ODEX Pte Ltd v Pacific Internet Limited

There has been a lot of attention recently on this case, and I've been giving some quotes to the media about it. Before I go further, I should state that I had previously acted for Odex in an anti-piracy case. Even though I have since left Rajah & Tann (the law firm who acts for Odex), I remain subject to confidentiality obligations stemming from that period. So I've been very careful in what I've been saying.

Now, on to the present case. All I know about the hearing between Odex and Pacnet is what I've been able to garner from the media and from journalists. I've reproduced below excerpts of the full text of the oral judgment given by the presiding judge, which I understand was released by the courts to the media on Friday. It makes for interesting reading, which probably explains why there were stories in both TODAY and the Straits Times today. I've omitted the more legal/technical parts, and it does get pretty technical in some parts.

I'll try to break the judgment down in simpler bite-sized chunks:

1. Odex purported to be authorised to take action in respect of a number of anime titles.

2. However, Odex was the exclusive licensee only for one of them, Mobile Suit Gundam Seed. The court decided that Odex was not entitled to take any action in relation to the other titles.

3. For Mobile Suit Gundam Seed, the court ruled that Odex had to prove an "extremely strong prima facie case". The judge's rationale for this was that Pacnet owed its subscribers a duty of confidentiality under the Telecommunications Competition Code, and hence he would not grant the order unless Odex could satisfy that burden of proof.

4. Based on the evidence as provided to the court by Odex, Odex had failed to prove such an "extremely strong prima facie case". Therefore Odex failed in its application.

5. As for Singnet and Starhub, the court order against Singnet was obtained by consent, which meant that Singnet had consented to Odex's application for the court order and so there were no arguments before the court (in fact, courts would invariably not question a consent order).

6. Starhub did resist the application, but their lawyers (Drew & Napier) did not make the same arguments that Pacnet's lawyers (Alban Tay Mahtani & De Silva) did, so presumably the court hearing Starhub's case did not consider those issues.

As I told TODAY (and actually, I did tell ST the same thing), I felt that the judge's decision was very well-written and very well-reasoned. That's not to say I agree with him completely; he made some judgment calls that I don't quite agree with and that I think are likely to come under attack in an appeal. But the judgment clearly sets out the judge's logic, and those judgment calls are really points where I think reasonable people can differ.

I do believe that if this case was upheld on appeal, it sets a pretty high bar for such applications in future. But that's not to say that that is wrong or undesirable. Surely the ISPs' confidentiality obligations ought to mean something, and surely the courts ought to ensure that plaintiffs seeking subscriber information satisfy all applicable legal requirements before granting any orders.

It's quite clear why the judge took such pains to write out his oral judgment in such detail (and in the first place it is quite rare for judges to do so in the Subordinate Courts): he expects to be appealed against, so he wanted to set out and explain his reasoning so as to reduce the chances of his decision being overturned on appeal. Indeed, his final paragraph puts it pretty starkly, because a written judgment is required only if there is an appeal.

It seems that Odex have decided to appeal. It will be very interesting to see what else transpires.

Oral Grounds of Decision for Originating Summons 159/2007

ODEX Pte Ltd v Pacific Internet Limited

23 August 2007, 9.30 am at Chamber J before DJ Earnest Lau

1. The Plaintiff is a private limited company in the business of distributing various anime titles in Singapore. Anime refers generally to cartoon animations originating from Japan. It is a distinct art-form having its own sub-culture and fan base. The Plaintiff claims to be authorized by various anime copyright owners and/or licensees to protect the copyrights subsisting in numerous anime video works exhibited (“Video Titles”).

2. The Defendant is a public company and a local internet service provider licensed under the Telecommunications Act (Cap. 323).

O24 r6(5)

3. The Plaintiff is applying under O24 r6(5) for the pre-action discovery of documents against a non-party “for the purpose of or with a view to identifying possible parties to any proceedings”. O24 r6(5) is subject to O24 r 7. Under Rule 7, the Court may refuse the application is it thinks that the application is not “necessary for disposing fairly of the cause or matter or for saving costs”. The Plaintiff has filed 3 affidavits by Go Wei Ho (Go) in support of this application.

