Case Details
- Citation: [2018] SGHC 99
- Court: High Court of the Republic of Singapore (General Division)
- Decision Date: 24 April 2018
- Coram: Lee Seiu Kin J
- Case Number: Originating Summons No 537 of 2017; Summons No 3534 of 2017
- Hearing Date(s): 3 August 2017
- Claimant / Plaintiff: PCCW Media Limited
- Respondents / Defendants: 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 Online Pte Ltd
- Counsel for Plaintiff: Lauw Yu An, Nicholas Lynwood, Leow Jiamin (Rajah & Tann Singapore LLP)
- Practice Areas: Copyright; Remedies; Site-blocking orders; Locus standi
Summary
The decision in PCCW Media Limited v M1 Limited & 4 Ors [2018] SGHC 99 serves as a definitive clarification on the strict standing requirements governing applications for site-blocking orders under the Copyright Act (Cap 63, 2006 Rev Ed). The dispute centered on whether a non-exclusive licensee of copyright material could acquire the necessary locus standi to seek a statutory injunction against network service providers (NSPs) by way of a contractual assignment of the "right to sue." The plaintiff, PCCW Media Limited, operated the "VIU" streaming service and sought to block access to several "flagrantly infringing online locations" (FIOLs) that were distributing Korean drama and variety shows without authorization.
The High Court was required to interpret s 193DDA of the Copyright Act, which empowers the court to order NSPs to disable access to infringing websites. Crucially, s 193DDA(1) stipulates that such applications must be made by the "owner or exclusive licensee of copyright in a material." PCCW, being a non-exclusive licensee, attempted to circumvent this restriction by entering into assignment agreements with the actual copyright owners—four major Korean broadcasters. These agreements purported to assign to PCCW the bare right to sue for infringement in Singapore, specifically for the purpose of obtaining relief under s 193DDA.
Lee Seiu Kin J dismissed the application, holding that PCCW lacked the requisite locus standi. The court determined that the statutory language of s 193DDA was exhaustive and restrictive. The assignment of a bare right to sue did not elevate a non-exclusive licensee to the status of an "owner" or "exclusive licensee" within the meaning of the Act. The judgment emphasizes that where a statute confers a special right of action upon a specific class of persons, that right must be exercised strictly in accordance with the legislative text. Contractual arrangements cannot be used to expand the categories of persons entitled to seek extraordinary statutory remedies like site-blocking orders.
This case is of significant importance to the digital media and telecommunications sectors. It reinforces the "gatekeeper" function of the High Court in managing network-level injunctions and confirms that only those with a proprietary or exclusive interest in the copyright can initiate such proceedings. For practitioners, the decision underscores the necessity of ensuring that the correct party—either the owner or a true exclusive licensee—is named as the applicant in enforcement actions under the Copyright Act.
Timeline of Events
- 19 August 2016 – 29 September 2016: PCCW Media Limited entered into four separate assignment agreements with the Korean Broadcasters (Seoul Broadcasting System, CJ E&M Corporation, Munhwa Broadcasting Corporation, and Korean Broadcasting System). These agreements purported to assign the right to sue for copyright infringement in Singapore to PCCW.
- May 2016: Evidence collected regarding substantial traffic from Singapore users to the alleged flagrantly infringing online locations (FIOLs), including DramaNice, DramaCool, MyAsianTV, KShowOnline, and KissAsian.
- 17 April 2017 – 19 April 2017: PCCW issued take-down notices to the owners and/or operators of the five alleged FIOLs. No responses were received.
- 17 May 2017: PCCW commenced legal proceedings via Originating Summons No 537 of 2017 against the initial five defendants (M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd, and ViewQwest Private Limited).
- 31 July 2017: PCCW filed Summons No 3534 of 2017 seeking leave to add five additional defendants (M1 Net Ltd, Singnet Pte Ltd, Singtel Mobile Singapore Pte Ltd, Starhub Internet Pte Ltd, and Starhub Online Pte Ltd) after identifying them as the relevant network service providers.
- 3 August 2017: The substantive hearing of the Originating Summons took place before Lee Seiu Kin J.
- 24 April 2018: The High Court delivered its judgment, dismissing the plaintiff's application for lack of locus standi.
What Were the Facts of This Case?
The plaintiff, PCCW Media Limited ("PCCW"), is a Hong Kong-based company that operates "VIU," an over-the-top (OTT) video-on-demand service. VIU provides streaming access to various television programs, including popular Korean drama and variety shows, to users in Singapore and other jurisdictions. PCCW held non-exclusive licenses from four major South Korean broadcasting companies: Seoul Broadcasting System (SBS), CJ E&M Corporation (CJ E&M), Munhwa Broadcasting Corporation (MBC), and Korean Broadcasting System (KBS) (collectively, the "Korean Broadcasters"). These licenses allowed PCCW to distribute and make available the broadcasters' content in Singapore.
