Odex Pte Ltd v Pacific Internet Ltd

JurisdictionSingapore
JudgeWoo Bih Li J
Judgment Date07 March 2008
Neutral Citation[2008] SGHC 35
Docket NumberOriginating Summons No 159 of 2007 (Registrar's Appeal from the Subordinate Courts
Date07 March 2008
Year2008
Published date30 May 2008
Plaintiff CounselLau Kok Keng and Charissa Soh (Rajah & Tann)
Citation[2008] SGHC 35
Defendant CounselKoh Chia Ling and Arthur Yap (Alban Tay Mahtani & de Silva)
CourtHigh Court (Singapore)
Subject MatterInternet service provider,Whether sub-licensee or sub-agent of copyright owner having locus standi to apply,Interest of justice as a guide,Section 136 Copyright Act (Cap 63, 2006 Rev Ed),Copyright,Application for discovery to identify infringers,Infringement,Whether infringement was to obtain commercial advantage,Whether infringement was significant,Standard of proof required to succeed in application,Discovery of documents,Order 24 r 6(5) Rules of Court (Cap 322, R 5, 2006 Rev Ed),Whether such action statutorily criminalised,Downloading of material from the Internet without licence of copyright owner,Internet piracy,Civil Procedure

7 March 2008

Woo Bih Li J:

Background

1 In this matter, Odex Pte Ltd (“Odex”) applied for pre-action discovery of various documents from Pacific Internet Limited (“Pacific Internet”).

2 Odex is a private limited company in the business of providing foreign television programmes, in particular, various anime titles (i.e., cartoon animations originating from Japan) to local television stations for broadcasting, as well as distributing authorized copies of these programmes to retailers for sale to the public[note: 1].

3 Odex alleged that with the proliferation of internet piracy, facilitated by the technological ease of obtaining DVD quality movie files for free through broadband networks, Odex’s sales of anime video titles had begun to drop progressively and significantly, by more than 80%. Television stations also bought fewer anime titles from Odex as they were allegedly losing viewership to illegal downloaders[note: 2].

4 In late 2006, Odex engaged BayTSP.com Incorporated (“BayTSP”), an American company which is the developer and owner of patented technology that tracks instances of uploading/downloading of digital files on the internet in real time, and displays the Internet Protocol (“IP”) address of the relevant internet users, to provide Odex with an online tracking solution that would enable Odex to collect details relating to instances of unauthorized uploading and downloading of copies of the video titles[note: 3].

5 Odex alleged that it discovered through BayTSP’s tracking solution that there had been more than 474,000 unique downloads over an 11-month period, based on searches conducted on only 50 out of more than 400 authorized titles[note: 4]. Odex reported these findings to its Japanese principals, some of whom expressed dismay, in a letter (that was apparently prepared for each of them to sign) that “Singapore ranked number 10 in the world for total number of illegal downloads, and was ranked number 1 in the world for highest level of illegal downloads per capita of population”[note: 5]. Action in one form or another had to be taken to address this problem.

6 Odex said that it had approached the Intellectual Property Rights Branch (“IPRB”) of the Criminal Investigation Department to raid the homes of illegal downloaders but to no avail. According to Odex, the IPRB declined its request but advised Odex to carry out criminal enforcement through co-operative enforcement action – meaning that Odex had to gather evidence itself, apply for pre-action discovery, apply for search warrants and apply for a fiat from the Attorney-General and institute prosecution privately.

7 Odex had also approached the Intellectual Property Office of Singapore (“IPOS”) to develop a campaign to educate the public on online piracy. Odex was prepared to fund the project but wanted illegal downloaders to pay a small sum to charity as a penalty. However, IPOS decided not to embark on such a campaign as it felt that the timing was not right. Odex then initiated an education campaign targeted at five tertiary institutions in Singapore, as well as anime focus groups, at which the blithe responses garnered were along the lines of “catch me if you can” and “why buy when I can download for free and get away with it[note: 6]. The general attitude of these people was that they would not stop downloading even if they received a warning letter. At most, they would just lie low for a while and resume downloading when the coast was clear.

8 In these circumstances, Odex said it proceeded, as a last resort, to the courts. In doing so, it applied under O 24 r 6(5) of the Rules of Court for the pre-action discovery of documents from Pacific Internet, a public company and local internet service provider licensed under the Telecommunications Act (Cap 323, 2000 Rev Ed), in order to identify the downloaders in question.

9 Several affidavits were filed by Go Wei Ho (“Go”), Odex’s Managing Director, in support of this application. Paragraph 4 of Go’s first affidavit of 30 May 2007 asserted that Odex required discovery from Pacific Internet “to ascertain the proper party(ies) against whom Odex should commence legal proceedings in order to enforce and protect Odex’s rights and interests”.

