Case Note: MAKING SENSE OF SENTENCING FOR INTELLECTUAL PROPERTY RIGHTS OFFENCES

Citation(2004) 16 SAcLJ 516
Published date01 December 2004
Date01 December 2004

Ong Ah Tiong v Public Prosecutor [2004] 1 SLR 587

Public Prosecutor v Poh Kim Video Pte Ltd [2004] 1 SLR 373

This case note reviews the recent High Court decisions in Ong Ah Tiong v PP and PP v Poh Kim Video Pte Ltd, which provide an interesting contrast in sentencing under the Trade Marks Act and Copyright Act. It examines briefly the sentencing norms for offences under these Acts. Although it is believed that the cases can be reconciled, it is the authors’ view that it would be preferable if the court could, in an appropriate case, expressly clarify that the sentencing criteria is the same for both trade mark and copyright offences.

I. Introduction

1 The recent High Court decisions of Ong Ah Tiong v PP1 (“Ong’s case”) and PP v Poh Kim Video Pte Ltd2 (“Poh Kim’s case”) provide an interesting contrast in sentencing under the Trade Marks Act3 and Copyright Act.4

2 In Ong’s case, the accused was sentenced to imprisonment for a term of 32 months for offences under the Trade Marks Act. The High Court was of the opinion that in comparison with the sentences

imposed in other cases of trade mark infringement, the sentence awarded to the appellant was not manifestly excessive.5

3 In Poh Kim’s case, the accused was only fined $10,000. Of course, as the accused was a corporate entity, it could not be sentenced to imprisonment. However, in reaching its decision, the High Court, found that sentences imposed under s 136(2) of the Copyright Act (in cases relating to individual persons as opposed to corporate entities) generally ranged from $400 to $600 per article.6 The court made no mention of custodial sentences.

4 Despite the apparent inconsistency, it is submitted that the cases can be reconciled. This issue is discussed in Section IV below.

5 Poh Kim’s case is also significant as it is the first case where the court considered what constitutes an “article” in s 136(2) of the Copyright Act. This is discussed in Section V below.

II. Poh Kim’s case

6 Poh Kim Video Pte Ltd (“Poh Kim Video”) was tried and convicted by a magistrate’s court of five charges punishable under s 136(2) of the Copyright Act for the sale of infringing VCDs. The subject of each charge was a box set of a Korean drama series; each box set comprised 18 VCDs. Poh Kim Video was fined $2,000 per charge for a total of $10,000.7

7 The decision of the High Court related to the appeal against the sentence imposed on Poh Kim Video. The two main contentions advanced on appeal8 were that:

(a) the magistrate had failed to take into account two aggravating factors which necessitated a higher fine to be imposed, namely:

(i) the large-scale nature of Poh Kim Video’s copyright infringement (Poh Kim Video operated 33 retail outlets throughout Singapore); and

(ii) Poh Kim Video’s abuse of the defence of parallel import at trial (the Prosecution submitted that Poh Kim Video knew that they had no right to distribute the drama series in Singapore at the relevant time but ran the defence nonetheless); and

(b) the magistrate erred in regarding each box set as a single “article” for purposes of sentencing. The Prosecution submitted that each VCD within the box set should constitute an “article”.

A. Defence of parallel importation

8 The court held that while the scandalous or reprehensible conduct of one’s defence may constitute an aggravating factor in certain cases, an accused is generally entitled to raise any type of defence necessary to his case even if this defence is scandalous or vexatious in nature. The fact that such defence fails should not be taken against the accused in assessing sentence.

9 In any event the court did not regard as scandalous the conduct of Poh Kim Video’s defence in this case. There were documents to show that Poh Kim Video had the rights to distribute the drama series for the Hong Kong region at least with effect from 1 January 2002 and that they had erroneously assumed that the licence period in fact commenced on 19 November 2001. The court further opined that Poh Kim Video was entirely justified in raising the issue of parallel imports as the burden lay on the Prosecution (in making out an offence under s 136(2) of the Copyright Act) to prove that an imported article alleged to be an infringing article was not a legitimate parallel import.

