Global Yellow Pages Ltd v Promedia Directories Pte Ltd and another matter

• Jurisdiction: Singapore
• Judge: Sundaresh Menon CJ
• Judgment Date: 19 April 2017
• Neutral Citation: [2017] SGCA 28
• Plaintiff Counsel: Bryan Ghows and Wang Yingyu (Via Law Corporation)
• Docket Number: CA/Civil Appeal No 19 of 2016 and CA/Summons No 56 of 2016
• Date: 19 April 2017
• Hearing Date: 23 November 2016
• Subject Matter: Authorship,Compilations,Subject matter,Defence,Copyright,Infringement,Groundless threat
• Published date: 24 May 2017
• Defendant Counsel: and Professor David Llewelyn (School of Law, Singapore Management University) as amicus curiae.,G Radakrishnan, Mark Teng and Gillian Tan (Infinitus Law Corporation)
• Court: Court of Appeal (Singapore)
• Citation: [2017] SGCA 28
• Year: 2017

Sundaresh Menon CJ (delivering the judgment of the court):

The present appeal involves two competing publishers of telephone directories. The plaintiff in the suit below, Global Yellow Pages Limited (“GYP”), appeals against the decision of the High Court Judge (“the Judge”) to dismiss its claim for breach of copyright by the defendant, Promedia Directories Pte Ltd (“Promedia”). The Judge’s judgment is reported as Global Yellow Pages Limited v Promedia Directories Pte Ltd [2016] 2 SLR 165 (the “Judgment”). At issue is the nature of the protection from copying that is afforded by copyright law.

Background facts GYP’s claims

GYP claimed that Promedia infringed its copyright in the Internet Yellow Pages (an online directory built around a search engine and maintained at http://www.yellowpages.com.sg) (the “Online Directory”), as well as in seven editions (being those from 2003/04 to 2009/10) of its three print directories, namely, the Business Listings (the “BL”), the Yellow Pages Business and the Yellow Pages Consumer (collectively the “YP”). The BL is a white pages directory in which listings of businesses are presented in alphabetical order, while the YP comprises two classified directories that contain listings of businesses arranged within various classifications.

At trial, GYP alleged that its claimed copyright in these works had been infringed by Promedia in three directories produced or maintained by the latter, namely, the Green Book (a print directory), the Green Book CD-ROM (a digital directory), and the Green Book Directory (an online directory maintained at http://www.thegreenbook.com) (collectively the “GB”). On appeal, GYP also argues that its copyright was infringed by Promedia’s use and deployment of material from GYP’s directories in the former’s temporary database. Specifically, Promedia is alleged to have photocopied or scanned pages from the BL (at least in 2004, 2006 and 2008), to have copied the listings in the YP when updating its own listings using a computer programme called the YP Advertiser Module, and to have saved or printed the web pages from the Online Directory. This temporary database, in fact, was the focus of GYP’s arguments before us at least insofar as infringement was concerned.

The essential facts

The Judge has set out the facts and the parties’ business processes in considerable detail at [7]–[69] and [306]–[361] of the Judgment and we do not propose to repeat them. It suffices that we summarise the most essential facts.

As noted above, the works in question were essentially telephone directories of one sort or another. The production of these directories begins with the obtaining of a large mass of data. Essentially, GYP entered into an exclusive agreement with Singapore Telecommunications Limited (“Singtel”), one of the principal telephone service providers in Singapore, pursuant to which it was entitled to receive, on a daily basis, information on new subscribers or changes pertaining to existing subscribers of landlines in mainland Singapore and mobile lines in Pulau Ubin. The production processes that were performed by GYP upon receiving such information were largely computerised. Specifically, such information, which arrives as raw data, is manipulated into a format that is suitable for publication through various processes that entail the verification, classification and embellishment of that data.

