Constitutionality of Primary School Admissions in Singapore

A PDF version of the article can be found here.

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Constitutionality of Primary School Admissions in Singapore

Wu Yulun*

I.               Introduction

Education policies are frequently discussed, and issues relating to educational equity have been contentious. The national narrative for compulsory education has been nuanced. What does it mean by “every school is a good school”?^[1] How can one know if a school is “able to meet the needs of the child”?^[2] More importantly, can schools become “effective social levellers”?^[3]

This article will attempt to answer some of these questions from a constitutional law perspective, focusing on the constitutionality of primary school admissions vis-à-vis Article 16 of the Singapore Constitution. It concludes with some brief reform suggestions.

II.            Background

A.   Article 16 of the Constitution

Article 16 of the Constitution states that: “there shall be no discrimination against any citizen of Singapore on the grounds only of religion, race, descent or place of birth … in the admission of pupils and students”.^[4] Against this backdrop, the constitutionality of primary school admissions has been subject to constant Parliamentary discussion. In March 2020, Nominated Member of Parliament Anthea Ong asked the Ministry of Education (“MOE”) how MOE could avoid discrimination (in the wording of Article 16) vis-à-vis primary school admissions.^[5] MOE’s response, through then-Second Minister for Education Indranee Rajah, was that a system of selection is needed when “the number of students applying to a [primary] school exceeds the number of available places”. Furthermore, given that there are “there are no examination results to look at for P1 admission”, Minister Rajah also considered “children of alumni who have a strong attachment to the school and wish their children to have a similar experience as they did” as a “valid justification for some level of priority admission”.^[6]

Whilst the reply by Minister Rajah seems to be justified in terms of policy, it falls short of addressing an underlying issue. Are priority admissions for primary schools, based on alumni memberships, constitutional?

B.     Alumni associations and priority admissions

Alumni associations, or Old Boy’s/Girl’s Associations, have existed in Singapore for many years. Historically, these associations were politically active,^[7] and were even alleged to be a front for the now defunct Barisan Socialis.^[8] However, in more recent years, these alumni associations have left the state of political activism in the 1950s and 1960s behind, and are now known to be a viable pathway towards priority admissions in primary schools.^[9]

Priority admissions, in the context of Singapore’s primary school admissions process, refer to the annual registration exercise which is divided into several phases. The following table summarises the details of each phase:^[10]

Phase	Details
1	For families who have another child currently studying at the preferred school
2A(1)	For parents who are former members of the school (holding alumni membership) and members of the Advisory or Management Committee of the preferred school
2A(2)[11]	For former members (inclusive of both parents and siblings) of the school (not holding alumni membership), staff members of the school and children in a MOE Kindergarten under or within the purview of and located within the preferred school
2B	For parent volunteers, members who are endorsed by a church/clan connected to the preferred school and members who are endorsed as an active community leader
2C	For children eligible for P1 but not yet registered into a Primary School
2C Supplementary	For children eligible for P1 but not yet registered into a Primary School after Phase 2C

Figure: Summary of the phases of primary school admissions

It may be noted that, accounting for the various phases of registration, MOE has also set aside a minimum number of 40 places for non-alumni affiliated students (ie, Phases 2B and 2C) in every primary school.^[12] This article will focus on admissions based on Phase 2A(1), where registration to admit a child is based upon alumni priority and proof of membership in the affiliated alumni association.^[13]

III.           Origins of Article 16

As the Constitution is the supreme law of Singapore, school admissions based on descent are prima facie prohibited and ought to be unconstitutional. Nevertheless, Article 16 has never been litigated before the Singapore courts. As such, the origins of Article 16 may be helpful in understanding how ‘descent’ should be understood.

Article 16 was discussed in both the Reid Commission Report^[14] and the Wee Commission Report^[15]. This section shall consider them in turn.

The Reid Report is relevant as its recommendations were incorporated into the Malaysian Federal Constitution, which was later transplanted to Singapore when she gained independence in 1965. Two points can be made about the Reid Report. First, it sets out Article 12 (which was the initial promulgation of Article 16) as a “fundamental individual right … generally regarded as an essential condition for a free and democratic way of life”.^[16] Second, and more importantly, the Reid Report makes clear that such rights are enforceable and the Courts can annul “any attempt to subvert them whether by legislative or administrative action or otherwise”.^[17]

This position remained unaltered when the Wee Report was published in 1966. The only significant recommendation and amendment as a result of the Wee Report was the removal of financial aid articles which carved out special exceptions for the Malays and their related institutions.[18]

However, neither report addressed how Article 16 was to be defined, and the scope of its prohibition based on ‘descent’ remains unclear.

