Global Yellow Pages v Promedia: Copyright Infringement in Telephone Directories
Global Yellow Pages Limited (GYP) sued Promedia Directories Pte Ltd (Promedia) in the Court of Appeal of Singapore, alleging copyright infringement of its online and print telephone directories. GYP claimed Promedia copied its Internet Yellow Pages, Business Listings, Yellow Pages Business, and Yellow Pages Consumer directories. The court dismissed GYP's claim, finding that Promedia primarily copied data, which is not copyrightable, and that GYP's claim for groundless threat of copyright infringement should be reversed. The appeal was allowed in part and otherwise dismissed.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeal allowed in part and otherwise dismissed.
1.3 Case Type
Civil
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 dismissed the claim, finding Promedia copied data, not copyrightable expression.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Global Yellow Pages Limited | Appellant | Corporation | Appeal allowed in part | Partial | |
| Promedia Directories Pte Ltd | Respondent, Applicant | Corporation | Counterclaim Allowed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Sundaresh Menon | Chief Justice | Yes |
| Chao Hick Tin | Judge of Appeal | No |
| Andrew Phang Boon Leong | Judge of Appeal | No |
| Judith Prakash | Judge of Appeal | No |
| Tay Yong Kwang | Judge of Appeal | No |
4. Counsels
4. Facts
- GYP and Promedia are competing publishers of telephone directories.
- GYP claimed Promedia infringed its copyright in its online and print directories.
- GYP had an exclusive agreement with Singtel to receive subscriber information.
- Promedia collected data from multiple third-party sources, including competing directories.
- Promedia's employees copied data from GYP's directories into a temporary database.
- GYP introduced fictitious listings ('seeds') to detect copying.
- The Judge found that the copyright protection in GYP’s directories was very thin indeed, and consequently that its copyright had not been infringed.
5. Formal Citations
- Global Yellow Pages Ltd v Promedia Directories Pte Ltd and another matter, , [2017] SGCA 28
- Global Yellow Pages Limited v Promedia Directories Pte Ltd, Civil Appeal No 19 of 2016, Civil Appeal No 19 of 2016
6. Timeline
| Date | Event |
|---|---|
| Hearing date | |
| Judgment reserved |
7. Legal Issues
- Copyright Infringement
- Outcome: The court held that Promedia did not infringe GYP's copyright because it primarily copied data, which is not copyrightable.
- Category: Substantive
- Sub-Issues:
- Subsistence of copyright in compilations
- Substantial taking
- Fair dealing
- Groundless Threat of Copyright Infringement
- Outcome: The court reversed the lower court's finding that GYP was liable for groundless threats of copyright infringement.
- Category: Substantive
- Fair Dealing
- Outcome: The court held that Promedia's taking of the BL listings by photocopying or scanning them into its temporary database amounts to fair dealing within s 35 of the Copyright Act.
- Category: Substantive
8. Remedies Sought
- Injunction
- Damages
- Account of Profits
- Delivery up of infringing material
- Corrective advertisement
9. Cause of Actions
- Copyright Infringement
- Groundless Threat of Copyright Infringement
10. Practice Areas
- Copyright Infringement
- Intellectual Property Litigation
11. Industries
- Publishing
- Telecommunications
- Information Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Feist Publications, Inc v Rural Telephone Service Company, Inc | US Supreme Court | Yes | Feist Publications, Inc v Rural Telephone Service Company, Inc 499 US 340 (1991) | United States | Cited as a key example of why copyright law does not protect data. |
| IceTV Pty Limited and another v Nine Network Australia Pty Ltd | High Court of Australia | Yes | IceTV Pty Limited and another v Nine Network Australia Pty Ltd (2009) 239 CLR 458 | Australia | Cited for the principle that the method of analysis is shaped by what attracts copyright protection. |
| Global Yellow Pages Limited v Promedia Directories Pte Ltd | High Court | Yes | Global Yellow Pages Limited v Promedia Directories Pte Ltd [2016] 2 SLR 165 | Singapore | The judgment being appealed from. |
| Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd | Federal Court of Australia | Yes | Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 192 ALR 433 | Australia | Cited as the 'high watermark' of the 'sweat of the brow' approach, which the court distances itself from. |
| Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd | Unknown | Yes | Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275 | United Kingdom | Cited for placing greater emphasis on the effort and labour of authorship. |
| Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) | Unknown | Yes | Autospin (Oil Seals) Ltd v Beehive Spinning (A Firm) [1995] RPC 683 | United Kingdom | Cited for placing greater emphasis on the effort and labour of authorship. |
| 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 case that adopted the 'sweat of the brow' approach, which the current court disagrees with. |
| Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd | Court of Appeal | Yes | Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd [2011] 4 SLR 381 | Singapore | Cited as a case where the court expressed a clear preference for the creativity approach. |
| CCH Canadian Ltd v Law Society of Upper Canada | Supreme Court of Canada | Yes | CCH Canadian Ltd v Law Society of Upper Canada [2004] SCC 13 | Canada | Cited as requiring an 'exercise of skill and judgment' in the expression of an idea. |
| Bellsouth Advertising & Publishing Corporation v Donnelley Information Publishing, Inc | Court of Appeals for the Eleventh Circuit | Yes | Bellsouth Advertising & Publishing Corporation v Donnelley Information Publishing, Inc 999 F.2d 1436 (1993) | United States | Cited as an example of a case where the court was divided on whether copyright subsisted in a phone directory. |
| Nine Network Australia Pty Ltd v IceTV Pty Ltd and Another | Federal Court of Australia | Yes | Nine Network Australia Pty Ltd v IceTV Pty Ltd and Another [2008] FCAFC 71 | Australia | Cited for the principle that alphabetical arrangement of data does not cross the threshold of creativity. |
| L Capital Jones Ltd and another v Maniach Pte Ltd | Unknown | Yes | L Capital Jones Ltd and another v Maniach Pte Ltd [2017] 1 SLR 312 | Singapore | Cited for the procedural entitlement to raise an argument under O 57 r 9A(5) of the ROC. |
| RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others | Unknown | Yes | RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others [2011] 1 SLR 830 | Singapore | Cited for the principle that copyright law is meant to promote creativity and innovation. |
| George Wei, “A Look Back at Public Policy, the Legislature, the Courts and the Development of Copyright Law in Singapore: Twenty-Five Years On” (2012) 24 SAcLJ 867 | Unknown | Yes | George Wei, “A Look Back at Public Policy, the Legislature, the Courts and the Development of Copyright Law in Singapore: Twenty-Five Years On” (2012) 24 SAcLJ 867 | Singapore | Cited for the legislature’s concern to safeguard the interests of the public at large within a framework of strong effective protection for copyright subject matter. |
| Creative Technology Ltd v Aztech Systems Pte Ltd | Unknown | Yes | Creative Technology Ltd v Aztech Systems Pte Ltd [1996] 3 SLR(R) 673 | Singapore | Cited as a case that led to the broadening of the fair dealing provisions. |
| Longman Group Ltd v Carrington Technical Institute Board of Governors | High Court of Auckland | Yes | Longman Group Ltd v Carrington Technical Institute Board of Governors [1991] 2 NZLR 574 | New Zealand | Cited as an example of a case where the fact that the original and infringing works share the same purpose will tend to weigh against a finding of fair dealing. |
| Cary v Kearsley | Unknown | Yes | Cary v Kearsley (1802) 4 Esp 168 | England | Cited for the notion that one might fairly adopt part of another’s work 'for the promotion of science, and the benefit of the public'. |
| Newspaper Licensing Agency v Marks & Spencer plc | Unknown | Yes | Newspaper Licensing Agency v Marks & Spencer plc [1999] EMLR 369 | England | Cited for extending the principle to include cases where the defendant added to, recontextualised or transformed the parts taken. |
| University of London Press Ltd v University Tutorial Press Ltd | Unknown | Yes | University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 | England | Cited for extending the principle to include cases where the defendant added to, recontextualised or transformed the parts taken. |
| Campbell, aka Luke Skyywalker et al v Acuff-Rose Music, Inc | Supreme Court | Yes | Campbell, aka Luke Skyywalker et al v Acuff-Rose Music, Inc 510 US 569 (1993) | United States | Cited for the 'transformative use' doctrine. |
| Folsom v Marsh | Unknown | Yes | Folsom v Marsh 9 F Cas 342 (1841) (CCD Mass) | United States | Cited for the 'transformative use' doctrine. |
| RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others | High Court | Yes | RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and others [2010] 2 SLR 152 | Singapore | Cited as an example of a case where fair dealing was not found because the plaintiff's service was for private profiteering. |
