Intellectual Property Law

AuthorDavid TAN BCom (Melbourne), LLB (Hons), LLM (Harvard), PhD (Melbourne); Dean's Chair; Associate Professor; Vice Dean (Academic Affairs), Faculty of Law, National University of Singapore. Stanley LAI Tze Chang SC LLB (Hons) (Leicester), LLM (Cantab), PhD (Cantab); Barrister at Law (Lincoln's Inn); Advocate & Solicitor (Singapore).
Publication year2016
Date01 December 2016
Citation(2016) 17 SAL Ann Rev 504
Published date01 December 2016
Copyright
Copyright in compilation works

19.1 Copyright demands originality, and accordingly, copyright protection extends only to those components of a work that are original to the author. 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. More than two decades ago, the US Supreme Court made a landmark ruling in Feist Publications Inc v Rural Telephone Service Co Inc1 (“Feist”) that rejected the “sweat of the brow” doctrine, and held that a factual compilation may receive copyright protection only if it features “an original selection or arrangement”.2 In Global Yellow Pages Ltd v Promedia Directories Pte Ltd3 (“Global Yellow Pages”), the High Court finally had the opportunity to consider the applicability of Feist to Singapore when deciding whether copyright subsisted in the plaintiff's telephone directories. The evidence was heard over 23 days, and the statement of claim was amended six times.

19.2 In a judgment that spanned 122 pages in the Singapore Law Reports, George Wei J engaged in a comprehensive exegesis of the US,4 Australian,5 Canadian,6 English,7 and Singapore8 case law, and

concluded that “not only is the creativity standard required by the Copyright Act [in Singapore] and the authorities, it also rests on firm policy considerations”.9

19.3 The plaintiff – Global Yellow Pages Limited (“Global Yellow Pages”) – and the defendant – Promedia Directories Pte Ltd (“Promedia Directories”) – both produced telephone directories. The plaintiff alleged that Promedia Directories 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”. Global Yellow Pages alleged that Promedia Directories infringed its copyright by, amongst other things, copying and referencing the listings and classifications in its directories. The defendant published “The Green Book Industrial and Commercial Guide” and “The Green Book Commercial and Consumer Guide” until 2007, when these two directories were merged and renamed “The Green Book Industrial and Commercial Guide”. The defendant also produced a digital directory which would be published as a CD-Rom, and maintained an online directory at the URL, http://www.thegreenbook.com.

19.4 The central issue was whether Global Yellow Pages' directories were protected by copyright, and if so, what the scope of that protection was. The works in suit comprised editions of the plaintiff's “Business Listings”, which was a white pages directory, the plaintiff's “Yellow Pages Business” and “Yellow Pages Consumer”, which were classified yellow pages directories, and the plaintiff's online directory. The listings in the Business Listings were arranged in alphabetical order with no classification or categorisation. The listings in the “Yellow Pages” 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.

19.5 The plaintiff claimed that copyright subsisted in three broad categories of works:10

(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 …

(c) … the ‘enhanced data’ found in the plaintiff's directories.

“Seeds” were false listings which Global Yellow Pages deliberately introduced into its directories to detect copying. These listings comprised a fictitious company or person which bore the plaintiff's registered or post-office box address. The plaintiff claimed that each individual seed was itself a compilation that constituted an intellectual creation. “Enhanced data” referred to the individual listings in the plaintiff's directories (that is, business names, addresses, profiles, telephone or fax numbers, website URLs, and other additional information). The data was said to be “enhanced” because the listings appeared in the plaintiff's directories in their final form only after they had been verified, embellished, arranged, and classified.

19.6 These works were argued to be protected by copyright as compilations, by reason of the selection or arrangement of their contents. The plaintiff alleged that the defendant infringed its copyright by copying or referencing the listings in its directories. The defendant denied copying. It had published The Green Book since 1980 and had built up its own database of listings since then. It argued that telephone directories, which are fact-based, will inevitably be similar in content. Further, it argued there is no copyright in facts, and “similarity in content is not the same as similarity in expression.” The defendant admitted that seeds were found in its online directory and The Green Book CD-ROM, but stated that this was “negligible and minimal and therefore [did] not amount to substantial copying”.11

19.7 Wei J held that copyright subsisted only in the Yellow Pages directories as a whole (the compilation including the front matter, introductory material, special segments, and classified listings), the Business Listings as a whole (the compilation including introductory material, various segments and the actual subscriber listings) and 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.12

19.8 It was held that copyright did not subsist in: the individual listings in the Yellow Pages and Business Listings; the listings selected and arranged within each classification, or the individual classifications

themselves, in both the Yellow Pages and Business Listings; or each individual seed in the online directory.

19.9 In summary, for a compilation to be protected by copyright under s 27(2) of the Singapore Copyright Act13 (“SCA”), the compiler must satisfy the requirement of “intellectual creation” under s 7A(2) by exercising sufficient creativity or intellectual effort in the selection or arrangement of the material or data within the compilation. Moreover, the copyright protection “only extends to the original expression in the form of the selection or arrangement of data or material” and not “to the composite parts of the compilation, namely the facts or data contained therein”.14 The plaintiff was also held liable for groundless threat of copyright infringement under s 200 of the SCA. In the absence of clear binding authority on the position of industrious collection and creativity in determining copyright subsistence in Singapore, the threats made by the plaintiff were overbroad and unjustified.

Applicability of Feist and US case law in Singapore

19.10 In respect of compilation works, it is clear from ss 4, 7A, and 27(2) of the SCA – read collectively – that copyright can only subsist if: an author can be identified; and any copyright subsisting is limited to the selection or arrangement of its contents which constitutes an intellectual creation. Wei J emphasised that if copyright were to subsist in compilation works at all, it would not extend to the individual components of the compilation.15 His Honour cautioned that in a factual compilation, “the facts are necessarily bound up with and implicated in the form of expression. It becomes less clear where the expression stops and the facts begin.”16 Future litigants arguing copyright subsistence in compilations may wish to note the focus on the requirement of creativity as expressed by Wei J:17

[F]or many compilations, the lion's share of the work, effort and expense will be connected with the discovery of facts or the creation of facts which are then selected and arranged. The degree of effort required in selecting and arranging the facts can also vary considerably. … Once the ‘macro’ decision is made, the comprehensiveness of the collection is often (but not always) the aim; not selection. The same is also true of arrangement and presentation … the bigger the data set, the more important it will be to ensure that the individual pieces of information are presented in a user friendly and accessible manner. Whilst there may be creative ways of arranging

facts to achieve that goal, often times, the facts will be arranged and presented in an obvious manner or by means of use of well-known methods or standards.

19.11 The US Supreme Court had emphasised that the primary objective of copyright is not to reward the labour of authors, but to advance the progress of science and art,18 and concluded that while this may appear unfair or unfortunate to those who have expended much resources to collect and compile data, ultimately “copyright rewards originality, not effort”.19 As a result of Feist, a preponderance of decisions, especially at the US Circuit Court level, have found factual compilations – for example, those which employ formats of compilations like telephone directories20 and horse racing guides,21 which are not different from the convention in the industry – to be lacking in originality and, therefore, incapable of attracting copyright protection.

19.12 However, the definition of the term “intellectual creation” has not been settled in Singapore law. While noting that Singapore is not bound by the US Supreme Court's decision in Feist, Wei J found that the creativity standard in Feist is “entirely consistent with the Berne Convention, TRIPS and the language of s 7A [of the SCA]”.22 Moreover, Wei J observed that the Singapore Court of...

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