Case Details
- Citation: [2018] SGHC 99
- Title: PCCW Media Ltd v M1 Ltd and others
- Court: High Court of the Republic of Singapore
- Date of Decision: 24 April 2018
- Judge: Lee Seiu Kin J
- Coram: Lee Seiu Kin J
- Case Number: Originating Summons No 537 of 2017 & Summons No 3534 of 2017
- Proceedings: Application for a “site blocking” order under s 193DDA of the Copyright Act; summons to add parties
- Plaintiff/Applicant: PCCW Media Ltd
- Defendants/Respondents: M1 Ltd and others (including M1 Net Ltd, Singnet Pte Ltd, Singtel Mobile Singapore Pte Ltd, Starhub Internet Pte Ltd, Starhub Online Pte Ltd)
- Legal Area: Copyright — Remedies
- Statutes Referenced: Bankruptcy Act; Companies Act; Copyright Act (Cap 63, 2006 Rev Ed); DDA of the Copyright Act (s 193DDA)
- Key Provision: s 193DDA(1) Copyright Act (application only by the owner or exclusive licensee of copyright in a material)
- Parties’ Roles (high-level): PCCW Media (content service operator and licensee/assignee of enforcement rights) vs network service providers (ISPs/mobile/telecom entities)
- Counsel: For the plaintiff: Lauw Yu An, Nicholas Lynwood and Leow Jiamin (Rajah & Tann Singapore LLP). For the first and sixth defendants: Chan Kwok Chuan Jason and Ong Eu-Jin (Amica Law LLC). For the second defendant: Chua Yeow Hooi and Mervyn Lau (Robinson LLC). For the third, seventh and eighth defendants: Koh Chia Ling and Kevin Elbert (OC Queen Street LLC). For the fourth, ninth and tenth defendants: Lim Yee Ming and Kok Zihao (Kelvin Chia Partnership). Fifth defendant not represented.
- Judgment Length: 10 pages, 5,027 words
- Cases Cited: [2007] SGDC 248; [2018] SGHC 99 (as provided in metadata)
Summary
PCCW Media Ltd v M1 Ltd and others [2018] SGHC 99 concerned an application for a blocking order against network service providers under s 193DDA of Singapore’s Copyright Act. Section 193DDA empowers the High Court to order a network service provider to take reasonable steps to disable access to a “flagrantly infringing online location” (FIOL). The central issue, however, was not whether the alleged online locations were infringing, but whether the applicant had the necessary standing (“locus standi”) to bring the application.
The High Court (Lee Seiu Kin J) held that PCCW Media, which was not an “owner” or “exclusive licensee” of the relevant copyrights in the statutory sense required by s 193DDA(1), lacked locus standi. Although PCCW Media had obtained assignment agreements from the Korean broadcasters purporting to assign to it the right to sue for infringement in Singapore for the limited purpose of obtaining s 193DDA orders, the court concluded that this did not elevate PCCW Media into the category of applicant permitted by the statute. The application was therefore dismissed on standing grounds.
What Were the Facts of This Case?
PCCW Media Ltd (“PCCW”) operates a content service known as VIU in multiple jurisdictions, including Singapore. In Singapore, PCCW streams episodes of drama and variety shows on demand. PCCW was a 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”). The Korean Broadcasters had made the shows available to PCCW’s customers through VIU.
The defendants were network service providers within the meaning of the Copyright Act. The proceedings initially named five entities as “original defendants”: M1 Limited, My Republic Limited, Singapore Telecommunications Limited, Starhub Ltd and ViewQwest Private Limited. PCCW later sought to add additional defendants—subsidiaries of the original defendants—because PCCW’s initial information did not clearly identify which subsidiaries fell within the statutory definition of “network service provider” for the purposes of s 193DDA.
For the purposes of the application, PCCW alleged that five online locations—DramaNice, DramaCool, MyAsianTV, KShowOnline and KissAsian (the “alleged FIOLs”)—were flagrantly infringing. PCCW alleged that these sites enabled users to stream unauthorised copies of episodes of drama and variety shows. It also obtained confirmation from the Korean Broadcasters that they had never issued licences to the operators of the alleged FIOLs. PCCW further adduced evidence suggesting high traffic volumes to the alleged FIOLs from Singapore, with each site receiving between hundreds of thousands and millions of visits in May 2016.
Before commencing the proceedings, PCCW issued take-down notices to the owners and/or operators of each alleged FIOL between 17 April 2017 and 19 April 2017. No responses were received. PCCW then notified the owners/operators of its intention to apply for a blocking order under s 193DDA, and commenced the originating summons on 17 May 2017.
A key factual feature was the existence of four assignment agreements executed between 19 August 2016 and 29 September 2016. Under these agreements, the Korean Broadcasters purported to assign to PCCW the right to sue for copyright infringement in Singapore, but only for the limited purpose of obtaining relief under s 193DDA. The agreements were drafted in a manner that PCCW relied upon to argue that it had effectively become the “owner” for the purposes of the enforcement action, even though PCCW was originally described as a non-exclusive licensee.
What Were the Key Legal Issues?
The sole question before the High Court was whether PCCW had locus standi to apply for an order under s 193DDA of the Copyright Act. Section 193DDA(1) restricts the class of applicants: an order may be made only “on an application made by the owner or exclusive licensee of copyright in a material”. The legal issue therefore required the court to interpret what it means to be an “owner” or “exclusive licensee” for the purposes of s 193DDA(1), and whether PCCW fell within either category.
PCCW’s position was that it had obtained assignment agreements from the copyright owners (the Korean Broadcasters) that assigned to it the right to sue for infringement in Singapore for the limited purpose of obtaining s 193DDA orders. PCCW argued that this meant it had “essentially become the owner of the copyright for the purposes of this enforcement action”. The defendants, by contrast, contended that PCCW remained a non-exclusive licensee and that the statutory standing requirement could not be satisfied merely by an assignment of a right to sue.
