Nanofilm v Semivac: Copyright Infringement, Breach of Contract & Confidence
In Nanofilm Technologies International Pte Ltd v Semivac International Pte Ltd, the High Court of Singapore heard a case involving claims of copyright infringement, breach of contract, and breach of confidence. Nanofilm sued its former employees, Xu Yibo and Hu Lang, and their company, Semivac, alleging copyright infringement of technical drawings and presentation slides, breach of contract by Xu Yibo, breach of confidence by Semivac and Xu Yibo, and inducement of breach of contract by Hu Lang. The court found in favor of Nanofilm, awarding damages for copyright infringement and finding the defendants liable for breach of contract, breach of confidence, and inducement of breach of contract.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Judgment for Plaintiff
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Nanofilm sues Semivac for copyright infringement, breach of contract, and breach of confidence related to specialized coating technology. Judgment for Plaintiff.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| NANOFILM TECHNOLOGIES INTERNATIONAL PTE LTD | Plaintiff | Corporation | Judgment for Plaintiff | Won | |
| SEMIVAC INTERNATIONAL PTE LTD | Defendant | Corporation | Damages to be paid | Lost | |
| XU YIBO | Defendant | Individual | Breach of contract | Lost | |
| HU LANG | Defendant | Individual | Damages to be paid | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| George Wei | Judge | Yes |
4. Counsels
4. Facts
- Nanofilm sued Semivac and two former employees for copyright infringement, breach of contract, and breach of confidence.
- Xu Yibo, a former Nanofilm employee, became a director of Semivac while still employed by Nanofilm.
- Hu Lang, another former Nanofilm employee, set up Semivac and induced Xu Yibo to join him.
- Semivac created technical drawings (Semivac Drawings) using Nanofilm's equipment and confidential information.
- Semivac used presentation slides (Semivac Slides) containing Nanofilm's copyrighted material.
- Xu Yibo breached his employment contract by working for Semivac and copying Nanofilm's files.
- The court found that Semivac infringed Nanofilm's copyrights and that Hu Lang induced Xu Yibo's breach of contract.
5. Formal Citations
- Nanofilm Technologies International Pte Ltd v Semivac International Pte Ltd and others, Suit No 747 of 2016, [2018] SGHC 167
6. Timeline
| Date | Event |
|---|---|
| Xu Yibo employed by Nanofilm as an applications engineer | |
| Xu Yibo promoted to manager – production mechanical | |
| Hu Lang left Nanofilm | |
| Xu Yibo became a director of Semivac International Pte Ltd | |
| Hu Lang became managing director of Semivac International Pte Ltd | |
| Supplemental agreement signed | |
| Xu Yibo re-designated as senior engineer – mechanical design | |
| Xu Yibo ceased to be a director of Semivac International Pte Ltd | |
| Xu Yibo's employment with Nanofilm terminated | |
| Updated employment contract dated | |
| Xu Yibo made a false declaration | |
| Suit filed | |
| Trial began | |
| Trial concluded | |
| Trial concluded | |
| Judgment reserved |
7. Legal Issues
- Copyright Infringement
- Outcome: The court found that the 1st defendant infringed the plaintiff's copyrights by reproducing the Works in the Semivac Slides and the Semivac Drawings.
- Category: Substantive
- Sub-Issues:
- Reproduction of a substantial part of a copyrighted work
- Industrial application of artistic work
- Related Cases:
- [2012] 4 SLR 36
- [1982] RPC 183
- Breach of Contract
- Outcome: The court found that the 2nd defendant breached his employment contract with the plaintiff.
- Category: Substantive
- Sub-Issues:
- Duty of fidelity and good faith
- Disclosure of confidential information
- Engaging in other business
- Related Cases:
- [2008] 1 SLR(R) 663
- [2004] 1 SLR(R) 234
- [1946] 1 Ch 169
- Breach of Confidence
- Outcome: The court found that the 1st and 2nd defendants breached their duty of confidence owed to the plaintiff.