| Re Brian Kelvin De Garis and another v Neville Jeffress Pidler Pty Ltd | Federal Court of Australia | Yes | Re Brian Kelvin De Garis and another v Neville Jeffress Pidler Pty Ltd (1990) 18 IPR 292 (FCA) | Australia | Cited as a case where the commercial nature or purpose of the dealing will presumptively be regarded as unfair. |
| Pacific Southern Co Inc v Duncan | Unknown | Yes | Pacific Southern Co Inc v Duncan 744 F.2d 1490 (11th Cir, 1984) | United States | Cited as a case where the commercial nature or purpose of the dealing will presumptively be regarded as unfair. |
| Sony Corp of America v Universal City Studios, Inc | Supreme Court | Yes | Sony Corp of America v Universal City Studios, Inc 464 US 417 (1984) | United States | Cited as a case where the commercial nature or purpose of the dealing will presumptively be regarded as unfair. |
| Harper & Row Publishers, Inc. v Nation Enterprises | Supreme Court | Yes | Harper & Row Publishers, Inc. v Nation Enterprises 471 US 539 (1985) | United States | Cited for the principle that the mere fact that a use is educational and not for profit does not insulate it from a finding of infringement. |
| Authors Guild v Google, Inc | Court of Appeals for the Second Circuit | Yes | Authors Guild v Google, Inc 804 F.3d 202 (2015) | United States | Cited as a case where it was held that it was a transformative use for Google to digitise books and make them searchable. |
| Ng-Loy Wee Loon, Law of Intellectual Property in Singapore | Unknown | Yes | Ng-Loy Wee Loon, Law of Intellectual Property in Singapore (Sweet & Maxwell, 2nd Ed, 2014) | Singapore | Cited for the principle that a finding of fair dealing is less likely in cases involving unpublished works. |
| David Tan and Benjamin Foo, “The Unbearable Lightness of Fair Dealing: Towards an Autochthonous Approach in Singapore” (2016) 28 SAcLJ 124 | Unknown | Yes | David Tan and Benjamin Foo, “The Unbearable Lightness of Fair Dealing: Towards an Autochthonous Approach in Singapore” (2016) 28 SAcLJ 124 | Singapore | Cited for the principle that a finding of fair dealing is less likely if the defendant could have obtained the work on reasonable commercial terms. |
| Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) | Unknown | Yes | Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S Electrical Trading) [2016] 4 SLR 86 | Singapore | Cited for the law on groundless threats. |
| Telstra Corporation Limited v Phone Directories Company Pty Ltd | Federal Court of Australian | Yes | Telstra Corporation Limited v Phone Directories Company Pty Ltd [2014] FCA 568 | Australia | Cited for the principle that the grant of relief under s 200(1) by the court is discretionary. |
| 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 for the concession that copyright subsisted in the street directory or address point data of Singapore in vector format. |
| 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 for the denial of leave to appeal on the basis that neither the District Court nor the High Court were prima facie in error. |
| Telstra Corporation Limited v Phone Directories Company Pty Ltd | Unknown | Yes | Telstra Corporation Limited v Phone Directories Company Pty Ltd (2014) 316 ALR 590 | Australia | Cited for the principle that the result depended on the 'objective strength of the legal position underpinning the threat'. |
13. Applicable Rules
| Rule Name |
|---|
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 57 r 9A(5) |
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 57 r 9A(5A) |
| Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 57 r 9A(5B) |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 4 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 7A | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 27 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 35 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 86 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 91 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 200 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Telephone directories
- Copyright infringement
- Data compilation
- Fair dealing
- Groundless threat
- Originality
- Intellectual creation
- Sweat of the brow
- Creativity
- Temporary database
- Seeds
- Listings
- Classifications
15.2 Keywords
- copyright
- infringement
- telephone directory
- data
- compilation
- fair dealing
- groundless threat
- singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 95 |
| Infringement | 80 |
| Groundless threat | 70 |
| Compilations | 65 |
| Authorship | 60 |
| Subject matter | 50 |
| Commercial Law | 30 |
| Contract Law | 20 |
16. Subjects
- Copyright
- Intellectual Property
- Data Protection
- Telecommunications
- Publishing