Recordtv Pte Ltd v MediaCorp TV Singapore Pte Ltd

• Judgment Date: 21 December 2009
• Date: 21 December 2009
• Docket Number: Suit No 615 of 2007 (Registrar's Appeal No 146 of 2009),Suit No 615 of 2007
• Court: High Court (Singapore)

Recordtv Pte Ltd

Plaintiff

and

MediaCorp TV Singapore Pte Ltd and others

Defendant

[2009] SGHC 146

Tan Lee Meng J

Suit No 615 of 2007 (Registrar's Appeal No 146 of 2009)

High Court

Civil Procedure–Striking out–When cause of action should be struck out–Whether cease and desist letters sufficient basis to prevent claim in conspiracy from being struck out–Equity–Issue estoppel–When exception to issue estoppel might arise–What qualified as “sufficient change in circumstances” to effect limited exception to issue estoppel–Tort–Conspiracy–What was required to prove sufficient claim in conspiracy–Whether cease and desist letters sufficient basis to found claim in conspiracy

The plaintiff, Recordtv Pte Ltd (“RPL”), provided a self-service online recording facility. This facility was accessible by registered users in Singapore to record free-to-air television broadcasts for private and domestic use. The defendants were broadcasters licensed by the Media Development Authority of Singapore to broadcast a number of free-to-air terrestrial channels in Singapore (“the MediaCorp companies”).

The MediaCorp companies regarded the re-broadcasting of its progammes by RPL as an infringement of its copyright. As such, the MediaCorp companies' solicitors wrote to RPL to allege that the latter had committed acts of infringement by re-broadcasting the MediaCorp broadcasts and by making copies of them. The letter made it clear that the MediaCorp companies were entitled to commence legal proceedings against RPL but would refrain from doing so if RPL complied with the demands contained in the said letter.

Relying on s 200 of the Copyright Act (Cap 63, 2006 Rev Ed), RPL instituted an action against the MediaCorp companies for making groundless threats of legal proceedings. RPL further pleaded an alleged conspiracy on the part of the MediaCorp companies. Senior Assistant Registrar Yeong Zee Kin ordered the striking out of the paragraphs in RPL's statement of claim which concerned the alleged conspiracy as well as the particulars pertaining to the alleged conspiracy. RPL appealed.

Held, dismissing the appeal:

(1) A cause of action pleaded without the support of material facts was defective and should be struck out as disclosing no reasonable cause of action, or as being frivolous and vexatious or an abuse of court: at [18].

(2) RPL's counsel, in admitting that he hoped that evidence of a conspiracy would be uncovered during cross-examination of the MediaCorp companies' witnesses, had clearly been on a fishing expedition: at [20].

(3) If RPL could assert a conspiracy solely on the basis of cease and desist letters sent by the MediaCorp companies, then whenever two or more related companies instructed a lawyer to send a letter to a person whom they allege was infringing their trademark or copyright, the recipient of the letter could plead a conspiracy without reference to material facts. This could not be countenanced as companies within a group of companies who owned copyright were entitled to issue cease and desist letters to protect their copyright without being accused of a conspiracy unless there was evidence to support that allegation: at [21].

(4) There might be an exception to issue estoppel in the special circumstances that there had become available to a party material relevant to the correct determination of a point involved in the earlier proceedings, whether or not that point was specifically raised and decided, being material which could not by reasonable diligence have been adduced in those proceedings: at [29]and [30].

Arnold v National Westminster Bank Plc [1991] 2 AC 93 (folld)

Carl Zeiss Stiftung v Rayner & Keeler Ltd (No 2) [1967] AC 853 (refd)

Bandung Shipping Pte Ltd v Keppel TatLee Bank Ltd [2003] 1 SLR (R) 295; [2003] 1 SLR 295 (refd)

Beckkett Pte Ltd v Deutsche Bank AG [2009] 3 SLR (R) 452; [2009] 3 SLR 452 (refd)

Chew Kong Huat v Ricwil (Singapore) Pte Ltd [1999] 3 SLR (R) 1167; [2000] 1 SLR 385 (refd)

Gabriel Peter & Partners v Wee Chong Jin [1997] 3 SLR (R) 649; [1998] 1 SLR 374 (folld)

OCM Opportunities Fund II, LP v Burhan Uray [2004] SGHC 115 (distd)

Osprey, The [1999] 3 SLR (R) 1099; [2000] 1 SLR 281 (refd)

Quah Kay Tee v Ong and Co Pte Ltd [1996] 3 SLR (R) 637; [1997] 1 SLR 390 (folld)

Copyright Act (Cap 63,2006 Rev Ed)s 200

Rules of Court (Cap 322, R 5, 2006Rev Ed)O 18rr 19, 19 (b)- (d)

Ang Kai Hsiang (ATMD Bird & Bird LLP) for the appellant/plaintiff

Dedar Singh (Drew & Napier LLC) (instructed) and Cheah Yew Khuin (Wong & Leow LLC) for the respondents/defendants.

