CRIMINAL OFFENCES UNDER THE SINGAPORE COPYRIGHT ACT — LEGAL AND PROCEDURAL ISSUES

• Date: 01 December 1999
• Author: MARK LIM FUNG CHIAN
• Published date: 01 December 1999
• Citation: (1999) 11 SAcLJ 120

I. INTRODUCTION

Some years ago, Lord Denning wrote in a famous judgment:—

“It is, it is a glorious thing, to be a Pirate King,” said W.S. Gilbert: but he was speaking of ship pirates. Today we speak of film pirates. It is not a glorious thing to be, but it is a good thing to be in for making money [T]he criminal law does not provide an adequate remedy for film companies…..The criminal law is too slow and the penalties too small.1

While this may have been the case in the United Kingdom at that time, in Singapore today, the criminal provisions under the Copyright Act2 are probably the most important weapons against piracy in the armoury of copyright owners. These criminal provisions are, however, different from the criminal provisions in other Commonwealth countries such as the United Kingdom and Australia. Further, there has not been any detailed treatment of these criminal provisions locally,3 and important amendments to the Copyright Act4 have recently been passed.

This article seeks to examine various criminal offences under s 136 of the Copyright Act (“CA”), as well as the procedural aspects involved in prosecuting offenders under these criminal provisions. Certain aspects of the criminal provisions under the Trade Marks Act (“TMA”)5 will also be compared and contrasted in the footnotes to this article.

II. THE CRIMINAL OFFENCES

The most important criminal offences are set out in s 136(1)-(3) CA.6 There are essentially four elements which must be established:—

1. 1. copyright subsists in the relevant work7 in Singapore;

2. 2. the article dealt with by the accused person is an infringing copy of the work;

3. 3. the accused person knows or ought reasonably to know that the article dealt with is an infringing copy (mens rea); and

4. 4.

   1. (a) the accused person has committed one of the following acts in relation to the article (actus reus):—

      1. (i) makes for sale or hire;8

      2. (ii) sells or lets for hire, or by way of trade offers or exposes for sale or hire;9

      3. (iii) by way of trade exhibits in public;10 or

      4. (iv) distributes either (aa) for purposes of trade, or (bb) for other purposes but to such an extent as to affect prejudicially the owner of the copyright;11or

   2. (b) the accused person has the article in his possession, or imports the article into Singapore, for the purpose of:—

      1. (i) selling, letting for hire, or by way of trade offering or exposing for sale or hire the article;12

      2. (ii) distributing the article for the purpose of trade, or for other purpose to an extent that will affect prejudicially the owner of the copyright in the work;13 or

      3. (iii) by way of trade exhibiting the article in public.14

These elements will be examined in turn.

A. Subsistence of Copyright15

Copyright, as with other intellectual property rights, is territorial in nature. Essentially, this means that for copyright in a work to subsist in Singapore, there must be some connection between the work and Singapore, for example, copyright may subsist in Singapore by virtue of the author being a citizen of Singapore or resident in Singapore, or the work being made or first published16 in Singapore.

Notwithstanding the above, a large amount of foreign copyright material also enjoys copyright in Singapore by virtue of the Copyright (International Protection) Regulations.17 These Regulations extend copyright protection to works first published or made in the United States of America, the United Kingdom (which included Hong Kong) and Australia, as well as works authored or made by residents or citizens of these countries.

With effect from 15 November 1996, as a result of Singapore acceding to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), this protection has been extended to more than 120 other countries.18 It is submitted that the likely effect of this amendment is that copyright protection would extend to the “new” foreign copyright material even if these were authored, made or first published before 15 November

1996.19 However, the amendment would not retrospectively make an act done prior to 15 November 1996 a criminal offence (or, indeed, a civil infringement).20

As most instances of piracy would involve “foreign” copyright material, it would, in normal circumstances, be expensive and inconvenient to prove copyright subsistence. In relation to criminal proceedings, however, copyright subsistence (and ownership) may be proved by affidavit evidence under s 137 CA.21

The onus would then be on the defence to prove that copyright could not subsist in the relevant work in any of the possible ways, and the prosecution is entitled not to give evidence as to which of the ways they are relying on to support their allegation that copyright subsists in the work.22 Alternatively, the defence could seek to rely on the mechanism given in s 137(2) CA to object to the tendering of the s 137 affidavit, and to call for the deponent of the affidavit to be produced and cross-

examined. Such a challenge must, however, be made “in good faith”, and the court has a discretion to permit the s 137 affidavit to be used without the deponent so appearing.23

B. Infringing Copy

The phrase “infringing copy” is defined in s 7(1) CA to refer to a copy of a copyright work the making of which constitutes an infringement of the copyright in the relevant copyright work.

