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    11:36 PM Lim Ren Jun (Principal, Baker McKenzie Wong & Leow.) and Victor Looi (Practice Trainee, Baker McKenzie Wong & Leow.)

    Narrower Protection for Compilations: Where Creativity Trumps Effort

        

    Introduction

    The issue of whether copyright protection extends to compilations of factual material has once again taken centre stage before the Singapore courts in the recent decision of Global Yellow Pages Ltd v Promedia Directories Pte Ltd and Another Matter [2017] SGCA 28. Earlier in 2016, George Wei JC (as he then was) expounded at great lengths in his seminal High Court judgment on why copyright could not subsist in the directories in question. This matter was then taken before the Court of Appeal (the “CA”), which consisted of five judges (a rare sight in CA cases). Additionally, the esteemed Professor David Llewelyn was appointed to assist the CA throughout the proceedings.

    After hearing parties’ arguments, the CA largely agreed with the lower court on the issue, while dismissing the defendant’s counterclaim of groundless threats of copyright infringement. The CA’s pronouncements, which will be explored below, hardly comes as a welcome relief to creators of compilations of factual material, given the minimal copyright protection accorded to their works. Considering that Singapore also does not provide for any sui generis database rights, it is likely that these creators will be disadvantaged when it comes to reaping the fruits of their labour. 

    Facts

    Global Yellow Pages Limited (the "Plaintiff") and Promedia Directories Pte Ltd (the "Defendant") are publishers of telephone directories.

    To produce its directories, the Defendant first obtains data from numerous third-party sources, including the Plaintiff's Yellow Pages Business and Yellow Pages Consumer (collectively, the "YP"), as well as the Plaintiff’s Internet Yellow Pages (the “Online Directory”). The Defendant also makes copies of the Plaintiff's Business Listings (the "BL"), and stores them in a "temporary database" before performing several other tasks on the data. Because the Defendant's employees did not verify several subscriber listings in the Plaintiff's directories, several fictitious listings that were planted within to detect copying (i.e. seeds) were replicated in the Defendant's directories. This led the Plaintiff to sue the Defendant for copyright infringement.

    At trial, the Plaintiff asserted the subsistence of copyright in (a) the individual listings in its directories; (b) compilations of (part or whole of) its directories; and (c) the seeds (collectively, the "Works"). The Plaintiff also claimed that its copyright in the Works was infringed by the Defendant in the Defendant's directories.

    In its defence, the Defendant countered that copyright did not subsist in the Works. Even if it did, the Defendant sought to rely on numerous defences, including the fair dealing defence. Additionally, the Defendant counterclaimed against the Plaintiff for groundless threats of copyright infringement.

    In deciding whether the Works were original and thus deserved copyright protection, the trial judge, George Wei J, first held that the "creativity" approach should be adopted instead of the "sweat of the brow" approach.  On this basis, Wei J held that copyright could not subsist in the directories' individual listings, the selection or the arrangement of listings under the BL, or the seeds. Meanwhile, while copyright subsisted in the compilations of the Plaintiff's directories as a whole, such protection did not cover any subset of such compilations.

    As to whether there was infringement, Wei J found that neither the copying of the Plaintiff's BL into the Defendant's temporary database, nor the copying of data in the Plaintiff's YP or Online Directory into the Defendant's directories constituted infringement.

    While the dismissal of the Plaintiff's infringement claims rendered the raising of defences redundant, Wei J noted that he would otherwise have allowed the Defendant to rely on the defence of fair dealing.

    Finally, Wei J allowed the Defendant's counterclaim against the Plaintiff.

    This decision by the High Court prompted the Plaintiff to appeal to the CA.

    Holding

    Subsistence of copyright

    The CA concurred with Wei J's decision to apply the "creativity" approach in assessing the originality of a work. The CA stated, amongst other reasons, that while the "sweat of the brow" approach was adopted in Singapore Land Authority v Virtual Map (Singapore) Pte Ltd [2007] SGDC 216 ("Virtual Map"), this case was eclipsed subsequently by Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381 ("Asia Pacific"), where the CA adopted the "creativity" approach (see [26]). Additionally, while there was a valid concern that a party might "free-ride" on the intellectual creations of another party, it would be more appropriate that this issue be addressed by database rights, which the Singapore Parliament had intentionally decided not to introduce when discussing the amendments to be made to the Copyright Act in 1998.

