Virtual Map (VM), the parent company of a popular website that features interactive street maps of Singapore, has had its appeal dismissed. VM lost its battle against a government agency, which accused it of copying state data and materials to use for its online maps. VM had appealed against the District court’s decision that it had infringed the copyright of Singapore Land Authority’s (SLA) maps and therefore was worthy of an injunction restraining it from infringing SLA’s works. On 25 March 2008, the High Court upheld the injunction granted by the District Court prohibiting VM from reproducing, distributing or selling reproductions of SLA’s street directory maps.
VM entered into seven non-exclusive licence agreements with SLA between 1999 and 2003 regarding the use of the Authority’s maps and address point data to produce maps available on VM’s website www.streetdirectory.com. However, the licence agreements were terminated on 10 July 2004 in accordance with the terms of the termination clause in the licence agreements. Even after termination of the licence, VM continued to use SLA’s maps and data and sell maps that were reproductions of its copyright works. On 20 July 2005, SLA wrote to VM demanding that it stop using and provide a written agreement that it would stop using data that was reproduced from SLA’s works. VM denied that is was in breach of SLA’s copyright and claimed that its maps were independently created; hence the proceedings that ensued.
VM claimed that even after termination, the licence agreements actually allowed for the continual use of SLA’s copyright works that had already been utilised in the creation of VM’s maps. it even went so far as to claim that it no longer had to pay SLA royalties for marketing products derived from SLA data, and that even after the termination of the licence, was still able to continue using SLA’s data loaded onto its maps. There is however nothing in the agreements to support VM’s assertions, expressly or implied. Also VM’s claim that SLA was estopped from taking any legal action because of the delay in actually protecting its copyright was unfounded. VM claimed that SLA did not take any action to protect its copyright for some time after the termination of the licence agreements, even with the knowledge that VM continued to sell its online maps to the general public.
In the District Court, VM claimed that the SLA did not own any copyright in the copyright works; but during the appeal hearing, VM’s counsel stated that VM was prepared to accept that SLA had copyright in the compilation of the street directory and address point data, but continued to assert that no occurrence took place of copying or substantial copying of SLA’s data. In order for the breach of copyright to be proven, it had to be shown that VM’s work was indeed objectively similar to the copyright works and that the similarity resulted from the copying of the copyright works.
For copyright infringement, the burden of proof lies with the plaintiff (Creative Technology Ltd v Aztech Systems Pte Ltd  1 SLR 621. In this case all that was required was a substantial reproduction by VM of SLA’s copyright works. Section 10(1)(b) of the Copyrights Act (Cap 63, 2006 Rev Ed) states that a reference to a ‘reproduction, adaptation or copy of a work’ shall include a reference to a ‘reproduction, adaptation or copy of a substantial part of the work’. It could be argued that the copying in this case was actually ‘altered’ copying because VM’s maps were not exact replicas of SLA’s works. For altered copying, the test for copyright infringement is whether or not the infringer has ‘incorporated a substantial part of the independent skill, labour etc contributed by the original author in creating the copyright work’.
Although SLA claimed that VM substantially reproduced its copyright works, VM contended that its online maps from 2004 were independently created through the use of GPS data and high resolution satellite imagery. SLA pointed out that far too many ‘fingerprints’ of its copyright materials showed up in VM’s maps and this proves that there was substantial copying as opposed to independent creation. ‘Fingerprints’ determine whether copyright infringement has taken place and many national mapping organisations place deliberate errors in their maps in order to detect infringement.
There were a number of groups that the ‘fingerprints’ in VM’s maps were categorised into. The first group concerned phantom or ghost details; and these are non-existent objects purposely placed by SLA in its maps in order to expose infringers. Examples of these are non-existent buildings in SLA’s maps that were replicated in VM’s maps. Interestingly enough, even genuine mistakes on SLA’s part for example in terms of road direction arrows, were repeated in VM’s maps and if VM had in fact been doing a proper job in its independent map-marking exercise, it would have noticed these mistakes. Another type of ‘fingerprint’ was incorrectly-named buildings and building numbers of which were also replicated in VM’s maps. The same could be said for the similarities in shapes, as several examples were identical or extremely similar. On top of that shapes that were omitted on SLA’s maps in relation to buildings were also omitted in VM’s maps. The address point database as well as some 58 address point co-ordinates were also identical.
Because VM had prior access to SLA’s data through the licence agreements, it was VM’s duty to prove that the “fingerprints” were not a result of copying of SLA’s data. VM’s task of proving that the new maps were indeed the result of its own independent creation was made more difficult by the fact that the two people most involved in the map-making exercise both held no qualifications in land survey or any experience in cartography. Since VM failed to explain why there were many inexplicable “fingerprints” in its maps and failed to establish that its maps were its own independent creation, the next question was whether VM’s copying was substantial.
VM’s counsel admitted that even if copying had taken place, it was not substantial copying, occasionally referring to the fact that copying, if any, was not substantial if compared to VM’s overall work. However, copied features need not form a substantial part of the defendant’s work in order to be considered a substantial part of the copyright work; and even if the overall appearance of the defendant’s work is different from the copyright work, this does not mean that the defendant’s work is not infringing the plaintiff’s copyright.
The High Court, on the other hand, agreed with SLA and asserted that not only had copying taken place, but ‘widespread or wholesale copying’. Although VM had ‘improved and beautified’ SLA’s data, the fact still remained that VM’s map-making process relied heavily on SLA’s data and it actually provided the basis for VM’s maps.
The High Court dismissed VM’s appeal against the District Court judgement with costs. The company is planning to file an appeal with the Court of Appeal if the High Court gives permission to do so. The ironic thing is that VM for years brought lawsuits against a multitude of companies in Singapore for using its maps; and now what about all those people who paid licensing fees to VM? This creates many complexities because, if VM infringed on SLA’s copyright, then this makes the available VM maps pirate copies. If that is the case, the question then raised is if all licensees to VM’s maps are actually in possession of illegal copies and showing them to the world? Also if VM’s last attempt at an appeal fails, it will have to remove the maps from the internet, and this will have an incredible impact on all those organisations and companies with maps that are linked to www.streetdirectory.com.
VM has been ordered to remove the copyrighted maps off the internet. The site was down from 3 April 2008 and hopes to be up and running on 14 April 2008, as VM works on a set of replacement maps. This has caused many problems as many users have been searching for alternatives. Ironically similar service providers have been benefiting from VM’s legal troubles, as witnessed by local online map business www.shownearby.com that was launched on 1 April 2008. Operating from home, the founders of this site use Google’s maps that are free, and hope to generate revenue from business listings. The site has already had over 7,000 hits and that is only for the first week of April!
Meanwhile, VM says it will not be refunding companies it fined for unauthorised use of its maps in spite of the fact that it was found guilty of copyright infringement. Some lawyers have argued that these companies may actually be entitled to some recourse, as it could be claimed that they did not know that VM was not the copyright owner of the maps when they entered into a settlement with VM. Therefore it could be argued that the settlement was entered into by a common mistake or unilateral mistake, and so companies may consider attempting to recover the fines they paid.
VM is still appealing against the High Court decision on in the Court of Appeal.