The Singapore High Court’s first decision on a Claimant’s invocation of the Simplified Process for Intellectual Property Claims as an alternative and quicker route to resolve IP disputes

The Singapore High Court’s first decision on a Claimant’s invocation of  the Simplified Process for Intellectual Property Claims as an alternative and quicker route to resolve IP disputes

 

Case:

Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd [2023] SGHC 138 

 

Tribunal/Court:

High Court Of The Republic Of Singapore 

 

Type:

IP Litigation

 

Claimant:

The Claimant, Tiger Pictures Entertainment Ltd is a company incorporated in the People’s Republic of China. It is engaged in the business of selling and distributing films around the world (“The Claimant”).

 

Defendant:

The Defendant, Encore Films Pte Ltd is a Singapore company involved in the distribution of films in Singapore and other countries in Southeast Asia (“The Defendant”).

 

Background of the Matter:

The dispute between the Claimant and the Defendant revolves around the rights to a top-grossing Chinese film titled "Moon Man." The Claimant’s claim against the Defendant is that the Defendant infringed its copyright in "Moon Man" by authorizing third parties to distribute the film prior to entering into a licence agreement with the Claimant. The Defendant argues that they had already entered into an agreement with the Claimant for the distribution of the film through correspondence via early instant messaging and email communication.

In response to the alleged copyright infringement by Encore Films, the Claimant initiated proceedings against the Defendant by filling an Originating Claim on 16th December 2022, claiming that the Defendant had infringed their copyright in "Moon Man" by authorizing third parties to distribute, exhibit, and make copies of the film.

On 19 December 2022, the Claimant filed a form electing for Part 2 of the Supreme Court of Judicature (Intellectual Property) Rules 2022 (“SCJ(IP)R”) and a form abandoning any claim for monetary relief in excess of $500,000 thereby invoking the Simplified Process for certain Intellectual Property Claims ("Simplified Process"). The Simplified Process is an optional track for intellectual property (IP) litigation that came into force on 1 April 2022 to allow for quicker and more cost-effective dispute resolution, specifically for IP disputes.

The Defendant took the view that the Simplified Process should not apply to the Claimant’s Originating Claim.  The Defendant filed a Summons on 21 April 2023 for a court order to exclude the application of the Simplified Process.

According to the Defendant, the Claimant’s Originating Claim:

involves factual issues which require a fact and context-sensitive inquiry;
would likely require two of the five witnesses at the trial testifying in Mandarin via video-link from China. Such evidence would require interpretation; and
the witnesses would need to testify on a wide range of factual issues. It therefore submitted that the trial would realistically require four days.

The Defendant sought an order from the Court

 

Issue:

Whether this case was a suitable case for determination under the Simplified Process.

 

Decision:

The Court allowed the Claimant’s claim to proceed under the Simplified process. In a first ever claim that invoked the Simplified Process, the Judge found that the decision on the issues in the Originating Claim were neither legally nor factually complex since the Claimant’s case is based on one question, which is whether there is a legally binding agreement between the Claimant and the Defendant which permitted the Defendant to distribute “Moon Man” in Singapore. The facts which affect the court’s determination of this question are limited to the communications between the parties, which are largely confined to the relevant WeChat messages and e-mails.

 

Points of Interest:

The Simplified Process may be triggered:

By filing and serving a form electing for the application and a form to abandon any claim for monetary relief in excess of $500,000; or

At the court’s own motion.

 

A claim is suitable for the Simplified Process if it fulfils three cumulative conditions:

The dispute must involve an intellectual property right;

The monetary relief claimed by each party  does not or is not likely to exceed $500,000 or all parties agree to the application of Part 2;

 

Other factors including (i) whether a party can afford to bring or defend the claim under the Simplified Process; (ii) the complexity of the issues; (iii) whether the estimated length of the trial is likely to exceed two days; and (iv) any other relevant matters.

 

There are relevant considerations that will be taken into account by the Court in assessing if the conditions listed in paragraph 2 are fulfilled.

 

The court will have to assess all factors in totality to determine if the third condition is fulfilled.

 

If the complexity of the issues of the trial and the estimated length of the trial indicate that the trial is not suitable for the Simplified Process, this should be a strong indication that a case is unsuitable for the Simplified Process.

 

The mere fact that one or both parties can afford to litigate a claim through the normal route does not necessarily mean that the Simplified Process should not apply.

 

The lower the quantum of a claim involved, the more likely it is that the case will be suitable for the Simplified Process.

 

On the defendant’s end, the judge was of the view that it was not likely that the monetary relief claimed for the counterclaims would exceed $500,000 as the defendant had failed to particularise its purported losses.

 

The simplified process under Part 2 of the SCJ(IP)R allows for an expeditious and cost-efficient way for intellectual property disputes to be resolved. This increases the accessibility to legal recourse by allowing parties with limited resources to enforce their IP rights or defend themselves in litigation.