Intellectual Property Law

• Date: 01 December 2017
• Publication year: 2017
• Published date: 01 December 2017
• Author: David TAN LLB (Hons), BCom (Melbourne), LLM (Harvard), PhD (Melbourne); Dean's Chair, Associate Professor, Faculty of Law, National University of Singapore. Stanley LAI SC LLB (Hons) (Leicester), LLM (Cantab), PhD (Cantab); Barrister at Law (Lincoln's Inn); Advocate and Solicitor (Singapore); Head of Intellectual Property Practice, Allen & Gledhill LLP; Adjunct Professor, Faculty of Law, National University of Singapore.

Copyright

Global Yellow Pages v Promedia Directories – Copyright in compilation works

19.1 It is well-established in copyright law that facts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. About a quarter-century ago, the US Supreme Court delivered a landmark ruling in Feist Publications, Inc v Rural Telephone Service Co, Inc1 that rejected the “sweat of the brow” doctrine, and held that a factual compilation may receive copyright protection only if it featured an original selection or arrangement.2 In Global Yellow Pages Ltd v Promedia Directories Pte Ltd,3 the High Court, in a 122-page judgment by George Wei J, engaged in a comprehensive exegesis of US, Australian, Canadian, English and Singapore case law, and concluded that copyright subsisted in each of the Business Listings (“BL”) (a white pages directory), a classified Yellow Pages directory (“YP”) and online directory only as a whole. However, copyright did not subsist in (among other claims) the listings in the BL, the listings within each YP classification, or the seeds (dummy listings introduced to detect copying) whether individually or in their totality as a compilation. These findings were disputed by Global Yellow Pages (“GYP”) on appeal to Court of Appeal in Global Yellow Pages Ltd v Promedia Directories Pte Ltd4 (“Global Yellow Pages (CA)”).

19.2 The plaintiff – GYP – and defendant – Promedia Directories (“Promedia”) – were competing telephone directory producers. The works in suit comprised editions of GYP's BL, YP and online directory. The central issue was whether GYP's directories are protected by copyright, and if so, what the scope of that protection is. The listings in the BL were arranged in alphabetical order with no classification or categorisation. The listings in the YP and online directories were arranged in alphabetical order within classifications or categories. All the directories also contained “seeds”, which were dummy listings introduced to detect copying.

19.3 GYP claimed that copyright subsisted in three broad categories of works: (a) 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; (b) the “seeds” in the plaintiff's directories;5 and (c) the “enhanced data” found in the plaintiff's directories.6 These works were argued to be protected by copyright as compilations, by reason of the selection or arrangement of their contents. GYP alleged that its claimed copyright in these works have been infringed by Promedia in three directories produced or maintained by the latter: 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 argued that its copyright was infringed by Promedia's use and deployment of material from GYP's directories in the former's temporary database.

Summary of Court of Appeal's decision

19.4 The High Court had held that copyright subsisted only in (a) the YP as a whole (the compilation including the front matter, introductory material, special segments and classified listings), (b) the BL as a whole (the compilation including introductory material, various segments and the actual subscriber listings), and (c) the compilations of the listings in

their entirety in the online directory. However, copyright protection was “thin”. While there was some copying by the defendant, this did not amount to a substantial taking, as much of the copying was of matter in which copyright did not subsist. Therefore, there was no copyright infringement. It was held that copyright did not subsist in (a) the individual listings in the YP and BL, (b) the listings selected and arranged within each classification, or the individual classifications themselves, in both the YP and BL, and (c) each individual seed in the online directory. Furthermore, Wei J found GYP liable for groundless threat of copyright infringement under s 200 of the Copyright Act,7 commenting that in the absence of clear binding authority on the position of industrious collection and creativity in determining copyright subsistence in Singapore, the threats of action made by the plaintiff were overbroad and unjustified.8

19.5 Sitting as a rare five-member full bench, the Court of Appeal affirmed most of Wei J's findings, but allowing GYP's appeal only in relation to the issue of subsistence of copyright in so far as it relates to the arrangement of the listings in the BL (even though this had no consequence to the outcome) and the issue of groundless threats of copyright infringement. In concluding that Promedia's scanning and photocopying of the BL listings was fair dealing, the court also provided significant guidance on the application of the fair-dealing provision under s 35(2) of the Copyright Act.

