PCCW Media Ltd v M1 Ltd and others

[2] The plaintiff, PCCW Media Limited, (“the plaintiff”) is a company headquartered in Hong Kong. It operates a content service known as VIU in various countries, including Singapore. VIU allows users to stream episodes of drama and variety shows on demand. The plaintiff is the licensee of copyrights in certain drama and variety shows produced by four Korean broadcasters: Seoul Broadcasting System, CJ E&M Corporation, Munhwa Broadcasting Corporation, and Korean Broadcasting System (collectively, “the Korean Broadcasters”). These shows are made available to the plaintiff’s customers on VIU.

[3] It was not in dispute that the first to tenth defendants are network service providers for the purposes of s 193DDA of the Act, as they come within the following definition in s 193A(1) of the Act:

[4] These proceedings were initially commenced against only the first to fifth defendants (“the original defendants”) who are, respectively, M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd and ViewQwest Private Limited. The plaintiff explained that since the first, third and fourth defendants each have numerous subsidiaries, it initially could not determine which of these subsidiaries fell within the definition of a network service provider. However, on 31 July 2017, the plaintiff filed summons no 3534 of 2017 (“Summons 3534”) seeking to add the sixth to eleventh defendants (“the new defendants”) to the present originating summons. This was on the basis that they appear to be the subsidiaries of the first, third and fourth defendants which deal with consumers in providing either mobile or terrestrial internet services. The table below sets out the names of the new defendants and their respective relationships with the original defendants.

[5] The plaintiff obtained confirmation from the new defendants that they had no objections to being added to the present proceedings. At the hearing on 3 August 2017, I granted the plaintiff leave to add the sixth to tenth defendants as parties. Counsel for the first, third and fourth defendants confirmed that they also represented the subsidiaries of their respective clients. For convenience, references to the submissions of the first, third and fourth defendants in these grounds of decision should be taken as representing the positions of their respective subsidiaries which are party to these proceedings as well.

[6] The plaintiff alleged that there were five “flagrantly infringing online locations” which had been using various fully qualified domain names to enable users to stream unauthorised copies of episodes of drama or variety shows. These included drama or variety shows in respect of which the plaintiff held copyright licences from the Korean Broadcasters, and which it made available to its users for streaming on VIU. The five alleged flagrantly infringing online locations were DramaNice, DramaCool, MyAsianTV, KShowOnline and KissAsian (“the alleged FIOLs”). The plaintiff also obtained confirmation from the Korean Broadcasters that they had never issued copyright licences for any of these drama or variety shows to any of the owners or operators of the alleged FIOLs.

[7] There was evidence suggesting that the volume of traffic to each of the alleged FIOLs was high. In May 2016 alone it appears that each of the alleged FIOLs had received between hundreds of thousands to millions of visits from users in Singapore.

[9] Between 19 August 2016 and 29 September 2016, the plaintiff entered into four separate assignment agreements with each of the Korean Broadcasters (“the assignment agreements”). Under the assignment agreements, the Korean Broadcasters purported to assign to the plaintiff the right to sue for copyright infringement in Singapore, with this right being limited to suing for the purpose of obtaining the relief in s 193DDA of the Act. For example, the plaintiff’s assignment agreement with CJ E&M Corporation provided as follows:

[10] The other assignment agreements between the plaintiff and each of the remaining Korean Broadcasters were in broadly similar terms. As will shortly become clear, these assignment agreements formed a central part of the plaintiff’s arguments as to why it had locus standi to bring an action under s 193DDA of the Act.

[11] The plaintiff argued that since the Korean Broadcasters, who were the copyright owners, had assigned it the right to sue in respect of copyright infringement in Singapore, it had “essentially [become] the owner of the copyright for the purposes of this enforcement action”. In arguing that this assignment of the bare right to sue for infringement was valid, the plaintiff cited George Wei, The Law of Copyright in Singapore (SNP Editions, 2nd Ed, 2000) (“The Law of Copyright in Singapore”) at para 12.5 and footnote 20, where the learned author notes that an assignment of copyright does not transfer the right to sue in respect of infringements that occurred prior to the assignment, but the right to sue in respect of such prior infringements could itself be assigned.