10 Paragraph 7 of Go’s first affidavit asserted that Odex and the Anti-Video Piracy Association, Singapore (“AVPAS”), of which Go was the Vice-President, were at all material times authorised by “the relevant copyright owners and/or licensees to take all necessary steps to protect and enforce their respective copyrights subsisting in the cinematograph films comprised in more than 200 animation video titles, including but not limited to the 53 animation video titles” set out in a list (“the Video Titles”). Various documents purporting to be authorisation letters from the copyright owners and/or licensees were exhibited.

11 In his first affidavit, Go also explained that he had engaged BayTSP to provide Odex with an online tracking solution to track down and collect details of instances of uploading and downloading of copies of the Video Titles. The tracking solution allows tracking of uploading/downloading of digital files on the internet in real time and displays the IP address of each internet user who carries out such uploading/downloading. Go had used the tracking solution to track down instances of uploading/downloading of the Video Titles by internet users using the BitTorrent protocol to record details of each instance of uploading/downloading. Go also explained that the BitTorrent protocol works “by engaging its users in a “tit-for-tat” file sharing system. As each user downloads a file, he / she also uploads his / her BitTorrent files to the network for other users to download. Generally, the larger the amount of bandwidth is set for uploading, the faster the downloading process will be. Each BitTorrent user who downloads files using the BitTorrent protocol therefore also simultaneously uploads his / her downloaded files to other users.”[note: 7]

12 Between 29 January 2007 to 6 May 2007, Go operated the tracking solution continuously. He then sorted out the results and compiled a table setting out “some of the highest instances of downloading/uploading of the Video Titles” where the downloaders/uploaders (“the downloaders”) had IP addresses that were issued by Pacific Internet. Apparently, there were 981 of such addresses.

13 Go asserted in paragraph 20 of his first affidavit that “the unauthorised reproduction and/or communication to the public” by each of the downloaders constituted infringement of the copyright in the cinematograph films comprised of the Video Titles under s 103(a) (meaning actually s 103(1)) read with s 83 of the Copyright Act (Cap 63, 2006 Rev Ed) (Copyright Act”). He also believed that the wilful infringement of the Video Titles to a significant extent by any of the downloaders also constituted an offence under s 136(3A) of the Copyright Act.

14 In paragraph 24 of his first affidavit, Go asserted that Pacific Internet was not likely to be a party to subsequent proceedings.

15 Below, the district judge (‘the DJ”) was of the view that Odex did not have the locus standi to make the application for most of the Video Titles as Odex was a sub-licensee. Where Odex was the exclusive licensee of a Video Title, Odex had the locus standi but the DJ was of the view that Odex had to show an extremely strong prima facie case of wrongdoing before the order sought would be made in its favour. The DJ concluded that Odex had failed to establish such a case. Accordingly, he dismissed Odex’s application with costs.

16 Odex then filed an appeal against this decision. It also sought to introduce additional affidavit evidence on the locus standi point and to address the DJ’s concern about the lack of evidence to establish an extremely strong prima facie case, without accepting that the DJ had applied the correct standard of proof. I allowed the admission of such additional evidence.

Locus standi

17 As regards the DJ’s conclusion that Odex did not have the locus standi for most of the titles in question, the DJ said at [11 (a) to (d)]:

“11 The answer lies in the Plaintiff’s authority to act. The Plaintiff claimed they have authorization by the relevant copyright owners and/or licensees to make this application. 13 separate letters of authority were produced in GWH-2 in Go’s 1st affidavit.

(a) Out of these 13 letters, only 3 parties, namely Gonzo Digimation Holding (GDH), GDH K.K. (GDH KK) and Media International Corporation (MICO) directly appointed the Plaintiff to act for them. Common to GDH, GDH KK and MICO is the fact that they themselves are distributors appointed by undisclosed copyright owners (see pages 17, 35 and 41 of Go’s 1st affidavit).

(b) The other 10 letters of authorization were letters authorizing the Anti Video Piracy Association (Singapore) (AVPAS). These 10 letters were from the following parties:

(i) Toshiba Entertainment Inc dated 1 October 2006.

(ii) Dentsu Tec Inc 1 October 2006.

(iii) Sunrise Inc dated 17 October 2006.

(iv) TV Tokyo Medianet Inc 1 October 2006.

(v) King Record Co. Ltd dated 1 April 2007.

(vi) Yomiuri telecasting Corp. dated 25 January 2005.

(vii) Toei Animation Enterprises Limited dated 18 November 2006.

(viii) Kodansha Ltd dated 1 August 2006.

(ix) Geneon Entertainment Inc dated 1 March 2007.

(x) Kadokawa Pictures Inc dated 1 March 2007.

(c) By a 2nd affidavit at page 21, Go produced a letter by AVPAS dated 1 November 2004 signed by himself as the Vice-President of AVPAS. This letter purported to authorize the Plaintiff “to take such steps as may be necessary to protect and enforce Copyrights.” These “Copyrights” refer to the copyright belonging to “various members of AVPAS”. AVPAS, however, is not a party to this application but Go in his 1st affidavit at GWH-1 discloses the above ten parties to be members of AVPAS.

(d) In relation to all these 13 parties, the Plaintiff is a...

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