Virtual Map (Singapore) Pte Ltd v Suncool International Pte Ltd

• Jurisdiction: Singapore
• Judge: Lai Kew Chai J
• Judgment Date: 01 February 2005
• Neutral Citation: [2005] SGHC 19
• Date: 01 February 2005
• Subject Matter: Whether plaintiff owning independent copyright in map image,Defendant appealing against granting of summary judgment to plaintiff,Defendant reproducing plaintiff's digital map image without plaintiff's consent,Infringement,Civil Procedure,Whether plaintiff entitled to apply for summary judgment against defendant for infringement of copyright in digital map images without joining co-owner,Whether plaintiff having independent copyright in digital map images,Plaintiff using cartographic raw materials to create digital map images,Ownership,Defendant arguing copying insubstantial part of whole,Summary judgment,Plaintiff successfully applying for summary judgment against defendant for infringement of copyright in digital map images,Whether copying sufficient to constitute infringement,Copyright,Section 124 Copyright Act (Cap 63, 1999 Rev Ed),Copyright in cartographic raw materials owned by third party,Plaintiff co-owning copyright in digital map images with party supplying vector data used to create map images,Plaintiff alleging defendant infringing copyright in digital map images,Whether triable issues existing
• Docket Number: Magistrate's Court Suit No 40057 of 2003 (Registrar's Appeal from the Subordinate
• Published date: 02 February 2005
• Defendant Counsel: Wong Siew Hong and Michelle Angelique Armand (Infinitus Law Corporation)
• Court: High Court (Singapore)
• Plaintiff Counsel: Low Chai Chong and Jonathan Seng (Rodyk and Davidson)

1 February 2005 Judgment reserved.

Lai Kew Chai J:

1 On 25 June 2004, the district judge dismissed the defendant’s appeal against the decision of the deputy registrar dated 26 March 2004. The defendant appealed against the district judge’s decision ([2004] SGDC 190). I heard and dismissed the appeal on 2 September 2004. On the defendant’s application, I heard further arguments on 17 November 2004, after which I reserved judgment.

Basic facts

2 The facts of this appeal are not complicated. The plaintiff is in the business of, inter alia, creating and licensing the reproduction and/or use of digital raster street maps of Singapore. These digital raster maps are contained in the plaintiff’s website at www.streetdirectory.com. The defendant is a company in the business of installing solar control films, security and fire-fighting equipment.

3 It is not denied that the defendant reproduced a map image[1] from the plaintiff’s website without its consent. The map image, which discloses the location of the defendant’s premises, was reproduced on the defendant’s website at www.suncool.com.sg. The defendant has admitted to copying the map image.

4 Not unexpectedly, the plaintiff obtained summary judgment against the defendant. The defendant appealed.

The district judge’s findings

5 I will first summarise the arguments before the learned district judge. Before her, the defendant submitted that:

(a) the plaintiff had no locus standi to maintain the action since it did not own the copyright in the copied map;

(b) the Singapore Land Authority (“SLA”) owned the copyright;

(c) the plaintiff’s maps lacked the requisite originality;

(d) the defendant was entitled to rely on the defence of fair dealing under ss 35 and 37 of the Copyright Act (Cap 63, 1999 Rev Ed) (“the Act”);

(e) there was no substantial copying; and

(f) there was no knowledge of copying on the part of the defendant.

The learned district judge was indeed correct not to find any merit to these arguments raised by the defendant. I will only draw attention to the findings which are relevant to the issues raised in the defendant’s latest appeal. These findings principally traverse copyright ownership and originality in the plaintiff’s product.

6 The defendant failed to satisfy the learned district judge that the plaintiff was deprived of any locus standi to maintain the present suit in its sole name by reason of s 124(1) of the Act. Section 124(1) states:

Where –

(a) an action is brought by the owner of the copyright or by the exclusive licensee; and

(b) the action, insofar as it is brought under section 119, relates in whole or in part, to an infringement in respect of which the owner and the licensee have concurrent rights of action under that section,

the owner or licensee, as the case may be, shall not be entitled, except with the leave of the court, to proceed with the action, insofar as it is brought under that section and relates to that infringement, unless the other party is joined as a plaintiff in the action or added as a defendant.

7 The learned district judge held that s 124(1) only applied to proceedings in relation to a copyright in respect of which an exclusive licence had been granted and was in force at the time of the events to which the proceedings related. This was also clarified by s 122. The plaintiff in this action brought the suit as an independent copyright owner in its own right. On the evidence, there was no mention of the existence of any exclusive licence.

