Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 27 July 2011
• Date: 27 July 2011
• Docket Number: Civil Appeal No 147 of 2010
• Court: Court of Appeal (Singapore)

Asia Pacific Publishing Pte Ltd

Plaintiff

and

Pioneers & Leaders (Publishers) Pte Ltd

Defendant

[2011] SGCA 37

Chao Hick Tin JA

,

Andrew Phang Boon Leong JA

and

VK Rajah JA

Civil Appeal No 147 of 2010

Court of Appeal

Copyright—Authorship—Whether incorporated entity could be author—Sections 27, 28 and 29 Copyright Act (Cap 63, 2006 Rev Ed)

Copyright—Authorship—Whether statutory presumptions applied as to authorship—Section 132 Copyright Act (Cap 63, 2006 Rev Ed)

Copyright—Groundless threat—Whether magazine publisher making groundless threats to bring legal proceedings for copyright infringement against rival magazine publisher—Section 200 (1) Copyright Act (Cap 63, 2006 Rev Ed)

Copyright—Infringement—Whether there was infringement of work if copyright was found to subsist

Copyright—Subject matter—Compilations—Databases—Whether copyright subsisting in compilation of data

Tort—Passing off—Damage—Test for damage—Whether test of likelihood of damage or actual damage was required

Tort—Passing off—Goodwill—Whether there was goodwill in get-up of magazine

Tort—Passing off—Misrepresentation or confusion—Whether there was misrepresentation to relevant sector of public—Whether market survey could be relied on

The Respondent published a horse-racing magazine known as ‘Punters' Way’ in both English and Chinese. From January 2007, the Appellant published a horse-racing magazine known as ‘Racing Guide’. Punters' Way contained horse-racing information in a set of four tables (‘the Tables’) that was arranged in a specific sequence. From 30 June 2007 to 5 June 2008, Racing Guide contained the Tables in the exact same sequence. The Respondent claimed infringement of copyright in the Tables by the Appellant under the Copyright Act (Cap 63, 2006 Rev Ed) (‘the Act’) .

Punters' Way also employed a colour coding scheme on its front cover. In January 2008, Racing Guidebegan to adopt similar colour coding. Racing Guide also employed the use of forward-facing pictures of horses and placed its advertisements panels on the bottom of the front cover, similar to that of Punters' Way. The Respondent additionally claimed against the Appellant under the law of passing off.

The High Court Judge (‘the Judge’) found that copyright subsisted in the Tables with the Respondent as the author. The Judge also found that a substantial part of the Tables had been copied and therefore the Appellant had infringed the Respondent's copyright and an injunction was granted to restrain the Appellant from further infringement. In addition, the Judge found that the Appellant had passed off Racing Guide asPunters' Way. The Respondent thus succeeded in both claims in the High Court. The appellant appealed against the Judge's decision.

Held, allowing the appeal:

(1) The Tables clearly constituted a compilation. However, in order for any copyright to subsist in the compilation, the selection or arrangement of its contents had to be the product of intellectual creation. The Respondent had unequivocally pleaded that it alone was the original author of the Tables in Punters' Way. No human individuals were identified. The Respondent had not pleaded ownership of the Tables. Authorship and ownership were not synonymous terms: at [32] and [41] to [43].

(2) Section 27 of the Act did not provide a definition of who could be an author of a subsisting copyright under the Act. However, this did not mean that the definition of ‘qualified person’ could be extended to include non-living ‘persons’ such as incorporated bodies. The duration of copyright protection had always been based on the author's life expectancy. Authors had to be living persons. Should companies qualify as authors, they would be entitled to claim a perpetual monopoly over their work: at [51], [60] and [64].

(3) It was clear that the historical origins of the Act envisaged rights to be accorded to natural persons and not corporate bodies, and that legal rights flowed only from human authorship. Section 2 of the Interpretation Act ought not to be incorporated into the rubric of copyright law, and an ‘author’ had to be a natural person in copyright law: at [65], [67] and [72].

(4) Originality was closely related to the author. An author had to first be identified before the work in question could be deemed to be original. Without the identification of a human author from whom the work originated, there could be no ‘original work’ capable of copyright protection: at [73], [75] and [82].

(5) The statutory presumptions, such as s 132 of the Act, have little or no role to play where the question of subsistence of copyright in each of the works was the central issue between the parties. As the Appellant adduced evidence that copyright did not subsist in the Tables since there was no author, the s 132 presumption was displaced. The necessary elements of authorship, ownership, validity and subsistence had to be adequately pleaded for cases involving copyright infringement. The Respondent could not now rely on an alternative claim of ownership which was not pleaded in the proceedings below: at [90] to [93].