19.6 Sundaresh Menon CJ, delivering the unanimous judgment of the court, observed, “copyright protects not ideas, facts or data, but the expression thereof” [emphasis in original] and if “a compilation of facts, specifically a selection or arrangement of the facts, was original [then it] could, as such, conceivably be eligible for copyright protection, though the protection conferred would be ‘thin’” [emphasis in original].9 Menon CJ also clarified that one must focus on the “nexus between the originality, skill and effort that goes into a work, and the substantiality of copying required to establish infringement” and that “although copyright may subsist in a work as a whole, there would be no infringement of such copyright unless one copies the work as a whole, or

a substantial portion of the part of the work that attracts copyright protection in the first place” [emphasis in original].10

Whether copyright subsists in Global Yellow Pages' works

19.7 On the first issue of whether copyright subsists in GYP's works, the court held, “for copyright to subsist in any literary work, there must be an authorial creation that is causally connected with the engagement of the human intellect [that is,] the application of intellectual effort, creativity, or the exercise of mental labour, skill or judgment” [emphasis in original].11 In the context of compilations, the compiler must “exercise sufficient creativity in selecting or arranging the material within the compilation; and if the compiler does so, the resulting copyright will only protect the original expression in the form of the selection or arrangement of the material” [emphasis in original].12

19.8 The court agreed with Wei J's observation that there has been a noticeable retreat from the “sweat of the brow” approach that once dominated in the decisions of the Australian and English courts, and that contemporary approaches in Australia and Canada, when evaluating copyright subsistence, are placing the emphasis on the creativity that is directed towards the eventual expression. While the court held, “[in] the final analysis, it will be a question of fact and degree whether such acts and choices demonstrate sufficient intellectual effort and bear a sufficient causal nexus with the final work such that it attracts copyright”,13 it noted, “in every decision of which we are aware, the alphabetical arrangement of data has not crossed the threshold of creativity”.14

19.9 Regarding the argument that the courts should step in to deal with “free-riding”, or the appropriation of data or facts that represents the fruit of an investment, Menon CJ15 commented, “even if one might frown on the commercial immorality underlying such conduct, this is simply not within the purview of copyright law. Instead, this is more

properly the province of a sui generis database right, which has been recognised in the European Union but not in Singapore”. Menon CJ concluded that it was not the function of the Judiciary to supplant the Legislature, as GYP attempted to persuade the court to do, by adopting a lower standard of creativity in the case of factual compilations.16 This point was previously made in David Tan, “Copyright in Compilations: Embarking on a Renewed Quest for the Human Author and the Creative Spark”:17

If one takes the view that the substantial investments involved in the preparatory efforts for compilations and databases should be protected, then the solution lies in enacting legislation similar to the European Council Database Directive 96/9/EC that grants sui generis database rights and not in lowering the originality requirement for copyright subsistence.

19.10 Menon CJ agreed with Wei J that copyright did not subsist in the listings arranged within each classification,18 and that copyright cannot subsist in the BL by virtue of the selection of its contents, as that lacked creativity. However, the court agreed with GYP's contention that the arrangement of the BL's contents exhibited sufficient creativity. The court was of the view that “the sorting rules (taken in their entirety) are neither entirely obvious nor inevitable [but the] other rules taken together would, in our judgment, cross the creativity threshold but just barely”.19 As a consequence, the resulting copyright protection is “extremely thin”, and the court set an extremely high bar for a finding of infringement – it could only be established by “nothing less than near-wholesale taking of the BL listings, arranged exactly as they were in the BL” [emphasis in original].20

19.11 Regarding the seeds, the court held that copyright cannot subsist in a seed as it is not a literary work and that courts are generally reluctant to cloak short works with copyright protection. Moreover, a seed certainly does not provide “information, pleasure or instruction”, which is the purpose of a literary work.21

Whether copyright subsists in Global Yellow Pages' works, if any, was prima facie infringed by Promedia...