- Category: Substantive
- Sub-Issues:
- Quality of confidentiality
- Obligation of confidentiality
- Unauthorised use and detriment
- Related Cases:
- [2012] 4 SLR 36
- [2014] 2 SLR 1045
- [2015] 1 SLR 163
- [2018] SGHC 129
- [2016] EWHC 85 (Ch)
- Inducement of Breach of Contract
- Outcome: The court found that the 3rd defendant induced the 2nd defendant to breach his contract with the plaintiff.
- Category: Substantive
- Sub-Issues:
- Knowledge of the contract
- Inducement of the breach
- Breach of contract and damage suffered
- Related Cases:
- [2015] 2 SLR 271
- [2008] 1 AC 1
8. Remedies Sought
- Damages
- Injunction
- Account of Profits
9. Cause of Actions
- Copyright Infringement
- Breach of Contract
- Breach of Confidence
- Inducement of Breach of Contract
10. Practice Areas
- Intellectual Property Litigation
- Commercial Litigation
11. Industries
- Manufacturing
- Technology
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Tolmark Homes Pty Ltd v Paul | Federal Court of Australia | Yes | [1999] FCA 1355 | Australia | Cited regarding statutory presumption on authorship where a name appears on copies of the work as published. |
| Missing Link Software v Magee | N/A | Yes | [1989] 1 FSR 361 | N/A | Cited for the principle that an employee cannot assert his own breach of fiduciary duty to deny that a work was written in the course of employment. |
| British Syphon Company Limited v George Sidney Homewood | N/A | Yes | [1956] RPC 225 | N/A | Cited regarding the principle that an employee holds interest in an invention made during employment as trustee for the employer. |
| Patchett v Sterling Engineering Company Limited (1955) | N/A | Yes | 72 RPC 50 | N/A | Cited regarding the principle that an employee holds interest in an invention made during employment as trustee for the employer. |
| Attorney-General v Guardian Newspapers Ltd (No 2) | N/A | Yes | [1990] 1 AC 109 | N/A | Cited regarding the principle that copyright can be the subject matter of a trust, including a constructive trust. |
| Attorney-General v Blake | N/A | Yes | [1998] 2 WLR 805 | N/A | Cited regarding the principle that copyright can be the subject matter of a trust, including a constructive trust. |
| Attorney-General v Blake | N/A | Yes | [2001] 1 AC 268 | N/A | Cited regarding the principle that copyright can be the subject matter of a trust, including a constructive trust. |
| Catnic Components Limited and another v Hill Smith Limited | N/A | Yes | [1982] RPC 183 | N/A | Cited to support the principle that copyright protects original expression and not the underlying idea, goal or information embodied in a work. |
| Politechnika Ipari Szovetkezet and others v Dallas Print Transfers Ltd | N/A | Yes | [1982] FSR 529 | N/A | Cited to support the principle that copyright protects original expression and not the underlying idea, goal or information embodied in a work. |
| PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another | High Court | Yes | [2012] 4 SLR 36 | Singapore | Cited as a comparable case for determining statutory damages for copyright infringement and for the elements required to prove breach of confidence. |
| Invenpro (M) Sdn Bhd v JCS Automation Pte Ltd and another | N/A | Yes | [2014] 2 SLR 1045 | N/A | Cited for the elements required to prove breach of confidence. |
| Clearlab SG Pte Ltd v Ting Chong Chai and others | N/A | Yes | [2015] 1 SLR 163 | N/A | Cited for the elements required to prove breach of confidence. |
| Adinop Co Ltd v Rovithai Ltd and another | High Court | Yes | [2018] SGHC 129 | Singapore | Cited for the elements required to prove breach of confidence. |
| Sports Direct International Plc v Rangers International Football Club Plc | N/A | Yes | [2016] EWHC 85 (Ch) | England and Wales | Cited to support the principle that just because the parties label matters as being confidential does not necessarily make it so. |
| Man Financial (S) Pte Ltd (formerly known as E D & F Man International (S) Pte Ltd) v Wong Bark Chuan David | N/A | Yes | [2008] 1 SLR(R) 663 | N/A | Cited for the implied term that an employee is under a duty to serve his employer with good faith and fidelity. |
| Asiawerks Global Investment Group Pte Ltd v Ismail bin Syed Ahmad and another | N/A | Yes | [2004] 1 SLR(R) 234 | N/A | Cited for the principle that employees should not be engaged in other business or employment during office hours, unless approved by their employers. |
| Hivac Ltd v Park Royal Scientific Instruments Ltd | N/A | Yes | [1946] 1 Ch 169 | N/A | Cited for the principle that an employee who moonlights may be in breach of his duty of fidelity. |
