NEW LAW FOR COMPILATIONS AND DATABASES IN SINGAPORE?

• Citation: (2012) 24 SAcLJ 745
• Author: TAN Tee Jim SC LLB (University of Singapore), LLM (London); Advocate and Solicitor (Singapore); Senior Partner, Lee & Lee, Singapore.
• Published date: 01 December 2012
• Date: 01 December 2012

A literary work is accorded protection under section 27 of the Copyright Act only if it is “original”. This simply means that the work must originate from the author, in the sense that he has expended “skill, judgment and labour” in coming up with the work. In determining whether there is such an expenditure, the courts traditionally would also take into account the preparatory efforts (such as obtaining, gathering and collecting facts) prior to expressing and presenting the facts in the work. There is now doubt as to whether the “skill, judgment and labour” involved in such efforts should be taken into account. This issue has impact on the protection of compilations and databases in Singapore.

I. Introduction

1 Singapore's copyright law has largely conformed to the prescription that a literary work is accorded copyright protection only if its author has exercised “skill, judgment and labour”1 or has exuded “sweat of the brow” in creating the work. Such efforts bestow upon the work the characteristic of “originality”, a statutory requirement of the Copyright Act2 (hereinafter the “Act”). The requirement is not particularly onerous – the work must simply originate from the author and not be copied by him from another source.3 Nor is there a demand

that the work must be novel, inventive or of a particular literary or artistic merit. The result is that there is copyright coverage for many kinds of literary works, however banal, pedestrian or uninspiring. These include compilations of mundane factual information expressed in words and figures.

2 However, there is now doubt in Singapore as to the sustainability of th prescription in relation to such compilations. An implicit invitation has also been extended to reconsider the law in this regard. In the recent Court of Appeal case of Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd4 (“Pioneers & Leaders”), V K Rajah JA, who delivered the judgment of the court, noted that the compilation cases where copyright was granted on the basis of the “time, labour and effort” involved were predominantly decided in the early 19th century to the early 20th century, before computer usage became a part of everyday life. This led him to state:5

With the proliferation of computers and the ready availability of software, the law on copyright ought also to evolve to take into account the ease and convenience that computers bring to the process of compiling in the 21st century. Tediously painstaking works when done manually, such as the tabulation of tables, or broadcasting programmes, are now effortlessly completed with the touch of a computer key or two, without much exertion or skill being called for. Older decisions that had focussed on the gathering of information as the touchstone rather than the productive effort involved in expression may therefore require reconsideration one day.

3 Indeed, with advances in communications, storage and retrieval technologies, compilations of factual information and other data, which were traditionally expressed in print or writing, can now be expressed and printed electronically.6 Such technologies have enabled compilations of factual information relating to financial news, stock market prices, weather, travel habits and customer preferences to become easily accessible through the Internet, computer programs,

smartphones and other electronic devices. Such databases have become products of great commercial value and social utility and are instrumental in the growth of electronic commerce and the emergence of new markets such as the electronic publishing and online information provision markets. Additionally, due to the ability of digital technologies to track purchasing and web-browsing habits, new industries such as data mining and customer profiling by database makers and producers have emerged. Consequently, the economic importance of compilations and databases is poised to increase exponentially in this century.7

4 The technological advances have also brought along in their wake adverse side effects. Specifically, they have enabled ease of accessing, copying and dissemination of compilations and information by infringers and other interlopers. Modern digital and scanning capabilities can easily – with the stroke of a key and at a fraction of the cost – negate considerable entrepreneurial effort and investment by database makers or producers in obtaining, gathering, collecting and compiling information and other data in compilations and databases. The need for proper and effective protection of compilations and databases is therefore imperative.8

5 However, the nature and extent of the legal protection of compilations and databases necessarily involve finding a balance between two conflicting societal goals: the goal of providing adequate incentives for their continued production by database makers or producers, and that of ensuring adequate access by the public to the information and data contained in compilations and databases. This is a classic policy, an economic and legal dilemma that afflicts, as well as informs, much of intellectual property (“IP”) law generally. Finding the proper balance in the context of compilations and databases has taken a

new urgency in light of the technological advances in this digital age, as well as the noticeable shift from the “sweat of the brow” standard9 for copyright protection of literary works. The shift was precipitated by two significant developments: the decision of the US Supreme Court in 1991 in Feist Publications Inc v Rural Telephone Service Co Inc10 (“Feist”) and the introduction by the European Community in 1996 of a two-tier system of database copyright and sui generis database right for protecting compilations and databases.

6 The thesis of this article is that the two conflicting societal goals and interests in Singapore can be served by protecting the preparatory efforts of obtaining, gathering and collecting the information (the “preparatory efforts”) prior to expressing or presenting them in the compilations and databases through a new form of IP right, which is similar to the sui generis database right in the European Community. Such an approach would also align the meaning of the term “intellectual creation” in section 7A of the Act11 with the emerging trend in other common law jurisdictions, which seem to be discarding the “sweat of the brow” standard of copyright protection for compilations and databases. This new legal scenario would ensure that the preparatory efforts will continue to be rewarded, as they have been under the “sweat of the brow” standard for the past two centuries in common law jurisdictions. Without such reward, there would be an undesirable failing in our law to protect database makers or producers, who perform important and useful preparatory efforts in the creation of compilations and databases. Such efforts are important and useful because they significantly contribute to the two main attractive features of compilations and databases, namely, their comprehensiveness and accuracy. The new legal scenario should also preserve the incentives for the continued production of compilations and databases by their makers or producers, whilst providing optimal availability of, and access to, the information and data they contain to the public in Singapore.

7 In this article, Part II explores the current landscape regarding copyright protection provided by the Act for original literary works (which include compilations) and, in particular, the meaning attributed to the word “original”. It will be noticed that much of that landscape is drawn from English and Australian decisions. This is unsurprising because the Act is similar to its English and Australian progenitors. Part III will review at some length the Feist case in the US, and two recent Australian decisions (namely, IceTV Pty Ltd v Nine Network Australia Pty Ltd12 (“IceTV”) in the High Court and Telstra Corp Ltd v Phone Directories Co Pty Ltd13 (“Telstra”) in the Full Federal Court) that seem to mark the drift from the “sweat of the brow” standard in both jurisdictions to one approaching the “creative spark” doctrine or standard prevailing in the civil law systems. Here, the author makes the important point that the decision in Feist is, in fact, a narrow one, being limited to compilations (namely, white pages telephone directories) in which the level of creativity was found by the court to be “virtually non-existent”,14 and that the decision was largely driven by the constitutional mandate “[t]o promote the Progress of Science and Useful Arts”.15 I shall also draw attention to the fact that the two Australian decisions were concerned with the question of whether the skill, judgment and labour expended by a human author in creating a compilation involved independent intellectual effort and were directed at the originality of the particular form of expression in the compilation, noting the courts' stance that there are policy issues involved here that are better left to the legislature to consider and decide as regards the protection of preparatory efforts. Part III also reviews two aspects of the Pioneers & Leaders decision, which seem to indicate that the premises for protecting compilations and databases under our copyright law are to be altered, with a conclusion that that would leave an undesirable gap in the protection of compilations and databases in Singapore.

8 Part IV of the article will examine the contours of the European Community's unique two-tier system of protecting compilations and databases under database copyright as well as sui generis database right. There will then be a brief review in Part V of the other possible modes of protection as well as their inherent and practical difficulties. Part VI evaluates the experience and impact of the two-tier system in the European Community as disclosed in its evaluation report of December 2005. The article...