Case Update: PropertyGuru Pte Ltd v 99 Pte Ltd [2018] SGHC 52 – Singapore High Court dismisses claim for copyright infringement by cross-posting listing app (inter alia)

Significance

Singapore High Court (coram Justice Hoo Sheau Peng) held, inter alia, that PropertyGuru did not have copyright over photographs which property agent users uploaded onto their website for real estate listings and which they edited and imposed their watermark on. This was not a material alteration or embellishment to become original new work. Their website’s Terms of Use also merely asserted that they had copyright, but this did not take them far since at law, there was no copyright in the first place.

Facts of the Case

In this case, a well-established Singapore property / real estate listings website PropertyGuru sued a relatively younger startup competitor 99.co for breach of a settlement agreement, tort of inducement of breach of contract (by PropertyGuru’s users), and copyright infringement. Much of the case centred on Xpressor app, an app which allowed cross-posting or cross-listing on multiple property listings platforms. It was found that 99.co had co-developed the app: at [18]. The Xpressor app allows users to log in to their PropertyGuru account and choose the listings therein to cross-post onto 99.co’s website: at [19].

When 99.co first started, it employed a software to “scrape” listings on PropertyGuru’s website and post them on 99.co’s website. Sometime around 2015, the two competitors entered into a Settlement Agreement. This prohibited 99.co from, inter alia, reproducing content from PropertyGuru’s website onto their own. Sometime around August 2016, 99.co offered its users a Premium Account service where it employed independent contractors to manually copy information in property agent’s listings on PropertyGuru and list it on 99.co: at [22].

Breach of Settlement Agreement

On PropertyGuru’s breach of settlement agreement claim, the Court found that there was insufficient evidence for this claim regarding some January and February 2016 reproductions on 99.co’s website (which had photographs bearing PropertyGuru’s watermark) because it was plausible that the property agents who made these listings had used other means to reproduce them. Based on the evidence, it was likely that these reproductions were not done through the Xpressor app because by then, the app made sure to remove the watermark before cross-posting: at [54]-[55]. The Court also rejected the argument that 99.co had reproduced the listings simply by developing, marketing, and hosting on its server, the Xpressor app; it remained the individual property agent’s decision whether or not to cross-post listings, not 99.co’s: at [57].

However, the Court did find that the reproduction of 9 photographs through the Premium Account service amounted to a breach of the settlement agreement and thus awarded damages to be assessed and an injunction restraining 99.co from continuing breaches: at [62]. It should be noted also that the Judge had to address an argument that the Premium Account service point was not expressly pleaded by PropertyGuru.

The Court also rejected arguments that 99.co had breached the Settlement Agreement by connecting to PropertyGuru’s website to cross-post listings. The Court found that it was the end users of the Xpressor app who connected to PrpoertyGuru’s website, not 99.co: at [70]-[72]. The Judge also made some comments on the odd drafting of the relevant clauses in the Settlement Agreement: at [72].

Tort of Inducement of Breach of Contract

The Court rejected PropertyGuru’s claim on this head. The discussion however is interesting. Users of PropertyGuru’s website are deemed to have entered into a contract with PropertyGuru. The contract’s terms include the Terms of Use and Acceptable Use Policy. These terms prohibited users from reproducing material from PropertyGuru’s website and using any software to access PropertyGuru’s services or collect information through PropertyGuru. The Court observed that it could be possible that property agents who had used the Xpressor app to make cross-postings were in breach of the Terms of Use and Acceptable Use Policy: at [84].

However, because there was no evidence that the property agents did actually use the Xpressor app to make cross-postings, the claim on this head failed: at [85]-[87]. As regards the Premium Account service, the Court rejected the claim on this evidence because it was not expressly pleaded that this was a mode by which 99.co induced property agents to breach their contract with PropertyGuru: at [88]-[89]. Unlike the earlier head where the matter of Premium Account services could be seen as evidence, in this instance, PropertyGuru did not amend its Statement of Claim to expressly nail its case down.

