No standing to sue if assignment is merely of a bare right to sue, Singapore High Court rules

The Singapore High Court has ruled that a person who has been assigned by a copyright owner a mere right to sue for copyright infringement has no standing to commence an action for copyright infringement. This ruling was made in PCCW Media Ltd v M1 Ltd and others [2018] SGHC 99 in the context of an application for a site-blocking order. The written judgment was published recently on 24 April 2018.

Background

Section 193DDA of the Copyright Act was included in 2014 to allow copyright holders to seek an order in the High Court ordering network service providers (NSP) to block access to "flagrantly infringing online locations". The application is to be made "by the owner or exclusive licensee of copyright in a material against a network service provider".

In 2016, the Motion Picture Association (MPA) successfully obtained a site-blocking order against several NSPs requiring the NSPs to block access to the website Solarmovie.ph.

In this case, the plaintiff, PCCW Media Limited (PCCW), is a pay-TV operator based in Hong Kong. It is the holder of certain broadcasting and distribution rights in Singapore in a number of Korean drama serials.

The defendants are NSPs in Singapore. They include well-known telco operators in Singapore such as SingTel, StarHub, M1 and MyRepublic.

PCCW had entered into agreements with the copyright owners of the Korean drama serials. In the agreements, the copyright owners had assigned to PCCW the right to sue for copyright infringement in Singapore, although the right was limited to "suing for the purpose of obtaining the relief in section 193DDA of the Copyright Act".

The High Court's ruling

The High Court held that PCCW did not have the standing to sue under Section 193DDA and dismissed PCCW's application. The High Court said that the assignment agreements were of no effect for the purposes of section 193DDA of the Copyright Act. Whether a statutory cause of action is assignable depends on the terms of the statute. As section 193DDA explicitly states that a site-blocking order may be made “upon an application by the owner or exclusive licensee”, and that there is nothing in either section 193DDA itself or the other provisions of the Copyright Act to suggest that this right is intended to be assignable, the High Court held that it was not open to the Court to find that such right could be "assigned to a third class of persons simply because there was no explicit prohibition of such assignment".

The High Court also rejected the contention that PCCW became an owner by virtue of the assignments, stating that by putting this argument forward, PCCW "had put the cart before the horse".

This is the first reported case in Singapore concerning a site-blocking application since the inclusion of section 193DDA of the Copyright Act in 2014.

Application of the Judgment to IP infringement proceedings

This decision arguably has general application to all intellectual property infringement proceedings in Singapore. Singapore's copyright, trade marks and the patents regimes contain similar expressions to the effect that the owner and exclusive licensee may commence legal proceedings for infringements. Arguably, this decision can be relied upon for the proposition that all such proceedings are within the exclusive purview of rights owners and exclusive licensees. The bare assignment of a right to sue would not suffice.

This decision may also be used as guidance for other common law jurisdictions. Although not binding, Singapore decisions have been cited and relied upon previously across jurisdictions such as Hong Kong and the United Kingdom.

OC Queen Street acted for the SGX-listed Singapore Telecommunications Ltd (also known as SingTel) and its subsidiary companies in the suit. If you have any queries relating to the intellectual property issues arising from the decision, please contact one of the experts listed below, or your usual Osborne Clarke contact.