Odex v Pacific Internet: Discovery for Copyright Infringement via Internet Piracy
Odex Pte Ltd, a distributor of anime, applied to the High Court of Singapore for pre-action discovery from Pacific Internet Ltd to identify individuals allegedly infringing Odex's copyrights by illegally downloading anime titles. Woo Bih Li J dismissed the application, holding that Odex, as an agent of the copyright owners, lacked the necessary locus standi to bring the application. The court also addressed the standard of proof required for such applications and the relevance of copyright infringement under the Copyright Act.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal dismissed; application for pre-action discovery denied.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Odex sought pre-action discovery from Pacific Internet to identify copyright infringers downloading anime. The court addressed locus standi and standard of proof.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Odex Pte Ltd | Applicant, Appellant | Corporation | Appeal Dismissed | Lost | |
| Pacific Internet Ltd | Respondent | Corporation | Application Dismissed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Woo Bih Li | Judge | Yes |
4. Counsels
4. Facts
- Odex is a company that distributes foreign television programs, particularly anime.
- Odex alleged that internet piracy had significantly reduced its sales of anime video titles.
- Odex engaged BayTSP to track instances of unauthorized uploading and downloading of its video titles.
- BayTSP's tracking solution identified numerous downloads of Odex's video titles from IP addresses issued by Pacific Internet.
- Odex sought pre-action discovery from Pacific Internet to identify the alleged infringers.
- Odex initiated an education campaign targeted at tertiary institutions in Singapore, as well as anime focus groups, at which the blithe responses garnered were along the lines of “catch me if you can” and “why buy when I can download for free and get away with it”
5. Formal Citations
- Odex Pte Ltd v Pacific Internet Ltd, OS 159/2007, RAS 89/2007, [2008] SGHC 35
6. Timeline
| Date | Event |
|---|---|
| Go Wei Ho filed first affidavit in support of application. | |
| Go Wei Ho filed fourth affidavit. | |
| Judgment delivered by Woo Bih Li J. |
7. Legal Issues
- Locus Standi
- Outcome: The court held that Odex, as an agent of the copyright owners, lacked the necessary locus standi to bring the application for pre-action discovery.
- Category: Procedural
- Standard of Proof
- Outcome: The court determined the appropriate standard of proof required for pre-action discovery applications, considering factors such as confidentiality and the interests of justice.
- Category: Procedural
- Copyright Infringement
- Outcome: The court considered whether the unauthorized downloading of copyrighted material from the internet constituted copyright infringement under the Copyright Act.
- Category: Substantive
8. Remedies Sought
- Pre-action discovery of documents to identify copyright infringers
9. Cause of Actions
- Copyright Infringement
10. Practice Areas
- Discovery of Documents
- Copyright Infringement
- Internet Piracy
11. Industries
- Entertainment
- Internet
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another | N/A | Yes | [2007] 2 SLR 869 | Singapore | Cited for the principle that only the copyright owner and an exclusive licensee have the right to take action against copyright infringers. |
| Norwich Pharmacal Co v Customs and Excise Commissioner | N/A | Yes | [1974] AC 133 | N/A | Cited regarding the court's jurisdiction to allow discovery. |
| UMCI Ltd v Tokio Marine & Fire Insurance Co (Singapore) Pte Ltd | N/A | Yes | [2006] 4 SLR 95 | Singapore | Cited regarding the overlap between the court's inherent jurisdiction and Order 24 rule 6. |
| Ashworth Hospital Authority v MGN Ltd | N/A | Yes | [2002] 1 WLR 2033 | N/A | Cited regarding the use of the court's jurisdiction to obtain information to identify a wrongdoer. |
| Megastar Entertainment Pte Ltd v Odex Pte Ltd | N/A | Yes | [2005] 3 SLR 91 | Singapore | Cited as an example of Odex making complaints under s 136(9) of the Copyright Act. |
| Microsoft Corp v. SM Summit Holdings Ltd | Court of Appeal | Yes | [1999] 4 SLR 529 | Singapore | Cited regarding the regime of 'self-help' where civil and criminal proceedings are part and parcel of the enforcement of an owner’s intellectual property rights. |
| Kuah Kok Kim v Ernst & Young | Court of Appeal | Yes | [1997] 1 SLR 169 | Singapore | Cited regarding the court's function at the stage of pre-action discovery. |
| KLW Holdings v Singapore Press Holdings Ltd | N/A | Yes | [2002] 4 SLR 417 | Singapore | Cited regarding the interest of justice as a guide in pre-action discovery. |
| BNP Paribas (formerly known as Banque National De Paris) v Polynesia Timber Services Pte Ltd and Anor | N/A | Yes | [2002] 4 SLR 933 | Singapore | Cited for the principle that a practice direction is not law but merely a direction for administrative purpose. |
| Ooi Bee Tat v Tan Ah Chim & Sons | N/A | Yes | [1995] 3 MLJ 465 | N/A | Cited for the principle that practice directions are intended to be no more than a direction for administrative purposes. |
| Chan Kern Miang v Kea Resources Pte Ltd | N/A | Yes | [1999] 1 SLR 145 | Singapore | Cited regarding the power of the court to allow the application to be added as plaintiffs even at a late stage. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court O 24 r 6(5) |
| Rules of Court O 15 r 6(2) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 103(a) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 83 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 136(3A) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 114(1) | Singapore |
| Telecommunications Act (Cap 323, 2000 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Internet piracy
- Pre-action discovery
- Copyright infringement
- Locus standi
- BitTorrent protocol
- IP address
- Anime
- Copyright owner
- Exclusive licensee
- Agent
- Sub-agent
15.2 Keywords
- Copyright infringement
- Internet piracy
- Pre-action discovery
- Locus standi
- Anime
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 90 |
| Internet Piracy | 80 |
| Discovery | 70 |
| Civil Practice | 40 |
16. Subjects
- Copyright
- Civil Procedure
- Intellectual Property