| M+W Singapore Pte Ltd v Leow Tet Sin and another | N/A | Yes | [2015] 2 SLR 271 | N/A | Cited for the elements required to establish a claim for inducing a breach of contract. |
| OBG Ltd and another v Allan and others | N/A | Yes | [2008] 1 AC 1 | N/A | Cited for the principle that the breach of contract must be intended either as a means to an end or an end in itself. |
| Teh Guek Ngor Engelin née Tan and others v Chia Ee Lin Evelyn and another | N/A | Yes | [2005] 3 SLR(R) 22 | N/A | Cited for the principle that the remedy of account of profits, as an equitable remedy, is not ordinarily available in actions for breach of contract. |
| Gunter v Astor | N/A | Yes | (1819) 4 Moore CP 12 | N/A | Cited as an example of a case where higher damages can be recovered in respect of the tort of inducing breach of contract than in an action against the contract breaker. |
| Lumley v Gye | N/A | Yes | (1853) 2 E&B 216 | N/A | Cited for the principle that any damage which the defendant intended to cause is recoverable in a claim for inducing breach of contract. |
| Smith New Court Securities Ltd v Citibank NA | N/A | Yes | [1997] AC 254 | N/A | Cited for the principle that as an intentional tort, the tortfeasor is liable, in principle, for all the direct consequences of the tort. |
| Wishing Star Ltd v Jurong Town Corp | N/A | Yes | [2008] 2 SLR(R) 909 | N/A | Cited for the principle that as an intentional tort, the tortfeasor is liable, in principle, for all the direct consequences of the tort. |
| Lightly v Clouston | N/A | Yes | (1808) 127 ER 744 | N/A | Cited for the principle that the plaintiff, whose apprentice was wrongly acquired by the defendant, was entitled to claim the labour of his apprentice against the defendant. |
| Designers Guild Limited v Russell Williams (Textiles) Limited | N/A | Yes | [2000] 1 WLR 2416 | N/A | Cited for the principle that in deciding whether a substantial part of the plaintiff’s work has been reproduced, what is important is to identify what was copied (taken) from the copyright work and reproduced in the alleged infringement, and then to ask whether that part which was taken is a qualitatively substantial part of the copyright work. |
| Kenrick & Co v Lawrence & Co | N/A | Yes | (1890) 25 QBD 99 | N/A | Cited for the principle that copyright protects original expression and not the underlying idea, goal or information embodied in a work. |
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, 2006 Rev Ed) s 7(1) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 30(2) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 30(4) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 30(5) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 30(6) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 70(1) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 70(2)(a) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 70(4) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 70(5) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 74 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 69 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 119(2)(d) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 119(5) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 124 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 130 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 130(1)(a) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 130(1)(b) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 130(1A) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 130(1B) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 130(2) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 131 | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 194(3) | Singapore |
| Copyright Act (Cap 63, 2006 Rev Ed) s 195 | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Filtered Cathodic Vacuum Arc (FCVA)
- Direct Cathodic Vacuum Arc (DCVA)
- Semivac Slides
- Semivac Drawings
- Technical Drawings
- Confidential Information
- Industrial Application
- Useful Article Defence
15.2 Keywords
- copyright infringement
- breach of contract
- breach of confidence
- inducing breach of contract
- FCVA technology
- technical drawings
- useful article defence
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 90 |
| Breach of Confidence | 85 |
| Torts | 80 |
| Employment Law | 75 |
| Inducement of Breach of Contract | 70 |
| Contract Law | 60 |
16. Subjects
- Copyright
- Employment
- Torts
- Contract