Virtual Map (Singapore) Pte Ltd v Singapore Land Authority and Another Application

• Judge: Chan Sek Keong CJ
• Judgment Date: 06 January 2009
• Neutral Citation: [2009] SGCA 2
• Citation: [2009] SGCA 2
• Defendant Counsel: Dedar Singh Gill and Tang Li Ling Yvonne (Drew & Napier LLC)
• Published date: 09 January 2009
• Plaintiff Counsel: Low Chai Chong, Mark Jerome Seah and Alvin Lim Jun Hao (Rodyk & Davidson LLP)
• Date: 06 January 2009
• Docket Number: Originating Summons No 561 of 2008 and Civil Appeal No 55 of 2008 (Summons No 2056
• Court: Court of Appeal (Singapore)
• Subject Matter: Test of substantiality for altered copying,Legislative intention of s 34(2)(a) Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed),Claim for copyright infringement commenced at the Subordinate Courts at first instance,Civil Procedure,Whether leave of court should be granted,Section 34(2)(a) Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed),Right,Leave,Courts and Jurisdiction,One tier of appeal as of right for civil cases,Whether amount or value of subject matter at trial was less than $250,000,Striking out,Whether Notice of Appeal to Court of Appeal should be struck out as requisite leave of court to appeal pursuant to s 34(2)(a) was not obtained,Copying of maps, street directory vector data and address point vector data,Whether it was possible to characterise subject matter of action as having no specific monetary value to circumvent s 34(2)(a),Nature of copying,Primary infringement,Whether s 34(2)(a) applied to claims that had to be commenced at first instance in the High Court,Altered copying,Whether there was question of general principle or question of importance concerning test of substantiality for altered copying that would justify grant of leave to appeal,Copyright,Appeals,Interpretation of s 34(2)(a) Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed),Notice of appeal

6 January 2009 Judgment reserved.

Andrew Phang Boon Leong JA (delivering the judgment of the court):

Introduction

1 Virtual Map (Singapore) Pte Ltd (“VM”) is a well-known provider of online maps and related services at its popular websites, www.streetdirectory.com and www.streetdirectory.com.sg. However, its online services came to an abrupt halt sometime after the Singapore Land Authority (“SLA”) succeeded in its action for copyright infringement against VM in the District Court (“the copyright suit”) (see Singapore Land Authority v Virtual Map (Singapore) Pte Ltd [2007] SGDC 216 (“the DC decision”)). On appeal, the High Court judge (“the Judge”) affirmed the decision of the district judge (“the DJ”) and dismissed VM’s appeal on 25 March 2008 (see Virtual Map (Singapore) Pte Ltd v Singapore Land Authority [2008] 3 SLR 86 (“the HC decision”)). Consequently, VM filed a notice of appeal on 24 April 2008 against the Judge’s decision (“the Notice of Appeal”). SLA in turn applied, via Summons No 2056 of 2008 (“SUM 2056”), to strike out the Notice of Appeal on the basis that VM had not obtained the requisite leave of the court to appeal pursuant to s 34(2)(a) of the Supreme Court of Judicature Act (Cap 322, 2007 Rev Ed) (“SCJA”). VM’s position is that no leave of the court is required in order for it to appeal against the Judge’s decision. However, without prejudice to its position, VM has filed Originating Summons No 561 of 2008 (“OS 561”) seeking leave from this court to appeal against the Judge’s decision. VM had previously applied on 1 April 2008 to the Judge via Summons No 1491 of 2008 (“SUM 1491”) for leave to appeal, but that application was dismissed by the Judge on 21 April 2008.

2 What is before us in the present instance is therefore not the substantive appeal against the Judge’s decision, but, rather, two applications, ie, SUM 2056 and OS 561, concerning the striking out of the Notice of Appeal and the grant of leave by this court for VM to appeal against the Judge’s decision, respectively.

The background

3 The detailed facts of this case have already been comprehensively set out in the judgment of the DJ (see [2]–[13] of the DC decision). We thus propose to set out only the salient facts which are necessary for the resolution of the present two applications.

4 Prior to the copyright suit, SLA and VM were parties to seven licensing agreements (collectively, “the licence agreements”), five of which were in respect of SLA’s street directory data of Singapore in vector format (“street directory vector data”) and two of which were in respect of SLA’s address point data of Singapore in vector format (“address point vector data”). By way of a letter dated 10 June 2004, SLA wrote to VM giving it 30 days’ notice to terminate the licence agreements (all the licence agreements provided for termination by either party with not less than 30 days’ notice). The reason for the termination of the licence agreements is unclear: VM contended that the licence agreements were terminated in anticipation of the launch of SLA’s own online map-search service at www.map.gov.sg, while SLA explained that the licence agreements were terminated because it had become aware that VM had taken legal action against several different parties for unauthorised reproduction of VM’s online maps and had demanded large payments in exchange for settling those copyright infringement suits, even in cases where the unauthorised reproduction had been minor and had already been removed. What is undisputed, however, is that the licence agreements duly came to an end as at 10 July 2004, and VM does not contend that SLA terminated the licence agreements wrongfully (see the DC decision at [9] and the HC decision at [4]).

