Robert John Powers School Inc. and Others v Tessensohn (trading as Clea Professional Image Consultants)

• Jurisdiction: Singapore
• Judgment Date: 01 September 1993
• Date: 01 September 1993
• Docket Number: Suit No 962 of 1990
• Court: High Court (Singapore)

John Robert Powers School Inc and others

Plaintiff

and

Tessensohn Denyse Bernadette (trading as Clea Professional Image Consultants)

Defendant

[1993] SGHC 204

Lai Siu Chiu JC

Suit No 962 of 1990

High Court

Copyright–Infringement–Principles of protection–What copyright protected–Whether compilation subject to copyright protection–Test for substantiality–Scope of defence of fair dealing for purpose of research or study–Tort–Passing off–Franchisee labelled notes with principal franchisor's name and placed substantial quantities of notes in her own school after franchise terminated and sold notes at cheaper prices–Whether misrepresentation existed–Whether principal franchisor's goodwill diluted–Whether tort of passing off required deliberate intention to injure coupled with improper motive

The second plaintiff was the exclusive right-holder to franchise the name “John Robert Powers” and to operate branches of the John Robert Powers School (“the JRP School”) in Singapore. The JRP School was operated by the first plaintiff RJPS in the United States. The defendant was the second plaintiff's franchisee in Singapore under the name “The Finishing School Pte Ltd”. This franchise agreement was terminated and the third plaintiff stepped into the second plaintiff's shoes. The defendant then set up her own school under the name of “Clea Professional Image Consultants” (“Clea”). The plaintiffs alleged that she infringed their copyright in a manual and a course syllabus for the “Executive Image Programme” written by the third plaintiff; and that she had further attempted to pass off Clea and the courses she conducted, as JRP School and JRP courses, respectively. The plaintiffs accordingly brought this action for copyright infringement under the Copyright Act (Cap 63, 1988 Rev Ed) (“the Act”), and for passing off.

Held, dismissing the copyright claims, but allowing the passing-off claim:

(1) Copyright protected the form of the expression and not the substance. Where what was copied was an idea rather than the form the idea took, there was no infringement of copyright: at [13].

(2) It was clear that copyright could subsist in a compilation. The definition of “literary work” in s 7 of the Act expressly included a compilation. Section 10 of the Act provided that copying must be “substantial”. Substantiality was not merely a matter of quantum, but of quality. In deciding this question of fact, the court would look at the nature of the material copied and the degree of skill, labour and effort the defendant had appropriated. Where the whole purpose of the compilation would be in the manner in which it was compiled, and taken in isolation, the extracts taken by the defendant from the manuals would not form the essence of the original, the substantiality requirement was not met: at [16] and [18].

(3) Passing off was possible when one trader represented that the goods of another trader were his own. A large number of notes labelled with the plaintiff's name were lying around in open shelves for all who cared to look and take. Instructors employed by the defendant used those notes as part of their teaching programme without acknowledgment. All would assume that they were the work of the defendant's school and that was a misrepresentation: at [32] and [53].

(4) Goodwill of the plaintiffs was diluted by the fact that training with reference to their materials without acknowledgement of source was available elsewhere at a cheaper price. In effect by making those notes freely accessible to all and sundry and especially to instructors who then formulated their lessons with these materials, the defendant was robbing the plaintiffs of the credit and goodwill which was owed to them: at [53] and [55].

(5) The defendant's state of mind was irrelevant as the tort of passing off did not require a mental element in the sense of a deliberate intention to injure coupled with improper motive. The fact that the defendant may have thought her school was superior to the plaintiffs' did not exculpate her if in fact students thought she offered the plaintiffs' product: at [58].

[Observation: The exact scope of the defence of fair dealing for the purpose of research and study was uncertain. Research must be solely for the defendant's own private study. It was doubtful if general reference for commercial teaching purposes could fall within the scope of s 35 (2) of the Act: at [20].]