PCCW identified five websites—DramaNice, DramaCool, MyAsianTV, KShowOnline, and KissAsian—which it alleged were "flagrantly infringing online locations" (FIOLs). These sites provided unauthorized streaming of the same Korean drama and variety shows for which PCCW held distribution rights. Evidence presented to the court indicated that these FIOLs were highly popular in Singapore; for instance, in May 2016, the sites received traffic ranging from hundreds of thousands to millions of visits from Singapore-based IP addresses. PCCW confirmed with the Korean Broadcasters that no licenses had been granted to the operators of these FIOLs.
The defendants were various Singaporean network service providers (NSPs). The initial defendants were M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd, and ViewQwest Private Limited. During the proceedings, PCCW discovered that the actual entities providing the network services were often subsidiaries of the main telecommunications groups. Consequently, PCCW applied to add M1 Net Ltd, Singnet Pte Ltd, Singtel Mobile Singapore Pte Ltd, Starhub Internet Pte Ltd, and Starhub Online Pte Ltd as defendants. The court granted this application, and the NSPs were represented collectively by counsel.
To establish standing to sue under s 193DDA of the Copyright Act, which requires the applicant to be the "owner or exclusive licensee," PCCW entered into specific assignment agreements with the Korean Broadcasters between 19 August 2016 and 29 September 2016. These agreements did not transfer the underlying copyright or grant PCCW an exclusive license. Instead, they purported to assign to PCCW a "bare right to sue" for copyright infringement in Singapore. This right was expressly limited to the purpose of obtaining the relief provided in s 193DDA—namely, a site-blocking order. PCCW argued that this assignment, coupled with its genuine commercial interest in protecting its VIU service, was sufficient to grant it locus standi.
PCCW followed the procedural requirements of the Act by issuing take-down notices to the FIOL operators between 17 April 2017 and 19 April 2017. When these notices went unheeded, PCCW notified the operators of its intention to seek a court order and subsequently filed Originating Summons No 537 of 2017 on 17 May 2017. The NSPs did not contest the infringing nature of the websites but raised a fundamental threshold objection: that PCCW, as a non-exclusive licensee with only an assigned right to sue, did not fall within the statutory categories of "owner" or "exclusive licensee" entitled to seek relief under s 193DDA.
What Were the Key Legal Issues?
The primary legal issue was whether PCCW had the requisite locus standi to apply for a site-blocking order under s 193DDA of the Copyright Act. This broad question was subdivided into two specific inquiries by the court:
- Whether the assignment agreements were of any effect: This involved determining whether a "bare right to sue" for a specific statutory remedy could be validly assigned under Singapore law, particularly when the assignee is a non-exclusive licensee. The court had to consider the "Trendtex exception," which allows the assignment of a right of action if the assignee has a "genuine commercial interest" in the litigation.
- Whether being assigned the right to sue made the plaintiff an "owner of copyright": This required a strict interpretation of the phrase "owner or exclusive licensee" in s 193DDA(1). The issue was whether the statutory definition of "owner" could be expanded to include an assignee of a limited right to sue, or whether the categories of applicants were closed and restricted to those holding proprietary or exclusive rights in the copyright material itself.
These issues were critical because they touched upon the intersection of private contractual rights and public statutory remedies. The court had to decide if the legislative intent behind the site-blocking regime allowed for the decoupling of the right to sue from the underlying ownership or exclusive control of the intellectual property.
How Did the Court Analyse the Issues?
The court’s analysis began with the text of s 193DDA(1) of the Copyright Act, which states that the High Court may make a site-blocking order "on an application made by the owner or exclusive licensee of copyright in a material." Lee Seiu Kin J noted that the plaintiff admitted it was not an "exclusive licensee" as defined in s 7(1) of the Act, which requires a license to the exclusion of all other persons, including the grantor. Therefore, the plaintiff's standing depended entirely on whether it could be considered an "owner" by virtue of the assignment agreements.
The Validity of the Assignment of a Bare Right to Sue
The plaintiff relied on the principle established in Trendtex Trading Corporation and another v Credit Suisse [1981] 3 WLR 766, arguing that an assignment of a bare right of action is valid if the assignee has a genuine commercial interest in the success of the litigation. PCCW contended that as a non-exclusive licensee whose business was directly harmed by the FIOLs, it possessed such an interest. The court acknowledged the Trendtex exception but distinguished its application in the context of specific statutory remedies.
