The Court of Appeal decision in Global Yellow Pages Ltd v Promedia Directories Pte Ltd [2017] SGCA 28 affirmed the decision of the High Court dated 28th January 2016 – ruling in favour of Promedia Directories (“the Defendant”) and dismissing Global Yellow Pages’ (“the Plaintiff”) appeal. The case has set important precedent in Singapore copyright law with regard to compilations of factual material, outlining the extent to which copyright protection may cover these kinds of works.
The two parties in question are providers of telephone directories. The Plaintiff sued the Defendant for copyright infringement, alleging that the arrangement of the Defendant’s data in their directory was overly similar to that of the Plaintiff. This consisted of three classes of material: classified listings, business listings and ‘seeds’ (data specifically implanted by the Plaintiff in order to monitor whether its competitors were using its database). This was ruled to have no standing, as copyright could not be said to subsist in all of the data in question. The compilations, it was said, lacked ‘sufficient creativity or intellectual effort in the selection or arrangement of the material’. Under S.27 of the Singapore Copyright Act, only ‘original’ expressions or arrangements may be protected.
In the Court of Appeal case, this position was elaborated upon – and subsequently affirmed – through an analysis of the approaches in determining sufficient originality of works, in order that copyright may subsist. In an analysis of case law on the presence of creativity in production of copyrightable works, there was not found to be a tradition in finding creativity which involved the arrangement of data. In fact, the Court referenced Singapore parliamentary debates at the time when Copyright Act amendments were debated in 1998, which specifically ruled out classification of ‘databases and compilations’ as being classable as original material in which copyright may subsist. When applied to the works of the Plaintiff, the Court maintained the position of the High Court that copyright subsisted in neither the classified listings nor the ‘seeds’, as obtaining these records were mere exercises in ‘fact-discovery’ rather than a process which required the sufficient level of creativity. Nonetheless, the Court of Appeal did somewhat divert from the High Court in finding that the Plaintiff’s collection of business listings could exhibit sufficient creativity for copyright to subsist in them.
Given its findings on the subsistence of copyright, when turning to the possibility that the Defendant had infringed the Plaintiff’s copyright, the only outcome that could have found the Defendant liable would have been a wholesale appropriation of the business listings. Charting a different course from the decision of the High Court, the Court of Appeal heavily scrutinised the Defendant’s actions in relation to the business listings of the Plaintiff– which were, namely, photocopying and scanning these materials for the Defendant’s own commercial use.
However, the prospect of infringement was not realised, following an analysis of fair dealings in relation to works under sections 35-37 of the Copyright Act. Crucially, the scans and photocopies of the databases that the Defendant had taken of the Plaintiff’s business listings were used for internal purposes only, and never publically marketed. Thus, the scanning and photocopying was not construed as an unfair dealing under S.35(2)(d) – it did not allocate any obvious commercial gain to the Defendant.
Nevertheless, the Court of Appeal disagreed with the judgment of the High Court that the Plaintiff was guilty of groundless threat of copyright infringement. Using the recent judgment of Singsung Pte Ltd v LG 26 Electronics Pte Ltd [2016] 4 SLR 86, the Court of Appeal applied its discretionary judgment to find that the Plaintiff’s cease and desist letters to the Defendant were not unwarranted and did not intend to curtail the Defendant’s business activities.
In conclusion, although the Court of Appeal found that copyright protection could have covered the arrangement of Yellow Pages’ business listings, it nevertheless concurred with the judgment of the High Court in finding favour with Promedia. The decision has highlighted the narrow scope by which copyright can be seen to subsist in a mere collection of facts, lacking any significant creative process having gone into their arrangement.
By Gladys Mirandah and Sharifah Alsri