Copyright Infringement

The Court also rejected this claim. The issue was whether PropertyGuru owned copyright in the photographs which it obtained from property agents and which it then edited by resizing them, altering their light balance, softening the edges, and adding a watermark: [96].

The Court reviewed three decisions—Interlego AG v Tyco Industries Inc [1989] AC 217 (“Interlego”); The Reject Shop Plc v Robert Manners [1995] FSR 870; Virtual Map (Singapore) Pte Ltd v Suncool International Pte Ltd [2005] 2 SLR(R) 157 (“Virtual Map”)—and held that “the copying, enlargement or resizing of an artistic work, such as a drawing, painting or photograph, does not make the resulting image a copyrighted work. There must be a material alteration or embellishment to the original work to confer originality (and hence copyright protection) on the resulting work. What counts as “material” for this purpose is a question of fact and degree. There was some alteration in Interlego, namely the addition of new written information to the drawing, but this was insufficient to confer originality on what was otherwise a visually similar copy of an image. On the other hand, Virtual Map provided a clear example of a material alteration. While the alteration in that case was extremely substantial, it does not mean that alterations to an original work must necessarily be to a similar degree before the derivative work becomes original and copyrightable”: at [102].

The Court found that PropertyGuru’s editing of the photographs did not amount to an original work which gave rise to copyright: at [103]-[104]. There was no “skill and labour as conferred originality of an artistic character” (at [100], [103]).

As regards PropertyGuru’s Terms of Use, and in particular this sentence—“We shall have the right to watermark the photographs within the Content and the copyright in the final watermarked photographs shall belong solely to us”—the Court found that this was merely an assertion that PropertyGuru had copyright. But if at law, they did not have copyright, then the clause does nothing further: at [107].

Groundless Threats of Infringement Proceedings

Finally, the Court considered 99.co’s counterclaim for PropertyGuru’s groundless threats of infringement proceedings under section 200 of the Copyright Act. The Court rejected the counterclaim. First, it thought that PropertyGuru was justified in thinking that it had basis to sue 99.co: at [116]. Second, 99.co did not adduce evidence of loss. It merely asserted that the threat of the lawsuit affected its ability to obtain funding and strained its relationship with its investors, but there was no evidence for this: at [117].

Comments on Wider Repercussions and Other Issues to Consider

Platforms’ Terms of Use

This case raises issues about platforms, websites, apps’ Terms of Use or Terms of Service. Many of us use these platforms and entered into legally binding contracts with them without realizing what we agreed to. When it comes down to it, a lot of it is an issue of construction of the terms.

In this case, the terms were deemed as merely an assertion of copyright. But the Court found there’s no copyright in the edited watermarked photographs.

Generally, however, terms of use may be drafted in a way to amount to an assignment or license of copyright or intellectual property (“IP”) when posting or listing on websites, apps and other platforms. If it’s an assignment, you effectively give ownership of your IP away. If it’s a non-exclusive licence, you retain ownership and the licensee does not have right to enforce the IP. If it’s an exclusive licence, you retain ownership but the licensee can enforce IP rights, and you technically cannot license your IP to other persons.

Copyright In Edited Images

As the Court held, there must be material alteration or embellishment to become original new work giving rise to copyright. Resizing, altering light balance, softening edges and adding watermarks to a photograph does not amount to material alteration or embellishment to make the work an original new work with copyright conferred on the editor.

This is important for web users (which is almost all of us), platforms, apps, websites, which edit images and content uploaded online. This may not be original new work. It may even amount to copyright infringement of the first work.

Cross-Posting Apps

Some of us use cross-posting applications, software, platforms. This case highlights that the mechanism of how content is cross-posted or cross-listed on multiple platforms can have legal repercussions.

If the app takes content from a first platform and post on other platforms, then there may be issues of whether the first platform has copyright over the content, and whether that copyright has been infringed.

