Highway Video v Public Prosecutor: Copyright Infringement, Foreign Films & Parallel Imports
Highway Video Pte Ltd, along with its directors Teng Yock Poh and Teng Kem Hong, appealed against their conviction under the Copyright Act and the Trade Marks Act for possessing and selling infringing copies of the film 'The Duke of Mount Deer'. The High Court allowed the appeal, finding that the prosecution had not proven beyond reasonable doubt that the VCDs were unauthorized copies of the film. The court held that the evidence presented was insufficient to establish that the VCDs were not legitimate parallel imports.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeals allowed.
1.3 Case Type
Criminal
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Copyright infringement case involving foreign films. Court allowed appeal, finding insufficient proof VCDs were unauthorized copies.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Highway Video Pte Ltd | Appellant | Corporation | Appeal allowed | Won | |
| Teng Yock Poh | Appellant | Individual | Appeal allowed | Won | |
| Teng Kem Hong | Appellant | Individual | Appeal allowed | Won | |
| Public Prosecutor (Lim Tai Wah) | Respondent | Government Agency | Appeal dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Yong Pung How | Chief Justice | Yes |
4. Counsels
4. Facts
- Highway Video Pte Ltd operates a shop selling video cassettes and VCDs.
- The Tengs are siblings and directors of Highway Video Pte Ltd.
- Lim Tai Wah is a director of Golden Mandarin Organisation Pte Ltd and authorized to act on behalf of Television Broadcasts Ltd and TVBI Co Ltd.
- TVB produced the film serial 'The Duke of Mount Deer', first telecast in Hong Kong in July 1984.
- TVBI became aware of potentially infringing copies of TVB's films being sold in Singapore in VCD format.
- GMO sent warning advertisements to distributors, including Highway, about infringing copies of TVB programs in VCD format.
- The Tengs purchased a copy of the film from GC Video Pte Ltd for $100, with assurance it was a parallel import from Malaysia.
- Private investigators purchased the set of 40 VCDs at Highway`s shop for $118.
5. Formal Citations
- Highway Video Pte Ltd v Public Prosecutor (Lim Tai Wah) and other appeals, MA 203/2001,204/2001, 205/2001, [2001] SGHC 370
6. Timeline
| Date | Event |
|---|---|
| The film 'The Duke of Mount Deer' was first telecast in Hong Kong. | |
| Copyright Act (Cap 63, 1999 Ed) came into effect. | |
| Copyright (International Protection) Regulations (Cap 63, Rg 2, 1990 Ed) was enacted. | |
| Warning advertisements were published in The Straits Times and Lianhe Zaobao. | |
| The Tengs purchased a copy of the film from GC Video Pte Ltd. | |
| Private investigators conducted a trap purchase of the set of 40 VCDs at Highway`s shop. | |
| Appeal heard in High Court. | |
| Decision date of the appeal. |
7. Legal Issues
- Copyright Infringement
- Outcome: The court found that the prosecution had not proven beyond reasonable doubt that the VCDs were unauthorized copies of the film.
- Category: Substantive
- Sub-Issues:
- Existence of copyright in foreign cinematograph films made before 10 April 1987
- Whether film is an unauthorized infringing copy
- Whether film is a legitimate parallel import
- Possession for purposes of sale infringing copies of copyright film
- Outcome: The court found that the prosecution had not proven beyond reasonable doubt that the VCDs were unauthorized copies of the film.
- Category: Substantive
- Trade Mark Infringement
- Outcome: The court found that the prosecution had not proven beyond reasonable doubt that the registered trade mark of TVB was falsely applied to each of the VCDs.
- Category: Substantive
8. Remedies Sought
- Fines
9. Cause of Actions
- Copyright Infringement
- Trade Mark Infringement
10. Practice Areas
- Copyright Infringement
- Criminal Appeals
- Intellectual Property Law
11. Industries
- Entertainment
- Retail
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Ng Sui Nam v Butterworth & Co (Publishers) | N/A | Yes | [1987] SLR 66 | Singapore | Cited to establish the statute governing the copyright regime in Singapore prior to the enactment of the Copyright Act in 1987. |
| Ang Sunny v PP | N/A | Yes | [1965-1968] SLR 67 | Singapore | Cited for the test of 'irresistible inference' required for conviction based on circumstantial evidence. |
| Lim Ah Poh v PP | N/A | Yes | [1992] 1 SLR 713 | Singapore | Cited for the principle that an appellate court should be slow to disturb findings of fact by a trial judge. |
| Jimina Jacee d/o CD Athananasius v PP | N/A | Yes | [2000] 1 SLR 205 | Singapore | Cited for the principle that an appellate court should be slow to disturb findings of fact by a trial judge. |
| Ramis a/l Muniandy v PP | N/A | Yes | [2001] 3 SLR 534 | Singapore | Cited for the principle that an appellate court should be slow to disturb findings of fact by a trial judge. |
| PP v Teo Ai Nee | N/A | Yes | [1995] 2 SLR 69 | Singapore | Cited for the test for determining when a person ought reasonably to know that an article is an infringing article under s 136 of the Copyright Act and for the interpretation of 'owner' in s 7 of the Copyright Act regarding parallel imports, which was subsequently amended by Parliament. |
| Baden v Société Générale pour Favoriser le Développement du Commerce et de l`Industrie en France SA | N/A | Yes | [1992] 4 All ER 161 | N/A | Cited for the five states of mind postulated by Peter Gibson J in determining when a person ought reasonably to know that an article is an infringing article under s 136 of the Copyright Act. |
| Ang Sunny v PP | N/A | Yes | [1966] 2 MLJ 195 | Malaysia | Cited for the test of 'irresistible inference' required for conviction based on circumstantial evidence. |
| PP v Teoh Ai Nee | N/A | Yes | [1994] 1 SLR 452 | Singapore | Cited regarding the burden borne by the public prosecutor or copyright proprietors in future prosecutions since they will have to seek more concrete and direct evidence from licensees, sub-licensees and copyright proprietors who may reside abroad, to prove that alleged infringing copies are not genuine parallel imports. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Copyright Act (Cap 63, 1999 Ed) | Singapore |
| Trade Marks Act (Cap 332, 1999 Ed) | Singapore |
| Copyright Act 1911 | United Kingdom |
| Copyright (Amendment) Act 1994 (No 14 of 1994) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Copyright
- Infringement
- Cinematograph film
- Parallel import
- Trade mark
- VCD
- Copyright Act
- Trade Marks Act
15.2 Keywords
- Copyright infringement
- Trade mark infringement
- Parallel imports
- Foreign films
- VCDs
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 90 |
| Copyright Infringement | 85 |
| Trademarks | 70 |
| Trademark Infringement | 65 |
| Criminal Law | 60 |
| Parallel Import | 50 |
16. Subjects
- Copyright
- Trade Marks
- Intellectual Property
- Criminal Law