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  • Ch.12 Intellectual Property Law
    International Arbitration Centre Singapore International Mediation Centre Singapore Mediation Centre Singapore Chamber of Maritime Arbitration ADR Publications Laws of Singapore Overview Commercial Law Case Law Cases in Articles Free Law Arbitration Cases Statutes Singapore Law Watch Headline News Commentaries Judgments Legislation Notices Directions Continuing Legal Education Resources Media Press Releases Speeches Publications Online References Sample Clauses Directory of Law Practices Latest Singapore Rankings Events Upcoming Events Archive Events Archive 2013 Events Archive 2012 Laws of Singapore Commercial Law Ch 12 Intellectual Property Law Case Law Free Law Free Law Subcategories Commercial Law Ch 08 The Law of Contract Ch 09 Domestic Sale of Goods Ch 10 International Sale of Goods Ch 11 The Law of Credit and Security Ch 12 Intellectual Property Law 01 Copyright and Neighbouring Rights 02 Industrial Designs 03 Patents 04 Confidential Information Trade Secrets 05 Trade Marks Protection Under Trade Marks Act 06 Trade Marks Common Law Action for Passing Off Ch 13 Intellectual Property Licensing Ch 14 Forms of Business Organisations Ch 15 Law of Agency Ch 16 Singapore Company Law Ch 17 Corporate Finance and Securities Regulation Ch 18 Equity and Trusts Ch 19 Restitution Ch 20 The Law of Negligence Ch 21 Economic

    Original URL path: http://www.singaporelaw.sg/sglaw/laws-of-singapore/commercial-law/chapter-12/24-case-law/free-law (2016-01-30)
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  • Virtual Map (Singapore) Pte Ltd v Singapore Land Authority[2008] 3 SLR 86; [2008] SGHC 42
    highlighted during the trial For instance in relation to Fort Gate SLA s expert Mr Calvert who explained that its shape is identical in both SLA s and VM s maps said that it was not possible for VM to have the same exact portrayal as in SLA s map and especially so since Fort Gate does not have the shape portrayed in SLA s map If VM had indeed worked on the basis of satellite images its depiction of the shape of Fort Gate would have been different from that of SLA 27 Furthermore two existing buildings adjacent to Fort Gate are not depicted on SLA s maps Remarkably these two buildings which should have appeared on VM s satellite images are also missing from VM s online maps Unique features in SLA s address point database 28 The fourth type of fingerprints relate to a number of unique features in SLA s address point database 29 For a start SLA uses a unique building name convention with respect to Housing Development Board HDB buildings It identifies public residential buildings with the prefix HDB An example of this is HDB Alexandra More pertinent is that SLA s naming of HDB blocks has some inconsistencies in that HDB was sometimes followed by a hyphen eg HDB Alexandra and was sometimes without a hyphen eg HDB Alexandra SLA s building name convention and all its inconsistencies in using or omitting the hyphen are mirrored in VM s data This speaks little of independent creation by VM Identical X and Y coordinates for 58 address points 30 Finally reference must be made to 58 identical X and Y coordinates for address points in SLA s database that were reproduced in VM s database These coordinates concern the point that SLA chose for the geographical location of a building or units in the same building sharing the same six digit Singapore postal code As SLA s expert Mr Calvert explained the skeleton of SLA s data is the absolute and relative position of map date The X and Y coordinates identify the exact absolute and relative position of a feature on a map and may be regarded as the information layer of a map As SLA s counsel Mr Dedar Singh Mr Singh emphasised to copy the address point would be to copy the absolute and relative position of a feature on a map 31 VM submitted that the fact that only 58 address points were copied meant that only a negligible number of address points were the same in both its data and that of SLA However SLA s expert Mr Calvert who stressed that there should not be this number of identical address points explained that in regard to these identical address points the question should not be what the dog said as it is a miracle that the dog spoke at all He added as follows To have one identical may be coincidence to have two is suspicious to have 58 is incontrovertible evidence that the co ordinates come from the same source Furthermore as building outlines in SLA and VM are of different shapes the chances of both generating the exact same centre points for each building is so infinitesimally low as to be negligible iii VM must explain that similarities did not result from copying 32 In the light of the many damning fingerprints mentioned above the following words of Lord Millet in Designers Guild Ltd 14 supra at 2425 which describe the first part of his two step test are relevant If the plaintiff demonstrates sufficient similarity not in the works as a whole but in the features which he alleges have been copied and establishes that the defendant had prior access to the copyright work the burden passes to the defendant to satisfy the judge that despite the similarities they did not result from copying emphasis added 33 VM had prior access to SLA s copyright data by virtue of the licence agreements As such it was up to VM to prove that the fingerprints in question did not result from its copying of SLA s data It was all too clear that its witnesses failed in this task miserably 34 VM s task of proving that the new maps are the result of its own independent creation was made more difficult because the two persons most intimately involved with its map making exercise namely Mr Khairul Anuar bin Mohd Yunos Mr Anuar and Mr Rizal Firdaus Mr Rizal had no qualifications in land survey or any experience in cartography 35 Mr Rizal a designer cum web programmer described himself as the leader of VM s mapping team His lack of competence as a map maker was exposed when he was asked during cross examination to comment on one of VM s maps which was obviously off the mark because the roads intended to lead to a car park stopped well before the car park The relevant part of the proceedings is as follows Q See the VM website map Can you tell us what is wrong with that map there A There is no error down here Q There is nothing wrong with the map on VM website A This one I obtained from the satellite Q The problem is that the roads don t take you to the car park Can you explain A I don t know Q You have put yourself as an expert in making maps And you don t know how to read this map Your answer is you don t know A This is taken from the satellite Maybe it is human error The person had forgotten to take down the road No explanation emphasis added 36 It was hardly surprising that SLA s counsel Mr Singh asserted that a clear inference can be drawn in relation to VM s claim of independent map creation when its map maker is unable to even identify an irregularity in a map showing roads that do not as they should lead to the car park in question 37 Apart from their lack of credentials the evidence of Mr Anuar and Mr Rizal did not advance VM s claim that its online maps had been independently created Mr Anuar put VM in a spot when he admitted in his AEIC just how important a part SLA s data played in his map making exercise He stated as follows at para 8 I was provided with a Kangoo vehicle fitted with VM Intellitrac Global Positioning System GPS equipment as well as the Defendants in house GPS tracking software VM Space installed in an IBM laptop for the purpose of the road surveys The vector data licensed from the Singapore Land Authority would already be installed in VM Space for each map area assigned to me emphasis added 38 Realising how damaging his AEIC was to VM s case Mr Anuar sought to delete the above mentioned italicised sentence from his AEIC during the trial Although he now claimed that he did not know what maps were utilised in VM Space his answers during cross examination merely confirmed what he had expressed in his AEIC at para 8 During the appeal VM sought to downgrade Mr Anuar s testimony by calling him a driver This was a desperate move to dilute the value of his evidence as it was clear from Mr Anuar s contract of employment that he had been hired as a surveyor and not a driver 39 Both Mr Anuar and Mr Rizal spoke of verifying altering updating or changing SLA s data when referring to their own map making exercise in their AEICs and during cross examination The following part of the proceedings during the cross examination of Mr Anuar illustrates the position Q What you were doing was when you were conducting your GPS surveys you were using the GPS surveys to verify the data that was in VM Space A It is correct emphasis added 40 Mr Rizal explained that for the online maps on VM s website prior to 9 August 2004 he converted SLA s vector data into a format compatible with VM s software after which he made them more interactive and fully coloured However he claimed that the online maps uploaded on 9 August 2004 were not derived from SLA s vector data For these later maps he claimed to have used the GPS data from his surveyors and traced the roads in a blue line in what was the centre of the roads He then refined and adjusted the blue lines to best reflect where the roads were and he did this with reference to SLA s vector data Thereafter he converted the information into a raster image and superimposed it onto VM s vector data 41 As the new information was superimposed on VM s vector data one is still left with a question as to the source of VM s vector data For this the following extract from the cross examination of Mr Rizal speaks volumes Q When you first created what you say is your vector in 2000 you used SLA s vector to create your own vector A Yes Q You accept that your 2000 vector is derived from SLA s vector A Yes 42 It must be noted that when referring to compilations Copinger and Skone James on Copyright vol 1 Kevin Garnett et al eds Sweet Maxwell 15th Ed 2005 Copinger and Skone James on Copyright stated at p 398 para 7 44 that even to copy the claimant s work but then go to the source to check that the information is correct will be an infringement It was not surprising that SLA s counsel Mr Singh submitted that VM s map making involved nothing other than verification or alteration of SLA s data in VM Space 43 Apart from the above evidence which showed that there was no independent creation by VM the fact remains that VM was unable to give a satisfactory explanation as