High Court, Civil Action, Odex Pte. Ltd. v. Pacific Internet Ltd., [2008] SGHC 35, [2008] 3 SLR 18

(1) Odex was a private company that provided Japanese anime programs to local television stations for broadcasting. It also distributed authorized copies of these programs to retailers for sale to the public. Odex alleged that with Internet piracy and the ease of obtaining DVD-quality movie files for free via P2P software, its sales of anime video titles had begun to drop significantly and that TV stations also bought fewer anime titles as they were allegedly losing viewership to illegal downloaders. 

(2) To address this problem, Odex engaged the services of BayTSP.com Incorporated (BayTSP), an American company, to collect and track instances of unauthorized uploading and downloading of copies of Japanese anime video titles. Through BayTSP, Odex discovered that there had been more than 474,000 unique downloads over an 11-month period, based on searches conducted on only 50 out of more than 400 authorized titles. In these circumstances, Odex applied under Order 24 Rule 6(5) of the Singapore Rules of Court (Cap 322, R 5, 2006 Rev Ed) for the pre-action discovery of documents from various local Internet service providers, to identify the illegal downloaders, based on 981 selected IP addresses of Internet users who were recorded as having carried out the highest instances of such uploading and downloading via the BitTorrent protocol. The defendant Pacific Internet, a local Internet service provider, resisted that application. 

(3) Odex’s application for a discovery order failed before the District Court, which held that Odex did not have the locus standi to make the application, since it was only a sub-licensee for most of the video titles (whose infringement Odex complained of). For one title for which Odex was held to be the exclusive licensee (“Mobile Suit Gundam Seed”), the District Court was of the view that Odex had to show an extremely song prima facie case of wrongdoing before the order sought would be made in its favour. As Odex had failed to establish such a case, its application was dismissed. 

(4) Odex appealed. 

(5) The High Court rejected Odex’s argument that it had the requisite locus standi to apply for a discovery order, in reliance on the Practice Direction 4 of 2005 (“Applications for discovery or interrogatories against network service providers in relation to specific intellectual property issues”) and the Singapore Copyright (Network Service Provider) Regulations 2005 (S 220/2005). Odex had argued that both the Practice Direction and the Regulations refer to an application made “on behalf of a copyright owner”, and in doing so, sanctioned its application as a licensee. The court observed that the Practice Direction did not have the force of substantive law, and that Regulation 3(2)(b) did not pertain to discovery applications. The court also noted that the Singapore Copyright Act did not have an equivalent provision to 17 U.S.C. § 512(h)(1), which would enable a copyright owner or “a person authorised to act on the owner’s behalf” to issue a subpoena to a service provider for identifying an alleged infringer. 

(6) The court held that an agent of a copyright owner or an exclusive licensee could not apply in the agent’s own name for pre-action discovery in order to identify infringers. While the copyright owners could use the services of an agent to track down infringers, they had to use their own names to commence civil court proceedings, apply for pre-action discovery and take formal action for substantive relief. Even if Odex were not relying on Order 24 Rule 6(1) for a discovery order but on the inherent jurisdiction of the court to issue a Norwich Pharmacal discovery order, it still had no locus standi to invoke the court’s jurisdiction. Nor could Odex merely claim that it would only use the information to initiate criminal proceedings because as a mere agent, it could not claim to be the right party entitled to relief. 

(7) The court reversed the District Court on the requirement for an extremely strong prima facie case of wrongdoing, holding that the court below had prescribed too high a standard of proof. Where there was evidence of wrongdoing, the court would consider the strength of the case by the applicant for discovery order as one of the factors to be considered in the totality of the facts before deciding whether to grant the order in the interest of justice.

(8) Nonetheless, the court concluded that it was inexpedient to have the copyright owners start the discovery application all over, especially where on the current appeal, there was an application by some copyright owners to be added as plaintiffs. The court allowed these owners to be added as plaintiffs and allowed disclosure of the subscribers’ information to these plaintiffs as copyright owners for their respective video titles.