Intellectual Property Law

• Author: TAN TEE JIM, SC LLB (Sing), LLM (Lond), Advocate & Solicitor (Singapore) NG-LOY WEE LOON LLB (NUS), LLM (Lond), Advocate & Solicitor (Singapore), Associate Professor, Faculty of Law, National University of Singapore
• Published date: 01 December 2000
• Date: 01 December 2000

Introduction

There has undoubtedly been a tendency in recent years to look to intellectual property law for protection against competitors and interlopers. This tendency stems from the increasing recognition, particularly acute in the developed economies, that only intellectual property rights can help to sustain the lead of those in the van of innovation. Specifically, intellectual property rights have come to be perceived as the harbingers of immense economic returns to those (Bill Gates springs to mind) with the technical know-how, with creative marketing schemes and, generally, with the ability to cater to the fickleness of the marketplace. Another impetus for the tendency is that the rights are being constantly undermined by extraordinary advances in the technology of imitation and in countries where the social, aesthetic and cultural values are not predicated on the moral and economic rights of creators. In consequence, there has been a proliferation of national and international intellectual property legislation (such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”)) as well as a rush to the national patents and trade marks registries - and to the courts.

So too it has been in Singapore in recent years. There is now a greater awareness that intellectual assets should be protected in Singapore. This is attributable not only to external influence but also to the government”s determination to attract investments and talent in the new technologies in telecommunications, information and the life sciences. This was emphasised by the Minister for Law and Foreign Affairs at an International Federation of Phonographic Industry Asia/Pacific Regional Council Meeting in May 1999:

“A strong IPR [intellectual property rights] protection regime is critical to Singapore”s efforts to attract and encourage the growth of value-added and high content companies. Piracy losses pose a serious constraint on the growth of value-added and high content industry, holding back high-value job creation and adversely affecting investment decisions”

as well as in the Explanatory Statement to the Copyright Act (Cap 63, 1988 Ed):

“It is necessary to enact an independent self-contained law on the subject of copyright in the light of the growing public consciousness of the rights and obligations of the authors and owners of intellectual property. New developments in computer technology, lithophotography and video recording and advanced means of communications like satellite broadcasting also call for changes in the existing law. Adequate provision has to be made for fulfillment of international obligations in the field of copyright which Singapore might accept.”

In the event, Singapore signed the TRIPS Agreement, joined the World Intellectual Property Organisation (“WIPO”) and acceded to several international intellectual property conventions such as the Berne Convention, the Paris Convention for the Protection of Industrial Property, the Patent Co-operation Treaty, the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms and the Madrid Protocol.

These international conventions provided a fecund source for change in our intellectual property law. In 1995, there was an overhaul of our patent system which now allows an inventor to apply for patent protection in Singapore if his invention is new, non-obvious and capable of industrial application. The new Patents Act was revised a year later to delete a provision which had excluded the patenting of certain matters such discoveries, schemes, scientific theories and computer programs. In 1998, the Trade Marks Act (Cap 332, 1999 Ed) was enacted “to establish a new law for trade marks”. The new Act extends protection to service marks as well as well-known marks and abolishes the distinction between Part A and Part B marks. It expressly states that parallel imports are legitimate and prohibits any groundless threat of trade mark infringement proceedings. In 1999, the Copyright Act (Cap 63, 1988 Ed) was extensively amended to accommodate the new technologies. The amendments prohibit, amongst others, reproduction of a copyright work “on any medium by electronic means”, making a copy ‘which is transient or is incidental to some other use of the work’ and copying more than 10% of the total number of bytes in the electronic version of a literary, dramatic or musical work. The amendments also introduce a number of other changes - in particular, the creation of border enforcement measures, the conferment of a quasi-copyright on performers and the granting of exemption to network service providers in certain circumstances. Last year, the United Kingdom Designs (Protection) Act (Cap 339, 1985 Ed), which had been in force since 1938, was repealed to make way for an entirely new designs regime which is administered in Singapore.