Relevant principles – O24 r6(5)

4. Let me stress that this is a dispute on pre-action discovery. It would be useful to revisit the law on this area beginning with Norwich Pharmacal v. Customs & Excise Commissioner [1974] AC 133.

[...]

11. I make these points because there is now an issue on the meaning of the phrase “any proceedings” used in O24 r 6(5). [...] What do “proceedings” mean in the Rules? The answer is found in O1 r2. The word ‘proceedings” in the Rules necessarily refers to civil proceedings to which the Rules apply. To underline this point, O1 r2 further specifies all the proceedings to which the Rules do not apply. Pointedly, criminal proceedings under the Criminal Procedure Code (Cap 68) are expressly excluded: see paragraph 6 of O1 r2 (2).

12. It therefore appears that O24 r6 (5) only applies to an applicant with an interest in making the wrongdoer a party to civil proceedings to which the Rules apply. Is the Plaintiff therefore a person entitled to make this application under r6(5)?

13. The answer lies in the Plaintiff’s authority to act. The Plaintiff claimed they have authorization by the relevant copyright owners and/or licensees to make this application. 13 separate letters of authority were produced in GWH-2 in Go’s 1st affidavit.

14. Out of these 13 letters, only 3 parties, namely Gonzo Digimation Holding (GDH), GDH K.K. (GDH KK) and Media International Corporation (MICO) directly appointed the Plaintiff to act for them. Common to GDH, GDH KK and MICO is the fact that they themselves are distributors appointed by undisclosed copyright owners (see pages 17, 35 and 41).

15. The other 10 letters of authorization were letters authorizing the Anti Video Piracy Association (Singapore) (AVPAS). These 10 letters were from the following parties (“the Ten”):

(a) Toshiba Entertainment Inc dated 1 October 2006.
(b) Dentsu Tec Inc 1 October 2006.
(c) Sunrise Inc dated 17 October 2006.
(d) TV Tokyo Medianet Inc 1 October 2006.
(e) King Record Co. Ltd dated 1 April 2007.
(f) Yomiuri telecasting Corp. dated 25 January 2005.
(g) Toei Animation Enterprises Limited dated 18 November 2006.
(h) Kodansha Ltd dated 1 August 2006.
(i) Geneon Entertainment Inc dated 1 March 2007.
(j) Kadokawa Pictures Inc dated 1 March 2007.

16. By a 2nd affidavit at page 21, Go produced a letter by AVPAS dated 1 November 2004 signed by himself as the Vice-President of AVPAS. This letter purported to authorize the Plaintiff “to take such steps as may be necessary to protect and enforce Copyrights”. These “Copyrights” refer to the copyright belonging to “various members of AVPAS”. AVPAS, however, is not a party to this application but Go in his 1st affidavit at GWH-1 discloses the Ten to be members of AVPAS.

17. In relation to all these 13 parties, the Plaintiff is a sub-licensee. This is a point conceded by the Plaintiff’s counsel.

18. Go’s 2nd affidavit at page 23, however, discloses a letter of authority from Sunrise Inc who claims to be a copyright owner of one film namely MOBILE SUIT GUNDAM SEED. This letter of authority is valid one year from 9 April 2007. At face value, it appears the Plaintiff is the exclusive licensee for Sunrise Inc in respect of this Video Title.

Plaintiff as sub-licensee

19. In Alliance Entertainment Singapore Pte Ltd v. Sim Kay Teck [2007] 2 SLR 869, Menon JC (as he then was) held that only the copyright owner and the statutory exclusive licensee under section 123 Copyright Act (Cap. 63) has the right to take action under the Act against copyright infringers. [...]

20. On the authority of the Alliance case, the Plaintiff as a sub-licensee has no civil right of action under the Copyright Act against the persons whom the identities are sought. Without any right of action, In British Steel v Granada Television [1981] AC 1096, Lord Wilberforce said that for the plaintiff to succeed, he must have a real interest in suing the source of the information. As a sub-licensee, the Plaintiff would have no interest in making this application.

