PCCW Media v M1 Ltd: Copyright Infringement & Site Blocking under Section 193DDA of the Copyright Act
PCCW Media Limited, a non-exclusive licensee of copyrights in drama and variety shows, applied to the High Court of Singapore for an order under Section 193DDA of the Copyright Act to compel M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd, ViewQwest Private Limited, M1 Net Ltd, Singnet Pte Ltd, Singtel Mobile Singapore Pte Ltd, Starhub Internet Pte Ltd, Starhub Mobile Pte Ltd and Starhub Online Pte Ltd, network service providers, to disable access to allegedly infringing online locations. The court, presided over by Justice Lee Seiu Kin, held on April 24, 2018, that PCCW Media lacked the legal standing to bring the application, as it was neither the owner nor an exclusive licensee of the copyright.
1. Case Overview
1.1 Court
High Court of the Republic of Singapore1.2 Outcome
Application dismissed; plaintiff had no locus standi to seek the remedy in section 193DDA of the Copyright Act.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
PCCW Media, a non-exclusive licensee, sought a site-blocking order against network service providers for copyright infringement. The court held that PCCW Media lacked the legal standing to apply for such an order.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| SingNet Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| SINGAPORE TELECOMMUNICATIONS LIMITED | Defendant | Corporation | Judgment for Defendant | Won | |
| M1 Limited | Defendant | Corporation | Judgment for Defendant | Won | |
| M1 Net Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| Singtel Mobile Singapore Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| Starhub Internet Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| Starhub Mobile Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| Starhub Online Pte Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| PCCW Media Limited | Plaintiff | Corporation | Application Dismissed | Lost | |
| My Republic Limited | Defendant | Corporation | Judgment for Defendant | Won | |
| Starhub Ltd | Defendant | Corporation | Judgment for Defendant | Won | |
| ViewQwest Private Limited | Defendant | Corporation | Judgment for Defendant | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Lee Seiu Kin | Judge | Yes |
4. Counsels
4. Facts
- PCCW Media Limited is a non-exclusive licensee of copyrights in drama and variety shows.
- PCCW Media operates a content service known as VIU in various countries, including Singapore.
- PCCW Media obtained assignment agreements from Korean Broadcasters to sue for copyright infringement in Singapore for site-blocking orders.
- The defendants are network service providers.
- PCCW Media alleged that five online locations were flagrantly infringing on copyrights.
- The assignment agreements purported to assign the right to sue only for obtaining site-blocking orders under s 193DDA.
- The plaintiff issued take-down notices to the owners/operators of the alleged FIOLs but received no responses.
5. Formal Citations
- PCCW Media Ltd v M1 Ltd and others, , [2018] SGHC 99
6. Timeline
| Date | Event |
|---|---|
| Plaintiff entered into assignment agreements with Korean Broadcasters | |
| Plaintiff entered into assignment agreements with Korean Broadcasters | |
| Plaintiff issued take-down notices to owners/operators of alleged FIOLs | |
| Plaintiff issued take-down notices to owners/operators of alleged FIOLs | |
| Plaintiff commenced proceedings via originating summons no 537 of 2017 | |
| Plaintiff filed summons no 3534 of 2017 seeking to add the sixth to eleventh defendants | |
| Court granted plaintiff leave to add the sixth to tenth defendants as parties | |
| Judgment delivered |
7. Legal Issues
- Locus Standi
- Outcome: The court held that the plaintiff, as a non-exclusive licensee, lacked the legal standing (locus standi) to apply for a site-blocking order under Section 193DDA of the Copyright Act.
- Category: Procedural
- Sub-Issues:
- Right to sue for copyright infringement
- Interpretation of 'owner' under Copyright Act
- Assignment of Right to Sue
- Outcome: The court held that the assignment agreements were of no effect for the purposes of Section 193DDA of the Copyright Act, as the right to seek a remedy under that section is limited to copyright owners and exclusive licensees and is not assignable.
- Category: Substantive
- Sub-Issues:
- Validity of assignment agreements
- Assignability of statutory remedies
- Definition of Copyright Owner
- Outcome: The court held that the right to sue for infringement is not part of the bundle of rights that constitutes a copyright, and therefore, being assigned that right does not make a party a 'copyright owner' under the Act.
