PCCW Media Ltd v M1 Ltd and others

JudgeLee Seiu Kin J
Judgment Date24 April 2018
Neutral Citation[2018] SGHC 99
Citation[2018] SGHC 99
Defendant CounselKoh Chia Ling and Kevin Elbert (OC Queen Street LLC),Chua Yeow Hooi and Mervyn Lau (Robinson LLC),Lim Yee Ming and Kok Zihao (Kelvin Chia Partnership),fifth defendant not represented.,Chan Kwok Chuan Jason and Ong Eu-Jin (Amica Law LLC)
Published date12 June 2018
Hearing Date03 August 2017
Plaintiff CounselLauw Yu An, Nicholas Lynwood and Leow Jiamin (Rajah & Tann Singapore LLP)
Docket NumberOriginating Summons No 537 of 2017 & Summons No 3534 of 2017
CourtHigh Court (Singapore)
Date24 April 2018
Subject MatterCopyright,Remedies
Lee Seiu Kin J: Introduction

Section 193DDA of the Copyright Act (Cap 63, 2006 Rev Ed) (“the Act”) empowers the High Court to order a network service provider to take reasonable steps to disable access to a flagrantly infringing online location. However, under s 193DDA(1) of the Act, such an order may only be made “on an application made by the owner or exclusive licensee of copyright in a material” [emphasis added]. The plaintiff was a non-exclusive licensee of copyrights in various drama and variety shows. The sole question before me was whether it had locus standi (ie, was entitled) to apply for an order under s 193DDA of the Act. After hearing submissions from the parties, I held that the plaintiff had no locus standi to seek the remedy in s 193DDA of the Act. These are the grounds of my decision.

Facts The parties

The plaintiff, PCCW Media Limited, (“the plaintiff”) is a company headquartered in Hong Kong. It operates a content service known as VIU in various countries, including Singapore. VIU allows users to stream episodes of drama and variety shows on demand. The plaintiff is the licensee of copyrights in certain drama and variety shows produced by four Korean broadcasters: Seoul Broadcasting System, CJ E&M Corporation, Munhwa Broadcasting Corporation, and Korean Broadcasting System (collectively, “the Korean Broadcasters”).1 These shows are made available to the plaintiff’s customers on VIU.

It was not in dispute that the first to tenth defendants are network service providers for the purposes of s 193DDA of the Act, as they come within the following definition in s 193A(1) of the Act:

“network service provider” — for the purposes of sections 193B, 193DDA and 193DDB, means a person who provides services relating to, or provides connections for, the transmission or routing of data; …

These proceedings were initially commenced against only the first to fifth defendants (“the original defendants”) who are, respectively, M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd and ViewQwest Private Limited. The plaintiff explained that since the first, third and fourth defendants each have numerous subsidiaries, it initially could not determine which of these subsidiaries fell within the definition of a network service provider. However, on 31 July 2017, the plaintiff filed summons no 3534 of 2017 (“Summons 3534”) seeking to add the sixth to eleventh defendants (“the new defendants”) to the present originating summons. This was on the basis that they appear to be the subsidiaries of the first, third and fourth defendants which deal with consumers in providing either mobile or terrestrial internet services.2 The table below sets out the names of the new defendants and their respective relationships with the original defendants.

New defendant Name Relationship to original defendants
Sixth defendant M1 Net Ltd Subsidiary of first defendant
Seventh defendant Singnet Pte Ltd Subsidiary of third defendant
Eighth defendant Singtel Mobile Singapore Pte Ltd Subsidiary of third defendant
Ninth defendant Starhub Internet Pte Ltd Subsidiary of fourth defendant
Tenth Defendant Starhub Online Pte Ltd Subsidiary of fourth defendant

The plaintiff obtained confirmation from the new defendants that they had no objections to being added to the present proceedings.3 At the hearing on 3 August 2017, I granted the plaintiff leave to add the sixth to tenth defendants as parties. Counsel for the first, third and fourth defendants confirmed that they also represented the subsidiaries of their respective clients. For convenience, references to the submissions of the first, third and fourth defendants in these grounds of decision should be taken as representing the positions of their respective subsidiaries which are party to these proceedings as well.

The alleged flagrantly infringing online locations

The plaintiff alleged that there were five “flagrantly infringing online locations” which had been using various fully qualified domain names to enable users to stream unauthorised copies of episodes of drama or variety shows. These included drama or variety shows in respect of which the plaintiff held copyright licences from the Korean Broadcasters, and which it made available to its users for streaming on VIU. The five alleged flagrantly infringing online locations were DramaNice, DramaCool, MyAsianTV, KShowOnline and KissAsian (“the alleged FIOLs”). The plaintiff also obtained confirmation from the Korean Broadcasters that they had never issued copyright licences for any of these drama or variety shows to any of the owners or operators of the alleged FIOLs.