If the app takes content direct from the app user and post on multiple platforms, then likely there is no copyright infringement issue since the app is dealing with the app user’s copyright.

Hyperlinking, Crawling, Framing, Inline Linking

There was no discussion on whether hyperlinking, crawling, framing, deep linking, inline linking, etc. would amount to IP infringement. In this case, the issue only arose as a matter of a breach of contract, and even so, there was no evidence for the claim.

Generally hyperlinking to the home page of a website is unlikely to raise issues. Deep linking – linking to a particular page within another website rather than the homepage – is uncertain but per se is unlikely to constitute IP infringement (based on decisions and authoritative opinions from other jurisdictions). Also, framing (creating frames on the web page which load another person’s website) and inline/embedding/img-src linking (i.e. in simple HTML code, <img src=”some third party image”>) is also uncertain.

In this case, PropertyGuru’s Terms of Use prohibits a user from hyperlinking to content on their website and from using software to crawl and obtain information from their website. Hence, this should give us pause as to whether some of our online actions may constitute breaches of contract.

Authorization Liability

Although this was not an issue in the case at all, platforms, websites, apps, should also be careful that their functionalities, including hyperlinking, crawling and re-posting, does not amount to IP infringement by way of authorizing another person to breach IP. For copyright, granting or purporting to grant a right to a third party to do a copyright infringing act would incur authorization liability. The law in Singapore on this, reflected in the Court of Appeal’s landmark decision in the RecordTV case, is calibrated narrowly. Various factors would be taken into account, including the relationship between the alleged authorizer and the direct infringer, whether the alleged authorizer had actual or constructive knowledge of the infringement, whether the alleged authorizer had the ability to prevent infringement.

Conclusion

All in all, while this decision does not lay down any new law, it is nonetheless interesting because of the application of law to relatively new and evolving technology and scenarios. It also raises important questions for all of us as to the rights and obligations we have when we use various platforms, websites or apps, or the rights and intellectual property we are assigning and thus giving away. It should be noted that either party may appeal this decision to the Court of Appeal, so we shall wait and see if there are any further developments on this.

Case Update: Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45 – landmark decision on patent law

Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45

Significance: Landmark Singapore Court of Appeal decision on issues in patent law not previously considered before by the Singapore courts. The case involved two large pharmaceutical companies. These issues relate to the protection of subsequent medical uses of known substances and the validity of “Swiss-style” claims under the Patents Act. Warner-Lambert Company LLC’s appeal failed in this case. It tried to apply to amend its patent which was alleged to be invalid for claiming a monopoly over methods of treatment of the human or animal body, something impermissible under Singapore’s patent law as section 16(2) of the Patents Act provides: “An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application.” The Court upheld the trial judge’s findings that the amendments, if granted, would extend the scope of protection of the patent and that there had been undue delay by Warner-Lambert in seeking the amendments which warranted the exercise of the court’s discretion to disallow the amendments.

Case Update: Intellectual Property Office of Singapore Case Summary: Bigfoot Internet Ventures Pte Ltd v Apple Inc. [2017] SGIPOS 4 – trade mark revocation dispute involving online post-sale upgrades and software updates

Significance: the Registrar of Trade Marks considered evidence of online post-sale upgrades and software updates to determine that the “Sherlock” trade mark registered by Apple Inc. was not put to genuine use during the relevant 5-year period after the “Sherlock” search tool and trade mark was phased out.

Apple Inc. needed to provide sufficient evidence to persuade the Registrar that the “Sherlock” trade mark was used within the relevant 5-year period, notwithstanding indications that the “Sherlock” search tool in Mac OS had been phased out. Thus, because there was no evidence that there were downloads of the online updates by Singapore users in the relevant 5-year period, the Registrar was not persuaded that the “Sherlock” trade mark was put to genuine use during that time. The Registrar thus granted the application for revocation of the trade mark as at date of the application.

