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ARE FREE PHOTOS ON THE INTERNET REALLY FOR FREE?

Updated: May 26



During the lockdown period of the Movement Control Order, we have seen many business owners worked extra hard to digitalize and move their businesses online instead of waving their white flag before the COVID-19 crisis.


The online sale and delivery of home cooked food, fresh vegetables, pastries have mushroomed all over the social media. While such entrepreneurial spirit is commendable, some may have unknowingly violated the laws of copyright.


For instance, Kopee decided to hustle for a side business of selling his home cooked chicken rendang by posting on Facebook. While brainstorming on how to write his Facebook post, he found a mouth-watering picture of chicken rendang posted by another Facebook user, Cat. Without asking for Cat’s consent, Kopee took the convenience of “borrowing” Cat’s photo to depict his own chicken rendang.


Few days later, Cat found out that her photo appeared on Kopee’s trending Facebook post and she confronted Kopee.



It is very common in Cat’s case that her photo is not registered as copyright with the Controller of Copyright of Malaysia. But does it mean that her photo is not protected by Copyright Law?


The answer is……No! Of course her photo is still protected by the Copyright Act 1987 of Malaysia (Copyright Act)!


REGISTRATION OF COPYRIGHT IS NOT COMPULSORY

Unlike other types of intellectual property like trademark and patent, protection of copyright is automatic, and registration of copyright is on a voluntary basis.

The photograph taken by Cat is considered as “artistic work” pursuant to Sections 3 and 7(3) of the Copyright Act, and it is eligible for copyright protection as long as:-

  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 into material form.


DID KOPEE INFRINGE CAT’S COPYRIGHT?

In short, yes. Section 36(1) of Copyright Act provides that copyright is infringed by any person who, without the licence of the owner of the copyright, does an act which is controlled by the Copyright Act.


Section 13(1) of Copyright Act has provided that the copyright in Cat’s artistic work shall be the exclusive act to control the reproduction in any material form and the communication to the public, of the whole work or a substantial part thereof, in Malaysia.


Therefore, the moment Kopee copied Cat’s photo and posted on his Facebook reaching out to his customers, he has infringed Cat’s copyright pursuant to Section 36(1) and Section 13(1) of Copyright Act.


WHAT ARE THE LEGAL REMEDIES AVAILABLE TO CAT?

Pursuant to Section 37(1) of Copyright Act, infringement of copyright shall be actionable at the suit of the copyright owner, the court may grant the following types of relief:-

  1. An order for injunction;

  2. Damages;

  3. An account of profits;

  4. Statutory damages of not more than RM25,000.00 for each work, but not more than RM500,000.00 in the aggregate; or

  5. Any other order as the court deems fit.

Damages and account of profits aside, which are subject to assessments, Kopee may be liable to pay Cat up to RM25,000.00 of statutory damages for that piece of photo which he “borrowed”, if Cat succeeds in her copyright infringement suit. Indeed, the quantum of statutory damages is eventually at the discretion of the Court.


WHY REGISTER COPYRIGHT WHEN THE PROTECTION IS AUTOMATIC?

A certificate of copyright serves as prima facie proof of copyright ownership. As we can see from the conversation between Kopee and Cat, Cat was silenced when Kopee asked for her proof of ownership. As a matter of fact, this is the predicament faced by many copyright owners.


Certainly, without registration of copyright, Cat can still enforce their right in Court by providing sufficient circumstantial or documentary proof of ownership. But before that would involve appointing lawyers and going through the Court proceedings and meeting her burden of proof, which could be tedious and cost consuming.


Therefore, Copyright (Voluntary Notification) Regulations 2012 was introduced in Malaysia to enable the copyright owners depositing their works with the Controller of Copyright of Malaysia by way of voluntary notification. If the said notification of copyright is in order, a copyright certificate will be issued to the copyright owner upon request.


If Cat was holding a copyright certificate as a prima facie proof of ownership of her copyright, perhaps it was Kopee’s turn to be silenced.


Furthermore, the process of copyright registration with the Controller of Copyright in Malaysia is much simpler and straight forward if compared with trademark and patent registration. Please contact feel free to contact us if you require further information or our assistance on copyright registration.


WHAT ELSE CAN CAT DO TO PROTECT HER WORKS?

Other than seeking for legal recourse, Cat can certainly look into other practical approaches.


Firstly, Cat may add a water mark on her photos, making it difficult for others to copy. The water mark should contain her name or her company’s name, if necessary. For example, Cat may mark it as “Copyright Reserved © by Cat”


Secondly, Cat may lodge a complaint Copyright violation complaint with Facebook. Most of the social media platforms respect and protect intellectual property by “codifying” it into their community guidelines.

We have lodged numerous complaints previously with major platform like Facebook and Google and most of them were successful if sufficient documentary proof provided. Please feel free to contact us if you require our assistance on this.


FREE PHOTOS MAY NOT BE FREE AFTERALL

First of all, it is dangerous to simply download photos from Google images for commercial usage. Kopee may expose himself to higher risk of being sued for infringement.


After being confronted by Cat, Kopee is looking into photo bank websites which provide royalty free photos. But Kopee should be cautious that the “free photos” may not be free after all. Legally, the owner could still retain the copyright ownership by granting licence to use to the licensee without any charges, but subject to certain terms and conditions. Therefore, Kopee should look into to the licensing terms, particularly whether he is allowed to use the photos for commercial purposes.


Alternatively, Kopee may consider investing some time to take a few nice photographs of his chicken rendang. That would entitle him to copyright protection on his photographs by virtue of Section 36(1) and Section 13(1) of Copyright Act.

REGISTER YOUR COPYRIGHT IF IT WORTHS THE INVESTMENT

Even though copyright protection is automatically conferred by the law, it is highly advisable to register copyright for the works which are commercially viable. We would not know when we need our copyright proof of ownership to knock the infringer’s door. Call us today to protect your copyright!




Written by,

Lawrence Tan

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor (Non-Practising)

Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from the professionals.

Copyright reserved 2020 © IP Gennesis Sdn Bhd



© 2019 by IP Gennesis Sdn Bhd. 

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