Highway Video Pte Ltd v Public Prosecutor (Lim Tai Wah) and other appeals

• Jurisdiction: Singapore
• Judge: Yong Pung How CJ
• Judgment Date: 11 December 2001
• Neutral Citation: [2001] SGHC 370
• Docket Number: Magistrate's Appeals Nos 203-205
• Date: 11 December 2001
• Year: 2001
• Published date: 19 September 2003
• Plaintiff Counsel: Anthony Lee Hwee Khiam and Rowena Chew (Bih Li & Lee)
• Citation: [2001] SGHC 370
• Defendant Counsel: Wong Siew Hong and Chia Soo Michael (Infinitus Law Corp)
• Court: High Court (Singapore)
• Subject Matter: Whether such films enjoy copyright protection in Singapore,Criminal Law,Foreign cinematograph films made before 10 April 1987,Offences,Existence of copyright,regs 2(2), 3 & 6 Copyright Regulations (International Protection) (Cap 63, Rg 2, 1990 Ed),Whether film unauthorised infringing copy,ss 7(1), 25(3) & 136 Copyright Act (Cap 63, 1999 Ed),Whether film legitimate parallel import,ss 7(1), 184, 205, 210, 220 & 221 Copyright Act (Cap 63, 1999 Ed),s 107 Trade Marks Act (Cap 332, 1999 Ed),Copyright and trademark offences,Possession for purposes of sale infringing copies of copyright film,Whether offences proven beyond reasonable doubt,Infringement,Copyright

: These appeals arise from the decision of the trial judge convicting the appellants of two offences under the Copyright Act (Cap 63, 1999 Ed) and the Trade Marks Act (Cap 332, 1999 Ed) and sentencing them to fines of $20,000 each. I heard the appeal on 1 November 2001 and reserved judgment to give more consideration to the issues raised.

Facts

The first appellant, Highway Video Pte Ltd (`Highway`), operates a shop at Parkway Parade Shopping Centre which engages in, inter alia, the sale of video cassettes and Video Compact Discs (`VCDs`) which contain theatrical films, television serials and other entertainment programs. The other appellants, Teng Yock Poh (`Yock Poh`) and Teng Kem Hong (`Kem Hong`) (hereinafter these two appellants will collectively be referred to as `the Tengs`), are siblings and the two directors of Highway. At the time of the alleged offence, they had been selling and distributing films for more than ten years.

The substantive respondent, Lim Tai Wah, prosecuted the appellants under a fiat from the Public Prosecutor. He is a director of Golden Mandarin Organisation Pte Ltd (`GMO`) and is authorised to act on behalf of Television Broadcasts Ltd (`TVB`), a company incorporated in Hong Kong, and TVBI Co Ltd (`TVBI`) which is responsible for distributing and sub-licensing TVB`s cinematograph films in countries outside Hong Kong, to enforce their copyright rights in Singapore.

Sometime in the 1980s, TVB produced the film serial `The Duke of Mount Deer` (`the film`). The film was first telecast in Hong Kong in July 1984 and its copyright is owned by TVB in Hong Kong. As a cinematograph film made or first published in Hong Kong, the film enjoys copyright in Singapore by virtue of s 184 of the Copyright Act read with reg 3 of the Copyright (International Protection) Regulations (Cap 63, Rg 2, 1990 Ed). The TVB logo is also protected under the trade marks regime in Singapore as it is a registered trade mark here.

In late 1999 or early 2000, TVBI became aware that there might be infringing copies of TVB`s copyrighted films being offered for sale in Singapore in the VCD format. Consequently, it requested its prospective licensee in Singapore, GMO, to place warning advertisements in the major newspapers here. The warning advertisements were published in The Straits Times and Lianhe Zaobao on 10 January 2000. Essentially, the warning stated that TVB/TVBI had never produced, distributed or licensed TVB programmes in the VCD format and therefore any TVB programs in the VCD format were infringing copies that were not produced with their authorisation. To ensure that the warning advertisements were brought to the actual attention of all known distributors in Singapore, GMO also sent a copy of the advertisements to each of them via facsimile. Highway was one of the distributors which received this notice.

On 1 or 2 February 2000, the Tengs purchased a copy of the film from GC Video Pte Ltd`s (`GCV`) Toa Payoh outlet for $100. The film came in a set of 40 VCDs and the proprietor of GCV, one Ng Chin Guan (`Ng`), assured Yock Poh that the set was a parallel import from Malaysia.

On 3 February 2000, two private investigators, acting on the instructions of GMO, conducted a trap purchase of the set of 40 VCDs at Highway`s shop. Upon arrival at the shop, the two investigators saw the set of VCDs on display and, after some bargaining, bought the entire set for $118.

