Global Yellow Pages Ltd v Promedia Directories Pte Ltd

• Judge: George Wei JC (as he then was)
• Judgment Date: 28 January 2016
• Neutral Citation: [2016] SGHC 9
• Court: High Court (Singapore)
• Year: 2016
• Hearing Date: 17 October 2014,08 October 2014,30 October 2014,20 October 2014,28 October 2014,16 October 2014,27 October 2014,21 October 2014,30 September 2014,22 October 2014,10 October 2014,01 October 2014,02 October 2014,24 October 2014,29 October 2014,19 December 2014,13 October 2014,15 October 2014,14 October 2014,03 October 2014,07 April 2015,09 October 2014,07 October 2014,29 September 2014,23 October 2014,31 October 2014
• Docket Number: Suit No 913 of 2009
• Citation: [2016] SGHC 9
• Subject Matter: Defences,Authorship,Compilations,Copyright,Subject matter,Groundless threat,Infringement
• Published date: 27 April 2017
• Plaintiff Counsel: Bryan Manaf Ghows and Wang Yingyu (Via Law Corporation)
• Defendant Counsel: G Radakrishnan and Mark Teng (Infinitus Law Corporation)

George Wei J: Introduction

The plaintiff and defendant both produce telephone directories. The plaintiff alleges that the defendant infringed its copyright by, amongst other things, copying and referencing the listings and classifications in its directories. The central issue in this suit is whether plaintiff’s directories are protected by copyright, and if so, what the scope of that protection is.

This engages a question on which the foundations of copyright law rest: what does originality within s 27 of the Copyright Act (Cap 63, 2006 Rev Ed) (“the Copyright Act”) entail? Originality is the defining characteristic of works entitled to copyright protection under the Copyright Act. Other key concepts in copyright law, such as authorship, copying and substantiality, orbit around and take shape from the assessed originality of the work in question.

Telephone directories, in particular, occupy a special place in this debate. They cast in sharp relief the dichotomy between facts and expression, a dichotomy which is said to lie at the heart of the requirement of originality. Similar cases have been encountered by courts all over the world and each jurisdiction has formulated varying responses to what is in essence the same problem: what subject matter does the law of copyright protect? Copyright is a property right conferring rights in rem. The term of protection is very long and liability for infringement is generally strict. Furthermore, certain types of infringement attract criminal liability. The question of what is the subject matter protected by copyright is important not just to the copyright owner; it is of fundamental importance to the public at large whose duty it is to avoid infringement.

Whilst the plaintiff submits that the factual matrix of the suit is not complicated,1Plaintiff’s Closing Submissions at para 1. the evidence was heard over 23 days; it was originally set down to be heard over 24. The statement of claim was amended six times. Numerous interlocutory proceedings took place. Indeed, the plaintiff initially intended to call one expert witness and 17 factual witnesses, three of which were subpoenaed. In the eventuality, only 15 witnesses testified orally for the plaintiff after the defendant agreed to forgo cross-examination of the remaining two. The defendant, on the other hand, called two witnesses. The plaintiff’s position was that the legal issues required a thorough examination of the efforts devoted to the creation of the works in suit.2Plaintiff’s Closing Submissions at para 78.

Much of the evidence comprised a detailed examination of the business process by which the plaintiff and defendant produced their competing works. Whilst this was necessary to determine questions of fact relevant to originality, subsistence of copyright and copying, etc, other areas proved to be of little assistance. I do not propose to set out a detailed summary of the evidence. Instead, I shall refer only to salient parts of the evidence when setting out the reasons for my decision on the issues of fact and law that have arisen.

This judgment is structured under the following main headings: Background (at [7]–[16]). The issues (at [17]–[20]). The plaintiff’s business processes and how its directories are produced (at [21]–[69]). Whether and if so to what extent copyright subsists in the plaintiff’s directories (at [70]–[305]). The defendant’s business processes and how the defendant’s directories are produced (at [306]–[361]). Whether the defendant infringed any copyright found to subsist in the plaintiff’s directories (at [362]–[373]). Whether the defendant can avail itself of any defences to copyright infringement (at [374]–[407]). Whether the plaintiff is liable for groundless threats of copyright infringement (at [408]–[418]). Miscellaneous issues (at [419]–[422]). Summary of main findings (at [423]–[424]). Concluding remarks (at [425]–[426]).

Background

The plaintiff, Global Yellow Pages Limited, publishes telephone directories in Singapore. It alleges that the defendant, Promedia Directories Pte Ltd, infringed its copyright in the 2003/2004, 2004/2005, 2005/2006, 2006/2007, 2007/2008, 2008/2009 and 2009/2010 editions of its three printed directories—the Business Listings, the Yellow Pages Business and the Yellow Pages Consumer—as well as its online directory, the Internet Yellow Pages.3Statement of Claim (Amendment No 6) at para 4.1. I note, however, that the “litigation period” covered by the suit runs from 27 October 2003 to 26 October 2009.4Plaintiff’s Opening Statement at para 12.

