Global Yellow Pages Limited v Promedia Directories Pte Ltd and another suit

• Jurisdiction: Singapore
• Judge: Lee Seiu Kin J
• Judgment Date: 22 May 2013
• Neutral Citation: [2013] SGHC 111
• Court: High Court (Singapore)
• Docket Number: Suits Nos 913 and 914 of 2009 (Registrar’s Appeals Nos 421 and 422 of 2012)
• Published date: 04 June 2013
• Year: 2013
• Hearing Date: 06 November 2012
• Plaintiff Counsel: Karen Teo, Adeline Chung and Han Hsien Fei (TSMP Law Corporation)
• Defendant Counsel: G Radakrishnan (Infinitus Law Corporation),Zhulkarnain Abdul Rahim and Diyanah Binte Baharudin (Rodyk & Davidson LLP)
• Subject Matter: Civil Procedure,Discovery of documents,E-discovery
• Citation: [2013] SGHC 111

Lee Seiu Kin J: Introduction

While modern technology has solved numerous problems and greatly facilitated daily activities, it has also given rise to new issues. Today, information is transmitted around the globe literally at the speed of light and electronic content can easily be created, altered and disseminated. The sheer volume of electronic information, as well as the difficulty of accessing some types of electronic information, presents considerable practical challenges in the area of discovery in litigation. The law requires all relevant documents to be disclosed except where such disclosure is not necessary either for disposing fairly of the matter or for saving costs, or where the documents are privileged. However, in many circumstances today it would be enormously impractical for a party to visually inspect each and every electronic document to determine whether it should be disclosed. It must be borne in mind that the common law procedures for discovery were developed long before the era of the computer and Internet. As technology develops, so must the law adapt in appropriate fashion.

These two appeals, viz, Registrar’s Appeal No 421 of 2012 (“RA 421”) in Suit No 913 of 2009 (“Suit 913”) and RA No 422 of 2012 (“RA 422”) in Suit No 914 of 2009 (“Suit 914”), were appeals against the decision of the assistant registrar (“AR”) ordering that searches using particular keywords be conducted on various electronic devices.

After considering the parties’ submissions and oral arguments, I dismissed both appeals except that I made two minor variations to the AR’s orders (see [23] below). I now set out my reasons for doing so.

The facts The parties

The plaintiff in both suits, Global Yellow Pages Limited (“GYP”), is a company incorporated in Singapore and listed on the Singapore Exchange. It carries on the business of publishing directories and providing classified directory advertising and associated products and services.

The defendant in Suit 913, Promedia Directories Pte Ltd (“Promedia”), is a company incorporated in Singapore and carries on the business of publishing directories.

The defendant in Suit 914, Streetdirectory Pte Ltd (“Streetdirectory”), is also a company incorporated in Singapore. GYP averred that Streetdirectory carries on the business of publishing directories. Streetdirectory averred that it is in the business of developing location-based software and solutions, including specialised skills in the areas of “geomatics”, wireless communication, global positioning system tracking, vehicle navigation and mobile applications.

The pleadings GYP’s claim

GYP’s pleadings in Suit 913 and Suit 914 were largely similar. What I set out in this section should therefore be taken as a reflection of GYP’s pleadings as against both Promedia and Streetdirectory unless otherwise indicated.

GYP publishes a series of directories which contain lists of companies and businesses and their respective contact details (such as names, telephone numbers, addresses, facsimile numbers, branches or subsidiaries, and company registration numbers or licence numbers). These directories consist of (a) printed directories which are published in annual editions (“Printed Directories”), and (b) an electronic directory (“the Online Directory”).

The Online Directory is updated daily and is known as the “Internet Yellow Pages”. A person who wishes to access information on the Online Directory may enter search terms at http://www.yellowpages.com.sg (“the Search Engine”). The Search Engine produces results which are similar to what is found in the Printed Directories, unless the Online Directory has since been updated.

GYP averred that it (and/or its employees) was the author of the following original works, and that GYP was at all material times the owner of the copyright which subsisted in the following works (collectively, “GYP’s Works”):¹ The 2003/04, 2004/05, 2005/06, 2006/07, 2007/08, 2008/09 and 2009/10 editions of the Printed Directories, which were compilations by reason of the selection and arrangement of their contents, thereby constituting intellectual creations. The Online Directory, which was a compilation by reason of the selection and arrangement of its contents, thereby constituting an intellectual creation. Subscriber information, which had been verified, enhanced, arranged and classified by GYP from information provided by Singapore Telecommunications Limited and Starhub Limited, as found in the abovesaid editions of the Printed Directories and the Online Directory. In respect of its claim against Streetdirectory, GYP also averred that it was the owner of the copyright which subsisted in the 1998/99, 1999/2000, 2000/01, 2001/02, and 2002/03 editions of the Printed Directories. These editions of the Printed Directories were not pleaded in GYP’s claim against Promedia.

