This judgment by the Court of Appeal touches on the subsistence of copyright in the context of compilations, sets out various factors to be considered in determining whether a fair dealing defence to copyright infringement is made out, and considers the right approach in determining whether a counterclaim for groundless threat of copyright infringement is made out.
(A) Who are the parties involved in this case?
- Global Yellow Pages Limited (Appellant)
- Promedia Directories Pte Ltd (Respondent)
(B) What actually happened?
This appeal involved two competing publishers of telephone directories: (1) Global Yellow Pages Limited (“GYP”); and (2) Promedia Directories Pte Ltd (“Promedia”).
At trial in the High Court, GYP had claimed that Promedia infringed its copyright in the Internet Yellow Pages, and various editions of its three print directories, i.e. the Business Listings (“White Pages”), Yellow Pages Business and the Yellow Pages Consumer (“Yellow Pages”), by Promedia’s use and deployment of material from GYP’s said directories in producing or maintaining Promedia’s own three Green Book directories. The High Court had held that GYP’s claim for copyright infringement failed on all grounds and that Promedia could counterclaim against GYP on the basis of groundless threat of copyright infringement.
On appeal, GYP appealed against the High Court’s decision to dismiss its claim against Promedia, for breach of copyright. GYP also appealed against the High Court’s decision which allowed Promedia to counterclaim against GYP for groundless threat of copyright infringement. GYP further alleged that Promedia infringed its copyright by inter alia, using material from GYP’s directories in Promedia’s temporary database. This temporary database stored data used to produce Promedia’s various directories.
(C) What is/are the issue(s) in dispute?
- Whether there is copyright subsisting in the listings arranged within each classification of GYP’s Yellow Pages directories and the listings of the White Pages directories
- Whether Promedia infringed GYP’s copyright by using material from GYP’s directories in Promedia’s temporary database
- Whether Promedia would nevertheless be avail to the fair dealing defence if infringement is made out
- Whether GYP was liable for making groundless threats of copyright infringement
(D) Holding
1) Subsistence of copyright
The Court of Appeal held that for copyright to subsist in any literary work, there has to be an authorial creation that is causally connected with the engagement of the human intellect. The Court of Appeal further explained that “human intellect” refers to the application of intellectual effort, creativity, or the exercise of mental labour, skill or judgment.
In the context of compilations, the Court of Appeal expounded that the compiler must exercise sufficient creativity in selecting or arranging the material within the compilation. Ultimately, whether such acts demonstrate sufficient intellectual effort is a nuanced question of fact and degree. It further clarified that any resulting copyright will only protect the original expression in the form of the selection or arrangement of the material, and not the idea, facts or data thereof.
The Court of Appeal in applying the above-explained principles to the facts of the case, held that there was no copyright subsisting in the listings arranged within each classification of GYP’s Yellow Pages directories. It held that the selection of the contents lacked creativity and was in reality a mere fact-discovery exercise. With regard to the listings of the White Pages directories, it was held that the selection therein was similarly not creative, however, minor tweaks that had been made to the default rules of alphabetical arrangement afforded GYP an extremely thin copyright protection over the said listings.
2) Copyright Infringement
The Court of Appeal clarified that in light of its findings in relation to the subsistence of copyright, only near-wholesale taking by Promedia of the White Pages listings, arranged exactly as they were found in the White Pages, would give rise to infringement. GYP’s central argument on appeal was that Promedia’s temporary database was an infringing work. However, the Court of Appeal held that GYP could not rely on the said argument as GYP had only raised the argument at a late stage of trial.
3) Fair dealing defence
The Court of Appeal held that even if Promedia’s taking of the White Pages listings by photocopying or scanning them into its temporary database amounted to an infringement of GYP’s thin copyright over the same, Promedia would nevertheless be avail to the fair dealing defence within Section 35 of the Copyright Act.
