Case Details
- Citation: [2023] SGHC 255
- Court: High Court of the Republic of Singapore
- Date: 2023-09-11
- Judges: Dedar Singh Gill J
- Plaintiff/Applicant: Tiger Pictures Entertainment Ltd
- Defendant/Respondent: Encore Films Pte Ltd
- Legal Areas: Intellectual Property — Copyright
- Statutes Referenced: Copyright Act, Copyright Act 2006, Copyright Act 2021, Designs and Patents Act 1988
- Cases Cited: [2023] SGHC 138, [2023] SGHC 255, Dendron GmbH v Regents of the University of California [2004] FSR 43, Iskandar bin Rahmat and others v Attorney-General and another [2022] 2 SLR 1018
- Judgment Length: 21 pages, 5,989 words
Summary
This case concerns a copyright infringement claim brought by Tiger Pictures Entertainment Ltd, a Chinese film distribution company, against Encore Films Pte Ltd, a Singaporean film distributor. The dispute centers around the rights to a Chinese film titled "Moon Man". The key issue was whether Tiger Pictures, as the exclusive licensee of the copyright in "Moon Man", had standing to sue Encore Films for alleged infringement. The High Court of Singapore dismissed Encore Films' application to strike out Tiger Pictures' claim, finding that Tiger Pictures was the statutory "exclusive licensee" of the copyright and therefore had the necessary standing to bring the infringement action.
What Were the Facts of This Case?
Tiger Pictures Entertainment Ltd is a Chinese company engaged in the business of selling and distributing films around the world. Encore Films Pte Ltd is a Singaporean company that distributes films in Singapore and other Southeast Asian countries. The dispute in this case revolves around the rights to a top-grossing Chinese film titled "Moon Man".
The owner of the copyright in "Moon Man" is a Chinese company called Kaixin Mahua ("Kaixin"). On 19 August 2022, Kaixin entered into a license agreement with Tiger Pictures, granting Tiger Pictures the exclusive rights to distribute "Moon Man" worldwide, except in China and South Korea, from August 2022 to August 2033.
Pursuant to the license agreement, Tiger Pictures then granted an exclusive sub-license to its related entity in Hong Kong, also called Tiger Pictures Entertainment Ltd ("HK Tiger"), on 20 August 2022. The terms of the sub-license were identical to the original license agreement between Kaixin and Tiger Pictures.
Tiger Pictures subsequently commenced copyright infringement proceedings against Encore Films, alleging that Encore Films had infringed its copyright in "Moon Man" by authorizing third parties to publicly screen the film, communicate it to the public, and make copies of it, between 15 September 2022 and 26 October 2022.
What Were the Key Legal Issues?
The key legal issue in this case was whether Tiger Pictures, as the exclusive licensee of the copyright in "Moon Man", had the necessary standing to bring a copyright infringement claim against Encore Films.
Encore Films argued that Tiger Pictures did not have standing because it had wholly licensed its exclusive rights to "Moon Man" to its related entity, HK Tiger, pursuant to the 20 August sub-license agreement. Encore Films contended that under the English case of Dendron GmbH v Regents of the University of California, Tiger Pictures' position as the exclusive licensee was supplanted by HK Tiger, and therefore Tiger Pictures ceased to be the exclusive licensee at the time of the alleged infringement.
Tiger Pictures, on the other hand, argued that it was a statutory "exclusive licensee" of the copyright in "Moon Man" within the meaning of the Copyright Act 2021, and that the sub-license to HK Tiger did not affect its standing to sue for infringement.
How Did the Court Analyse the Issues?
The court began by outlining the legal principles governing applications to strike out a claim under Order 9 Rule 16 of the Rules of Court 2021. The test is whether the claim has no reasonable prospect of success, is an abuse of process, or it is in the interests of justice to strike it out.
Turning to the specific issue of standing, the court noted that under Section 153(1) of the Copyright Act 2021, only the owner of a copyright or an "exclusive licensee" has standing to bring an infringement action. The court examined the nature of the license granted to Tiger Pictures by Kaixin, and found that it was an "exclusive license" within the meaning of the Act.
The court rejected Encore Films' reliance on the Dendron case, finding that it was inapplicable to the present facts. In Dendron, the exclusive licensee had granted a sub-license that was also exclusive, whereas in this case, the sub-license to HK Tiger was not a statutory "exclusive license".
The court held that the fact that Tiger Pictures had granted a sub-license to HK Tiger did not affect Tiger Pictures' status as the exclusive licensee for the purposes of the Copyright Act. As the exclusive licensee, Tiger Pictures had the necessary standing to bring the infringement claim against Encore Films.
What Was the Outcome?
The High Court dismissed Encore Films' application to strike out Tiger Pictures' copyright infringement claim. The court found that Tiger Pictures, as the exclusive licensee of the copyright in "Moon Man", had the necessary standing under the Copyright Act to bring the infringement action against Encore Films.
The case will now proceed to trial on the merits of the copyright infringement claim.
Why Does This Case Matter?
This case provides important guidance on the issue of standing to bring copyright infringement claims in Singapore. It clarifies that the grant of an exclusive sub-license by a statutory "exclusive licensee" does not necessarily deprive the original exclusive licensee of standing to sue for infringement.
The decision reinforces the principle that the Copyright Act 2021 confers standing on exclusive licensees, rather than just the copyright owner, to enforce the copyright. This is a significant protection for exclusive licensees, who can now confidently assert their rights against third-party infringers without fear of being struck out for lack of standing.
The case also demonstrates the court's willingness to closely examine the specific terms of license agreements to determine the parties' rights and obligations, rather than simply relying on labels such as "exclusive license". This nuanced approach helps ensure that the Copyright Act is applied in a manner that aligns with commercial realities.
Legislation Referenced
Cases Cited
- [2023] SGHC 138
- [2023] SGHC 255
- Dendron GmbH v Regents of the University of California [2004] FSR 43
- Iskandar bin Rahmat and others v Attorney-General and another [2022] 2 SLR 1018
Source Documents
This article analyses [2023] SGHC 255 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.