3 August, 2017
INTRODUCTION
In Global Yellow Pages Ltd v Promedia Directories Pte Ltd [2017] SGCA 28, Global Yellow Pages Ltd (“GYP”) appealed against the High Court’s (“HC”) dismissal of GYP’s claim that Promedia Directories Pte Ltd’s (“Promedia”) three directories, namely, the Green Book (a print directory), the Green Book CD-ROM (a digital directory), and the Green Book Directory (an online directory) (collectively, the “GB”), infringed the copyright in GYP’s directories, namely, GYP’s Internet Yellow Pages (“GYP’s Online Directory”), Business Listings (“BL”), Yellow Pages Business and Yellow Pages Consumer (collectively, the “YP”). The BL is a white pages directory where the business listings were arranged in alphabetical order, while the YP comprised two classified directories where the business listings were arranged within various classifications.
At issue was the nature of copyright protection afforded to compilations of factual information.
BRIEF FACTS GYP had an exclusive arrangement with Singapore Telecommunications Limited (“ Singtel ”) where Singtel would provide GYP daily with information on new subscribers or changes to existing subscribers.
Upon receiving the subscribers’ data, GYP would put the data through a largely computerised process that involved the verification, classification and embellishment of the data into a format that was suitable for publication.
Promedia’s production process was far less automated. As it could not obtain subscriber information directly from Singtel it collected data from multiple third party sources, including GYP’s directories and those of competing publishers. Promedia’s standard operating procedure in producing the GB involved the taking of the data in the most recent editions of the BL and YP and merging it with their existing database.
In some years, this task involved saving or printing GYP’s Online Directory and the photocopying or scanning of the BL into a “temporary database”. Promedia’s employees would then call up subscribers to verify and update the entries in the database. They also had to speak to the subscribers to understand their businesses and product or service offerings so that they could list them under multiple business types or offerings. After these steps, the data in the database would be manipulated to generate the various GB directories.
The Court of Appeal (“CA”) noted that Promedia’s directories were visibly different from GYP’s corresponding directories. Promedia had copied the data in GYP’s directories, but there was no evidence that the data that was copied was then reproduced in the same form in which it had appeared in GYP’s directories. GYP contended that Promedia’s GB infringed the copyright in its directories. The CA considered the following five issues in arriving at its decision to dismiss GYP’s appeal.
1. WHETHER COPYRIGHT SUBSISTS IN GYP’S WORKS
The CA took the opportunity to clarify that in relation to compilations, the correct approach to determine whether a compilation is original is the “creativity” approach rather than the “sweat of the brow” approach. Sections 4, 7A and 27 of the Copyright Act make it clear that copyright subsists in an original published literary work, which includes a compilation that “ by reason of the selection or arrangement of its contents, constitutes an intellectual creation” (emphasis added). The CA interpreted this principle to mean that there must be an authorial creation that is causally connected with the engagement of the human intellect. The expenditure of effort (even intellectual effort) that is applied not towards authorial creation but towards other ends
such as the verification of facts will not be considered authorial creation.
The sufficiency of intellectual effort is a question of “fact and degree” – whether such acts and choices demonstrate sufficient intellectual effort and bear a sufficient causal nexus with the final work such that it attracts copyright. This position reflected the fundamental principle that copyright protects not ideas, facts or data, but the expression thereof.
Applying this principle, the CA held that copyright cannot subsist in the listings arranged within each classification nor in the BL by virtue of the selection of its contents because the selection of the contents lacked creativity or was in reality a fact-discovery exercise.
The CA, however, found that the arrangement of the BL’s contents was sufficiently creative, but only barely so such that the ensuing copyright protection was extremely narrow.
GYP also argued that the individual seeds (i.e. fictitious listings introduced to detect copying) that it inserted into its directories showed that it had exercised creativity by devising fictitious names that were realistic enough to avoid detection but unique enough to prevent conflicts with genuine listings. The individual seeds were found in Promedia’s Green Book CD-ROM and the Green Book Directory. The CA rejected this argument on the grounds that the very purpose of the seeds was to be copied. Moreover, a seed is not a literary work as it falls short of the requisite standard of creativity.
2. WHETHER COPYRIGHT IN GYP’S WORKS, IF ANY, WAS PRIMA FACIE INFRINGED BY PROMEDIA
Given its findings on subsistence of copyright in compilations, the CA held that only a near-wholesale taking by Promedia of the BL listings, arranged exactly as they were found in the BL, would give rise to infringement. The CA found that Promedia took only information in the listings and the classifications, in which copyright could not subsist. Though the taking was voluminous, it was not substantial in the copyright sense. Accordingly, there was no infringement of the copyright in GYP’s directories.
