Copyright in a telephone directory: an interesting angle from Singapore

Can there be an issue in copyright law that has more cat lives than the compilation right, especially in telephone directories? Aaron Thng, of Amica Law in Singapore, brings Kat readers the following summary of the most recent development in this area, the decision by Judge George Wei of the Singapore High Court.

"While there are a large number of subject matters that might be compiled so as to attract copyright protection, those compilations that reach the courts seem to revolve around telephone directories and horse racing guides [though Merpel continues to look, thus far in vain, for the common thread between them]. In the United States, there is, of course Feist Publication, Inc. v Rural Telephone Service Company, on telephone directories, and Victor Lalli Enterprises, Inc. v Big Red Apple, Inc. concerning a compilation of horse racing statistics. In Canada, Tele-Direct (Publications) Inc. v American Business Information Inc. concerned telephone directories, and Ascot Jockey Club Ltd. v Simons (1968) (64 W.W.R. 411) addressed the issue of whether copyright subsisted in information sheets for horse races. In England, Waterlow Publishers Ltd v Rose ([1995] F.S.R. 207) was a case about legal directories, and Odhams Press Ltd v London & Provincial Sporting News Agency ((1929) Ltd ([1935] Ch 672) concerned final betting odds on horses.

With Global Yellow Pages v Promedia Directories Pte Ltd, Singapore now has a telephone directory case to call her own, joining the earlier case of Asia Pacific Publishing Pte Ltd v Pioneers & Leaders (Publishers) Pte Ltd on horse racing guides. The Promedia case is notable because the Singapore High Court sought to clarify the nature of compilation copyright under Singapore law. Before the Promedia decision, the Singapore courts, albeit in dicta, had appeared to lean towards the “sweat of the brow” approach, which “acknowledges the industriousness or labour of the author as being relevant to the originality of a work.”

However, this approach flew counter to the position being taken in most other common law jurisdictions, namely that copyright protection requires at least a minimal degree of intellectual effort or creativity in producing the compilation. The original advocate for this “creativity” school was the well-known Feist decision rendered 25 years ago by the US Supreme Court. There, the Supreme Court denied copyright protection to a “garden-variety white pages directory” because its selection of listings “lack[ed] the modicum of creativity necessary to transform mere selection into copyrightable expression.” Australia, in IceTV Pty Ltd v Nine Network Australia Pty Ltd, Canada, in CCH Canadian Ltd. v Law Society of Upper Canada, and England, in Football Dataco Ltd v Yahoo! UK Ltd, have all endorsed Feist’s creativity standard, albeit to varying degrees.

In weighing these two different approaches, Judge George Wei of the Singapore High Court chose to adopt Feist’s creativity standard, reasoning that it was in line with Singapore’s copyright legislation, the Berne Convention, TRIPS, and the Copyright Treaty 1996, all of which referred to the “selection and arrangement” of a compilation’s contents and the compilation as an “intellectual creation.” Singapore had amended its Copyright Act in 1999 to introduce these very two conditions to the definition of a “compilation.” In so doing, the Court has in effect jettisoned the “sweat of the brow” approach mentioned in these earlier decisions. Therefore, the legal test for compilation copyright requires that the compiler exercise a sufficient degree of creativity or intellectual effort in her selection or arrangement of the material. The mere expenditure of effort and labour only, even if substantial, will not be enough to attract copyright protection.

Interestingly, unlike the Feist case, in Promedia the Court ruled in favor of and against extending copyright protection to the various telephone directories at issue, depending upon the extent to which each fared under the test articulated by the court, namely, whether they exhibited intellectual effort in their selection or arrangement. This “intellectual effort” was most visible in the form of the classification or categorization of the listings. For example, the author of the telephone directories had to decide whether the classifications “Marble-Synthetic” and “Marble-Natural” belonged to the business-to-business listings, or the business-to-consumer listings. To the Court, this indicated intellectual effort and judgment, as various factors, such as user experience, had to be considered.

On the other hand, the Court did not find any creativity in the whole-of-the-universe directories, as they did not derive their efficacy from any selection or arrangement of individual listings, but the lack thereof. Their alphabetical arrangement was also commonplace and dictated by function. As such, the Court ruled that they were not entitled to copyright protection. The Court also did not find any creativity or originality in the individual listings themselves as they were bare facts, or in the listings selected and arranged within each classification, as any intellectual effort expended there was directed at the discovery of facts and not at the selection and arrangement of the listings within each classification.

During the proceedings, the plaintiff argued with some ingenuity that the Court should amend the originality requirement in copyright to take

into account the absence of a sui generis database right under Singapore law.Under their proposed approach, copyright should protect “the exercise of skill or judgment that is not merely mechanical,” including preparatory skill or labour that contributed to the selection and arrangement of a compilation’s contents. The Court, however, rejected that approach via recourse to the separation of powers doctrine. According to the Court, the fact that the EU had enacted a sui generis database right in Directive 96/6/EC of the European Parliament and of the Council of 11 March 1996 on the Legal Protection of Databases to protect investments in producing databases did not mean that the Singapore legislature must have intended copyright to fill in the lacuna under Singapore law and thereby protect the “sweat of the brow” in Singapore. Simply put, it was not the Court’s role to extend copyright protection to an entirely new class of subject matter (i.e. data) on the basis of investment in its collection and arrangement.The court recognized that databases have become increasingly significant, and that there was now a compelling public interest in protecting them. However the Court concluded that whether to do so, and how, should be left to the legislature.

This decision is pending appeal to the Court of Appeal, Singapore’s apex court. The full judgment can be found here."