LAWWATCH INTELLECTUAL PROPERTY, MEDIA & TECHNOLOGY EDITION

EXECUTIVE SUMMARY COPYRIGHT  Dramatico Entertainment Limited & Ors v Briti sh Sky Broadcasting Limited & Ors [2012] EWHC 268 (Ch) The provider and users of a Bittorrent track er website which allowed the download of music were held to have infringed the copyright of the holders of the copyright through the provision and use of the service. The users had infringed by way of primary infringement; the provider by way of authorising the primary infringement and by secondary infringement. 

Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 Copyright law protects the expression of an idea and not the idea. Here, the plaintiff’s copyright in his digitally manipulated phot ograph of certain iconic London landmark s was held to have been inf ringed by the defendant’s photograph of the same landmark s composed and digitally manipulated in a similar way. It affirms that copyright can and does subsist in a photograph, and sets out the criteria for infringement.

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AstraZeneca AB (SE) v Sanofi-Aventis Singapore Pte Ltd [2012] SGHC 16 Where an application for the sale, supply or export of a medicinal product indicates that there is a patent in for that product and the applicant is not the proprietor of the patent, upon being notified of this fact, the patent owner is not required to bring a patent infringement action against the applicant but may commence an independent and separate action under the Medicines Act. The case also addresses the point that patent proprietors may obtain a declaration of future infringement from the court.

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TRADE MARKS 

Mediation in IPOS trade mark proceedings IPOS has introduced a new procedure offering a volunt ary mediation option to parties at the point of the first Case Management Conf ere nce for all trade mark proceedings. This new procedure took effect from 3 January 2012.

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COPYRIGHT The provider and users of a Bittorrent tracker website which allowed the download of music were held to have breached the copyright of the holders of the copyright through the provision and use of the service: -- Dramatico Entertainment Limited & Ors v British Sk y Broadcasting Limited & Ors [2012] EWHC 268 (Ch)

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Facts The plaintiffs in this case were record companies and various other participants in the music industry. The case dealt wit h whether a peer-to-peer (“P2P ”) file-sharing website called The Pirate B ay (“ TPB”) was infringing copyright. TPB is a Bittorrent tracker website that provides an organised directory of content for users to browse and download or upload torrent files. The proceedings, however, were not against the operators that set up and ran TPB or its users, but against six main retail internet service providers in the UK. It was an application for an injunction mandating t he defendants to take measures to block, or at least impede, access by their c ustomers to TPB. Before deciding whether the injunction should be granted, the High Court first had t o det ermine, as a preliminary question, whether the users and operators of TPB had infringed the plaintiffs’ copyright in the UK.

LAM Chung Nian d: +65 6416 8271 e: chungnian.lam@ wongpartnership.com

Jeffrey LIM d: +65 6416 8250 e: jeffrey.lim@ wongpartnership.com

How Bittorrent File Sharing work s Bittorrent is a file sharing protocol that enables large data file trans fers by creating and distributing torrent files associated with particular cont ent files. Through the use of the Bittorrent protocol, a user becomes a participant in a P2P network where he would be able to download files that are hosted and made available by other users of the P2P network. The user’s computer in turn also acts as an uploader, making the files that it has locally available to others. Each comput er that is part of the net work then acts as a mini-server from which other P 2P users on the net work can download files. Hence, the content files are neither stored nor hosted on a cent ral server. The torrent files do not themselves contain any material from the associated content files. Instead, they enable the identification, and hence the uploading and downloading, of the relevant content files. Infringement by the Users of TPB The Court found that users of TPB infringe the plaintiffs’ copyrights in two ways:  A user of TPB who selects a torrent file in order to obtain a copy of particular content, and then downloads the associated content files, copies the content contained in those files onto his computer. If the

