Global Yellow Pages Ltd and Promedia Directories Pte Ltd both produced telephone directories. Yellow Pages produced print editions of Business Listings, Yellow Pages Business and Yellow Pages Consumer, as well as an online telephone directory. Promedia 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.
Yellow Pages alleged that copyright subsisted in the following components of its works:
Yellow Pages claimed that Promedia had infringed the copyright subsisting in its works by copying and referring to the listings in its various directories.
In response, Promedia argued (among other things) that:
Promedia also raised four defences against the copyright infringement claim and counterclaimed for groundless threats of copyright infringement pursuant to Section 200 of the Copyright Act.
The High Court held that Yellow Pages’ claim for copyright infringement failed on all grounds and that Promedia could counterclaim against Yellow Pages on the basis of groundless threats of copyright infringement ( 2 SLR 165).
Copyright Act advocates creativity approach
The High Court first tackled the issue of whether the ‘creativity’ (or ‘sweat of the brow’) approach should be taken when determining whether a work satisfies the requirement of originality. The court interpreted certain provisions of the Copyright Act and reviewed local case law before concluding that the Copyright Act advocates the creativity approach. This approach essentially provides protection only for the selection and arrangement of individual components of the compilation and is available only insofar as the selection involves a minimal degree of creativity and is made independently by the compiler. The approach also precludes protection of any preparatory efforts, (eg, information gathering) and is confined to efforts applied to the final form of expression.
Application of creativity approach to works of Yellow Pages
The High Court applied the creativity approach in considering whether copyright subsisted in the works of Yellow Pages. The court held that copyright subsisted only in the Yellow Pages Business and Yellow Pages Consumer directories and the online directory. The common thread that led the court to find that copyright subsisted in these works was the fact that a certain form of judgement had to be exercised by Yellow Pages employees when creating the directory. An example of this would be the employees’ formulation of the extraction criteria for the software to create the directories from the master database.
The court also held that the instrumentality of computer software in creating the final form of expression does not automatically mean that a work has no human author and thus should not receive copyright protection. Rejecting this argument raised by Promedia, the High Court stated that the crucial question to ask relates to the “degree of control that the putative authors exercise over the computer software in shaping the final form of expression”.
The court also held that copyright did not subsist in individual listings, stating that listings usually take a specific form so as to adequately fulfil their function. It also held that the arrangement of listings within the categories or classifications was not protected by copyright, since the placement of listings under each classification was not an effort directed towards the final form of expression, but was rather directed towards the discovery of facts. The court also held that copyright did not subsist in the Business Listings directory, since the selection and arrangement involved in its production were merely the “age-old method of alphabetical arrangement”. Finally, the court agreed with Promedia that copyright did not subsist in the seeds, since they did not have the requisite level of creativity.
No infringement because copied material not substantial
The court found that Promedia had used the works of Yellow Pages in the following ways:
As the High Court had previously held that copyright did not subsist in individual classifications, listings or the Business Listings as a whole, it concluded that no copyright infringement had occurred, since there was no reproduction of a substantial part of information that was protected by copyright. The finding that no infringement had occurred was supported by the fact that Promedia used a markedly different selection and arrangement method from that of Yellow Pages.
Promedia could counterclaim for groundless threats of copyright infringement
The court also held that Promedia could counterclaim on the basis of groundless threats of copyright infringement. This was primarily due to the overly broad allegations in Yellow Pages’ letter to Promedia, which stated that Promedia had infringed copyright in Yellow Pages’ information, classifications and artworks. The court affirmed that these overly broad allegations were the type of threats that Section 200 of the Copyright Act seeks to deter.
This case has developed the law with respect to copyright protection for databases and the groundless threat counterclaim. Aside from clarifying that the creativity approach should apply, the case also illustrates how the creativity approach should apply within the specific context of telephone directories, where there is no dichotomy between facts and expression. With respect to the groundless threat counterclaim, the court seems to have adopted an objective standard in determining whether the claim should succeed.
The adoption of the creativity approach achieves an optimal balance between protecting the rights of the author of the database and the public right of access to information. While the duration of protection is long, protection is narrow and confined to the selection and arrangement of data that originates from the author. Even if a sui generis database right should be established to achieve a balance, the case has provided a temporary solution to the problems relating to copyright for databases.
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