Under Singapore Law, “compilations” of information can be protected by copyright by reason of selection or arrangement of its contents. This lesser known aspect of copyright law was the subject of the recently concluded litigation between Global Yellow Pages Limited (“GYP”) – publisher of the “Yellow Pages” – and Promedia Directories Private Ltd (“Promedia”) – publisher of “The Green Book”.
Prior to this decision, the basis of copyright protection for compilations was in a state of uncertainty. One view was that copyright should subsist in compilations because of the industriousness or labour of the author in reducing the work to its final form – otherwise known as the “Sweat of the Brow Approach”. The other view focused on the need for intellectual effort or creativity directed at the work’s final form of expression – which came to be known as the “Creative Spark Approach”.
The significance of this decision lies not only in the affirmation of the latter view, but also in the principled and structured methodology adopted by the High Court in determining whether there was copyright in the various compilations.
In 2009, GYP commenced legal proceedings against Promedia alleging that the latter had infringed its copyright in its compilations. By the time the case went to trial 2014, GYP’s claim consisted of three broad types of compilations:
- each of GYP’s “Directories” (i.e. consisting of its “White Pages”, “Classified Directories” and its “Online Directory”);
- “Seeds” in GYP’s Directories, which were fictitious listings deliberately introduced by GYP into its directories to detect copying; and
- the listing data found in GYP’s Directories that it termed “Enhanced Data”.
(collectively, “GYP’s Works”)
In defending its claim, Promedia argued (amongst other things) that no copyright subsisted in GYP’s Works, and that in any case, Promedia had not infringed any of GYP’s Works. Promedia also counterclaimed for groundless threats of copyright infringement.
After a review of the authorities in multiple jurisdictions, Justice George Wei (“Wei J”) held in unequivocal terms that the Creative Spark Approach was required by the Copyright Act (Cap 63, Rev Ed 2006):
“it is insufficient that the compiler expended effort and labor in the gathering of the facts or data. The compiler must exercise sufficient creativity or intellectual effort in the selection or arrangement of the material or data within the compilation”
His Honor emphasized that where such copyright is found, the protection granted is “thin”, and only extends to the original expression in the form of the selection or arrangement of data or material. Applying this approach, Wei J held that copyright could subsist in only some of GYP’s Works.
Wei J held that no copyright could subsist within the individual listings in GYP’s Works. In an individual listing in a telephone directory “the fact is largely coterminous with the expression”. The information must necessarily take a certain form to enable the subscribe to be contacted, and thus such fields of information did not meet the minimum level of creativity for the work to be protected by copyright.
Furthermore, mere placement of the listings under each classification heading would not afford the information copyright protection, because “any intellectual effort expended by GYP was directed at the discovery of facts and did not fix upon the selection and arrangement of the listings within the classifications”.
Printed Classifieds Directories
Nevertheless, Wei J found that a “thin” form of copyright subsisted in GYP’s “selection and arrangement of the various classifications and listings within each of the [Classified Directories] as a whole”.
The judge reasoned that the “choice of what classifications to include in which directory” presented GYP with a “field of discretion” in which intellectual effort had to be expended. For example, GYP had to decide whether a particular listing was a business-to-business transaction (which were placed in the Yellow Pages Business), or a business-to-consumer transaction (that were placed in the Yellow Pages Consumer).
While copyright subsisted in the Business Listings as a whole, which included the introductory material and the actual subscriber listings, no copyright could subsist in the compilation of the entirety of the listings in the Business Listings.
This is because the Business Listings is a whole-of the universe directory and is thus by definition exhaustive. It derives its purposefulness and efficacy not from the selection and arrangement of the individual subscriber’s data but from the lack of it. The alphabetical arrangement of the listings was also commonplace. There was accordingly insufficient intellectual effort directed towards the arrangement of the information.
Yellow Pages Online Directory
The Online Directory is essentially an online database that allows users to search through it using categories, filters and keywords. It was held that GYP’s employees exercised sufficient creativity and intellectual effort in the arrangement of listings in the Online Directory for copyright to subsist. For example, GYP had to make decisions as to the depth of sub-categories or drill-downs that were permitted, as well as the choice of “filters” that were incorporated to assist users of the Online Directory. Again however, Wei J highlighted that “the protection conferred on it will be “thin”.
Seeds and Compilation of Seeds
The Seeds were false entries deliberately introduced into GYP’s directories to detect instances of copying. These seeds were tied to the plaintiff’s address and PO Box, but had fictitious names, telephone numbers and unit numbers.
While GYP alleged that these dispersed Seeds constituted a “compilation” for which copyright protection subsisted, the Court was quick to disagree, and found that there was insufficient skill in devising the individual seeds to qualify them for copyright protection. The fact that the names and telephone numbers in the seeds were fictitious was insufficient to cast the seeds as an original literary work.
Further, because the seeds were interspersed throughout the publication, they could not rightly be said to constitute a “collection”, or even an original compilation. In this context, Wei J clarified that a compilation had to be “a collection of works or material that has been assembled together”.
Infringement of Copyright?
Having determined whether copyright subsisted in GYP’s Works, the Court then turned its attention to the question of infringement.
At the trial, it was established that copying and scanning of the listings in the Business Listings in their entirety did not amount to infringement because “not one iota of originality rested in the material that the defendant reproduced”. The copyright that subsisted in the Business Listings as a whole was “the selection and arrangement of the listings together with other material”, and judge found that this had not been reproduced.
The referencing of information in the listings or classifications for Promedia’s use did not amount to infringement because copyright did not subsist in the individual listings or classifications. There were sufficient differences in Promedia’s method of selecting and arranging the material in its directories such that it did not reproduce a substantial part of what was considered original work in the Yellow Pages and Online Directories as a whole.
In light of the above, Wei J found that GYP’s claim for copyright infringement failed in its entirety. Wei J also found for Promedia in its counterclaim for groundless threats, which is an action available to prevent abuse by rights owners.
The case has been appealed to the Court of Appeal by GYP and has been at the time of writing placed before a panel of five judges.
Advocate & Solicitor
Infinitus Law Corporation
Mark graduated from the National University of Singapore. He practices in the Intellectual Property (“IP”) Department and handles both foreign and local clients. Mark’s work spans both contentious and non-contentious aspects of IP, namely, protection, commercialisation and enforcement of IP.
Mark is particularly passionate about playing a role in the development of IP law in Singapore through advocacy. A recent high profile case in which he played a pivotal role in winning was Global Yellow Pages Ltd v. Promedia Directories Pte Ltd  SGHC 09. The said High Court case now stands as leading authority for the online database industry. The case has been appealed to the Court of Appeal and Mark is currently representing the Respondent in the action.
Being an avid amateur photographer/videographer, Mark appreciates creativity and understands the value of IP. He takes a personal interest in his clients’ matters and strives to find innovative solutions for them. Mark understands that with technology, the only constant is change. He enjoys keeping pace with the practical and legal developments in the IP and Information Technology (“IT”) sector.
Mark also takes some time to give back by serving as an active member of both the IP and IT Committees of Law Society of Singapore.