(6) Despite the fact that the material used in the Tables was easily accessible to all, the information was presented in a distinct form which would attract copyright protection. The Tables in Racing Guide incorporated a substantial part of the Tables found in Punters' Way but as no copyright subsisted in the work, there was no infringement of the Respondent's copyright by the Appellant: at [104], [113] and [114].

(7) The ‘classical trinity’ of goodwill, misrepresentation and damage had to be established by the party seeking to claim passing off before an action could succeed. Whether a get-up had acquired the necessary distinctiveness was a question of fact. The Respondent had been publishing Punters' Way for around 30 years and the Appellant's witness acknowledged Punters' Way was the market leader in Singapore at various stages in its history. Goodwill was therefore attached to the get-up of Punters' Way: at [116], [119] and [120].

(8) Little reliance ought to be placed on the market survey as it was conducted by approximating the two issues which were most similar which was not a fair test. Additionally, the survey was conducted with the masthead removed. The punting audience to which both publications were targeted were circumspect and discerning. The large mastheads were significant distinguishing facts and there would be no confusion caused to the public. The cover pages of the two magazines were sufficiently distinct and were not likely to be confused by the relevant sector of the public: at [125], [126], [130] and [132].

(9) The right test that should be applied for damages was that of ‘actual damage’ and not ‘likelihood of damage’ as the infringement period had long since ended. However, as the trial was bifurcated on the Appellant's application, it was not just to penalise the Respondent for not leading evidence of actual damages at the trial. However, the test for damages in situations where the period of infringement had passed should be proof of actual damage and nothing short of that: at [136] to [139].

(10) The Respondent had made groundless threats against the Appellant for the purposes of s 200 (1) of the Act as the Respondent's Tables did not have copyright subsisting: at [142].

[Observation: The Statute of Anne (8 Anne c 19) (UK) was the first copyright statute in the world. Ever since the enactment of the Statute of Anne, the objective of copyright law was to encourage the creativity of natural authors. The identification of the author was therefore a key function of copyright law as that was the person who was entitled to the benefits conferred by law. Authorship by a company could never have been contemplated by the Statute of Anne as companies operating as distinct legal entities were not a typical feature of commerce when it was enacted: at [41], [64] and [65].]

Alteco Chemical Pte Ltd v Chong Yean Wah [1999] 2 SLR (R) 915; [2000] 1 SLR 119 (distd)

Aron Salomon (pauper) v A Salomon and Co Ltd [1897] AC 22 (refd)

Chilton v Progress Printing and Publishing Co [1895] 2 Ch 29 (refd)

CIR v Muller & Co's Margarine Ltd [1901] AC 217 (refd)

Creative Purpose Sdn Bhd v Integrated Trans Corp Sdn Bhd [1997] 2 MLJ 429 (refd)

Feist Publications Inc v Rural Telephone Service Co Inc 499 US 340 (1991) (refd)

Fortuity Pty Ltd v Barcza (1995) 32 IPR 517 (refd)

Ice TV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14 (refd)

Interfirm Comparison (Australia) Pty Ltd v Law Society (NSW) [1977] RPC 137 (refd)

Microsoft Corp v DHD Distribution Pty Ltd (t/as Austin Computers) (1999) 45 IPR 459 (refd)

Novelty Pte Ltd v Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (refd)

Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010] 4 SLR 744 (refd)

Sands & Mc Dougall Pty Ltd v Robinson (1917) 23 CLR 49 (refd)

Telstra Corp Ltd v Phone Directories Co Pty Ltd [2010] FCA 44 (folld)

Telstra Corp Ltd v Phone Directories Co Pty Ltd [2010] FCAFC 149 (folld)

Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd [1991] 1 SLR (R) 903; [1991] SLR 133 (refd)

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 (refd)

Waterlow Publishers Ltd v Rose [1995] FSR 207 (distd)

Copyright Act 1987 (Act 2 of 1987)

Copyright Act (Cap 63, 1988 Rev Ed)

Copyright Act (Cap 63, 1999 Rev Ed)

Copyright Act (Cap 63, 2006 Rev Ed) ss 7, 7 A, 27, 28, 29, 131, 132 (consd) ;ss 27 (2) (d) , 27 (4) , 28 (3) , 28 (5) , 29 (2) (d) , 30, 92, 93, 94, 95, 96, 200 (1)

Interpretation Act (Cap 1, 2002 Rev Ed) s 2

Copyright Act 1911 (c 46) (UK)

Copyright Act 1956 (c 74) (UK) s 20 (4)

Copyright Act 1968 (Cth) ss 32, 33, 34, 128

Copyright Act 1987 (Act 332) (M'sia)

Copyright Amendment Act 1980 (Cth)

Copyright Amendment Act 1984 (Cth)

Copyright, Designs and Patents Act...