Odex Pte Ltd v Pacific Internet Limited

• Jurisdiction: Singapore
• Judge: Earnest Lau Chee Chong
• Judgment Date: 23 August 2007
• Neutral Citation: [2007] SGDC 248
• Court: District Court (Singapore)
• Published date: 02 November 2007
• Year: 2007
• Plaintiff Counsel: Charissa Soh (Rajah & Tann)
• Defendant Counsel: Koh Chia Ling (Alban Tay Mahtani & de Silva)
• Citation: [2007] SGDC 248

23 August 2007

Earnest Lau, DJ:

Introduction

1. The Plaintiff is a private limited company in the business of distributing various anime titles in Singapore. Anime refers generally to cartoon animations originating from Japan. It is a distinct art-form having its own sub-culture and fan base. The Plaintiff claims to be authorized by various anime copyright owners and/or licensees to protect the copyrights subsisting in numerous anime video works exhibited (“Video Titles”).

2. The Defendant is a public company and a local internet service provider licensed under the Telecommunications Act (Cap. 323). It owes a contractual duty to its subscribers to keep their personal particulars confidential. The Defendant is also a signatory to a Code of Practice for Competition in the Provision of Telecommunications Services 2005 under the Telecommunications Act (Cap. 323) (“Code of Practice”). Rule 3.2.6.2 of the Code of Practice prevents the Defendant from disclosing subscriber information save in excepted situations one of which is to provide assistance to judicial agencies. The Defendant explains its resistance to this application in paragraph 10 of Lim Tat Kuan’s affidavit dated 7 June 2007 (Lim’s affidavit):

“To conclude, I wish to say that there are a myriad of legal remedies that a copyright owner may employ to seek redress for copyright infringements and some may be very unpleasant to the alleged wrongdoer/infringer indeed. As such, the Defendant is duty bound to protect the confidentiality of (the subscribers) and assist the Court in deciding whether such confidentiality ought to be breached in light of the allegations made and the documentary evidence produced by the Plaintiff … the Defendant is also mindful that clause 16 of the Defendant’s General Terms and Conditions for Internet subscribers … also provides for strict confidentiality obligations towards the (subscriber). Should an IP address be wrongly compiled by Mr Go and an innocent subscriber of the Defendant’s internet services be prosecuted as a result of the Defendant, not only would the Defendant be in breach of Rule 3.2.62 of the Code of Practice and be liable to be suspended under Section 8 of the Telecommunications Act (Cap. 323), the Defendant may also face proceedings commenced by the rather the innocent subscriber.”

3. The Plaintiff has applied under O24 r6(5) for the pre-action discovery of documents against a non-party “for the purpose of or with a view to identifying possible parties to any proceedings”. The Plaintiff has filed 3 affidavits by Go Wei Ho (Go) in support of this application. These affidavits explain that the Plaintiff is entitled to and will use the Defendant’s subscriber information to take action for copyright infringement: see paragraphs 20 and 21 of Go’s 1^st affidavit, paragraph 40 of Go’s 2^nd affidavit and paragraph 10 of Go’s 3^rd affidavit. I first heard this application as a District Judge in chambers on 3 August 2007 and 17 August 2007. I then reserved my judgment to 23 August 2007 where I ruled in favour of the Defendant. At the hearing on 23 August 2007, I read out oral grounds of my decision to the counsels representing the parties and I have substantially incorporated those grounds in this written decision.

The application under Order 24 Rule 6(5) (O24 r6(5)) - Relevant principles

4. O24 r6(5) is subject to O24 r 7. Under Rule 7, the Court may refuse the application if it thinks that the application is not “necessary for disposing fairly of the cause or matter or for saving costs”.

Discovery against other person (O. 24, r. 6)
6. —(5) An order for the discovery of documents before the commencement of proceedings or for the discovery of documents by a person who is not a party to the proceedings may be made by the Court for the purpose of or with a view to identifying possible parties to any proceedings in such circumstances where the Court thinks it just to make such an order, and on such terms as it thinks just.

Discovery to be ordered only if necessary (O. 24, r. 7)
7. On the hearing of an application for an order under Rule 1, 5 or 6, the Court may, if satisfied that discovery is not necessary, or not necessary at that stage of the cause or matter, dismiss or, as the case may be, adjourn the application and shall in any case refuse to make such an order if and so far as it is of opinion that discovery is not necessary either for disposing fairly of the cause or matter or for saving costs.

