Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd

JurisdictionSingapore
JudgeLai Siu Chiu J
Judgment Date30 July 2010
Neutral Citation[2010] SGHC 211
Plaintiff CounselIrving Choh, Lim Bee Li (KhattarWong)
Docket NumberSuit No 866 0f 2008
Date30 July 2010
Hearing Date01 March 2010,24 February 2010,22 February 2010,26 February 2010,02 March 2010,25 February 2010,23 February 2010
Subject Matterwhether an incorporated body can be an author of an original work,Copyright,Tort,Passing Off,Authorship,Infringement
Year2010
Citation[2010] SGHC 211
Defendant CounselLai Tze Chang Stanley SC, Vignesh Vaerhn, Lim Ming Hui Eunice (Allen & Gledhill LLP)
CourtHigh Court (Singapore)
Published date05 August 2010
Lai Siu Chiu J: Introduction

In this dispute, Pioneers & Leaders (Publishers) Pte Ltd (“the plaintiff”) claimed that Asia Pacific Publishing Pte Ltd (“the defendant”) had infringed the copyright of the plaintiff’s horse-racing publication known as “Punter’s Way”. The plaintiff also sued for passing off.

Factual Background

The plaintiff is a company incorporated in Singapore and has been publishing its magazine “Punter’s Way” (“PW”) since 1977. When the PW magazine was first launched, the plaintiff set up a Research and IT unit to: (i) organize horse-racing information that was to be included in the PW publications; (ii) set up tabulations of the horse-racing information and decide how best the tables should be presented in a reader-friendly manner; (iii) study, experiment and compile the information to be placed in the PW publications; and (iv) restructure the tables presented in the PW publications. The plaintiff contended that there was a set of four tables in PW specifically compiled to give readers “quick reference and useful guides”; the four tables are, (as set out in the sequence found in the PW publications): Table 1 Race Card, Table 2 Results Panel, Table 3 Track Work, and Table 4 Records of Past Performances (“the Tables”).

The defendant is also a company incorporated in Singapore. Like the plaintiff, it similarly publishes a horse-racing magazine known as “Racing Guide” (“RG”) which the plaintiff alleged copied many of the features of PW.

It was not in dispute that the plaintiff once employed Steven Michael Levar (“Levar”) who is the managing director of the defendant. After the incorporation of the defendant and shortly after his services with the plaintiff ceased in January 2007, Levar assumed his current position. Levar was the only witness for the defendant. In his affidavit of evidence-in-chief (“AEIC”), Levar deposed that he was considered a horse-racing expert and was a recognised bloodstock agent of horses in Singapore and Malaysia, having had 24 years’ experience in the industry including employment first as a racing broadcaster and then, as the chief racing broadcaster and manager of the Singapore Turf Club. Levar registered his sole-proprietorship Horse Racing International as a business in Singapore in June 2004 which provided (and still provides), consultancy services to race clubs in the buying and selling of horses. Levar purchased the RG from its previous owner/publisher after which he informed the plaintiff’s managing-director in January 2007 that as he owned a rival to PW, he could not continue working for the plaintiff. Levar revealed that the RG was first published in 1987 and when he acquired it, it was a loss-making enterprise. Levar set about turning it around at which he succeeded.

The plaintiff alleged that from 30 June 2007 to 5 June 2008, the defendant’s publications of RG had infringed the plaintiff’s copyright in PW. Specifically, it was alleged that the horse-racing information and tables in RG had been arranged in the same sequence as that found in PW: Table 1 Race Card, Table 2 Results Panel, Table 3 Track Work, and Table 4 Records of Past Performances. It was alleged that the format and presentation of Tables 1 and 2 found in the RG was similar to those found in PW. It was further alleged that in the RG, there were 8 columns in Table 3 and 17 columns in Table 4 that were substantially similar to those found in PW.

In or about February 2007, the defendant added a ‘Speed Map’ feature to the RG. Sometime in November 2007, a Graphic Analysis table was included in the RG. The Speed Map and Graphic Analysis table were removed from the publications of the RG in or about late December 2007 and replaced with a “Fast Form” table placed in between Tables 1 and 2 in or about January 2008; this was designed to give the reader a comprehensive analysis of each and every race.

The plaintiff agreed that the defendant had ceased the copyright infringement after 5 June 2008.

With regard to its passing off claim, the plaintiff explained that since 1993, a different colour was used on the front cover of PW to differentiate race days. For example, maroon was used for Singapore Friday races, purple for Singapore and Malaysia Saturday races while gold was used for Malaysia Sunday races. PW also featured forward-racing horses on its cover page, and had placed an advertisement panel across the bottom of the cover page. It was alleged that since 4 January 2008, the defendant had passed off the RG as the PW by using the same colour coding on the front cover of RG (maroon for Singapore Friday races, dark purple for Singapore Saturday Races, light purple for Malaysia Saturday Races, and gold for Malaysia Sunday Races). Prior to January 2008, the defendant had featured the side profile of horses on the cover page of the RG. It had also placed an advertisement panel in the middle-left side of the cover page. However, since January 2008, the defendant changed the direction of the horses featured on the cover page of the RG to forward-racing horses similar to those shown on the cover page of the PW. The defendant had also changed the position of the advertisement panel by placing it across the bottom of the cover page of the RG similar to the PW.