    Applying the "creativity" approach, the CA held that copyright did not subsist in the directories' individual listings as the choosing of content was bereft of creativity or was merely "a fact-discovery exercise" (see [38]). Meanwhile, copyright did not subsist in the BL on the mere basis of the selection of content, though it subsisted based on the arrangement of such content (see [43]). Finally, the seeds could not be considered as literary works because of the length of their content (or lack thereof) and because the seeds did not offer "information, pleasure or instruction" (see [52]).

    Copyright infringement

    On appeal, the Plaintiff decided to focus on the claim that the Defendant's temporary database constituted an infringing work.

    The CA held that the Defendant's temporary database could not be considered as an infringing work since the Plaintiff had only raised this claim at a late stage of the proceedings.

    Nevertheless, the CA proceeded with examining the merits of the Plaintiff's arguments. It held that while the copying of the entire listings in the BL could constitute prima facie infringement, the Defendant could rely on the fair dealing defence to avert civil infringement liability.

    The CA first outlined the history of the fair dealing provision under section 35 of the Copyright Act (see [74]-[76]), before examining the five factors that courts should consider in ascertaining whether a dealing with literary works constitutes fair dealing (see [77]-[85]). Applying the factors, the CA highlighted that the Defendant’s copying of the Plaintiff’s BL was merely to facilitate the Defendant’s identification, comparison, and / or updating of listings that were absent in its Database. The arrangement of the listings, which was the sole reason why the BL deserved copyright protection, was not copied by the Defendant. Next, because the BL was primarily fact-based and attracted thin copyright protection, the extent of the Defendant’s taking of the Plaintiff’s work should not be given undue weight. Additionally, such taking did not undermine the potential market for the Plaintiff’s work. Finally, the Defendant did not have to procure a licence from the Plaintiff to copy the BL since the BL was issued freely, and the Defendant merely sought the facts within the BL, which were not protected by copyright. 

    Further, the CA held that there was no infringement of the Plaintiff's copyright in the YP and Online Directory. First, the Defendant had merely obtained information in the Plaintiff’s listings and classifications in the YP, which attracted no copyright protection. Secondly, copyright protection only applied to the Online Directory as a whole based on the arrangement of listings. The Plaintiff failed to prove that the Defendant had reproduced a significant number of web pages from the Plaintiff’s Online Directory and had arranged the listings based on the Plaintiff’s categories. Therefore, there was no finding of infringement.

    Groundless threats of copyright infringement

    The CA disagreed that the letters of demand that the Defendant received from the Plaintiff constituted groundless threats that had the purpose of stifling the Defendant’s legitimate activities and improperly monopolising the market. This was because the Plaintiff had sufficient factual and legal grounds when alleging that the Defendant had infringed the Plaintiff's copyright. Also, while the Plaintiff claimed the subsistence of copyright across a wide category of works, the CA recognised that a telephone directory had numerous parts and sub-parts in which different copyrights might subsist, and therefore did not construe the breadth of the Plaintiff's claims against the Plaintiff. Finally, section 200 of the Copyright Act, which provides a party with a cause of action against another party's groundless threats of copyright infringement is not intended to be a remedy that every successful defendant can rely on.

    Commentary

    "Sweat of the brow" approach versus "creativity" approach

    Both Wei J and the CA applied the "creativity" approach in determining the originality of a work, while appearing to distance themselves from the "sweat of the brow" approach. In particular, Wei J raised several English and Australian authorities to show that the "sweat of the brow" approach has now been supplanted by the "creativity" approach. Also, it has been argued that effort alone, without any form of creativity, does not translate to originality. This is because copyright law is meant to reward the expression of ideas, and not to grant monopolies over facts or data that the public would consequently be precluded from using. 

    With respect, it remains to be seen why the former approach cannot co-exist alongside, and be regarded under the same breath as, the latter approach.