to why there were so many fingerprints of SLA s works in its own online maps When cross examined on the need to explain fingerprints VM s expert Mr Vincent said as follows Q Would you agree if I say that if there are errors and fingerprints they call for an explanation A Yes I will absolutely agree with that 44 The main map maker Mr Rizal testified that he had come to court without having read Mr Calvert s AEIC which detailed so many fingerprints and that he had not discussed Mr Calvert s report with VM s expert Mr Vincent In view of this he was in no position to deal intelligibly with questions regarding the fingerprints A sample of his answers should be considered 45 When questioned about the non existent short road that purportedly extends from Jurong West Street 23 Mr Rizal s testimony as to why this deliberate error in SLA s vector data found its way into VM s online map made no sense whatsoever The relevant part of the cross examination is as follows Q I f you say that you have these people driving in vehicles tracking by GPS p 365 Vol 1 you have people collecting data for you you have satellite images how did these errors come about A During the creation of this new road there is no log data for this road because this is a restricted area Q This is not a restricted area the road just doesn t exist A My surveyor cannot go into this place Ct But witness there is no such place Any explanation A No emphasis added 46 As for the non existent building numbered 92 which was placed by SLA at the junction of Pitt Street and Jalan Besar Mr Rizal also could not explain why with all the satellite images this non existent building also appeared in VM s online map as late as February 2005 The relevant part of the proceedings is as follows Q Can you see a circle with building numbered 92 Y ou have the same building in VM s map which doesn t exist on the ground Any explanation A No explanation Maybe this is an error made by my team 47 As for the non existent building numbered 6 along Edgedale Plains that had been deliberately placed by SLA in its map Mr Rizal did not effectively counter the allegation of copying When questioned his answer was as follows Q The small building numbered 6 does not exist but the same building finds its way in Defendant s screenshot in Sep 04 Any explanation A No explanation Human error 48 When cross examined on why an incorrectly named building in SLA s data was reproduced in VM s online maps Mr Rizal also had no answer The relevant part of the cross examination is as follows Q Mistake is the same A Human error Q Are you hazarding guesses What sort of answers are you giving now Are you guessing A No I am not guessing It is true Human error There are many involved in doing the updating And there could be old files with the same things Small old files in existence Human error 49 In the light of Mr Rizal s unhelpful testimony it was not surprising that DJ Thian said in her GD at 119 that his unconvincing answers spoke volumes of the sustainability or lack thereof of VM s claims that it did not copy SLA s vector data and that its online maps were a product of independent creation 50 As for why SLA s naming conventions for HDB blocks were reproduced in VM s online maps VM also could not offer a convincing explanation that the similarity has nothing to do with copying When cross examined on this fingerprint VM s shareholder Mr Adrian Khoo Eng Cheng Mr Adrian Khoo who is also a director of Robert J Steiner Pte Ltd a computer software company that collaborated with VM in the creation of the latter s maps said as follows Q The question is that when SLA calls it HDB Alexandra you will call it the same But when SLA calls it HDB Alexandra without the hyphen you will follow A I think my database entry staff overlooked this Ct What is the explanation for the inconsistencies appearing in both SLA and VM s database A I have no explanation emphasis added 51 VM also could not explain why 58 address points were identical When cross examined Mr Adrian Khoo said as follows Q Can you tell us why these 58 are identical A We use a software called the database admin module to update and create our XY address points Apparently there was some misunderstanding on walk up apartments So we sort of left that out Q So will I be right to say that you say you left it out you just followed what was in the SLA address point A Yes emphasis added 52 The conclusion to be drawn with respect to VM s position on the copying of SLA s address point database was summarised by Mr Calvert in the concluding part of his AEIC as follows All the examples bar one indicate that VM has based its address point database on SLA s address point database The modifications of some of the AP s coordinates in the examples suggest in my opinion a deliberate attempt to create the illusion of difference In my opinion it is highly unlikely that VM has generated APs with exactly the same co ordinates without the use of any or all of mapped building boundaries or a common list of co ordinates From my own experience what VM are doing is deliberate obfuscation for if VM had produced APs independently then the chances of having identical co ordinates would be practically nil The example of Annex C indicates that where VM have not copied and that is a minority of cases they are incapable of providing accurate data of the same standard as SLA and more importantly of the same standard to which they claim independent creation 53 As for why the words Jalan and Jln in SLA s maps are followed by VM despite having claimed to have collated information from SingPost Mr Adrian Khoo was at a loss when cross examined on similarities between SLA s data and VM s maps The relevant part of the proceedings is as follows Q As for the use of Jalan and Jln can you explain why you have these identical usages of the terms as in the SLA database A No I can t explain Q So Mr Khoo will I be correct to say that this information you have earlier testified comes from SingPost actually comes from SLA A No Q If you followed SingPost you will not have the issues identified in the illustrations I gave you If this information only appears in SLA s address point how does it find its way into the VM s address point A For this particular information the data was carried over from SLA s address point for HDB naming convention emphasis added 54 SLA s expert Mr Calvert explained that while it was theoretically possible to create maps through VM s professed method of using GPS and satellite imagery the evidence reveals that VM did not follow its own professed method He summed up the position regarding VM s claim of independent map making as follows when he was cross examined In their evidence they say that they have a copy of SLA s vector data within their software and also hard copy of maps which were licensed from SLA so therefore what they have done is to verify the SLA roads and not create a map independently This does not detract from their statement that they have driven

    Original URL path: http://www.singaporelaw.sg/sglaw/laws-of-singapore/case-law/free-law/high-court-judgments/13437-virtual-map-singapore-pte-ltd-v-singapore-land-authority-2008-3-slr-86-2008-sghc-42?tmpl=component&print=1&page= (2016-01-30)
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  • Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd
    crucial issue which therefore arises is whether the Respondent as a body corporate can indeed legally be considered an author of a copyrighted work assuming that this was factually what happened We shall now consider this issue Who is an author 44 First the Act and similarly the Australian Copyright Act 1968 is silent as to the definition of author except to say in s 7 that an author in relation to a photograph means the person who took the photograph As a result the answer to who an author is can only be deduced from other sources 45 A useful starting point is s 9 of the UK Copyright Designs and Patent Act 1988 c 48 UK the 1988 UK Act Section 9 1 of the 1988 UK Act provides that an author in relation to a work means the person who creates it This definition is reiterated in David Hay gen ed Words and Phrases Legally Defined vol I LexisNexis 4th Edition 2007 at p 212 46 Second a closer examination of s 27 of the Act seems obligatory in the light of the Appellant s arguments in order to ascertain the legislative intent of who an author might be Section 27 provides the following Original works in which copyright subsists 27 1 2 Subject to the provisions of this Act where an original literary dramatic musical or artistic work has been published a copyright shall subsist in the work or b if copyright in the work subsisted immediately before its first publication copyright shall continue to subsist in the work if but only if c the first publication of the work took place in Singapore d the author of the work was a qualified person at the time when the work was first published or e the author died before that time but was a qualified person immediately before his death 4 In this section qualified person means a citizen of Singapore or a person resident in Singapore emphasis added 47 The Appellant argued that s 27 of the Act requires an author to be a qualified person and as qualified person has been defined to mean a citizen of Singapore or a person resident in Singapore note 1 in s 27 4 of the Act the Respondent as a body corporate cannot claim to be an author under the Act We have difficulties with this contention 48 The Judge in our view was correct in holding that sub ss 27 2 c d and e of the Act are disjunctive and not conjunctive This is also the settled Australian position see below at 49 Australia as a signatory to the Berne Convention for the Protection of Literary and Artistic Works the Berne Convention had to give effect to Art 3 1 of the Berne Convention which sets out alternative connecting factors based on an author s personal status and the place of first publication of the work Protection will be accorded where one of the connecting factors is established Having acceded to the Berne Convention in December 1998 Singapore has also unambiguously agreed to comply with the minimum terms set out by the Berne Convention In any event as s 27 of the Act was modelled on s 32 of the Australian Copyright Act 1968 we do not think it can be seriously argued that the position in Singapore differs from the Australian one on this 49 Ricketson at para 5 10 confirms that only one of the connecting factors is required by s 32 of the Australian Copyright Act 1968 to be present at the time the type of work or subject matter in question is created or made