The plaintiff’s solicitors sent a letter of demand to the defendant on 25 April 2008 alleging copyright infringement and passing off. The defendant took exception to the letter which it considered “a groundless threat’ in its pleadings.

The plaintiff’s case

The plaintiff had five witnesses including its managing-director Phan Tjun Sern (“Phan”). In Phan’s AEIC the plaintiff claimed that it owned the copyright in the format, presentation and compilation of horse-racing information in the Tables found in the publications of the PW (hereinafter referred to as the “the alleged Works”). As stated earlier (at [5]), the plaintiff claimed that between 30 June 2007 and 5 June 2008, the defendant’s publications of the RG had infringed the plaintiff’s copyright in the PW. Specifically, it was alleged that the horse-racing information and tables in the RG had been arranged in the same sequence as that found in the PW: Table 1 Race Card, Table 2 Results Panel, Table 3 Track Work, and Table 4 Records of Past Performances. It was alleged that the format and presentation of the columns and headings found in Tables 1 and 2 of the RG was similar to those found in the PW. Specifically, the format of Table 2 in relation to the columns, headers, rows and names of horses were similar for each issue of each corresponding publication.

It was further alleged that in the RG, there were 8 columns in Table 3 that were substantially similar to those found in the PW (the columns are: 1.Saddle Number; 2. Horse Name; 3. Trackwork for horse for 2 weeks before; 4. Trackwork for horse for 1 week before; 5. Trackwork of horse during current week of race; 6. Results of horse when it raced 2 weeks before; 7. Results of horse when it raced one week before). In addition, the plaintiff alleged that there were 17 columns in Table 4 of the RG that were substantially similar to those found in the PW.

The plaintiff added that the alleged Works had been specifically designed so that horse-racing information was presented in a comprehensive and accessible manner to readers.

The plaintiff also alleged that the RG had passed itself off as the PW publications from January 2008 to 19 September 2008.

The defendant’s case

The defendant argued that any inference of copying of the alleged Works would be premature if copyright was shown not to subsist in the alleged Works.

The defendant made several contentions that copyright did not subsist in the alleged Works.

First, the defendant claimed that the plaintiff did not have authorship of the alleged Works because s 27 of the Copyright Act (Cap. 63, 2006 Rev Ed) (“the Copyright Act”) allows only natural persons and not an incorporated entity to be an ‘author’ of copyright protected works. The defendant argued that granting authorship to an incorporated entity would be contrary to public policy as this leads to an indefinite perpetual copyright term.

In addition, it was argued that the plaintiff cannot claim to be the author as “many ideas, suggestions and criticism” relating to the alleged Works came from many racing professionals and readers. Specifically, the persons who contributed ideas to the alleged Works (Chan Win Teng, Michael Ho and Clement Chan) were not employees of the plaintiff at the material time of the creation. It was Chan Win Teng who came up with the idea of a Past Performance Table while Michael Ho came up with the idea of having the Track Work Table after the Race Card. As such, they should arguably be the closest there was to an “author” of the alleged Works. It was undisputed that there was never any agreement between the plaintiff and Chan Win Teng and/or Michael Ho to assign the copyright in their ideas and suggestions to the plaintiff.

Second, the defendant disputed the originality of the alleged Works. The defendant made reference to the fact that all the races in Issue No 11 of the RG dated Monday, 10 February 1997 (“1997 RG”), showed a selection of the four tables (Race Card, Selections and Results Table, Track Work Table and Past Performance Table). The defendant asserted that the arrangement of tables cannot constitute an “intellectual creation” under s 7A of the Copyright Act, because the alleged Works were a logical sequence to arrange the horse-racing information. It was further argued that there was no originality in the alleged works as the use of tables to display horse-racing information was commonplace in the industry as found in other horseracing publications; the plaintiff’s arrangement of horse-racing information was described as “nothing more than a commonplace selection of publicly available horse-racing data”. There was no originality because...

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    ...Amanresorts Ltd [2009] 3 SLR (R) 216; [2009] 3 SLR 216 (refd) Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd [2010] 4 SLR 744 (refd) Sands & Mc Dougall Pty Ltd v Robinson (1917) 23 CLR 49 (refd) Telstra Corp Ltd v Phone Directories Co Pty Ltd [2010] FCA 44 (folld)......
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2 books & journal articles
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    • Singapore
    • Singapore Academy of Law Journal No. 2012, December 2012
    • 1 December 2012
    ...216 at [229]. 97Novelty Pte Ltd v Amanresorts Ltd[2009] 3 SLR(R) 216 at [229]. 98 Cap 332, 2005 Rev Ed. 99 Cap 332, 2005 Rev Ed. 100[2010] 4 SLR 744 (HC). 101Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd[2011] 4 SLR 381 (CA). 102Pioneers & Leaders (Publishers) Pt......
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    • Singapore Academy of Law Annual Review No. 2010, December 2010
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