There was evidence suggesting that the volume of traffic to each of the alleged FIOLs was high. In May 2016 alone it appears that each of the alleged FIOLs had received between hundreds of thousands to millions of visits from users in Singapore.4

From 17 April 2017 to 19 April 2017, the plaintiff issued take-down notices to the owners and/or operators of each of the alleged FIOLs.5 It did not receive any responses to the take-down notices. It subsequently notified the owners and/or operators of each of the alleged FIOLs that it intended to apply for an order under s 193DDA of the Act requiring the network service providers to take reasonable steps to disable access to the alleged FIOLs.6 The plaintiff then commenced these proceedings on 17 May 2017 via originating summons no 537 of 2017.

The assignment agreements

Between 19 August 2016 and 29 September 2016, the plaintiff entered into four separate assignment agreements with each of the Korean Broadcasters (“the assignment agreements”). Under the assignment agreements, the Korean Broadcasters purported to assign to the plaintiff the right to sue for copyright infringement in Singapore, with this right being limited to suing for the purpose of obtaining the relief in s 193DDA of the Act. For example, the plaintiff’s assignment agreement with CJ E&M Corporation provided as follows:7

WHEREAS

CJ E&M owns the copyright in various television drama and variety series listed in Schedule 1 (hereinafter the “Copyrights”), and PCCW is CJ E&M’s licensee of the Copyrights in Singapore. PCCW intends to make applications in the Singapore Courts against various websites that have infringed the Copyrights with a view to obtaining judicial site blocking orders (the “Orders”) against the said websites. To enable the effective enforcement of the Copyrights, CJ E&M wishes to assign to PCCW its right to sue for infringement of the Copyrights in Singapore as further set forth below in Clause 1 of the Agreement.

NOW IT IS AGREED as follows:

ASSIGNMENT

In consideration of PCCW paying the sum of One US Dollar (US$1) to CJ E&M (the receipt and sufficiency of which is acknowledged and accepted by CJ E&M), CJ E&M hereby assigns to PCCW the right to sue in Singapore, for any and all past and/or ongoing infringements of its Copyrights in Singapore as of the date of signature of this Agreement only for the purposes of obtaining the Orders in relation to the websites listed in Schedule 2.

[emphasis added]

The other assignment agreements between the plaintiff and each of the remaining Korean Broadcasters were in broadly similar terms.8 As will shortly become clear, these assignment agreements formed a central part of the plaintiff’s arguments as to why it had locus standi to bring an action under s 193DDA of the Act.

Parties’ submissions The plaintiff’s submissions

The plaintiff argued that since the Korean Broadcasters, who were the copyright owners, had assigned it the right to sue in respect of copyright infringement in Singapore, it had “essentially [become] the owner of the copyright for the purposes of this enforcement action”.9 In arguing that this assignment of the bare right to sue for infringement was valid, the plaintiff cited George Wei, The Law of Copyright in Singapore (SNP Editions, 2nd Ed, 2000) (The Law of Copyright in Singapore”) at para 12.5 and footnote 20, where the learned author notes that an assignment of copyright does not transfer the right to sue in respect of infringements that occurred prior to the assignment, but the right to sue in respect of such prior infringements could itself be assigned.10

The plaintiff further relied on the decision of the House of Lords in Trendtex Trading Corporation and another v Credit Suisse [1981] 3 WLR 766 (“Trendtex”). There, it was held that, notwithstanding the rule against maintenance and champerty, an assignment of a bare right of action is valid if the assignee has a genuine commercial interest in the success of the litigation (at 779) (“the Trendtex exception”). The Trendtex exception had been applied in Ma v Ma [2012] OJ No 2689, where the Ontario Court of Appeal cited assignments of the right to sue for copyright infringement to performing rights societies as an example in which the assignee has a sufficient interest in the success of the litigation to come within the Trendtex exception. The plaintiff also cited the decision of the Federal Court of Australia in Microsoft Corporation and others v PC Club Australia Pty Ltd and others (2006) 67 IPR 262, which also applied the Trendtex exception in finding that a right to sue in respect of undetected copyright infringements did not fall afoul of the rule against maintenance.

The plaintiff argued that it had a “genuine and substantial interest” in the success of the litigation as a licensee of the copyright in the drama and variety shows produced by the Korean Broadcasters. Thus, under the Trendtex exception, it had been validly assigned the right to sue for copyright infringement by the Korean Broadcasters. This meant the plaintiff was “effectively” the owner of the copyright for the purpose...

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