Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, Third Party)

• Jurisdiction: Singapore
• Judge: MPH Rubin J
• Judgment Date: 02 December 1995
• Neutral Citation: [1995] SGHC 289
• Docket Number: Suit No 404 of 1993
• Date: 02 December 1995
• Published date: 19 September 2003
• Year: 1995
• Plaintiff Counsel: S Santhiran (Santhiran & Pnrs)
• Citation: [1995] SGHC 289
• Defendant Counsel: Gopal Krishnan Nair (G Raman & Pnrs),GB Vasu (Wee Ramayah & Pnrs)
• Court: High Court (Singapore)
• Subject Matter: Ownership,Whether fax-modem design derived from schematic plans could be considered 'original',s 194(3) Copyright Act (Cap 63, 1988 Ed),'Original',s 69 Copyright Act (Cap 63, 1988 Ed),Defendants unaware of infringement,Infringement,Words and Phrases,Approach of court to defence,Mitigating factors,Copyright,s 119(3) Copyright Act (Cap 63, 1988 Ed),s 27(1) Copyright Act (Cap 63, 1988 Ed),Decision not to contest injunction from the outset,Whether fax-modem design could be considered literary work,Damages or account of profits,s 7(1) Copyright Act (Cap 63, 1988 Ed),'Literary work','Non-expert' defence,Printed circuit board,Whether express assignment necessary where author of work acknowledged plaintiffs' ownership of design,Whether 'artistic work',Whether applicable where there was proof of direct copying,Relevant considerations,Whether 'literary work',Remedies

Cur Adv Vult

This action concerns a copyright dispute between two relatively new fax-modem manufacturers in Singapore. Fax is an acronym for facsimile and modem is an abbreviation for modulator-demodulator. Fax-modem is a telecommunication device used for transmitting data and facsimile messages through voice communications link such as telephone lines. These peripherals are available in computer hardware and software outlets either as external attachments or as internal boards that could be affixed inside the computer or as PCMCIA (Personal Computer Memory Card International Association) type of cards which can be slotted into the side of a computer. These modems come in differing baud rates or speeds such as 1,200, 2,400, 9,600, 14,400 and 28,800 bits per second (bps). At present, modems with speeds less than 14,400 are regarded as antiquated. The baud rate represents the number of electronic signals or data symbols that can be transmitted along a communications channel every second. These speeds indicate the ability of the modem to send as well as download or receive information and images transmitted by one user to another.

In this action, the plaintiffs claim that a 9,600bps fax-modem marketed by the defendants sometime in December 1992 under the latter`s trade name `Nimrod` (Nimrod 9624) is in infringement of the plaintiffs` copyright in a fax-modem board designed and developed by them in February 1992 and marketed by them later under the name `Comfax CF-29SR`. According to the plaintiffs the printed circuit board (PCB) layout as well as the artwork design (the design) pertaining to the plaintiffs` modem were the product of their consultant engineer, Mr Raymond Soh (Mr Soh). They say that their said design which was stored in the memory of their computer during the modem`s development was unlawfully copied and spirited away by T Vimalanathan, the third party in these proceedings, when the latter had access to the plaintiffs` premises in early 1992.

The defendants do not dispute that the plaintiffs` modem and their Nimrod modem are 95% identical in layout and component placements. The minor differing features relate to the location of the modem`s speakers and the size of its transformers. The defendants deny that they had knowingly copied the plaintiffs` product. They assert that the third party who became their employee subsequently developed the design himself. They further contend that at any rate, the plaintiffs are not entitled in law to the copyright for the said design, since the design for both modems was derived from a schematic diagram made available to all and sundry in this region by an American modem manufacturer known as Navin/Sierra Systems. Alternatively, the defendants contend that the third party should be held liable for any judgment which may be entered against them.

The third party who is the central character in this saga was formerly an electronic artificer with the Singapore Navy. He holds a diploma in electrical and electronic engineering from the Ngee Ann Polytechnic. He claimed that in the course of his work he came into contact with the plaintiffs and was persuaded by them to lend his experience in digital electronics on products to be developed and marketed by the plaintiffs. There was divergence between the plaintiffs` account and the third party`s on the terms of engagement between themselves save for an admission that the third party was not in the `employment` of the plaintiffs.

The third party asserts that in fact he was the author and brain behind the plaintiffs` modem. According to him, it was he who instructed and guided the plaintiffs` Mr Soh in setting out the layout of the plaintiffs` modem card from the sample demonstration board provided by the Singapore agents of Navin/Sierra who, in addition to the demonstration board, also made available to him the full schematic drawings. He further alleged that the diskette containing the completed design was handed to him by Mr Soh and from this design and by using the schematic diagrams of Navin Systems, he developed the defendants` modem card with some modifications.

