The challenge of protecting a database without a sui generis right, this time from Singapore

Protection of databases continues to remain a legal challenge across jurisdictions. Kat friends Lau Kok Keng, Nicholas Lauw and Jiamin Leow collectively report on how the Singapore Court of Appeal has addressed this issue in a recent decision.

Global Yellow Pages Ltd v Promedia Directories Pte Ltd and anor matter [2017] SGCA 28 (“Global Yellow Pages v Promedia”) is an important decision in Singapore as the Singapore Court of Appeal (“CA”) has taken the opportunity to clarify how databases are to be protected in Singapore. The CA held that copyright protected the arrangement of a compilation, only if the compilation is one that is creative.

Global Yellow Pages (“GYP”) had sued Promedia Directories Pte Ltd (“Promedia”) for infringing its copyright in GYP’s Internet Yellow Pages (an online directory), and various editions of GYP’s print directories. The High Court judge dismissed GYP’s claim for copyright infringement. On appeal, GYP relied on facts showing that Promedia had photocopied or scanned pages from GYP’s print directories, and had saved or printed web pages from GYP’s online directory. Promedia asserted in reply that it then assessed the prominence of the listings, taking steps to verify and update the entries in the listings, and to understand each business to ascertain if the entry should be listed under multiple business types. As a result, it claimed, Promedia’s directories were visibly differently from GYP’s corresponding directories.

In relation to a compilation of facts, the CA opined that any copyright protection of such compilations would be “thin” (i.e., there can be infringement only if there was a wholesale reproduction). For such compilations to enjoy copyright protection, the court said that compilation must cross the threshold of “creativity” – i.e., there “must be an authorial creation that is causally connected with the engagement of the human intellect”.

In other words, the court will consider the end-product of the work (i.e., the compilation of facts) and the amount of creativity that had been applied towards the formulation of the expression of the compilation. Prior to this decision, the law was still unclear as some previous Singapore decisions had adopted the “sweat of the brow” approach in determining whether copyright subsisted in a compilation. The CA in Global Yellow Pages v Promedia rejected this claim. The “sweat of the brow” focuses more on the effort and labour of the author rather than the creativity in the expression of the final product.

Since the various online and print directories only involved the mere alphabetical arrangement of data, the CA found that they failed to cross the threshold of “creativity”. The CA also reiterated that copyright does not protect ideas, facts or data, but their expression. As, what Promedia took from GYP was mere data, it is non-copyrightable, and there was no infringement of copyright.

GYP sought to persuade the CA to adopt a lower standard of “creativity” in the case of a compilation of facts, given that Singapore law does not recognise a sui generis database right. The objective of the EU’s sui generis database right is to “ensure protection of any investment in obtaining, verifying or presenting the contents of a database”, where such investment may be in the form of “deploying financial resources and/or the expending of time, effort and energy” (Whereas Clause 40 of the Database Directive 96/9/EC). Notably, “creativity” is not a criterion in the sui generis database right, since “creativity” is a concept belonging to copyright protection.

The CA noted that prior to the introduction of the sui generis database right in the EU, copyright law in the UK had been stretched to protect the labour and expense invested in creating databases. However, the CA declined to provide a judicial remedy to fill in for the lack of a sui generis statutory database right in Singapore. It emphasised that the Singapore Parliament had “consciously” decided not to introduce the sui generis database right when the Copyright Act amendments were debated in 1998.

Amicus curiae in Global Yellow Pages v Promedia, Professor David Llewelyn, observed that some protection may be achieved via contract law. What this means is that in the absence of a sui generis database right, database creators/owners can take it upon themselves to enter into enforceable contracts with users accessing the databases to limit their rights.

In the context of telephone directories and similar databases, if they are accessible online, it is vital to ensure that the terms of use clearly limit the copying, saving, reproduction and/or taking of data. The creator/owner of the database can then seek to enforce the terms of use should there be any breach thereof. On the other hand, if the databases are physical copies, it may be possible to limit the copying, reproduction and/or taking of the data using a shrink wrap licence (a type of licence commonly used for software). However, the enforceability of such shrink wrap licences for physical books has yet to be tested in the courts, whether in Singapore or elsewhere.

As it stands, any protection under contract law is likely to be more limited and trickier to enforce than a sui generis database right (a right which, as noted above, is absent in Singapore law).