Public Prosecutor v IC Automation (S) Pte Ltd

• Jurisdiction: Singapore
• Judge: Yong Pung How CJ
• Judgment Date: 15 August 1996
• Neutral Citation: [1996] SGHC 170
• Docket Number: Magistrate's Appeal No 91/94/01
• Date: 15 August 1996
• Published date: 19 September 2003
• Year: 1996
• Plaintiff Counsel: Low Chai Chong and Julian Chin (Rodyk & Davidson)
• Citation: [1996] SGHC 170
• Defendant Counsel: Chong Chee Hong (Helen Yeo & Partners)
• Court: High Court (Singapore)
• Subject Matter: s 58 Criminal Procedure Code (Cap 68),Whether presumption obviously rebutted by prosecution's own evidence,Infringement,Admissibility of evidence,Evidence,Need for specificity,Mere suspicion insufficient,Criminal Procedure and Sentencing,Whether appellant on 'fishing expedition',Summons to produce evidence,Appeal,Sale of software programmes without authority to third parties,Totality of evidence to be considered,Circumstantial evidence,Copyright,Whether presumption of sale can be invoked,s 136(7) Copyright Act (Cap 63),Reasonable inferences to be drawn

The facts

This appeal arose out of a criminal prosecution brought by way of private summons under a fiat by the Public Prosecutor. Chuang Ping Derg (PW2), also the complainant, is the managing director of Rahmonic Resources Pte Ltd (Rahmonic), a company incorporated in Singapore which specialises in writing computer software programs dealing with image processing. The respondent is a company in Singapore that builds mechanical handlers. Its managing director is Kerwin Ang.

The respondent was Rahmonic`s former joint venture partner in a project for NSC Penang. Their collaboration entailed Rahmonic supplying the software that resided in vision systems as well as vision hardware. The respondent supplied the mechanical handlers.

The vision system and mechanical handler make up a vision inspection system which is used for inspecting markings or the leads of a semi-conductor chip. Markings are the alphanumeric characters printed on the chips. The leads are the protrusions from these chips.

A total of 12 charges were brought against the respondent for various offences under ss 136(1), 136(2) and 136(3) of the Copyright Act (Cap 63). The software which are relevant to these charges are the tGraph, TM/TC Driver and Mark and Lead Inspecting program (version 1.5) used in the semi-conductor industry. The tGraph and TM/TC Driver programs are embedded in the Mark and Lead software, the result of which it is not possible to have the Mark and Lead software without reference to the tGraph and TM/TC Driver. Numerous versions of the Mark and Lead Inspection software were developed by Rahmonic, of which version 1.5 was the final system that was developed for NSC Penang.

The appellant argued that these three software programs were PW2`s creation, and the proprietorship of their individual copyrights vested in him. PW2 claimed that the respondent had sold and distributed these software programs without authority to third parties; it was thus guilty of the offences charged. On 19 May 1993, pursuant to two search warrants issued under s 136(9) Copyright Act, these software programs had allegedly been found in the respondent`s premises in one of its employees` computers.

PW2 also alleged that he had the opportunity to visit, together with his counsel (PW1), the premises of a company in Kuala Lumpur, Malaysia called `Harris`. There he found that the vision software which they were using were suspiciously similar to his copyrighted software. PW2 then claimed that Haltech (M) Sdn Bhd (Haltech), another Malaysian company, is the distributor for the respondent in that country. Thus, the appellant argued that a sale had been made to Haltech which subsequently sold the software to Harris.

In essence, all 12 charges were similar and may be grouped into four sets, the material difference being the elements (in italics) stated as follows:

(a) 1st , 5th and 9th charges under s 136(1)(b): the respondents sold two copies of the software to Haltech;

b) 2nd, 6th and 10th charges under s 136(2): the respondents had in their possession two copies of the software for the purpose of selling to Haltech;

c) 3rd, 7th and 11th charges under s 136(3): the respondents distributed two copies of the software for the purpose of trade to Haltech;

d) 4th, 8th and 12th charges under s 136(1)(a): the respondents made for sale two copies of the software.

The relevant legislation

Section 136 of the Copyright Act, in so far as relevant, provides:

(1) A person who at a time when copyright subsists in a work -

(a) makes for sale or hire;

(b) sells or lets for hire, or by way of trade offers or exposes for sale or hire;

(c) by way of trade exhibits in public; or

(d) imports into Singapore, otherwise than for private and domestic use,

any article which he knows, or ought reasonably to know, to be an infringing copy of the work shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 for the article or for each article in respect of which the offence was committed or $100,000, whichever is the lower, or to imprisonment for a term not exceeding 5 years or to both.

