Intellectual Property Law
| Date | 01 December 2001 |
| Author | TAN TEE JIM, SC LLB (Sing), LLM (Lond), Advocate & Solicitor (Singapore) NG-LOY WEE LOON LLB (NUS), LLM (Lond), Advocate & Solicitor (Singapore), Associate Professor, Faculty of Law, National University of Singapore |
| Citation | (2001) 2 SAL Ann Rev 288 |
| Published date | 01 December 2001 |
16.1 The year 2001 saw nine intellectual property law cases decided by the courts. Three of them related to copyright, three concerned trade marks and passing off, two dealt with patents and one touched on the subject of confidential information. They all contribute to the growing jurisprudence in this dynamic area of Singapore law.
16.2 The copyright law of Singapore is currently governed by the Copyright Act (Cap 63, 1999 Ed) (“the 1987 Act”) which came into force on 10 April 1987. Prior to the 1987 Act, the statute governing the copyright regime in Singapore had been the United Kingdom Copyright Act 1911 (“the 1911 Act”). This regime was constantly being destabilised during the intervening years by technological advancements and the incessant demands from several quarters for effective intellectual property protection. In the event, the 1987 Act effected substantial changes to the regime. One of these was the increase in the bundle of rights which constituted copyright. The 1911 Act, for instance, protected only literary, dramatic, musical and artistic works. In a significant concession to the new forms of entrepreneurial copyright which had emerged, the 1987 Act introduced protection for cinematograph films, television broadcasts, cable programmes and the like as well as extended the ambit of copyright by including infringements by broadcasting and cable programming. Also, the 1911 Act conferred copyright on records, perforated rolls and other contrivances “in like manner as if such contrivances were musical works”. Such copyright is now conferred in respect of “sound recordings” which are defined as “the aggregate of the sounds embodied in a record”. The sound recordings are not treated as equivalent to musical works, but are embraced into the pantheon of copyright as a distinct and separate subject-matter.
16.3 These changes necessitated transitional arrangements, savings, regulations, qualifications and exceptions in the 1987 Act which are all
intended to preserve copyright protection for existing works. For instance, the question whether an earlier original literary, dramatic, musical or artistic work retained copyright protection was pre-emptively dealt with in s 211 of the 1987 Act. An attempt to challenge the copyright of existing literary works was rebuffed in Novell, Inc v Ong Seow Pheng[1993] 3 SLR 700 where Coomaraswamy J held that literary works first published in the United States and which had enjoyed copyright protection prior to the 1987 Act continued to be protected by virtue of reg 3 of the Copyright (International Protection) Regulations (Cap 63, Rg 2, 1990 Ed) (“the Regulations”).
16.4 A similar attempt to challenge the copyright of existing works was made last year in relation to cinematograph films. In Highway Video Pte Ltd v PP[2002] 1 SLR 129, the first appellant, a body corporate, was charged under s 136(2)(a) of the 1987 Act for having possession of a set of video compact discs (“VCDs”) containing the serial cinematograph film entitled “The Duke of Mount Deer” (“the Film”). The section states that a person “who at a time when copyright subsists in a work has in his possession … any article which he knows, or ought reasonably to know, to be an infringing copy of the work” for the purpose of, inter alia, selling, by way of trade offering or exposing for sale or hire or distributing the article shall be guilty of an offence and “shall be liable on conviction to a fine not exceeding $10,000 for the article or for each article in respect of which the offence was committed or $100,000, whichever is the lower, or to imprisonment for a term not exceeding 5 years or to both”.
16.5 The second and third appellants, who were the first appellant”s officers, were charged under s 201B of the 1987 Act which provides, inter alia, that where a body corporate is proven to have committed an offence under s 136(2) of the 1987 Act, any director who consents or connives with the body corporate committing the offence is also liable to be punished for the offence. In the Magistrate”s Court, the appellants were fined a total sum of $60,000 because the trial judge disbelieved their defence that in the circumstances they did not know and were not put on notice that the VCDs were not genuine. On appeal before Yong Pung How CJ, their counsel not only impugned this finding of fact but also argued that as the Film was made and first published in Hong Kong in 1984 (that is, prior to the enactment of the 1987 Act), copyright could not have subsisted in the Film pursuant to s 88 or any other provision of the 1987 Act. The argument bears elaboration.