for copyright to subsist These connecting factors refer either to the personal status of the author or maker of the work or other subject matter at the time of making the personal criterion or to the place of first publication of the subject matter the territorial criterion It is therefore abundantly clear that the personal criterion and the territorial criterion are meant to be alternatives and fulfilling either criterion would suffice 50 We note that George Wei at p 288 fn 118 also takes the same view that s 27 2 essentially sets out two alternative connecting factors for published works namely first publication in Singapore s 27 2 c and the personal status of the author as a qualified person s 27 2 d e It is submitted that it is not necessary under s 27 2 for published works to be both first published in Singapore and made by a qualified person at the relevant time Either factor will do It is submitted that limbs c d and e of s 27 2 do not set out cumulative requirements emphasis in original in italics emphasis added in bold italics Satisfying either the personal criterion or the territorial criterion is sufficient for the work to acquire copyright in Singapore The Judge therefore quite correctly rejected the Appellant s submissions at trial that the author must be a qualified person as this would make s 27 2 d mandatory contrary to the intent of the statute 51 The Judge was also correct when she held that the purpose of s 27 2 was only to ensure that a claim for copyright had sufficient connection with Singapore in order to warrant protection under the Act rather than to provide a definition of who could be an author of a subsisting copyright under the Act see 26 of the Judgment 52 However the Judge erred in declaring subsequently at 25 of the Judgment that although the author of the work must be a qualified person for the purposes of meeting the criteria of s 29 2 d there is no statutory provision that exhaustively states that the only author relevant for all purposes of the Copyright Act must be a qualified person emphasis in original The Judge relied on s 2 of the Interpretation Act Cap 1 2002 Rev Ed the Interpretation Act which defines person to include any company or association or body of persons corporate or unincorporated to substantiate her point and added for good measure that there are also no statutory provisions in the Act which state that an author must necessarily be a living person see 25 of the Judgment 53 While it is true that s 2 of the Interpretation Act defines person as including a company it must be remembered that the words and expressions defined in the Interpretation Act only have the meanings respectively assigned to them in the absence of anything in the subject or context of the relevant statute that is inconsistent with such meanings As a matter of principle in interpreting statutes the general ordinarily gives way to the special or particular 54 It is also interesting to briefly digress and note that an altogether different position has been statutorily adopted in Malaysia In the Malaysian Copyright Act 1987 Act 332 Malaysia the term qualified person has been expanded to include a in relation to an individual a person who is a citizen of or a permanent resident in Malaysia and b in relation to a body corporate a body corporate established in Malaysia and constituted or vested with legal personality under the laws of Malaysia The Malaysian definition of qualified person is thus fundamentally different from the definition in the Act and the Australian Copyright Act 1968 both of which do not explicitly provide for a body corporate It therefore does not come as a surprise that the Malaysian courts have had no difficulty in interpreting the word author as referring not only to natural persons but also to companies see Creative Purpose Sdn Bhd Anor v Integrated Trans Corp Sdn Bhd Ors 1997 2 MLJ 429 However since the Act is silent on this point can it similarly be inferred that non living persons could be authors for the purposes of copyright 55 Returning to the legal position here it is also noteworthy that leading treatises in Australia and England take the view that only natural persons can be qualified persons Ricketson at para 5 20 unequivocally points out that In the context of s 32 of the Copyright Act 1968 Cth equivalent to s 27 of the Act which is concerned with works it is clear that qualified person applies only to natural persons emphasis in original 56 Likewise Kevin Lindgren QC et al Copyright and Designs vol 1 LexisNexis 2004 at para 12 040 states It is important to note that a body corporate cannot be a qualified person in relation to original works The reason for this is that the qualified person and first owner of copyright in an original work is the author and although a body corporate may be the copyright owner by virtue of the operation of a contract of employment an assignment or in any of the other ways expressly provided for in the Australian Copyright Act 1968 it cannot be an author emphasis added We also note that Copinger at para 4 10 has taken the view that w ith very limited exceptions such as computer generated works and old photographs the author of these categories of work must be a natural person The fact that one person is acting as employee of another cannot affect the question of authorship nor can the fact that one person is an agent for another emphasis added With these views in mind we will now excavate further the historical and legislative policy considerations undergirding this issue A non living author 57 The 19th century saw the emergence of the European doctrine of droit moral under which authors intellectual and creative rights in their works were recognised in addition to their purely economic rights Continental jurisdictions therefore regarded an author s work as an emanation or extension of his or her personality inseparably linked with his or her honour and reputation and thus deserving of a long period of protection see Ricketson at para 6 55 This concept naturally leads to the conclusion that an author must be a human being 58 Hugh Laddie et al The Modern Law of Copyright and Designs vol 1 Butterworths 3rd Ed 2000 Laddie points out at para 10 8 that the Berne Convention is concerned with the rights of human authors to their original literary dramatic musical and artistic works As a consequence Laddie further observes thatthe Continental legal tradition has always been to regard the author s right to his property as the starting point and to look upon limitations to its term as a regrettable necessity It is because of this that Art 7 of the Berlin Revision of the Berne Convention in 1908 provided that the term of protection should include the life of the author plus 50 years after his death The extension of the term of copyright was inextricably linked to increased life expectancies at that time 59 The UK s approach to the duration of copyright has been slightly different from that of the Continental jurisdictions in that those who seek legislation in favour of exclusive privileges which restrain trade and freedom of communication ought to show that they are justified in the public interest see Laddie at para 10 8 This approach equally takes into account the fact that the starting point of copyright is a human author Both the UK Copyright Act 1911 and the 1988 UK Act have provided for the term of protection as the author s life plus 50 years This was supposed to reflect two generations of heirs of the author However with increased life expectancy in developed countries especially in regional groupings where the majority of member countries are developed with relatively high standards of living such as the European Union it was unsurprising that the European Commission issued a directive in 1993 which increased the post mortem auctoris period to 70 years and this has been implemented in the UK since 1995 60 Since the duration of copyright protection has always been based on the author s life expectancy and the rationale for the post mortem auctoris term was so as to benefit two generations of the author s heirs it is patently clear that incorporated bodies were never contemplated to have been authors for the purposes of copyright It would be absurd to suggest that a company could have a lifespan let alone generations of heirs Thus it must follow that authors have to be living persons 61 However the Judge found that there was no difficulty in accepting that an incorporated body could be the author of an original work see 31 of the Judgment The Judge considered that it would be at 32 of the Judgment consistent with the statutory regime found in the Act if the copyright in the work is found to expire 70 years after the expiration of the calendar year in which the work was first published This is provided for in ss 28 3 and 29 of the Act in situations where a work is unpublished before the death of the author or where it is an anonymous and pseudonymous work 62 In our view the Judge plainly erred on this point Neither of these scenarios is present in this case There was no posthumous publication because if the Respondent qualifies as the author of the Tables Punters Way would have been published during the lifetime of the Respondent Similarly if the Respondent was the author of the Tables then the Tables cannot possibly be an anonymous or pseudonymous work and s 29 does not apply The prerequisites for the operation of either section have not been satisfied by the Respondent 63 Sections 28 and 29 of the Act are in pari materia with ss 33 and 34 of the Australian Copyright Act 1968 It has been established that the rationale of these provisions is to encourage the ultimate disclosure and dissemination of protected works and the information and knowledge that they contain This objective would not be achieved if such works remain protected indefinitely and are withheld from the public domain Superimposing ss 28 3 and 29 onto the factual matrix at hand would be wrong as these provisions plainly do not contemplate scenarios where an incorporated body is an author Since it is not possible to rely on the date of publication as the litmus test for the expiry of the copyright it appears that if a company qualifies as an author it would possess an indefinite and extraordinary perpetual copyright to its work Pertinently we should add sub ss 28 3 and 28 5 of the Act expressly refer to the death of an author as the reference event for copyright protection in certain instances Why would this be the case if non living authors were intended to be embraced by the Act 64 The rationale underpinning copyright protection is