Case Summaries

Composers and Authors Society of Singapore Ltd v SingNet Pte Ltd [2020] SGHC 220

 

SUPREME COURT OF SINGAPORE

13 October 2020

Case summary

Composers and Authors Society of Singapore Ltd v SingNet Pte Ltd [2020] SGHC 220

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Decision of Dedar Singh Gill J:

Outcome: The High Court finds that a copyright tribunal determining an application made under s 163(2) of the Copyright Act has no jurisdiction to make retrospective orders under ss 163(2) read with 163(6)(b).

Background

1 Pursuant to s 169(1) of the Copyright Act (Cap 63, 2006 Rev Ed) (the “Act”), a copyright tribunal issued an order allowing the Composers and Authors Society of Singapore Ltd (“COMPASS”) to refer a question of law to the High Court. COMPASS then filed the present originating summons to refer the said question (“Question”) for determination by the court. The crux of the Question was this – when determining an application made under s 163(2) of the Act, does a copyright tribunal established under the Act (“Tribunal”) have the jurisdiction under s 163(2) read with s 163(6)(b) to make orders which take effect retrospectively from a time predating the said orders? COMPASS submitted that the answer to the Question was “No”, whereas the respondent, SingNet Pte Ltd (“SingNet”), argued that the answer was “Yes”.

The court’s decision

2 Under s 163(2) of the Act, a person could apply to the Tribunal where it claimed, in a case to which a licence scheme applied, that it required a licence but that the applicable charges and/or conditions were not reasonable. Pursuant to s 163(6)(b) of the Act, the Tribunal could then make orders determining the application (“final orders”), which specified the charges and conditions that it considered reasonable in the circumstances. On a plain reading of these two provisions, nothing indicated to the court that Parliament intended the Tribunal to have the jurisdiction to make final orders having retrospective effect (at [9]).

3 Having considered the two provisions in isolation, the next task was to consider them in the wider context of the statutory framework under s 163 read with ss 165 and 168 of the Act (the “statutory framework”). Based on the court’s analysis of the statutory framework, there were three main reasons why the Question should be answered in the negative (at [10] and [21]).

4 First, both SingNet and COMPASS failed to address a crucial provision in the statutory framework – namely, section 168. Section 168 of the Act provided that the Tribunal was empowered to make interim orders on any “application or reference…to a Tribunal under [the] Act”, which included an application made under ss 163(1), (2), (3) or (4). The wording of s 168 expressly indicated that it was intended to govern the parties’ relative legal positions during the interim period (ie, while applications or references were pending before the Tribunal) (at [22] and [23]).

 5 Where the Tribunal made an “order” on an application under s 163(1), (2), (3) or (4) of the Act, ss 165(4) or 165(5) (as the case might be) provided copyright users with protection against liability for copyright infringement if the requisite conditions were satisfied. Section 149 of the Act clearly stated that under Part VII, which set out the statutory framework, the term “order” included “an interim order”. This meant that when an application was made under s 163 of the Act, copyright users could be protected against infringement liability not only after the Tribunal had made its final orders (under s 165), but also during the preceding interim period (under ss 168 read with 165). Seen in this light, there was simply no need for the Tribunal to have the jurisdiction to make retrospective final orders under ss 163(2) and 163(6)(b) of the Act (or any of the other subsections in s 163) (at [24]-[27] and [31]).

 6 Second, under the Act, acts of copyright infringement might not only attract civil liability, but also criminal liability. Such liability, if any, would accrue at the date of the infringement. The court saw no basis for finding that Parliament had intended s 163(2) (read with ss 163(6)(b) and 165(4) of the Act) to be used for the far-reaching purpose of allowing a copyright user to retrospectively absolve itself of both criminal liability (where applicable) and civil liability for infringements committed during the period predating the final orders (at [37]-[39]).

7 Third, SingNet’s case faced difficulties in the following two related situations:

(a) The first was the paradigm situation where a copyright user would want to seek retrospective final orders – namely, when it had used the licensor’s copyright works without paying the applicable charges, which use in itself amounted to copyright infringement. In such a situation, the licensor would surely be entitled to interest on the charges that the user ought to have paid at the time of its use of the copyright works but did not. The Tribunal, however, did not have the power to award interest under the statutory framework. Further, if the Tribunal had the jurisdiction to retrospectively determine the charges applicable to the period predating its final orders, then in an application under s 163 of the Act, the wording of ss 165(4) and 165(5) meant that the copyright user could “whitewash” its liability for past infringements by paying only the said charges after the final orders had been made. The user would not have to pay any interest for the delayed payment in order to avail itself of that protection. Such an outcome would be highly unfair and prejudicial to the licensor, and could not have been intended by Parliament (at [42]).

  (b) The second related situation was where the Tribunal made final orders that retrospectively varied the charges applicable to the period predating the said orders. If the said charges were adjusted downwards, one would expect that any excess paid by the copyright user at the time should be returned. Conversely, if the charges were adjusted upwards, then the copyright user should have to pay the shortfall to the licensor. There were, however, no express provisions in the Act which mandated the return of the resulting excess charges, or the payment of the resulting shortfall (as the case might be). Furthermore, there was no provision under the Act allowing the Tribunal to order that interest be paid on those amounts. Parliament could not have intended to omit such an important requirement for the excess charges or shortfall to be repaid/paid (as the case might be), or to unfairly deprive the relevant party of interest. The lack of these two features thus supported the court’s view that the Tribunal was not intended to have the jurisdiction to retrospectively vary the applicable charges (at [43]).

8 Turning to other jurisdictions, the Australian cases cited by COMPASS supported the court’s view that s 168 of the Act was meant to enable the Tribunal to achieve a fair balance between the interests of copyright owners and users during the interim period, by allowing the Tribunal to draw upon a wide range of flexible measures. This militated against any finding that ss 163(2) and 163(6)(b) of the Act were intended to serve an overlapping or conflicting role by conferring on the Tribunal the jurisdiction to make retrospective final orders in respect of the same interim period. In addition, the New Zealand, UK and Hong Kong positions supported in certain respects (and did not detract from) the court’s conclusion (at [55] and [70]).

This summary is provided to assist in the understanding of the Court’s grounds of decision. It is not intended to be a substitute for the reasons of the Court. All numbers in bold font and square brackets refer to the corresponding paragraph numbers in the Court’s grounds of decision.

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