Copyright Question 1:

I am a local batik artist and have been doing this since 2004. Over the years, through trial and error I have developed my own style in doing my batik painting. I was featured by many local newspapers and magazines as well. I am quite established in batik field.

Lately I discovered my ex-employee who left my company a couple of months back posted her own batik painting in Facebook and her style was very much similar to mine. She was learning and following me with my own personal assistance for years and I generously taught her everything I know.

I have forwarded those photos of my ex-employee’s batik paintings to many people around me. All of them got a wrong impression and thought that it was my painting as the style she used to produce the batik was very much similar to mine.

Please let me have your advice as to how to deal with this and whether I have any copyright protection although I did not formerly register them and whether I have a legal cause of action against my ex-employee.

From,

Shocking Artist

Answer:

Dear Shocking Artist,

If your employee has entered into a contract with you whereby you have informed your employee (either orally or in writing) that he or she cannot use the same style or technique of painting when they leave your employment, then the act of using the same style or technique by your ex-employee will be a breach of contract. You can write a legal letter to them to prompt them to cease their unlawful activities and if the letter is not heeded, then you can take an action in Court for breach of contract.

Also, if the manner of producing your style of painting has been kept as a “secret” within your business and your employee has been informed, either verbally or in writing, that the manner of producing the style is a “secret” and is intended to be kept as such, then you may be able to sue your ex-employee for disclosing the “trade secret”.

Trade secrets are confidential information in a business which serves to give the business owner a competitive edge over his or her competitors and the information has been kept confidential within a few individuals only. Some examples of trade secrets are recipes (KFC’s batter for fried chicken is a trade secret), formulas for beverages (Coca Cola’s formula is a trade secret), manufacturing techniques, marketing strategies, list of clients/customers and list of suppliers/service providers.

Now, in your situation, if the manner of producing your special style of painting batik has been kept confidential and you have taken all the measures possible to keep the manner confidential, then the manner of producing your special style of painting batik will qualify as a “trade secret” in Court. However, if no effort has been made to keep the manner of painting confidential; the painting is done in public or shown to the public, the manner is discussed in exhibitions or explained to your clients/customers or suppliers and all of your employees were not informed of the confidentiality of the information, then the manner of painting will not be accepted as a “trade secret”.

Merely calling information “trade secret” does not make it a trade secret. Courts will consider all the evidence surrounding the information and see whether the information has been treated as a secret by the business owner.  As mentioned above, the formula of Coca-Cola is a trade secret and the Coca-Cola company has taken extreme measures to keep the information confidential – the formula is kept locked in a bank vault in Atlanta, U.S. and the vault can only be opened by a resolution of the Coca-Cola Company’s board of directors.

What if you have not kept the manner of painting as a secret and you have not entered into a contract with your employee restricting him to disclose or use the style and technique of painting? Can you still take action against your ex-employee for stealing the technique?

Well, there is another possibility. You state that you have sent your ex-employee’s batik paintings to other people and they have the impression that the batik paintings are similar to yours. If you have created a name in the industry for creating such paintings, then you have reputation and goodwill which your ex-employee is riding on. You may have an action in Court against your ex-employee for passing off. To pass off one’s product as if it comes from a different source is against the law and if the public is mislead or misrepresented by your ex-employee’s production of batik paintings in your style, then you will be able to stop their activities with a Court order.

What if you have not built up a reputation and there is no misrepresentation? In such a situation, an action under passing off will be weak.

What if the information has not been kept as a secret, there is no written or verbal contract between you and your ex-employee and your ex-employee has merely copied your “style” of painting and not the actual elements in the painting (e.g., the same flowers, leaves and branches have been copied and placed in the exact location as that placed in your painting)? In such a situation, there is nothing you can do about this “stealing of style/technique of painting”.

To copy someone’s idea or style is not an unlawful act. Take for instance an artist who copies Van Gogh’s very distinctive style of painting but does not copy any painting by Van Gogh. The artist has not infringed any copyright owned by Van Gogh. No one can own a particular style of painting, regardless of whether it is batik or oil painting.

In the event that you have created a new brush which enables you to produce that special style of painting batik, then the new brush can be protected by way of “industrial design” protection or “patent” protection. Industrial design protection is obtained by registering the design of your brush with the Malaysian Intellectual Property Corporation (MyIPO). With the registration of your brush design, you can have a 15 year monopoly over the design in Malaysia. Anyone found to be using the same brush design without your permission can be brought to Court for an injunction action (action to stop them from using the design).

Patent protection is possible for your brush or machinery that produces your special style of painting if the brush or machinery is new, inventive and has a function that you wish to protect. Patents are also registered with MyIPO and a granted Patent provides the patent owner 20 years of monopoly to exploit the new brush/machinery.

Shocking Artist, you have raised a question which has a myriad of issues. I hope the above has enlightened you somewhat with regards to what can be done about the copying by your ex-employee. Do be aware that the above advice is based on the limited information provided and that no action should be taken based on the information provided without first securing professional legal advice.