January 2012 EXECUTIVE SUMMARY COPYRIGHT

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1 EXECUTIVE SUMMARY COPYRIGHT For the purposes of determining whether a defendant had copied the plaintiff s works, held that the defendant s access to the works could be established where these had been put up publicly online but further held that on the facts no copying, whether conscious or subconscious, had been established In considering whether the charges and conditions of a licence scheme for the reproduction of music videos in karaoke-on-demand systems were reasonable, where applicants failed to bring expert evidence of comparable charges, held that they had failed to establish the unreasonableness of the licence scheme they operated under TRADEMARKS Comparative advertising generally puts a competitive product in favourable light against a product sold under a registered trade mark. The applicants in this case sought to rely on evidence of comparative advertising to support their case that there was no likelihood of confusion COPYRIGHT For the purposes of determining whether a defendant had copied the plaintiff s works, held that the defendant s access to the works could be established where these had been put up publicly online but further held that on the facts no copying, whether conscious or subconscious, had been established Michael Mitchell v British Broadcasting Corporation [2011] EWPCC 42 (England, Patents County Court, 21 December 2011) This case reminds us that to constitute copyright infringement, it is not necessary that copying has to be done consciously. The law recognises the notion of subconscious copying. Therefore, copyright may be infringed even when a person is not consciously aware of it. 1 < Previous item Front Page Next item >

2 Facts The plaintiff had created a group of characters called the Bounce Bunch intended for use in animated television programme for children. In October 2007 and May 2008, the plaintiff sent his proposal on the Bounce Bunch to the British Broadcasting Corporation ( BBC ), which included a sheet of drawings of the Bounce Bunch, as well as a brief synopsis and a script for episode one. In May 2008, BBC decided not to pursue the project. In November 2008, the BBC broadcasted an animated children's television programme called Kerwhizz, which had various animated characters. In April 2009, the plaintiff came to know of Kerwhizz and was concerned about the similarities he perceived between the Bounce Bunch and the characters in Kerwhizz. He then instituted proceedings for copyright infringement, claiming that the BBC had reproduced a substantial part of his original artistic work in the Bounce Bunch in Kerwhizz. The plaintiff further claimed that even if there was no deliberate and conscious copying, the designers for Kerwhizz in any event subconsciously copied his work in the Bounce Bunch to create Kerwhizz, since his work in the Bounce Bunch was available online and the designers for Kerwhizz therefore had access to it. To discuss the possible implications for your business of any of the matters in this update, please contact: LAM Chung Nian DID: chungnian.lam@ wongpartnership.com Jeffrey LIM DID: jeffrey.lim@ wongpartnership.com The BBC denied that there was copyright infringement. Decision The Court considered the issue of access to the Bounce Bunch work and the similarities between the Bounce Bunch characters and Kerwhizz characters to determine whether there was an inference of copying that shifted the evidential burden to the BBC. On the issue of access, the Court made a finding of fact that Bounce Bunch drawn as full characters appeared online in 2007, thereby satisfying the requirement of access. On the issue of similarities between the characters, the Court observed that the objective similarities between the characters, when considered as a combination, were sufficient to shift the evidential burden to the BBC to explain how the Kerwhizz characters were created. 2 < Previous item Front Page Next item >

3 On the evidence, the Court was satisfied that the BBC had discharged its burden to prove that Kerwhizz was an independent creation of BBC. For subconscious copying, the Court emphasised that there was an important distinction to be drawn between the basic inference which operates in all copyright cases which shifts the evidential burden to the defendant and the inference that subconscious copying has taken place. The evidence which would be necessary to support an inference of subconscious copying was likely to be a good deal more substantial than the evidence needed simply to shift the evidential burden to a defendant in a copyright case. The Court considered three elements for the purpose of determining subconscious copying: the degree of familiarity with the Bounce Bunch, the character of the work, and the degree of objective similarity between the Bounce Bunch characters and the Kerwhizz characters. The Court held that: The designers for Kerwhizz were not familiar with Bounce Bunch; The Bounce Bunch characters are not especially memorable and that even if they were seen, they would not be retained in the minds of the designers; and The similarities between the Bounce Bunch characters and the Kerwhizz characters are at a high level of generality and the designers for both would have been influenced by many of the same common elements in the field of children s character design. It is interesting in this case to note that access to the Bounce Bunch was proved by reference to the fact that the work had been put publicly online in However, the Court cautioned that this illustrates the slippery nature of the allegation of subconscious copying when it is combined with the reality of the internet today, given that everything is available to everyone on the World Wide Web today and no evidence can ever rule it out as a subconscious influence. The Court emphasised that the legal process can only operate on evidence and on the facts of the case the Court held that there was no evidence that the relevant people concerned with Kerwhizz were familiar with the Bounce Bunch. In the circumstances of the case, the plaintiff s claim of copyright infringement was dismissed. 3 < Previous item Front Page Next item >

