The “Simplified Process for Certain Intellectual Property Claims” (“Simplified Process“) under Part 2 of the Supreme Court of Judicature (Intellectual Property) Rules 2022 (“SCJ(IP)R“) came into effect on 1 April 2022. For further information on the Simplified Process, you may refer to our March 2022 Legal Update titled “New Simplified Track for Intellectual Property Litigation“.
The case of Tiger Pictures Entertainment Ltd v Encore Films Pte Ltd [2023] SGHC 138 is the first case invoking the Simplified Process to have come before the courts. Here, the General Division of the Singapore High Court emphasised that the ultimate purpose behind the Simplified Process is to increase access to justice by ensuring that costs and time spent remain proportionate to the complexity and value of the action. Further, the courts play a crucial role in facilitating this process which involves active identification and case management of suitable cases under the Simplified Process.
The claim centred around the popular Chinese film titled “Moon Man”. The claimant, Tiger Pictures Entertainment Ltd, was the exclusive licensee in respect of the distribution, reproduction and publicity rights to “Moon Man” in all jurisdictions worldwide bar the People’s Republic of China and the Republic of Korea. The defendant, Encore Films Pte Ltd, and the claimant entered into negotiations via WeChat and e-mail regarding a possible distribution of “Moon Man” in Singapore. The parties disagreed on whether a binding agreement was formed. The claimant submitted that an agreement was not formed. Conversely, the defendant submitted that an agreement was formed pursuant to the parties’ discussions over WeChat and e-mail. The defendant proceeded to screen “Moon Man” in Singapore.
The claimant commenced an action against the defendant for copyright infringement and elected for the claim to come under the Simplified Process. The defendant denied liability and raised two counterclaims against the claimant for making groundless threats and for infringing the defendant’s copyright in another film. The defendant applied for an order that the Simplified Process did not apply to the claimant’s action, which brought the matter before the Court.
For a case to be assessed as suitable for the Simplified Process, the three cumulative conditions listed in rule 4(1) of the SCJ(IP)R must be fulfilled. The Court analysed the three cumulative conditions and found that:
(a) Does the dispute involve an intellectual property right? As the dispute was a claim for copyright infringement, the first condition was fulfilled.
(b) Does the monetary relief claimed by each party not exceed S$500,000, or have the parties agreed to the application of Part 2 of the SCJ(IP)R? The second condition was fulfilled as the claimant had filed and served the form to abandon any claim for monetary relief above S$500,000 and the defendant’s counterclaims were unlikely to exceed S$500,000.
(c) Analysing all of the factors listed in rule 4(1)(c) of the SCJ(IP)R in totality, should the claim fall under the Simplified Process? The Court held that greater emphasis should be placed on the factors expressly highlighted in rules 4(1)(c)(i) to 4(1)(c)(iii) of the SCJ(IP)R, i.e., whether a party can only afford to bring or defend a claim under the Simplified Process, the complexity of issues and the estimated length of the trial. The Court held that in most cases, it is the latter two factors that will be determinative as to whether a case is suitable for the Simplified Process.
Here, the Court found that the issues before it were neither legally nor factually complex. The sole legal issue was whether there was a legally binding agreement between the parties which permitted the defendant to distribute “Moon Man” in Singapore. The facts were limited to the communications largely confined to the relevant WeChat messages and e-mails. Further, the trial was unlikely to exceed two days. Finally, the Court found that the quantum of the claimant’s claim, being less than S$154,000, made it suitable for the Simplified Process. The Court opined that, generally, the lower the quantum of the claims sought, the more likely a case will be suitable for the Simplified Process.
Having found that all three cumulative conditions in rule 4(1) of the SCJ(IP)R were fulfilled, the Court was satisfied that this case was appropriate to apply the Simplified Process.
