Case Details
- Citation: [2023] SGHC 255
- Court: General Division of the High Court of the Republic of Singapore
- Decision Date: 11 September 2023
- Coram: Dedar Singh Gill J
- Case Number: Originating Claim No 466 of 2022; Summons No 2172 of 2023
- Hearing Date(s): 14 August, 6 September 2023
- Claimants / Plaintiffs: Tiger Pictures Entertainment Ltd
- Respondent / Defendant: Encore Films Pte Ltd
- Counsel for Claimants: Toh Jia Yi (Allen & Gledhill LLP)
- Counsel for Respondent: Tan Tee Jim SC and Lee Junting, Basil (Lee & Lee)
- Practice Areas: Intellectual Property; Copyright; Infringement; Civil Procedure
Summary
The decision in Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd [2023] SGHC 255 addresses a fundamental question of standing (locus standi) in the context of multi-tiered intellectual property licensing arrangements. The dispute arose from the alleged copyright infringement of the Chinese film "Moon Man" by the defendant, Encore Films Pte Ltd. The claimant, Tiger Pictures Entertainment Ltd, asserted its right to sue as the exclusive licensee of the film's distribution rights. However, the defendant challenged this standing through a striking-out application, arguing that because the claimant had subsequently granted an "exclusive" sub-licence to a related entity in Hong Kong, it had divested itself of the statutory status of an "exclusive licensee" under the Copyright Act 2021.
The core of the legal controversy lay in the interpretation of Section 153(1) and Section 103(1) of the Copyright Act 2021. The defendant relied heavily on English patent law jurisprudence, specifically the case of Dendron GmbH v Regents of the University of California, to argue that an exclusive licensee who sub-licenses the entirety of its rights effectively "passes the baton" of standing to the sub-licensee. Under this theory, the claimant would have ceased to be the person authorised "to the exclusion of all other persons" to exercise the copyright, thereby losing the right to bring an infringement action in its own name.
Dedar Singh Gill J dismissed the defendant's application, reinforcing the strict statutory definition of an "exclusive licensee" in Singapore. The Court held that for a licence to qualify as a "statutory" exclusive licence, it must be granted directly by the copyright owner or a person acting as the owner's agent. Crucially, the Court determined that a sub-licence granted by an exclusive licensee—even if termed "exclusive" in a contractual sense—does not constitute an exclusive licence within the meaning of the Act. Consequently, such a sub-licence does not divest the original exclusive licensee of its statutory standing to sue third-party infringers.
This judgment is of significant importance to the media and entertainment industry, where complex distribution chains are the norm. It clarifies that the "exclusive licensee" for the purposes of litigation is the party who holds the direct grant from the owner, regardless of whether they have further distributed those rights down a chain of sub-licences. By distinguishing Singapore's copyright regime from the UK's patent regime, the Court provided much-needed certainty on the "chain of title" required to initiate copyright proceedings in Singapore, preventing a potential "standing vacuum" where neither the primary licensee nor the sub-licensee might have been able to sue.
Timeline of Events
- 19 August 2022: Kaixin Mahua ("Kaixin"), the owner of the copyright in the film "Moon Man", enters into a licence agreement (the "19 August Agreement") with the claimant, Tiger Pictures Entertainment Ltd.
- 20 August 2022: The claimant enters into a sub-licence agreement (the "20 August Agreement") with its related entity, HK Tiger, granting HK Tiger exclusive rights to the film in various territories.
- 15 September 2022 – 26 October 2022: The period during which the claimant alleges the defendant, Encore Films Pte Ltd, infringed the copyright in "Moon Man" by authorised screenings and communications to the public.
- 16 December 2022: The claimant commences legal action against the defendant via Originating Claim No 466 of 2022.
- 6 January 2023: The defendant files its Defence and Counterclaim.
- 31 March 2023: The claimant files its Reply and Defence to Counterclaim.
- 21 April 2023: The claimant files an application for a bifurcated trial (HC/SUM 1121/2023), which was later addressed in an earlier judgment ([2023] SGHC 138).