The court referred to Manharlal Trikamdas Mody and another v Sumikin Bussan International (HK) Ltd [2014] 3 SLR 1161, where George Wei JC (as he then was) observed that certain statutory rights, such as those of the Official Assignee under the Bankruptcy Act, are personal and incapable of assignment. Lee Seiu Kin J reasoned that s 193DDA created a "special statutory right" rather than a general common law right. He cited Neo Corp Pte Ltd (in liquidation) v Neocorp Innovations Pte Ltd [2006] 2 SLR(R) 717, noting that where a right is specially conferred by statute, it must be exercised in accordance with the strict language of the provision.
Statutory Interpretation of "Owner of Copyright"
The court then turned to whether the assignment of the right to sue could transform the plaintiff into an "owner" for the purposes of s 193DDA. The plaintiff argued that "owner" should be interpreted broadly to include an assignee of the right to sue. However, the court found this argument inconsistent with the overall structure of the Copyright Act. Lee Seiu Kin J observed at [25]:
"The right to apply for an order under s 193DDA is a statutory remedy. It is not a cause of action in itself, but a remedy that the Act provides to certain persons... The Act specifies that these persons are the 'owner or exclusive licensee'."
The court noted that s 123 of the Act already provides that an exclusive licensee has the same rights of action as the owner. If the legislature had intended for non-exclusive licensees or assignees of limited rights to have standing, it would have expressly provided for it. The court also considered Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another [2007] 2 SLR(R) 869, which held that a non-exclusive licensee has no locus standi to sue for copyright infringement under s 119 of the Act. Lee Seiu Kin J found that the same logic applied to s 193DDA.
The Nature of the Assignment
The court scrutinized the specific terms of the assignment agreements. The Korean Broadcasters had only assigned the "right to sue... for the purpose of obtaining the relief in s 193DDA." They did not assign the copyright itself, nor did they assign the right to sue for damages or other remedies under s 119. The court held that such a "fragmented" assignment of a specific statutory remedy was not contemplated by the Act. At [28], the judge stated:
"The right to seek a s 193DDA order is an ancillary right that follows the ownership or exclusive license of the copyright. It cannot be severed and assigned as a standalone right to a person who does not otherwise hold the status required by the statute."
Policy Considerations
The court also touched upon the policy rationale for restrictive standing. Site-blocking orders are significant measures that affect the rights of third parties (NSPs) and the general public's access to the internet. By limiting standing to owners and exclusive licensees, Parliament ensured that only those with a substantial and recognized proprietary stake in the content could trigger such invasive remedies. Allowing non-exclusive licensees to sue via limited assignments would bypass the legislative safeguard intended to prevent a multiplicity of suits and ensure that the primary rights-holders retain control over enforcement actions.
The court concluded that the assignment agreements were ineffective in conferring locus standi because they attempted to assign a statutory power that was inextricably linked to the status of being an owner or exclusive licensee. Since PCCW did not hold that status, the application was fundamentally flawed.
What Was the Outcome?
The High Court dismissed the plaintiff's application in its entirety. The court's primary finding was that PCCW Media Limited lacked the locus standi required under s 193DDA(1) of the Copyright Act. The operative conclusion of the court was stated succinctly at [1]:
"I held that the plaintiff had no locus standi to seek the remedy in s 193DDA of the Act."
As a result of this finding, the court did not proceed to evaluate the merits of whether the targeted websites (DramaNice, DramaCool, MyAsianTV, KShowOnline, and KissAsian) were indeed "flagrantly infringing online locations." The dismissal was based purely on the threshold legal issue of standing. The court held that the assignment agreements entered into between PCCW and the Korean Broadcasters were of no effect in qualifying the plaintiff as an "owner" for the purposes of the statutory application.
Regarding the procedural aspects, the court had earlier granted the plaintiff's application in Summons No 3534 of 2017 to add the additional NSP subsidiaries as defendants. However, this became moot upon the dismissal of the main Originating Summons. The court did not award the site-blocking orders sought against M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd, ViewQwest Private Limited, or their respective subsidiaries.
The judgment effectively maintained the status quo for the NSPs, who were not required to take any steps to disable access to the alleged FIOLs under these specific proceedings. While the V51 metadata does not detail the specific quantum of costs, the dismissal of the Originating Summons typically carries an order for the unsuccessful plaintiff to pay the defendants' costs, subject to any specific arguments raised by counsel.
Why Does This Case Matter?
PCCW Media Limited v M1 Limited is a landmark decision in Singapore's intellectual property landscape, particularly concerning digital enforcement and the "site-blocking" regime. Its significance lies in several key areas:
1. Strict Interpretation of Statutory Standing
The case reinforces the principle that statutory remedies are governed by the "strict language" of the legislation. By refusing to allow a non-exclusive licensee to acquire standing through a limited assignment of the right to sue, the court signaled that it will not permit creative contractual drafting to expand the scope of persons entitled to seek extraordinary remedies. This provides certainty to NSPs and other stakeholders that the categories of potential applicants under s 193DDA are closed and predictable.