The Business Listings is a white pages directory in which listings of businesses are sorted alphabetically. The Yellow Pages Business and Yellow Pages Consumer, which are targeted at businesses and consumers respectively, are classified directories that contain listings arranged within various classifications. The three printed directories were each previously known by different names (the White Pages, the Yellow Pages Commercial & Industrial Guide and the Yellow Pages Buying Guide respectively), but that is immaterial and I shall refer to them by their names at the time this suit was commenced. The plaintiff’s online directory is maintained at the URL http://www.yellowpages.com.sg. It is built around a search engine containing an online database.

The plaintiff claims, broadly, that copyright subsists in three categories of works: First, each of the plaintiff’s directories “in whole or in part”, as compilations that constitute intellectual creations by the selection and arrangement of their content.5Statement of Claim (Amendment No 6) at para 4.1. Second, the “seeds” in the plaintiff’s directories. Seeds are false listings which the plaintiff deliberately introduced into its directories to detect copying. These listings comprise a fictitious company or person which bore the plaintiff’s registered or post-office box address. The plaintiff claims that each individual seed is itself a compilation that constitutes an intellectual creation.6Statement of Claim (Amendment No 6) at para 4.2A. Third, the “enhanced data” found in the plaintiff’s directories. It suffices for now to say that the enhanced data refers to the individual listings in the plaintiff’s directories (ie, business names, addresses, profiles, telephone or fax numbers, website URLs, and other additional information). The data is said to be “enhanced” because the listings appear in the plaintiff’s directories in their final form only after they have been verified, embellished, arranged and classified. I will elaborate on how enhanced data is defined and derived, as well as the plaintiff’s business processes further below.

The plaintiff alleges that its copyright was infringed by directories produced or maintained by the defendant.7Statement of Claim (Amendment No 6) at para 12. These comprise: (a) the defendant’s printed directory, The Green Book; (b) the defendant’s digital directory, The Green Book CD-ROM; and (c) the defendant’s online directory, maintained at the URL http://www.thegreenbook.com.

The plaintiff says the infringement is evinced by two circumstances. First, the “substantial similarities” between the listings in the defendant’s directories and those in the plaintiff’s directories.8Statement of Claim (Amendment No 6) at para 14. Second, the seeds found in the defendant’s directories are relied on as “fingerprints” of copying.9Statement of Claim (Amendment No 6) at para 13.

As to the former, the listings or enhanced data would only have been available to the defendant through the copying of “the whole of the [p]laintiff’s [w]orks or alternatively all the listings contained under each and every of the classification heading[s]”, which were identified in various annexures appended to the amended statement of claim.10Statement of Claim (Amendment No 6) at para 15. Alternatively, the defendant reproduced or authorised the reproduction of the Business Listings in their entirety, or all the listings contained within various classification headings in the plaintiff’s directories.11Statement of Claim (Amendment No 6) at para 17.

As to the latter, the large number of seeds found in the defendant’s directories is proof of the defendant’s wholesale copying of the plaintiff’s directories, or in the alternative, copying of all the listings under each of certain classification headings.12Statement of Claim (Amendment No 6) at para 25.

The defendant’s position is a tooth-and-nail denial of each of the elements of the plaintiff’s pleaded claims. The defendant contends that copyright does not subsist in the plaintiff’s directories, the enhanced data or the seeds, either in whole or in part. The compilations do not amount to intellectual creations because the selection and arrangement is “commonplace and ... a matter of course”; it is “mechanical” and “not done by human authors but computers”.13Defence and Counterclaim (Amendment No 4) at para 5.1. The plaintiff’s online directory was “constantly changing” and so there was no fixation.14Defence and Counterclaim (Amendment No 4) at para 5.2. The seeds are not compilations amounting to intellectual creations because there is “no sufficient quantum/mass or literary merit to constitute a work”.15Defence and Counterclaim (Amendment No 4) at para 5.3. There is no copyright in the enhanced data because it consists of “information or facts”, it was “not created or authored by the [p]laintiff or its employees”, it was a “derivative work”, or its enhancement “did not involve sufficient intellectual skill, labour and judgment”.16Defence and Counterclaim (Amendment No 4) at para 5.4.

The defendant also denies copying. It has published The Green Book since 1980 and has built up its own database of listings since then.17Defence and Counterclaim (Amendment No 4) at para 13(ii). Telephone directories, which...