    First, as observed by Wei J in the High Court, the effort and expense invested in creating databases is protected in the United Kingdom (the "UK"), with the UK's recognition of sui generis database rights. Conversely, in Singapore, there is no such equivalent right to render creators of compilations of factual material with such protection. In fact, it is not known when, or if ever, Singapore will introduce such a right. After all, almost 20 years have passed since Parliament intentionally decided against doing so. Since then, there has been no significant news or developments regarding the introduction of database rights. Given these circumstances, it is all the more necessary for Singapore courts to give some recognition to the "sweat of the brow" approach so as to protect the works of creators of compilations.

    The amicus curiae appointed in the present case, Professor David Llewelyn, recognised that some protection of databases may be provided for through contract law (see [35]). However, it may be argued that the availability of contractual remedies to compilation creators should not preclude these creators from seeking legal recourse and additional protection under intellectual property laws. After all, such laws tend to provide for a wider range of actions to enforce one's rights. While the creation of database rights remains Parliament's preserve, courts can do their part to protect compilations of factual material by being flexible in their approach of assessing the originality of a work. Otherwise, the creators of such works will be significantly disadvantaged should the Singapore courts only adopt the "creativity" approach (cf. [35]).

    Secondly, it should be noted that copyright recognises not just intellectual activity, but also industry activity (see George Wei, The Law of Copyright in Singapore (SNP Editions, 2000) at [1.2]). It could be argued that what is lacking in terms of creativity and / or intellectual activity can be made up for with sufficient effort. After all, "[c]opyright protection is often justified on the basis that it provides an incentive for the creation of the copyright work" (see Ng-Loy Wee Loon, Law of Intellectual Property of Singapore (Sweet & Maxwell, 2014) (“Ng-Loy”) at [5.1.1]). Additionally, copyright protection is granted to "increase the pool of the creative works for the enjoyment and progress of the society" (see Ng-Loy at [5.1.2]). Should compilations of factual data be accorded little copyright protection, few people would be incentivised to create such works in future, and this might not be in the public’s interest.

    Thirdly, as rightly highlighted by the CA towards the end of the judgment (see [109]), while Virtual Map was overshadowed by Asia Pacific, the approach adopted in Virtual Map "received no adverse comment" from either the High Court or the CA. Therefore, Virtual Map should not be dismissed entirely.

    In view of the above, it is proposed that going into the future, a party should be able to rely on either the "sweat of the brow" approach or "creativity" approach (in the literary, dramatic, musical, or artistic sense) in asserting the subsistence of copyright in works. If a party is unable to show a minimum level of creativity, he should still be able to obtain copyright protection over his work if he can demonstrate that a substantial amount of labour was expended in producing that work and that there was no copying of the whole of another party's work. As to what would constitute "a substantial amount" would be a matter of fact, it is acknowledged that the threshold for this approach should be a high one, especially if the work does not exhibit a minimum level of creativity at all.

    Application of the "sweat of the brow" approach

    Based on the framework suggested in the previous paragraph, the outcome for whether copyright subsists in the selection and arrangement of listings in the BL, YP and Online Directory in the present case would nevertheless remain the same. This is because such selection and arrangement does not require much human effort, and therefore the high threshold of labour required is not satisfied. 

    That being said, a different outcome might have been reached regarding whether copyright subsists in the seeds in the Plaintiff's directories as a compilation.

    First, while "[i]t is undesirable to confer copyright protection on what are essentially the basic building blocks in a language" (see Ng-Loy at [6.1.12]), in the present case, the seeds do not form, and will unlikely form in the future, the essential building blocks in the English language. Therefore, there is no risk that granting the Plaintiff copyright protection over the seeds would result in an unjustified monopoly by the Plaintiff.  

    Secondly, the English courts stated in University of London Press Limited v University Tutorial Press Limited [1916] 2 Ch 601 at 608 that the literary merit or style of a subject matter is irrelevant when ascertaining whether the subject matter can be considered as a literary work. Also, "judges should not be turned into literary critics having the power to decide what is 'worthy' and deserving of copyright protection, and what is 'unworthy' and may be copied with impunity by others" (see Ng-Loy at [6.1.4]). In the present case, while the seeds are fictitious listings, and each seed may be short per se,  significant effort and creativity went into creating the seeds as a compilation. The Plaintiff had to exercise some creativity and expend effort in thinking up the details for each seed. Next, parts of this compilation had to be strategically spread out and inserted within the Plaintiff’s directories so as to detect copying effectively. Therefore, regardless of which approach is applied, the seeds, when viewed as a compilation, should be considered a literary work deserving of copyright protection.

