Dunia Muzik WEA Sdn Bhd

- vs -

Koh

Judgment

CT Gunn J

1. The first and second plaintiffs are companies incorporated and existing under the laws of Malaysia and are engaged in, inter alia, making, producing and publishing musical works and sound recordings. The first plaintiff is the wholly-owned subsidiary company of the second plaintiff and is the owner of the following musical works entitled: (i) Tajam (ii) Bukan Kerana Nama (iii) Taligram (iv) Kenyataan (v) Apa Yang Dipandang (vi) Ketuk Pintu (vii) Mana Harummu (viii) Pulanglah Ke Pangkal Jalan (ix) Cubakau Fikirkan (x) Kelukaanku Keranamu (xi) Keterlanjuran Denganmu (xii) Hatiku Ragu Tanpa Kepastian (Xiii) Sikapmu Meragukanku (xiv) Perjalananku (xv) Cinta Yang Terbiar (xvi) Cinta Hanya Bayang Bayang (xvii) Mati Hidup Semula.

2. The first plaintiff had authorized the second plaintiff to record the above musical works in cassette form and to sell the same. The copyright in the musical works numbered (i) to (ix) above were acquired by the first plaintiff

   1. in respect of Tajam and Pulanglah Ke Pangkal Jalan from one Suhaime Roa

   2. in respect of Bukan Kerana Nama and Mana Harummu from one Mohd Bakri Johari, and

   3. in respect of the musical works entitled Taligram, Kenyataan, Apa Yang Dipandang, Ketuk Pintu, Cubakau Fikirkan from one Ramli Sarip.

3. The copyright in the musical works numbered (x) to (xvii) above were acquired by the first plaintiff

   1. in respect of Kelukaanku Keranamu from one Kesuma B Booty Jacobs;

   2. in respect of Keterlanjuran Denganmu and Sikapmu Meragukanku from one Abdul Mannan Ngah;

   3. in respect of Hatiku Ragu Tanpa Kepastian and Perjalananku from one Adnan Abu Hassan;

   4. in respect of Cinta Yang Terbiar from one Roslan Tajuddin @ S Shahlan;

   5. in respect of Cinta Hanya Bayang Bayang from one Azmi Hamzah;

   6. in respect of Mati Hidup Semula from one Jamal Ubaidullah @ Jamal Abdillah.

4. The first plaintiff had given the second plaintiff and no one else the exclusive right and licence to make and publish the above musical works as musical works and as sound recordings. Pursuant to the said licence the second plaintiff first made and published in May 1986 the said musical works as musical works and sound recordings in cassette form. Before the second plaintiff so published the said musical works and sound recordings in Malaysia they were not published by any one else in this country or elsewhere. The copyright in those musical works and sound recordings therefore vests in the plaintiffs and no one else and the plaintiffs have not authorised the defendant or any one else to reproduce and distribute the said musical works and sound recordings.

5. The plaintiffs’ cassettes containing their musical works and sound recordings have the following distinctive get-up:

   1. the photograph of the singer which appears prominently in the front;

   2. the trademark WEA appears on the front and on the spine or edge of the cassette;

   3. in the case of the cassette entitled Ramli Sarip: Bukan Kerana Nama also carries the plaintiffs’ distinctive sticker with a watermark.

6. The defendant Koh Tay Eng is the sole proprietor of Syarikat Oscar Records and Tapes. His principal place of business is at 30 Bagor Road, Petaling Garden, Kelang, Selangor, and his business is, inter alia, that of selling musical works and sound recordings in cassette and other forms. The plaintiffs have in the past sold to the defendant their musical works and sound recordings entitled Ramli Sarip: Bukan Kerana Nama and Jamal Abdillah: Mati Hidup Semula.

7. On 24 July 1986 the plaintiffs filed a writ of summons with a statement of claim against the defendant to pray for judgment for the following:

   1. An injunction to restrain the defendant, whether by himself, his servants or agents or any of them or otherwise howsoever from doing the following acts or any of them, that is to say:

      1. Infringing the plaintiffs’ copyright in the said musical works.

      2. Passing off the musical works not of the plaintiffs’ manufacture as and for that of the plaintiffs.

      3. Reproducing and/or disposing of unlawfully without the licence or consent of the plaintiffs, the plaintiffs’ said musical works in cassettes or any other material form.

