Asia Pacific Publishing v Pioneers & Leaders: Copyright Infringement and Passing Off Dispute

Asia Pacific Publishing Pte Ltd appealed against the High Court's decision in favor of Pioneers & Leaders (Publishers) Pte Ltd, regarding copyright infringement and passing off of a horse-racing magazine. The Court of Appeal of Singapore, with Justices Chao Hick Tin, Andrew Phang Boon Leong, and V. K. Rajah, reversed the decision, holding that a company cannot be considered an 'author' for copyright purposes. The court discharged the injunction against Asia Pacific Publishing and allowed their counterclaim for groundless threats of legal proceedings.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Appeal Allowed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Written Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Copyright infringement and passing off case. The Court of Appeal held that a company cannot be an 'author' under copyright law.

1.7 Decision Date

26 July 2011

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Asia Pacific Publishing Pte Ltd	Appellant	Corporation	Appeal Allowed	Won	Vignesh Vaerhn of Allen & Gledhill LLP Tan Lijun of Allen & Gledhill LLP Stanley Lai Tze Chang of Allen & Gledhill LLP Eunice Lim Ming Hui of Allen & Gledhill LLP
Pioneers & Leaders (Publishers) Pte Ltd	Respondent	Corporation	Appeal Dismissed	Lost	Lim Bee Li of KhattarWong Tan Tee Jim of KhattarWong Irving Choh of KhattarWong Ng Guan Zhen of KhattarWong

3. Judges

Judge Name	Title	Delivered Judgment
Chao Hick Tin	Justice of Appeal	No
Andrew Phang Boon Leong	Justice of Appeal	No
V K Rajah	Justice of Appeal	Yes

4. Counsels

Counsel Name	Organization
Vignesh Vaerhn	Allen & Gledhill LLP
Tan Lijun	Allen & Gledhill LLP
Stanley Lai Tze Chang	Allen & Gledhill LLP
Eunice Lim Ming Hui	Allen & Gledhill LLP
Lim Bee Li	KhattarWong
Tan Tee Jim	KhattarWong
Irving Choh	KhattarWong
Ng Guan Zhen	KhattarWong

4. Facts

Asia Pacific Publishing and Pioneers & Leaders both publish horse-racing magazines.
Pioneers & Leaders publishes 'Punters' Way' since 1983, containing horse-racing information in tables.
Asia Pacific Publishing publishes 'Racing Guide' since 2007, with similar content to 'Punters' Way'.
Punters' Way employed a colour coding scheme since 1993 to identify editions for each race day.
Asia Pacific Publishing began adopting similar colour coding for Racing Guide in 2008.
Pioneers & Leaders alleged copyright infringement and passing off by Asia Pacific Publishing.
Asia Pacific Publishing modified the tables in its publication after a demand letter was sent.

5. Formal Citations

Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd, Civil Appeal No 147 of 2010, [2011] SGCA 37

6. Timeline

Date	Event
1977-03-01	Punters’ Way first published by Pioneers & Leaders Co, a partnership.
1983-12-01	Pioneers & Leaders (Publishers) Pte Ltd incorporated.
1986-01-01	Racing Guide first published.
2006-11-01	Asia Pacific Publishing Pte Ltd incorporated.
2007-01-01	Asia Pacific Publishing Pte Ltd started publishing Racing Guide.
2007-06-30	Alleged copyright infringement by Asia Pacific Publishing Pte Ltd began.
2008-01-04	Asia Pacific Publishing Pte Ltd began to adopt similar colour coding for Racing Guide.
2008-04-25	Demand letter issued by Pioneers & Leaders (Publishers) Pte Ltd to Asia Pacific Publishing Pte Ltd.
2008-06-05	Alleged copyright infringement by Asia Pacific Publishing Pte Ltd ceased.
2008-11-12	Legal proceedings commenced against Asia Pacific Publishing Pte Ltd.
2010-02-01	Trial heard in February and March.
2010-03-01	Trial heard in February and March.
2010-01-01	Civil Appeal No 147 of 2010
2011-07-27	Judgment reserved.

7. Legal Issues

Authorship in Copyright Law
- Outcome: The court held that a corporation cannot be considered an 'author' for the purposes of copyright law.
- Category: Substantive
- Sub-Issues:
  - Definition of author
  - Whether a corporation can be an author
Copyright Infringement
- Outcome: The court found that no copyright subsisted in the Tables, therefore there was no infringement.
- Category: Substantive
- Sub-Issues:
  - Originality of compilation
  - Substantial similarity
  - Causal connection
Passing Off
- Outcome: The court found that the element of misrepresentation was not proven, and therefore the claim of passing off could not succeed.
- Category: Substantive
- Sub-Issues:
  - Goodwill
  - Misrepresentation
  - Damage
Groundless Threats of Legal Proceedings
- Outcome: The court found that the Respondent's threats to bring an action for copyright infringement against the Appellant were unjustifiable.
- Category: Substantive

