Australian Shipbuilding Industries (WA) Pty Ltd

- vs -

Assets Able Pte Ltd

Judgment

LP Thean, J

1. By a notice of motion dated 29 August 1986 the plaintiff applied for

   1. an interim injunction restraining the defendants and each of them until after the trial of this action or until further order, whether by their officers, servants or agents or otherwise howsoever, from infringing and/or causing, enabling or assisting others to infringe the plaintiff’s copyright in a set of specifications and drawings relating to construction of certain fishing trawler vessels known as the ‘Success Class’, and

   2. a mandatory injunction for delivery to the plaintiff’s solicitors copies of the specifications and drawings and all other plans, working drawings and written information relating to those vessels that are in their possession, custody or control. In this application the plaintiff also applied for certain orders for discovery.

2. The plaintiff is an Australian company which carries on the business of, among other things, shipbuilding in the State of Western Australia and claims copyright in a set of specifications and drawings (Specifications and Drawings) as more particularly described in the affidavit of its director and general manager, Mr. John Frederick Mason. The claim is based on the following:

   1. The Specifications and Drawings were prepared by the plaintiff’s employees in Australia under contracts of service which did not exclude the generation of the provisions of s 5(1)(b) of the Copyright Act 1911 of the United Kingdom.

   2. The first three dimensional reproductions from the literary works were made available to a purchaser in Australia in May 1981 and thereafter the plaintiff was in a position to build similar vessels given the fact that orders were subsequently received.

3. On the basis of the affidavits filed in support of the application and the statement of claim, it is clear that the plaintiff is claiming copyright in the Specifications and Drawings by reason of their first publication in Australia in 1981 or thereabouts; there is no dispute as to the date of their publication in Australia, i.e. in 1981 or thereabouts. There is certainly no evidence or even suggestion that they were published prior to 1 May 1969; this date is material as will be seen shortly. There is also no dispute that the Specifications and Drawings are literary works within the meaning as provided in the Copyright Act 1911 of the United Kingdom. What is in dispute is whether the plaintiff has copyright in Singapore in the Specifications and Drawings under that Act as applied in Singapore. The main arguments of both parties have centred on this point, which if it is resolved against the plaintiff, would suffice to dispose of the application.

4. It is common ground that the Copyright Act 1911 of the United Kingdom (the 1911 Act) applies in Singapore, and under s 1(1) thereof copyright subsists in certain works, published works as well as unpublished works. Section 1(1) of the 1911 Act provides:

   Subject to the provisions of this Act, copyright shall subsist throughout the parts of his Majesty’s dominions to which this Act extends for the term hereinafter mentioned in every original literary dramatic musical and artistic work, if — (a) in the case of a published work, the work was first published within such parts of His Majesty’s dominions as aforesaid, and (b) in the case of unpublished work, the author was at the date of the making of the work a British subject or resident within such parts of His Majesty’s dominions as aforesaid; but in no other works, except so far as the protection conferred by this Act is extended by orders in Council thereunder relating to self-governing dominions to which this Act does not extend and to foreign countries.

   The crucial words in this subsection for the purpose of this application are ‘the parts of His Majesty’s dominions to which this Act extends’.

5. At the time when the 1911 Act was passed by the Parliament of the United Kingdom it did not extend to Australia by reason of s 25(1) thereof. Section 25(1) provides as follows:

   This Act, except such of the provisions thereof are expressly restricted to the United Kingdom, shall extend throughout His Majesty’s dominions: Provided that it shall not extend to a self-governing dominion, unless declared by the Legislature of that dominion to be in force therein either without any modifications or additions, or with such modifications and additions relating exclusively to procedure and remedies, or necessary to adapt this Act to the circumstances of the dominion, as may be enacted by such Legislature.

6. The term ‘self-governing dominion’ is expressly defined in s 35(1) of the Act to mean ‘the Dominion of Canada, the Commonwealth of Australia, the Dominion of New Zealand, the Union of South Africa and Newfoundland’. However, in 1912 Australia passed its Copyright Act and by s 8 thereof adopted the 1911 Act with effect as from 1 July 1912. Section 8 thereof provides:

   The British Copyright Act, a copy of which is set out in the Sch to this Act, shall, subject to any modifications provided by this Act, be in force in the Commonwealth, and shall be deemed to have been in force therein as from the first day of July, One thousand nine hundred and twelve.

