JPG Enterprise Pte Ltd v Hairspec Private Limited

JudgeVince Gui
Judgment Date14 January 2020
Neutral Citation[2020] SGDC 12
CourtDistrict Court (Singapore)
Docket NumberDistrict Court Summons No 3066 of 2019 in District Court Suit No 1441 of 2019
Published date13 March 2020
Hearing Date29 October 2019,22 November 2019
Plaintiff CounselArivanantham s\o Krishnan and Chong Yew Meng Luke (Ari Goh & Partners)
Defendant CounselTan Teck San Kelvin and Choy Wai Kit Victor (Drew & Napier LLC)
Subject MatterCivil Procedure,Pleadings,Striking out,Whether supporting evidence required to resist striking out application,Copyright,Subject matter,Literary works,Whether advertisement lacks originality,Whether work too short to warrant copyright protection,Subsistence of copyright,Whether prior publications preclude copyright protection,Evidence,Proof of Evidence,Proving historical contents of webpage
Citation[2020] SGDC 12
Deputy Registrar Vince Gui: Introduction

This action arose from a dispute between two competing hair salons offering hair replacement services. The Plaintiff, JPG Enterprise Pte Ltd, sued the Defendant, Hairspec Private Limited, for copyright infringement. The Plaintiff alleged that the Defendant had unlawfully reproduced an advertorial write-up authored by the Plaintiff. The Defendant brought this application to strike out the Plaintiff’s claim on the basis that the write-up lacked the requisite originality to warrant copyright protection. After hearing parties, I dismissed the application on the basis that there were triable issues. The Defendant has appealed against my decision. I now deliver the written grounds of my decision, beginning with a brief summary of the facts.

Background facts

Both parties used the same write-up to promote and advertise a hair replacement service on their respective websites. The Plaintiff’s write-up reads:1

Our unique and revolutionary hair system is undetectable and the latest in hair loss solutions. It consists of human hair that has been implanted into a micro-thin layer of artificial skin. We then gently bond this artificial skin with the implanted hair onto your scalp. The whole procedure is pain-free, non-surgical and takes less than 90 minutes.

An identically worded write-up was published on the Defendant’s website, save that the phrase “90 mins” reads “60 mins”.2 For ease of reference, I shall refer to the write-ups published on the Plaintiff’s and the Defendant’s website as the “Plaintiff’s Advertisement” and “Defendant’s Advertisement”.

The hair replacement service essentially entails the implantation of hair onto the customer’s scalp. The salient features of the treatment process was described as follows:3 First, the salon would assess the customer’s scalp and hair to determine, amongst others, its colour, texture and thickness. Next, the salon would match the customer’s hair to a list of available toupees. The toupee, unlike regular toupee, is made up of human hair that is implanted onto a film which serves as a layer of artificial human skin. Once a suitable toupee has been selected, the salon would bond the artificial skin onto the customer’s scalp. The salon would then trim the hair from the toupee to a length and style that suits the customer’s preference. The entire treatment process takes around 60 to 90 minutes to complete.

The Plaintiff claims that it was the original author of the Plaintiff’s Advertisement. Its pleaded case is that the Plaintiff’s Advertisement was drafted, selected and arranged by its director through his skill, labour and independent judgment, and was first published on its website in or around May 2015.4 According to the Defendant, the Defendant’s Advertisement was first published in or around March or April 2017.5 Upon discovering that the Defendant’s Advertisement was a replica of the Plaintiff’s Advertisement, the Plaintiff commenced this action for copyright infringement.

Parties’ submissions

The Defendant’s striking out application was initially brought under all four limbs of O 18 r 19(1)(a)-(d) of the Rules of Court (Cap 322, R5, 2014 Rev Ed) (“ROC”). At the hearing, counsel for the Defendant, Mr Victor Choy (“Mr Choy”) clarified that the submissions would focus on O 18 r 19(1)(a) and (b), namely, that the pleadings disclose no reasonable cause of action, and alternatively, that the claim was plainly and obviously unsustainable. The central premise of the Defendant’s submission was the Plaintiff’s Advertisement does not fulfil the requirement of originality for the following reasons: the Plaintiff’s Advertisement was preceded by at least four identically worded works. The prior works were published in 2014 – about one year prior to the publication of the Plaintiff’s Advertisement;6 the Plaintiff’s Advertisement is nothing more than a description of its hair treatment process;7 the Plaintiff’s Advertisement does not pass the de minimis threshold required to warrant copyright protection;8 and the Plaintiff has not produced any supporting evidence to show that it is the original author of the Plaintiff’s Advertisement.9

In its written submissions, the Plaintiff argued that originality does not equate to a finding of novelty.10 At the hearing, counsel for the Plaintiff, Mr Arivanantham s\o Krishnan (“Mr Arivanantham”) argued that the question of originality was not suitable for summary determination. In this regard, he argued that striking out its claim now would deny the Plaintiff the opportunity to cross-examine the authors of the prior works cited by the Defendant, which could shed light on whether those prior works themselves could possibly warrant copyright protection. In addition, he put the Defendant to strict proof of the authenticity of the prior works. He sought to distinguish the Plaintiff’s Advertisement from short, descriptive phrases found by courts to have fallen short of the threshold of originality. He further argued that the affidavit averment on authorship made by the Plaintiff’s director is sufficient to resist a striking out application.