In the case of articles imported into Singapore, to determine whether the making of the article was carried out without the consent24 of the owner of the copyright, the relevant copyright owner is the copyright owner in the country of manufacture. The Singapore copyright owner comes into the picture only where there is no person entitled to the copyright in the country of manufacture.25 Accordingly, it is clear that parallel importation or dealings with parallel imports will not amount to an offence under the Copyright Act.

C. Knowledge26

The test of what constitutes “knowledge” within the meaning of Section 136 of the Copyright Act is discussed in great detail in the leading case Public Prosecutor v Teo Ai Nee & Anor (No. 2).27 This case should be read in full. The following, however, are some of the more important points which emerge from the judgment:—

1. (a) The test of what constitutes knowledge is the same in relation to both civil and criminal infringements.28

1. (b) The five states of mind set out in the famous Baden, Delvauxcase29 in relation to constructive trusts were adopted, namely:—

   1. (i) actual knowledge;

   2. (ii) wilfully shutting one’s eyes to the obvious;

   3. (iii) wilfully and recklessly failing to make such enquiries as an honest and reasonable man would make;

   4. (iv) knowledge of circumstances which would indicate the facts to an honest and reasonable man; and

   5. (v) knowledge of circumstances which would put an honest and reasonable man on inquiry.30

2. (c) It was held31 that:—

   1. (i) “[T]he state of knowledge contemplated by s 136 in the phrase ‘where he knows’ is state (i) or actual knowledge.”

   2. (ii) “[T]he phrase ‘where… he ought reasonably to know’ contemplates state (v), that is, ‘knowledge of circumstances which would put an honest and reasonable man on inquiry’. This will encompass (ii) wilfully shutting one’s eyes to the obvious, (iii) wilfully and recklessly failing to make such enquiries as an honest and reasonable man would make and (iv) knowledge of circumstances which would indicate the facts to an honest and reasonable man.”

3. (d) It should be noted that this test is an objective test. It is not necessary to show that the accused person actually knew that the copies he deals with are infringing so long as “an honest and reasonable man” would be put on inquiry.32

The Court also considered the effect of the above test in relation to various factors which were relevant to the case.33 One factor that weighed heavily in support of the Court’s finding that the accused persons had acted reasonably and honestly was that the accused persons had obtained oral and written assurances of the legitimacy of the products they were dealing in from their suppliers, and had also taken legal advice on the matter from a qualified source.

D. Prohibited Acts34

1. “Makes”

The provisions relating to the making of a work or other subject matter are set out in s 16 CA. In relation to literary, dramatic or musical works, the time when such a work was made shall be read as a reference to the time when the work was first reduced to material form. In this regard, it should be noted that the storage of a work in a computer will amount to reduction/reproduction to a material form.35

It should perhaps also be noted that recent legislative provisions36 have been introduced in Singapore aimed at stamping out the manufacture of CDs, CD-ROMs, VCDs, DVDs and DVD-ROMs. Essentially, the manufacture for sale or other commercial purposes of these goods can only be carried out by manufacturers who are registered under the provisions of the Control of Manufacture Act.37 Apparently, one of the

conditions for registration is that the manufacturer must give an undertaking not to violate intellectual property rights. In addition, the approval of the Trade Development Board is required before mastering equipment and replication equipment for CDs, CD-ROMs, VCDs, DVDs and DVD-ROMs may be imported into Singapore.38

2. “Sells”

The meaning of the word “sell” in s 73 TMA was examined in the case of Trade Facilities Pte Ltd & Ors v Public Prosecutor.39 It was held that the word “sells” is to be given its ordinary meaning “as a verb”. Accordingly, it is the act of selling that is prohibited.

The following points should be noted:—

1. (a) It is the act of selling that is crucial, not the resulting transaction, if any. Accordingly, to use the examples given in the case, a fishmonger may be said to have been selling fish if he set up his stall and made his sales pitch even if he does not manage to...