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

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 27 July 2011
• Neutral Citation: [2011] SGCA 37
• Court: Court of Appeal (Singapore)
• Docket Number: Civil Appeal No 147 of 2010
• Published date: 03 August 2011
• Year: 2011
• Hearing Date: 09 February 2011
• Plaintiff Counsel: Stanley Lai Tze Chang SC, Vignesh Vaerhn, Eunice Lim Ming Hui and Tan Lijun (Allen & Gledhill LLP)
• Defendant Counsel: Tan Tee Jim SC, Ng Guan Zhen (instructed), Irving Choh and Lim Bee Li (KhattarWong)
• Subject Matter: Copyright,Tort
• Citation: [2011] SGCA 37

V K Rajah JA (delivering the judgment of the court): Introduction

This is an appeal by the appellant, Asia Pacific Publishing Pte Ltd (“the Appellant”), against the decision of a High Court Judge (“the Judge”), allowing the claim by the respondent, Pioneers & Leaders (Publishers) Pte Ltd (“the Respondent”) for copyright infringement and passing off. The Judge had also ordered an injunction to restrain the Appellant from infringing the Respondent’s copyright.

A novel issue raised in this appeal is whether an incorporated body can be considered an “author” for the purposes of copyright law. The Judge found that a company could indeed be an author of an original work that attracted copyright protection. Her detailed reasons can be found in Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010] 4 SLR 744 (“the Judgment”). Before we analyse the legal issues that have arisen in this appeal the facts ought to be set out to give those issues context.

The facts

The Appellant was incorporated in Singapore in 2006, while the Respondent was incorporated in Singapore in 1983. Both the Appellant and the Respondent have been, at all material times, in the business of books and magazines publication.

The Respondent has been publishing a horse-racing magazine known as “Punters’ Way” in both English and Chinese since its incorporation in December 1983. Prior to 1983, Punters’ Way had been published and sold since March 1977 by Pioneers & Leaders Co, a partnership registered in Singapore that is related to the Respondent. Punters’ Way caters to horseracing punters, and contains all types of horse-racing information, including race cards, the names and description of the horses participating in each race, the pedigree of each horse and the particulars of trainers and jockeys and their performance history.

The Appellant, which was incorporated in November 2006, has, on its part, been publishing a horse-racing magazine known as “Racing Guide” only from January 2007. Racing Guide was first published in 1986, and was thereafter published by several different companies. The Appellant acquired the right to publish Racing Guide from Racing Guide Publications Pte Ltd soon after it was incorporated. The contents of Racing Guide are essentially similar to that of Punters’ Way and it is also published in both English and Chinese. It is pertinent to note that both magazines obtain all their race information from the same source, that is to say, the Singapore Turf Club (“the Turf Club”).

The dispute between the parties

From 30 June 2007 to 5 June 2008, both the Appellant’s and Respondent’s horse-racing magazines, Racing Guide and Punters’ Way respectively, contained horse-racing information in a set of four tables (“the Tables”) that was arranged in the same sequence. The Tables adopted the following sequence: Table 1 Race Card; Table 2 Results Panel; Table 3 Track Work; and Table 4 Records of Past Performances.

The Race Card consists of the line-up of the horses competing in each race, and readers are able to read about the horses that are participating in the race, their recent physical status, their performance and how they are to be equipped; the jockeys and their recent performances; and trainers’ strike rates. The Results Panel consists of the choice selection of potential winning horses picked by the Respondent’s tipsters. It also has blank spaces to allow readers to fill in the actual result of the race.

The Track Work table shows the preparation that each horse has been put through by its trainer. It includes particulars of the horses’ performance before the race day for up to 21 days and is specially designed to give readers additional information on the recent physical state or condition of the horse. Finally, the Records of Past Performances table has a detailed history of each horse, including its pedigree, owner and stable; the stake money it has won; and the horses’ past performances for the last six runs.

The Respondent alleged that as Racing Guide contained the Tables in the same sequence from 30 June 2007 to 5 June 2008, the Appellant had infringed the Respondent’s copyright by way of the copying and reproduction of the compilation of the Tables as they were materially similar to those in Punters’ Way.