[12] The plaintiff further relied on the decision of the House of Lords in Trendtex Trading Corporation and another v Credit Suisse [1981] 3 WLR 766 (“Trendtex”). There, it was held that, notwithstanding the rule against maintenance and champerty, an assignment of a bare right of action is valid if the assignee has a genuine commercial interest in the success of the litigation (at 779) (“the Trendtex exception”). The Trendtex exception had been applied in Ma v Ma [2012] OJ No 2689, where the Ontario Court of Appeal cited assignments of the right to sue for copyright infringement to performing rights societies as an example in which the assignee has a sufficient interest in the success of the litigation to come within the Trendtex exception. The plaintiff also cited the decision of the Federal Court of Australia in Microsoft Corporation and others v PC Club Australia Pty Ltd and others (2006) 67 IPR 262, which also applied 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] The plaintiff argued that it had a “genuine and substantial interest” in the success of the litigation as a licensee of the copyright in the drama and variety shows produced by the Korean Broadcasters. Thus, under the Trendtex exception, it had been validly assigned the right to sue for copyright infringement by the Korean Broadcasters. This meant the plaintiff was “effectively” the owner of the copyright for the purpose of this application.

[14] At the hearing of this matter I suggested to learned counsel for the plaintiff, Mr Nicholas Lauw (“Mr Lauw”), that the validity of the assignment of the right to sue was a separate matter from whether such assignment (assuming it was valid) would make the plaintiff an owner of copyright for the purposes of the Act. Mr Lauw acknowledged that there is no provision within the Act which explicitly provides that an assignee of a right to sue for copyright infringement was a copyright owner. However, he pointed to ss 119(1) and 194(2)(a) of the Act, which provide as follows:

[16] Save for the fifth defendant, who did not participate in the proceedings, the defendants were aligned in submitting that the plaintiff did not have locus standi to apply for the relief in s 193DDA of the Act because it was neither an exclusive licensee nor an owner. Each of the defendants advanced slightly differing arguments in support of this position, although there were significant overlaps between the submissions.

[17] All of the defendants cited Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another [2007] 2 SLR(R) 869 (“Alliance”). There, Sundaresh Menon JC held that a non-exclusive licensee had no locus standi to sue for copyright infringement, as only owners or exclusive licensee were entitled to bring such an action under s 123 of the Act (at [29]–[31]). The first defendant specifically highlighted the observation in Alliance that a license generally passes no title or proprietary interest or rights, but merely makes lawful that which would otherwise be unlawful (at [21]). Most of the defendants also referred to Odex Pte Ltd v Pacific Internet Ltd [2007] SGDC 248 (“Odex DC”) and/or the High Court decision which affirmed Odex DC on appeal, Odex Pte Ltd v Pacific Internet Ltd [2008] 3 SLR(R) 18 (“Odex”). Both Odex DC and Odex had endorsed Menon JC’s finding in Alliance. The second defendant specifically relied on Odex DC for the proposition that a non-exclusive licensee not only has no locus standi to bring an action for infringement, but more generally has no civil right of action under the Copyright Act (Odex DC at [12]–[13]).

[19] The third defendant argued that a bare right to sue for infringement could not be assigned because it was “inherent in the proprietary interest” in a copyright. Thus, an assignment of a right of action was only valid where the proprietary interest in the copyright was also assigned. The decision of the Supreme Court of British Columbia in Century 21 Canada Limited Partnership v Rogers Communications Inc [2011] BCSC 1196 was cited in support of this point. The third defendant also highlighted the holding in Odex at [37]–[38] that an agent of a copyright owner could not apply in the agent’s own name for pre-action discovery, and argued that by extension, the assignee of a right of action also did not have locus standi to seek the relief in s 193DDA of the Act.

[20] The fourth defendant, too, argued that the Korean Broadcasters could not assign the plaintiff the right to sue for copyright infringement. However, its argument was based on the provisions of the Act. In direct contrast to the plaintiff (see [14]–[15] above), the fourth defendant argued that the term “exclusive right” in s 194(2)(a) of the Act did not include the right to bring an action for infringement. Rather, s 194(2)(a) should be read in light of ss 26 and 83 of the Act, which define the “exclusive rights” which comprise the copyright. Only one or more of these “exclusive rights” could be assigned by a copyright owner to a third party under s 194(2)(a) of the Act. The right to commence an action for infringement was separately created under s 119(1) of the Act, and therefore was not an “exclusive right” which comprises the copyright in a work. Thus, s 194(2) suggested that the right to sue could not be separated and assigned to a third party by the copyright owner. Rather, that right “flows simply by virtue of being the copyright holder”. Like the first defendant, the fourth defendant also cited the decisions of Righthaven and Silvers.