4 Comment Under Singapore law, one of the elements to be proved in a claim for infringement of copyright is that the defendant (person accused of copying) must have copied the plaintiff s (copyright owner) copyrightprotected work. This essentially requires proof by the plaintiff that there is substantial similarity between the defendant s work and the plaintiff s work, and that the defendant had access to the plaintiff s work. This is significant as access to a plaintiff s work will give rise to a prima facie inference of copying by the defendant, at which point the burden shifts to the defendant to rebut the inference of copying by explaining how the similarities came about. To rebut such an inference, the defendant may show that the work is his independent creation, similar to what BBC did in the case above. The defendant may also demonstrate that both the plaintiff and defendant had in fact copied from a common source. As this case shows, copying need not be consciously done. Subconscious copying may arise where the defendant had access to the copyrighted work a long time ago such that he cannot consciously remember the fact of having had access to the work, but the work left an impression on him and he subsequently reproduced it in his other works subconsciously. This concept of subconscious copying may assist copyright owners to discharge the burden of proving copying by the defendant, though an inference of subconscious copying is not easily drawn. In considering whether the charges and conditions of a licence scheme for the reproduction of music videos in karaoke-ondemand systems were reasonable, where applicants failed to bring expert evidence of comparable charges, held that they had failed to establish the unreasonableness of the licence scheme they operated under Tiananmen KTV & Lounge Pte Ltd Club Infinitude Pte Ltd & Ors v Innoform Entertainment Pte Ltd (CT 1 of 2010) This case is of significance as it is the first application involving a licence scheme in respect of cinematograph films before the Copyright Tribunal following the expansion of its jurisdiction in 31 December 2009 to cover a wider range of licence schemes. 4 < Previous item Front Page Next item >

5 Facts The respondent operates a licence scheme on behalf of 14 recording companies for the grant of licences for the reproduction of music videos in karaoke-on-demand ( KOD ) systems. The applicants run a number of entertainment outlets equipped with KOD systems, and brought an application before the Copyright Tribunal ( Tribunal ) asserting that the licence scheme operated by the respondent was not reasonable. The applicants asked that the Tribunal fix a reasonable sum and mode of payment in respect of the respondent s licence scheme. Decision The Tribunal held that it was for the applicants to discharge their legal burden on a balance of probabilities (i.e., the same standard of proof as in civil cases) to prove that the respondent s charges and conditions were not reasonable. The Tribunal also held that in assessing the reasonableness of a licence scheme, what is reasonable refers to what is fair and equitable having regard to the particular factual matrix at hand, and entails a value judgment which cannot be arrived at through the application of a rigid mathematical formula. Accordingly, what is reasonable is to be determined by looking at the circumstances of the position of the parties in Singapore. As for the position in other jurisdictions, while such evidence may serve as a useful guide for the purposes of comparison, they would need to be regarded with circumspection as the prevailing conditions in those jurisdictions may be very different from those in Singapore. In the absence of binding precedents, the Tribunal noted that commonsense would be a good indicator of reasonableness. To determine what is reasonable, the Tribunal turned to the practices of equivalent copyright tribunals in Australia and the United Kingdom for guidance. The factors to be considered in determining the reasonableness of a licensing scheme include: Market rate: The rate actually being charged for the same licence in the same market in similar circumstances; 5 < Previous item Front Page Next item >

