Intellectual Property Law
| Citation | (2011) 12 SAL Ann Rev 354 |
| Date | 01 December 2011 |
| Published date | 01 December 2011 |
18.1 The Court of Appeal's decision in Asia Pacific Publishing Pte Ltd v Pioneer & Leaders (Publishers) Pte Ltd[2011] 4 SLR 381 (Asia Pacific Publishing) is very important because it dealt with the following core issues in the law of copyright: the determination of an author of literary, dramatic, musical and artistic works, a class of copyright works commonly known as authors' works; the determination of originality, a pre-requisite that must be satisfied for authors' works; the determination of whether a substantial part of the work has been copied. These three issues are inter-connected: authorship determines originality which in turn determines if a substantial part has been copied. In other words, the core of these core issues is the first, that of authorship. Thus, one wrong move on the issue of authorship can mean that the entire case for copyright infringement will fall apart. This was what happened in Asia Pacific Publishing.
18.2 The plaintiff was a company which had been publishing and selling a horse-racing magazine called Punter's Way since 1977. This magazine contained horse-racing information in a set of four tables (Tables). The titles and contents of the Tables are set out below:
(a) Race card: information on the horses competing in each race, that is, their names; their recent physical status; their performance and how they are equipped; their jockeys and their recent performance and their trainers' strike rates.
(b) Results panel: the choice selection of potential winning horses picked by the plaintiff's tipsters, with blanks to allow the punters to fill in the actual results of the race.
(c) Track work: information about the preparation that each horse has been put through by its trainer, in particular the horses' performance before the race day for up to 21 days and the recent physical state or condition of the horse.
(d) Records of past performance: a detailed history of each horse, including its pedigree, owner and stable; the stake money it has won and the horses' past performance in the last six days.
18.3 The information in these tables was obtained from the Singapore Turf Club.
18.4 The defendant published a rival horse-racing magazine called Racing Guide containing horse-racing information which was also obtained from the Singapore Turf Club. Much of this information was similar to the information found in the plaintiff's magazine. This similarity was not the basis of the plaintiff's suit for copyright information. After all, it is a fundamental principle in copyright law that there is no protection for information or ideas (see, in particular, Art 9(1) of the TRIPS Agreement providing that [c]opyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such). The plaintiff's complaint related to the presentation or arrangement of the horse-racing information in the defendant's magazine. Between 30 June 2007 and 5 June 2008, the presentation or arrangement of the information in the defendant's magazine was the same, or substantially the same, as in the Tables of the plaintiff's magazine.
18.5 To succeed in its claim for copyright infringement, it was crucial for the plaintiff to establish that the Tables were protected under the Copyright Act (Cap 63, 2006 Rev Ed). The plaintiff's case was that the Tables were a type of literary work, more specifically that they were compilations. Section 7A(3)(c) of the Copyright Act defines a compilation to mean a compilation or table of data which, by reason of the selection or arrangement of its contents, constitutes an intellectual creation. This requirement for intellectual creation is sometimes equated with the requirement for originality in copyright law. The United States Supreme Court's decision in Feist Publications Inc v Rural Telephone Service Company Inc499 US 340 (1991) has set out the originality threshold that a compilation must cross: it must be independently created by its author and possess some minimal (very low) degree of creativity. It was in this context that the issue of authorship arose. Who was the author of the Tables? The plaintiff pleaded in its statement of claim that it was the author of the Tables. This proved to be the fatal move because the Court of Appeal held that copyright law recognised only natural persons as authors. The plaintiff was an incorporated body. Its entire case for copyright infringement fell apart on this ground alone.
18.6 In reaching the conclusion that only natural persons can be authors, the Court of Appeal delved into the history of copyright law, all the way back to the first copyright statute of the world, namely, the Statute of Anne 1709 (c 19) (UK). The long title of this statute set out its objective as the following:
An Act for the Encouragement of Learning, by vesting the Copies of Printed Books in the Authors or purchasers of such Copies, during the Times therein mentioned.