5. This is a dispute on pre-action discovery. It would be useful to revisit the law on this area beginning with Norwich Pharmacal v. Customs & Excise Commissioner [1974] AC 133. This landmark ruling paved the way for a plaintiff to seek discovery against a non-party for the disclosure of wrongdoer identity with a view to making the wrongdoer a party to civil proceedings. The case traces the origins of discovery back to the equitable jurisdiction of the Courts of Chancery under a bill of discovery and its limited scope. This is explained by Sir Jack IH Jacob in The Fabric of English Civil Justice [1987] at page 93:

“The process of discovery was hardly known to the common law; it was the invention of equity. Indeed, the overriding purpose of the Bill of Chancery was, as it was said “to scrape the conscience of the defendant”. … The common law courts have no power to order pre-trial discovery, and accordingly, a party in a common law suit had perforce before the trial to have recourse to the Court of Chancery for the disclosure of relevant documents or answers to interrogatories or the inspection of property.”

(a) The Norwich Pharmacal case extended the range of the discovery jurisdiction by enabling the Court to compel discovery not only against an intended defendant but also an innocent party subject to certain conditions. To succeed, the applicant must prove wrongdoing and satisfy the Court that his private interest in receiving the information outweighs any public interest against the making the order. I need not restate the law here as there is already a masterful summary by Professor Pinsler in Singapore Court Practice 2006 at pages 681 to 688.

(b) In Singapore, there was initially some doubt as to whether the Court can order pre-action discovery under a Norwich Pharmacal jurisdiction: see Abraham v. Law Society of Singapore [1991] SLR 761. But in Reebok International Ltd v Royal Corp and Another Action [1992] 2 SLR 136, Chan Sek Keong JC (as he then was) in a case involving Anton Piller orders, embraced the Norwich Pharmacal case by tracing the Anton Piller jurisdiction to the inherent discovery jurisdiction of the court: See the Reebok case at paragraph 19.

“19 The Anton Piller form of discovery is a different species from general discovery. The primary purpose of the Anton Piller order is to preserve the evidence of infringing acts which may otherwise be destroyed, removed or concealed. The secondary purpose is to obtain information with a view to taking proceedings against third parties involved in the infringing acts. Anton Piller jurisdiction is derived from the principle of a right to discovery of information which was revived by the decision of the House of Lords in Norwich Pharmacal Co v Customs & Excise Commissioners. It was enforceable by the old Chancery bill for discovery, the purpose of which was to enable A to obtain information from B to pursue his remedies against C: see Browne-Wilkinson J in Sony Corp, at p 402.”

(c) Subsequently in 1993, legislative amendments were introduced and we have today O24 r6 in our Rules of Court. In particular, pre-action discovery of wrongdoer identity was codified in what is now O24 r6(5). By contrast, the English Civil Procedure Rules have not codified the Norwich Pharmacal application and applicants there still invoke the Norwich Pharmacal jurisdiction for the discovery of wrongdoer identity. So English cases on pre-action discovery should be read with this in mind.

6. The presence of O24 r6 however does not extinguish the Norwich Pharmacal jurisdiction in Singapore. Aside from O24 r6, the Court retains a residuary inherent jurisdiction to do justice. The concurrent jurisdiction was expressly recognised by Menon JC (as he then was) in UMCI Ltd v Tokio Marine & Fire Insurance Co (Singapore) Pte Ltd and Others [2006] 4 SLR 95; [2006] SGHC 142. He observed that O24 r6 has a jurisdiction distinct from the Norwich Pharmacal jurisdiction which is traced to the inherent jurisdiction of the Court. Although the UMCI Ltd case concerns the discovery of documentary samples, the principles expressed equally apply to the discovery of wrongdoer identity. Hence apart from O24 r6, theCourt retains the discretion to order discovery which is exercisable on the same principles used to invoke its inherent jurisdiction i.e. on the touch stone of need in exceptional circumstances: see paragraphs 90, 91 and 101, 102).

“90 Ms Tan also cited the decision of Lightman J in Mitsui & Co Ltd v Nexen Petroleum UK Ltd [2005] 3 All ER 511 (“Mitsui & Co”) where he noted as follows at [24]:

In my judgment despite the argument of Mr Carr QC that there is no authority directly in point, it is clear that the exercise of the jurisdiction of the court under Norwich Pharmacal against third parties who are mere witnesses innocent of any participation in the wrongdoing being investigated is a remedy of last resort. (It is the claimant’s case that the defendant is such an innocent third party.) The jurisdiction is only to be exercised if the innocent third parties are the only practicable source of information. The whole basis of the jurisdiction against them is that, unless and until they disclose what they know, there can be no litigation in which they can give evidence: see e.g. Lord Kilbrandon in Norwich Pharmacal … [1974] AC 133 at 203, 205. Whilst there is a public interest in achieving justice between disputing parties, there is also a public interest in not involving third parties if this can be...