Novell, Inc. v Ong Seow Pheng and Others and other actions

• Jurisdiction: Singapore
• Judgment Date: 21 September 1993
• Date: 21 September 1993
• Docket Number: Suits Nos 2352, 2310 and 2311 of
• Court: High Court (Singapore)

Novell, Inc

Plaintiff

and

Ong Seow Pheng and others and other actions

Defendant

[1993] SGHC 218

P Coomaraswamy J

Suits Nos 2352, 2310 and 2311 of 1991

High Court

Copyright–Infringement–Summary judgment for breach of copyrights in software and computer manuals–Whether software purchased by defendant merely for purpose of re-sale–Whether appropriate case for award of additional damages–Copyright–Subject matter–Work published in United States of America prior to enactment of Copyright Act 1987 (Act 2 of 1987)–Whether copyright protection enjoyed in Singapore

The three cases were brought by software companies seeking summary judgment for breach of their respective copyrights in software and manuals produced and marketed by them. These applications were heard on the same day. All three applications arose out of a raid made by private investigators and the police on the first and second defendants' home on 28 October 1991. During the raid, a large variety of unlicensed copies of software and computer manuals were found. The second defendant was the wife of the first defendant. The third defendant was the brother of the first defendant. The plaintiffs' computer programmes and manuals were first published in the United States of America. Counsel for the defendants sought to contend that all the plaintiffs' work that had been published prior to the enactment of the Copyright Act 1987 (Act 2 of 1987) (“the Act”) did not enjoy copyright protection and that the Act provided two barriers to copyright protection in Singapore where pre-1987 works are concerned: (a) s 210 (1) of the Act which provided that copyright must subsist in such works under the Copyright Act 1911 (“the 1911 Act”) immediately before 10 April 1987; and (b) s 211 (2) which modified s 27 (2) of the Act by providing that such works must first be published in Singapore or in a country to which the 1911 Act extended. Apart from this preliminary point, the defence was on the basis that the first defendant purchased software merely for the purposes of resale; it was the first defendant's evidence that he purchased the originals at a discount and then sold on, the profits being the difference in the two prices.

Held, allowing the plaintiffs' application:

(1) The defendants' contention that all the plaintiffs' work that had been published prior to the enactment of the Act did not enjoy copyright protection had been vitiated by the defendants' pleadings which amounted to a clear admission of the copyright protection enjoyed by the plaintiffs' work. The principle that parties were bound by their pleadings was an age-old one and had been reiterated time and again by the Court of Appeal: at [5], [6] and [7].

(2) Upon an ordinary reading of s 211 (2) of the Act, its function was not to limit the type of works that s 27 (2) catered for but to relax the “if, but only if” conditions that the works must meet for cases concerning pre-1987 works: it extended protection to countries provided for by the 1911 Act by widening sub-s (c), and it excised the necessity of compliance with sub-ss (d) and (e) of s 27 (2). It was in this light that the Copyright (International Protection) Regulations 1987 (S 110/1987) must be looked at. Regulation 3 accorded publication in the specified countries the same status as first publication in Singapore and the clear intent of s 211 (2) was to deal with works covered by s 27 (2) but published before 1987. Thus, the function of s 211 (2) in regard to works protected by the regulations was to eliminate the necessity of compliance with sub-ss (d) and (e) of s 27 (2) where the works were pre-1987. Section 210 and reg 6 then provided the second barrier. It followed then that reg 6 did not apply to s 211 (2) because it did not need to. The task of s 211 (2) was not to reconsider that which was dealt with by s 210 but to modify s 27 (2) which was dealt with by reg 3: at [13], [14] and [15].

(3) This was an appropriate case for the award of additional damages. The defendants had displayed a calculated disregard of the plaintiffs' rights in their highly profitable pursuit of pecuniary benefit. More importantly, their products were exact copies of the plaintiffs' but at far lower prices: this rendered the plaintiffs' products extremely unattractive to the ordinary consumer and other retailers. Further, owing to the fact that they sometimes managed to sell their unlicensed copies even before the authorised copies came onto the local and regional market, they had also cornered that portion of the market that wanted the latest software and manuals. The plaintiffs had suffered additional loss that was difficult to compensate; thus an inquiry as to such additional damages as may be appropriate was necessary: at [35].

Copyright Act 1987 (Act 2 of 1987)

Copyright Act (Cap 63, 1988 Rev Ed) ss 27 (2), 119 (4), 120, 210 (1), 211 (2)

Copyright (International Protection) Regulations 1987 (S 110/1987) regs 3, 6

M Ravindran (Chan & Ravindran) for the plaintiffs in Suits 2352/1991 and 2310/1991

Bryan Ghows and Stuart Ong (Khattar Wong & Partners) for the plaintiffs in Suit 2311/1991

Genevieve Tan (Allen & Gledhill) for the defendants in all three suits.

Judgment reserved.

P Coomaraswamy J

1 The three cases are brought by software companies seeking summary judgment for breach of their respective copyrights in software and manuals produced and marketed by them. These applications were heard on the same day.

2 All three applications arise out of a raid made by private investigators and the police on the first and second defendants' home on 28 October 1991. During the raid a large variety of unlicensed copies of software and computer manuals were found. The second defendant is the wife of the first defendant. The third defendant is the brother of the first defendant.

3 Ishall deal with each case in turn.

Suit No 2311 of 1991

4 The plaintiffs' computer programmes and manuals were first published in the United States of America.

5 Before me, counsel for the defendants sought to contend that all the plaintiffs' work that had been published prior to the enactment of the Copyright Act 1987 (“the Act”) did not enjoy copyright protection.

6 As pointed out by counsel for the plaintiffs, this approach has been vitiated by the defendants' pleadings. Paragraph 2 of the defence states:

Save that computer programs and instruction manuals first published in the United States of America prior to 10 April 1987 are deemed to have been made or first published in Singapore under the Imperial Copyright Act 1911 by virtue of ss 210, 211 and 239 of the Copyright Act (Cap 63) and the Copyright (International Protection) Regs 1987 and enjoy copyright protection under the Copyright Act (Cap 63), the matters pleaded in para 5 of the statement of claim are not within the knowledge of the first, second and third defendants.

7 It can be seen that in effect counsel was seeking to renege upon what amounted to a clear admission made in the defence. The principle that parties are bound by their pleadings is an age-old one and has been reiterated time and again by the Court of Appeal.

8 In any event I find no merit in the substantive issue. Section 27 (2) of the Copyright Act (Cap 63) specifies the conditions necessary for copyright to subsist in a work. It states:

Subject to the provisions of this Act, where an original literary, dramatic, musical or artistic work has been published

1. (a) copyright shall subsist in the work; or

2. (b) if copyright in the work subsisted immediately before its first publication, copyright shall continue to subsist in the work,

if, but only if –

1. (c) the first publication of the work took place in Singapore; …

9 As correctly pointed out by counsel for the defendants, where copyright subsists in work prior to the 1987 Act, s 210 and s 211 (2) of the Act [1988 Rev Ed] come into play. Section 211 (2) modifies s 27 (2):

Section 27 (2) shall apply to works first published before 10th April 1987 –

1. (a) as if each reference in paragraph (c) of that subsection to Singapore included a reference to a country to which the Copyright Act 1911 extended; and

2. (b) as if paragraphs (d) and (e) of that subsection were omitted.

10 Section 210 (1) of the Act [1988 Rev Ed] then exists as a second barrier limiting the scope of works protected by copyright. It states:

Notwithstanding anything in Part III, copyright shall not subsist by virtue...