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content files comprise any copyrighted work for which the appropriate licence has not been obtained, any unauthorised copying of these files would constitute copyright infringement.  A user of TPB also infringes copyright by making copy righted content available for download wit hout a licence to do so from the copy right owner. This amounts to copyright infringement by way of “communication to the public”. The Court stated t hat the c oncept of communication must be construed broadly and hel d that the us ers of TPB did make the copyright ed sound recordings available by electronic transmission in such a way that members of the public may access the recordings from a place and at a time individually chosen by them, without authorisation from the copyright owner. Infringement by the Operators of TPB The Court found that the operat ors of TPB had infringed the plaintiffs’ copyrights by authorising infringement and by secondary infringement. As regards authorising infringement, the Court opined that “to authorise” means to grant or purport to grant the right to do the act complained of. Such authorisation may be implied from the circumstances of the case. In a case involving an allegation of authorisation by supply, the circumstances to be taken into account may include:  The nature of the relationship bet ween the alleged aut horiser and the primary infringer,  Whether t he equipment or other material supplied constitutes the means used to infringe,  Whether it is inevitable it will be used to infringe,  The degree of control which the supplier retains, and  Whether the alleged authoriser has taken any steps to prevent infringement. In this case, the Court found that the operators of TPB fulfilled all the c riteria: they went to great lengths to make it easy for us ers to searc h and locate content for downloading; they also knew that the downloads infringed copyright, but while they had the technical ability to prevent this by removing infringing torrents, they refused to do anything to prevent this from occurring. In the circumstances, the Court found that the operators of TPB had gone far beyond merely enabling or assisting to in fact purporting to grant users the rights to do the acts of copyright infringement complained of. In view of this, the Court also held that that the operators of TPB induced, incited, or persuaded its users to commit copyright infringement, and that they and the users acted pursuant to a common design to infringe. Moreover, the operators themselves profited from the activities of the users’ activities. They were therefore jointly liable for the infringements committed by their users.

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Comment This case raises the issue of authorising primary infringement. Under Singapore law, copyright may be infringed by way of primary inf ringement, authorising primary infringement, and secondary infringement. There has been Singapore case law to suggest that the concept of authorising copyright infringement is, to a certain extent, dependent upon the state of mind of the person committing the act of primary infringement. By focusing the question of “authorisation” on the perception of the primary infringer, one may therefore argue that internet users who use P2P file sharing technology ought to be aware that the provider of P2P file shari ng technology has no authority to grant users the right to download the copyright ed cont ents, such that the infringing act of the primary infringer should not be imputed to the provider of the P2P file sharing technology.

The plaintiff’s copyright in his digitally manipulated photograph of certain iconic London landmarks was held to have been infringed by the defendant’s photograph of the same landmarks composed and digitally manipulated in a similar way. -- Temple Island Collections Ltd v New English Teas Ltd & Anor [2012] EWPCC 1 If two photographs depict identical, if not similar, subject matter, wherein does the test for copyright infringement lie? This case deals with the fundamental concept of “idea” as opposed to an “expression of idea” dichotomy in copyright law: copyright law protects the latter but not the former. The case affirms that copyright can and does subsist in a photograph, and sets out the criteria for determining whether the copyright has been infringed. Facts The plaintiff is a supplier of gift and souvenir items. Its managing director, Mr Fielder, created a stylised photograph of a red Routemaster bus depicted on a greyscale image of Westminster Bridge against the background of the Houses of Parliament (“Plaintiff’s Arti stic Work”). It was published in February 2006 and has been used by the plaintiff on souvenirs ever since. The defendant is a supplier of t ea. Its best-selling packs of tea include tins and cartons bearing images of English landscapes. One of the images used is a photograph bearing t he same subject matter as the Plaintiff’s Artistic Work. According to t he defendant, it first took four phot ographs, three of which were of different aspects of the Houses of Parliament and the fourth was a picture of a red Routemaster bus while it was stationary on the Strand. With these four photographs, the defendant worked with a design company

