Odex Pte Ltd v Pacific Internet Ltd

[1] In this matter, Odex Pte Ltd (“Odex”) applied for pre-action discovery of various documents from Pacific Internet Limited (“Pacific Internet”).

[2] Odex is a private limited company in the business of providing foreign television programmes, in particular, various anime titles (i.e., cartoon animations originating from Japan) to local television stations for broadcasting, as well as distributing authorized copies of these programmes to retailers for sale to the public[note: 1].

[3] Odex alleged that with the proliferation of internet piracy, facilitated by the technological ease of obtaining DVD quality movie files for free through broadband networks, Odex’s sales of anime video titles had begun to drop progressively and significantly, by more than 80%. Television stations also bought fewer anime titles from Odex as they were allegedly losing viewership to illegal downloaders[note: 2].

[4] In late 2006, Odex engaged BayTSP.com Incorporated (“BayTSP”), an American company which is the developer and owner of patented technology that tracks instances of uploading/downloading of digital files on the internet in real time, and displays the Internet Protocol (“IP”) address of the relevant internet users, to provide Odex with an online tracking solution that would enable Odex to collect details relating to instances of unauthorized uploading and downloading of copies of the video titles[note: 3].

[5] Odex alleged that it discovered through BayTSP’s tracking solution that there had been more than 474,000 unique downloads over an 11-month period, based on searches conducted on only 50 out of more than 400 authorized titles[note: 4]. Odex reported these findings to its Japanese principals, some of whom expressed dismay, in a letter (that was apparently prepared for each of them to sign) that “Singapore ranked number 10 in the world for total number of illegal downloads, and was ranked number 1 in the world for highest level of illegal downloads per capita of population”[note: 5]. Action in one form or another had to be taken to address this problem.

[6] Odex said that it had approached the Intellectual Property Rights Branch (“IPRB”) of the Criminal Investigation Department to raid the homes of illegal downloaders but to no avail. According to Odex, the IPRB declined its request but advised Odex to carry out criminal enforcement through co-operative enforcement action – meaning that Odex had to gather evidence itself, apply for pre-action discovery, apply for search warrants and apply for a fiat from the Attorney-General and institute prosecution privately.

[7] Odex had also approached the Intellectual Property Office of Singapore (“IPOS”) to develop a campaign to educate the public on online piracy. Odex was prepared to fund the project but wanted illegal downloaders to pay a small sum to charity as a penalty. However, IPOS decided not to embark on such a campaign as it felt that the timing was not right. Odex then initiated an education campaign targeted at five tertiary institutions in Singapore, as well as anime focus groups, at which the blithe responses garnered were along the lines of “catch me if you can” and “why buy when I can download for free and get away with it” [note: 6]. The general attitude of these people was that they would not stop downloading even if they received a warning letter. At most, they would just lie low for a while and resume downloading when the coast was clear.

[8] In these circumstances, Odex said it proceeded, as a last resort, to the courts. In doing so, it applied under O 24 r 6(5) of the Rules of Court for the pre-action discovery of documents from Pacific Internet, a public company and local internet service provider licensed under the Telecommunications Act (Cap 323, 2000 Rev Ed), in order to identify the downloaders in question.

[9] Several affidavits were filed by Go Wei Ho (“Go”), Odex’s Managing Director, in support of this application. Paragraph 4 of Go’s first affidavit of 30 May 2007 asserted that Odex required discovery from Pacific Internet “to ascertain the proper party(ies) against whom Odex should commence legal proceedings in order to enforce and protect Odex’s rights and interests”.

[10] Paragraph 7 of Go’s first affidavit asserted that Odex and the Anti-Video Piracy Association, Singapore (“AVPAS”), of which Go was the Vice-President, were at all material times authorised by “the relevant copyright owners and/or licensees to take all necessary steps to protect and enforce their respective copyrights subsisting in the cinematograph films comprised in more than 200 animation video titles, including but not limited to the 53 animation video titles” set out in a list (“the Video Titles”). Various documents purporting to be authorisation letters from the copyright owners and/or licensees were exhibited.

[11] In his first affidavit, Go also explained that he had engaged BayTSP to provide Odex with an online tracking solution to track down and collect details of instances of uploading and downloading of copies of the Video Titles. The tracking solution allows tracking of uploading/downloading of digital files on the internet in real time and displays the IP address of each internet user who carries out such uploading/downloading. Go had used the tracking solution to track down instances of uploading/downloading of the Video Titles by internet users using the BitTorrent protocol to record details of each instance of uploading/downloading. Go also explained that the BitTorrent protocol works “by engaging its users in a “tit-for-tat” file sharing system. As each user downloads a file, he / she also uploads his / her BitTorrent files to the network for other users to download. Generally, the larger the amount of bandwidth is set for uploading, the faster the downloading process will be. Each BitTorrent user who downloads files using the BitTorrent protocol therefore also simultaneously uploads his / her downloaded files to other users.”[note: 7]

[12] Between 29 January 2007 to 6 May 2007, Go operated the tracking solution continuously. He then sorted out the results and compiled a table setting out “some of the highest instances of downloading/uploading of the Video Titles” where the downloaders/uploaders (“the downloaders”) had IP addresses that were issued by Pacific Internet. Apparently, there were 981 of such addresses.

[13] Go asserted in paragraph 20 of his first affidavit that “the unauthorised reproduction and/or communication to the public” by each of the downloaders constituted infringement of the copyright in the cinematograph films comprised of the Video Titles under s 103(a) (meaning actually s 103(1)) read with s 83 of the Copyright Act (Cap 63, 2006 Rev Ed) (“Copyright Act”). He also believed that the wilful infringement of the Video Titles to a significant extent by any of the downloaders also constituted an offence under s 136(3A) of the Copyright Act.

[14] In paragraph 24 of his first affidavit, Go asserted that Pacific Internet was not likely to be a party to subsequent proceedings.

[16] Odex then filed an appeal against this decision. It also sought to introduce additional affidavit evidence on the locus standi point and to address the DJ’s concern about the lack of evidence to establish an extremely strong prima facie case, without accepting that the DJ had applied the correct standard of proof. I allowed the admission of such additional evidence.

[17] As regards the DJ’s conclusion that Odex did not have the locus standi for most of the titles in question, the DJ said at [11 (a) to (d)]:

[18] The DJ was of the view that in Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another [2007] 2 SLR 869 (“Alliance Entertainment”), Judicial Commissioner Sundaresh Menon had decided that only the copyright owner and an exclusive licensee (under s 123 of the Copyright Act) had the right to take action against copyright infringers. In so far as Odex was neither the copyright owner nor an exclusive licensee, the DJ concluded that Odex had no locus standi to apply for pre-action discovery.

[19] However, as regards one letter, i.e. a letter of authority from Sunrise Inc who claimed to be the copyright owner of one video title Mobile Suit Gundam Seed, the DJ said that it appeared that Odex was the exclusive licensee in respect of this video title.

[20] Before me, Odex criticised these findings of the DJ as follows:

(a) As regards the letter from Sunrise Inc to Odex in respect of Mobile Suit Gundam Seed, Odex asserted that the DJ had wrongly characterised this letter as an exclusive licence when it was actually a letter of authorisation to carry out various acts on behalf of the copyright owner.

(b) As regards the letter from GDH KK, Odex asserted that GDH KK was in fact one of the copyright owners of each of the titles mentioned in its letter and a letter of clarification. GDH KK was not merely a distributor as the DJ had concluded and it had the authority of other copyright owners to issue a letter of authorisation to Odex to carry out acts on behalf of the copyright owners. As regards the letters of authorisation from copyright owners to AVPAS, AVPAS had in turn authorised Odex to carry out all steps to protect and enforce the copyright in various titles. It was wrong of the DJ to categorise these letters of authorisation from AVPAS to Odex as sub-licences. Even Pacific Internet’s counsel had not categorised them as such.

(c) The DJ had also wrongly categorised MICO as merely a distributor because in the letter of authorisation, MICO had identified the copyright owners of various titles and had expressly stated that Odex was authorised to take steps to protect and enforce the copyright on behalf of MICO and/or the copyright owners. However, I would just mention at this point that this letter was not well-drafted and it did mention expressly that MICO had been appointed by the copyright owners as their “sole international distributor”.

(d) There was one letter of authorisation from Kodansha Ltd to AVPAS. Although Kodansha was not the copyright owner, it subsequently claimed in a letter of clarification that it was authorised by various copyright owners who had in turn authorised AVPAS to carry out various actions on behalf of the copyright owners.

[21] Before me, Odex was emphasising that it was making the application in its capacity as an authorised agent of copyright owners and not in its capacity as licensee, whether exclusive or otherwise, even though it was the exclusive licensee of some, but not all, of the Video Titles. In so doing, Odex was hoping to avoid the consequences of the decision in Alliance Entertainment. Odex’s said position was not so clearly asserted when it first started on its application vis-à-vis Pacific Internet. As I mentioned in [9], paragraph 4 of Go’s first affidavit had asserted that Odex was intending to commence legal proceedings to protect its own interests. The reference to its status as an agent was only mentioned in paragraph 7 of Go’s first affidavit (see [10]). Even then, the letters of authority were said to be from “copyright owners and/or licensees”. The licensees were not even referred to as exclusive licensees then. It seemed to me that Odex might have been unaware of the decision in Alliance Entertainment and/or was less than careful when it first started on its application. Perhaps its success in earlier applications against internet service providers known as Singnet and Starhub might have lulled it into complacency. I have taken the trouble to mention this because I am of the view that applicants who seek such discovery, especially in the minefield of copyright law, should tread more carefully lest they confuse or distract themselves, the internet service providers and the court.

[22] I would also add that while Odex was correct in asserting that it was not a sub-licensee, it seemed to me that in many instances it was a sub-agent in that it did not receive its authority to act directly from the copyright owners. Be that as it may, I will, for convenience, refer to its status as that of an agent of the copyright owners to make the application for pre-action discovery as it mattered not whether it was an agent or sub-agent.

[23] Odex did not dispute the correctness of the decision in Alliance Entertainment but sought to distinguish the present application from the facts in that case. It submitted that the present application was for pre-action discovery whereas in that case, substantive relief based on a cause of action was being sought. It relied on a practice direction to support its contention that it had the locus standi to make the application notwithstanding the decision in Alliance Entertainment. For the Subordinate Courts, the relevant practice direction was ePractice Direction 4 of 2005, Amendment to the Subordinate Courts Practice Directions (2004 Ed). The heading was “Applications for discovery or Interrogatories against Network Service Providers in relation to Specific Intellectual Property Issues”. The relevant provisions are paragraphs 1 and 2 which state:

[24] Paragraph 23A states:

[25] The above practice direction was dated 21 September 2005 and took effect from 22 September 2005. Earlier, a similar practice direction for the Supreme Court dated 12 August 2005 was issued and this took effect from 15 August 2005. It is unnecessary for me to set out the terms of the earlier practice direction as it is substantially the same, if not identical, to the one for the Subordinate Courts and I need refer only to the latter. I would add that Order 24 and 26A of the Rules of Court relate to applications for discovery and for interrogatories respectively.

[26] Odex relied heavily on the phrase in paragraph 23A(1)(a) referring to applications “ on behalf of” an owner or exclusive licensee. It submitted that this phrase supported its position that Odex, as an authorised agent of copyright owners, could make the application for pre-action discovery in its own name and that the application need not be in the names of the copyright owners or of the exclusive licensees, if any.

[27] Odex also stressed that the practice direction was issued to comply with Singapore’s obligation under Article 16.9.22(b)(xi) of the United States-Singapore Free Trade Agreement (“USS FTA”). However, that provision did not assist Odex in its primary assertion. That provision states:

[28] As can be seen, that provision does not say that Singapore must allow an authorised agent of a copyright owner to make an application to obtain information from a service provider. It seemed to me that the focus of Article 16.9.22(b)(xi) was in the obtaining of information expeditiously and it was towards this end that the practice direction was passed. In other words, the purpose of the practice direction was to stipulate that the appropriate application would be fixed for hearing within five days from the date of filing of the application.

[29] It seemed to me that the reference to “on behalf of” in paragraph 23A (1)(a) was an assumption that such an application could be made on behalf of a copyright owner or exclusive licensee. The practice direction did not purport to create additional rights. Even if it did, it did not have the force of law (see BNP Paribas (formerly known as Banque National De Paris) v Polynesia Timber Services Pte Ltd and Anor [2002] 4 SLR 933 where Justice Lai Siu Chiu held at [37] that a practice direction is not law but merely a direction for administrative purpose).

[30] In the Singapore Court Practice 2006 (LexisNexis, 2006), Jeffrey Pinsler states at p6 that:

[31] Odex also relied on Article 16.9.22(b)(ix) USS FTA and certain letters between the governments of Singapore and the United States of America (“USA”). Article 16.9.22(b)(ix) states:

[32] A letter dated 6 May 2003 from the Minister for Trade and Industry, Singapore, Mr George Yeo to Mr Robert B. Zoellick, the United States Trade Representative, states:

[33] The substance of this letter was confirmed by Mr Zoellick in his reply dated 6 May 2003.

[34] In addition, Odex submitted that Article 16.9.22(b)(ix) FTA led to the promulgation of the Copyright (Network Service Provider) Regulations 2005. Regulation 3(2) states:

[35] Odex submitted that because the letter from the Minister made references to a notice by a person authorised to act on behalf of an owner and to the authorised agent of a complaining party and because Regulation 3(2) contained similar provisions, these lent weight to its argument that Odex could, as an authorised agent of copyright owners, make the application in its own name. I did not agree. The letter from Mr Yeo referred to Article 16.9.22(ix) and not to Article 16.9.22(xi). The latter was the provision pursuant to which the practice direction was issued. Likewise, Regulation 3(2) was in relation to provisions in the Copyright Act which had nothing to do with discovery.

[36] Odex also relied on s 512 (h) (1) of the USA Circular 92 Copyright Law of the United States and Related Laws contained in Title 17 of the United States Code which states:

[37] However, as Singapore does not have such a provision, it did not assist Odex to rely on a provision applicable in another jurisdiction. The point was not whether USA or Singapore has a rigorous copyright regime or whether in other areas of copyright law or enforcement a person may be authorised to act on behalf of a copyright owner or an exclusive licensee. The point before me was whether, in Singapore, an agent of a copyright owner could apply in the agent’s own name for pre-action discovery in order to identify infringers. Prima facie, an agent could not. This is why there is a need for primary or subsidiary legislation to allow this. At present the Copyright Act and its regulations do not allow for this. As for the practice direction, it also does not allow this and, in any event, it cannot create such a right for the reason I have stated at [29] and [30]. Whether the law should be amended to allow this is a separate matter.

[38] Therefore, although Odex was correct in arguing that it was not a sub-licensee in the situation referred to before the DJ, this was immaterial. As an authorised agent, it did not have the locus standi to make the application in question.

[39] Paragraph 25 of Go’s fourth affidavit of 30 October 2007 sought to justify why Odex’s name was used. He said, inter alia:

[40] I was of the view that Odex and its Japanese principals had missed the point. The Japanese principals may use the services of an agent to track down infringers. The point is that when it comes to civil court proceedings, they have to use their own names, as the law currently stands, for pre-action discovery and for the formal action for substantive relief. There need not be multiple applications. There may be one application in the names of the various copyright owners. Indeed, eventually that was done when an application was made to add some of the copyright owners as additional plaintiffs, an application which I allowed.

[41] It seemed to me that the truth of the matter was that although various Japanese copyright owners had appeared to be supportive of the steps taken by Odex, they were nevertheless reluctant to be named as plaintiffs. That is why even up to the late stage of the hearing of the appeal before me, only some of them had applied to be added as plaintiffs. Their reluctance may be due to cultural and/or corporate and/or other reasons but, at present, if they wish to fully support Odex’s efforts, they will have to lend their names as well. I would add that where their names are used, they may authorise someone to sign affidavits on their behalf so long as that person has the requisite knowledge or information to do so. It is not necessary for a corporate officer of each copyright owner to execute a separate affidavit.

[42] During arguments before me, Odex also relied on the court’s jurisdiction to allow the discovery sought as expounded in Norwich Pharmacal Co v Customs and Excise Commissioner [1974] AC 133 (“NP”), aside from O 24 r 6. I should mention that its original application was made under O 24 r 6 and not under the NP jurisdiction but the DJ had discussed the latter as well.

[43] In UMCI Ltd v Tokio Marine & Fire Insurance Co (Singapore) Pte Ltd [2006] 4 SLR 95, Menon JC was of the view that such an inherent jurisdiction overlapped with O 24 r 6. Assuming that such a jurisdiction has not been superceded by O 24 r 6, I was of the view that it was still not open to Odex to rely on that jurisdiction. Since it had no locus standi to make the application under O 24 r 6, it seemed to me to follow that it also had no locus standi to rely on the NP jurisdiction to obtain information with a view to the commencement of civil proceedings by copyright owners.

[44] However, Odex submitted that it could apply for an order for discovery under the NP jurisdiction in order to use the information disclosed to undertake criminal proceedings under the Copyright Act. For this proposition, Odex relied on Ashworth Hospital Authority v MGN Ltd [2002] 1 WLR 2033 (“Ashworth”). In that case, the defendant was a newspaper publisher. One of its newspapers published an article which included extracts from the medical records of a patient at a hospital. The source was an employee of the authority administering the hospital and had apparently supplied the records to an intermediary who in turn supplied them to a journalist of the newspaper. The authority applied for and obtained an order requiring the defendant to explain how it had obtained the records and the identity of the employee and others involved. The authority had obtained the order to enable it to dismiss the source rather than to bring proceedings against him. The defendant’s appeals to the Court of Appeal and to the House of Lords were unsuccessful. The House of Lords held that for disclosure to be ordered, it was not necessary for a claimant to intend to bring legal proceedings against the wrongdoer, provided some other legitimate purpose in seeking disclosure was identified.

[45] Lord Woolf suggested that the court’s NP jurisdiction could be used to obtain information to identify a wrongdoer. He said at [50], [53] and [54]:

[46] As can be seen, Lord Woolf’s view was not confined to a situation where the applicant was intending to undertake criminal prosecution himself. It was sufficient if he intended to obtain information to identify the wrongdoer and leave the prosecution to the usual prosecuting authority.

[47] Lord Woolf went on to say at [55] to [57]:

[48] Thus, Lord Woolf left open the question whether there was jurisdiction to order disclosure when there was no cause of action. However, this is different from a situation where there is a cause of (civil) action but the applicant is not the one who has locus standi to bring the action.

[49] Going back to criminal wrongdoing and assuming that Lord Woolf’s view was to be applied in Singapore, would Odex be considered a victim of the wrongdoing? On this point, Odex claimed that it was the exclusive licensee in Singapore of about 118 titles and its business was suffering significantly as a result of internet piracy. I would add that on Odex’s argument about being a victim of a crime, even a bare licensee could claim to be a victim of the wrongdoing as its business too would have suffered. In any event, the problem for Odex was that it had expressly disavowed making the application in its capacity as a licensee, whether exclusive or otherwise (see for example paragraphs 21 and 22 of Go’s fourth affidavit and Odex’s submission before me).

[50] Odex could have made its application in different capacities. However it chose to make its application only in its capacity as an agent of the copyright owners. In such a situation, it seemed to me that the agent is not the victim of the wrongdoing. Accordingly under the NP jurisdiction as extended by Ashworth, assuming Ashworth to apply in Singapore Odex would still not be the right party entitled to relief. In any event, the copyright owners themselves would have the locus standi to claim such relief without even having to rely on Ashworth.

[51] Odex also stressed that it could make a criminal complaint. It cited, as an example, Megastar Entertainment Pte Ltd v Odex Pte Ltd [2005] 3 SLR 91 (“Megastar”). In that case Odex had made seven complaints under s 136(9) of the Copyright Act as a result of which the court issued search warrants in relation to six units in a building occupied by Megastar Entertainment Pte Ltd. It is true that under s 136(9), there is no restriction on the person who may give the information leading to the issuance of a search warrant but, if the warrant is issued, it is not the informant who undertakes the search but a police officer. In Megastar, the search was conducted by officers from the IPRB of the Criminal Investigation Department of the Singapore Police Force accompanied by various persons including Odex’s solicitors. The seized items were retrieved and retained by the IPRB. In the present case before me, Odex mentioned that they had requested the assistance of the IPRB. However, the IPRB declined Odex’s request and advised Odex that it could carry out its own criminal enforcement (see [6]).

[52] Odex submitted that since it could give information leading to the issue of search warrants under s 136(9) and it could also carry out private prosecutions through a fiat issued by the Attorney-General, it was incongruous that it could not obtain discovery under the court’s NP jurisdiction.

[53] However, the criminal jurisdiction is a different one. If Odex’s argument was valid, then because anyone could make a complaint, it would follow that pre-action discovery would be available to anybody. Secondly, the counter-argument may also be advanced that it is incongruous for Odex to be entitled to obtain pre-action discovery when it could not mount the substantive action in its own name.

[54] Furthermore, assuming that the court could allow Odex to obtain the information for the purpose of criminal proceedings, then the court would have to confine the use of such information to criminal proceedings. There was no suggestion that Odex was prepared to have any information obtained so confined.

[55] Odex also relied on Microsoft Corp v. SM Summit Holdings Ltd [1999] 4 SLR 529 (“Microsoft”). In that case, the Court of Appeal said at [33]:

However, Microsoft did not involve a situation where an agent of copyright owners was applying for pre-action discovery. As I have mentioned, the present case is not a situation where copyright owners are without recourse. They need only lend their names to the action but have chosen not to do so, at least initially for some of them. As for the assertion about using the information sought for criminal proceedings, this was on the premise that an offence had been committed. Likewise, the intended use of such information for civil action is also on the premise that there was copyright infringement. I will deal with these points below.

[56] In dealing with the evidence before him for the isolated situation where he considered Odex to be an exclusive licensee, the DJ first considered the standard of proof which Odex had to discharge. He noted the requirements for applications for interim injunctions and for Anton Pillar orders and applied one requirement for applications for Anton Pillar orders. He concluded that Odex had to demonstrate an extremely strong prima facie case of wrongdoing. Based on the evidence before him, he concluded that Odex had not discharged this burden. He considered Pacific Internet to be in a special relationship vis-à-vis its subscribers and the regulator. Pacific Internet had a contractual and regulatory duty respectively to keep the information sought confidential. The DJ also considered such a test to be applicable to others who are in possession of confidential information arising from similar special relationships, for example, priest-penitent, physician-patient and journalist-source.

[57] Odex criticised the DJ’s standard of proof. It submitted that even Pacific Internet did not advocate such a high standard and no such standard was mentioned in two other earlier unrelated cases.

[58] The first case was Kuah Kok Kim v Ernst & Young [1997] 1 SLR 169 (“Ernst &Young”). In that case, the pre-action application was made by minority shareholders against a firm of accountants to seek discovery of the documents and working papers which the firm had referred to or used in their valuation of shares in a company. The firm had valued the shares, which the plaintiffs were selling to the majority shareholders, at a price lower than the valuation obtained by the plaintiffs subsequently from another accounting firm. The Court of Appeal allowed the application. They said at [59] and [60]:

[59] The second case was KLW Holdings v Singapore Press Holdings Ltd [2002] 4 SLR 417 (“SPH”). In that case, the application for pre-action discovery was made against the owners of a newspaper which had published a story that allegedly created the impression that the plaintiffs had defaulted in its payment to the founders of a home furnishing store. The plaintiffs sought pre-action discovery in respect of notes of interviews and working drafts for the story to identify the source of information in the story. Justice Choo Han Teck had to deal with the “newspaper role” which purportedly exempted newspapers from disclosing sources of information in a pre-action process. However, on pre-action discovery generally, he thought that the guide should be the interest of justice. On the facts before him, he dismissed the plaintiff’s appeal.

[60] So, in the case before me, the application was made to obtain the identities of alleged wrongdoers and it was only to that limited extent that one could say it was an exercise in gathering evidence. In NP, Lord Cross did not even think that the asking for the name of a person who was to be made a defendant had anything to do with the collection of evidence (see p199 at D of the law report).

[61] Nevertheless, although the information sought by Odex was not to establish any wrongdoing, the DJ was not wrong to consider whether there was evidence of wrongdoing in the first place. However, with respect, I am of the view that he erred when he imposed the standard of proof that he did. In many instances of pre-action discovery, the plaintiff would clearly not be able to meet such a test as in Ernst & Young. As regards the situation where the plaintiff asserts that he has a cause of action and is seeking discovery to ascertain the identity of the wrongdoer, then it seemed to me that the strength of his case is one of the factors to be considered in the totality of the facts before the court as suggested by Lord Cross in NP (at p199 at E). Any duty of confidentiality which the defendant may owe to other parties is yet another factor and should not, in and of itself, give rise to a higher standard of proof. Ultimately, the guide should still be the interest of justice.

[62] As for the contractual and regulatory duty of confidentiality which Pacific Internet might have, it was clear to me that such a duty would be subject to any order of court which a court might make. It could not seriously be suggested that Pacific Internet would be in breach of either duty if it made disclosure pursuant to a court order and counsel for Pacific Internet stopped short of making such a suggestion. The prospect that Odex’s subscribers may be subject to civil and/or criminal proceedings was neither here nor there. That was the purpose of pre-action discovery, especially in the context of copyright infringement.

[63] As for the evidence adduced by Odex, the DJ was of the view that such evidence was lacking. He said at [34] and [35] of his grounds:

[64] It was partly to address these observations that Odex applied to admit additional evidence which I allowed, as I mentioned above. The additional evidence included an affidavit from Mark M. Ishikawa, the Chief Executive Officer of BayTSP, which in turn exhibited a report from him. The report addressed the points raised by the DJ.

[65] As mentioned in [13], Odex had asserted that the unauthorised reproduction and/or communication to the public by each of the downloaders constituted copyright infringement under s 103(1) read with s 83 of the Copyright Act. Before me, Odex confined its complaint to unauthorised reproduction.

[66] Section 103(1) states:

[67] Section 83 states:

As there was evidence of wrongful downloading of the Video Titles, there seemed to me to be a prima facie case of copyright infringement.