7. Then in 1968 Australia enacted the Copyright Act 1968 and by s 6 thereof repealed the Copyright Act 1912. In effect, the 1911 Act as previously adopted by the Copyright Act 1912 was repealed by the Australian Copyright Act 1968. The Copyright Act 1968 came into force in Australia on 1 May 1969. It is therefore clear that during the period from 1 July 1912 to 30 April 1969 the 1911 Act extended to Australia, and Australia was part of ‘His Majesty’s dominions’ to which the 1911 Act extended. What is not clear is the effect of the repeal in Australia in 1969 of the Australian Copyright Act 1912, and the question is whether since the repeal Australia has ceased to be one of the countries geographically failing within the area termed ‘His Majesty’s dominions’ to which the 1911 Act extends.

8. This point, in my view, is resolved by s 26(1) of the 1911 Act which provides:

   The Legislature of any self-governing dominion may, at any time, repeal all or any of the enactments relating to copyright passed by Parliament (including this Act) so far as they are operative within that dominion: Provided that no such repeal shall prejudicially affect any legal rights existing at the time of the repeal, and that, on this Act or any part thereof being so repealed by the Legislature of a self-governing dominion, that dominion shall cease to be a dominion to which this Act extends.

9. It seems to me clear that upon the repeal of the 1911 Act by the legislature in Australia in 1969, Australia ceased to be a ‘dominion to which this Act extends’. It therefore follows that the 1911 Act no longer extends to Australia. If this is correct, as I think it is, it further follows that work emanating from Australia after 30 April 1969 does not enjoy any copyright protection. Hence, in this case the plaintiff has no copyright in the Specifications and Drawings under the 1911 Act.

10. There is one further point to be considered and it arises in this way. The 1911 Act was passed by the Parliament of the United Kingdom and by virtue of s 25(1) thereof was extended throughout the British dominions except the self-governing dominions as defined in s 35(1). At that time Singapore was part of the Straits Settlements, a British possession and the governor of the Straits Settlements on 1 July 1912 made a proclamation pursuant to s 37(2)(d) of the 1911 Act, thus extending the Act to Singapore as from that day. Then in 1956, the United Kingdom passed the Copyright Act which, inter alia, repealed the 1911 Act (except ss 15, 34 and 37 thereof). No part of the 1956 Act, however, was extended to Singapore; and as of the date of its repeal the 1911 Act ceased to apply to the United Kingdom. Therefore, after the repeal, the United Kingdom was no longer an area to which the 1911 Act extended and consequently, all works falling within para (a) or (b) of s 1(1) of the 1911 Act were no longer afforded copyright protection. This position was not rectified until 26 June 1959 when an Order in Council of the United Kingdom called the Copyright Act 1956 (Transitional Extension) Order 1959 was made. That Order made pursuant to s 31 of the Copyright Act 1956 modified and extended para 41 of the Seventh Schedule to the Act. Paragraph 41 as modified and extended (para 41) reads as follows: 

    In so far as the Act of 1911 or any Order in Council made thereunder forms part of the law of any country other than the United Kingdom, at a time after that Act has been wholly or partly repealed in the law of the United Kingdom or of any other country to which the Act extended or which, by virtue of that Act, was to be treated as a country to which it extended, it shall, so long as it forms part of the law of the country first mentioned, be construed and have effect as if that Act had not been so repealed.

