PHD Education and another v Michelle Vera Lee Mei Jiao

• Jurisdiction: Singapore
• Judge: Liu Zeming
• Judgment Date: 03 February 2022
• Neutral Citation: [2022] SGDC 18
• Court: District Court (Singapore)
• Docket Number: District Court Suit No 942 of 2021 (HC/AD 8 of 2021)
• Published date: 20 April 2022
• Year: 2022
• Hearing Date: 21 October 2021,10 December 2021
• Plaintiff Counsel: Edison Tam (Emerald Law)
• Defendant Counsel: defendant in person
• Subject Matter: Intellectual Property,Copyright,Infringement,Statutory damages
• Citation: [2022] SGDC 18

Deputy Registrar Liu Zeming:

Statutory damages for copyright infringement are creatures of statute, established to ameliorate difficulties copyright owners may face in proving the quantum of actual loss. While the legislation has outlined the monetary range and identified the relevant factors to take into account, how the quantum of damages should be calibrated with regard to these factors is an exercise intentionally left to the court’s discretion, in recognition of the flexibility needed to cater for the diverse and varied situations in which copyright infringements arise.

However, no discretion – particularly those exercised by a court of law – can ever be completely subjective or unfettered. It must be capable of principled analysis. Otherwise, litigants may have unrealistic views on the prospect of their ultimate recovery, and settlement decisions made in the shadow of such expectations would also be difficult.

In this decision, I endeavour to provide some structure for the calibration of statutory damages for copyright infringement. I hope this would be of some assistance to litigants, and reduce unnecessarily protracted litigation.

Factual and Procedural Background Factual Background

The Plaintiffs are joint owners of copyright subsisting in eight works enumerated in Annex A to this judgment (“Copyrighted Works”). The Copyrighted Works are essentially examination packages and educational materials for primary and secondary school students, which the Plaintiffs jointly created and which the 1st Plaintiff published and sold.¹

The Defendant infringed the Plaintiffs’ copyright subsisting in the Copyrighted Works by reproducing and selling and/or offering for sale copies of the Copyrighted Works without the Plaintiffs’ consent.² The period of infringement was slightly more than one month, from around May 2020 to June 2020.³ During this period, the Defendant sold the infringing materials online through the Defendant’s (now defunct) Carousell account “primarysecondaryhelp”, as well as through WhatsApp messages and emails.⁴

The Defendant stopped selling the infringing materials on or around 22 June 2020, when she was served with the Writ of Summons issued in this action.⁵

The Defendant’s evidence was that during the period of infringement, she sold a total of 44 copies of the examination package (including four copies sold to the 2nd Plaintiff under trap purchase) and received an aggregate of around $810.50 from those sales.⁶

Procedural Background

The Plaintiffs commenced these proceedings against the Defendant on 19 June 2020 for copyright infringement. No appearance was filed by the Defendant and default interlocutory judgment was entered in July 2020, with damages to be assessed.

The suit was initially commenced in the High Court and continued there. On the first day of the assessment of damages hearing on 7 April 2021, the Plaintiffs made an oral application to transfer the matter to the District Court in view of the quantum claimed. The Defendant did not object. These proceedings were accordingly transferred, and the assessment of damages hearing took place before me on 21 October 2021.

At the end of the hearing, I directed parties to file and exchange closing written submissions by 18 November 2021. Nothing was filed by any of the parties. On 2 December 2021, I directed a notice be sent to parties indicating that any written closing submissions must be filed by 10 December 2021, no later. The Plaintiffs eventually filed written closing submissions on 10 December 2021. The Defendant did not tender any written closing submissions.

Parties’ Positions

Although the Plaintiffs claimed various remedies in their statement of claim and opening statement, by the time of their closing submissions, the Plaintiffs have elected to limit their claim to statutory damages pursuant to Section 119(2)(d) of the Copyright Act 1987 (“Copyright Act 1987”).

I pause here to note that as at the date of this judgment, the Copyright Act 1987 has been repealed. In its place, Copyright Act 2021 was enacted and came into force on 21 November 2021. However, under Section 16 of the Interpretation Act 1965 (2020 Rev Ed), where a written law repeals in whole or in part any other written law, then, unless the contrary intention appears, the repeal shall not affect any legal proceeding in respect of any right, obligation or liability acquired or accrued under the repealed law. Accordingly, despite its repeal, the provisions of Copyright Act 1987 applied to the Plaintiffs’ claim here.