      4. Causing, enabling or assisting others to reproduce and/or dispose of unlawfully without the licence or consent of the plaintiffs, the plaintiffs’ said musical works in cassette or any other material form.

      5. Converting to and for their own use and purpose the plaintiffs’ said musical works in whatsoever manner including reproducing copies thereof without the licence or consent of the plaintiffs for sale, rental or hire for public, private or domestic listening and/or for exhibiting and distributing for purposes of trade.

   2. An order for delivery up to the plaintiffs of all infringing copies of the said musical works in the form of musical cassettes or in other material form together with packaging, labels and jacket covers for use with such musical works, invoices, bills, documents, books, delivery orders and receipts as are in the defendant’s, his servants’ or agents’ possession, power, custody or control.

   3. An inquiry as to damages or at the plaintiffs’ option an account of profits and payment of all sums found due upon taking such inquiry or account with interest thereon.

   4. Costs.

8. In his statement of defence the defendant, inter alia, denied that the plaintiffs are the owners of the copyright of the musical works referred to in the statement of claim. But the defendant admitted para 9 of the statement of claim which averred that the defendant’s place of business is at 30 Bagor Road, Petaling Garden, Kelang, Selangor and at 37 Goh Hock Huat Road, Kelang, Selangor and carried on business of, inter alia, selling musical works and sound recordings in cassette forms. The defendant also denied infringing the plaintiffs’ copyright in the said musical works by selling to one Kassim Cha Tong one cassette entitled Bukan Kerana Nama containing infringing copies of the said musical works numbered (i) to (ix) above and one cassette entitled Mati Hidup Semula containing the said musical works numbered (x) to (xvii) above. The defendant further averred that the cassettes entitled Mati Hidup Semula and Suratan Atau Kebetulan were in fact purchased from the plaintiffs and therefore not infringing copies as alleged by the plaintiffs. The defendant also denied that he has been dealing in sound cassette recordings not belonging to the plaintiffs and averred that he as an authorised agent of the plaintiffs only purchased sound recordings from the plaintiffs and the cassettes found at his premises were all genuine WEA products.

9. According to one Kassim Cha Tong (PW1), a director of the International Federation of Phonogram Industries (‘IFPI’) (SEA) Sdn Bhd and deputy regional director of IFPI which advises on legal matters relating to copyrights, he looks after the music industry. He stated that on 15 July 1986 he went to the premises of Syarikat Oscar Records and Tapes at 37 Goh Hock Huat Road, Kelang. When he was in the shop, a lady whom he later found out was the wife of the proprietor, asked him what he wanted. He asked for a copy of Bukan Kerana Nama by Ramli Sarip (exh P1) and Mati Hidup Semula by Jamal Abdillah (exh P2). He also chose a third cassette namely, Magdalena by Freddie Aguilar (exh P3). He paid $24 for them and the lady gave him a receipt (exh P4). On 25 July 1986 at about 5.45pm PW1 accompanied one Gita Nair (PW2) to the said premises here PW2 served an Anton Piller order on the same lady from whom he had bought the cassettes. The lady requested that the said order be served on the proprietor. She made a telephone call and a gentleman called Koh Tay Eng whom he identified as the defendant came to the premises. Pursuant to service of the order five cassettes of Ramli Sarip’s Bukan Kerana Nama (exh P5A-E) and one cassette of Jamal Abdillah’s Mati Hidup Semula (exh P6) were recovered. He identified those cassettes as infringement of the plaintiffs’ cassettes. In the case of P1 and P5 there were no watermarks in the security stickers. On P2 and P6 there were no stickers but he was able to identify the infringement from the poor printing of the labels. Under cross-examination PW1 explained that by looking at P1 he could see that the word ‘Bukan’ is almost obliterated. Moreover, the face of the artist is darker. When this witness was shown four photographs (exh P8A-D) he identified them as the shop he visited on 15 July 1986 and 25 July 1986. He also explained that he did not make a police report after he had ascertained that the cassettes which he bought were infringements because he knew that the matter could be pursued in either the criminal or civil courts. For a civil suit the plaintiffs would have control of the proceedings whereas in a criminal case the police would have control of the case. The said Gita Nair (PW2), an advocate and solicitor, is a legal assistant in Shearn Delamore & Co, and she confirmed that on 25 July 1986 at about 5.45pm, she went to 37 Goh Hock Huat Road to serve an Anton Piller order. She told the court that the premises concerned was a corner shop selling cassettes and identified it as shown in the photographs marked exh P8A-D. She met a salesgirl who said that the proprietor was in another premises and contacted him by phone. About ten minutes later Koh Tay Eng whom she also identified arrived and the order was served on him. He allowed them to search the premises, and as he did not want the business in the shop to be interrupted he asked them to go to his other shop at 30 Bagor Road where PW2 made out a receipt (exh P 10) which was signed by her and the defendant in her presence.