21. Can the Plaintiff apply for pre-action discovery of wrongdoer identity in aid of criminal proceedings? Under O24 r6(5), the answer is “no”. I have already mentioned that the reference to “proceedings” in O24 r6(5) pertains only to civil proceedings to which the Rules apply.

[...]

26. In the case of a victim of crime with no locus to apply under O24 r6(5), discovery can still be ordered by the court pursuant to its inherent Norwich Pharmacal jurisdiction. These are exceptional situations, where the Norwich Pharmacal jurisdiction must be invoked in order to do justice. [...]

27. Against these guidelines, the Plaintiff also has no locus to apply for disclosure under the Norwich Pharmacal jurisdiction. I should add that the Copyright Act only gives the exclusive licensee the right to take civil action against the infringer. For criminal prosecution, the court cannot take cognizance of an offence unless the complaint is brought by the Attorney General (either directly or by the issue of a fiat) or the person aggrieved by the offence.

Plaintiff as exclusive licensee

28. I now deal with the letter of authority from Sunrise Inc who is the purported copyright owner of MOBILE SUIT GUNDAM SEED. As earlier mentioned, the Plaintiff is prima facie the exclusive licensee for this Video Title.

29. In this respect I wish to point out that in balancing the competing private and public interests in a pre-action discovery application, the court must also consider the matters raised by Lord Cross in the Norwich Pharmacal case at page 199 G: [...]

30. Here I wish to touch on the standard of proof the Plaintiff must show on the strength of his case against the wrongdoer. I have no doubt the Court has to assess the Plaintiff’s case on his prospects of success similar to applications for other pre-action reliefs such as interim injunctions or Anton Piller orders. In fact the point has already been made in the Reebok International Ltd case by Chan Sek Keong JC (as he then was) that the Anton Piller discovery is not only related but derived from the discovery jurisdiction forming the basis of the Norwich Pharmacal order. This is because the objective of the application is to obtain information from one party to sue another. To succeed in an Anton Piller application, the plaintiff must show an extremely strong prima facie case of a civil cause of action in view of the draconian characteristics of the order. Whilst I accept that the right to privacy is no defence to discovery applications, the courts also do not interfere with the privacy of persons without solid reasons. In law, the threshold to be imposed in assessing chances of success corresponds to how draconian or invasive the relief sought. On one end of the spectrum, interim injunctions applying American Cyanimide principles to preserve status quo only require proof of a serious question to be tried. Then we have the freezing of assets by Mareva injunction which requires a slightly higher standard of a good arguable case. I have already mentioned the Anton Piller order which asks for an extremely strong prima facie case.

31. In this application, the Defendant is asked to disclose the identities of subscribers whom they owe a contractual as well as regulatory duty via the Code of Practice for ISPs to keep subscriber information confidential. I cannot justify compelling the Defendant give discovery (which is to order them to do what they have undertaken not to do) unless the Plaintiff has disclosed an extremely strong prima facie case against the wrongdoers. I have intentionally adopted the Anton Piller test for this application but would concede that not all applications for pre-action discovery contain similar confidentiality issues.

32. Against this finding of law, I now turn to the Plaintiff’s affidavits to ascertain whether this legal threshold is satisfied.

(a) Go claims that in late 2006, they engaged a US company called BayTSP to provide them with an online tracking solution to track down and collect details of unauthorized uploading and downloading of the respective Video Titles via the internet using a “Bit Torrent protocol”. He explains what Bit Torrent protocol is by exhibiting extracts from the Bit Torrent website.

(b) Go claims that evidence obtained using this particular tracking solution has been accepted in the US Courts such as Paramount Pictures Corp. v John Davis [US District Court for the Eastern District of Pennsylvania, Civil Action No. 05-0316, 26 July 2006].

(c) Go also claims that he obtained a license to use this tracking solution for an agreed period. In paragraph 15, Go claimed he set the tracking solution to run from 29 January 2007 to 6 May 2007. At the end of the period, he sorted out the results and compiled a table of the information received.