The Plaintiffs’ submissions

The Plaintiffs claimed $80,000 as statutory damages.⁷ This is the maximum which can be awarded for the eight Copyrighted Works pursuant to Section 119(2)(d)(i) of Copyright Act 1987. The Plaintiffs alluded to three factors justifying an award at the highest end: First, the Plaintiffs contended that the Defendant had “clearly shown a complete disregard to her act of infringement”⁸ in that she was aware that her conduct constituted infringement, but persisted despite such knowledge and despite warnings from third parties.⁹ The Plaintiffs also say that the Defendant was unapologetic of her actions.¹⁰ Second, the Plaintiffs submitted that the Plaintiffs are likely to suffer “accumulative and long lasting”¹¹ consequences and losses from the Defendant’s infringement and will suffer “irreversible and prolonged harm”¹², since electronic copies of the infringing products will remain in circulation and will be a “permanent competitor” of the Copyrighted Works, despite re-conceptualisation or remake of these works.¹³ Third, the Plaintiffs highlighted that “strong deterrence factor [is] required for this case as the Plaintiff’s [sic] Work are easy to be reproduced”.¹⁴

Overall, the Plaintiffs submitted that the Defendant was an unreliable witness and “[h]er evidence in the Hearing for Assessment of Damages therefore should not be relied upon”.¹⁵

The Defendant’s submissions

The Defendant did not tender any written closing submissions. In her affidavit of evidence-in-chief, the Defendant stated that she was genuinely remorseful and apologetic for her actions,¹⁶ and that she had immediately ceased selling the infringing materials upon receiving the Writ of Summons on 22 June 2020.¹⁷ Further, the Defendant stated that she had cooperated with the Plaintiffs, including having provided to the Plaintiffs an undertaking that she would not sell or offer to sell the infringing materials as well as a list of all customers to whom the Defendant had sold the infringing materials.¹⁸ Save for the Defendant’s proclaimed remorse, this aspect of the Defendant’s evidence was not challenged by the Plaintiffs during the assessment of damages hearing.

My Decision

Given the Plaintiffs’ claims, the only issue I have to decide is the appropriate quantum of statutory damages to be awarded under Section 119 of Copyright Act 1987.

The law

Various local decisions have considered the purpose of the statutory damages regime under Section 119 of Copyright Act 1987, and I shall endeavour not to be repetitive: see, for example, PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another [2012] 4 SLR 36 (“PH Hydraulics”) at [81]; Louis Vuitton Malletier v Cuffz (Singapore) Pte Ltd [2015] SGHCR 15 at [15] – [17].

Essentially, the statutory damages regime allows damages to be awarded in copyright infringement actions without proof of actual or foreseeable loss, in order to ameliorate recognised difficulties rights-owners face in having to prove such losses. It also serves as an “additional deterrent” against infringers. Because copyright infringement can arise under a wide variety of circumstances, the legislature has intentionally given courts the flexibility to determine the appropriate amount of statutory damages based on the evidence and circumstances of the case: see Singapore Parliamentary Debates, Official Report (16 November 2004) vol 78 at cols 1048 – 1049 and 1064 – 1066 (Prof S Jayakumar, Deputy Prime Minister and Minister for Law).

To guide the exercise of this discretion, courts must have regard to the factors set out under Section 119(5) of Copyright Act 1987, namely: (a) the nature and purpose of the infringing act, including whether the infringing act was of a commercial nature or otherwise; (b) the flagrancy of the infringement; (c) whether the defendant acted in bad faith; (d) any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement; (e) any benefit shown to have accrued to the defendant by reason of the infringement; (f) the conduct of the parties before and during the proceedings; (g) the need to deter other similar infringements; and (h) all other relevant matters.

The difficulty in assessing statutory damages lies not in identifying the relevant factors to be considered, but in determining how the quantum should be calibrated in each case by reference to this non-exhaustive list of factors. Admittedly, this is not an exercise capable of mathematical precision.

Fundamentally, statutory damages under Copyright Act 1987 are based on compensatory principles. This is evident from the parliamentary debate on the Copyright (Amendment) Bill in 2004 where Professor S Jayakumar, then Deputy Prime Minister and Minister for Law, declined a suggestion from Member of Parliament Ms. Indranee Rajah to fix a minimum sum for statutory damages, on the basis that the legislature has “elected for a system of damages based on compensatory principles”:

In this Bill, we proposed to introduce a similar [statutory damages regime] for the Copyright Act. This provides copyright owners, in an infringement action, the option to choose, in lieu of actual damages suffered, a new remedy of "statutory damages". This will be especially useful in situations where it is difficult for the copyright owner to prove the...