10. The managing director of both plaintiffs, one Gunther Zitta (PW3), said that he had been in the music industry for about 25 years and was familiar with copyright matters in commerce. He told the court that in May 1986, he released an album in cassette form of Ramli Sarip and in the month of June he released the album of Jamal Abdillah. The first plaintiff was the holder of copyright of the cassettes. The first plaintiff had authorised the second plaintiff to duplicate and produce them. The sound recordings were made by them in Kuala Lumpur on quarter inch master tapes and they then mass-produced them for sale. The tapes were duplicated for them by EMI Tapes (M) Sdn Bhd. He said they never gave the defendant or anybody else permission to produce the tapes. The distinguishing feature is the security sticker on the spine of the cassettes. It is a special paper which cannot be removed and carries their printed logo as shown on their certificates of registration under the Trade Marks Act (exhs P14A and B). The plaintiffs were entitled to use the said trade mark (exh P14C).

11. The witness then said that the plaintiffs were the first to use the stickers as security. They were manufactured in the United States of America exclusively for their use. It is impossible to produce the stickers because of the technical features which cannot be seen without a verifier (exh P15) through which it can be seen that the colour on the sticker changes from purple to white. The witness then pointed out that in the original cassettes the logo is upright whereas on exh P1 one row is upright and the other is inverted. Moreover, the sticker on exh P1 is removable.

12. During cross-examination the witness stated that the in-lay card on exhs P1 and P2 were not made by them. He admitted that they had printed tens of thousands of cards which could not be identical, so that there area variations in colour. He agreed that without stickers it would be difficult to say whether a cassette was original or not and it is impossible to tell by colour alone. He confirmed that EMI were authorised to duplicate their tapes and admitted that about 50 stickers were lost from EMI. He then informed the court that stickers were only put on the cassettes of Ramli Sarip in May 1986 but he could not remember when the stickers were put on the cassettes of Jamal Abdillah. He confirmed that he was supplying the defendant with tapes of Ramli Sarip and Jamal Abdillah amongst others as shown on the invoices of the second plaintiff to the defendant (exh D16A-Z). The witness explained that the defendant would place his order and he would send the cassettes through salesmen the next day and stated that his customers could assume and rely that the cassettes supplied by them are originals. He denied that there was any possibility of interference with the cassettes by his staff or by others or that they had delivered counterfeits. He said that they would check what they received from EMI and they would also check the stickers received from USA. There was no need to check whether the stickers received were genuine or not. They have two colour tones, namely, light blue and magenta, and EMI put the stickers on to the in-lay cards. He admitted that EMI had at least once missed putting on the stickers and that the cassettes had left them without the stickers.