5 After the termination of the licence agreements, SLA’s solicitors wrote to VM on 20 July 2005 to demand that the latter cease using materials that contained reproductions of SLA’s works. VM denied having breached SLA’s copyright. A flurry of correspondence between the parties followed, which eventually culminated in SLA commencing the copyright suit. SLA’s claim in the copyright suit is that VM had infringed its copyright by virtue of the fact that VM’s online maps were reproductions of:

(a) “the maps in the Singapore Street Directory 1^st Edition (1954) until the 21^st Edition 2002/2003 (current [e]dition)”[note: 1] (for ease of reference, we shall use the term “the Singapore Street Directory” to denote these various editions);

(b) SLA’s street directory vector data; and

(c) SLA’s address point vector data.

The above items will hereafter be referred to collectively as “the works”.

6 At first instance, the DJ found that SLA was the owner of the copyright in the works as the requirement of originality laid down in s 27 of the Copyright Act (Cap 63, 1999 Rev Ed) for copyright to subsist in the works had been met (see the DC decision at [41] and [44]). She also found that there had been “widespread or wholesale copying” (id at [91]) by VM of SLA’s street directory vector data and address point vector data (collectively, these two sets of data will be referred to as “the copyright works”) in VM’s online maps, given especially the numerous “fingerprints” of copying found in those maps. These “fingerprints” consisted of, inter alia, deliberate errors inserted by SLA in the copyright works (see generally the DC decision at [76]–[85]). The DJ, however, found that there was “insufficient evidence” (id at [87]) to demonstrate that VM had copied the maps in the Singapore Street Directory since the evidence of copying advanced by SLA had primarily been in respect of the copyright works.

7 The DJ rejected VM’s contention that its online maps were the result of independent creation using global positioning system (“GPS”) data and high-resolution satellite imagery, which was then validated on the ground and continuously revised and updated (“the GPS survey”), and not the result of copying the copyright works. This was because, in addition to the fact that no cogent explanation was proffered by VM for the presence of the “fingerprints” in its online maps (see the DC decision at [119]), she found (crucially) that VM’s map-making process was very much based on the copyright works (id at [116]):

[I]n reality, VM’s map-making process was heavily dependent on the raster maps in VM Space, the origins of which was SLA’s vector data, and VM’s vector data which, again, was derived from SLA’s vector data. Vincent [VM’s expert witness] spoke about the advent of “new age” mapping using GIS [geographic information systems] software. I had no qualms with all the facets of map-making in the “new age”. Unfortunately, however dynamic such new mapping methods are, the truth which VM simply could not escape from was that its actual map-making process was heavily dependent ultimately on SLA’s vector data to provide the backbone or “skeleton” of its own online maps. [emphasis in original omitted; emphasis added]

8 In the final analysis, the DJ held that “VM [had] clearly modelled its online maps on SLA’s vector data” (id at [122]) and the nature of the copying done by VM constituted a substantial reproduction of the copyright works. Accordingly, VM had infringed SLA’s copyright in the copyright works (ibid).

9 With regard to VM’s defence that the licence agreements expressly and impliedly entitled VM to use the works in the creation of its (VM’s) online maps (including subsequent versions of those maps), the DJ held that, on a construction of the express terms of the said agreements, there was nothing which gave VM the contractual right to retain and continue using its online maps, irrespective of whether those maps infringed SLA’s copyright (id at [134]). She also held that the alleged implied term that “VM was allowed to keep any maps created under the licence agreements (as well as subsequent versions of the same) and to continue to maintain and market, distribute, sell or offer to sell or otherwise deal with the same” (id at [137]), as contended by VM, “flew in the face of the express terms of the licence agreements” (ibid), and there was simply “no ‘business efficacy’ to speak of” (ibid) that could justify implying such a term, which would “effectively undermine SLA’s legal right to have its intellectual property rights protected in accordance with the law and which would be contrary to the expressed intentions of the parties to the contract” (ibid). The DJ also dismissed VM’s defence based on estoppel on the ground that “[t]here was no evidence that SLA had lulled VM into a false sense of security or into thinking that SLA had abandoned any intention to pursue a claim against it” (see the DC decision at [145]).

10 In the light of her findings, the DJ granted all the reliefs asked for by SLA (save the prayer for full discovery of certain information and documents), including an injunction to restrain VM from infringing SLA’s copyright in the copyright works and an order for the delivery up and/or destruction of all of VM’s documents, the continued retention and/or use of which would be a breach of the injunction (id at [148]–[149]).

11 VM appealed to the High Court against the whole of the DJ’s decision. At the hearing of the appeal, VM informed the Judge that it was prepared to accept that SLA had copyright in the copyright works, but maintained that there had been no copying or substantial reproduction of those works (see the HC decision at [6]). The Judge eventually dismissed the appeal. He agreed with the findings made by the DJ at first instance, as well as her reasons as to why copyright infringement had been established in the instant case (id at [62]). Effectively, the Judge affirmed the DJ’s decision, not just on the point of copying and substantial reproduction, but also on the construction of the licence agreements as well as the issue of estoppel.

The issues before us

12 As mentioned at the outset of this judgment (see [1] above),...