The plaintiffs` case is pleaded on the basis that the defendants have infringed the plaintiffs` copyright, which subsists in the fax-modem PCB design, by having produced and marketed an identical modem under the name Nimrod fax modem 9624A.

The first issue which falls for determination is whether the design under reference was the handiwork of Mr Soh`s exclusive efforts or the product of the third party. Testimonies in this regard from the parties are completely at variance. The third party`s evidence was to the effect that he was the brain behind this design and what Mr Soh did was merely to plot the layout lines on the computer, by operating a computer assisted design (CAD) software known as Protel , under advice and close supervision by the third party. The third party was almost dismissive of the role played by Mr Soh. The third party`s counsel suggested that the functions undertaken by Mr Soh in the development of the design was analogous to a copy typist or a stenographer taking dictation from his or her superior and producing a text by operating a typewriter. The third party also implied that the skill required to operate the said Protel software was almost negligible. The third party during his testimony endeavoured to impress the court with his extensive understanding of electronic circuitry. His facilities for definition and description were somewhat superior to that of Mr Soh whose attempts at technical explanation at times required red-pencilling. However, although Mr Soh`s performance in the witness box was not all that sparkling, the court could discern a ring of candour, sincerity and an unbroken thread of consistency about his evidence. He too is well qualified, having received a degree in electronic engineering from a UK institution in 1971 and his credentials, despite his lack of fluency, could not be made light of.

As mentioned by me earlier, the testimonies of both Mr Soh and the third party were diametrically opposite each other. It therefore became necessary in evaluating their evidence, to consider which account was more probable and whose explanation, more credible.

In this regard, Mr Soh in his affidavit of evidence-in-chief filed on 6 December 1993 averred in para 6 therein as follows:

... The plaintiff`s Comfax CF-29SR, was however copied by the defendant`s company, through the aforesaid Nathan when he was still in the plaintiff`s company. The said Nathan had the keys to the office and he would often come at night as witnessed by the security guards, the motive for which has now only come to light. It would not have been possible to copy the design which was an intricate layout and worked on by me for more than two months and fed into the computer unless someone like the aforesaid Nathan had access to the computer and or by means of laborious duplicating of our sample. The copy of the defendant`s fax/modem card known and marketed as `Nimrod Fax/Data Modem 9624` was seen on 11 December 1992 at the Comtex 1992 Exhibition in the World Trade Centre by the plaintiffs, and again in Johore Bahru.

The third party in his affidavit of evidence-in-chief filed on 15 April 1994 dealt with the allegation of wrong doing against him. He asserted in para 10 of his affidavit as follows:

10 The said Raymond Soh was an artwork designer who was commissioned by the plaintiffs to design items such as security alarms and who had knowledge of artwork designing. As the plaintiffs` managing director did not want to remove all the components from the sample modem provided by Cinergi (formerly known as Chartered-Thelmos Design Pte Ltd), the local distributor of Sierra chips, I was asked to lend my expertise in digital electronics to the plaintiffs and to direct the plaintiffs` Raymond Soh in setting out the layout of the modem. The said Raymond Soh merely worked on the computer to design the layout of the product pursuant to instructions given by me to him and not the whole product itself. I aver that anyone with knowledge of using the layout software can, with proper instructions given by the modem designer, produce the requisite layout. I was always given a copy of the diskette each time the product was updated, with the other copy being stored in the computer so that there was no need for me to `steal` Raymond`s design.

The third party when cross-examined claimed that he was given the diskette containing the design by Mr Soh (p 141F of the NE) because he was told by the plaintiffs` managing director that he was the rightful owner of the modem (p 141B of the NE).

This part of the testimony of the third party that he was given a copy of the diskette by Mr Soh personally was never put to Mr Soh by opposing counsel. It was also noted that the claim of the third party in court that he was handed this diskette by Mr Soh, appears not to tally with his averment in his affidavit, ie he was given a copy of the diskette each time the product was updated . In any event, if Mr Soh were the person who in fact handed him the diskette, the third party would not have missed such an important feature in his affidavit of 15 April 1994, in response to the allegations by Mr Soh against him.

Having regard to all the facts in this case and after evaluating testimony of the witnesses, I have little hesitation in rejecting the suggestion that Mr Soh`s role was no more than that of a copy typist and that he produced the layout simply following instructions and guidelines from the third party. In my finding, Mr Soh is no pushover as the third party would desire the court to conclude. The claim by the third party that he was given a diskette each time the design was updated was not in consonance with his claim in the witness stand that he was given the completed artwork by Mr Soh. Mr Soh impressed me as a witness of truth and I accept his evidence that...