After the raw data has been verified, subscribers are classified into business types. In this regard, GYP operates a free listing policy, which affords each Singtel subscriber only one free listing in the BL and in either YP directory (the details vary yearly but are immaterial for present purposes). This classification is based on the primary nature of the subscriber’s business. To determine this, subscribers are first assigned main classification headings (“MCHs”), which are back-end categories that are generated by GYP for the purpose of organising the raw data and which are not visible to the end user of the directories. The MCHs are used as a tool to help determine the actual classifications which are eventually published in the directories, and these are visible to the end user. Initially, this task of assigning the MCHs and then determining the actual classification was manually performed by a team which corresponded with subscribers to understand the nature of their businesses. From about November 2006, it was outsourced to a third party, to whom GYP had furnished a map correlating the various commercial class codes maintained by the Accounting and Corporate Regulatory Authority (“ACRA”) to the MCHs used by GYP. Approximately 80% of the subscribers were classified by that third party. From that time (that is, November 2006), GYP’s direct input was confined to manually assigning MCHs to certain limited classes of subscribers being those (a) who conceivably fell within “controlled classifications” (these were classifications in which subscribers could list only if they met certain specified criteria); (b) who disagreed with the matching performed by the third party; or (c) whom the third party was unable to match successfully. The subscriber in turn could embellish its single listing by paying for more prominent listings or a “cross-listing” (which is a listing under multiple classifications). This usually followed the persuasive efforts of GYP’s sales staff.

Eventually, the basic subscriber data (that is, the subscriber’s name, telephone numbers and address), any embellishments the subscriber may have paid for, and the classifications under which the subscriber would fall would be extracted, sorted, typeset and printed or published online, as the case may be.

Promedia’s production processes, in comparison, were considerably less automated. Its business processes were reduced to an extensive set of standard operating procedures (“SOP”), each of which governed a specific task that employees were to perform. Promedia could not obtain subscriber information directly from Singtel. Instead it collected data from multiple third-party sources such as delivery orders, marketing collateral, field surveys, telephone calls and company websites. However, by far the most significant source of the information to be included in its directories were the telephone directories of competing publishers. One of Promedia’s SOPs required employees to take the data in the most recent edition of the BL and YP and merge it with their existing database by keying in the data through a computer program in what was essentially a form-filling exercise. Important for the purposes of this appeal is the fact that, in some years, this task involved the saving or printing of the Internet Yellow Pages entries and the photocopying or scanning of the BL into what parties refer to as Promedia’s “temporary database”. Subsequent to this exercise, the SOPs required employees to perform a few other tasks, of which three are notable. First, they used the data for “market intelligence” exercises to develop Promedia’s business. This entailed identifying the prominence of a subscriber’s listing in a competing directory (for instance, whether it had a bold entry or a boxed entry) in order to enable Promedia to assess whether it was likely to also pay Promedia a premium for a more prominent listing. Second, they had to verify and update the entries in the database by calling subscribers. Third, in that same call, the employees had to understand the subscriber’s businesses and product or service offerings in greater detail, with a view to listing them under multiple business types or offerings where applicable. This was modelled after the “Thomas register”, a directory in the USA well known for its detailed and specific classifications. After these steps, the data in the database would be manipulated to generate the various GB directories.

The result of Promedia’s efforts was a set of GB directories that was visibly different from GYP’s corresponding directories. The evidence showed that, in essence, what was copied by Promedia was the data in GYP’s directories. There is no evidence, however, that such data as was copied was then reproduced in the same form in which it had appeared in GYP’s directories. Indeed, as evident from the table at [348] of the Judgment, GYP’s directories had no more than 1.07 classifications per subscriber on average whereas GB’s corresponding directory had no less than 3.10 — this figure in fact rose to 7.45 in 2009. It may also be noted that there were far more classifications in the corresponding directories produced by Promedia as compared to those produced by GYP in which classifications were used.

However, not all the SOPs were executed to the letter. Promedia’s employees failed to verify some subscriber listings in the BL or YP. That is how some “seeds”, which are fictitious listings designed to detect copying, made their way into the CD-ROM and online versions of the GB. And that, in turn, was how GYP discovered that Promedia had been copying the data in its directories.

It is against this factual backdrop that GYP commenced suit against Promedia alleging copyright infringement. At the trial below, GYP claimed that copyright subsisted in three categories of works: the “enhanced data” in its directories (which, it suffices to say for now, refers to individual listings after they had been verified, embellished, arranged and classified); each of its directories “in whole or in part”, as compilations that constitute intellectual creations by the selection and arrangement of their content; and individual seeds (fictitious listings introduced to detect copying). As stated above, GYP contended that such copyright had been infringed by the GB directories and (especially on appeal) by Promedia’s use and incorporation of the data in its temporary database.

To assist us in our consideration of the issues, we appointed Professor...