6 Notional bargain rate: The rate which the Tribunal considers the parties would agree in a hypothetical negotiation, between a willing but not anxious licensor and a willing but not anxious licensee; Comparable bargains: Bargains not in the same market but sufficiently similar to such a notional bargain as to provide guidance to the Tribunal; Judicial estimation: The rate determined by the Tribunal after taking into account a range of matters such as: previous agreements or negotiations between the parties; comparison with other jurisdictions; comparison with rates set by other licensors, capacity to pay, value of the copyright material, the general public interest and the interests of consumers; and The administrative costs of a licensing body. The Tribunal took the view that like the equivalent copyright tribunals in Australia and the United Kingdom, it had to arrive at a determination concerning the reasonableness of the charges and conditions and by logical extension, whether the Applicant s claim was well-founded, based on the evidence tendered and submissions put forth by parties before the Tribunal. In this case, however, the Applicants did not call any expert witness to provide evidence of what were comparable licence fees in other jurisdictions, how they are applied in practice, what the turnover of business is in other comparable businesses abroad, and what proportion of such turnover the charged rates would have been. Even within Singapore, the Applicants did not provide cogent evidence of probative value on the amount of licence fees comparable businesses in Singapore would have been charged, whether these charges would have constituted a disproportionately high cost of business compared to other costs, taking into account the fact that these venues were primarily focused on music performance. The lack of cogent evidence for the case prompted the Tribunal to remark that the case could not succeed merely on the documentary evidence put together through internet downloads, application forms and the like, coupled with submissions which were not backed up by objective evidence. On the facts of the case, after considering all the evidence and submissions from parties, the Tribunal dismissed the application with costs as the applicants had failed to adduce sufficient 6 < Previous item Front Page Next item >

7 evidence to cross the necessary threshold to discharge its evidential burden, which in turn led to its failure to satisfy the legal burden of proof. Comment This case serves as a reminder that for proceedings of similar nature, evidence comparing the existing licensing scheme with other schemes both in Singapore and abroad as well as evidence on the conditions and industry practices are essential to enable the Tribunal to make a meaningful assessment of the reasonableness of the scheme. The Tribunal has emphasised that concrete evidence on these critical aspects of the case are necessary for the Tribunal to make an objective and meaningful comparison of the licence scheme in issue. TRADEMARKS Comparative advertising generally puts a competitive product in favourable light against a product sold under a registered trade mark. The applicants in this case sought to rely on evidence of comparative advertising to support their case that there was no likelihood of confusion Trade Mark Application by Avtar Singh and Harkirat Singh Trading as Aero Club and Opposition Thereto by the Timberland Company [2011] SGIPOS 14 Facts The applicants applied to register a series of two trade marks, WOODLAND & tree device ( Application Mark ), in Singapore in Class 25 in respect of Clothing, clothing belts, socks, footwear, headgear. They had started their operations in India in 1992 and adopted the Application Mark in respect of a wide range of goods including clothing and footwear. The opponent s mark, TIMBERLAND, was conceived under commission and was first used in the United States in The opponent relied on five of their registered trade marks for the 7 < Previous item Front Page Next item >

8 opposition ( Opponent s Marks ). The representations of the Application Mark and the mark primarily relied on by the Opponent both comprise a word and a tree device as follows: Application Mark Opponent s Mark Decision The opponent based the opposition on grounds including similarity of the marks and goods, passing-off and well-known mark. It failed on all grounds and the Application Mark was allowed to proceed for registration. For the issue of similarity between the marks, the Principal Assistant Registrar ( Registrar ) held that the marks were not visually or aurally similar. On the issue of conceptual similarity, the Registrar noted that the respective marks, by their word and pictorial elements, denoted and connoted some mental impression of trees and nature on the average consumer. The Registrar therefore held that there were some conceptual similarities between the two marks (as opposed to complete or significant similarities) in the arboreal associations of both, as conveyed by their word and pictorial elements. However, although there was some similarity between the marks and goods (on the facts of the case, it was not disputed by parties that the respective goods claimed are similar), it did not necessarily follow as a matter of presumption that there is a likelihood of confusion. To determine whether there was a likelihood of confusion, the Registrar considered the three different aspects of the test of likelihood of confusion: 8 < Previous item Front Page Next item >