not about the utility of the work but rather the protection of the originality of the expression employed to communicate ideas It is therefore unhelpful to say that the contents in a compilation will become obsolete irrelevant or useless after some time and therefore not worth copying or protecting for as long as there is evidence of originality in the work protection is conferred Even if the work becomes obsolete after time the copyright owner would still be able to bring an action against anyone who utilises the work for an infringement of copyright regardless of the relevancy of the work at that time Should companies and like entities qualify as authors they would be entitled to claim a perpetual monopoly over their works to maximise the economic returns of copyright protection This would be contrary to the underlying policy of the Act which is to accord copyright protection for a limited duration that best strikes a balance between the competing public and private interests see above at 26 29 65 It also seems obvious that authorship by a company could never have been contemplated by the Statute of Anne as companies operating as distinct legal entities were not a typical feature of commerce when it was enacted In the UK prior to the mid 19th century incorporation was only done by way of royal charter or by private Act of Parliament However the Crown and Parliament were usually suspicious of lending their dignity and the benefits of separate personality to commercial organisations As a result most joint stock companies did not have separate legal personality Parliament finally permitted the incorporation of companies by registration when it passed the Joint Stock Companies Act 1844 7 8 Vict c 110 UK 66 It was only in the late 19th century that there was a proliferation of incorporated entities in the UK and whereupon a registered company could acquire separate personality upon registration This principle of separate legal corporate personality was affirmed in the celebrated case of Aron Salomon v A Salomon and Company Limited 1897 AC 22 67 From the foregoing it is clear that the historical origins of the Act envisaged rights to be accorded to natural persons and not corporate bodies and that legal rights flowed only from human authorship In addition it is telling that the duration of copyright in subject matter other than works is merely stated as continuing to subsist until the expiration of 70 or 50 years after the expiration of the calendar year in which the recording film broadcast was first published made Our views are further fortified by the recent decision of the Australian Federal Court of Appeal in Telstra Corporation Limited v Phone Directories Company Pty Ltd 2010 FCAFC 149 the Telstra Appeal where two members of the quorum stated unequivocally at 100 and 134 that under Australian law an author had to be a human author 68 We note that the Judge also relied on the case of Alteco Chemical Pte Ltd v Chong Yean Wah trading as Yamayo Stationery Manufactuer 1999 2 SLR R 915 Alteco to support the proposition that an incorporated body could be the author of a copyright protected work In that decision it appears that a modern interpretation of authorship was created suggesting that the author had become the person who made the necessary arrangements and paid for the creation of the work A company could therefore be the author of the work if its employees created the work product 69 However the High Court in Alteco did not expressly declare that a company could be an author of a work a point acknowledged by the Judge Further the decision in Alteco seemed to have blurred the distinctions between the concepts of authorship and ownership In Tan Tee Jim SC and Ng Loy Wee Loon Intellectual Property Law 2000 1 SAL Ann Rev 230 at 235 237 251 Tan and Ng the authors observe that the Alteco case failed to make the distinction between authorship and copyright ownership in s 30 of the Act As Tan and Ng rightly point out in essence what the Court did was to imply a constructive trust against the author of the work thereby allowing the parent company to own the work and there was no necessity for a modern interpretation of the word author 70 This view has been similarly reiterated in George Wei at pp 1391 1393 He points out that the Act adequately governs the law on ownership even for foreign works which enjoy copyright in Singapore Additionally it is observed that the person who made arrangements for the production of a work or who paid for the work as in the case of Alteco would not be entitled to claim to be the author of the work as this did not generally relate to authorship skills We agree Alteco s innovative tailoring of the term author ought not to be followed 71 It must be emphasised that a work created by an employee author has a limited duration dependent on the life of the employee even if first ownership vests in the employer Thus while the law accepts that a person other than the author may be a first owner the question of who the author is remains a distinct and an important one 72 We therefore reject the Respondent s argument that an author for the purposes of copyright law can and should extend to corporate entities It would clearly be against public policy to allow copyright protection in perpetuity This would be the scenario should a company be deemed capable of being an author for the purpose of copyright Section 2 of the Interpretation Act ought not to be incorporated into the rubric of copyright law and an author must be a natural person in copyright law Can a natural author be identified 73 The identification of an author is still pertinent as s 27 of the Act provides that in order for copyright to subsist in a work the work must be original As mentioned in 40 above originality is closely related to the author This principle was recently affirmed in Telstra Corporation Limited and Another v Phone Directories Company Pty Ltd and Others 2010 FCA 44 Telstra Gordon J masterfully condensed the position thus at 20 originality under the Australian Copyright Act 1968 means that the creation of the work required some independent intellectual effort and or the exercise of sufficient effort of a literary nature E ach phrase confirms that for a work to be sufficiently original for the subsistence of copyright substantial labour and or substantial expense is not alone sufficient More is required What that more is will of course vary from case to case but must involve originality by an identified author in an identified work emphasis added 74 In the Telstra Appeal at 32 Keane CJ heartily affirmed Gordon J s dicta Authorship and originality are correlatives The question of whether copyright subsists is concerned with the particular form of expression of the work You must identify authors and those authors must direct their contribution assessed as either an independent intellectual effort of a sufficient effort of a literary nature to the particular form of expression of the work Start with the work Find its authors They must have done something howsoever defined that can be considered original emphasis added 75 We agree with this approach An author must first be identified before the work in question can be deemed to be original In fact the Respondent s counsel acknowledge in the Respondent s skeletal submissions that all that is required for the test for originality is that the work originates with an author or joint authors from some independent intellectual effort Since the Respondent is unable to assert that it is the author of the work as a body corporate the remaining question at this juncture is whether the Respondent is even able to identify specific human authors of the Tables To avoid doubt we should add that it is not necessary to name each and every author to make out a claim for copyright protection but it has to be shown that the work product in question has been generated from human author s working alone or collaboratively ie the existence of such persons must be clearly established 76 The Respondent s witness Phan Tjun Sern Phan had stated in his Affidavit of Evidence in Chief AEIC note 2 that Punters Way was a continuing project developed from ideas and valuable contributions by racing professionals and readers However ideas and contributions put forward by the readers and horse racing experts would not be protected by the scope of copyright as copyright protects the material form of a work and not the ideas in the work Even if the suggestions could be protected the readers and horse racing experts were not employees of the Respondent and correspondingly the Respondent would not be able to claim copyright ownership of the Tables if any 77 Further relying on a passage in Laddie at para 3 94 the Respondent submits that the definition of a literary work includes a compilation and the author of such a work is the person who gathers or organises the collection of material and who selects orders and arranges it The Respondent then contends that as its employees were the people who gathered organised selected ordered and arranged the information and data they were the authors of the Tables which was an original work capable of being protected by copyright 78 However we hesitate to accept this definition of authors in this situation Although the contributions of these individuals may have led to the compilation of the work they were not part of the actual process of compilation In this context the Telstra Appeal at 92 is instructive It affirmed that where the work of individuals was not collaborative but was instead merely organised to facilitate the production of the work this would not be collaboration of the kind contemplated by the definition of joint authorship 79 Here the collection of the horse racing data such as the horses and jockeys names as well as their track work records and the organisation and selection of such data were either computerised or done by separate people However each individual s responsibility and contribution which has not been particularised was based on the evidence before us insufficient to render the individual an author or joint author of the Tables 80 It certainly cannot be said that a reader who writes in with suggestions for the improvement of the publication can be considered an author Neither can the IT employee who entered the names of the horses in a race be considered an author of the compilation Although it is undeniable that both contributed to the end product data aggregation or input is not creativity 81 Not infrequently in cases involving a high degree of automation there will be no original work produced for the simple