Highway Video Pte Ltd v Lim Tai Wah; Teng Yock Poh v Lim Tai Wah; Teng Kem Hong v Lim Tai Wah

• Jurisdiction: Singapore
• Judge: Gilbert Low Teik Seang
• Judgment Date: 28 August 2001
• Neutral Citation: [2001] SGMC 32
• Year: 2001
• Published date: 19 September 2003
• Citation: [2001] SGMC 32
• Court: Magistrates' Court (Singapore)

JUDGMENT:

Grounds of Decision

1. At the start of the trial before me, the complainant, Mr Lim Tai Wah, through his solicitors, Messrs Infinitus Law Corporation and acting under fiat from the Public Prosecutor, preferred the following amended charges against the first respondent, Highway Video Pte Ltd (the "company"), the second respondent, Ms Teng Yock Poh ("Miss Teng") and the third respondent, Mr Teng Kem Hong ("Mr Teng") respectively:

First Charge in PSS 162/2001 (Charge P4)

"You, Highway Video Pte Ltd (RCB No. 198500512D), are charged in that you, on 3 Feb 2000 at 80, Marine Parade Road, #B1-80/81, Parkway Parade, Singapore 449269 at a time when copyright was subsisting in Singapore in the cinematograph film entitled "The Duke of Mount Deer", did have in your possession for the purposes of sale or trade 40 infringing copies of the said cinematograph film, which you ought reasonably to know were infringing copies, and you have thereby committed an offence punishable under section 136(2)(a) of the Copyright Act (Cap 63)."

Second Charge in PSS 162/2001 (Charge P5)

"You, Highway Video Pte Ltd (RCB No. 198500512D), are charged in that you, on 3 Feb 2000 at 80, Marine Parade Road, #B1-80/81, Parkway Parade, Singapore 449269 did sell 40 Video Compact Discs containing the cinematograph film entitled "The Duke of Mount Deer", where the valid and subsisting trade mark of the "Television Broadcast Limited", registered in Singapore under Registration No. 152/83 in Class 9, was falsely applied in each of the 40 Video Compact Discs and on the box housing the 40 Video Compact Discs and you have thereby committed an offence punishable under section 49(b) of the Trade Marks Act, 1998."

First Charge in PSS 161/2001 (Charge P6)

"You, Teng Yock Poh (NRIC No. S2572825/D), are charged in that you were, from 18th July 1995 to 3rd February 2000, a director of Highway Video Pte Ltd, which had committed an offence of having in its possession for the purposes of sale on 3rd Feb 2000 at its premises at 80, Marine Parade Road, #B1-80/81, Parkway Parade, Singapore 449269 infringing copies of the cinematograph film entitled "The Duke of Mount Deer" in breach of Section 136(2)(a) of the Copyright Act (Cap 63), which offence was committed with your consent or connivance and you have thereby, by virtue of Section 201B of the Copyright Act (Cap 63), committed an offence punishable under Section 136(2)(a) [of](sic) the Copyright Act (Cap 63)."

Second Charge in PSS 161/2001 (Charge P7)

"You, Teng Yock Poh (NRIC No. S2572825/D), are charged in that you were, from 18th July 1995 to 3rd February 2000, a director of Highway Video Pte Ltd, which had committed an offence of selling 40 Video Compact Discs containing the cinematograph film entitled "The Duke of Mount Deer", where the valid and subsisting trade mark of the "Television Broadcast Limited", registered in Singapore under Registration No. 152/83 in Class 9, was falsely applied in each of the 40 Video Compact Discs and on the box housing the 40 Video Compact Discs, which offence was committed with your consent or connivance and you have thereby, by virtue of section 107 [of](sic) the Trade Marks Act 1998, committed an offence punishable under section 49(b) [of](sic) the Trade Marks Act 1998."

First Charge in PSS 160/2001 (Charge P8)

"You, Teng Kem Hong (NRIC No. S2646541/I), are charged in that you were, from 18th July 1995 to 3rd February 2000, a director of Highway Video Pte Ltd, which had committed an offence of having in its possession for the purposes of sale on 3rd Feb 2000 at its premises at 80, Marine Parade Road, #B1-80/81, Parkway Parade, Singapore 449269 infringing copies of the cinematograph film entitled "The Duke of Mount Deer" in breach of Section 136(2)(a) of the Copyright Act (Cap 63), which offence was committed with your consent or connivance and you have thereby, by virtue of Section 201B of the Copyright Act (Cap 63), committed an offence punishable under Section 136(2)(a) [of](sic) the Copyright Act (Cap 63)."

Second Charge in PSS 160/2001 (Charge P9)

"You, Teng Kem Hong (NRIC No. S2646541/I), are charged in that you were, from 18th July 1995 to 3rd February 2000, a director of Highway Video Pte Ltd, which had committed an offence of selling 40 Video Compact Discs containing the cinematograph film entitled "The Duke of Mount Deer", where the valid and subsisting trade mark of the "Television Broadcast Limited", registered in Singapore under Registration No. 152/83 in Class 9, was falsely applied in each of the 40 Video Compact Discs and on the box housing the 40 Video Compact Discs, which offence was committed with your consent or connivance and you have thereby, by virtue of section 107 [of](sic) the Trade Marks Act 1998, committed an offence punishable under section 49(b) [of](sic) the Trade Marks Act 1998."