9 The meaning and nature of the confusion required: The relevant confusion is not limited to the classic confusion scenario where consumers believe that the goods or services emanate from a particular origin. One should also be cognisant of the risk that the public might believe that the goods come from the same source or economically-linked sources. The likelihood of confusion must arise because of the similarities in the respective marks and goods concerned. It is insufficient that the confusion arises for any other reason. The meaning and nature of the relevant public : Likelihood of confusion is to be determined by reference to average consumers of the goods and services in question. Such consumers are reasonably well-informed, reasonably observant and circumspect, and will exercise ordinary care and intelligence. The requirement of a substantial portion of the relevant public being confused: It is insufficient that only a single member of the public, or a very small unobservant section of society, or a moron in a hurry, would be confused. While there does not have to be a majority of the relevant public that is confused, there must be a not insubstantial number. The Registrar further took into account all the circumstances of the case to assess the likelihood of confusion globally, including, among other things, the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection, the steps taken to differentiate the goods etc. The lower the degree of similarity between the marks, all other things being the same, the more difficult it is to establish a likelihood of confusion. In the circumstances of the case, the Registrar held that the closeness of the goods did not outweigh the low degree of similarity between the marks to support a finding of likelihood of confusion. Evidence of Comparative Advertising One piece of evidence adduced in the opposition proceedings by the applicants related to comparative advertisement showing a visual of two shoes, with the tagline, You can buy [the opponents shoes] from Macy s, New York for $110 a pair. Or you can buy [the applicants shoes] in India for Rs 890 a pair. The applicants relied on this 9 < Previous item Front Page Next item >

10 advertisement for the argument that the Application Mark and the Opponent s Mark are differentiated by price, and, by inference, the target consumers are different. The opponents also sought to rely on the same advertisement to claim that the applicants were trying to evoke the same impression projected by the Opponent s Marks to assert that the common impression given by the respective marks leads to a likelihood of confusion. The Registrar noted that the applicants customers may buy their shoes in India because they resemble the opponents shoes from the United States but are sold at a lower price, and that these customers appreciate that they are not buying the opponents shoes. The Registrar was of the view that there was no likelihood of confusion or misrepresentation as a normal and fair reading of the advertisement would cause the consumer to realise that two different, competing brands were being compared and the cheaper brand is putting itself out as the brand of choice instead of the more expensive brand. The Registrar however pointed out that the advertisement did not contribute to a finding against a likelihood of confusion in Singapore as the advertisement did not indicate the relevant pricing in Singapore. Comment The concept of comparative advertising is addressed under our Trade Marks Act: section 28(4) provides, among other things, that fair use of a registered trade mark in comparative commercial advertising or promotion does not infringe the trade mark. 10 < Previous item Front Page Next item >

11 SOME OF OUR OTHER UPDATES DATE TITLE 29 November 2011 CaseWatch: Modelling Agencies Found to Have Fixed Prices for Modelling Rates November 2011 LawWatch: November 2011 December 2011 December 2011 LawWatch: December 2011 FS Edition LawWatch: December 2011 CG Edition December 2011 LawWatch: December January 2012 CaseWatch: Restrictive Covenants Considered in Two Recent High Court Cases Sin gapore Financial Services / Corporate / Intellectual Property One George Street #20-01 Singapore Tel: Fax: Litigation & Dispute Resolution / Tax 63 Market Street #02-01 Singapore Tel: Fax: Ch ina Beijing Representative Office Unit 3111 China World Office 2 1 Jianguomenwai Avenue Chaoyang District Beijing , PRC Tel: Fax: Shanghai Representative Office Unit 5006 Raffles City Office Tower 268 Xizang Road Central Shanghai , PRC Tel: Fax: Middle East A bu Dhabi Branch A l Bateen Towers Bu ilding C3 Office (P1) P.O. Box N o A bu Dhabi, UAE Tel: Fax: Licensed by the QFCA Office 12-20, Amwal Tower, West Bay P.O. Box N o Doha, Qatar Tel: Fax: Website: 11 < Previous item Front Page Next item >

PERSONAL DATA PROTECTION (ENFORCEMENT) REGULATIONS 2014 ISSUED

JULY 2014 1 PERSONAL DATA PROTECTION (ENFORCEMENT) REGULATIONS 2014 ISSUED With the Personal Data Protection Act 2012 ( PDPA ) fully in force, organisations will need to start dealing with access or correction