Beyond the Mix: Navigating Copyright in Compilations

Kathreena Korotana explores the parameters of copyright protection for compilations under the Copyright Act 1987.

In Malaysia, copyright protection is granted automatically upon a work once certain statutory requirements under the Copyright Act 1987 (“CA 1987”) are fulfilled. The type of works that are eligible for copyright under the CA 1987 are literary works, musical works, artistic works, films, sound recordings, broadcasts and derivative works. This article will be focusing on the copyrightability of compilations.

What is a compilation?

A compilation is a work that has been created or formed based on a collection or combination of existing data or materials from other sources. For example, telephone directories and catalogues may be regarded as compilations depending on the source of their information. Section 3 of the CA 1987 defines literary works to include compilations.

What are the requirements for compilations to be eligible for copyright?

Under section 7(3) of the CA 1987, a literary, musical or artistic work shall be eligible for copyright only if:

1. sufficient effort has been expended to make the work original in character; and
2. the work has been written down, recorded or otherwise reduced to material form.

As regards compilations of mere data, section 8 of the CA 1987 provides that such compilations are entitled to copyright in so far as the selection and arrangement of their materials and data constitute intellectual creation. In other words, the arrangement and selection of materials and data used to create a compilation should be deemed original for it to be considered an intellectual creation.

In Kiwi Brand (M) Sdn Bhd v Multiview Enterprises Sdn Bhd [1998] 6 MLJ 38, which concerned the compilation of information contained in the plaintiff’s product label, it was decided by the High Court that a compilation of information is copyrightable even though the information is not original. However, for a compilation to be granted copyright, the work must originate from the author and not copied from another work by demonstrating that sufficient effort, skill and labour were spent in creating the work as required under section 7(3) of the CA 1987. According to the court, effort and hard work both go hand in hand to make the copyrighted works protectable. There is no hard and fast rule on what constitutes sufficient effort, skill and labour for a work to be considered original. It is a factual question to be determined by the court on a case-by-case basis.

Subsequently, the Court of Appeal in New Straits Times Press (M) Bhd & Anor v Admal Sdn Bhd [2013] 6 MLJ 405 acknowledged that while a work relating to the compilation of information is copyrightable, the mere compilation of information already available in the public sphere is not.

In this case, New Straits Times (“NST”) and Admal Sdn Bhd (“Admal”) were in negotiations to enter a joint venture to organise an English spelling competition. Admal presented a concept paper setting out rules and concepts for the spelling competition, which was later amended to incorporate NST’s inputs. The concept paper was named “NST Spell It Right”. However, the joint venture between both parties did not materialise. Subsequently, NST decided to collaborate with RHB Bhd (“RHB”) in running a spelling competition known as “RHB-NST Spell It Right”. Admal claimed that the concept behind “RHB-NST Spell It Right” incorporated features contained in “NST Spell It Right” and therefore amounted to copyright infringement. Admal initiated legal proceedings against NST and RHB claiming for copyright infringement of the concept paper.

At the first instance, the High Court held that the concept paper was entitled to copyright and therefore was infringed by NST and RHB. On appeal, the Court of Appeal reversed the High Court’s judgment and decided there was no copyright in the concept paper as the information contained therein is a mere compilation of information already available in the public domain, among other reasons. The court went on to hold that to satisfy the originality test in Kiwi Brand, Admal had to demonstrate which features in the concept paper were the result of its efforts, which it failed to do so.

The NST decision suggests that substantial effort and skill must be invested by an author compiling information which is not original or is widely available in the public domain in order to be entitled for copyright.

Singapore’s position

Given the dearth of Malaysian cases on this issue, it would be helpful to consider the position in Singapore in view of its proximity and the similarities of copyright laws between the jurisdictions.

In Global Yellow Pages Ltd v Promedia Directories Pte Ltd and anor matter [2017] SGCA 28, the plaintiff (“GYP”) commenced proceedings against the defendant (“Promedia”) for infringing its copyright in the Internet Yellow Pages, which is an online directory containing classified consumer and business listings, and various editions of its print directories. GYP’s claim was dismissed by the Singapore High Court. On appeal, the Court of Appeal observed that while a compilation of facts may be eligible for copyright, the compiler must have exercised sufficient creativity or intellectual effort in the selection or arrangement of the material to attract copyright protection. In other words, the courts will consider the end product of the work and the efforts applied in the creation of the work in determining the originality of the compilation. The Court of Appeal clarified that any resulting copyright will only protect the original expression in the form of the selection or arrangement of the material, not the idea, facts or data thereof. As such, it was held that copyright did not subsist in the listings arranged within each classification of GYP’s directories as the selection of the contents lacked creativity and instead, was a mere fact-discovery exercise.

To sum up, sufficient effort, labour and skills must have been invested into the arrangement and/or selection of data or materials to render such compilations original in character to be entitled to copyright. That said, whether sufficient effort has been expended is a question of fact, which will vary from case to case.

Kathreena is an Associate at Wong Jin Nee & Teo. Her practice predominantly focuses on brand protection and enforcement, franchise advisory and registration, as well as regulatory compliance work.