Alterm Consortech Pte Ltd v Public Prosecutor and other appeals [2013] SGHC 189

In Alterm Consortech Pte Ltd v Public Prosecutor and other appeals, the Singapore High Court dismissed the convictions of all three appellants for criminal copyright infringement on a total of 12 charges and ordered that the fines paid by the appellants be refunded.

The key issues considered by the High Court were as follows:

  • Whether any claim of copyright could even be made in the works that were alleged to have been infringed, namely technical specifications and handwritten markings on architectural drawings;
  • Whether there was sufficient evidence to show that copyright was being asserted in the works that were alleged to have been infringed;
  • Whether there was sufficient evidence to show that the second and third appellants had connived with or abetted the first appellant in committing the alleged offences; and
  • Whether the charges brought against the appellants were defective.

The parties

The first appellant ("Alterm") was a company in the business of pest control, in particular the control of termites. The second appellant was Alterm's now deceased managing director. The third appellant was an employee of Alterm. The charges against the appellants were originally brought by way of private summonses by the complainant, who was the managing director of a rival termite control company called Termi-mesh Singapore Pte Ltd ("TSPL").

The High Court previously granted leave for the appeal of the deceased second appellant to continue as if he were alive despite his demise whilst his appeal was still pending in the unprecedented case of Chew Choon Ling Michael v PP [2013] 1 SLR 689; [2012] SGHC 214.

Facts

The charges against the appellants related to two separate categories of works, namely (1) technical specifications; and (2) handwritten markings on architectural drawings.

In respect of the specifications, the complainant came to know of the alleged breaches sometime in 2006 when he compared an Alterm specification that he obtained from a third party with the specification of TSPL dated 2004.

The complainant's evidence of the alleged infringement consisted of a comparative document that he claimed showed that the said specifications were substantially similar. Alterm was charged for allegedly distributing the Alterm specification under section 136 (3)(a) of the Copyright Act and allegedly having the Alterm specification in its possession for the purposes of distribution under section 136(2)(b) of the Copyright Act. The second and third appellants were charged for conniving in and abetting the offence respectively.

In respect of the markings on the architectural drawings, Alterm and TSPL separately submitted architectural drawings containing handwritten markings to the main contractor for a project some time in 2005. The markings were lines traced over existing lines on the architectural drawings and were meant to show the main contractor where each party intended to install its termite barrier system in the development. TSPL was unsuccessful in its bid for the project and the job was instead awarded to Alterm. The complainant contended that the architectural drawings submitted by Alterm to the main contractor contained markings that were similar to TSPL's markings. Alterm was charged for wilfully infringing copyright to obtain a commercial advantage under section 136(3A) of the Copyright Act and the second appellant was charged for conniving in the said offence.

It was not disputed by the complainant that the architectural plans given to Alterm by the main contractor to make its markings had already contained TSPL's markings and the trial judge noted as such in her grounds of decision. However, she took the view that this was insufficient to absolve Alterm and the second appellant from liability and that Alterm and the second appellant should have asked the main contractor for clean architectural drawings before making their markings.

Alterm was convicted of five charges and fined a total of S$32,000. The second appellant was also convicted of five charges and fined a total of S$21,000. The third appellant was convicted of two charges and fined a total of S$8,000. They appealed to the High Court against their convictions.

Arguments on appeal

The appellants' defences were, first, that there was no basis for TSPL to claim copyright in the specifications and drawings. In particular, the drawings were mere tracings by TSPL of the original drawings given to TSPL by the main contractor. Secondly, the appellants did not know that TSPL were the owners of the copyright. Thirdly, the Alterm specification was not distributed to the recipients as alleged by the complainant.

Counsel for the appellants submitted that the appellants obtained what was alleged to be the copyright protected documents of TSPL from architects. They could naturally and rightly assume that the architects had the copyright, not TSPL. Further, the appellants were told to follow the specifications that were given to them and were not told that the copyright in the specifications belonged to someone else and in particular, to TSPL.

It was further submitted that at the time of the alleged offences in respect of the specifications, none of the specifications that the appellants were ever in possession of bore the names of TSPL or the complainant. There was no indication that copyright in them was being asserted by anyone at the time. More crucially, the specifications were fundamentally different. The High Court noted that the evidence of the prosecution was based mainly on the oral assertions of the complainant that were not supported by the documentary evidence.

Judgment

The High Court noted that the documents specific to each of the charges were not set out in the charges or in any annexure to the charges. In this regard, the charges were defective because important particulars of the charges were missing.

The High Court further noted that the TSPL specification admitted as P4, which was admitted to prove that offences were committed in the year 2003, was itself a document bearing the year 2004. That being the case, the benefit of doubt should be given to the appellants.

In respect of the architectural drawings, the High Court noted that it was obvious that they were construction plans that were drawn up by the architect whose name appeared on the drawings. Nothing on the drawings indicated that the appellants who had been given the architectural drawings by the main contractor knew that the drawings were subject to copyright protection of the complainant or TSPL.

Furthermore, the High Court noted that the complainant's evidence was that the appellants had traced over the border that the complainant or TSPL had drawn over the architect's original drawing. The complainant claimed that his and TSPL's tracing of the border amounted to an artistic work that merited protection. The High Court held that the appellants had merely traced over the tracing of an unknown copier and that to regard that as an infringement of an artistic work would not be right.

The High Court further expressed that a document with commercial value is not the same as a document with artistic value in the copyright sense and it reiterated that a fundamental principle of copyright law was that no claim for copyright may be made in respect of ideas and information. The High Court held that all that the said specifications (P4) and the drawings amounted to were mere information at best. By that token, the High Court had effectively decided that the work did not qualify as an artistic work under copyright law.

Whilst noting that the issue of distribution need not be considered since there was no infringement of the TSPL specification, the High Court held that the distribution of the first appellant's specification to the alleged recipients was not adequately proved and the benefit of doubt may be given to the appellants.

The High Court accordingly set aside Alterm's convictions on all the charges against Alterm.

With regard to the third appellant, the High Court held that she was merely an employee who happened to be in the office of Alterm when the complainant raided it and seized the documents used to found the charges. There was no evidence that she was either a principal or an agent to the alleged offences or how she had abetted the alleged offences. The documents in question were not proved to be in her personal possession. The High Court accordingly set aside her convictions on all the charges against her.

With regard to the late second appellant, the High Court held that there was no evidence sufficient to show any act of connivance. The mere fact that the late second appellant was a director was not enough. A director would not be guilty under a charge of connivance unless the connivance is proved. The High Court accordingly set aside his convictions on all the charges against him.