- Category: Substantive
- Sub-Issues:
- Interpretation of 'owner of copyright'
- Exclusive rights under Copyright Act
8. Remedies Sought
- Site-blocking order under Section 193DDA of the Copyright Act
9. Cause of Actions
- Copyright Infringement
10. Practice Areas
- Copyright Infringement
- Site Blocking
- Intellectual Property Litigation
11. Industries
- Media
- Telecommunications
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another | High Court | Yes | [2007] 2 SLR(R) 869 | Singapore | Cited for the principle that a non-exclusive licensee has no locus standi to sue for copyright infringement. |
| Trendtex Trading Corporation and another v Credit Suisse | House of Lords | Yes | [1981] 3 WLR 766 | England and Wales | Cited regarding the exception to the rule against maintenance and champerty, where an assignment of a bare right of action is valid if the assignee has a genuine commercial interest. |
| Odex Pte Ltd v Pacific Internet Ltd | Singapore District Court | Yes | [2007] SGDC 248 | Singapore | Cited for the proposition that a non-exclusive licensee has no civil right of action under the Copyright Act. |
| Odex Pte Ltd v Pacific Internet Ltd | High Court | Yes | [2008] 3 SLR(R) 18 | Singapore | Cited for endorsing the finding in Alliance that a non-exclusive licensee has no locus standi to bring an action for infringement. |
| Manharlal Trikamdas Mody and another v Sumikin Bussan International (HK) Ltd | High Court | Yes | [2014] 3 SLR 1161 | Singapore | Cited for the principle that whether a statutory cause of action is assignable depends on the terms of the statute. |
| Neo Corp Ltd (under judicial management) v Neocorp Innovations Pte Ltd and another application | High Court | Yes | [2005] 4 SLR(R) 681 | Singapore | Cited for the principle that a special statutory right must be exercised in accordance with the strict language of the provision itself. |
| Neo Corp Pte Ltd (in liquidation) v Neocorp Innovations Pte Ltd | Court of Appeal | Yes | [2006] 2 SLR(R) 717 | Singapore | Cited for affirming the principle that a special statutory right must be exercised in accordance with the strict language of the provision itself. |
| Media C.A.T. Limited v A & Ors | England and Wales Patents County Court | Yes | [2010] EWPCC 17 | England and Wales | Cited for the argument that the right to sue for infringement is inextricably linked to the bundle of exclusive rights which a copyright confers. |
| Righthaven LLC v Wayne Hoehn and another | United States Court of Appeals for the Ninth Circuit | Yes | 716 F.3d 1166 | United States | Cited for the argument that the right to sue for infringement is inextricably linked to the bundle of exclusive rights which a copyright confers. |
| Silvers v Sony Pictures Entertainment Inc | United States Court of Appeals for the Ninth Circuit | Yes | 402 F.3d 881 | United States | Cited for the argument that the right to sue for infringement is inextricably linked to the bundle of exclusive rights which a copyright confers. |
| Ma v Ma | Ontario Court of Appeal | Yes | [2012] OJ No 2689 | Canada | Cited for applying the Trendtex exception in the context of assignments of the right to sue for copyright infringement to performing rights societies. |
| Century 21 Canada Limited Partnership v Rogers Communications Inc | Supreme Court of British Columbia | Yes | [2011] BCSC 1196 | Canada | Cited for the argument that a bare right to sue for infringement could not be assigned because it was inherent in the proprietary interest in a copyright. |
| Microsoft Corporation and others v PC Club Australia Pty Ltd and others | Federal Court of Australia | Yes | (2006) 67 IPR 262 | Australia | Cited for applying the Trendtex exception in finding that a right to sue in respect of undetected copyright infringements did not fall afoul of the rule against maintenance. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Copyright Act (Cap 63) | Singapore |
| Section 193DDA of the Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Section 193A(1) of the Copyright Act (Cap 63, 2006 Rev Ed) | Singapore |
| Sections 119(1) of the Copyright Act | Singapore |
| Section 194(2)(a) of the Copyright Act | Singapore |
| Section 83 of the Copyright Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Copyright
- Copyright Infringement
- Site-Blocking Order
- Locus Standi
- Network Service Provider
- Exclusive Licensee
- Assignment Agreement
- Flagrantly Infringing Online Location
- Section 193DDA
- Take-Down Notice
15.2 Keywords
- Copyright Infringement
- Site Blocking
- Section 193DDA
- Copyright Act
- Locus Standi
- PCCW Media
- M1 Limited
- Network Service Provider
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Copyrights | 90 |
| Remedies | 60 |
| Statutory Interpretation | 50 |
16. Subjects
- Copyright
- Intellectual Property
- Civil Procedure