Explanation of Some Proposals to Changes in Singapore Copyright Law

A writer friend wanted some clarification on the proposed changes to Singapore’s Copyright Law. Yes, the Singapore Government is proposing changes and these have impact on many of us, whether professional or amateur creatives; whether a blogger, a novelist, a song writer, a performer, a film maker, a teacher, or a visual artist, etc.
 
 
Below is my attempt at explaining some of the proposals.

(1) Copyright Registry

Govt is proposing a registry by which creators of copyright work e.g. books, articles, song lyrics, music, films, photographs, can voluntarily register their work with the registry.
 
Two possibilities: (i) title only registry–just register the title of the work, creator’s name, general description, etc. (ii) deposit registry–deposit the entire work. Must pay more $$ for (ii). In my view, option (i) is quite pointless since the disputed issue of copying will most of the time be about the content of the work not the general description or existence of the work.
 
Registering with registry means presumption of copyright belonging to who registered first. But if you don’t register, doesn’t mean you don’t own copyright. But if there’s a dispute later, it’s easier to prove you have copyright if you had registered with registry (duh).
 
Registry also proposed to have records of dealings in the copyright. E.g. assignments, licences. So people who spotted say a photograph and want to use it. They go to the registry to find the copyright owner. They may notice that the copyright has already been assigned to some other person. Then they will know to approach that other person instead.
 
Overall, a good proposal. If you’re willing to pay to register, you register. But if you register everything can be very costly. If you don’t register, that’s still fine.

(2) Ownership of Commissioned Works

Currently, the law is that whoever commissioned a work is the copyright owner. This is subject to contract between the creator and the commissioner.
 
The proposed change is for creators to have copyright ownership as default for photos, portraits and engravings. Also separately for sound recordings and films. (That one a bit more complex as to who is the ‘creator’ of those works: for sound recordings it’s the person who owns the first record which embodies the sound recording, and for film, the producer of the film.)
 
I think this is a good proposal. Especially so because many times, creatives don’t have the opportunity to properly discuss contract or copyright ownership with the people commissioning it for smaller deals. It’s fairer that the creator retains ownership. And then leave it to be subject to ownership. It’s for the commissioning person to bargain for copyright to be transferred to him and pay $$ for it.

(3) Attribution Rights

Currently, there is no right of attribution. Only a right to take issue when someone falsely attributes your work. So the proposal is to have a positive right of attribution to the creator or performer. So creators or performers can insist on having the work credited to their name.

(4) Fair Use: removal of reasonableness of obtaining creative work at ordinary commercial price

Proposal is to remove this factor as a grounds for fair use (which is an exception to copyright breach). E.g. you use some music as background music for a video you’re making pro bono for a charity. Proposal is to remove this factor. Implications? I think it means as long as a copyright work is easily available for purchase online, it will be hard to say it’s fair use. But hard to say also cos you can purchase a song for personal consumption. Doesn’t mean it’s purchase for use in a video. But the point is that with the Internet today, it’s not that hard to do a bit of due diligence in finding the copyright owner and asking for permission / purchase right.

(5) Orphan Works

This is an interesting and complex issue. I.e. works which it’s not clear who the maker is. Proposals are three-fold. Won’t elaborate here.

(6) Educational Purpose

Teachers will be heartened to note also the proposed new exception for educational use as an exception to copyright breach. Currently, teachers may use photos for their classes or online lessons. It is arguably not covered previously under the exception. The new proposal allows for teachers and students to use copyrighted work if the purpose is for giving or receiving educational instruction, regardless of the media or platform of instruction.

(7) Non-Profit Museums and Galleries

A good proposal is to create exceptions for non-profit museums and galleries to make copies of materials in their collections for preservation, for records, for publicity materials, for exhibition and catalogues for exhibitions, and for research and study. Previously, there was no specific protection for museums and galleries.

(8) Data Mining & Analysis

To keep up with the whole Big Data trend, the proposal is that data mining and analysis of data which is otherwise copyrighted is not a copyright breach. But if you take the data and sell it as a database without any analysis, then it’s not permissible.

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