Wartsila v Liu: Copyright Infringement & Discovery of Ship Drawings in AutoCAD Format

Wartsila Ship Design Singapore Pte Ltd sued Liu Jiachun and others, former employees and their wives, alleging copyright infringement related to ship drawings. The High Court heard an application for the re-tender of ship drawings in their native AutoCAD format. The court granted the order for re-tender but shifted the costs of compliance and the costs of the application to Wartsila, finding that Wartsila's delay in objecting to the initial tender of drawings in PDF format was unreasonable and prejudicial to the defendants.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Order for re-tender of copies of drawings in native format granted; costs of compliance and application awarded to the defendants.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Wartsila sues Liu for copyright infringement. Court orders re-tender of ship drawings in AutoCAD format, shifting compliance costs to Wartsila.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
OthersDefendantCorporationCosts of compliance and application awardedWon
Wartsila Ship Design Singapore Pte LtdPlaintiffCorporationOrder for re-tender of copies of drawings in native format grantedPartial
Liu JiachunDefendantIndividualCosts of compliance and application awardedWon

3. Judges

Judge NameTitleDelivered Judgment
Yeong Zee KinSAR CounselYes

4. Counsels

Counsel NameOrganization
Wong Siew HongEldan Law LLP
Gavin FooEldan Law LLP
Matthew SawM/s Lee & Lee
Teo Wen LinM/s Lee & Lee

4. Facts

  1. Plaintiff is in the ship design business.
  2. First to fourth defendants were former employees of the plaintiff.
  3. Fifth defendant provides naval architectural services.
  4. First to third defendants incorporated the fifth defendant.
  5. Plaintiff claimed the first defendant downloaded 1,719 drawings.
  6. Fifth defendant disclosed 1,903 drawings in PDF format.
  7. Plaintiff requested copies of drawings in AutoCAD format.
  8. Metadata of some drawings had the same date and time as plaintiff's drawings.

5. Formal Citations

  1. Wartsila Ship Design Singapore Pte Ltd v Liu Jiachun and others, Suit No 45 of 2013, [2014] SGHCR 13

6. Timeline

DateEvent
Plaintiff registered.
First to third defendants started working for the plaintiff.
Date and time of creation of some drawings owned by plaintiff.
Fifth defendant incorporated.
Suit filed.
Fifth defendant supplied copies of drawings in PDF format to the plaintiff.
Fifth defendant supplied copies of drawings in PDF format to the plaintiff.
Fifth defendant supplied copies of drawings in PDF format to the plaintiff.
Plaintiff requested copies of documents in AutoCAD format.
Pre-trial conference held.
Third defendant disclosed a portable hard disk containing ship drawings in AutoCAD format.
Judgment reserved.
Plaintiff’s appeal allowed by the High Court.

7. Legal Issues

  1. Discovery of Electronic Documents
    • Outcome: The court ordered the fifth defendant to re-tender the drawings in their native AutoCAD format but shifted the costs of compliance to the plaintiff.
    • Category: Procedural
    • Sub-Issues:
      • Format of electronic documents for discovery
      • Compliance with e-discovery Practice Directions
      • Costs of compliance with discovery orders
    • Related Cases:
      • [2012] SGHCR 19
      • [2011] 3 SLR 967
  2. Copyright Infringement
    • Outcome: The court did not make a final determination on the copyright infringement claim, as the application concerned the format of discovery documents.
    • Category: Substantive

8. Remedies Sought

  1. Re-tender of ship drawings in AutoCAD format

9. Cause of Actions

  • Copyright Infringement
  • Breach of Employment Contract

10. Practice Areas

  • Commercial Litigation
  • Intellectual Property Litigation

11. Industries

  • Ship Design

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Invenpro (M) Sdn Bhd v JCS Automation Pte Ltd and anotherHigh CourtNo[2012] SGHCR 19SingaporeCited regarding the impermissibility of seeking e-discovery of documents already ordered to be produced under traditional discovery.
Sanae Achar v Sci-Gen LtdHigh CourtYes[2011] 3 SLR 967SingaporeCited for the objective of the e-discovery Practice Directions to promote the exchange of electronically stored documents in a text-searchable electronic form.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
No applicable statutes

15. Key Terms and Keywords

15.1 Key Terms

  • AutoCAD format
  • e-discovery
  • Metadata
  • Native format
  • PDF format
  • Re-tender
  • Ship drawings
  • Discovery order

15.2 Keywords

  • Copyright
  • Ship Design
  • Discovery
  • AutoCAD
  • Singapore
  • Litigation

17. Areas of Law

Area NameRelevance Score
Copyright Infringement90
Ship Design80
Intellectual Property Law75
Naval Architecture70
Breach of Contract60
Employment Law60
E-discovery50
Contract Law50
Civil Practice40
Civil Litigation40
Corporate Litigation20
Company Law20
Corporate Law15
Construction Defects10
Construction Law10
Construction Litigation10

16. Subjects

  • Civil Procedure
  • Intellectual Property
  • Copyright
  • Discovery