Global Yellow Pages Ltd v Promedia Directories Pte Ltd

• Jurisdiction: Singapore
• Judgment Date: 22 May 2013
• Date: 22 May 2013
• Docket Number: Suits Nos 913 and 914 of 2009 (Registrar's Appeals Nos 421 and 422 of 2012)
• Court: High Court (Singapore)

Global Yellow Pages Ltd

Plaintiff

and

Promedia Directories Pte Ltd and another suit

Defendant

[2013] SGHC 111

Lee Seiu Kin J

Suits Nos 913 and 914 of 2009 (Registrar's Appeals Nos 421 and 422 of 2012)

High Court

Civil Procedure—Discovery of documents—Electronic discovery—Party giving discovery disputing keywords to be used in keyword search—Whether keywords accurate—Whether keywords would result in large number of hits

The plaintiff claimed that the defendants in both suits had infringed its copyright in printed and electronic directories containing lists of companies and businesses and their respective contact details, as well as its copyright in subscriber information found therein which it had verified, enhanced, arranged and classified. The plaintiff applied for discovery of various electronic documents in the possession, custody or power of the defendants. In so doing, the plaintiff sought an order that such discovery be carried out in accordance with certain electronic discovery protocols, which contained, inter alia, keywords to be used in the conduct of a search of specified devices. The assistant registrar granted an order that several of the keywords be used in the conduct of the said search. The defendants appealed against the order.

Held, dismissing the appeals:

(1) The purpose of a keyword search was simply to narrow the universal set of all the documents in the specified electronic devices to a more manageable subset of documents containing the keywords. There was always a risk that relevant documents would be excluded from this subset. Conversely, it was inevitable that irrelevant documents would be included within the subset: at [42] and [51] to [53].

(2) The best keywords were those which maximised the number of relevant documents and minimised the number of irrelevant documents within the subset. The measure of a keyword's ability to do so was its ‘accuracy’. The higher the accuracy of a keyword, the more likely the court would be to grant an order that the keyword be used: at [53] and [54].

(3) In order to increase the level of accuracy of keyword searches, an approach might be recommended which consisted of: (a) commencing with such specific keywords as reference numbers, names of specific projects, and keywords which identify the key witnesses or custodians, (b) incorporating keywords unique to the facts of the case such as product names and phrases peculiar to the particular industry, and (c) avoiding words commonly used either in daily usage or in the context of the industry. But ultimately, the question of what keywords ought to be used turned on the facts and issues of each case: at [55] and [56].

(4) The court would also have regard to the size of the subset produced by a keyword search. An extremely large subset would generally be a factor weighing against an order that the keyword be used. In deciding whether or not to grant such an order, the accuracy of the keyword and the size of the subset would have to be balanced against considerations of proportionality and economy, such as the importance of the documents sought to the issues in dispute, the value and importance of the dispute, and the relative financial resources of the parties to the dispute: at [57] and [58].

(5) When resolving a dispute as to whether keywords proposed by the party seeking discovery should be used, the court should endeavour to aid that party by giving more weight to his proposed keywords. This was because, if the party giving discovery complied with the court order for discovery by way of particular keywords, that would discharge his discovery obligations notwithstanding that relevant documents might have been excluded from the subset produced by the searches using those keywords: at [63] and [64].

(6) Once the keyword search had been carried out, it was open to the party giving discovery to conduct an ocular review of the subset so as to sieve out irrelevant documents, withhold documents on the basis of privilege, or redact irrelevant confidential information in the documents within the subset: at [66] and [67].

(7) In the present case, the keywords allowed by the assistant registrar would have a reasonable degree of accuracy in so far as there would be a reasonably low likelihood of relevant documents being excluded. As for the risk of there being too many irrelevant documents, this was significantly mitigated because parties would not review documents which were produced by searches with more than 5,000 hits. There was little basis for the defendants' objection that the keywords allowed would be over-broad and result in a large number of hits, since the defendants had not conducted a preliminary search on the specified electronic devices to ascertain precisely how many hits would be produced by those keywords: at [71] to [73].

[Observation: The key to unlocking the full potential of keyword searches was the adoption of an iterative process. This might involve, inter alia, running preliminary searches using proposed keywords solely for the purpose of identifying the number of hits produced by those searches, in order that the proposed keywords might be refined. An important aspect of this iterative process was co-operation and collaboration between the parties: at [44] to [49] and [59] to [61].]

Breezeway Overseas Ltd v UBS AG [2012] 4 SLR 1035; [2012] SGHC 170 (folld)

Breezeway Overseas Ltd v UBS AG [2012] SGHC 41 (folld)

Davies v Eli Lilly & Co [1987] 1 WLR 428 (refd)

Fermin Aldabe v Standard Chartered Bank [2009] SGHC 194 (refd)

Gavin Goodale v The Ministry of Justice [2010] EWHC B 40 (QB) (refd)

Nichia Corp v Argos Ltd [2007] Bus LR 1753; [2007] EWCA Civ 741 (folld)

Robin Duane Littau v Astrata (Asia Pacific) Pte Ltd [2011] SGHC 61 (refd)

Sanae Achar v Sci-Gen Ltd [2011] 3 SLR 967 (folld)

Copyright Act (Cap 63, 2006 Rev Ed) s 35

Rules of Court (Cap 322, R 5, 2006 Rev Ed) O 24

Karen Teo, Adeline Chung and Han Hsien Fei (TSMP Law Corporation) for the plaintiff in Suits 913/2009 and 914/2009

GRadakrishnan (Infinitus Law Corporation) for the defendant in Suit 913/2009

Zhulkarnain Abdul Rahim and Diyanah bte Baharudin (Rodyk & Davidson LLP) for the defendant in Suit 914/2009.

Lee Seiu Kin J

Introduction

1 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.

2 These two appeals, viz, Registrar's Appeal No 421 of 2012 (‘RA 421’) in Suit No 913 of 2009 (‘Suit 913’) and Registrar's Appeal 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.

3 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

4 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.

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

6 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

7 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.

8 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’).

9 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.

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