Judgment reserved.

Tan Lee Meng J

1 The appellant, Recordtv Pte Ltd (“RPL”), relying on s 200 of the Copyright Act (Cap 63, 2006 Rev Ed) (“the Act”), instituted an action against the 1st defendant, MediaCorp TV Singapore Pte Ltd, the 2nd defendant, MediaCorp TV12 Singapore Pte Ltd, the 3rd defendant, MediaCorp News Pte Ltd, and the 4th defendant, MediaCorp Studios Pte Ltd (collectively referred to as “the MediaCorp companies”) for making groundless threats of legal proceedings. In addition, RPL pleaded an alleged conspiracy on the part of the MediaCorp companies. Senior Assistant Registrar Yeong Zee Kin (“SAR Yeong”) ordered the striking out of the paragraphs in RPL's statement of claim which concerned the alleged conspiracy as well as the particulars pertaining to the alleged conspiracy that were filed on 18 February 2008 pursuant to an Order of Court dated 30 January 2008. RPL appealed against SAR Yeong's decision.

Background

2 RPL provides a self-service online recording facility known as the “Internet-based Digital Video Recorder” (“iDVR”) at the website www.recordtv.com. According to RPL, its iDVR is accessible by registered users of the iDVR in Singapore to record free-to-air television broadcasts for the registered user's private and domestic use. RPL also explained that its registered users will be able to view recordings that have been made within 15 days from the time the recording was made.

3 The MediaCorp companies are broadcasters licensed by the Media Development Authority of Singapore to broadcast a number of free-to-air terrestrial channels in Singapore. These are Channels 5, 8 and U, which are the first defendant's channels; Central and Suria, which are the second defendant's channels; and Channel NewsAsia, which is the 3rd defendant's channel.

4 Apart from operating the television channels referred to above, the MediaCorp companies also produce various television programmes and are the makers of cinematographic films of such television programmes, which are broadcast over their channels.

5 The MediaCorp companies regarded the re-broadcasting of its progammes by RPL as an infringement of its copyright. As such, on 24 July 2007, the MediaCorp companies' former solicitors, M/s Allen & Gledhill, wrote to RPL to allege that the latter had committed acts of infringement by re-broadcasting the MediaCorp broadcasts and by making copies of them (“the first cease and desist letter”). The letter made it clear that the MediaCorp companies were entitled to commence legal proceedings against RPL but would refrain from doing so if RPL complied with the demands contained in the said letter.

6 On 24 September 2007, RPL received a letter from the MediaCorp companies' present solicitors, M/s Wong & Leow, alleging that RPL had infringed their copyright in MediaCorp's broadcasts as well as in various films made by the 3rd and 4th defendants (“the second cease and desist letter”). This time, legal proceedings were threatened and RPL's solicitors were asked whether they had instructions to accept service of MediaCorp's writ.

7 On 28 September 2007, RPL instituted legal proceedings against the MediaCorp companies, claiming that the latter had made groundless threats of legal proceedings pursuant to s 200 of the Act through the first and second cease and desist letters.

8 In addition to the issue of groundless threats, RPL also alleged that the MediaCorp companies had conspired with the sole or predominant intention of injuring it or had conspired to injure it by unlawful means. It pleaded in its statement of claim at paras 10 and 11 as follows:

1. 10 Further and in the alternative, the Defendants (or any two or more together) conspired and combined together wrongfully and with the intention and/or in the sole or predominant intention of injuring the Plaintiff and/or in causing loss to the Plaintiff, by way of the aforesaid unlawful threats.

   1. Particulars

      (a) The Plaintiff is a competitor of the Defendants. The Defendants had acted in concert to make the aforesaid threats. The motivation of the Defendants was to damage or destroy the Plaintiff's business.

1. 11 As a result of the Defendants' conspiracy as set out in paragraph 10 above, the Plaintiff has suffered loss and damage. The Plaintiff will suffer further loss and damage unless the Defendants are restrained.

   1. Particulars

      (a) The particulars set out under paragraph 9 above are repeated.

9 In response, the MediaCorp companies filed a counterclaim in relation to copyright infringement of their broadcasts and films.

10 On 25 April 2008, the MediaCorp companies filed an application to strike out the conspiracy claim. The application was allowed on 9 May 2008 by the Assistant Registrar. However, the decision was reversed by Andrew Ang J in Registrar's Appeal Subordinate Courts No 211 of 2008 on 2 June 2008.

11 After the Assistant Registrar's decision was reversed, RPL reiterated its request for further discovery in respect of:

1. (a) all correspondence and/or minutes of meetings between the 1st, 2nd and 3rd defendants in relation to the decision to issue the first cease and desist letter; and

2. (b) all correspondence and/or minutes of meetings between the 1st, 2nd, 3rd and 4th defendants in relation to the decision to issue the second cease and desist letter.

12 As the MediaCorp companies...