Accordingly, the legal issues were twofold: first, whether the assignment of the right to sue for infringement could be treated as conferring the status of “owner” or “exclusive licensee” for s 193DDA; and second, whether the court should treat the statutory standing requirement as a strict gatekeeping provision that cannot be circumvented by contractual drafting.
How Did the Court Analyse the Issues?
Lee Seiu Kin J began by framing the statutory architecture. Section 193DDA is part of a remedial scheme that allows the High Court to order network service providers to take reasonable steps to disable access to FIOLs. The court emphasised that the power is not open-ended; it is conditioned by the express limitation in s 193DDA(1) that the application must be made by the “owner or exclusive licensee of copyright in a material”. This wording, the court indicated, is central to the standing inquiry.
In analysing PCCW’s locus standi, the court treated the assignment agreements as relevant but not determinative. PCCW relied on the proposition that an assignment of a bare right of action can be valid, and that the assignee may have a genuine commercial interest in the litigation. PCCW also relied on authorities discussing the validity of assignments of rights to sue and the “Trendtex exception” to maintenance and champerty concerns. The court, however, distinguished between (i) the validity of an assignment of a right to sue and (ii) the separate statutory question of whether the assignee becomes an “owner” or “exclusive licensee” for the purposes of s 193DDA.
Consistent with this distinction, the judge noted that PCCW’s counsel acknowledged there was no express provision in the Copyright Act stating that an assignee of a right to sue for copyright infringement is automatically a copyright owner. The court therefore approached the matter as one of statutory interpretation: the standing requirement in s 193DDA(1) must be satisfied by the applicant’s legal status under the Act, not merely by the applicant’s contractual ability to sue.
The court also considered the internal provisions of the Copyright Act on actions for infringement and the nature of assignments and licences. While s 119(1) provides that the “owner of a copyright may bring an action for an infringement of the copyright”, the court’s focus was on how this interacts with the specific remedial provision in s 193DDA. The judge’s reasoning suggested that the legislature deliberately used the terms “owner” and “exclusive licensee” in s 193DDA(1) to define who may seek the extraordinary remedy of disabling access to online locations. That remedial power affects third parties (network service providers and, indirectly, users), and therefore the gatekeeping function of standing is particularly important.
On PCCW’s argument that it should be treated as “effectively” the owner because the broadcasters assigned to it the right to sue for the limited purpose of obtaining s 193DDA orders, the court did not accept that this contractual assignment could reclassify PCCW into the statutory category required by s 193DDA(1). The court’s approach indicates that the statutory terms cannot be satisfied by functional equivalence alone; rather, the applicant must fall within the defined categories contemplated by the Act.
In practical terms, PCCW was a non-exclusive licensee of the relevant copyrights. The assignment agreements were limited to the right to sue for infringement in Singapore, and even that right was constrained to the purpose of obtaining s 193DDA orders. The court treated this as insufficient to make PCCW an “owner” or “exclusive licensee” of copyright “in a material” for the purposes of s 193DDA(1). The court’s analysis thus turned on the statutory limitation rather than on the broader common law principles governing assignment of rights of action.
What Was the Outcome?
The High Court held that PCCW Media Ltd had no locus standi to seek the remedy under s 193DDA of the Copyright Act. As a result, the application was dismissed on standing grounds.
The practical effect of the decision is that, even where an applicant can show that copyright owners have assigned to it the right to sue for infringement for the purpose of obtaining site blocking orders, the applicant must still satisfy the statutory standing requirement of being the “owner” or “exclusive licensee” of copyright in the relevant material. Contractual assignments of enforcement rights, without more, do not automatically confer the statutory status needed to obtain the FIOL blocking remedy.
Why Does This Case Matter?
This decision is significant for practitioners because it clarifies that standing under s 193DDA(1) is a strict statutory requirement. In the context of online copyright enforcement, applicants often structure agreements to facilitate litigation and remedial orders. PCCW Media demonstrates that courts will not treat the assignment of a right to sue as a substitute for the statutory categories of “owner” or “exclusive licensee” when the remedy sought is the disabling of access to online locations.
For copyright owners and content distributors, the case underscores the importance of carefully structuring licensing and enforcement arrangements. If the intended applicant is not the copyright owner, parties should consider whether the applicant can be characterised as an “exclusive licensee” of copyright in the relevant material, rather than relying solely on assignments of enforcement rights limited to s 193DDA. Otherwise, the application may fail at the threshold even if the alleged FIOLs are strongly evidenced as infringing.
For law students and litigators, the case also illustrates a broader interpretive principle: where legislation confers a powerful remedial mechanism conditioned on a particular class of applicants, the court will treat that condition as substantive and not merely procedural. The court’s reasoning separates (a) the general law on assignment of rights to sue from (b) the specific statutory standing requirement for the copyright remedy.
Legislation Referenced
- Copyright Act (Cap 63, 2006 Rev Ed), including:
- s 193DDA (network service provider orders to disable access to flagrantly infringing online locations)
- s 193A(1) (definition of “network service provider” for relevant sections)
- s 119(1) (actions for infringement by the owner of copyright)
- s 194(2)(a) (limitations on assignments of copyright)
- Bankruptcy Act
- Companies Act
- DDA of the Copyright Act (as referenced in the judgment metadata)
Cases Cited
- [2007] SGDC 248
- Trendtex Trading Corporation and another v Credit Suisse [1981] 3 WLR 766
- Ma v Ma [2012] OJ No 2689
- Microsoft Corporation and others v PC Club Australia Pty Ltd and others (2006) 67 IPR 262
Source Documents
This article analyses [2018] SGHC 99 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.