Publisher Reigned in on Race Data Copyright Claim

By Dr. Stanley Lai, SC, of Allen & Gledhill LLP, Singapore

(Photo: iStock © mikhail pogosov)

In a landmark decision last summer, Singapore’s highest court, the three-judge Court of Appeal, ruled that an author’s copyright can only vest in a person and not an incorporated body. The decision followed a lengthy legal battle between the publishers of Singapore’s two horse-racing magazines, Racing Guide published by Asia Pacific Publishing (the appellant) and Punters’ Way, published by Pioneers and Leaders (the respondent). The author who worked on the case, explains the decision and its possible implications for similar copyright cases in the future.

Background

Singaore's Court of Appeal found that the
publishers of Racing Guide were not guilty
of copyright infringement or passing off.
(Photo: courtesy Asia Pacific Publishing)

Pioneers and Leaders (P&L) brought an action against Asia Pacific Publishing (APP) for copyright infringement and passing off in 2007 and 2008. In July 2010 the High Court found that APP had infringed copyright in respect of the selection and arrangement of certain tables that were found in Punters’ Way. Both magazines obtained their race information from the Singapore Turf Club. For around one year from June 2007, they each reproduced racing information in the same way - i.e. in four tables, one each for the race card, race results, track work and past performance. While Racing Guide initially rejected a cease-and-desist letter from Punters’ Way, 2 months later it modified its tables. The High Court, however, held that APP was liable for passing off in that it had adopted a color code and get up for their Racing Guide similar to that used by their competitor. It supported P&L’s claim that these similarities had confused and misled the public and that Racing Guide was trying to pass itself off as Punters’ Way. Perhaps most controversially, the High Court held that a company could be the author of an original copyrightable work. APP successfully appealed the High Court’s decision.

Court of Appeal overturns ruling

In August 2011, the Court of Appeal reversed the High Court’s decision. In its deliberations, it assessed whether P&L was the author of the tables featured in Punters’ Way and whether it was entitled to claim copyright protection.
P&L had not pleaded that the racing tables were a work of joint authorship by its employees, but that the company itself was the author of the work. It had claimed to be the sole author of the tables not the owner of the copyright in the tables.

The Court of Appeal drew a distinction between authorship and ownership. It held that these were not synonymous in that authorship refers to the act of creation whereas ownership refers to the possession of proprietary rights. An author is not necessarily the owner and the owner is not necessarily the author. The Court of Appeal said, definitively, that for the purposes of the Copyright Act, authors had to be living persons. To hold otherwise would run counter to other sections of the Copyright Act, notably the duration of works. The Court held that companies could not claim a perpetual monopoly of copyright ownership based on an assertion of authorship. This, it noted, was reinforced by the Australian Federal Court of Appeal’s decision in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCAFC 149 at [100], [134], in which two members of the quorum stated unequivocally that, under Australian law, an author had to be a human author.

Is there an identifiable author?

The Court considered whether, according to the facts presented, a natural author could be identified. It was apparent that the collection of horse-racing data -the names of horses and jockeys, their track work records, - and its organization and selection were either computerized or compiled by separate individuals. Each person’s responsibility and contribution (which had not been outlined in this case) were insufficient to render the said individual an author of the tables. Such contributions had facilitated the production of the data but did not equate to a creative collaboration.

The Court also said that, in cases involving a high degree of automation, no original work can be said to have been produced for the simple reason that there are no identifiable human authors. The fundamental proposition was clear: the respondent had been unable to identify an author or authors, and copyright cannot subsist without a human author. The Court went on to say that were it to assume, for the sake of argument, that the respondent’s employees had an authorship role in the compilations, the evidence did not satisfactorily establish the point at which copyright protection arose.

(Photo: istock © Charles Mann)

Displacement of a presumption

The Court of Appeal also considered the operation of the statutory presumption in section 132 of the Singapore Copyright Act, which provides as follows:

“Presumptions in relation to publisher of work:

132. Where, in an action brought by virtue of this Part in relation to a literary, dramatic, musical or artistic work, section 131 does not apply, but it is established -

(a) that the work was first published in Singapore and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought; and
(b) that a name purporting to be that of the publisher appeared on copies of the work as first published.

Then, unless the contrary is established, copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication.”