33. I was given to understand that the tracking solution is a software application used by Go to detect downloaders. On that assumption, I adjourned the 1st hearing for the Plaintiff to furnish supplementary evidence on the reliability of the tracking solution.

34. Go then filed a 3rd affidavit to produce a copy of the Paramount case and various articles on BayTSP.

35. Perusing the evidence, however, it appears that the so-called “tracking solution” is not a software product but really a service provided by BayTSP: see BayTSP’s website explanation in page 55 Go’s 1st affidavit. [...]

36. Furthermore, standard reports are generated by BaySTP and not by the client: see BayTSP’s website explanation in page 57 Go’s 1st affidavit. [...]

37. In other words, the website information suggests that if BayTSP was engaged, it would not have been Go but BayTSP themselves who would run the tracking solution and compile the relevant statistical information. Apart from a bare allegation, there is no evidence that the Plaintiff engaged BayTSP to undertake the tracking of anime downloaders. This tracking solution does not appear to be a simple software tool meant for the use of unsophisticated end-users. Even if Go had operated a supposed software himself, there is nothing to convince me that he possessed the necessary credentials and expertise to operate the tracking solution and interpret its data to the conclusions maintained by him. Moreover, Go is a managing director of the Plaintiff and is ostensibly a businessman in the video distribution trade, a field somewhat removed from internet software investigations.

38. The articles and the Paramount case produced by the Plaintiffs also do not mention of any software tracking solution. The articles in Go’s 3rd affidavit at GWH-2 all talk about BayTSP as a corporation and the investigative services they provide to customers. One of the articles explains: see page 39 Go’s 3rd affidavit. [...]

39. The Paramount case tendered by the Plaintiff also, contrary to their submissions, does not show that evidence gathered from any specific tracking solution was accepted by the US court. Rather, the case reveals BayTSP as an internet detective agency helmed by Mark Ishikawa, an experienced hacker. Ishikawa testified that BayTSP has successfully tracked illegal downloaders of motion picture content. It was Ishikawa’s testimony that was accepted by the court. The facts of that case did not explain how Ishikawa or BayTSP discharged their investigative duties. There was no mention of any tracking solution. Thus, there is no basis to conclude that the software purportedly used by Go here was the same as that used by BayTSP in the Paramount case.

40. In summary, the Plaintiff has shown that BayTSP is prima facie a reputable internet investigation agency with documented successes in tracking illegal downloaders. But there is no proof that the Plaintiff engaged the services of BayTSP in this matter and BayTSP has given no evidence in favour of the Plaintiff in this case. BayTSP plays the role of the private investigator and the Plaintiff ought to have supported their application with an affidavit from BayTSP.

41. I am also uncomfortable with the expediency by which the Plaintiff has approached this case. This is an application that will impact potentially thousands of persons. The alleged breach of copyright is inferred from how the Bit Torrent protocol works. The function and effect of the Bit Torrent protocol is a subject matter for expert opinion. It is not sufficient for the Plaintiff to adduce website information before a court of law or for Go (not knowing his qualifications and expertise) to explain the mechanics of Bit Torrent protocol.

42. Notwithstanding the above, the Plaintiff produced various media reports documenting their actions against Singnet and Starhub subscribers. According to Go, many of those subscribers have since admitted their acts of infringement. The Plaintiff therefore points to this as indication that the evidence of infringement is accurate. That may well be the case but against the overall complexion of this application, this single factor alone does not assist the Plaintiff to discharge their evidential burden.

43. In the circumstances, I find that the Plaintiff in their capacity as exclusive licensee for Sunrise Inc has failed to satisfy the legal test for this application.

44. I have not addressed all the other submissions raised by the Defence counsel as they are not necessary for this oral decision. I would also like to explain why my decision differs from the Plaintiff’s application against the other 2 ISPs, namely Singnet (in Originating Summonses 95/2007 and 158/2007) and Starhub (in Originating Summons 157/2007).