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 Plaintiff’s Artistic Work

Defendant’s Work 

to combine and manipulate the images by resizing the bus, changing the road marks etc, to create the image used by the defendant (“ Defendant’s Work”). Originality in Photographs The Court held that a photograph of an object can have the character of an artistic work in terms of copyright law if t he task of taking the photograph leaves ample room for an individual arrangement. It stated that there can be originality in photography:  Residing in specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on;  Residing in the creation of the scene to be photographed; and  Deriving from being in the right place at the right time. The Court held that the Plaintiff’s Artistic Work was original: it was the result of the plaintiff’s managing director’s own intellectual creation both in terms of his choices relating to the basic photograph itself, the precise motif, angle of shot, light and shade, illumination, and expos ure and als o in terms of his work to manipulate the image to satisfy his own visual aesthetic sense. The fact that it was a picture combining some iconic symbols of London did not mean t he work was not an original work in which copyright subsists. The fact that, to some observers, icons such as Big B en and a London bus are visual clichés also did not mean that no copyright subsists. Substantial Parts Copied The Court not ed that there were obvious similarities between t he Defendant’s Work and the Plaintiff’s Artistic Work and that the defendant had access to the Plaintiff’s Artistic Work, thereby giving rise to an inferenc e of copying. Moreover, the defendant did not refer to any particular common element to explain that it came from a source independent of the plaintiff to rebut the inference of copying. While there were some differences bet ween the two images, the Court held that these differences did not negate copying.

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In determining whether a substantial part of the Plaintiff’s Artistic Work has been reproduced, the Court identified the following:  Composition: Elements of the overall composition of the Plaintiff’s Artistic Work had been reproduced, such as the Routemaster bus running from right to left in the image and the fact that the riverside facade of the Hous es of Parliament was present in both images. Both images contained a substantial amount of sky, and the top of the bus was roughly the same height as the facade of the Houses of Parliament.  Visual contrasts: The element of bright red bus against a black and white background and the element of the blank white sky, which creates a strong sky line, had been reproduced. In the circumstances, the Court held that the Plaintiff’s Artistic Work was infringed by the defendant. Comment It is important to note that copyright prot ects the expression of ideas and not the idea itself. What was prot ected by copyright in this case is not the subject matter of the photograph itself, which are iconic landmarks of London, but the plaintiff’s int ellectual creation of expressing these iconic landmarks by way of his phot ographic composition. This case serves to provide helpful guidance on how a photograph of an object can have the character of an artistic work that forms the subject of protection under copyright law.

PATENTS Where an application for the sale, supply or export of a medicinal product indicates that there is a patent for that product and the applicant is not the proprietor of the patent, upon being notified of this fact, the patent owner i s not required to bring a patent infringement action against the applicant but may commence an independent and separate action under the Medicines Act. – AstraZeneca AB (SE) v Sanofi-Aventis Singapore Pte Ltd [2012] SGHC 16 Facts Generally, a licenc e from the Health Sciences Authority (“HS A”) is required for the sale, supply or export of medicinal product. If a patent is in force in respect of any medicinal product to which the application for a licence from the HSA relates, under s ection 12A of the Medicines Act, a pat ent proprietor may be served with a notice that applications for product licences are being made in respect of its patent. In such a case, the patent proprietor may

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institute court proceedings but section 12A is silent as to the type of proceedings to be commenced. This was the situation here: Both the plaintiff and the defendant are companies which engage in the research, development, manufacture and commercialisation of healthcare products, including medicines. The plaintiff is the proprietor of Singapore P atent No. 89993 (“Patent”) for “Pharmaceutical Compositions Comprising a HMG COA Reductase Inhibitor”. On 1 April 2011, the defendant submitted its applications to the HSA for product licences in respect of three products (“Proposed Products”). The application noted that there was a Pat ent in respect of the products and that in the opinion and to the best belief of the defendant, the Patent would not be infringed by the doing of the act for which the licences were sought . In accordance with the procedures set out in the Medicines Act, notice of this was given to the plaintiff. The plaintiff commenced proc eedings against the defendant pursuant to section 12A(5) of the Medicines Act. The question therefore was whether the order or declaration required was for patent infringement or whether it was for an order or declaration under the Medicines Act separate and independent from a patent infringement action. Section 12A of the Medicines Act Considered The Court noted that there is a clear incompatibility between section 12A of the Medicines Act and pat ent infringement under the Pat ents Act : if section 12A of the Medicines Act does, in spite of the lack of any wor ding to that effect, refer a pat entee to take out a patent infringement action under the Patents Act, it would be almost impossible for a patentee to s atisfy the practical requirement of a past infringing act demanded by a patent infringement action in a situation where all the applicant for a product licence has done is to apply for the licence. Accordingly, the Court held that an action for “a declaration...that...the patent will be infringed” under section 12A of the Medicines Act is incompatible with any action provided for in the Patents Act, not just a patent infringement action. The Court also observed that under section 12A of the Medicines Act, a patent ee is given only 45 days to take out the application and that in that space of time, it would be unrealistic to expect it, at the point of filing its pleadings, to be able to plead facts to support its allegation that its patent will be infringed. The Court acknowledged that such a position is admittedly pro patent ee as this would mean that the defendant would virtually be forced to reveal the composition of its products upon the taking out of an action by the patent ee. However, the Court pointed out that the risk of revealing the

