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High Court of Singapore (General Division) [2023]: Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd, Case No. SGHC 138

This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.

 

Session 7: Simplified or Fast Track Procedures for Certain Intellectual Property Claims

 

High Court of Singapore (General Division) [2023]: Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd, Case No. SGHC 138

 

Date of judgment: May 15, 2023

Issuing authority: High Court of Singapore (General Division)

Level of the issuing authority: First Instance

Type of procedure: Judicial (Civin( �/span>

Subject matter: Copyright and Related Rights (Neighboring Rights); Enforcement of IP and Related Laws

Claimant: Tiger Pictures Entertainment Ltd

Defendant: Encore Films Pte Ltd

Keywords: Copyright, Simplified process

 

Basic facts: The dispute revolved around the rights to a popular Chinese film titled “Moon Man”.  The claimant, Tiger Pictures Entertainment Ltd, was the exclusive licensee of the distribution rights, reproduction rights and publicity rights of “Moon Man”.  It began negotiations with the defendant, Encore Films Pte Ltd, to discuss the possibility of entering into a distribution agreement.

 

The parties disagreed on whether a binding agreement was reached.  The claimant took the position that no contract was formed.  The defendant insisted that an agreement was entered into and proceeded to screen “Moon Man” in Singapore.

 

The claimant brought a claim against the defendant for copyright infringement.  The claimant also elected for the application of the simplified process under Part 2 of the Supreme Court of Judicature (Intellectual Property) Rules 2022 (“SCJ(IP)R”) by filing and serving the relevant forms.  The defendant denied liability, brought two counterclaims and applied for an order that the simplified process did not apply to the claimant’s claim.

 

Held: The High Court held that the case was suitable for determination under the simplified process.

 

Relevant holdings in relation to simplified or fast track procedures for certain intellectual property claims: The simplified process under Part 2 of the SCJ(IP)R could be triggered in one of two ways.  The first was by a claimant filing and serving a form electing for the application of Part 2 and a form to abandon any claim for monetary relief in excess of $500,000.  Despite the claimant’s election, the court might make an order otherwise, having regard to the factors listed in r 4 of the SCJ(IP)R.  The second way to trigger the simplified process was where the court, on its own motion or on the application of a party, ordered a case to be resolved pursuant to the simplified process.  The court should only make such an order when the relevant conditions under r 4(1) were satisfied.

 

Three cumulative conditions listed under r 4(1) must be fulfilled before a claim was deemed suitable for resolution under the simplified process.

 

First, the dispute must involve an intellectual property right.  Second, the monetary relief claimed by each party in the action did not or was not likely to exceed $500,000 or all parties agreed to the application of the simplified process.  Third, the court must find the case suitable for the simplified process having regard to the factors listed at r 4(1)(c).  Greater emphasis was placed on the three factors listed in rr 4(1)(c)(i) to 4(1)(c)(iii): whether a party could only afford to bring or defend a claim under the simplified process, the complexity of the issues and the estimated length of the trial.  The fact that a party could only afford to bring or defend a claim under the simplified process would favor the application of the simplified process.  That said, most cases would likely turn on the complexity of the issues and the estimated length of the trial.

 

On the facts, the case was suitable for determination under the simplified process as all three conditions were fulfilled.  With respect to the third condition, the issues in the claimant’s claim were neither legally nor factually complex and the estimated length of trial was not expected to exceed two days.  The expected quantum of the claimant’s claim also rendered the case suitable for the simplified process.

 

The ultimate purpose behind the simplified process was to increase access to justice by ensuring that costs and time spent were kept proportionate to the complexity and value of a claim.  The simplified process encouraged intellectual property right holders to defend their intellectual property rights without the attendant fear of facing a long-drawn trial and a disproportionately large sum of costs.  In facilitating this process, the courts played a crucial role in actively identifying and moving suitable cases under the simplified process.  This would require the courts to examine the means of the parties, the complexity of their claims and the time required for their resolution, even at an early stage of proceedings.

                                                                                      

Relevant legislation:

Supreme Court of Judicature (Intellectual Property) Rules 2022 rr 4(1), 5, 6(2), 9(2)

Copyright Act 2021 (2020 Rev Ed) ss 103, 153(1)(b), 499