PROSECUTION'S CASE

2. On 3 February 2000 at around 6 pm, two private investigators, Miss Leo Ying (PW3) and Mr Tan See Wei (PW4) from the firm of Commercial Investigations and acting on instructions from Golden Mandarin Organization Pte Ltd, conducted a trap purchase of a set of 40 video compact discs (VCDs) for the film serial "The Duke of Mount Deer" at the business premises of the first respondent, Highway Video Pte Ltd at Parkway Parade Shopping Centre, 80 Marine Parade Road, Singapore 449269. The first respondent had occupied two outlets within the same shopping centre. Miss Leo and Mr Tan proceeded first to the unit of the first respondent at unit #B1-50, with its main entrance at unit #B1-66. When Miss Leo enquired for the titles of the films which they were instructed to look out for, the second respondent, Miss Teng, who was also known as "Pauline", directed them to the other outlet at unit #B1-80/81.

3. Upon arrival at unit #B1-80/81, Miss Leo saw a set of VCDs for the serial entitled "The Duke of Mount Deer" on display there and selling for the price of $119.90. The private investigators were however unable to locate the other titles which they were instructed to also look out for, namely, "Legend of the Condor Heroes I" and "Legend of the Condor Heroes II". After some bargaining, the sales assistant agreed to sell them the set containing the serial "The Duke of Mount Deer" for the price of $118. After the purchase was made, a receipt was accordingly issued. During the whole period, Mr Tan was secretly making a video recording of the entire episode. The video recording was screened in Open Court and the video cassette was admitted as Exhibit P29. The set of 40 VCDs containing the serial "The Duke of Mount Deer" was admitted as Exhibit P25. The facts relating to the trap purchase are summarised in Miss Leo's statement admitted as Exhibit P19 and were not disputed by the respondents during the trial.

4. The copyright for the serial "The Duke of Mount Deer" is owned by Television Broadcasts Limited ("TVB"), a public listed company in Hong Kong and by virtue of section 184 of the Copyright Act read with Regulation 3 of the Copyright (International Protection) Regulations as amended by Regulation 5 of the Copyright (International Protection) (Amendments) Regulations 1996, it enjoys copyright protection in Singapore. Similarly, the TVB logo, which is printed on the box of the set and on each of the 40 VCDs, is a registered trademark in Singapore under Registration 152/83 in class 9. These facts relating to the status of the copyright and trademark were undisputed during the trial and were evidenced by copies of the necessary documents admitted as Exhibits P11 to 14. Similarly, Miss Teng and Mr Teng did not dispute their appointments as directors of Highway Video Pte Ltd, as confirmed by the instant information service printout from the Registry of Companies & Businesses in Exhibit P16.

5. With regard to the VCDs in Exhibit P25, the representative from TVB, Miss Cherry Tak Ngan Yuen (PW1) stated as follows in her statement, Exhibit P10:

"8. TVBI [TVBI Company Ltd] is responsible for distributing and sub-licensing TVB's cinematograph films in countries outside Hong Kong (including Singapore). TVBI derives its license to do so from TVB.

9.Prior to August 2000, neither TVB, TVBI nor its licensees have ever produced, distributed, sold, rented or dealt with TVB's cinematograph films in the VCD format anywhere in the world.

……

12. The cinematograph films, which TVB has produced, include a serialised drama entitled "The Duke of Mount Deer" (hereinafter referred to as "the Serialised Drama").

13. The Serialised Drama was first broadcast and published in Hong Kong when it was first telecast in July 1984 over 40 episodes. I am advised and verily believe that each episode constitutes a separate and distinct film …

18. I have examined the 40 VCDs purchased and I confirm that TVB, TVBI or its licensees did not produce them for the following reasons:

a The copyright notice with a warning clause, which advises that copying, hiring selling or exchanging the product is prohibited without express authority, is absent at the beginning of each VCD.

b The opening song is absent from the beginning of each episode;

c The closing credits are missing from the end of each episode; and

d Prior to August 2000, neither TVB, TVBI nor its licensees have ever produced, distributed, sold, rented or dealt with its cinematograph films in the VCD format anywhere in the world."

6. The following are the disputed facts. Some time in late 1999 or early 2000, TVBI, TVB's distributor and licensee for its films, became aware that there might have been infringing copies of TVB's copyrighted films being offered for sale in Singapore in the VCD format (paragraph 14 of Miss Tak's statement). Consequently, TVBI requested its prospective licensee in Singapore, Golden Mandarin Organization Pte Ltd ("Golden Mandarin") to place warning advertisements in the major newspapers here. Essentially, the warning states as follows:

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