13. The fourth witness for the plaintiffs was one Wee Yeow Suan (PW4), the factory manager of EMI Tapes. He explained that the second plaintiff normally gave him a marker which is the original music and they would mass-produce them for the second plaintiff to distribute themselves. They would account for every copy produced. He said that he had experience to identify the cassettes to say whether they were produced by them. He could do so by examining the joining and identifying the smell of the tape, that is, the chemical smell. He would also examine the pressure pad and demonstrated to the court how it was done. He could also tell by the cue tone of the tape that is something which cannot be heard. He could also tell by the colour of the casing. Using all those criteria, he identified two cassettes marked exhs P12 and P13 as those which were manufactured by them. He was then shown exhs P1, P2, P5A-E and P6 and he confirmed that they were not manufactured by them. He pointed out that their joinings were not straight. He then smelt them and told the court that there was no chemical smell indicating that the tapes were different from theirs. He also pointed out that the plastic casing was lighter in colour compared to those of exhs P12 and P13. The witness then examined the pressure pad of exhs P1, P2, P5A-E and P6 and said that they all had similar pressure pads and told the court that they were not their regular-size pressure pads.

14. During cross-examination the witness admitted that he had no special qualifications but said that he had gained knowledge and experience through working. He explained that there could be variations in the joining because of manufacturing defects, but there could be no variation in the colour of the casings which are from one supplier.

15. The last witness for the plaintiff was one Ho Siew Choon (PW5), the managing director of Metro Engraver Sdn Bhd. He had graduated from the London College of Printing with a diploma and also holds a postgraduate award in graphic reproduction, i.e. colour separation. He worked in London in 1974 and came back in 1975 and has been working since then. He said that if he was shown some labels he could tell whether they were printed from the same source and at the same time. When he was shown exh P12 he said that the name of the printer was on the label, i.e. Culture Press. The title of P1 on the label was the same and the printer was also Culture Press. The contents of the labels on P1 and P12 were identical. The colour was also the same but the labels were not printed from the same source, i.e. the same original film. The witness then explained that he used an anchor detector to detect the angle of the screen. The angle of the screen in P12 is 45 degrees, but there are two angles in P1, namely, 15 degrees and 45 degrees respectively. The witness then examined exhs P5A-E and said that they all have the same angle of the screen, i.e. 15 degrees and 45 degrees. He said that the label of P12 was not printed from the same original form as P1 and P5A-E and that the labels on P1 and P5A-E could have been made from a film of P12. He then explained that the angle of the screen on P12 was set at 45 degrees and that in order to copy it they would have to alter the angle by 30 degrees. After the witness was shown exh P13 he said that the label had four colours. He used a magnifying glass to look at it and told the court that the angles are 45 degrees, 75 degrees, 15 degrees and 90 degrees respectively. When he was shown exhs P2 and P6 he said that the angles are 75 degrees, 45 degrees, 15 degrees and 90 degrees respectively. He said that exhs P2 and P6 were copied from P13 and not made from the original film. The witness then told the court that exh P12 has a security sticker. The colour is purple and there is a flourescent water mark. After looking at exhs P1 and P5A-E, he said that they also had stickers but without a water mark. He said that they were not reproductions of the sticker on P12 but looked like it. They were drawn to look like the sticker on P12.

16. Under cross-examination this witness confirmed that he could tell whether labels were printed from the same film. He also confirmed that there must be a variation of 30 degrees for a copy to be clear and that reproduction depended on many factors including the quality of the paper. He agreed that there could be colour variation even among originals and that there could be variation although they came from the same film. During re-examination the witness confirmed that the test for deciding whether they all came from the same film is the angle or screen test, and not a visual test.