2. Limits of the Trendtex Exception
The judgment clarifies the limits of the Trendtex exception in Singapore. While a "genuine commercial interest" may validate the assignment of a bare right of action in general civil litigation, it cannot override specific statutory restrictions on who may bring an application. This distinction between common law causes of action and "special statutory rights" is a crucial takeaway for practitioners dealing with regulatory or statutory litigation.
3. Protection of the Site-Blocking Regime
Site-blocking is a powerful tool that interferes with the free flow of information on the internet. The court's decision ensures that this tool remains in the hands of those with a direct proprietary interest in the copyright. This prevents a situation where multiple non-exclusive licensees could potentially flood the courts with overlapping or conflicting site-blocking applications, which would place an undue burden on both the judiciary and NSPs.
4. Impact on Content Aggregators and Distributors
For companies like PCCW that operate as aggregators or distributors of third-party content, the case highlights a significant hurdle in enforcement. Non-exclusive licensees cannot take the lead in site-blocking actions in their own name, even if they are the ones most commercially affected by piracy in a specific territory. This necessitates a more collaborative approach to enforcement, where the actual copyright owners (e.g., the broadcasters or studios) must be the named applicants, or where the distribution agreements must be structured as true "exclusive licenses" as defined by the Act.
5. Doctrinal Consistency with Alliance and Odex
The decision brings the site-blocking regime into alignment with the broader principles of copyright enforcement established in Alliance Entertainment and the Odex cases. It confirms that the distinction between exclusive and non-exclusive licensees is fundamental across all types of copyright remedies in Singapore, whether they are traditional infringement actions or modern technological remedies against NSPs.
Practice Pointers
- Verify Locus Standi Early: Before commencing an application under s 193DDA, practitioners must rigorously verify that the client is either the legal owner of the copyright or an "exclusive licensee" within the meaning of s 7(1) of the Copyright Act.
- Avoid "Bare Right to Sue" Assignments: Contractual assignments that only transfer the right to sue for specific statutory remedies are likely to be held ineffective for establishing standing. If a non-exclusive licensee needs to lead the litigation, the underlying copyright or an exclusive license should be assigned in full.
- Structure Licenses Carefully: If a distributor intends to handle its own anti-piracy enforcement via site-blocking, the licensing agreement should be drafted as an exclusive license that excludes even the grantor. A non-exclusive license, even with "sole" rights, may not suffice if the grantor retains any rights to use the material.
- Join the Copyright Owner: In cases where the client is a non-exclusive licensee, the most robust strategy is to have the copyright owner file the application as the primary plaintiff, or at least join them as a co-plaintiff to satisfy the standing requirement.
- Identify the Correct NSP Entity: As seen in this case, the parent telecommunications company may not be the entity providing the actual "transmission or routing of data." Practitioners should conduct thorough due diligence to identify the specific subsidiary that meets the definition of a "network service provider" under s 193A(1).
- Evidence of Infringement: While standing is a threshold issue, practitioners should still prepare comprehensive evidence of the "flagrant" nature of the infringement, including traffic data and the absence of licensing, to meet the substantive requirements of s 193DDA once standing is established.
Subsequent Treatment
The ratio of PCCW Media Limited v M1 Limited has settled the law regarding the standing of non-exclusive licensees under the site-blocking regime. It is frequently cited as the leading authority for the proposition that the right to seek a s 193DDA order is a special statutory right that cannot be assigned independently of the underlying copyright or an exclusive license. Later cases and practitioners have followed this strict interpretation, ensuring that site-blocking applications are initiated only by parties with a proprietary or exclusive stake in the material.
Legislation Referenced
- Copyright Act (Cap 63, 2006 Rev Ed): ss 7(1), 26, 83, 119, 119(1), 123, 193A(1), 193B, 193DB(3), 193DDA, 193DDA(1), 193DDB, 194(2), 194(2)(a)
- Bankruptcy Act (Cap 20, 2009 Rev Ed): ss 76, 98, 99, 103, 105, 112
- Companies Act: s 227T
Cases Cited
- Considered:
- Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another [2007] 2 SLR(R) 869
- Trendtex Trading Corporation and another v Credit Suisse [1981] 3 WLR 766
- Referred to:
- Odex Pte Ltd v Pacific Internet Ltd [2007] SGDC 248
- Odex Pte Ltd v Pacific Internet Ltd [2008] 3 SLR(R) 18
- Manharlal Trikamdas Mody and another v Sumikin Bussan International (HK) Ltd [2014] 3 SLR 1161
- Neo Corp Pte Ltd (in liquidation) v Neocorp Innovations Pte Ltd [2006] 2 SLR(R) 717
- Microsoft Corporation and others v PC Club Australia Pty Ltd and others (2006) 67 IPR 262