reason that there are no identifiable human authors This may well be the reason why the Respondent was unable to identify any particular individual or individuals or a specific group of people as being the human authors of the Tables However whatever the case may be it is clear that copyright cannot subsist without a human author and the Respondent is unable to even begin to satisfactorily identify any author let alone authors It remains unclear who was responsible for the compilations Even assuming arguendo that the Respondent s employees had some authorship role in the compilations the evidence did not satisfactorily establish when copyright protection attached 82 In the circumstances without the identification of a human author from whom the work originates there can be no original work capable of copyright protection We therefore find that the Respondent s claim that copyright subsists in the Tables that were authored by it fails The statutory presumptions 83 Additionally the Act contains statutory presumptions designed to assist a claimant in a copyright action for infringement of copyright We now examine these presumptions to determine if they can assist the Respondent s claim 84 The Judge found at 35 of the Judgment that the presumption under s 131 of the Act applies where a name purporting to be that of the author of a literary work appeared on copies of the work as published then it shall be presumed unless the contrary is established that the person is the author of the work The Judge therefore accepted that the Respondent was the author of the Tables as its name appeared on Punters Way and the onus was on the Appellant to disprove the Respondent s authorship 85 It is pertinent however that the Respondent itself acknowledges that s 131 of the Act is not applicable in the present circumstances as the Respondent s name appears only as Publisher in Punters Way and not as the author 86 The statutory presumption which the Respondent might be entitled to rely on would be s 132 of the Act which provides Presumptions in relation to publisher of work 132 Where in an action brought by virtue of this Part in relation to a literary dramatic musical or artistic work section 131 does not apply but it is established a that the work was first published in Singapore and was so published during the period of 70 years that ended immediately before the commencement of the calendar year in which the action was brought and b that a name purporting to be that of the publisher appeared on copies of the work as first published then unless the contrary is established copyright shall be presumed to subsist in the work and the person whose name so appeared shall be presumed to have been the owner of that copyright at the time of the publication As the Respondent is identified as the publisher in Punters Way the Respondent contends that copyright subsists in the Tables and the Respondent would be presumed to be the owner 87 Section 128 of the Australian Copyright Act 1968 is in pari materia with s 132 of the Act and this issue was comprehensively dealt with in Telstra We agree fully with Gordon J s analysis on s 128 of the Australian Copyright Act 1968 equivalent to s 132 of the Act at 37 In my view the Applicants reliance upon ss 128 and 129 is misplaced Each section reinforces the importance of identifying the author or authors of the work in suit In understanding the operation of the presumptions it is important to note the distinction between identifying an author or authors of the original work and the identity of the author or authors of the original work Lest it be overstated the Australian Copyright Act 1968 fixes on the author or authors If an author or authors within the meaning of the Australian Copyright Act 1968 cannot be identified at all in contradistinction to a situation where the author s or authors exact identity cannot be identified copyright cannot subsist On a reading of ss 128 and 129 it is the latter situation to which the Australian Copyright Act 1968 is directed emphasis in original in italics emphasis added in bold italics 88 The Respondent also relies on the case of Waterlow Publishers Ltd v Rose 1995 FSR 207 Waterlow which referred to the presumption in s 20 4 of the UK Copyright Act 1956 4 5 Eliz 2 Ch 74 which is similar to s 132 of the Act In Waterlow the fact that the publisher s name appeared on the copies of the work was enough to justify a finding that the presumption applied in accordance with the intention of s 20 4 Even though there were no identifiable authors copyright was held to nonetheless subsist in the relevant work with the publisher being the owner of the copyright 89 However cases which have relied on the equivalent of the s 132 presumption such as Waterlow and Microsoft Corporation v DHD Distribution Pty Ltd t as Austin Computers 1999 45 IPR 459 did not deal with the scenario where the very fact of authorship took centre stage Further the presumption was also not decisive in the dispute and it was not argued in those cases that an author could not be identified at all These cases are therefore of limited assistance here We also note that Waterlow appears to be an ex tempore decision This is another reason why undue deference should not be accorded to it 90 Laddie at para 3 94 states that where no name purporting to be that of the author appears on the work as first published but that of the publisher appears there is potentially available under s 104 4 of the 1988 UK Act a presumption that the named person was the owner of the copyright at the time of publication However Gordon J in Telstra at 39 thought that at its highest this passage merely suggests that it may be necessary in particular instances to rely upon the statutory presumptions Further these presumptions have little or no role to play where the question of subsistence of copyright in each of the works is the central issue between the parties 91 Pertinently it has also been observed in Laddie at para 39 85 All that the presumption does is to compel the court to reach the appropriate conclusion in the absence of evidence to the contrary If the opponent does offer evidence in rebuttal sufficient to satisfy the legal requirement of some evidence the presumption disappears and the case is in the court s hands free from any rule emphasis in original As authorship is in dispute in the present case and the Appellant has adduced evidence that copyright does not subsist in the Tables since there is no author the s 132 statutory presumption has been displaced 92 We round up our analysis of this issue by emphasising that it is settled practice that the necessary elements of authorship ownership validity and subsistence must be adequately pleaded for cases involving copyright infringement see Bullen Leake Jacob s Precedents of Pleadings vol 2 Lord Brennan and William Blair gen eds Sweet Maxwell 14th Ed 2001 at para 66 Q1 The Respondent has found itself in a quandary having pleaded that the company is the author of the Tables and having maintained this stance throughout the High Court proceedings Had the Respondent merely pleaded to be the owner of the copyright as the presumed owner of the copyright assigned to it by its employees the Respondent would still have had the locus standi to maintain a claim of infringement against the Appellant The Respondent tried to salvage its case by initially submitting to this Court that the Respondent is both the author and owner of the Tables However in the course of the hearing of this appeal the Respondent abruptly changed tack and submitted that it was primarily arguing its case on the basis of ownership and alternatively authorship 93 Regrettably such a course was no longer open to the Respondent on the basis of its pleaded case and the conduct of the proceedings below It had unequivocally nailed its colours to the mast and the Appellant had contested the case on that basis The Respondent cannot now rely on an alternative claim of ownership which was neither pleaded nor advanced in the proceedings below Summary of the First Issue 94 In summary the concept of authorship is integral to copyright and no such protection can be accorded without an author from which an original work emanates and from which the legal rights flow We can do no better than to reiterate the views of Gordon J in Telstra at 35 A uthorship is central to the determination of whether copyright subsists To suggest that copyright does not require the identification of authors where a work is sufficiently original puts the cart before the horse It ignores the fact that it is the original work of an author or authors who contribute to the particular form of expression of the work and reduce the work to a material form that is the act giving rise to the statutory protection of copyright 95 As the Respondent could not identify a human author or authors and we find that an incorporated body cannot be an author of a copyrighted work we reject the Respondent s assertion that it was entitled to copyright protection qua author Accordingly we do not find that copyright subsists in the Tables The Second Issue If the Respondent is entitled to copyright protection has the Appellant infringed its rights 96 As we disagreed with the Judge that the Respondent is entitled to copyright protection it is strictly speaking unnecessary for us to delve into the issue of copyright infringement at all However out of deference to counsel who have made extensive submissions on this issue we shall briefly give our views

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  • Hunter Manufacturing Pte Ltd and Another v Soundtex Switchgear & Engineering Pte Ltd and Another Appeal No 1[2000] 1 SLR 401; [1999] SGCA 88
