali JCA (as he then was) in the case of Elster Metering Limited, “As has been established in law, there must be a causal connection between the copyright work and the alleged infringing work; in other words the copyright work must be shown to be a cause sin qua non (an essential condition) of the infringing work. As clearly stated by Diplock LJ in Francis Day & Hunter, “if the existence of the copyright work has no causal connection with the production of the alleged infringing work (even though the latter be identical with the former) there is no infringement of copyright”.”

– In this case at hand, the Respondents admitted that the SYM E-Smart Motorcycle was created based on the Vietnamese model of Sanda Boss which was launched in 2001. The Respondents further submitted that due to the copyright protection in Malaysia under Copyright Act 1987 [Act 332], the Sanda Boss design did not infringe the artistic works as copyright protection in Malaysia does not operate extraterritorially. This argument is agreed by the learned trial judge in High Court. However, the Court of Appeal had a different view on this issue as in the judges’ minds, infringement of copyright under Act 332 covers both direct and indirect copying.

– To resolve this second element, the Court of Appeal approved and agreed with Siti Norma Yaakob J (as she then was) in Peko Wallsend Operations Ltd & Ors v Linatex Process Rubber Bhd And Another, “From these provisions, it is clear that direct copying of drawings or other forms or artistic works as defined by the Act, is an infringement and enforceable under the Act. Since the Act makes direct copying an infringement, it is only right and proper that indirect copying is also an infringement, as to conclude otherwise would go against the intention of the legislature in enacting the Act as it did.”

– The Court of Appeal further referred to Global Yellow Pages Ltd v Promedia Directories Pte Ltd [2016], “…So long as the plaintiff can show on a balance of probabilities that there is indirect copying of a substantial part of the online directory that is an original work, copyright infringement will arise. Copying, for purpose of copyright law, includes indirect copying the copying of a copy of an original is still a copy.” – The Court of Appeal ruled that Sanda Boss Motorcycle is a copy or an almost identical copy of the Appellant’s artistic works and the only possible conclusion is that the artistic works is the source from which the Sanda Boss Motorcycle was derived upon. Therefore, the Appellants have successfully proven that there is causal connection between the products.


Court of Appeal have come to a unanimous decision that there is merit in the Appellant’s appeal and the Appellant’s appeal is allowed.

In this case, we could learn that the two elements discussed above among others are the most important elements that will be considered by the Honourable Court. Although it depends on the probability of the facts of a case, any claimant shall ensure that they at least fulfill the elements in order to win the legal action in court. We also could take a lesson in this case of the importance in filing and registering your copyrights under the law. Not only it gives protection towards your own brand, it also gives you peace of mind that your brand is at least protected and in case there is someone out there that is infringing your IP, you know you can take action anytime as you are protected under the law.