11. The question now arises is how is the 1911 Act to be construed in relation to Australia in view of the express provision of s 26(1) thereof. Paragraph 41 was enacted to rectify an omission created by the repeal in the United Kingdom of the 1911 Act by the Copyright Act 1956. After the repeal, the United Kingdom was not an area to which the 1911 Act extended. As I said in Butterworth & Co (Publishers) v Ng Sui Nam [1984-1985] SLR 585 after the repeal there was an interregnum, between 1 June 1957 and 26 June 1959 in which construing the 1911 Act in Singapore all works falling within paras (a) and (b) of s 1 of the 1911 Act emanating from the United Kingdom did not enjoy copyright protection. In the case of Australia, however, there was no such lacuna; upon the repeal of the 1911 Act by the Australian legislature, Australia by reason of s 26(1) ceased to be ‘a dominion to which the Act extends’. The meaning of para 41 is clear to me: where the 1911 Act has been repealed in the law of a country to which the Act extended, the 1911 Act as applied in Singapore is to be construed and have effect as if the Act had not been so repealed in that country. However, such a construction surely cannot be maintained where the Act itself expressly states that upon such repeal that country shall cease to be a ‘dominion to which the Act extends’. Paragraph 41, in my view, cannot be invoked to construe the 1911 Act so as to nullify an express provision contained in the Act itself.

12. Mrs. Haq on behalf of the plaintiff seeks to overcome the operation of s 26(1) of the 1911 Act in two ways. First, she submits that the crucial words in s 26 of the 1911 Act are ‘to which the Act extends’, and she seems to construe these words to mean ‘to which the Act was extended by the United Kingdom Parliament’. In her submission, s 26(1) only applies to self-governing dominions to which the 1911 Act was extended directly by the United Kingdom Parliament. Australia is not a dominion to which the Act was extended by the Parliament of the United Kingdom. Australia passed its Copyright Act in 1912 and by s 8 thereof adopted the 1911 Act: that section said that the 1911 Act was deemed to be in force in Australia as from 1 July 1912. I am unable to accept this argument. Under s 25(1), the 1911 Act extends to a self-governing dominion if declared by the legislature of that self-governing dominion to be in force there. Australia did by the Copyright Act 1912 declare the 1911 Act to be in force in Australia and hence the 1911 Act was extended to Australia by its own legislature: see note (q) on p 393 of 8 Halsbury’s Laws of England (3rd Ed). It would be straining the language of s 26(1) to construe the word ‘extend’ to mean ‘was extended by the Parliament of the United Kingdom’.

13. Secondly, Mrs. Haq argues that if s 26(1) is construed as applicable to Australia, then upon the repeal of the 1911 Act in Australia in 1968 it ceased to apply in Australia but for the purpose of construing 1911 Act in other parts of ‘His Majesty’s dominions’ in which the 1911 Act is still in force, Australia is to be treated as if it were a dominion to which the 1911 Act extends. Hence, in Singapore the 1911 Act is to be construed as if the 1911 Act had not been repealed in Australia and Australia is to be treated still as a dominion to which the Act extends. Such an argument, I find, is again unacceptable. The words in s 26(1) are clear and there is no ambiguity or doubt whatsoever. It provides that upon repeal of the 1911 Act by the legislature in a self-governing dominion ‘that dominion shall cease to be a dominion to which the Act extends’. The 1911 Act is part of the domestic law of Singapore and construing it in Singapore, in view of the express provisions in s 26(1), it is not possible to treat the 1911 Act as if it had not been repealed in Australia. To do so would run counter to s 26(1) of the Act.

14. Accordingly, I hold that the plaintiff, on the material before me, does not have any copyright on the Specifications and Drawings and has no claim against the defendants for an infringement of copyright. In the result, I dismiss the application with costs.

Cases

Butterworth & Co (Publishers) v Ng Sui Nam [1984-1985] SLR 585

Legislations

United Kingdom

Copyright Act 1911: s. 1(1), s. 25(1), s. 26(1), s. 35(1)

Copyright Act 1956: s. 31, Seventh Sch para 41

Copyright Act 1956 (Transitional Extension) Order 1959

Australia

Copyright Act 1912: s. 8

Copyright Act 1968: s. 6

Authors and other references

Halsbury’s Laws of England (3rd Ed), vol.8

Representation

Murgiana Haq & AK Radakrishnan (Drew & Napier) for the plaintiff.

Vangat Ramayah (Wee, Ramayah & Partners) for the first and second defendants.