[21] Section 193DDA of the Act provides as follows:

[22] Under s 193DDA(1) of the Act, it is only the owner or exclusive licensee of copyright in a material that may make the application. Thus the issue is whether the plaintiff was the “owner or exclusive licensee of copyright in a material”. The plaintiff did not claim to be an exclusive licensee. The plaintiff also did not seek to challenge the holding in Alliance and Odex that ordinarily, a non-exclusive licensee has no right to bring any infringement action under the Act. Rather, the plaintiff sought to persuade the court that, by virtue of the assignment agreements, it was an “owner of copyright” in the drama or variety shows for the purposes of s 193DDA of the Act. Thus, the following issues arose for consideration:

(a) Whether the assignment agreements were of any effect.

[23] In my view, the assignment agreements were of no effect for the purposes of s 193DDA of the Act. Although both parties frequently referred to the plaintiff having been assigned “the right to sue for infringement”, it should be noted that what the Korean Broadcasters had purported to assign to the plaintiff was the specific right to make an application for site-blocking orders under s 193DDA of the Act. The question is whether this purported assignment has any effect in the operation of the provision.

[27] Given the above analysis it was unnecessary for me to address the first defendant’s argument that the right to seek the remedy in s 193DDA of the Act was not assignable because it was not a chose in action. The primary reason that this right was not assignable was because the Act clearly limited that right to owners and exclusive licensees.

[28] As I have explained above, my view was that the plaintiff had put the cart before the horse. The logical approach was first to determine (a) whether the right to bring an action under s 193DDA of the Act was capable of assignment, and only if such assignment was possible, to then determine (b) whether such assignment would make the plaintiff an “owner of copyright” for the purpose of that provision. Since the first question was answered in the negative, it was unnecessary to consider the second question. That in itself was sufficient to dispose of the application. However the plaintiff submitted that this assignment made it the “effective” owner of the copyright and I turn to address this argument.

[29] The question before me is whether an assignment of the right to seek a remedy under s 193DDA of the Act makes the plaintiff the owner of the copyright. Posed in this manner, the obvious answer is in the negative. Copyright comprises “a bundle of legally enforceable exclusive rights in respect of certain types of products of ‘intellectual’ activity” (see The Law of Copyright in Singapore at 1.1). The question was whether the right to bring an action under s 193DDA of the Act is part of the bundle of rights which constitutes a copyright, such that owning that right would make a party a “copyright owner”.

[30] As I have mentioned, the plaintiff relied on s 119 read with s 194(2)(a) of the Act, and contended that an assignment of copyright may be limited so as to apply only to the right to pursue an action for infringement. The plaintiff seemed to suggest that s 194(2)(a) implicitly equates the term “copyright” with “the classes of acts which by virtue of [the Act] the owner of the copyright has the exclusive right to do”. A copyright owner in the shoes of the Korean Broadcasters has an “exclusive right” to bring actions for infringement, thus, being assigned that right is a partial assignment of copyright which makes the plaintiff an “owner of the copyright”.

[31] However, in my view, s 194(2)(a) of the Act was of limited assistance to the plaintiff. That provision defines how an assignment of copyright may be limited, but it does not define what exactly a copyright is, or what bundle of rights it comprises. At first blush, s 194(2)(a) may implicitly suggest that a copyright includes any act which the owner is exclusively entitled to do under the Act. Yet the term “copyright” should not be understood in light of what s 194(2)(a) implicitly suggests. Rather, I agreed with the fourth defendant that what a copyright comprises is explicitly defined in provisions such as ss 26 and 82–86 of the Act, which describe the nature of copyright. In the case of drama or variety shows such as those in respect of which the plaintiff is licensee, as these are cinematograph films, the nature of copyright is defined by s 83 of the Act as follows: