Case Details
- Citation: [2001] SGHC 370
- Court: High Court of the Republic of Singapore
- Date: 2001-12-11
- Judges: Yong Pung How CJ
- Plaintiff/Applicant: Highway Video Pte Ltd
- Defendant/Respondent: Public Prosecutor (Lim Tai Wah) and other appeals
- Legal Areas: Copyright — Infringement, Criminal Law — Offences
- Statutes Referenced: Copyright Act, Designs and Patents Act 1988, Trade Marks Act
- Cases Cited: [1987] SLR 66, [2001] SGHC 370
- Judgment Length: 14 pages, 8,665 words
Summary
This case involves appeals by Highway Video Pte Ltd and its directors, Teng Yock Poh and Teng Kem Hong, against their convictions for copyright and trademark infringement offenses. The appellants were found to be in possession of unauthorized copies of a TVB-produced television series, "The Duke of Mount Deer", for the purposes of sale. The key issues on appeal were whether copyright subsisted in the foreign film, whether the copies were infringing, and whether the appellants had the requisite knowledge that the copies were unauthorized. The High Court ultimately upheld the convictions, finding that the appellants had failed to make sufficient inquiries to ascertain the legitimacy of the copies they were selling.
What Were the Facts of This Case?
Highway Video Pte Ltd ("Highway") operated a shop at Parkway Parade Shopping Centre that sold video cassettes and Video Compact Discs (VCDs) containing films, television serials, and other entertainment programs. The two other appellants, Teng Yock Poh and Teng Kem Hong (collectively "the Tengs"), were the siblings and directors of Highway.
In the 1980s, the Hong Kong-based Television Broadcasts Ltd ("TVB") produced a television series called "The Duke of Mount Deer" ("the film"). The copyright in this film was owned by TVB. In late 1999 or early 2000, TVB's distribution company, TVBI Co Ltd ("TVBI"), became aware that unauthorized copies of TVB's copyrighted films were being sold in Singapore in VCD format. TVBI then requested its prospective licensee in Singapore, Golden Mandarin Organisation Pte Ltd ("GMO"), to place warning advertisements in local newspapers stating that any TVB programs in VCD format were infringing copies not authorized by TVB.
On 1 or 2 February 2000, the Tengs purchased a set of 40 VCDs containing the TVB series "The Duke of Mount Deer" from GC Video Pte Ltd's ("GCV") Toa Payoh outlet for $100. Ng Chin Guan, the proprietor of GCV, assured Yock Poh that the set was a parallel import from Malaysia.
On 3 February 2000, two private investigators acting on GMO's instructions conducted a trap purchase of the set of 40 VCDs at Highway's shop. Highway was then charged under the Copyright Act for possession of the VCDs for the purposes of sale or trade when it ought reasonably to have known that they were infringing copies. Highway was also charged under the Trade Marks Act for the sale of the VCDs on which the registered trade mark of TVB was falsely applied. The Tengs were charged for the same offenses as directors of Highway.
What Were the Key Legal Issues?
The key legal issues on appeal were:
1. Whether copyright subsisted in the TVB television series "The Duke of Mount Deer" under Singapore law.
2. Whether the set of 40 VCDs purchased by the appellants were in fact infringing copies of the TVB series.
3. Whether the registered trade mark of TVB was falsely applied to the VCDs.
4. Whether the appellants ought reasonably to have known that the VCDs were infringing copies, such that they could be held liable for the offenses under the Copyright Act and Trade Marks Act.
How Did the Court Analyse the Issues?
On the issue of copyright subsistence, the court examined the relevant provisions of the Copyright Act and Copyright (International Protection) Regulations. It found that as a cinematograph film made or first published in Hong Kong, the TVB series "The Duke of Mount Deer" enjoyed copyright protection in Singapore by virtue of section 184 of the Copyright Act read with regulation 3 of the Copyright (International Protection) Regulations.
Regarding whether the VCDs were infringing copies, the court noted that the appellants did not dispute this point. The court was satisfied that the set of 40 VCDs purchased by the appellants were unauthorized copies of the TVB series, as evidenced by the lack of credits, copyright notices, and the licensed distributor's name on the packaging.
On the trade mark issue, the court agreed with the trial judge's finding that the registered TVB trade mark was falsely applied to the VCDs, as the packaging did not indicate any authorized use of the mark.
The key issue was whether the appellants ought reasonably to have known that the VCDs were infringing copies. The court examined the various factors that should have put the appellants on notice, including the missing information on the packaging, the appellants' awareness of TVB's licensing arrangements, and the warning advertisements sent to the appellants by GMO. The court agreed with the trial judge's conclusion that the appellants had "shut their eyes to the obviously dubious origin of the set of VCDs" and failed to make sufficient inquiries to ascertain their legitimacy.
What Was the Outcome?
The High Court dismissed the appeals and upheld the convictions of Highway and the Tengs under the Copyright Act and Trade Marks Act. The appellants were ordered to pay fines of $20,000 each, calculated based on the number of infringing copies and trade mark infringements.
Why Does This Case Matter?
This case is significant for several reasons:
1. It provides guidance on the scope of copyright protection for foreign-made cinematograph films in Singapore, confirming that films made or first published in countries like Hong Kong can enjoy copyright in Singapore.
2. It reinforces the principle that possession of unauthorized copies of copyrighted works for the purpose of sale or trade can constitute a criminal offense, even if the defendant claims to have believed the copies were legitimate.
3. The case highlights the importance of making proper inquiries to ascertain the legitimacy of goods, particularly in the context of parallel imports or gray market goods. Willful blindness to obvious signs of illegitimacy will not excuse liability.
4. The case sets a precedent for the application of criminal liability to directors of companies that commit copyright and trademark infringement offenses, underscoring the need for directors to exercise due diligence in their business operations.
Overall, this judgment reinforces Singapore's commitment to protecting intellectual property rights and sends a strong message to businesses and individuals engaged in the sale of potentially infringing goods.
Legislation Referenced
- Copyright Act (Cap 63, 1999 Ed)
- Copyright (International Protection) Regulations (Cap 63, Rg 2, 1990 Ed)
- Trade Marks Act (Cap 332, 1999 Ed)
- Designs and Patents Act 1988 (UK)
Cases Cited
- [1987] SLR 66
- [2001] SGHC 370
Source Documents
This article analyses [2001] SGHC 370 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.