A G Spalding & Bros v A W Gamage Ld [1915] 32 RPC 273 (folld)

Blackie & Sons Ltd v The Lothian Book Publishing Co Proprietary Ltd (1921) 29 CLR 396 (refd)

Bristol Conservatories Ltd v Conservatories Custom Built Ltd [1989] RPC 455 (folld)

Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731; [1979] 2 All ER 927 (folld)

John Henderson & Sons v Alexander Munro [1905] 7 F 636 (folld)

Kenrick & Co v Lawrence & Co (1890) 25 QBD 99 (refd)

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (refd)

MacMillan v Suresh Chunder Deb (1890) ILR 17 Calc 951 (refd)

Moorhouse and Angus & Robertson (Publishers) Ltd v University of New South Wales [1976] RPC 151 (distd)

Sillitoe v McGraw-Hill Book Co (UK) Ltd [1983] FSR 545 (folld)

Snyman v Cooper (1990) 97 ALR 653 (distd)

Walter v Steinkopff [1892] 3 Ch 489 (refd)

Warwick Film Productions Ltd v Eisinger [1969] 1 Ch 508 (folld)

William Edge & Sons, Ltd v William Niccolls & Sons, Ltd [1911] AC 693 (refd)

Copyright Act (Cap 63, 1988 Rev Ed) ss 7, 10, 26, 31, 35 (2)

Alban King (Arthur Loke & Pnrs) for the plaintiffs

G Raman (G Raman & Pnrs) for the defendant.

Judgment reserved.

Lai Siu Chiu JC

The facts

1 The first plaintiff is a company incorporated in the state of Massachusetts, United States of America. It operates the John Robert Powers School (“JRP School”) in the United States. JRP School was first established in 1923 for the purposes of providing courses on social development and self-improvement.

2 The second plaintiff is a company registered under the laws of Netherlands and has the exclusive rights to franchise the name “John Robert Powers” and to operate JRP Schools in various jurisdictions around the world, including Singapore. Under the franchise, JRP Manuals (“the manuals”) are distributed to the franchisee. These manuals were first written in 1977.

3 In November 1983 the defendant became the second plaintiff's first franchisee in Singapore under the name “The Finishing School Pte Ltd” (“the School”). On 14 February 1988 this franchise agreement was terminated. Unfortunately, the termination of the franchise between the second plaintiff and the defendant was not amicable. In Suit No 321 of 1988, the second plaintiff brought an action against the School for outstanding royalties and breach of the franchise agreement. An injunction was obtained on 15 February 1988 to restrain the defendant from, inter alia, using the JRP name and to deliver up all materials obtained from the franchise. The defendant stopped using the JRP name, the materials were handed over and the royalties were paid. No notice of discontinuance has been filed for Suit 321/1988.

4 On 22 February 1988, the defendant set up her own school under the name “Clea Professional Image Consultants” (“Clea”) and she informed the public of the change two months later by a press announcement.

5 On 1 March 1988, Jeshevio Personal Development System Pte Ltd, owned by the third plaintiff, was appointed as the new franchisee. At the commencement of this action, this franchise agreement still subsisted. However, JRP School no longer operates in Singapore as it was closed at end December 1992 although there were plans to reopen it in April this year.

The claim

6 This is an action for copyright infringement under the Copyright Act (Cap 63) (“the Act”) and passing off. In the statement of claim the plaintiffs alleged that the defendant infringed their copyright in:

(a) the manuals;

(b) acourse syllabus for the “Executive Image Programme” written by the third plaintiff during her term as franchisee; and that

(c) she attempted to pass off Clea and the courses she conducted, as JRP School and JRP courses, respectively.

7 The statement of claim prayed for:

(a) an injunction to restrain the defendant from infringing the plaintiffs' copyright in the manuals;

(b) an injunction against the infringement of the curriculum for the plaintiff's “Executive Image Programme”;

(c) an injunction to restrain the defendant from passing off her school and courses as the plaintiffs';

(d) an order for delivery up of all articles with the JRP name;

(e) an inquiry as to damages or at the plaintiffs' option an account of profits and payment of all sums found due thereon;

(f) interest;

(g) costs and further/other relief.

8 In the defence, the defendant denied:

(a) that she had infringed the first plaintiff's copyright in the manuals and averred that at all material times she had used her own materials;

(b) that the third plaintiff wrote the course syllabus and asserted that it had been in existence since 1984 and it was she who wrote the same;

(c) that she had attempted to pass off and the courses she conducted at, Clea, as the plaintiffs'.

9 Ishall now consider the plaintiffs' allegations in turn.

Whether copyright in the JRP manuals has been infringed

10 By virtue of s 31 of the Act, copyright is infringed when a non-owner does any of the acts sets out in s 26 without the licence or authority of the owner. The relevant part of s 26 states:

For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right

1. (a) in the case of a literary, dramatic or musical work, to do all or any of the following acts:

   1. (i) to reproduce the work in a material form; …

   2. (vi) to make an adaptation of the work; …

The evidence

11 The plaintiffs adduced three instances of...