    Finally, the CA stated that "[a] literary work is generally regarded as a work expressed in print or writing for the purpose of providing information, pleasure or instruction" (own emphasis added) (see [297]). It may be argued that the seeds provide information to the Plaintiff about which competitor or other party has copied the Plaintiff's directory listings in bulk. Further and in the alternative, the word "generally" as used by the CA allows room for exceptional circumstances whereby a work, which does not provide information, pleasure or instruction, can still be accorded copyright protection. Considering the goal of copyright law is to protect the expression of ideas regardless of their quality (save several extreme exceptions), copyright should subsist in the seeds as a compilation. 

    Fair dealing defence

    It is submitted that if the Defendant’s temporary database is said to have infringed the Plaintiff's copyright, the Defendant should not be allowed to rely on the fair dealing defence.

    First, even the CA itself has recognised that "the fact that the original and infringing works share the same purpose will tend to weigh against a finding of fair dealing" (see [78]). Also, greater consideration could have been given to the fact that both the Plaintiff and the Defendant were competitors in the same industry, their works (i.e. directories) were of a similar nature, and the purpose to be achieved through their works was identical (i.e. to provide a repository of individuals' / businesses' data for users to refer to). After all, the UK courts have generally adopted a firm stance against competitors in the industry that take copyright material from others and leverage it to further their own interests (Susanna Leong, Intellectual Property Law of Singapore (Academy Publishing, 2013) at [09.056]).

    It should be noted that the CA gave weight to the fact that copyright subsists in the arrangement of the listings and that this arrangement was of little consequence to the Defendant. Therefore, the purpose of the dealing was not against a finding of fair dealing (see [88]). However, it is submitted that the Court when considering the purpose and character of the dealing should take into account the entire action by the Defendant, i.e., the copying of listings into the database, instead of merely focusing on the purpose and character of the copying of the listings' arrangement.

    Next, the CA expressed its reluctance in ascribing too much weight to the extent of the Defendant's taking of the Plaintiff's work (see [89]). With respect, the "amount and substantiality of the part copied" (see section 35(2)(c) of the Copyright Act) should be viewed in an equal light as the "nature of the work" that is copied (see section 35(2)(b) of the Copyright Act). There is no reason for viewing the substantial extent of the Defendant's copying less favourably just because the work copied deserves only thin copyright protection. Ultimately, the factors should be viewed in their totality, and be applied with the purposes of copyright protection in mind.

    Also, the CA stated that the Defendant would not have infringed the Plaintiff's copyright if the Defendant had referred to hard copies of the BL rather than copying the BL into the temporary database. However, it is irrelevant whether there are alternative methods by which the Defendant could have accessed the same information. The fact remains that there has been an infringement of the copyright, and the focus should be on the fact that the Defendant has leveraged the Plaintiff's BL as a springboard to produce works that are in direct competition with the Plaintiff's. There is a likelihood that the potential market for the Plaintiff's works would be undermined as a result of the Defendant's actions.

    Finally, while the BL was issued freely, it does not detract from the fact that the Defendant could simply have obtained the work within a reasonable time at an ordinary commercial price from the Plaintiff. After all, the Defendant was not using the BL in the capacity as an ordinary consumer (viz, making references to various listings), but, as stated above, was relying on the BL to produce competing works. This situation can be somewhat analogised to instances of photographers making available their works online for the public to view, but charging a licence fee for the replication and display of such works for commercial exhibitions.

    Evidently, this decision does not bode well for creators of compilations of factual material. It remains to be seen how they can inject creativity into their compilations so as to obtain stronger copyright protection, which would thereby allow them to reap the fruits of their labour.

    * This blog entry may be cited as Lim Ren Jun and Victor Looi, “Narrower Protection for Compilations: Where Creativity Trumps Effort”  (30 May 2017) (http://www.singaporelawblog.sg/blog/article/187)

    ** A PDF version of this entry may be downloaded here

     

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