The adaptation right

As explained by Berners-Lee, in cases of inline linking, the inlined images, embedded objects, and background sounds are ‘by default to be considered part of the document.’194 _{In relation to frames,}

Berners-Lee explained that a user may easily be led to believe that the material within an embedded frame is a part of the frame provider’s content when it is actually not.195 The ostensible problem with this is the possible confusion that may arise as to the actual location of the relevant copyright materials. In Perfect 10, Inc. v Google, Inc.,196 the plaintiff argued that in displaying a copy of the images by framing them, the defendant’s inline links may lead viewers to assume that they are seeing a single Google webpage. The US Court of Appeals for the Ninth Circuit rejected the argument that such act could give rise to copyright liability since the copyright statute, ‘unlike the Trademark Act, does not protect a copyright holder against acts that cause consumer confusion.’197

The same goes with any copyright law, including the Malaysian CA 1987.

However, there could be issues as to whether liability may be imposed on the part of the inline or frame link providers for integrating third-party content into their webpage and, thus, infringing the adaptation right enjoyed by copyright owners. Section 13(1)(a) of the CA 1987 confers on copyright owners the exclusive right to control reproduction of copyright works ‘either in its original or derivative form’. ‘Derivative form’ is not defined in the Act. However, section 8 of the

194 _{Supra n 4.}

195 _Id. 196 _{Supra n 33.}

197 _{Perfect 10, Inc. v Amazon.com, Inc., supra n 33, at 1161.}

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CA 1987, which recognizes copyright protection for derivative works, offers examples of what may constitute derivative forms of copyright works. Section 8(1) of the CA 1987 prescribes two main categories of derivative works, which are ‘translations, adaptations, arrangements and other transformations of works eligible for copyright; and collections of works eligible for copyright, or compilation of mere data’.198 _{Adaptations and other transformations are reproductions of copyright}

works in their derivative form and hence activities over which the copyright owners have rights to control.

The question to be addressed is whether the incorporation of a third-party copyright work as part of one’s webpage amounts to reproduction of the copyright work in its derivative form. In other words, the issue to be considered is whether the act infringes the adaptation right of the copyright owner, that is, the right to reproduce the copyright work in derivative form under section 13(1)(a) of the CA 1987. This issue arose in Futuredontics, Inc. v Applied Anagramics, Inc.199 in which the defendant provided a link on its website which, when clicked, would frame the plaintiff’s website. The plaintiff claimed that the link created an unauthorized derivative work of its contents. The defendant moved a motion to dismiss the plaintiff’s claim for copyright infringement relying on the case of Lewis Galoob Toys, Inc. v Nintendo of America, Inc.200 Lewis Galoob Toys involved

the use of the ‘Game Genie’ to adjust the properties of Nintendo games.201 _{It was held that the}

visual displays produced by ‘Game Genie’ were not derivative works since it merely enhanced the

198 _{Section 3 of the CA 1987 defines ‘adaptation’ as including any of the following- (a) in relation to a literary work, a version of the work (whether} in its original language or a different language) in which it is converted into a dramatic work; (b) in relation to a dramatic work, a version of the work (whether in its original language or a different language) in which it is converted into a literary work; (c) in relation to a literary of dramatic work- (i) a translation of the work; (ii) a version of the work in which the story or action is conveyed wholly or mainly by means of pictures in a form suitable for reproduction in a book or in a newspaper, magazine or similar periodical; (d) in relation to a literary work in the form of a computer program, a version of the work, whether or not in the language, code or notation in which the work was originally expressed not being a reproduction of the work; (e) in relation to a musical work, an arrangement or transcription of the work; (f) in relation to a literary or artistic work, a version of the work (whether in its original language or a different language) in which it is converted into a film.’ 199 _{1998 U.S. Dist. LEXIS 2265; 45 USPQ 2d 2005 (C. D. Cal 1998).}

200 _{964 F. 2d 965 (9}th _{Cir. 1992), aff’d 16 F. 3d 1032 (9}th _{Cir. 1994).}

201 _{The ‘Game Genie’ is a device which permits the player to modify maximum three features of a Nintendo game. It can, for instance, ‘increase} the number of lives of the player's character, increase the speed at which the character moves, and allow the character to float above obstacles.’ It does not, however, change the data kept in the game cartridge and its effects are temporary. Id at 967.

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original work without making a copy of the original program’s elements, in particular, the visual displays did not ‘incorporate a portion of a copyrighted work in some concrete or permanent form’.202 _{Besides, the defendant’s ‘Game Genie’ ‘could not duplicate or recast a Nintendo game’s}

output.’203

Based on the ground that Lewis Galoob Toys could be distinguished from the case before the court, the court in Futuredontics dismissed the defendant’s motion. The court opined that Lewis Galoob

Toys did not preclude the plaintiff from showing that the defendant’s webpage integrated the

plaintiff’s webpage in ‘some concrete or permanent form’ or that the defendant’s frame links ‘duplicates or recasts’ the plaintiff’s webpage. Although the plaintiff’s claim of copyright infringement by reason of the defendant’s framing was not dismissed, the court did not grant the preliminary injunction to restrain the defendant from doing so because the plaintiff had not established that the defendant’s framing did produce a derivative work.204

The case of Futuredontics shows the possibility of framing resulting in the creation of derivative works, which tantamounts to copyright infringement. However, to be derivative works, a substantial part or the whole of the copyright work must be reproduced. As the court rightly pointed out In Perfect 10, Inc. v Amazon.com, Inc.,205 ‘the claimant must be able to claim infringement of its reproduction right in order to claim infringement of its right to prepare derivative works.’ As was held in the case, the inline link provider did not commit any direct infringement of the copyright owners’ reproduction or displaying to the public rights since the link provider did not store any copy of the copyright works on its own website. If there is no reproduction made on the

202 _{Id at 968.}

203 _Ibid.

204 _{The plaintiffs appealed against the district court’s denial of a preliminary injunction but the US Court of Appeals for the Ninth Circuit affirmed} the district court’s denial because the latter did not abuse its discretion in doing so. See Futuredontics, Inc. v Applied Anagramics, Inc. 1998 US. App. LEXIS 17012.

205 _{Supra n 33 at 1161.}

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