Intellectual Property Law

• Author: David TAN PhD (Melbourne), LLM (Harvard), LLB (Hons), BCom (Melbourne); Professor, Faculty of Law, National University of Singapore; Head (Intellectual Property), EW Barker Centre for Law & Business. Susanna H S LEONG LLM (London), LLB (Hons) (National University of Singapore); Advocate and Solicitor (Singapore); Professor and Vice Provost (Lifelong Education), National University of Singapore.
• Publication year: 2021
• Citation: (2021) 22 SAL Ann Rev 567
• Date: 01 December 2021

I. Copyright

A. Composers and Authors Society of Singapore Ltd v Fox Networks Group Singapore Pte Ltd— Copyright Infringement — Standing to sue — Meaning of “broadcast” — Test for communicating the work to the public

20.1 The decision of Composers and Authors Society of Singapore Ltd v Fox Networks Group Singapore Pte Ltd1 was handed down in October 2021 by Dedar Singh Gill J. The plaintiff, Composers and Authors Society of Singapore (“COMPASS”), is a collecting society which administers the rights of public performance, broadcast, diffusion and reproduction in music and musical associated literary works on behalf of its members. The defendant, Fox Networks Group Singapore Pte Ltd (“Fox”), is a regional broadcasting company based and operating in Singapore. It programmes, operates and provides to its authorised, independent content distributors (“Distributors”) subscription pay television channels in an encrypted format (“the Encrypted Channels”) accessible only by the Distributors. There are only two Distributors located in Singapore — Singtel and Starhub. Only one Encrypted Channel is transmitted by the defendant via satellite to the Distributors in Singapore — Fox Sports 3. The other Distributors are located outside Singapore. The Distributors own, operate and manage their own television platforms. Members of the public in the country the Distributor operates in may subscribe to these television platforms.

20.2 COMPASS claimed that on or around 18 May 2014, Fox caused, allowed and/or authorised the uplinking of programmes (“the Disputed

Programmes”) by satellite transmission to third parties (including the Distributors and the end-users). According to COMPASS, the Disputed Programmes contained, comprised and/or featured musical works of owners represented by the plaintiff, and the defendant was alleged to have caused, allowed and/or authorised the communication to the public, performance in public and exploitation of musical works of owners represented by COMPASS without obtaining a licence from COMPASS. In particular, COMPASS alleged that there were six songs contained in the Disputed Programmes wherein its reciprocal agreements (“the Disputed Reciprocal Agreements”) with Performing Right Society Limited (“PRS”) and Australasian Performing Right Association Limited (“APRA”) made it the exclusive licensee of the performing rights in Singapore. It was on this basis that COMPASS claimed that it was an exclusive licensee and it had the same rights of action as the owners of the musical works under s 123 of the Copyright Act,2 thus acquiring the standing to sue.

20.3 In summary, Gill J's conclusion on primary infringement was as follows: COMPASS lacked standing. But even if the plaintiff had standing, Fox's satellite transmissions were not communicated to the public because the defendant's uplinking activities did not constitute broadcasting and did not make the works available in the manner statutorily defined. In the alternative, the works were not communicated to the “public” within the meaning of s 26(1)(b)(iv) of the Copyright Act.

(1) Primary infringement

20.4 According to Fox, s 25(1) of the Copyright Act confined a copyright owner's exclusive rights to the particular act or class of acts that his ownership rights were in respect of. Further, it argued that s 9(2) of the Copyright Act recognised that the right to do an act and authorise the same were distinct, and there was nothing in the Copyright Act suggesting that the latter encompassed the former.3

20.5 The court was of the view that there were two questions here to be resolved:4

(a) Whether the exclusive right to authorise the doing of an act in relation to a copyright work [(“Right of Authorisation”)] is separate and distinct from the doing of the act [(“Underlying Right”)] itself? … and

(b) Even if the first … is answered in the affirmative, whether being the owner or the exclusive licensee of the Right of Authorisation necessarily implies ownership of or an exclusive licence over the Underlying Right?

Gill J observed that copyright comprises “a bundle of legally enforceable exclusive rights in respect of certain types of products of ‘intellectual’ activity”,5 and that the Right of Authorisation and the Underlying Right are distinct. Section 25 of the Copyright Act does permit the Right of Authorisation to be severed from the parent Underlying Right, and nothing prevents a copyright owner from granting an exclusive licence in respect of the Right of Authorisation only.