(2) A person who at a time when copyright subsists in a work has in his possession any article which he knows, or ought reasonably to know, to be an infringing copy of the work for the purpose of -

(a) selling, letting for hire, or by way of trade offering or exposing for sale or hire, the article;

(b) distributing the article for the purpose of trade, or for any other purpose to an extent that will affect prejudicially the owner of the copyright in the work; or

(c) by way of trade exhibiting the article in public,

shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $10,000 for the article or for each article in respect of which the offence was committed or $100,000, whichever is the lower, or to imprisonment for a term not exceeding 5 years or to both.

(3) Any person who, at a time when copyright subsists in a work, distributes, either -

(a) for purposes of trade; or

(b) for other purposes, but to such an extent as to affect prejudicially the owner of the copyright,

articles which he knows, or ought reasonably to know, to be infringing copies of the work, shall be guilty of an offence and shall be liable on conviction to a fine not exceeding $50,000 or to imprisonment for a term not exceeding 3 years or to both.

...

(9) if information is given upon oath to a Magistrate that there is reasonable cause for suspecting that there are in any house, premises, vessel or other place any infringing copies of a work or other subject-matter in which copyright subsists (or any plate or contrivance used or intended to be used for making such infringing copies) by means of or in relation to which any offence under subsection (1), (2), (3) or (4) has been committed, he may issue a warrant under his hand by virtue of which any police officer named or referred to in the warrant may enter the house, premises, vessel or other place and search for and seize any such copy, plate or contrivance; and if a copy, plate or contrivance is seized under this subsection in connection with an offence and -

(a) in proceedings brought under this section in connection with the offence no order is made under subsection (8) as to the copy, plate or contrivance; or

(b) no such proceedings are instituted within 6 months of the seizure,

the copy, plate or contrivance shall be returned to the person in whose possession it was when it was seized or, if it is not reasonably practicable to return it to that person, shall be disposed of in accordance with the law regulating the disposal of lost or unclaimed property in the hands of police authorities.

The decision below

At the trial below, the court found at the close of the prosecution case that there was prima facie evidence of the subsistence of the copyright in the said three software programs. There was also prima facie evidence of the respondent`s knowledge or constructive knowledge that the copies of the software found in its premises pursuant to the search warrants were infringing copies.

However, the trial judge held that the appellant had failed to adduce evidence to support the elements of ` sale `, ` possession for the purposes of sale `, ` distribution for purpose of trade ` and ` make for the purpose of sale ` in the corresponding 12 charges respectively. For convenience, these four different elements will henceforth be referred to as the `sale` or `distribution` element. Consequently, there was no case to answer. Accordingly, he acquitted the respondent of all the charges.

Issues in this appeal

The crux of this appeal concerned whether there was a case to answer. The only issue to consider was whether in the light of the totality of evidence presented, there was sufficient evidence for a prima facie case against the respondent. Bearing in mind that the appellant was unable to provide any direct evidence to prove that there was a sale or distribution of the software by the respondent to Haltech, the questions in this appeal were three-fold.

First, whether on the totality of evidence, it was reasonable to draw an inference of sale or distribution to satisfy the abovesaid elements of the charges. Second, in the event that such an inference could not be drawn, whether the presumption of sale under s 136(7) of the Act could be invoked in the circumstances. Third, whether the trial judge had correctly refused the application by the appellant for a summons to produce under s 58 of the Criminal Procedure Code (Cap 68) to turn up evidence of any sale or distribution.

The appeal

Reasonable inference

Section 189(1) of the Criminal Procedure Code (Cap 68) provides:

[if] the court finds that no case against the accused has been made out which, if unrebutted, would warrant his conviction, the court shall record an order of acquittal.

The test to apply in deciding whether there is a case to answer is set out in Haw Tua Tau v PP [1981] 2 MLJ 49 . At the close of the prosecution case, what remains to be decided is a question of law only.

The court must act on the presumptions: (a) that all such evidence of primary facts is true, unless it is inherently so incredible that no reasonable person would accept it as being true; and (b) that there will be nothing to displace those inference as to further facts or state of mind of the accused which would reasonably be drawn from the primary facts in the absence of further explanation.

I recalled that in Haw Tua Tau , Lord Diplock had added that the application of the test was similar to the English position of a trial by judge and jury. In this regard, Lord Lane referring to a jury trial, had stated in R v Galbraith (1981) 73 Cr App R 124, at p 127, as follows:

How then should the judge approach a submission of `no case`? (1) If there is no evidence that the crime alleged has been committed by the defendant, there is no difficulty. The judge will of course stop the

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