Additionally, the Respondent claimed that since 1993, Punters’ Way employed a different colour on the front cover to identify the various editions for each race day in Malaysia and Singapore. The Respondent also contended that the colour coding scheme has become a unique feature of the Respondent’s publication and is in fact a badge of origin, which the Respondent uses to distinguish its products from the other products in the market. On or about 4 January 2008, the Appellant began to adopt similar colour coding for both its English and Chinese editions of Racing Guide. A comparison of the colour coding for both magazines is as follows:-

Race Day	Punters’ Way	Racing Guide
Singapore Friday	Maroon	Maroon
Singapore Saturday	Purple	Dark Purple
Singapore Sunday	Orange-red	Orange-red
Malaysia Saturday	Purple	Light Purple
Malaysia Sunday	Gold	Gold

The Appellant also changed the pictures of the horses on the front cover page of Racing Guide, such that the horses were forward-facing, instead of the horses’ side profile being shown, as was the case previously. In addition, the Appellant also placed an advertisement panel on the bottom of the front page from January 2008, which was similar to Punters’ Way. Prior to January 2008, the Appellant used to place its advertisement panels in the middle left hand side of the front page.

Because of all these similarities, the Respondent claimed that the Appellant had misrepresented to members of the public that Racing Guide was connected to or associated with Punters’ Way, causing confusion, and had attempted to pass off Racing Guide for Punters’ Way. On 25 April 2008, a demand letter was issued by the Respondent to the Appellant. In the letter, the Respondent alleged that the Appellant had infringed the Respondent’s copyright in the Tables, and had also passed off Racing Guide as Punters’ Way. The Respondent claimed for a sum in lieu of damages as well as for the Appellant to cease and desist from the alleged infringement of copyright and passing off. The Appellant responded to the demand letter, rejecting the Respondent’s assertions and claims. It bears mention that not long after the demand letter was sent the Appellant modified the Tables in its publication. The Respondent accepts that infringement ceased on 5 June 2008. Legal proceedings against the Appellant commenced on 12 November 2008 and the trial was heard in February and March 2010.

The decision of the High Court

The Judge found that copyright subsisted in the Tables in Punters’ Way and that a company could indeed be the author of a copyright protected work as there was nothing in principle that would prevent an incorporated company from authoring a work. In the Judge’s view, who an “author” was ultimately depended on the facts of each case – more specifically, the rights that were sought to be protected, and the factual context from which the relevant work arose. In the present case, the Respondent was presumed to be the author of the Tables under s 131 of the Copyright Act (Cap 63, 2006 Rev Ed) (“the Act”). The Judge further found that there was no difficulty with determining the duration of the copyright owned by an incorporated entity as time will start to run from the moment the copyrighted works are published, consistent with ss 28–29 of the Act, and the relevant period would be 70 years from the expiration of the calendar year in which the work was first published.

In addition, the Judge found that there was originality in the compilation of the Tables found in Punters’ Way as there was skill and creativity expended in the selection of information to be presented in the Tables, which had been arranged in a way the Respondent believed was most useful to its readers. The Judge also held that the evidence showed that the presentation of horse-racing information in Racing Guide was substantially similar to that in Punters’ Way and that a substantial part of the Tables had been copied. The court granted an injunction to prevent the Appellant from infringing the Respondent’s copyright in Punters’ Way.

In relation to the claim in passing off, the Judge found that without relying on any expert evidence, there was more than sufficient objective evidence to establish a compelling case that the Appellant had deliberately made changes to the cover page of Racing Guide to pass it off as Punters’ Way. The Judge concluded that the similarities between the Chinese editions were also undeniably apparent. The expert evidence based on surveys conducted on readers of horse racing magazines further served to reinforce the court’s findings. The court therefore found that the Respondent was entitled to damages resulting from the Appellant’s passing off and/or infringement of copyright.

The issues

Three main issues arise for consideration before us in the present appeal, namely: Is the Respondent entitled to assert copyright protection as the author of its publication? (“the First Issue”); If the Respondent is entitled to copyright protection, has the Appellant infringed its rights? (“the Second Issue”); and Has the Respondent established the constituent elements to ground a passing off action? (“the Third Issue”).

Copyright protection in Singapore

Before we examine the issues it would be apt to outline the current copyright legislative scheme in Singapore. As this was grandfathered in the United Kingdom (“the UK”), it will be useful to briefly narrate the historical evolution of copyright there. Interestingly, though the concept of copyright was...