GYP averred that from or about 2003, Promedia had infringed the copyright in GYP’s Works or parts thereof by reproducing or authorising its reproduction, without GYP’s licence or consent, in Promedia’s own directories (collectively, “Promedia’s Directories”), namely (a) Promedia’s online directory at http://www.thegreenbook.com (“Promedia’s Website”), (b) the 2003 to 2009 editions of Promedia’s printed directories (known as “The Green Book”), and (c) the 2003 to 2009 editions of The Green Book CD-Rom.² GYP made similar allegations against Streetdirectory, except that the alleged reproduction was contained in Streetdirectory’s online directory at http://www.streetdirectory.com (“Streetdirectory’s Website”).³

GYP alleged that this reproduction could be seen from:⁴ Substantial similarities between listings in, on the one hand, GYP’s Printed Directories and Online Directory, and, on the other hand, Promedia’s Directories (or Streetdirectory’s Website). The presence of fictitious subscriber listings (“Seeds”) “planted” by GYP throughout its Printed Directories and Online Directory in Promedia’s Directories (or Streetdirectory’s Website). The Seeds were fictitious company or individual names with addresses and telephone numbers which did not belong to these fictitious companies or individuals.⁵

Promedia’s defence and counterclaim

Promedia averred that GYP’s Works were not original literary works in which copyright could or did subsist.⁶

Promedia further averred that even if there was copyright in GYP’s Works, it had not infringed such copyright.⁷ Promedia alleged that over the past 31 years, it had independently created its own database of subscriber information or data.⁸ It went on to note that because telephone directories are fact-based works, there will inevitably be similarity in directories published by different publishers because the facts will be similar, and that such similarity could not amount to copyright infringement.⁹

Promedia averred that the presence of the Seeds in Promedia’s Website and in The Green Book CD-Rom was negligible and minimal and therefore did not amount to substantial copying such as to constitute copyright infringement.¹⁰

Promedia averred that even if it had infringed GYP’s copyright, it could rely on the defence of fair dealing under s 35 of the Copyright Act (Cap 63, 2006 Rev Ed).¹¹

Promedia’s defence also contained various other averments, some of which were as follows: (a) Promedia could rely on a defence of public interest; (b) GYP was guilty of laches, acquiescence and/or delay; and (c) Promedia was an “innocent infringer” because, at the time of the infringement, it was not aware and had no reasonable grounds for suspecting that GYP had copyright in the relevant compilations, data or listings.¹²

Promedia also counterclaimed for loss and damage as a result of GYP’s groundless threats of copyright infringement.¹³ GYP’s defence was a denial of Promedia’s allegations in the counterclaim.¹⁴

Streetdirectory’s defence

A large part of Streetdirectory’s defence consisted of the non-admission of GYP’s pleadings.

In addition, Streetdirectory denied that it had infringed GYP’s alleged copyright by reproducing the whole of GYP’s Works or a substantial part thereof in a material form in Streetdirectory’s Website.¹⁵ Streetdirectory averred that each entry in Streetdirectory’s Website was a collection of factual information related to a business entity, including the name, address, telephone number, fax number, email address and website of that business entity, and that GYP and itself both relied on the same factual information.¹⁶

The proceedings before the Assistant Registrar

On 17 February 2012, GYP applied for discovery against Promedia and Streetdirectory by way of, respectively, summons no 773 of 2012 (“SUM 773”) in Suit 914 and summons no 774 of 2012 (“SUM 774”) in Suit 913. Both applications prayed for, inter alia, the following orders: That there be discovery of various electronic documents in the possession, custody or power of Promedia or Streetdirectory pursuant to paras 43C(4) and 43C(6) of the Supreme Court Practice Directions in force at that date; and That such discovery be carried out in accordance with the electronic discovery protocols which were annexed to the applications (“the Protocols”).

What was material for the purpose of the appeals before me was para 1(d) of the Protocols, which contained several keywords which would be used in the conduct of a search of specified devices. The AR granted an order that several keywords be used in the conduct of the said search. Promedia and Streetdirectory both appealed against the AR’s decision by way of, respectively, RA 421 and RA 422. For the purpose of these appeals, the relevant keywords which were ordered by the AR to be used were as follows:

Keyword	Promedia	Streetdirectory
“seed”, “seeds”	Yes	Yes
“copy” “follow”	Yes	Yes
“delete”, “destroy”, “erase”, “wipe out” “remove”	Yes	Yes
“directories”	Yes	Y

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