17. Koh Tay Eng (DW1) was the first witness for the defence. He said that his office was at 37 Goh Hock Huat Road, Kelang, but he moved out of the premises in 1983 and he was not there in 1986. He had bought cassettes from the plaintiffs and prior to 1986 he has had more than five to six years business relationship with them. He said that he had bought different albums from other sources but he bought the two albums concerned solely from the plaintiffs, and produced some bills (exh D16A-Z). He then produced a document (exh D17) to show that he had bought 1,190 pieces of Jamal Abdillah’s album and 515 pieces of Ramli Sarip’s album. He told the court that he sometimes placed his orders with the plaintiffs through the phone and sometimes their salesmen would come and take his orders. When he placed his orders by phone the stocks were sent to him either by bus, taxi or one of their staff. If the goods were delivered by bus, they were thrown outside for them to collect. After delivery they would check the number of cassettes against the bills. They received more than 10,000 cassettes at one time. He said that he had shifted from Goh Hock Huat Road in 1983 and therefore did not agree with the statement of PW1 that he had bought the cassettes at 37, Goh Hock Huat Road on 15 July 1986. He also denied that the receipts marked exh P4 was issued by his shop and said that in 1983 they only issued receipts similar to those shown in exh D28. When he moved to Bagor Road he issued receipts similar to those shown in exh D29. The witness denied that on 25 July 1986 he saw a group of people from the plaintiffs. He then changed his evidence and said that when the plaintiff’s representatives arrived they telephoned him. On that day he was at 30 Bagor Road and went to meet the plaintiff’s representatives at the front of his shop at 25 Taiping Road where a woman gave him some documents. He then told the court that after the documents were served on him he did not see the plaintiff s representatives making a search. They were there for half an hour before leaving with him for Bagor Road where they also requested permission to look around. There they searched for 30 to 45 minutes and opened boxes, shelves and drawers. In fact they looked into every corner of the shop. Then the woman asked him to sign a piece of paper which she said was for her to take possession of something for examination. When he was shown a receipt marked exh P10 he said that he did sign a paper in his shop after the woman had told him that she got the tapes from the other side of the river. At first the witness said that he did not see the plaintiffs’ representatives take anything but then changed his evidence and said that he knew what tapes they had taken, namely, Ramli Sarip’s and Jamal Abdillah’s albums. He had those tapes in both the shops.

18. During cross-examination DW1 admitted that he was the sole proprietor of Syarikat Oscar Records & Tapes and he was the defendant in this case. He admitted that PW2 was the woman who came to his shop that day but denied that she had identified herself as a lawyer. He also identified PW1 as Kassim Cha Tong, and admitted that he himself was the director of Oscar Records & Tapes Sdn Bhd but denied that the company was on the first floor of 39A Goh Hock Huat Road which he said is the secretary’s office. When showed the photographs in exh P8, he said that 39A Goh Hock Huat Road was not next to it and claimed that after 1983 he had nothing to do with Goh Hock Huat Road. When put to him he denied that 25 Taiping Road was 37 Goh Hock Huat Road. He then said that although the shop in question was on three lots it faced Taiping Road. He admitted that the shop also had a road frontage with Melayu Road and that was where he met the plaintiffs’ representatives. He also admitted that he signed the receipt marked exh P10. To him the address was not important and he signed exh P10 because the plaintiffs’ representative said that they would return the tapes to him after examination.

19. The witness then claimed that exhs P1, P2, P5 and P6 were obtained from the plaintiffs but he admitted that he had blank cassettes for sale and that they carried his own trade mark. He also admitted that he had 20 to 30 song tapes which were taken away by officers from the Ministry of Commerce and Industry in August 1988, but claimed that they belonged to Rich’s Supermarket which were left in his shop for sale. When put to him he denied that he had made copies of tapes which he had bought from the plaintiffs and denied that exhs P1, P2, P5 and P6 were copies made by him or by his agents.

20. The defendant’s wife, Lee Guet Mooi (DW2), then gave evidence. She denied that she saw PW1 on 15 July 1986. Then she changed her evidence and said that she saw him that day and remembered what happened but claimed that it was impossible that PW1 had bought tapes from her because she did not conduct sales. Then she admitted that she did sell the tapes to PW1. She said that on 25 July 1986 she was in her house when she received a telephone call from her employee to say that WEA people had come to their retail shop at 25 Taiping Road. She informed her husband and then they went there in their van. Later someone who looked like PW1 came into their van and they went back to 30 Bagor Road where they searched everywhere but did not find anything. Then the manager of WEA and an Indian woman wanted her husband to sign some documents and to take away some tapes. She denied that the receipt (exh P4) was in her handwriting or that it was issued by her at any time.