B. Large-scale infringement

10 The court rejected the Prosecution’s contention that the trial court had misdirected itself by regarding Poh Kim Video as “honest businessmen” simply because they owned a large retail chain. The court held that the trial court had correctly assessed the culpability of Poh Kim Video to be lower than that of copyright pirates involved in syndicated operations. There was no basis on the facts for holding that the size of Poh Kim Video’s retail chain should have been regarded as an aggravating factor.

C. Definition of “article”

11 As a starting point, the court held that an “article” referred to any “infringing copy of the work”.9 As the legislature had decided not to provide a definition of “article”, each case must be considered on its own facts. The court opined that this is a sensible approach in light of present technology.

12 In Poh Kim’s case, the subject of each charge was a box set of a Korean drama series, each box set comprising 18 VCDs. The issue was whether each box set should be considered as one “article”, as opposed to each VCD within the set constituting an “article”. The High Court was of the view that the magistrate did not err in considering each box set as an “article”. The magistrate rightly took into account the fact that the drama series was sold as a box set at a fixed price of $39.90 per set, and that the individual VCDs were not sold separately.

13 Moreover, the High Court noted that a single drama series could be released in different versions consisting of a different number of VCDs. Sentencing on the basis of the number of VCDs would create different sentences in respect of the same infringing work. Conversely, where more than one infringing work was captured on a single VCD, it would be inappropriate to sentence an offender based on each VCD comprising a single article only. The court therefore felt that it was more appropriate to approach the matter based on the nature of the infringing work in question rather than the number of physical items. On this basis, the court felt it was appropriate to regard each box set as a single “article”.

D. Sentence

14 The High Court upheld the total fine of $10,000 imposed by the trial court. The High Court noted that sentences imposed under s 136(2) of the Copyright Act generally ranged from $400 to $600 per article. The court supported this proposition by reference to two unreported decisions, namely, Cherng Chiu Yung v Rahman bin Haji Omar and PP v Chew Alleng.10 The court made no mention of custodial sentences.

15 In the case of Cherng Chiu Yung v Rahman bin Haji Omar,11 the offender was tried and convicted on 25 charges under s 136(2)(a) in

respect of a total of 410 counterfeit CD-ROMs. In mitigation, it was submitted that the offender was a 20-year-old student, and had only worked in the shop as a salesman for one month before the raid. He was fined $400 per article, and the total fine amounted to $181,600.12

16 In the case of PP v Chew Alleng,13 the offender pleaded guilty to 15 charges under s 136(2)(a) in respect of a total of 46 infringing copies of computer programs and manuals. The district judge took into account that it was a small operation. On appeal, the fine was enhanced from $200 to $600 per article, and the total fine was $27,600.14

III. Ong’s Case

17 Before the lower court, in Ong Ah Tiong v PP,15 the infringer, Ong Ah Tiong, the managing director of Hi-Star Multimedia Pte Ltd, pleaded guilty to three charges of trade mark infringement under s 49(c) of the Trade Marks Act for having counterfeit Sony Playstation game controllers and memory cards, and Nintendo game cartridges in his possession for the purpose of trade. A further two charges under s 49(c) of the Trade Marks Act and one charge under s 136(2)(a) of the Copyright Act were taken into consideration for purposes of sentencing.16

A. Decision of the District Court

18 After reviewing a number of precedent cases, the district judge stated:

[A]s a general guide, custodial sentences are the norm unless the quantity of infringing articles are quite small. The length of the custodial sentence will increase correspondingly with the quantity of infringing articles involved. Also, the starting tariff for such offences involving 1,000 infringing articles and above would attract a sentence

of 12 months’ imprisonment and upwards. Whether the actual sentence is higher or less severe will have to depend on the circumstances of the case.17

19 Ong Ah Tiong was sentenced to 32 months’ imprisonment by the trial judge. In sentencing...

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