[68] On the other hand, Pacific Internet mentioned that there might not be any copyright infringement in view of s 114(1) of the Copyright Act which states:

[69] Odex’s response on s 114(1) was that s 114(1) was confined to copyright in a television broadcast or a cable programme and did not apply to copying from the internet.

[70] From the speeches in Parliament on 16 November 2004, when the Copyright (Amendment) Bill was being read in Parliament the second time, it seemed quite clear to me that the downloading from the internet of material whose copyright belonged to someone else, without licence from the copyright owner, was an infringement of copyright. However a different threshold was intended and stipulated for an offence under s 136(3A) of the Copyright Act.

[71] I also noted that Pacific Internet did not press the point about s 114(1) too vigorously. Indeed, with the new evidence, its counsel said that he would not say that clearly there was no cause of action for a civil action. Pending full arguments from alleged wrongdoers, if it should come to that, I need only say that my tentative view for the purpose of the pre-action discovery application was that there was a cause of action and such a cause of action had been established on the evidence so far, although without the identity of the wrongdoers.

[72] As for an offence under s 136(3A) of the Copyright Act, the evidence was much less clear. Prior to the amendments in 2004, the Copyright Act had criminalised only commercial activities of copyright infringement as set out in s 136(1), (2) and (3) of the Copyright Act. Under the new s 136(3A), there is also criminal liability if the infringement is wilful and either or both of certain situations apply under s 136(3A)(c):

(i) the extent of the infringement is significant;

(ii) the person does the act to obtain a commercial advantage.

[73] The new s 136(6A) and (6B) state:

[74] It seemed to me that there would be more difficulty in determining whether the infringement was significant than in determining whether the infringement was to obtain a commercial advantage. For example, if a person were to download copyrighted material without licence for his personal use, it would seem that that is not to obtain a commercial advantage under s 136(6B) since it would not be for a business or trade carried on by him. However it is less clear whether it can be caught under s 136(6A). How many copies and what value would suffice so as to constitute significant infringement? These points were raised in Parliament but they could not be definitively addressed. In responding to such points, Professor S. Jayakumar, the Deputy Prime Minister and Minister for Law, said:

[75] Mr Go had said that he had compiled a table setting out “some of the highest instances of downloading/uploading of the Video Titles” where the downloaders had IP addresses issued by Pacific Internet. Apparently, there were 981 of such addresses (see [12]). However he did not opine which of those downloaders would also have committed an offence under s 136(3A). That was another reason why I was not inclined to grant Odex’s application for the purpose of criminal enforcement.

[76] In the circumstances, I would have allowed the application had the copyright owners (or the exclusive licensees) made the application themselves. Indeed, at the appeal stage before me, there was an application by some copyright owners to be added as plaintiffs as I have said. It was not disputed that the court had the power to allow the application to be added as plaintiffs even at this late stage in view of O 15 r 6(2) of the Rules of Court and Chan Kern Miang v Kea Resources Pte Ltd [1999] 1 SLR 145 at [19], which in turn relied on Dollfus Mieg et Cie SA v Bank of England (1951) Ch 33. Initially, Pacific Internet had not objected to the application, save for one of the applicants. In turn, the counsel for the applicants agreed not to pursue the application for that one applicant. Eventually, I saw no reason to disallow the application. To do so would have merely meant that the copyright owners would have to re-start all over again. Accordingly, I allowed the application to be added as plaintiffs for all but one of the applicants. I also allowed disclosure for the Video Titles which the successful applicants were the copyright owners of.

[note: 1]Affidavit of Go Wei Ho at [5]

[note: 2]4 Affidavit of Go Wei Ho at [7]

[note: 3]Affidavit of Go Wei Ho at [9]

[note: 4]4 Affidavit of Go Wei Ho at [8]

[note: 5]4 Affidavit of Go Wei Ho (GWH2 at [3])

[note: 6]4 Affidavit of Go Wei Ho at [9] - [14]

[note: 7]1 Affidavit of Goh Wei Ho at [14]