- 21 July 2023: The defendant files Summons No 2172 of 2023 to strike out the claimant’s claim on the grounds of lack of locus standi.
- 14 August 2023: The first hearing of the striking-out application before Dedar Singh Gill J.
- 6 September 2023: The second hearing of the striking-out application.
- 11 September 2023: Dedar Singh Gill J delivers the judgment dismissing the defendant's application.
What Were the Facts of This Case?
The claimant, Tiger Pictures Entertainment Ltd, is a company incorporated in the People's Republic of China, specialising in the global distribution of films. The defendant, Encore Films Pte Ltd, is a Singapore-based film distributor. The subject matter of the dispute is the film "Moon Man", a highly successful Chinese motion picture. The copyright in "Moon Man" is owned by Kaixin Mahua ("Kaixin").
The contractual matrix began with the 19 August Agreement. Under this instrument, Kaixin (as Licensor) granted the claimant (as Licensee) the exclusive right of distribution of "Moon Man" during the licence term in specified territories, which included Singapore. The agreement contained several critical clauses that defined the scope of the claimant's authority. Clause 2.4.1 granted the claimant the right to "distribute, promote and publicize" the film. Clause 2.4.2 provided the right to "sub-license the Licensed Rights to any third party in the Licensed Territories". Clause 2.5 explicitly stated that the claimant was the "sole and exclusive" licensee of the rights within the territories, and Clause 2.6 empowered the claimant to take legal action against infringers in its own name.
One day later, on 20 August 2022, the claimant entered into a sub-licence with its Hong Kong affiliate, HK Tiger. This 20 August Agreement mirrored the terms of the 19 August Agreement. The claimant granted HK Tiger the same exclusive distribution rights it had received from Kaixin. The defendant’s subsequent challenge to the claimant’s standing was predicated entirely on the existence and effect of this sub-licence.
The claimant's substantive grievance, as set out in its Statement of Claim dated 16 December 2022, was that the defendant had infringed the copyright in "Moon Man" between 15 September 2022 and 26 October 2022. Specifically, the claimant alleged that the defendant had authorised third parties to publicly screen the film, communicate it to the public, and make copies of it without the claimant's consent. The claimant sought various reliefs, including an injunction and damages.
The defendant’s procedural response was to file Summons No 2172 of 2023, seeking to strike out the claimant’s claim under Order 9 Rule 16 of the Rules of Court 2021. The defendant’s primary contention was that the claimant lacked locus standi under Section 153(1) of the Copyright Act 2021. Section 153(1) provides that an action for infringement may be brought by the copyright owner or the "exclusive licensee". The defendant argued that by granting an exclusive sub-licence to HK Tiger, the claimant was no longer the "exclusive licensee" because it was no longer the only person authorised to do the acts comprised in the copyright. According to the defendant, HK Tiger was now the exclusive licensee, or at the very least, the claimant had lost that status.
In support of this, the defendant relied on the "substitution" theory derived from Dendron GmbH v Regents of the University of California [2004] FSR 43. In that case, the English High Court, interpreting the UK Patents Act 1977, suggested that an exclusive licensee who sub-licenses its rights can essentially pass its statutory standing to the sub-licensee. The defendant argued that the claimant's 20 August Agreement with HK Tiger had this exact effect. The claimant resisted this, asserting that the definition of an "exclusive licence" in Singapore is strictly limited to grants made by the copyright owner, and that a sub-licence, no matter how it is described, cannot be a statutory exclusive licence that confers standing or divests the primary licensee of its rights.
What Were the Key Legal Issues?
The application to strike out the claimant's case turned on a single, pivotal issue of statutory interpretation regarding the Copyright Act 2021:
- Whether the claimant fulfilled the locus standi requirement set out in s 153(1) of the Copyright Act 2021.
This overarching issue required the Court to resolve several sub-questions of law and doctrine:
- The Definition of "Exclusive Licence": Does the definition in Section 103(1) of the Copyright Act 2021 allow for a sub-licence to be considered an "exclusive licence" for the purposes of the Act?
