Global Yellow Pages Ltd and Promedia Directories Pte Ltd both produced telephone directories. The Yellow Pages produced print editions of Business lists, Yellow Pages companies and Yellow Pages consumer, as well as an online telephone directory. Promedia has produced print editions of The Green Book Industrial and Commercial Guide, as well as a digital directory on CD-ROM and an online telephone directory.
Pages Jaunes alleged that copyright subsisted in the following elements of its works:
- individual listings in its directories;
- the arrangement of the lists in each category in Yellow Pages companies, Yellow Pages consumer and the categories of its online directory;
- the printed and online directories published by Pages Jaunes, as a whole; and
- individual seeds and the compilation of seeds in directories.
The Yellow Pages claimed that Promedia infringed existing copyright in its works by copying and referring to listings in its various directories.
In response, Promedia argued (among others) that:
- copyright did not subsist in individual lists, as these were facts that were not protected by Singapore’s copyright regime;
- since the selection and arrangement of lists was a mechanical process, there was no human author and the arrangement should not be protected by copyright; and
- the individual seeds did not have sufficient literary value to constitute a literary work.
Promedia also raised four defenses against the copyright infringement action and filed a counterclaim for unfounded threats of copyright infringement under Section 200 of the Copyright Act. .
The High Court ruled that Pages Jaunes’ copyright infringement claim failed on all grounds and that Promedia could seek counterclaim against Pages Jaunes on the basis of unfounded threats of copyright infringement ( 2 reflex 165).
Copyright law advocates a creative approach
The High Court first considered whether the “creativity” (or “sweat from the forehead”) approach should be taken in determining whether a work meets the originality requirement. . The court interpreted certain provisions of the Copyright Act and examined local case law before concluding that the Copyright Act advocates the approach of creativity. This approach essentially provides protection only for the selection and arrangement of the individual components of the compilation and is only available to the extent that the selection involves a minimal degree of creativity and is done independently by the compiler. The approach also excludes the protection of any preparatory effort (e.g. information gathering) and is limited to the efforts applied to the final form of expression.
Application of the creativity approach to Yellow Pages works
The High Court applied the creativity approach to determine whether copyright subsisted in Yellow Pages works. The court held that copyright subsisted only in the Yellow Pages companies and Yellow Pages consumer directories and online directory. The common thread that led the court to conclude that copyright subsisted in these works was the fact that some form of judgment had to be exercised by Yellow Pages employees when creating the directory. An example of this would be the formulation by the employees of the software extraction criteria to create the directories from the main database.
The court also ruled that the instrumentalization of computer software in the creation of the final form of expression does not automatically mean that a work does not have a human copyright and therefore should not enjoy copyright protection. ‘author. Rejecting this argument raised by Promedia, the High Court said the crucial question to be asked concerns the “degree of control that putative authors exercise over computer software to shape the final form of expression.”
The court also ruled that copyright does not subsist in individual listings, stating that listings usually take a specific form in order to properly fulfill their function. It also considered that the arrangement of the lists within categories or classifications was not protected by copyright, since the placement of the lists under each classification was not an effort directed towards the form of expression. final, but was more geared towards finding facts. The court also ruled that copyright did not subsist in the Business lists repertoire, since the selection and arrangement involved in its production was only the “age-old method of alphabetical arrangement”. Finally, the court agreed with Promedia that the copyright did not subsist on the seeds because they did not have the required level of creativity.
No infringement because the copied material is not substantial
The court found that Promedia used Yellow Pages works in the following ways:
- The Business lists the directory had been digitized and photocopied for reference and was used to update Promedia’s main database; and
- Certain classifications and listings from the printed and online Yellow Pages directories have been consulted and used.
As the High Court had previously held that copyright does not subsist in individual classifications, lists or Business lists overall, he concluded that no copyright infringement had taken place, since there had been no reproduction of a substantial part of the copyrighted information . The conclusion that no infringement had been committed was supported by the fact that Promedia used a very different method of selection and arrangement from that of the Yellow Pages.
Promedia could seek counterclaim for unfounded threats of copyright infringement
The court also ruled that Promedia could seek counterclaim on the basis of unfounded threats of copyright infringement. This was mainly due to overly general allegations in Pages Jaunes’ letter to Promedia, which claimed that Promedia had infringed copyright on Yellow Pages information, classifications and illustrations. The court said these overly broad allegations were the type of threats Section 200 of the Copyright Act seeks to deter.
This case developed the law regarding copyright protection for databases and the baseless threat counterclaim. In addition to specifying that the creativity approach should apply, the case also illustrates how the creativity approach should apply in the specific context of telephone directories, where there is no dichotomy between facts and expression. With respect to the unfounded threat counterclaim, the court appears to have adopted an objective standard in determining whether the claim should succeed.
Adopting the creativity approach achieves an optimal balance between the protection of the rights of the author of the database and the right of public access to information. While the term of protection is long, the protection is narrow and limited to the selection and arrangement of the data from the author. Even if a sui generis Database law should be established to achieve a balance, the case provided a temporary solution to the copyright issues for databases.
EIThis article first appeared in IAM. For more information please visit www.iam-media.com.