P&L argued that since it was identified as the publisher of Punters’ Way, it should be presumed that it was the owner of the copyright that subsisted in the tables. The Court took a different view. It held that the presumption was only a guide to enable a court to reach an appropriate conclusion in the absence of evidence to the contrary. If an opponent offers evidence in rebuttal, the presumption could be displaced. As authorship was in dispute in this case, and the appellant had adduced evidence that copyright did not subsist in the tables and there was no identifiable author, the statutory presumption was displaced.

Copyright in compilations in Singapore

The Court considered section 7A of the Copyright Act, which provides, inter alia, that any copyright subsisting in a compilation is limited to the selection or arrangement of its contents which constitutes an “intellectual creation”. The information in Punters’ Way‘s tables clearly constituted a compilation. According to the Court, the notion of “intellectual creation” ties in with the basic copyright principle that only “original” compilations are protected by copyright. The Court affirmed that the test for compilations remained the same as the general test for a literary work, namely that of originality, i.e., whether a sufficient amount of skill, labor and judgment is involved in the creative process.

The Court observed that the Anglo-Australian requirement of originality, while taking the intellectual effort of the author into account, had traditionally placed greater emphasis on the time, labor and effort involved. It noted that in several past decisions, copyright had been granted in respect of seemingly mundane compilations (such as street directories and football fixture lists). These had been decided predominantly prior to the digital era. With the proliferation of computers and software, the Court held that the law of copyright should evolve to take into account the ease and convenience that computers bring to the process of compiling data in the 21st century. The Court submitted that, “older decisions that had focused on the gathering of information as the touchstone rather than the productive effort involved in expression may therefore require reconsideration one day”. (at [35]). The Court also said that the expression of data, such as through an alphabetical listing, involves little ingenuity or skill beyond mechanical labor or routine programming. In such matters, it may be difficult to argue that copyright protection is called for. This suggests that copyright protection for compilations in Singapore is likely to evolve such that a narrower scope of copyright protection or none at all will be afforded to fact-based compilations created by the “sweat of the brow” or involving a very mechanical or mundane operation.

(Photo: iStock © 4x6)

This is further supported by the Court’s additional observation that, in assessing copyright, the four key principles summarized in Feist Publications Inc v Rural Telephone Service Company Inc 499 US 340 (1991) should be considered. First, facts are not copyrightable. Second, compilations of facts are generally copyrightable. Third, the sine qua non of copyright is originality. Fourth, originality simply means that the work was independently created by the author and possesses some minimal degree of creativity, the required level of which is extremely low.

Passing Off

The Court also allowed the appeal on the basis that P&L’s case failed in relation to misrepresentation or passing off holding that the test for damages had been wrongly applied by the High Court. As the alleged period of infringement (June 30, 2007, to June 5, 2008) had passed, “actual damage” was the right test to apply and not “likelihood of damage”. Moreover, it held that the respondents had failed to adduce any evidence of damage in terms of a decline in the sale of its publication. The Court placed little reliance on the respondent’s market survey evidence, due to a lack of objectivity in the way in which it had been conducted. For example, the Court found that the question “How likely would it be for you to confuse these two magazines if you were in a hurry and you were selecting one of them?” could lead to an inaccurate finding of misrepresentation. The Judge also described as flawed the scenario according to which race-goers who were “less educated or who were late and/or were in a hurry to get into the grounds of the racetrack” could be confused and might think they were buying the Punters’ Way when they had actually chosen the Racing Guide. The correct test to apply, he submitted, was that of imperfect recollection. This should take into account the fact that the “confusion which may occur will take place when the customer has in his mind his recollection of the plaintiff’s mark, which may well be only an idea of the whole or actual mark”. The Court held that there was no misrepresentation that could have led to confusion on the part of the public, because the cover pages of the two publications were sufficiently distinct and were unlikely to be confused by the relevant sector of the public.

The Court of Appeal’s decision reaffirms the basic norms and fundamental principles of copyright protection in Singapore, in line with its historical rationale and underpinnings. The decision affirms that it must be shown that a work is the original creation of a human author for it to be entitled to copyright protection and in the event a company claims copyright ownership, it must be able to point to a human author or authors to claim such protection. Beyond this, it also offers some insight into how copyright cases involving compilations of data are likely to be addressed in the future by Singapore’s courts.