The expansion last year of the role of the Intellectual Property Office of Singapore (“IPOS”), now a statutory board, is another indication of the importance placed upon intellectual property protection in Singapore. It has changed from the traditional role of processing applications of patents and trade marks to a central body for establishing and co-ordinating the development of the legal and regulatory framework for intellectual

property protection in Singapore. It now has a wider mission, which is “to provide good support services for the promotion of intellectual property protection which will in turn enhance trade and encourage creative innovation in Singapore”. IPOS is set to play a pivotal role in accelerating the growth of the knowledge economy in Singapore.

The courts have not been unaffected by the greater awareness of the importance of intellectual property protection. The number of intellectual property cases heard by the courts has been increasing steadily over the years. Indeed, based on the Singapore Law Reports, there was a record number of such cases heard last year. This review seeks to determine the nature and extent of the protection that was granted in the cases last year.

Copyright

Fundamental principles affirmed

It is a fundamental principle of copyright law that copyright does not protect ideas, only the form in which they are expressed. In an early case (Hollinrake v Trusswell(1894) 3 Ch 420), Lindley LJ said: “Copyright, however, does not extend to ideas, or schemes, or systems, or methods; it is confined to their expression; and if their expression is not copied the copyright is not infringed.”

Another fundamental principle is that copyright is not a monopoly, unlike patents and registered designs. It is a negative right to prevent copying. Thus, if two identical works were in fact produced independently of one another, there is no infringement of copyright by one of the other.

These principles were recently re-affirmed by the High Court in the case of Chua Puay Kiang v Singapore Telecommunications Limited[2000] 3 SLR 640. The plaintiff conceived the idea of using the telephone keyboard to transmit alphabetical messages to printers. He expressed the idea in a drawing of a telephone keyboard (“the drawing”) as well as in a conversion table (“the table”) and developed a computer program for his “Teletyper” system which enabled computers to recognise signals generated by pressing the buttons on the telephone keyboard and to convert the signals into alphabets, as envisaged in the table. He demonstrated the system to the defendants and gave copies of the drawing and the table to the defendants” representatives. He did not hear further from the defendants after the demonstration. Subsequently, he discovered that the defendants had introduced and provided an API (alpha-numeric push-button input) service to their paging subscribers. He sued the defendants for infringement of copyright in the drawing, the table and the computer program.

The defendants denied any copyright infringement. In particular, they denied copying the plaintiff”s table and drawing and said that their coding table for the API was independently created. They also contended that even if there was copying, it was in respect of an idea. This was because, in the plaintiff”s table, the sequence of the keys and the arrangement of the alphabet in their normal order over the numerals was the only logical way of ordering them.

Rubin J dismissed the plaintiff”s claim. He was satisfied that the defendants” table was in fact independently created, even though the defendants had sight of the plaintiff”s table and there were some features which were similar to those of the plaintiff”s. He relied on the defendants” internal memorandum which pre-dated the demonstration and which showed that the defendants had the same idea. As regards the drawing, he found that there were substantial differences in the get-up and features and further opined that, at any rate, the plaintiff could not claim a monopoly over the sequence of the numerals 1 to 9 as well as the placement of the letters in groups of three on the telephone keyboard which were ideas.

As to the computer program, the learned judge distinguished the decision of the High Court of Australia in Autodesk Inc v Dyason[1992] 22 IPR 163 which concerned a hardware device called an “AutoCAD lock” which Autodesk supplied with its AutoCAD program. Without the lock, the program could not run. The way this worked was that the program had a sub-program (called “Widget C”) which sent a series of impulses to the lock while the program was running. The program would cease to run if it failed to receive a response from the lock to the impulses, which were compared by Widget C with a table of 127 responses stored in memory (called the “look-up table”). This thus ensured that the purchase of the program did not result in multiple use of the program. After studying the AutoCAD lock, the respondents created an alternative device (called “Auto Key lock”) which performed...