(a) For the Singnet case, the orders were made by consent. In particular, counsel for the Plaintiff mentioned for Singnet in those 2 applications to record the consent order before the court.

(b) For the Starhub case, Starhub was represented by counsel. However, the issues raised here were never fully argued before the court.

45. Even though the Plaintiff has not succeeded here, let me end by saying I fully accept the Plaintiff’s submissions that the protection of intellectual property rights is of paramount importance to Singapore from a public policy standpoint. The right to privacy can never be equated to a right to steal intellectual property in secret. If a clear case of infringement is proven, copyright owners and their exclusive licensees can expect pre-action assistance from the Court subject to the principles laid out here.

46. In summary my findings are as follows:

(a) To succeed under O24 r6(5) (read with Rule 7), the Plaintiff must disclose an interest to proceed against the wrongdoer in civil proceedings. If shown, the Court will then consider whether it is just to order discovery taking into consideration the necessity of discovery for the fair disposal of the cause or matter or for saving costs.

(b) As a sub-licensee, has no right of civil action against the wrongdoers: see the Alliance case. It follows that the Plaintiff has no interest to make an application under O24 r6(5).

(c) The Plaintiff as party with no right of civil action against the wrongdoer cannot also apply under O24 r6(5) for identity information for the sole purpose of commencing criminal proceedings. This is because the phrase “any proceedings” in O24 r6(5) necessarily refers to civil proceedings to which the Rules apply.

(d) It is however possible for a party with pre-existing civil cause of action to apply for identity information in aid of criminal proceedings under the residual Norwich Pharmacal jurisdiction. Adopting the guidelines expressed in the Ashworth case, this recourse is only open to victims of crime. There is no evidence that the Plaintiff is a victim of any crime committed by any of the Defendant’s subscribers. In any event the Norwich Pharmacal jurisdiction, being rooted in the inherent jurisdiction of the Court, is only exercise sparingly in exceptional circumstances on the touchstone of need. The Plaintiff has shown no evidence of necessity to justify the activation of this jurisdiction. If anything, the Plaintiff has argued that it is only convenient for copyright owners to act through the Plaintiff in enforcement action. Unfortunately, the Norwich Pharmacal jurisdiction cannot be invoked on grounds of convenience.

(e) As regards the Plaintiff’s capacity as exclusive licensee, there is no issue with their locus to make this application under O24 r6(5). To succeed, the Plaintiff must show, inter alia, an extremely strong prima facie case against the wrongdoers. This is because the Court must balance the Plaintiff’s private rights with the public interest of compelling the Defendant to breach their duty of confidence owed to their customers under contract and to the regulators under the Code of Practice. Hence, the Court must be satisfied that there are strong grounds to compel the Defendant to divulge subscriber information, which is the very act they have promised to their customers and the regulators they will not do.

(f) On the facts, the Plaintiff’s affidavits do not disclose a strong enough case to justify an order for the Defendant to breach their undertaking to their customers and the regulators.

(g) The Plaintiff claimed that by means of a BayTSP tracking solution, they uncovered that certain IP addresses have used a Bit Torrent protocol to download the Video Titles. They claim that the Bit Torrent protocol works by uploading and downloading internet data. Hence, it can be inferred that there would be copyright infringement if the transferred data is the Video Titles. If the Plaintiff had used the BayTSP software themselves, then the Plaintiff should satisfy me that Go as the user of the software had necessary expertise and qualification to use the software and interpret its results. If the Plaintiff had hired BayTSP as an internet investigator, the Plaintiff should then file an affidavit by BayTSP to give evidence of their investigation. Unfortunately, no such evidence was available. The Plaintiff should also have asked an expert to give evidence to establish the mechanics of the Bit Torrent protocol. Website information on Bit Torrent protocol is insufficient. Unless there is clear evidence before the court as to how Bit Torrent protocol really works, it would be premature to draw any inferences of infringement.

47. These are my main grounds of decision. They are given orally without prejudice to such other additional grounds I may include in the event a written judgment is required. I therefore dismiss the application and will hear parties on the issue of costs.