20.6 Answering the first question in the affirmative, Gill J found the Australian authorities to be persuasive, commenting that:6

… the outcome in [the Australian High Court's decision of] Moorhouse corroborates Gummow J's analysis in WEA International that infringement of the Underlying Right and Right of Authorisation are separate causes of action rooted in breaches of distinct exclusive rights.

20.7 Regarding the second question, as Gill J had found the Right of Authorisation to be distinct and severable from its corresponding Underlying Right, in order for COMPASS to have standing in this suit, it had to be established that the plaintiff was the owner or an exclusive licensee of the Right of Authorisation who necessarily owned or was an exclusive licensee of the Underlying Right. It was held that “[c]lause 2(1) of the plaintiff's reciprocal agreement with PRS only permits the plaintiff to ‘authorise the public performance, broadcasting and inclusion in a cable programme of any work in the Repertoire of PRS’” and “Art 1(I) of the plaintiff's reciprocal agreement with APRA similarly only allows the plaintiff to ‘grant the necessary authorisations for all public performances … of musical works’” [emphasis added by the High Court].7 Gill J was of the view that s 25(1) makes clear that a partial assignment of exclusive

rights will only transfer ownership of the exclusive rights which are the subject of the assignment, and nothing more; moreover, “there is little commercial sense in finding that being an owner or exclusive licensee of the Right of Authorisation necessarily implies ownership of or a licence over the Underlying Right”.8 In summary, COMPASS was only licensed the Right of Authorisation by PRS and APRA, and was not the exclusive licensee of the right to communicate the Disputed Musical Works to the public or to perform these works in public. Therefore, it lacked standing to bring claims for primary infringement.

(2) Communication to the public under section 26(1)(a) of the Copyright Act

20.8 While Gill J's finding on lack of standing was sufficient to dispose of the claim, he proceeded to analyse whether uplinking activities constitute communication to the public under s 26(1)(a)(iv). Citing Susanna Leong's commentary,9 Gill J noted that Fox's activities fell within the meaning of point-to-point satellite transmissions (“PTP transmissions”) as the Encrypted Channels uplinked by the defendant were only downlinked to the Distributors.10 The Distributors were in turn then responsible for transmitting the defendant's channel(s) to their own subscribers.

20.9 In its exegesis of the history of the right to broadcast copyright works, the court noted that “[t]he right to communicate works to the public was enacted to bring Singapore's copyright framework in line with international standards, such as that in Article 8 of the World Intellectual Property Organisation's Copyright Treaty 1996”.11 Pertinently, at the second reading of the Copyright (Amendment) Bill 2004,12 then Deputy Prime Minister and Minister for Law, S Jayakumar, had said that the right to communicate works to the public “encompasses both the existing broadcasting and cable programme rights, and also the right to control the dissemination of works on the Internet” [emphasis added],13 which

meant that the former right of broadcasting was subsumed within the right of communication to the public.14 Gill J then concluded that:15

… uplinking signals to a satellite in the context of PTP transmissions does not constitute a broadcast and, therefore, a communication to the public under s 26(1)(a)(iv) of the Copyright Act. This is because a broadcast must objectively involve direct transmission to the general public or a part thereof.

20.10 The court opined that one interpretation of “broadcast” was that “the work must be transmitted directly to the general public or a part thereof” and another interpretation was that the plain meaning of “broadcast” “does not shut out the conceptual possibility of the PTP transmission being downlinked to numerous intermediate broadcasters which together form a part of the general public” [emphasis in original].16 In deciding which was the preferred interpretation, Gill J drew much reference from the relevant legislative developments in the UK, and what was significant was that the UK parliament deliberately opted not to expand the definition of “broadcasting” in the UK Copyright Act 195617 to include PTP transmissions.18 His Honour commented that Singapore had not enacted the equivalent of s 6 of the UK Copyright, Designs and Patents Act 1988;19 instead, having incorporated s 14(10) of the UK Copyright Act 1956, as amended by the UK Cable and Broadcasting Act 1984,20 into Singapore's Copyright Act 1987,21 “the UK's intention to exclude PTP transmissions from the ambit of ‘broadcasting’ in the Copyright Act 1956 (UK) was likely also imported” [emphasis in original].22 Hence, Gill J accepted the ordinary meaning of “broadcast” which requires the copyright work to be disseminated directly to the general public or a part thereof.

20.11 In response to the plaintiff's contentions, Gill J observed that s 6(1)(b) of the UK Copyright, Designs and Patents Act 1988 extended

the meaning of “broadcast” to PTP transmissions, but the fact that Singapore did not enact an equivalent of s 6(1)(b) pointed away from PTP transmissions being broadcast under...