    articles and to the application of such designs to such articles Again the Act does not apply to the things to which a design is applied the Act applies to the design applied to them The distinction is obvious enough when the design is for a pattern or ornament but when as in this case the design is for the shape of a thing the distinction is reduced to the difference between the shape of a thing and a thing of that shape A design applicable to a thing for its shape can only be applied to a thing by making it in that shape A design for the shape of something is what is meant by s 60 when shape is in question and a registered design for a shape of a thing is infringed if that thing is made in the shape shown by the registered design see s 58 In Dover Ltd v Nurnberger Celluloidwaren Fabrik Gebruder Wolff 1910 2 Ch 25 27 RPC 498 where it was held by the Court of Appeal that the design of a hand grip for the handle of a bicycle was not new or original Buckley LJ said at 1910 2 Ch 25 28 27 RPC 498 503 From s 93 the definition section of the Patents and Designs Act 1907 I learn that a design means something which is applicable to an article by or any other means whatever manual mechanical or chemical Design means therefore a conception or suggestion or idea of a shape or of a picture of a device or of some arrangement which can be applied to an article by some manual mechanical or chemical means It is a conception suggestion or idea and not an article which is the thing capable of being registered It may according to the definition clause be applicable to any article whether for pattern or for the shape or configuration or for the ornament thereof that is to say of the article or for any two or more of such purposes The design therefore is not the article but is the conception suggestion or idea of a shape picture device or arrangement which is to be applied to the article by some one of the means mentioned in the definition clause It is a suggestion of form or ornament to be applied to a physical body 32 A design therefore is a conception of features of shape configuration pattern or ornament applied to an article and reduced to visible form so as to be identifiable either by being embodied in the actual article or by being placed upon it in such a way that they are clear to the eye In the present case we need only be concerned with the shape and configuration of the design Of shape and configuration Buckley LJ in Gramophone Co Ltd v Magazine Holder Co 1910 27 RPC 151 159 had this to say A design within the Act may be one applicable to an article for the shape or configuration That is the head under which this design falls These two words shape and configuration are not I think tautologous The word shape prima facie imports and certainly includes the external form of the article Configuration conveys the idea not of the external form only but of the construction of a composite article The word configuration imports the arrangement by which the shape of a composite article is arrived at 33 In order to be registrable a design has to satisfy two criteria under s 1 1 of the UK Act First there is the positive criterion which so far as relevant here is that the design has features of shape and configuration which in the finished article appeal to and are judged by the eye ie the eye appeal Second there is the exclusionary part which excludes features of shape and configuration which are dictated solely by the function which the article has to perform Applying the statutory definition here what we need to consider are the features of shape and configuration as applied to AMB box which appeal to and are judged by the eye but excluding from the design features which are dictated solely by the function the AMB box has to perform 34 Both these criteria the positive and exclusionary for determination of a design were considered by the House of Lords in AMP Inc v Utilux Pty Ltd 1972 RPC 103 which concerned a registered design of an electrical terminal used in washing machines The House held that the features of shape or configuration in the design of the terminal fell within the exclusionary provision and therefore the registration was invalid In dealing with the question of eye appeal of the terminal Lord Morris of Borth y Gest in his speech said at pp 112 113 The question is raised as to the sense in which the features in a finished article are to appeal to and are to be judged solely by the eye I think that it is clear that the particular feature which is in question or under consideration must be seen when the finished article is seen But the words of the definition point in my view to considerations other than that of merely being visible The phrases appeal to and judged solely by the eye denote features which will or may influence choice or selection The eye concerned will be the eye not of the court but of the person who may be deciding whether or not to acquire the finished article possessing the feature in question This does not mean that the appeal or attraction must be to an aesthetic or artistic sense though in some cases it may be The features may be such that they gain the favour of or appeal to some while meeting with the disfavour of others Beyond being merely visible the feature must have some individual characteristic It must be calculated to attract the attention of the beholder Thus Lord Avonside in one case GA Harvey Co London v Secure Fittings Ltd 1966 RPC 515 said that for a design to appeal it must be noticeable and have some perceptible appearance of an individual character In the same case he referred to what had been constructed as being of a distinctive shape or configuration which appeals to the eye and that shape or configuration is an addition to or embellishment of the fundamental form of such a unit and is not dictated solely by function In another case Swain Matthew Ltd v Thomas Barker Sons Ltd 1967 RPC 23 Lloyd Jacob J spoke of artistic variants which had imported genuine design characteristics and of a striking feature making an immediate appeal to the eye On the same issue Lord Pearson said at p 121 The phrase is naturally to be read as importing some limitation of the expression features of shape configuration pattern or ornament Not all such features constitute a design It is not reasonable to suppose that the only limitation is that the features are visible in the finished article If that had been the intention it could have been expressed much more simply The emphasis is on external appearance but not every external appearance of any article constitutes a design There must be in some way a special peculiar distinctive significant or striking appearance something which catches the eye and in this sense appeals to the eye His Lordship then dealt specifically with the design in question at pp 122 123 I will now consider the features of shape or configuration which are alleged to constitute the design in the present case The article in respect of which the designed is registered is called a terminal but in fact it forms an electric connection between two electric conductors On being merely looked at it does not make any appeal to the eye It has no feature of shape or configuration which is special peculiar distinctive significant or striking There is nothing in its appearance which catches the eye It is not intended to be looked at it is to form part of the interior mechanism of the washing machine and would not normally be seen by anyone except a maintenance engineer If it had any eye appeal that would be wasted but I do not think it has any An experienced electrical engineer if he examined it carefully before it was incorporated in a machine might be able to envisage it in operation and form some provisional opinion as to its probable efficiency when tested in operation But he would be judging it by the mind for efficiency not by the eye for appearance 35 Thus the test of eye appeal is not simply that of a mere visual appreciation which takes account of the thing seen without any particular reaction being generated thereby To have eye appeal the design must have individuality of appearance it must be calculated to attract the attention of the beholder and therefore it must be in some ways special peculiar distinctive significant or striking It must not merely be visible but also be noticeable and have some perceptible appearance of an individual character Function 36 The exclusionary part of the statutory definition was also considered by the House of Lords in AMP v Utilux It was argued that the exclusion only applies in cases where a design is created with features of a particular shape or configuration because of the function the finished article to which the design applied has to perform Thus if the function of the article requires the design to be created in a certain shape or with a certain configuration only then and only then are its features dictated solely by function It was shown there that in relation to the electrical terminals numerous alternative shapes of terminal could have been used for the relevant washing machines and it was therefore argued that the design of the respondents terminal was outside the exclusionary provision These arguments were roundly rejected for if they were correct the statutory exclusion would have virtually no effect Lord Reid said at p 109 The respondents argument is that a shape is only dictated by function if it is necessary to use that precise shape and no other in order to perform the function Admittedly if that is the meaning the scope of this provision would be reduced almost to vanishing point because it is difficult to imagine any actual case where one shape and one shape alone will work Lord Pearson at p 122 also rejected the argument that a shape is only dictated by function if it is necessary to use that precise shape and no other in order to perform the function and held that if the shape is not there to appeal to the eye but solely to make the article work then this provision the negative part of the definition excludes it from the statutory protection In his opinion the phrase dictated by in the statutory definition means attributable to or caused or prompted by 37 Where a shape is adopted by a designer upon the sole requirement of functional ends ie to make the article work and not to appeal to the eye then the provision excludes it from statutory protection Lord Morris said at p 113 In the present case the terminal was simply devised so that it should do the job It was to perform the function that was defined by Hoover s requirements The terminal is I think to be considered as and looked at as a unit But if its constituent parts are considered I think that on the evidence each one was solely devised so that it should correctly perform its own particular function There was nothing extra There was nothing that could be regarded as any kind of embellishment First and last and all the time the key note was functional success The terminals unseen in the machines for which they were required save by those who make or service the machines had only to pass the test of being able to perform their functions They would be judged by performance and not by appearance Then responding to the contention that the exclusion only applies where a designer has no option because of the function which the article has to perform other than to make it in one particular shape Lord Morris continued at p 114 I am unable to agree with this view The contrast pointed to in the concluding words of sub s 3 is between on the one hand