- The "Owner" Requirement: Does Section 103(1)(a), which requires the licence to be "granted by the owner or prospective owner of the copyright", exclude licences granted by a licensee who has the power to sub-license?
- The Applicability of Foreign Jurisprudence: To what extent should the Singapore Court follow the English position in Dendron regarding the transfer of standing through sub-licensing, given the differences between the UK Patents Act and the Singapore Copyright Act?
- The Doctrine of Agency: Can an exclusive licensee be deemed to be acting as the "agent" of the copyright owner when granting a sub-licence, such that the sub-licence is effectively granted "on behalf of" the owner?
How Did the Court Analyse the Issues?
The Court’s analysis began with the threshold for striking out a claim under Order 9 Rule 16 of the Rules of Court 2021. Dedar Singh Gill J noted that the defendant had to demonstrate that the claimant's claim had "no reasonable prospect of success" or was otherwise an abuse of process. Citing Iskandar bin Rahmat and others v Attorney-General and another [2022] 2 SLR 1018, the Court emphasised that the power to strike out is exercised only in plain and obvious cases where the claim is "plainly or obviously unsustainable" (at [16]).
The Statutory Framework
The Court then turned to the specific provisions of the Copyright Act 2021. Section 153(1) states:
"An action against a person for an infringement of copyright may be brought in the Court by — (a) the copyright owner; or (b) if an exclusive licence of the copyright is in force at the time of the infringement — the exclusive licensee."
The definition of an "exclusive licence" is found in Section 103(1):
"An 'exclusive licence', in relation to a copyright, is a licence — (a) granted by the owner or prospective owner of the copyright; and (b) authorising the licensee, to the exclusion of any other person, to do an act that, by virtue of this Act, the owner of the copyright would, but for the licence, have the exclusive right to do."
The Precedent of Alliance Entertainment
The Court identified Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another [2007] 2 SLR(R) 869 ("Alliance Entertainment") as the leading authority. In that case, Sundaresh Menon JC (as he then was) held that a plaintiff who was not an exclusive licensee within the meaning of the then-applicable Copyright Act 2006 did not have title to sue. Menon JC had rejected a "robust interpretation" of the definition of an exclusive licensee, holding that the statutory language was clear: the licence must be granted by the owner of the copyright.
Dedar Singh Gill J affirmed that the reasoning in Alliance Entertainment remained applicable to the Copyright Act 2021. He noted that while the 2021 Act had reorganised the sections, the definition of an exclusive licence remained "the same in substance" as Section 7 of the 2006 Act (at [24]). The Court specifically endorsed Menon JC's observation that:
"A statutory exclusive licensee cannot himself grant a statutory exclusive licence by way of sub-licence. Instead... '[w]hen an exclusive licensee grants a sub-licence, he is acting on his own behalf and not as agent or on behalf of the copyright owner'" (at [27]).
Distinguishing the Dendron Case
The defendant’s reliance on Dendron was the most complex aspect of the analysis. In Dendron, the UK High Court dealt with Section 130(1) of the Patents Act 1977, which defined an exclusive licence as one "from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons...".
Dedar Singh Gill J highlighted a critical textual difference. The Singapore Copyright Act 2021 (and its predecessor) does not include the phrase "or on him and persons authorised by him". The Court reasoned that the presence of this phrase in the UK Patents Act was the very reason the Dendron court could conclude that an exclusive licensee could authorise others (sub-licensees) without losing its own "exclusive" status. Without this phrase, the Singapore definition in Section 103(1) must be read more strictly. Under Singapore law, if a licensee is authorised to the exclusion of all other persons, the grant of a sub-licence to another person would, on a literal reading, mean the licensee is no longer the only person authorised.