General legal principles on striking out applications

The power to strike out pleadings is a draconian one which should not be exercised unless the claim is wholly devoid of merit (Lim Eng Hock Peter v Lin Jian Wei and another [2008] 4 SLR(R) 444 at [23]; see also Lakshmi Anil Salgaocar v Vivek Sudarshan Khabya [2017] 4 SLR 1124 at [38]). The threshold that the applicant has to meet is a high one – the claim must be not just improbable but impossible (Koh Kim Teck v Credit Suisse AG, Singapore Branch [2015] SGHC 52 at [21]; Lim Kok Lian v Lee Patricia and another [2014] SGHC 272 at [12]). To resist a striking out application, all the respondent needs to show is that there are triable issues of fact and law (Qroi Ltd v Pascoe, Ian and another [2019] SGHC 36 at [6]). The mere fact that the case is weak and is not likely to succeed is no ground for striking it out (Gabriel Peter & Partners v Wee Chong Jin [1997] 3 SLR(R) 649 (“Gabriel Peter”) at [21]).

To strike out a claim under O 18 r 19(1)(a), the applicant must show that the pleadings themselves (i.e. without reference to affidavit evidence) fail to disclose a reasonable cause of action.

To strike out a claim under O 18 r 19(1)(b), the applicant must show that the claim is either legally or factually unsustainable. These concepts were explained in The “Bunga Melati 5” [2012] 4 SLR 546 (“The Bunga Melati 5”) at [39] to mean as follows: A claim would be legally unsustainable if the remedy sought would not be granted even if the claimant succeeds in proving all the facts that he seeks to prove. A claim would be factually unsustainable if it can be said with confidence before trial that the factual basis of the claim is “fanciful” because it is “entirely without substance”.

General legal principles on copyright protection

Originality is the touchstone of copyright. Copyright protection may only be conferred upon “original” works. To qualify as an original work, the claimant has to establish two key matters: first, the work had originated from him without copying; and second, the work was sufficiently creative or required sufficient skill and judgment in its creation. The precise quantum of creativity, skill and judgment required is a fact-specific inquiry to be determined on a case-by-case basis. That said, the level of creativity required is “extremely low” and that the work need not be “inventive” or “novel”. (Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381 (“Asia Pacific Publishing”) at [20]-[33]; Global Yellow Pages Ltd v Promedia Directories Pte Ltd and another matter [2017] 2 SLR 185 (“Global Yellow Pages (CA)”) at [24]; Auvi Pte Ltd v Seah Siew Tee and another [1991] 2 SLR(R) 786 (“Auvi”) at [32]).

With the general principles in mind, I turn to address each of the Defendant’s contentions in sequence.

Discussion Do the prior publications preclude copyright protection?

The Defendant relied on prior publications to defeat the Plaintiff’s claim of originality. In this regard, the Defendant exhibited copies of at least four (4) identically worded write-ups on the internet used by hair salons, manufacturers or suppliers to describe, market or advertise what appears to be the same treatment offered by the Plaintiff and the Defendant. The four write-ups were purportedly published within the period of one year prior to the publication of the Plaintiff’s Advertisement.

To my mind, two issues emerge for consideration. Does the mere existence of a prior publication preclude an author of a subsequent publication from asserting copyright? If not, are prior publications nevertheless relevant to the assessment of originality?

Originality does not mean novelty

In my view, the starting point of the analysis should be that a prior publication does not ipso facto preclude copyright protection. It would be evident that the twin requirements of originality set out at [11] above do not go as far as to require the claimant to prove that he was the first in time to produce the work. To impose such a requirement would be tantamount to elevating the requirement of originality to mean “novelty” or “inventiveness” – definitions which courts have repeatedly rejected (see [24] below). As stated above (at [11]), copyright law does not require the expression to be in original or novel form. The word “original” does not bear its dictionary meaning of “first or earliest, fresh and unusual, able to think of or carry out new ideas or concepts” or “the first and genuine form of something, from which others are copied” (see Susanna H S Leong, Intellectual Property Law of Singapore (Academy Publishing, 2013) at [03.036]). It follows from this that two authors of identical works may each be entitled to assert copyright over...

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