features either of shape or of configuration or of pattern or of ornament which have been added or applied to an article because in the finished article those features will appeal to the eye and will be judged solely by the eye and not be judged by any other test such as that of utility or on the other hand features of shape or configuration pattern or ornament being now omitted which are purely functional or in other words features of shape or configuration only brought about by or relevant to considerations of the functions which the article to be made in that shape or configuration will have to perform In my view the features of shape of AMP s terminals are essentially within the latter grouping and they will not be withdrawn from that grouping even though there might be an alternative or other shapes of terminals which would also fall within such grouping 38 Finally of the argument raised by the respondents that as there could be variations of shape in terminals that would successfully do what was required of them the features of shape were not dictated solely by the function which the terminals would have to perform Lord Morris said at p 113 In my view this contention is not sound If there are alternative features of shape but if each one is dictated solely by the function which is to be performed by the article then each one would be excluded from the expression design Later his Lordship reverted to the same point and said at p 115 The circumstance that other shapes of other terminals might also be dictated by the function to be performed by them will not alter the fact that the shape of Amp s terminals was dictated only by functional considerations and not also by the added consideration of making an appeal to the eye 39 In order to be excluded from registration under the exclusionary part of the statutory definition ie features dictated solely by function it is necessary that all of the features of the design should be so dictated If some features are dictated by function and others are not and the features have eye appeal then the design is registrable This was one of the points decided by the Privy Council in the case of Interlego AG v Tyco Industries Inc 1989 1 AC 217 1988 RPC 343 to which we now turn 40 In that case the plaintiffs were the proprietors of the well known Lego bricks which are toys for children and are plastic bricks with round knobs and clutches which enable the bricks to be interlocked so that a child could construct buildings or other objects One of the issues raised was whether the design had any eye appeal not solely dictated by the function the bricks had to perform The Privy Council held that the actual shape and dimensions of the knobs and tubes were not dictated solely by the function of the bricks and that the bricks were designed in part at least with a view to the appearance of the article as a whole In other words the design incorporated mixed functionality and ornament Lord Oliver of Alymerton delivering the judgment of the Privy Council said at 1989 1 AC 217 242 1988 RPC 343 353 354 Nothing is to qualify as a design at all unless it has features which appeal to and are judged solely by the eye a requirement conveniently paraphrased by saying that the finished article must have eye appeal That much is clear from the definition What is less clear is the ambit of the exclusion There are apart from authority three possible constructions of the definition taken as a whole as was pointed out by Megaw LJ in the Court of Appeal in AMP Inc v Utilux Pty Ltd 1970 RPC 397 at p 433 It could mean that all that is registrable or is to be considered in connection with an application for registration is that part of the shape or configuration which has eye appeal any purely functional feature being excluded from registration Alternatively it could mean that any design which includes any feature which is dictated solely by function is to be excluded from registration Or finally it could mean that a design which ex hypothesi has eye appeal will be excluded from registration only if every feature of it is one which is dictated solely by function No one has contended for the first of these possibilities and such a construction would indeed make very little sense In approaching the definition it is always to be borne in mind what is to be registered It is a shape configuration or pattern to be applied to a particular specified article and it is the shape or configuration of the whole article in respect of which there is to be a commercial monopoly That necessarily involves taking the design and the article as a whole Thus the effective choice must be between excluding the whole shape or configuration from registration because there is a part of it that is purely functional or treating the whole shape or configuration as registrable assuming that it has eye appeal unless the whole of it is dictated solely by functional considerations In their Lordships view the latter construction is the one which makes better sense and it is in fact the construction which is supported by the authorities What is contemplated here is that an article and that must mean the whole of the article and not simply a part of it is to be made in a particular shape or configuration Thus the shape or configuration as a whole is being applied to the article as a whole It then has to be asked is that shape or configuration ie the shape or configuration of the whole article dictated solely by the functional purpose Moreover it makes no sense to exclude from registration designs for articles which have and indeed may be intended to have as their principal attraction a distinctive and novel appearance merely because they contain also features perhaps even very minor ones which are dictated by functional requirements His Lordship then considered the decision of the House of Lords in AMP and stated the principles to be deduced from it as follows at 1989 1 AC 217 243 244 1988 RPC 343 355 First the primary essential before a shape can be registered as a design is that it should have eye appeal and in this context a the eye is that of the prospective customer and b the appeal is that created by a distinctiveness of shape pattern or ornamentation calculated to influence the customer s choice Secondly the negative part of the definition does not involve in order to demonstrate that a particular shape is dictated solely by function showing that the function could not have been performed by an article in some other shape All that has to be shown is that the relevant features of the shape were brought about only by or are attributable only to the function which the article in that shape is to perform even if the same function could equally well be performed by an article of a different shape Thirdly if every feature of the shape is one which is attributable solely to the function which the finished article is to perform then the exclusion operates even though the shape may also have eye appeal 41 Dealing with the design in question Lord Oliver said at 1989 1 AC 217 248 1988 RPC 343 359 Thus although the presence of knobs and tubes is no doubt attributable simply and solely to the functional purpose of providing clutch power the actual shape and dimensions of the particular knobs and tubes employed for that purpose were not dictated solely by their function but in part at least with a view to the appearance of the article as a whole This evidence cannot be ignored and in their Lordships view it necessarily negatives any conclusion that the shape or configuration of the Lego brick is dictated solely by the function which it has to perform It is a shape which in their Lordships opinion not only clearly has eye appeal but has also significant features both of outline and proportion which are not dictated by any mechanical function which the article has to perform as part of a construction set Design of AMB box 42 We now turn to the question whether the registered design in this case as applied to the AMB box possesses features of shape and configuration which appeal to and are judged by the eye The essence of the eye appeal as derived from AMP v Utilux and Interlego v Tyco supra is the distinctiveness of shape or configuration calculated to influence the customer s choice It is not sufficient that the features in question be merely visible there must be something special peculiar distinctive significant or striking about them something calculated to attract the attention of the beholder or which may or will influence the choice or selection by customers The registered design here as embodied in the AMB box is not merely visible it is more than that It has an individuality of appearance and is calculated to attract the attention of the beholder and influence the choice or selection by customers As embodied in the AMB box the design reveals an article which is functional yet attractive This is apparent from the way in which it is constructed its shape and configuration its modular sections and streamlined proportions 43 Turning to the exclusionary part of the statutory definition the trial judge arrived at the conclusion that the registered design was not dictated solely by the function the meter box has to perform In our opinion this conclusion is correct The trial judge was further of the view that there can be any number of designs that can perform the same functions and that appeared to be one of his reasons for the conclusion he arrived at However in our view the fact that there can be any number of designs that can perform the same functions is not a valid or sufficient reason It does not necessarily follow that because alternatives to the registered design exist the registered design is not dictated solely by the function the AMB box has to perform The crucial question here is whether this particular registered design is dictated solely by the function which the AMB box has to perform The answer is clearly in the negative In our judgment for the reasons given the features of shape and configuration of the registered design as manifested in the AMB box have eye appeal and are not dictated solely by the function the box has to perform The finding of the trial judge on this point is correct Novelty at the date of application for registration 44 We now turn to the second requirement for registrability of a design under the UK Act which is that the design is new at the date of application for registration This is governed by sub ss 2 and 4 of s 1 which so far as relevant are as follows 2 A design which is new may upon application by the person claiming to be the proprietor be registered under this Act in