18.7 The Court of Appeal noted that the Statute of Anne introduced what has now become a bedrock principle of copyright law, namely, the notion of a limited term of protection. Prior to this, the common law protection for published books, if any, was perpetual. We will return to this concept of common law copyright shortly. There was a reason for imposing a limited term of protection, namely, to allow the public to have free access and use of the work upon the expiration of that period.
18.8 The limited term of protection stipulated in the Statute of Anne was 28 years from first publication for new books. This term was subsequently extended, via the Copyright Act 1814 (c 156) (UK), to the lifetime of the author if she was still living at the end of the maximum period of 28 years. Thus, began the measurement of copyright term by reference to the lifetime of the author of the work. In 1908, the formula of lifetime of the author plus 50 years became the minimum term of protection in international copyright law: see Art 7 of the Berne Convention for the Protection of Literary and Artistic Works. The rationale for adopting a post mortem actoris term of protection was to benefit two generations of the author. Today, in Singapore, s 28(2) of the Copyright Act sets out the lifetime of author plus 70 years as the copyright term for all authors' works other than photographs.
18.9 This trek through the evolution of the copyright term of protection convinced the Court of Appeal that the notion of an author the term used in the Statute of Anne meant, and can only mean, a human being. The Court of Appeal reasoned that (Asia Pacific Publishing at [60]):
it is patently clear that incorporated bodies were never contemplated to have been authors for the purposes of copyright. It would be absurd to suggest that a company could have a lifespan, let alone generations of heirs. Thus, it must follow that authors have to be living persons.
It also noted that it would clearly be against public policy to allow copyright protection in perpetuity (Asia Pacific Publishing at [72]), a necessary consequence of extending the meaning of author to include incorporations.
18.10 There are two observations to make about the Court of Appeal's reasoning and conclusion on the issue of authorship. The first observation is that it is not impossible for the law to regard an incorporated body as the author of a literary, dramatic, musical or artistic work if, and only if, the statute explicitly provides for it. For example in the United States, when an employee creates an authors' work in the course of employment, the author of this work is the employer (see s 201 of the Copyright Act 17 USC (US) (1976)). Since an employer can be, and very often is, an incorporated body, United States copyright law clearly envisages the possibility of a non-human author for employee-created works. This possibility, it must be emphasised, is a statutory creature. The Singapore Copyright Act, by way of contrast, does not provide for such a possibility. To return to the example of employee-created works, it is significant that Singapore maintains the distinction between authorship and ownership of rights in this category of works: the employee is the author of the work whilst the employer is the owner of the copyright in this work (see s 30(6) of the Copyright Act). This approach adopted by Singapore on employee-created works manifests the draftsman's intention that the word author used in the Copyright Act means only human authors. Another indicator of this intention is the use of a different term, namely, maker, in the context of sound recordings and films, works that are protected in the Copyright Act as subject-matter other than authors' works (see, for example, ss 87(1) and 88(1) of the Copyright Act). It is clear from s 81(1) that the maker of a sound recording or film can be an incorporated body. In short, the draftsman envisages author to mean only natural persons, and maker to mean natural persons and corporations. This analysis supports the Court of Appeal's conclusion in Asia Pacific Publishing that only a natural person can be an author for the purposes of the Copyright Act.
18.11 The second observation is an addition to the Court of Appeal's account of the history of copyright. The limitation of the term of protection by the Statute of Anne gave birth to two very old cases in copyright law, namely, Millar v TaylorENR(1769) 4 Burr 2303, 98 ER 201 (Millar) and Donaldson v BeckettENR(1774) 4 Burr 2408, 1 ER 837 (Donaldson), in what has become famously known as the Battle of the Booksellers. At that time, the London publishers (or booksellers as publishers were called) had almost a monopoly on the printing business, having purchased from many authors the right to print their books. This left the emerging booksellers from Scotland and other provinces with very little, except to reprint books falling outside the protection of...
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