However, the Court turned this logic against the defendant. If a sub-licence cannot be a "statutory exclusive licence" because it is not granted by the owner, then the existence of a sub-licence does not legally "count" as a competing authorisation that would strip the primary licensee of its "exclusive" status under the Act. The sub-licence is merely a contractual arrangement between the licensee and the sub-licensee; it does not change the fact that, as far as the owner is concerned, only the primary licensee has been granted the statutory right.
The Agency Argument
The defendant also argued that the claimant, by virtue of having the power to sub-license under the 19 August Agreement, was acting as the "agent" of Kaixin when it granted the sub-licence to HK Tiger. If the claimant were an agent, then the sub-licence would effectively be a grant "by the owner", thus making HK Tiger the statutory exclusive licensee.
The Court rejected this. Dedar Singh Gill J held that the power to sub-license does not, without more, create an agency relationship. An exclusive licensee granting a sub-licence acts in its own capacity to exploit the rights it has acquired. There was no evidence in the 19 August Agreement that Kaixin had authorised the claimant to contract as its agent to create a direct legal relationship between Kaixin and any sub-licensee. The Court cited Copinger and Skone James on Copyright to support the view that an exclusive sub-licensee does not have standing to sue for infringement because their licence is not from the copyright owner (at [26]).
Policy and Practicality
Finally, the Court considered the practical implications. If the defendant's view were correct, a "standing vacuum" would occur. The primary licensee would lose standing because it sub-licensed its rights, but the sub-licensee would not gain standing because its licence was not from the owner. This would leave only the original owner (often a foreign entity) with the right to sue, which would be "an unsatisfactory and overly technical result" that would undermine the commercial utility of exclusive licences (at [38]).
What Was the Outcome?
The Court dismissed the defendant's application to strike out the claimant's claim. The Court found that the claimant had a perfectly sustainable argument that it remained the "exclusive licensee" of the copyright in "Moon Man" within the meaning of Section 103(1) of the Copyright Act 2021, notwithstanding the sub-licence granted to HK Tiger.
The operative conclusion of the Court was stated as follows:
"For all the foregoing reasons, I dismissed the defendant’s striking out application in Summons 2172." (at [39])
Regarding the costs of the application, the Court exercised its discretion under the specialized costs regime for intellectual property matters. Dedar Singh Gill J stated:
"I made no order for costs at this stage of the proceedings pursuant to r 9(2) of the SCJ(IP)R." (at [39])
The effect of this order is that the claimant's action for copyright infringement will proceed to trial. The claimant maintains its standing to seek all reliefs claimed in Originating Claim No 466 of 2022. The defendant's attempt to dispose of the matter on a preliminary point of standing failed because the Court prioritised a strict adherence to the statutory definition of "exclusive licensee" over foreign patent law analogies.
Why Does This Case Matter?
This case is a landmark clarification of the "standing" rules for copyright litigation in Singapore. It provides several layers of significance for practitioners and the broader legal landscape:
1. Affirmation of Statutory Exclusivity
The judgment confirms that the "exclusive licensee" status is a creature of statute that is not easily displaced by contractual sub-arrangements. By holding that a sub-licence is not a "statutory" exclusive licence, the Court has ensured that the "chain of title" for litigation purposes remains short and predictable. Practitioners can now be certain that the party holding the direct grant from the copyright owner is the correct party to commence proceedings, regardless of how many sub-distributors are involved in the commercial chain.
2. Rejection of the Dendron Substitution Theory
The Court’s detailed distinction of Dendron is a masterclass in statutory interpretation. It highlights the danger of importing foreign jurisprudence without a close examination of the underlying legislative text. The absence of the phrase "or on him and persons authorised by him" in the Singapore Copyright Act is now a definitive marker that distinguishes Singapore's regime from the UK's patent laws. This prevents the "substitution" of standing that the defendant argued for, where a primary licensee could inadvertently lose its right to protect its commercial interests by granting a sub-licence.