8 The learned district judge did not find any merit to the argument that the copyright in the maps resided in the SLA and that the SLA had merely granted the plaintiff a non-exclusive licence. In my view, she correctly drew the distinction between the vector data used as a starting point for the maps, and the finished products themselves. The former, which represents the raw material in the map enhancement process, was the basis of a non-exclusive licence agreement between the SLA and the plaintiff. It is the case that, where existing subject matter is used in creating a work, copyright can vest in the creator of the work if he expended skill and labour that were sufficient to make the work original: see MacMillan Publishers Limited v Thomas Reed Publications Limited [1993] FSR 455 (“MacMillan”). The learned district judge made the following finding (at [9] of her Grounds of Decision):

The result of the creative work process can be seen in the significant differences between the raw geographical material obtained by the plaintiffs from the SLA (an example of which is exhibited at pages 36 to 37 of Eugene Lim’s affidavit of 13 February 2004) and the final product displayed on the plaintiffs’ website (in this case, the Work exhibited as Schedule A to the statement of claim). According to the plaintiffs, to date some S$3 million has been invested by them in developing, creating and maintaining their online map provision services; and they also incur regular costs in upkeeping and maintaining these services.

9 Accordingly, the learned district judge agreed with the deputy registrar’s view that this was a case where sufficient work and skill were expended in:

(a) the creation of a map which was visually functional and pleasing as well as being highly readable and manipulable; and

(b) the compilation of selected information such as building names and locations.

10 A significant observation made by the learned district judge was that the SLA did not, in fact, deny the plaintiff’s claim to ownership of the copyright in the maps. Reference was made to an affidavit filed by the SLA in another proceeding (“the SLA affidavit”). Even if it was the case that the SLA claimed to be a co-owner of the copyright in the maps, co-owners of copyright are, at law, treated as tenants in common, and each is entitled to bring proceedings without joining the other: see Acorn Computers v MCS Microcomputer Systems Pty Ltd (1984) 57 ALR 389 at 395. The SLA affidavit did not mention any unauthorised use by the plaintiff of SLA’s raw material (the vector data). Even if one were to assume that there was copyright infringement of the vector data, as a matter of law, any original work which is thereafter derived from the infringement may nevertheless enjoy copyright. In this respect, I found the learned district judge’s reliance on Lightman J’s decision in ZYX Music GmbH v Chris King [1995] FSR 566 at 576–577 particularly useful. Two principles may be gleaned. First, a plaintiff’s work, even if it infringes the copyright in another’s work, may nonetheless enjoy copyright, and the fact that the plaintiff’s work does so infringe a third party’s work does not constitute a defence to proceedings instituted by the plaintiff. Second, copyright is still enforced in such a situation where only an incidental (let alone an unintentional) civil wrong involving no moral obloquy by the plaintiff against a third party is involved.

Issues in this appeal

11 In the appeal before me, the following issues were raised:

(a) The plaintiff is not entitled to enjoy independent copyright in its maps.

(b) The plaintiff is not entitled to pursue this action independent of the SLA, the other joint owner.

(c) Copying is not sufficiently substantial to constitute infringement in this case.

I will deal with each issue in turn.

Does the plaintiff own the copyright in the map images?

12 The defendant resurrected its argument that the plaintiff is not entitled to own an independent copyright in its maps. The plaintiff will be entitled to copyright in its work[2] if it satisfies the court that it has expended skill, effort and labour in creating the work. I note that the input of the plaintiff resulted in a visually significant alteration of existing subject matter. Comparing the cartographic vector data and the plaintiff’s work, the contrast is marked. Unlike the cartographic vector data, the plaintiff’s maps are fully coloured, readable and interactive. It is apparent that much skill and labour was expended to assimilate various fragments of raw material into a usable map[3]. Additions to the cartographic raw material included a set of building names and locations, road networks, traffic directions, a scale and full colour. It is significant that this evidence was not challenged by the defendant.

13 The question of how far a work, which has been copied from an earlier work, can be regarded as original is a matter of fact and degree. What is needed is an addition of some element of material alteration or embellishment which suffices to make the totality of the work an original work: per Lord Oliver of Aylmerton in Interlego AG v Tyco Industries Inc [1989] AC 217 at 262 et seq. On the evidence before me, I am satisfied that the plaintiff has expended the kind of skill, labour and judgment which is rewarded with originality in the copyright sense.

14 Once it has been established that skill and labour has been expended in the plaintiff’s work, it follows that the plaintiff would be the copyright owner of the work in its own right. Such copyright is independent of any copyright which may separately exist in relation to the cartographic raw material.

15 The case of MacMillan ([8] supra) is instructive. Its facts are apposite to the present case. The plaintiff and defendant in MacMillan were both publishers of almanacs for the use of yachtsmen. In these almanacs were smaller charts, or chartlets, which depicted various specific areas of coastline. The chartlets comprised outlines of coasts together with geographical features, and other information. The chartlets had been created in stages. Draft drawings were first prepared from selected features from the admiralty charts; thereafter they were annotated, and then sent to the cartographers. The plaintiff successfully obtained summary judgment in respect of the defendant’s copying of 22 chartlets in its almanac. It was held that the plaintiff could claim originality in the creation of...