Global Yellow Pages v Promedia: Copyright Infringement, Telephone Directories, Originality

Global Yellow Pages Limited sued Promedia Directories Pte Ltd in the High Court of Singapore on 28 January 2016, alleging copyright infringement in its telephone directories. The court, presided over by George Wei JC, found that Promedia did not infringe Global Yellow Pages' copyright because the directories lacked sufficient originality to warrant copyright protection. The court dismissed Global Yellow Pages' claim and allowed Promedia's counterclaim for groundless threats of copyright infringement.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Judgment for Defendant

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Global Yellow Pages sued Promedia for copyright infringement in telephone directories. The court found no infringement due to lack of originality.

1.7 Decision Date

27 January 2016

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
Global Yellow Pages Limited	Plaintiff	Corporation	Claim Dismissed	Lost	Bryan Manaf Ghows of Via Law Corporation Wang Yingyu of Via Law Corporation
Promedia Directories Pte Ltd	Defendant	Corporation	Counterclaim Allowed	Won	G Radakrishnan of Infinitus Law Corporation Mark Teng of Infinitus Law Corporation

3. Judges

Judge Name	Title	Delivered Judgment
George Wei	Judge	Yes

4. Counsels

Counsel Name	Organization
Bryan Manaf Ghows	Via Law Corporation
Wang Yingyu	Via Law Corporation
G Radakrishnan	Infinitus Law Corporation
Mark Teng	Infinitus Law Corporation

4. Facts

Global Yellow Pages and Promedia Directories both produce telephone directories in Singapore.
Global Yellow Pages alleged Promedia infringed its copyright by copying listings and classifications.
Global Yellow Pages introduced 'seeds' (false listings) to detect copying.
Promedia denied copyright subsisted in Global Yellow Pages' directories.
Promedia admitted seeds were found in its directories but claimed it was negligible.
Promedia raised defenses of fair dealing, public interest, laches, and innocent infringement.
Global Yellow Pages claimed copyright in directories as compilations, seeds, and enhanced data.

5. Formal Citations

Global Yellow Pages Ltd v Promedia Directories Pte Ltd, Suit No 913 of 2009, [2016] SGHC 09

6. Timeline

Date	Event
2009-01-01	Lawsuit filed
2014-09-29	Trial began
2014-10-01	Trial continued
2014-10-02	Trial continued
2014-10-03	Trial continued
2014-10-07	Trial continued
2014-10-08	Trial continued
2014-10-09	Trial continued
2014-10-10	Trial continued
2014-10-13	Trial continued
2014-10-14	Trial continued
2014-10-15	Trial continued
2014-10-16	Trial continued
2014-10-17	Trial continued
2014-10-20	Trial continued
2014-10-21	Trial continued
2014-10-22	Trial continued
2014-10-23	Trial continued
2014-10-24	Trial continued
2014-10-27	Trial continued
2014-10-28	Trial continued
2014-10-29	Trial continued
2014-10-30	Trial continued
2014-10-31	Trial continued
2014-12-19	Trial continued
2015-04-07	Trial continued
2016-01-28	Judgment issued

7. Legal Issues

Copyright Infringement
- Outcome: The court found no copyright infringement because the plaintiff's directories lacked sufficient originality.
- Category: Substantive
- Sub-Issues:
  - Copying
  - Substantiality
  - Originality
  - Authorship
Originality
- Outcome: The court held that the plaintiff's directories lacked the requisite originality for copyright protection.
- Category: Substantive
- Sub-Issues:
  - Industrious collection
  - Intellectual creation
  - Selection
  - Arrangement
Groundless Threats of Copyright Infringement
- Outcome: The court found the plaintiff liable for groundless threats of copyright infringement.
- Category: Substantive