Subsequently, Highway was charged under s 136(2)(a) of the Copyright Act for having possession of the VCDs for the purposes of sale or trade when it ought reasonably to have known that they were infringing copies of the film. It was also charged under s 49(b) of the Trade Marks Act for the sale of the 40 VCDs, on which the registered trade mark of TVB was falsely applied. The Tengs were both charged for the same offences as Highway under s 201B of the Copyright Act and s 107 of the Trade Marks Act respectively. These provisions state, inter alia, that, where a body corporate is proven to have committed an offence under s 136(2) of the Copyright Act or s 49(b) of the Trade Marks Act, any director who consents or connives with the body corporate committing the offence is also liable to be punished for that offence.

The defence`s case

In the court below, the appellants were not represented by counsel. They did not dispute that the set of VCDs was an infringing copy of the film but centred their defence on the argument that in the circumstances they did not know and were not put on notice that the set of VCDs was not genuine. As such, they contended that it could not be said that they ought reasonably to have known that the VCDs were infringing copies. In support of this argument, the Tengs asserted that they did not know about the advertisements in The Straits Times and Lianhe Zaobao on 10 January 2000 and did not receive the fax from GMO. Moreover, they said that they genuinely believed that the set of VCDs they purchased was a genuine parallel import from Malaysia based on the assurance by their supplier, GCV, and they contended that in the circumstances they had made sufficient inquiries on the authenticity of the VCDs.

With regard to GMO`s fax, the appellants took issue with the letters `ECM` stated on the fax transmission report provided by GMO, which the prosecution used to prove that the fax was sent to Highway. They tendered some evidence from an instruction manual of a fax machine (Canon Fax L-250) to the effect that `ECM` meant `Error Correction Mode`. They therefore contended that the fax was not properly sent.

As for their belief that the VCDs were authorised copies, the appellants stated that they believed that the VCDs were genuine as the printing on the box was very `beautiful and well done` in comparison with `pirated` copies sold at the night markets. Moreover, they claimed that simply because the name of the licensed distributor of TVB films, Golden Star TVB Sdn Bhd (`Golden Star`) was not printed on the box did not mean that the set was not a genuine parallel import as Golden Star may have authorised another distributor to distribute the films. To demonstrate this point, Kem Hong tendered some VCDs which showed that such a practice exists. In any case, Yock Poh gave evidence that when she examined the display set of the film at GCV, it had the name of a Malaysian company and had its address printed on it. From these circumstances, the appellants argued that there was nothing that would have put them on notice as to the questionable origins of the set of VCDs.

The trial judge`s findings

The trial judge rejected the appellant`s arguments and found that they had not taken the necessary measures to check that the set of VCDs was a genuine import from Malaysia. He was of the view that the Tengs were experienced people in the video business and should have been alerted to the possibility that the VCDs were infringing articles. While the printing on the box containing the VCDs was professionally done, there was no mention of the name and address of the purported Malaysian licensee or distributor at the back of the box. In addition, logos such as `dolby digital`, `video cd`, and other copyright logos were also missing. These, the trial judge thought, were warning signs which should have put the Tengs on notice that something could be amiss. Moreover, if the Tengs had watched the films themselves, they would have realised that the opening credits, closing credits and copyright notices were missing in each of the serial`s episodes.

On top of the above factors, the trial judge was persuaded by the fact that the Tengs were aware of TVB`s licensing arrangements in Singapore and Malaysia. As Kem Hong had admitted that he had not seen TVB serials being sold in VCD format before, they could, and should, have simply checked with Golden Star about the status of the VCDs that they purchased. The trial judge also drew an adverse inference from the appellants` failure to call Ng of GCV as a witness. This, he felt, undermined their defence as Ng could have given some clarification as regards the assurance he gave the appellants that the set of VCDs he sold them was a genuine parallel import from Malaysia and also his basis for saying so. The trial judge stated unequivocally that this clarification was crucial, considering that Yock Poh claimed that Ng did not tell them that it originated from Golden Star and the Tengs could not name the Malaysian entity from which the VCDs originated.

With regard to the warning advertisement which was faxed to the appellants, the trial judge was of the view that the fax had been successfully transmitted for two reasons. First, there was no evidence that GMO had used the Canon Fax L-250 when faxing the warning advertisement to the appellants. Secondly, the transmission went through because `OK` was printed beside `ECM` on the fax transmission report.

Reaching the conclusion that the appellants had shut their eyes to the obviously dubious origin of the set of VCDs, the trial judge agreed with the prosecution that the appellants` conduct lacked remorse and contrition and sentenced them based on the sentencing benchmarks of $300 per copyright infringement and $200 per trade mark infringement. The trial judge accepted the prosecution`s position that each VCD constituted a film and therefore sentenced the appellants to fines based on 40 copyright infringements. For the trade mark infringements, the TVB trade mark was on each VCD and the trial judge accordingly sentenced the appellants for 40 trade mark infringements. Using the same formula, each appellant was ordered to pay a fine of $12,000 for each charge under the Copyright Act and a fine of $8,000 for each charge under the Trade Marks Act. Therefore the appellants paid a total of $60,000 ($20,000 each) in fines.

The appeals against conviction

In the appeals before me, many issues have been raised by the appellants. Apart from their argument...