Butterworth & Co (Publishers) Ltd and Others v Ng Sui Nam

• Jurisdiction: Singapore
• Judge: L P Thean J
• Judgment Date: 25 February 1985
• Neutral Citation: [1985] SGHC 4
• Docket Number: Suits Nos 1924, 3913 and 3914 of 1981
• Date: 25 February 1985
• Published date: 19 September 2003
• Year: 1985
• Plaintiff Counsel: Gavin Lightman QC and Anthony Lee (Allen & Gledhill)
• Citation: [1985] SGHC 4
• Defendant Counsel: Anthony Walton QC, Chia Quee Khee and Kan Ting Chu (Wee Swee Teow & Co)
• Court: High Court (Singapore)
• Subject Matter: Sovereignty,Copyright,Whether pre-independence imperial statute remains in force,Transitory provisions,Scope of protection afforded by UK Copyright Act 1911,Applicable law,Copyright Act (Cap 187),Whether protected,Infringement,Original literary works first published in United Kingdom,Copyright Act 1911,Constitutional Law

The plaintiffs in Suits 1924 and 3913 of 1981 are publishers in the United Kingdom and are owners of copyrights in numerous works published in the United Kingdom. They brought these two actions against the defendant, who is the proprietor of several book stores in Singapore, for infringement of their copyrights. The plaintiffs in Suit 3914 of 1981 are two corporations, incorporated by Royal Charter in the United Kingdom and are owners of the copyrights in certain works. They brought this action also against the same defendant for infringement of their copyrights in these works. These three actions were consolidated by an order of court made on 6 September 1982 and since then multiple interlocutory applications had been taken out by the plaintiffs, particularly on discoveries and interrogatories. Until recently these proceedings had every sign of developing into a mammoth action. Fortunately, just before the trial the parties have agreed on a set of facts and on the basis of these facts are seeking the determination of this court on only one question of law.

The facts as agreed by the parties are very brief and are these. Citizens of the United Kingdom who are the authors of original literary works first published in the United Kingdom (said works) and in particular in the United Kingdom during the periods:

(a) before 1 June 1957 (the coming into force in the United Kingdom of the Copyright Act 1956),

(b) 1 June 1957 to 26 January 1959 (the date of the coming into effect of the Copyright Act 1956 (Transitional Extension) Order 1959),

(c) 26 January 1959 to 3 June 1959 (the date of the coming into force of the provisions of the Singapore (Constitution) Order in Council 1958 (Sl No 1956 of 1958) other than ss 121(5) and 123 which came into force on 28 November 1958,

(d) 3 June 1959 to 16 September 1963,

(e) 16 September 1963 to 9 August 1965 and

(f) 9 August 1965 to the present,have assigned to the plaintiffs all their copyrights in the said works throughout the world. The defendant has since 1965 imported for sale in Singapore and by way of trade offered to sell and sold copies of the said works which were neither made nor published with the licence or consent of the plaintiffs or any of them. The issue which has arisen between the plaintiffs and the defendant and which is now to be determined is whether such works are entitled to copyright protection within the Republic of Singapore.

Copyright is a creation of statute, and the relevant statute on which the plaintiffs base their claim is the Copyright Act 1911 of the United Kingdom (1911 Act). It is the contention of Mr Lightman on behalf of the plaintiffs that the 1911 Act since its extension to Singapore in 1912 has continued in force as part of the law of Singapore, and accordingly, the said works are entitled to copyright protection thereunder. Mr Walton on behalf of the defendants concedes that the Act is part of the law of Singapore but having regard to the change in the status of Singapore from a British colony to a constituent state of the federation of Malaysia in 1963 and subsequently to a sovereign independent state in 1965, that Act should be so construed as to confer copyright protection, in respect of published works, on such works only if such works were first published in Singapore. The issue therefore is not whether the 1911 Act applies as part of the law of Singapore; as will be seen later from a historical review of the copyright legislation, it undoubtedly forms part of the law of Singapore. The issue really is how is the 1911 Act to be construed: whether it is to be construed so as to confer copyright protection on the said works, all of which were first published in the United Kingdom, or only on works first published in Singapore. The question for determination turns on the construction of the 1911 Act in the context of Singapore as a sovereign independent state.

The 1911 Act was enacted by the Parliament of the United Kingdom on 16 December 1911 and by s 1(1) thereof provides:

(1) Subject to the provisions of this Act, copyright shall subsist throughout the parts of His Majesty`s dominions to which this Act extends for the term hereinafter mentioned in every original literary dramatic musical and artistic work, if -

(a) in the case of a published work, the work was first published within such parts of His Majesty`s dominions as aforesaid; and

(b) in the case of an unpublished work, the author was at the date of the making of the work a British subject or resident within such parts of His Majesty`s dominions as aforesaid;

but in no other works, except so far as the protection conferred by this Act is extended by Order in Council thereunder relating to self-governing dominions to which this Act does not extend and to foreign countries.