21. After hearing and observing the witnesses for both parties, I found that all the witnesses for the plaintiffs were witnesses of truth but I found that DW1 and DW2 were shifty and mendacious witnesses. On the evidence adduced and accepted by me I found that the plaintiffs have proved on the balance of probabilities that on 15 July 1986 the defendant’s wife (DW2) did sell to Kassim Cha Tong (PW1) exhs P1, P2, and P3 and issued a receipt (exh P4) to him. On 25 July 1986 PW1 did go to the defendant’s premises as shown in exh P8 where PW2 served on the defendant (DW1) an Anton Piller order. Pursuant to service of that order five cassettes of Ramli Sarip’s Bukan Kerana Nama (exh P5A-E) and one cassette of Jamal Abdillah’s Mati Hidup Semula (exh P6) were recovered by them. The plaintiffs have also proved on the balance of probabilities that exhs P1, P2, P5A-E and P6 were not cassettes manufactured by the plaintiffs.

22. Mr. Nadarajah, counsel for the defendant, stated that there were what he called three limbs to the defence. He said that although exhs P1 and P2 were bought by PW1, yet PW1 was confused as to where he had bought the exhibits. He stated that 25 Taiping Road and 37 Goh Hock Huat Road were different places and PW1 was doubtful where P1 and P2 were purchased. Secondly, he stated that even if the tapes were taken from the defendant’s premises, he claimed that they were supplied by the plaintiffs and that according to PW3’s evidence it was possible that some tapes were stolen and sold as infringing copies. Thirdly, he contended that the defendant honestly believed that what he purchased from the plaintiffs were their original cassettes. He referred to the evidence of PW5 and stated that it was impossible for the defendant as a businessman to spot fakes or infringing copies. He also submitted that it was difficult for the defendant to have manufactured the infringing copies.

23. Dato Kandan, counsel for the plaintiffs, referred to the statement of agreed facts. He then referred to para 9 of the statement of claim and para 4 of the statement of defence which were filed more than two years ago and pointed out that in the pleadings the defendant had admitted that one of his places of business was at 37 Goh Hock Huat Road, Ketang, Selangor. He also referred to the photographs marked P8 and pointed out that both PW1 and DW1 knew which shop was referred to. Counsel then pointed out that PW2 also affirmed that she went to the same shop. He then referred to the fist marked exh P10 and pointed out that it was stated therein that the infringing cassettes were handed over by the defendant at 37 Goh Hock Huat Road, Kelang, Selangor on 25 July 1986. Moreover, the defendant had sworn affidavits (exhs P32–34) drafted by his own solicitors wherein it was stated that his address was 37 Goh Hock Huat Road. Counsel submitted that the defendant was estopped from denying that the cassettes in question were taken from his premises. In any case, he also submitted that it mattered not where the tapes were taken from so long as they were taken from the defendant. Counsel then referred to the defendant’s statement of defence and pointed out that according to it there was only one defence, namely, that all cassettes sold by him were genuine. He then referred to the evidence of PW4 and PW5 and pointed out that the plaintiffs have proved that exhs P1, P2, P5A-E and P6 were not genuine. He also pointed out that the plaintiffs’ genuine cassettes had stickers with water marks whereas the defendant’s infringing cassettes had stickers without water marks.

24. Having considered all the evidence and the submissions of both counsel, I was satisfied that there has been infringement of the plaintiffs’ copyright in the said musical works and that the defendant has been passing off those musical works not of the plaintiffs’ manufacture as those of the plaintiffs. As the defendant has been reproducing and/or disposing of unlawfully without the licence or consent of the plaintiffs, the plaintiffs’ said musical works in cassettes or has otherwise caused or assisted others to reproduce and/or dispose of unlawfully without the licence or consent of the plaintiffs, the plaintiffs’ said musical works in cassettes, there must necessarily be an injunction to restrain him whether by himself, his servants or agents from doing any of those acts. There must also be an order for delivery to the plaintiffs of all infringing copies of the said musical works in the form of cassettes or in other material form together with packaging, labels, invoices, bills, documents and books as are in the defendant’s possession, power, custody or control. I also ordered that there be an inquiry as to damages or at the plaintiffs’ option an account of profits and payment of all sums found due upon taking such inquiry or account with interest thereon, together with costs of this action.

Representations

VL Kandan for the plaintiffs.

K Nadarajah for then defendant.