16.6 First, s 88 lays down the requirements for copyright protection in respect of a cinematograph film (namely, that the film was made or first published in Singapore or the maker of the film was a “qualified person” when it was made). There is a reference to this section in the transitional provisions of s 220:
“Copyright shall not subsist by virtue of section 88 in a cinematograph film made before 10th April 1987.”
16.7 Section 210 provides that notwithstanding anything in Part III of the 1987 Act (which is the part that relates to subsistence of copyright in a literary, dramatic, musical and artistic work), copyright shall not subsist in a work “unless copyright subsisted in the work under the Copyright Act 1911 immediately before that date”. Under reg 6 of the Regulations, copyright would subsist in a work under the 1911 Act immediately before 10 April 1987 if it was first published before that date in certain specified countries (such as Hong Kong). However, so the appellants argued, as the word “work” is clearly defined in the 1987 Act to mean only a literary, dramatic, musical or artistic work and as a cinematograph film is not such a work, reg 6 did not apply to confer copyright protection on the film, let alone a film made or first published before 10 April 1987. Otherwise, the regulation would not have restricted itself to a “work” but would have expressly mentioned and included a “cinematograph film”.
16.8 The argument, however, suffers from a grievous flaw in that, as the learned judge rightly pointed out, it entirely ignores s 221 of the 1987 Act which expressly states:
“Where a cinematograph film made before 10th April 1987 was an original dramatic work as defined by section 205, this Act (other than this subsection) shall have effect in relation to the film as if the film had been an original dramatic work as defined by section 7 and the person who was the author of the work for the purposes of the Copyright Act 1911 shall be deemed to be the author of the work for the purposes of this Act as having effect by virtue of this subsection.” [emphasis added]
16.9 The expression “dramatic work” is defined in s 205 to include “a cinematograph production where the arrangement, the acting form or the combination of incidents represented gives the work an original character”.
16.10 The effect is that, whilst s 220 denies copyright protection to a cinematograph film made before 10 April 1987 as such, s 221 preserves the protection to the film as a dramatic work provided it had enjoyed protection as such work under the 1911 Act. In the instant case, the Film qualified as a dramatic work because it was undeniably of original character, being a period serial which comprised over 40 episodes and must have involved a huge effort in arrangement, choreography and film direction. As such, copyright did subsist in the Film and the appeal was dismissed.
16.11 With respect, the learned judge”s analysis of the effect of the various transitional provisions and regulations concerning cinematograph films is correct and provides much-needed elucidation in an area of copyright law which had hitherto been perplexing. This is because under the 1911 Act, there was no copyright in a cinematograph film as such. The film industry
was in its infancy at the beginning of the 20th century and film was not regarded as a distinct type of work deserving of separate copyright protection. Cinematography was considered to be but a form of photography and a cinematograph film was then perceived to comprise a series of photographs or frames which could fall within one of the pre-existing categories of copyright. This is apparent from the 1911 Act which defined “artistic works” as including photographs. “Photograph” itself was defined to include “any work produced by any process analogous to photography”, which is wide enough to include the frames. The combined effect of these definitions is that the cinematograph film enjoyed copyright protection as an artistic work under the 1911 Act.
16.12 At the same time, it was clearly capable of protection as a dramatic work. Such work was defined in the 1911 Act as including “any cinematograph production where the arrangement or acting form or the combination of incidents represented give the work an original character”, as in s 205 of the 1987 Act. The solution adopted in the 1987 Act was to simply regard the cinematograph film as a dramatic work and to preserve copyright protection in the film as such work. This is indeed a sensible solution as any re-classification of the existing dramatic works as films would curtail, if not emasculate, the rights of the original authors.
16.13 In principle, there was also no apparent reason to preclude from copyright protection cinematograph films made or first published prior to 10 April 1987. There was no intention, when the 1987 Act was enacted, to discard the old clothes and start with a clean slate. The 1987 Act operates on the principle that it applies to things in existence at its commencement as well as to things brought into existence after commencement, subject to the transitional arrangements, savings, regulations and so on. In this regard, regs 3 and 6 cited by the appellants do not detract from the...
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