8. Remedies Sought

Injunction
Damages
Declaration

9. Cause of Actions

Copyright Infringement
Groundless Threats of Copyright Infringement

10. Practice Areas

Copyright Infringement
Intellectual Property Litigation

11. Industries

Publishing
Information Services

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
Feist Publications, Inc v Rural Telephone Service Company, Inc	US Supreme Court	No	Feist Publications, Inc v Rural Telephone Service Company, Inc 111 S Ct 1282 (1991)	United States	Cited for the principle that facts are not copyrightable and that originality is a requirement for copyright protection.
Ravenscroft v Herbert and New English Library Limited	N/A	No	Ravenscroft v Herbert and New English Library Limited [1980] RPC 193	England	Cited for the principle that copyright permits wider use of a historical work than a novel so that knowledge can be built on knowledge.
Key Publications, Inc v Chinatown Today Publishing Enterprises, Inc	US Court of Appeals for the Second Circuit	No	Key Publications, Inc v Chinatown Today Publishing Enterprises, Inc 945 F 2d 509 (1991)	United States	Cited for the principle that copyright protection extends only to the original elements of a compilation, such as the selection and arrangement of facts.
Bellsouth Advertising & Publishing Corporation v Donnelley Information Publishing, Inc	US Court of Appeals for the Eleventh Circuit	No	Bellsouth Advertising & Publishing Corporation v Donnelley Information Publishing, Inc 999 F 2d 1436 (1991)	United States	Cited for the principle that copyright protection must inhere in a creatively original selection of facts to be reported and not in the creative means used to discover those facts.
Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd	Federal Court of Australia	Yes	Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd 192 ALR 433 (2002)	Australia	Cited as an example of the 'sweat of the brow' approach to copyright, where copyright can subsist in facts if there has been sufficient work or expense in gathering them.
IceTV Pty Limited and another v Nine Network Australia Pty Limited	High Court of Australia	No	IceTV Pty Limited and another v Nine Network Australia Pty Limited [2009] 239 CLR 458	Australia	Cited for the principle that copyright protects an author's expression and not facts, and that originality requires some independent intellectual effort.
Telstra Corporation Ltd and another v Phone Directories Company Pty Ltd and others	Federal Court of Australia	Yes	Telstra Corporation Ltd and another v Phone Directories Company Pty Ltd and others (2010) 273 ALR 725	Australia	Cited for the principle that copyright does not subsist in directories where there is no author contributing independent intellectual effort.
CCH Canadian Ltd v Law Society of Upper Canada	Supreme Court of Canada	No	CCH Canadian Ltd v Law Society of Upper Canada 2004 SCC 13 (2004)	Canada	Cited for the principle that a work is original if there is an exercise of skill and judgment in the expression of an idea.
Sayre v Moore	N/A	No	Sayre v Moore (1785) 102 ER 139	England	Cited for the principle that copyright law should balance the protection of authors' rights with the progress of the arts.
Football Datco Ltd v Brittens Pools Ltd	N/A	No	Football Datco Ltd v Brittens Pools Ltd [2010] RPC 17	England	Cited for the principle that copyright can subsist in a database if the process of preparing it involves significant labor and skill.
Football Dataco Ltd v Yahoo! UK Ltd	N/A	No	Football Dataco Ltd v Yahoo! UK Ltd [2013] FSR 1	England	Cited for the principle that copyright protection is concerned with the structure of the database, and not the contents nor the elements constituting its contents.
Football Dataco Ltd v Sportradar GmbH	N/A	No	Football Dataco Ltd v Sportradar GmbH [2013] FSR 30	England	Cited for the principle that the observation of a fact is not the same as its creation.
Singapore Land Authority v Virtual Map (Singapore) Pte Ltd	District Court	Yes	Singapore Land Authority v Virtual Map (Singapore) Pte Ltd [2007] SGDC 216	Singapore	Cited as an example of a Singapore case that may have expressed a view in line with the sweat of the brow approach.
Virtual Map (Singapore) Pte Ltd v Singapore Land Authority	High Court	Yes	Virtual Map (Singapore) Pte Ltd v Singapore Land Authority [2008] 3 SLR(R) 86	Singapore	Cited as a case where the High Court upheld a decision finding copyright infringement in maps.
Virtual Map (Singapore) Pte Ltd v Singapore Land Authority and another application	Court of Appeal	Yes	Virtual Map (Singapore) Pte Ltd v Singapore Land Authority and another application [2009] 2 SLR(R) 558	Singapore	Cited as a case where the Court of Appeal refused leave to appeal a decision finding copyright infringement in maps.
Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd	Court of Appeal	No	Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381	Singapore	Cited for the principle that copyright protects the form of expression and not the underlying facts or ideas.
RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others	Court of Appeal	No	RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others [2011] 1 SLR 830	Singapore	Cited for the principle that copyright law should not hinder creativity and innovation.
Ladbroke (Football) Ltd v William Hill (Football) Ltd	N/A	No	Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273	England	Cited for the principle that the reproduction of a part of a work which by itself has no originality will not normally be a substantial part of the copyright work.
Flamelite (S) Pte Ltd and others v Lam Heng Chung and others	Court of Appeal	Yes	Flamelite (S) Pte Ltd and others v Lam Heng Chung and others [2001] 3 SLR (R) 610	Singapore	Cited for the principle that the reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright.
Express Newspapers plc v Liverpool Daily Post & Echo plc and others	N/A	No	Express Newspapers plc v Liverpool Daily Post & Echo plc and others [1985] FSR 306	England	Cited for the principle that a computer is merely a tool used by an author to create a work.
Fylde Microsystems Ltd v Key Radio Systems Ltd	N/A	No	Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449	England	Cited for the principle that a person who provides assistance in the creation of a work is not necessarily a joint author.
Fisher v Brooker	House of Lords	No	Fisher v Brooker [2009] FSR 25	England	Cited for the principle that detrimental reliance is usually necessary for the defence of laches to equitable relief to succeed.
Milwell Pty Ltd v Olympic Amusements Pty Ltd	Federal Court of Australia	No	Milwell Pty Ltd v Olympic Amusements Pty Ltd (1999) IPR 32	Australia	Cited for the principle that the defence of innocent infringement requires a subjective lack of awareness and an objective lack of reasonable grounds for suspecting infringement.
Telstra Corporation Limited v Phone Directories Company Pty Ltd	Federal Court of Australia	No	Telstra Corporation Limited v Phone Directories Company Pty Ltd (2014) 316 ALR 590	Australia	Cited for the principle that a threat of copyright infringement is justifiable if it was made on strong authority, based on the law as it then stood.
Waterlow Directories Limited v Reed Information Services Limited	N/A	No	Waterlow Directories Limited v Reed Information Services Limited [1992] FSR 409	England	Cited as a case where the court found a strong case of substantial copying when entries were copied from a directory.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Copyright Act (Cap 63, 2006 Rev Ed)	Singapore
Copyright Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Telephone directories
Copyright infringement
Originality
Compilations
Seeds
Enhanced data
Fair dealing
Groundless threats
Selection
Arrangement

15.2 Keywords

copyright
infringement
telephone directory
originality
singapore
intellectual property
compilation
groundless threats

17. Areas of Law

Area Name	Relevance Score
Copyrights	95
Civil Litigation	5
Contract Law	5

16. Subjects

Copyright
Intellectual Property
Telephone Directories