8. Remedies Sought

Injunction
Damages
Declaration that the threats are unjustifiable

9. Cause of Actions

Copyright Infringement
Passing Off
Groundless Threats of Legal Proceedings

10. Practice Areas

Intellectual Property Litigation
Copyright Infringement
Passing Off Actions

11. Industries

Publishing

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Pioneers & Leaders (Publishers) Pte Ltd v Asia Pacific Publishing Pte Ltd	High Court	No	[2010] 4 SLR 744	Singapore	The High Court decision that was appealed against in this case, regarding copyright infringement and passing off.
Chilton v Progress Printing Company	N/A	No	[1895] 2 Ch 29	England and Wales	Cited regarding the fact-centric nature of the threshold for originality in copyright law.
University of London Press, Limited v University Tutorial Press, Limited	N/A	No	[1916] 2 Ch 601	England and Wales	Cited for the principle that what is worth copying is prima facie worth protecting.
Feist Publications Inc v Rural Telephone Service Company Inc	Supreme Court	Yes	499 US 340 (1991)	United States	Cited for the four key principles in assessing copyright for compilations: facts are not copyrightable, compilations of facts are generally copyrightable, the sine qua non of copyright is originality, and originality requires independent creation and a minimal degree of creativity.
Sands & McDougall Pty Ltd v Robinson	N/A	Yes	(1917) 23 CLR 49	Australia	Cited for the principle that 'author' and 'original work' are correlative in copyright law.
Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors	N/A	No	[1997] 2 MLJ 429	Malaysia	Cited to show that Malaysian courts interpret 'author' as including companies due to the definition of 'qualified person' in Malaysian Copyright Act.
Alteco Chemical Pte Ltd v Chong Yean Wah (trading as Yamayo Stationery Manufactuer)	High Court	No	[1999] 2 SLR(R) 915	Singapore	Cited for the proposition that an incorporated body could be the author of a copyright protected work, but the current judgment disagrees with this interpretation.
Telstra Corporation Limited v Phone Directories Company Pty Ltd	Australian Federal Court of Appeal	Yes	[2010] FCAFC 149	Australia	Cited for the principle that under Australian law, an author has to be a human author.
Telstra Corporation Limited and Another v Phone Directories Company Pty Ltd and Others	N/A	Yes	[2010] FCA 44	Australia	Cited for the principle that originality requires independent intellectual effort by an identified author in an identified work.
Waterlow Publishers Ltd v Rose	N/A	No	[1995] FSR 207	England and Wales	Cited regarding the presumption in s 20(4) of the UK Copyright Act 1956, similar to s 132 of the Singapore Copyright Act, but distinguished as not dealing with the scenario where the very fact of authorship took center stage.
Microsoft Corporation v DHD Distribution Pty Ltd (t/as Austin Computers)	N/A	No	(1999) 45 IPR 459	Australia	Cited as a case that relied on the equivalent of the s 132 presumption, but did not deal with the scenario where the very fact of authorship took centre stage.
Novelty Pte Ltd v Amanresorts Ltd and another	N/A	Yes	[2009] 3 SLR(R) 216	Singapore	Cited for affirming the 'classical trinity' of goodwill, misrepresentation, and damage that must be established for a passing off action to succeed.
The Commissioners of Inland Revenue v Muller & Co.’s Margarine, Limited	N/A	Yes	[1901] AC 217	England and Wales	Cited for the classic definition of goodwill as 'the benefit and advantage of the good name, reputation, and connection of a business'.
Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd	N/A	Yes	[1991] 1 SLR(R) 903	Singapore	Cited for the principle that the court is not concerned with the 'moron in a hurry' being confused in a passing off action, but rather whether ordinary sensible members of the public would be confused.
Interfirm Comparison (Australia) Pty Ltd v Law Society (NSW)	N/A	Yes	[1977] RPC 137	Australia	Cited for the principle that a work can be original even if it uses old and publicly-known material, as long as it presents it in a new form as the work of the author.
Fortuity Pty Ltd v Barcza	N/A	Yes	(1995) 32 IPR 517	Australia	Cited for the principle that a work must have a 'quality of character not possessed by the raw material' to be considered original.
Aron Salomon v A. Salomon and Company, Limited	N/A	Yes	[1897] AC 22	England and Wales	Cited for affirming the principle of separate legal corporate personality.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Copyright Act (Cap 63, 2006 Rev Ed)	Singapore
Copyright Act (Cap 63, 1988 Rev Ed)	Singapore
Copyright Act (Cap 63, 1999 Rev Ed)	Singapore
Interpretation Act (Cap 1, 2002 Rev Ed)	Singapore
UK Copyright, Designs and Patent Act 1988 (c 48) (UK)	United Kingdom
Australian Copyright Act 1968 (Act No 63 of 1968) (Cth)	Australia
Statute of Anne 1709 (8 Anne c 19) (UK)	United Kingdom
UK Copyright Act 1911 (c 46) (UK)	United Kingdom
Joint Stock Companies Act 1844 (7 & 8 Vict c 110) (UK)	United Kingdom
Malaysian Copyright Act 1987 (Act 332) (Malaysia)	Malaysia

15. Key Terms and Keywords

15.1 Key Terms

Copyright
Passing Off
Author
Originality
Compilation
Goodwill
Misrepresentation
Damage
Horse-racing magazine
Tables
Colour coding
Punters' Way
Racing Guide

15.2 Keywords

copyright infringement
passing off
horse-racing
magazines
Singapore
intellectual property
authorship

17. Areas of Law

Area Name	Relevance Score
Copyrights	95
Passing Off	85
Contract Law	10

16. Subjects

Copyright
Intellectual Property
Passing Off