3. WHETHER PROMEDIA’S CONDUCT CONSTITUTED FAIR DEALING
The CA acknowledged that Promedia had photocopied or scanned the BL listings in their entirety onto its temporary database, but held that Promedia could avail itself of the defence of fair dealing.
The CA considered the five factors set out in s 35(2) of the Copyright Act in assessing whether a dealing with a work is fair under s 35 of the Copyright Act. The five factors are:
(a) The purpose and character of the dealing;
(b) The nature of the work or adaptation;
(c) The amount and substantiality of the part copied or taken in relation to the whole work or adaptation;
(d) The effect of the dealing upon the potential market for, or value of, the work or adaptation; and
(e) The possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price.
The CA found that the purpose of the photocopying or scanning was to make it easier for Promedia’s employees to compare or identify listings not found in its database and to update its database. This was an internal exercise that was incidental to commercial research. There was no evidence that Promedia had deployed GYP’s rules of arrangement in the master database where Promedia saved the data it collected from GYP’s directories.
Given the nature of the work and the thin protection of such work, the CA did not place too much weight on the substantiality of the taking in relation to the whole work. Moreover, the potential market for GYP’s directories would not have been usurped by such dealing of its directories. The CA noted that the BL was distributed freely, so there was no point in Promedia seeking a licence from GYP to photocopy or scan a copy of the BL. Promedia had photocopied or scanned the BL listings for its factual content and this was not protected by copyright. In the circumstances, the CA concluded that the photocopying or scanning of the BL listings was fair dealing.
4. WHETHER PROMEDIA INFRINGED ANY COPYRIGHT IN THE PUBLISHED EDITION OF GYP’S WORKS
Although GYP had pleaded that Promedia had infringed the copyright in the published edition of its directories, the CA found that GYP did not pursue this claim in the HC and it would be prejudicial to Promedia for GYP to pursue this claim on appeal. The CA held that even if it allowed GYP to pursue this claim, the fair dealing provision under s 109(3) of the Copyright Act (which reproduces, with necessary modifications, the language of s 35 of the Copyright Act) would apply. The reproduction of
the typeset was incidental and the photocopied or scanned version of the BL listings was never publicly distributed.
5. WHETHER GYP IS LIABLE FOR GROUNDLESS THREATS OF COPYRIGHT INFRINGEMENT
GYP appealed against the HC’s decision to grant Promedia’s counterclaim for groundless threat of copyright infringement. The CA reiterated its previous ruling on this issue that the grant of relief under s 200(1) of the Copyright Act is discretionary; it is not a remedy that follows as a matter of course for a successful defendant.
The court’s task is to consider whether, in all the circumstances, there is ny reason for it to grant relief upon a claim of groundless threat founded on a failed allegation of infringement. This will turn on the facts and circumstances of each case; some relevant considerations in particular are whether the action was warranted, whether any conceivable damage flowed from the demand having been made, what the costs consequences from the failed action were or would be, and whether relief
was required at all.
The CA opined that the HC had adopted an overly strict standard insofar as it held that a threat would be unjustifiable if it was not supported by “clear binding authority”. Such a standard would render the scope of the groundless threat provision overly narrow, which could potentially render every threat in borderline cases unjustifiable.
The CA considered that the letters of demand sent by GYP were neither unwarranted nor meant to chill Promedia’s legitimate activities.
GYP had ample factual and legal basis to think that Promedia had copied a substantial amount of its works and could therefore be liable in copyright infringement. Accordingly, the CA reversed the HC’s finding on this issue and ruled that GYP was not liable in groundless threats of copyright infringement under s 200 of the Copyright Act.
IMPLICATIONS AND CONCLUSION
This case reiterates the legal principle that there is no copyright in facts and data but copyright can subsist in compilations of facts and data as a whole provided the compilation is a result of authorial creation that involved the application of human intellectual effort and creativity or the exercise of mental labour, skill or judgment.
This case has important implications on the protection of databases and the application of algorithms to analyse and compile the data.
As copyright protects compilations where human intellect must have been engaged to produce the compilation, copyright is unlikely to protect databases and data analysis reports produced using computer processes. With the widespread use of technology in commerce to analyse trading patterns and consumer behaviour, companies that operate e-commerce platforms may not have adequate protection over their databases and the data analysis reports produced by their systems. It may be time to consider whether a sui generis database right ought to be introduced in Singapore.