By s 25(1) the Act extended throughout the British dominions except self-governing dominions and the said s 25(1) is in the following terms:

This Act, except such of the provisions thereof as are expressly restricted to the United Kingdom, shall extend throughout His Majesty`s dominions: Provided that it shall not extend to a self-governing dominion, unless declared by the Legislature of that dominion to be in force therein either without any modifications or additions, or with such modifications and additions relating exclusively to procedure and remedies, or necessary to adapt this Act to the circumstances of the dominion, as may be enacted by such Legislature.

The term `self-governing dominions` has been expressly defined in s 35(1) to mean `the Dominion of Canada, the Commonwealth of Australia, the Dominion of New Zealand, the Union of South Africa, and Newfoundland`. Under s 37(2) the Act came into force in the United Kingdom on 1 July 1912 and, as regards a British possession other than self-governing dominion or the Channel Islands, on the proclamation thereof made by the Governor within the possession. Under the Interpretation Act 1889 of the United Kingdom, which was then in force, the term `British possession` means `any part of Her Majesty`s dominions, exclusive of the United Kingdom`. Singapore at that time was part of the Straits Settlements, a British possession and the Governor of the Straits Settlements on 1 July 1912 made a proclamation pursuant to s 37(2)(d) of the 1911 Act and accordingly the Act came into force in Singapore on that day.

Hence, as of 1 July 1912 all published works and unpublished works falling within s 1(1) of the 1911 Act were conferred copyright protection. (In this case, we are concerned with published works, and hence only copyright in such works is referred to and discussed in this judgment.) That position continued until 1 June 1957. On that day the Copyright Act 1956 of United Kingdom (1956 Act) came into force in the United Kingdom and by the Ninth Schedule thereto repealed the whole of the 1911 Act, except ss 15, 34 and 37. At that time no part of the 1956 Act extended to Singapore, though under s 31 thereof any of the revisions of the Act may be extended to, inter alia, any British colony. In consequence a very astonishing situation arose. The 1911 Act was repealed in the United Kingdom (except ss 15, 34 and 37), and as of that date, as no part of the 1956 Act extended to Singapore, the 1911 Act being then a part of the law of Singapore remained unaffected by any provision of the 1956 Act. Therefore, in construing the 1911 Act on 1 June 1957 in Singapore one was driven inescapably to the conclusion that the United Kingdom was no longer an area to which the 1911 Act extended and consequently as from that date all works first published in the United Kingdom were no longer afforded any copyright protection. There was undoubtedly a lapse on the part of the legislature which curiously was allowed to persist until 26 June 1959 when an Order in Council of the United Kingdom, called the Copyright Act 1956 (Transitional Extension) Order 1959 (Sl 103 of 1959) (Extension Order 1959) was made. That Order made pursuant to s 31 of the 1956 Act modified para 41 of the Seventh Schedule to the Act and that para so modified was extended to, inter alia, all the British colonies. Paragraph 41 of the Seventh Schedule so modified (para 41) is in the following terms:

In so far as the Act of 1911 or any Order in Council made thereunder forms part of the law of any country other than the United Kingdom, at a time after that Act has been wholly or partly repealed in the law of the United Kingdom or of any other country to which the Act extended or which, by virtue of that Act, was to be treated as a country to which it extended, it shall, so long as it forms part of the law of the country first mentioned, be construed and have effect as if that Act had not been so repealed.

It is Mr Walton`s submission that between 1 June 1957 and 26 January 1959 there was a period of time - which he aptly called an interregnum - during which even whilst Singapore was a British possession, in the eyes of the law of Singapore, the 1911 Act did not extend to the United Kingdom and any work first published there during this period did not enjoy any copyright protection in Singapore under the 1911 Act. I find myself in entire agreement with him on this point. Mr Lightman submitted, however, that the moment the Extension Order 1959 was made it had retrospective effect by virtue of para 39 of the Seventh Schedule to the 1956 Act. The short answer to this is that that paragraph had never been extended to Singapore and therefore cannot be called in aid in interpreting para 41. In my judgment para 41 has no retrospective effect. The Extension Order 1959 with effect only from 26 June 1959 restored in Singapore the status quo on copyright protection as existed immediately prior to 1 June 1957.

On 31 August 1958 the United Kingdom Parliament passed the State of Singapore Act 1958 and pursuant to that Act the Singapore...