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composition of one’s products may be mitigated, such as through applications for confidential information to be restricted to certain persons or for a plaintiff to be made to undertake not to use the information for purposes outside of the court action. Comment The Court’s holding clarifies that patent proprietors need not make out a case for patent infringement in an application pursuant to section 12A of the Medicines Act. This can serve to provide comfort for patent proprietors seeking to prevent the grant of product licences for medicinal products which relate to their patent, but for whic h patent infringement has not yet occurred at the time of application for the product licence. The Court further made an observation that a plaintiff in a similar scenario may be able to sustain an action for a declaration of future infringement under the inherent jurisdiction of the court. With the option of applying to the court for a declaration of future infringement, this effectively enables patent proprietors to have the option of proactively taking steps to avoid prospective infringement of their rights, as opposed to merely seeking recourse for past infringements.

TRADE MARKS Voluntary Mediation Option to Be Given in All IPOS Trade Mark Proceedings The Intellectual Property Office of Singapore (“IPOS”) has introduced a new procedure offering a volunt ary mediation option to parties for all trade mark proceedings. This new procedure took effect from 3 January 2012. The voluntary mediation option will be given at the point of the first Case Management Conference (“CMC”). Meanwhile, on-going proceedings at IPOS are suspended from the date of the filing of the Counter-Statement. Parties may indicate whether they wish to submit to mediation at the WIPO Center Office in Singapore. If parties agree to submit to mediation at the WIPO C enter Office, the following procedures apply:  Parties may choose a period of 30, 60 or 90 days for their mediation. This period may be extended upon parties’ further request and their satisfactory justification of the same to the Registrar.  Ongoing proceedings at IPOS remain suspended.

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 The WIPO Center Office will contact the parties regarding the next steps of the mediation proc edure, the appointment of the mediator, and the applicable fees. If mediation fails, or if parties do not agree to mediation at t he WIPO Center Office in Singapore, IP OS will convene a second CMC, which marks the end of any prior suspension of IPOS proceedings. The parties will update IPOS on the state of play between them, including whether they are still negotiating. Depending on the circumstances of the case, IPOS will then issue timelines for the filing of evidence by both parties. The int roduction of the mediation option will not change the further procedures that take place after the second CMC. Once the evidence has been filed by the parties, IPOS will conduct a Pre-Hearing Review. If parties are not negotiating or are not able to settle after negotiations, the matter will be set down for hearing. The introduction of this new mediation option is aimed to facilitate and encourage mediation as an option for trade mark proceedings. It does not restrict parties to submitting to mediation only at the point of the first CMC. At any time after trade mark proceedings are initiated and before a decision is issued, parties may choose to submit to mediation at the WIP O Center Office in Singapore.

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This update is intended for your general information only. It is not intended to be nor should it be regarded as legal advice.

WongPartners hip LLP (UEN: T 08LL0003B) is a limited liability law partnership registered i n Singapore under the Limited Liability Partnerships Act (Chapter 163A).

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SOME OF OUR OTHER UPDATES … DATE

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23 March 2012

LegisWatch: MICA Issues Proposed Personal Data Protection Bill for Consultation

4 April 2012

LawWatch: March 2012

11 April 2012

LegisWatch: Changes to the Singapore Code on Take-overs and Mergers

11 April 2012

LegisWatch: MAS consults on New Regulatory Capital Requirements for Fund Managers / REIT Managers and other CMS Licensees

20 April 2012

LawWatch: Financial Services Edition

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This update is intended for your general information only. It is not intended to be nor should it be regarded as legal advice.

WongPartners hip LLP (UEN: T 08LL0003B) is a limited liability law partnership registered i n Singapore under the Limited Liability Partnerships Act (Chapter 163A).