It was observed that the fair dealing provisions aid in safeguarding the interests of the public within a framework of strong effective copyright protection. Whether there has been fair dealing is one of fact and impression having regard to all the circumstances. Factors to be considered in determining whether the fair dealing defence was made out include:
(a) The purpose and character of the dealing
The Court compares the purposes of the infringing work and the original work in assessing whether the dealing was fair. The Court’s inquiry would be heavily shaped by what it was in a work that attracted copyright and what was done with that aspect of the work. The fact that the original and infringing works share the same purpose will tend to weigh against a finding of fair dealing.
(b) Nature of the work
The nature of the work such as its value and whether copyright protection is “thin” or “closer to the core of intended copyright protection” will be considered. A finding of fair dealing is less likely if the original work is fiction-based (copyright protection is not as “thin) or unpublished.
(c) Amount and substantiality of the portion used in relation to the copyrighted work
This is basically a question of whether the quantity and quality of the materials used are reasonable in relation to the purpose of the copying.
(d) Effect of the use on the potential market for the value of the copyrighted work
This factor requires the Court to consider: (1) the extent of market harm caused by the alleged infringer’s action; and (2) whether the defendant’s conduct, if unrestricted and widespread, would result in a substantially adverse impact on the potential market for the original work.
(e) Possibility of obtaining the work within a reasonable time at an ordinary commercial price
A finding of fair dealing is less likely if the defendant could have obtained the work on reasonable commercial terms. This involves 2 questions: (1) whether the defendant made reasonable investigations into the possibility of obtaining the work on reasonable terms; and (2) if the former was possible, whether the defendant attempted to so obtain the work.
In applying the factors set out above, the Court of Appeal reiterated that GYP had a mere thin copyright in the arrangement of the listings (in particular the narrow ways in which the sorting rules departed from the default alphabetical arrangement). Promedia had merely photocopied or scanned the White Pages listings into its temporary database for the purposes incidental to “commercial research”. The arrangement of listings was of no utility or consequence to Promedia. Further, the scanned or photocopied version of the White Pages listings were never publicly distributed. Promedia had not usurped the potential market for GYP’s works. The White Pages listings were distributed freely, and Promedia was merely after the factual content in the White Pages listings and this was not protected by copyright, hence there was no point of Promedia seeking a licence from GYP to photocopy or scan the White Pages listings into its temporary database.
4) Groundless threat of copyright infringement
The Court of Appeal held that GYP should not be liable to Promedia for making groundless threats of copyright infringement. It found that GYP’s letters of demand sent were not threats and were justifiable in any event. The letters were neither unwarranted nor meant to chill Promedia’s legitimate activities. Although the copyright claims in the letters of demand covered a broad category of works instead of specific and particularised threats, this was not to be held against GYP because a telephone directory is an iterative work with many components and sub-components in which different copyrights might independently exist. Further, no conceivable damage flowed from the demand having been made, which could not be compensated by a costs order against the appellant for having made an unwarranted threat.
The Court of Appeal appeared to favour adopting a “sliding-scale approach” in determining whether threats were justifiable, i.e. whether the threats were justifiable depends on the “objective strength of the legal position underpinning the threat”. This “sliding-scale approach” was favoured instead of the “clear binding authority” approach (i.e. a threat is only justifiable if it is supported by clear binding authority) adopted by the trial judge. The Court of Appeal opined that the latter approach, being an overly strict standard, would potentially render every threat in penumbral cases unjustifiable and might discourage even incremental changes to the law. Accordingly, the Court of Appeal overturned the High Court judge’s finding that GYP was liable for making groundless threats of copyright infringement.
Commentary:
This case clarifies once again, that the creativity approach should apply in determining the subsistence of copyright in compilations. It also sets out five useful factors to consider with regard to the fair dealing defence provisions, and serves as a useful illustration how these factors will be applied within the specific context of telephone directories. With respect to the groundless threat counterclaim, the Court of Appeal also cautions against adopting an overly strict “clear binding authority” standard and has in our opinion, appropriately adopted a fairer, “sliding-scale approach” in determining if threats were justifiable by looking at the “objective strength of the legal position underpinning the threat”.
Further, we observe that there appears to be limited copyright protection over compilations of fact, such as those in directories. Authors of such compilations may find themselves in a disadvantaged position, as it would likely be more difficult to seek recourse for any seemingly unfair use of such compilations of fact.