respect of any article or set of articles specified in the application 4 A design shall not be regarded as new for the purposes of this Act if it is the same as a design a or b published in the United Kingdom in respect of the same or any other article before the date of the application or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade In considering the application of these provisions to the case at hand two questions arise first whether the registered design was anticipated by any prior art and second whether there was any prior publication of the design Prior art 45 The prior art which counsel for Soundtex contends anticipated the registered design was the design for the SMB III box which was in use prior to the application for registration of the design of the AMB box It is contended that the design of the AMB box is the same or substantially the same as that of the SMBIII box The SMB III box had been in existence since 1993 and had been used in the HDB tender documents since 1994 The SMB III box is also rectangular in shape but larger than the AMB box with the MCB and the isolator being housed at the top with two flaps respectively for gaining access to them and the kilowatt meter at the bottom with a protrusion having a window with a perspex or glass cover so as to enable one to read the meter without opening the box The trial judge found that when the two designs were compared there are sufficient differences between the SMB III box and the AMB box to prevent the former from constituting prior art These differences are a the SMB III box has only one compartment as opposed to two in the AMB box b the flaps in the SMB III box for the MCB and the isolator are more squarish compared to the rectangular flaps in the AMB box c the protrusion in the SMB III box is greater than that in the AMB box and has a different angle d the SMB III box has protruding gland plates while those in the AMB box are flush and e the SMB III box has a protrusion at the top for the hinge which the AMB box does not have If the two designs are placed side by side one can immediately notice that they are different 46 Counsel for Soundtex challenges this conclusion It is argued that the differences enumerated did not relate to the shape or configuration of the registered design and that the registered design of the AMB box is the same or substantially the same as that of the SMB 111 box and that it differs from the latter only in immaterial details or in features which are variants commonly used in the trade Consequently there is no substantial novelty in the registered design compared to the SMB III box 47 Counsel for the plaintiffs on the other hand repeats the differences set out by the trial judge and further points to the features of shape and configuration present in the registered design which are not found in the SMB III box They are as follows Front view a The registered design comprises a rectangular box the main box with two rectangular covers demarcating two compartments b there is a substantial depressed gap between the top and bottom covers c the top and bottom covers do not cover the entire front view of the main box d the edges of the top and bottom covers corresponding to the edges of the main box are not flush with the respective edges of the main box e there are no protrusions at the top bottom or sides of the registered design and f there are two slim flaps on the top cover separated by a space of equal width Top and bottom views a There are no substantial protrusions or depressions on the top or bottom and b there are two gland plates on the top Side view a There are two compartments and b there is a depressed gap between the top and bottom covers of the two compartments 48 We do not agree with the contentions of counsel for Soundtex that the differences identified by the trial judge did not relate to the shape or configuration of the registered design They clearly do Looking at the two designs and comparing them as the trial judge did it is immediately apparent to us that the registered design as manifested in the AMB box possesses sufficient differences to set it apart from that as manifested in the SMB III box The trial judge pointed out five differences between the AMB and the SMB III box and there are other differences pointed out by counsel for the plaintiffs The most material differences are the following First the striking feature which is present in the AMB box but absent in the SMB III box is the division into two compartments with a clear and distinct dividing space between them The upper compartment contains the MCB and the isolator and the lower contains the meter with a protrusion The plaintiffs have termed this division as the hallmark of their modular design Second the structure and proportions of the two compartments of the AMB box and the protrusion with the perspex cover at the window give it a neater more elegant and streamlined look compared to the SMB III box In our judgment there is sufficient novelty in the registered design It cannot be said that the design of the AMB box differs from that of the SMB III box in immaterial details or in variants commonly used in the trade Prior publication 49 The next challenge mounted by Soundtex to the novelty of the registered design is that there were prior publications of the design before the date of application for registration They rely on the following instances of prior publication a Hunter s sale of the AMB box to ABB b submission by Hunter ABB of the AMB box to the PSB for testing c the derivation of the registered design from the HDB tender specifications 50 In connection with this issue it is relevant to refer to sub ss 1 and 3 of s 6 of the UK Act which provide 1 An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only of a the disclosure of the design by the proprietor to any other person in such circumstances would make it contrary to good faith for that other person to use or publish the design b the disclosure of the design in breach of good faith by any person other than the proprietor of the design or c in the case of a new or original textile design intended for registration the acceptance of a first and confidential order for goods bearing the design 3 An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only of the communication of the design by the proprietor thereof to a government department or to any person authorised by a government department to consider the merits of the design or of anything done in consequence of such a communication Sale by Hunter to ABB 51 The first instance of prior publication was the sale by Hunter of the AMB box The contract for the sale was evidenced by the two letters one by Hunter to ABB dated 6 June 1996 offering the components of the AMB box for sale and the other by ABB to Hunter dated 11 June 1996 in reply accepting the offer The trial judge held that this sale was not a prior publication of the AMB box and that what transpired between Hunter and ABB were discussions between them with a view to improving or perfecting the design and such discussions would be treated as confidential He referred to the case of Nevill v John Bennett Sons 1898 15 RPC 412 Also considered by the trial judge were Blank v Footman Pretty Co 1888 39 Ch D 678 5 RPC 653 Carflow Products UK v Linwood Securities Birmingham 1996 FSR 424 and Sommer Allibert UK Ltd v Flair Plastic Ltd 1987 RPC 599 52 Before we proceed further it would be helpful at this juncture to consider these cases In Nevill the plaintiffs who were the proprietors of a registered design brought an action against the defendants for infringement of their design One of the defences raised was that there was a prior publication of the design and accordingly the design was not new at the date of the application for registration The alleged prior publication arose in this way The plaintiffs had commercial dealings with one Fotiadi in Constantinople and in their course of dealings the latter sent to the plaintiffs a design which he thought would be desirable to be applied to goods for sale in Persia The plaintiffs then worked on the design and put it into a suitable practical form which was later approved by Fotiadi After approval the plaintiffs applied for the design to be registered and it was registered with the plaintiffs as the registered proprietor The defendants relied on such collaboration between the plaintiffs and Fotiadi as a prior publication Hall VC in rejecting this argument said at p 414 I n this case where everything was private and there was mere collaboration between Fotiadi through his agent Stelfox and the plaintiffs with a view to the design being put into a suitable and workable shape which was to be the property of the plaintiffs but to be engaged as was said for the use of Fotiadi in the Persian market to say that that private consultation that private working together amounted to prior publication seems to me to be entirely unfounded The idea of prior publication I quite believe is where a matter of that kind has been thrown upon the public knowledge and has become a matter of public knowledge not necessarily extensively but otherwise than in the way of private preparation which I have mentioned and it seems to me that a publication of that kind is altogether a different matter to what took place on this occasion 53 In Blank the plaintiff created a design and showed samples of the design to one Hummel who was his commission agent for the purpose of ascertaining whether the design would be attractive to potential customers Hummel took some samples and showed them to his main customers and actually obtained orders for considerable quantities of the material to which the design was applied But the orders were executed only after registration of the design It was held by Kekewich J that the showing of the samples of the design by the plaintiff to Hummel was communication of a confidential character being a necessary incident to the relation between the two parties and therefore did not amount to publication He held at 1888 39 Ch D 678 680 681 5 RPC 653 655 Mr Hummel has an interest in any design of Mr Blank s in goods of this class and though he is not a partner or in any way a partner he has that interest which makes him a person whom Mr Blank would naturally consult before endeavouring to put any of that class of goods on the market Mr Blank therefore having sketched this design shows it to Mr Hummel I cannot conceive that in doing so he would be publishing the design in any sense which could be placed on that word Even if that relation had not

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