3. Prevention of the "Standing Vacuum"
Perhaps the most significant practitioner impact is the avoidance of a "standing vacuum". In the film and music industries, rights are often sub-licensed through multiple layers of subsidiaries and regional distributors. If the grant of an exclusive sub-licence stripped the primary licensee of standing, but failed to confer it on the sub-licensee, the ability to enforce copyright in Singapore would be severely hampered. This decision ensures that the enforcement mechanism of the Copyright Act remains robust and aligned with commercial reality.
4. Clarification of Agency in Licensing
The judgment provides clear guidance on the limits of the agency doctrine in IP licensing. The mere power to sub-license does not make a licensee an agent of the owner. This is a crucial distinction for drafters of licence agreements. If parties intend for a sub-licensee to have statutory standing to sue, they must ensure the primary licensee is explicitly appointed as an agent to grant licences on behalf of the owner, or the owner must grant the licence to the sub-licensee directly.
5. Continuity of the Alliance Entertainment Doctrine
By applying Alliance Entertainment to the 2021 Act, the Court has signaled that the massive overhaul of Singapore's copyright legislation in 2021 did not intend to disturb settled judicial interpretations of core concepts like "exclusive licence". This provides stability to the legal landscape during the transition to the new Act.
Practice Pointers
- Verify the Grantor: When assessing standing to sue for copyright infringement, always trace the licence back to the copyright owner. A licence granted by anyone other than the owner (or their proven agent) will likely not qualify as a "statutory exclusive licence" under s 103(1).
- Drafting Sub-licences: Be aware that calling a sub-licence "exclusive" only creates contractual rights between the licensee and sub-licensee. It does not confer the statutory right to sue third parties under s 153(1).
- Agency Clauses: If a sub-licensee needs the power to sue in its own name, the head licence should explicitly authorize the licensee to act as the owner's agent for the purpose of granting statutory licences, or the sub-licensee should be joined with the owner in any action.
- Joinder of Parties: To avoid standing challenges, consider joining the copyright owner as a co-claimant if there is any ambiguity in the licensing chain.
- Striking Out Risks: This case demonstrates that standing is a popular target for striking-out applications in IP cases. Ensure the "chain of title" is pleaded with precision in the Statement of Claim.
- UK vs SG Law: Do not rely on UK patent law cases (like Dendron) to interpret the Singapore Copyright Act without checking for textual differences in the statutes.
Subsequent Treatment
As a relatively recent decision from late 2023, Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd [2023] SGHC 255 stands as a contemporary authority on locus standi under the Copyright Act 2021. It effectively bridges the gap between the old 2006 Act and the 2021 Act, confirming that the restrictive definition of an "exclusive licensee" established in Alliance Entertainment remains the law of the land in Singapore. It has been cited as a cautionary tale against the "substitution" theory of standing in multi-tiered licensing.
Legislation Referenced
- Copyright Act 2021 (2020 Rev Ed), s 103, s 103(1), s 103(1)(a), s 142, s 153, s 153(1)
- Copyright Act 2006 (Cap 63, 2006 Rev Ed), s 7, s 124
- Patents Act 1977 (c 37) (UK), s 67, s 130(1)
- Copyright, Designs and Patents Act 1988 (c 48) (UK), s 92(1)
- Rules of Court 2021, Order 9 Rule 16
- Supreme Court of Judicature (Intellectual Property) Rules 2021 ("SCJ(IP)R"), r 9(2)
Cases Cited
- Applied: Alliance Entertainment Singapore Pte Ltd v Sim Kay Teck and another [2007] 2 SLR(R) 869
- Distinguished: Dendron GmbH v Regents of the University of California [2004] FSR 43
- Referred to: Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd [2023] SGHC 138
- Referred to: Iskandar bin Rahmat and others v Attorney-General and another [2022] 2 SLR 1018
- Referred to: Gabriel Peter & Partners (suing as a firm) v Wee Chong Jin and others [1997] 3 SLR(R) 649
- Referred to: The Bunga Melati 5 [2012] 4 SLR 546
Source Documents
- Original judgment PDF: Download (PDF, hosted on Legal Wires CDN)
- Official eLitigation record: View on elitigation.sg