Notwithstanding the uncertain scope of the word ‘descent’ as it appears in Article 16, its ordinary meaning remains relevant. The ordinary meaning of ‘descent’ is defined as a person’s “kinship ties to another”.^[19] This definition would sufficiently cover the ‘parents’ who are eligible under Phase 2A(1); it would not extend to relatives or multi-generational relationships, who may be covered under a broader definition of ‘descent’. In addition, reference can be also made to Part X of the Constitution (Citizenship), which supports this limited definition. This is because a newborn will be able to acquire Singapore citizenship via descent if “his father or mother is a citizen of Singapore”.[20] Taken together, it is argued that the definition of ‘descent’ under Article 16 only contemplates a child’s direct parents, at least in the context of Phase 2A(1) admissions.

IV.           Origins of the Primary school Admission Policy

The origin of this policy also plays a crucial role in determining how the court might approach the issue of constitutionality, if such an issue arises. As it is currently unclear if the primary school admission policy stems solely from executive discretion or from statute/subsidiary legislation, both will be considered in turn.

On one hand, it can be argued that the policy originates from executive discretion. There are three main reasons which support this. First, the earliest mention of the primary school registration process pre-dates the Education Act[21] and was made known to the public through press statements rather than through Parliament.[22] This practice continued even after the enactment of the Education Act.[23] For example, the first mention of the priority admission scheme, consisting of a Phase similar to the present day Phase 2A(1), can be found in a 1965 MOE statement that was published by the press.[24] Second, a clearer reference to the policy as an executive/administrative act can be gleaned from the Ministerial Statement made by then-Minister for Education Tony Tan in 1985. Upon stating MOE’s intention to abolish the graduate mothers’ scheme, Minister Tan also mentioned that MOE will be reverting to its “1982 guidelines” vis-à-vis primary school admissions.[25] Third, this policy can also be viewed as an executive ‘direction’ in the enforcement of the Compulsory Education Act.^[26]

Alternatively, it can be argued that this policy originates from the statutory provisions of the Education Act^[27] (and related subsidiary legislation). There are two main reasons which support this. First, during the parliamentary debates surrounding the initial passing of the Act, the then-Minister for Education Chew Swee Kee broadly emphasised that the Act was “[not to] discriminate against any particular group or schools or community or teachers” and stated that the Act’s “overriding purpose … is to protect the interests of the children”.^[28] As such, the historical purpose of the Act seems wide enough to cover matters such as school admissions. Second, the admission policy is not an executive/administrative act as it seems to originate from subsidiary legislation that has been enacted by the Minister under the Education Act. Such subsidiary legislation can relate to “all matters regarding the conduct and efficiency of schools”^[29] and “shall be published in the Gazette and shall be presented to Parliament as soon as possible after publication”.[30] One such subsidiary legislation is the Education (Grant-in-aid) Regulations, which expressly lays out the applicable admission policy for certain government-aided schools.^[31] These schools consist of primary schools,^[32] which are obliged to maintain the same standards as government schools “in respect of … admission of pupils.”^[33]

V.             Is PHASE 2A(1) of this Policy Constitutional?

For the purpose of evaluation, this article will utilise cases related to Article 12 to evaluate the constitutionality of this policy. There are two reasons for this approach. First, Article 16 is broadly similar to Article 12. It is one of the few ‘equality’ articles in the Constitution that was expressly considered as a fundamental and enforceable right. Second, a plain reading of Article 16 suggests that it should be interpreted consistently with Article 12. Article 16(1) expressly states that the article ought to be interpreted “without prejudice to the generality of Article 12”. As such, the extensive discussion of discrimination in Article 12 cases is relevant to Article 16, which also concerns discrimination.

Furthermore, in light of Syed Suhail bin Syed Zin v Attorney-General,[34] it seems that the determination of constitutionality for both executive and statutory acts would follow some form of the reasonable classification test.

A.    Challenging the policy as an Executive/Administrative Act

The test of “intentional and arbitrary discrimination”^[35] vis-à-vis executive actions seems to be no longer applicable in light of Syed Suhail’s two-step framework.[36] As such, the Syed Suhail framework will be utilised to evaluate the constitutionality of executive actions vis-à-vis the ‘descent’ limb of Article 16.

It is clear that Phase 2A(1) treats equally situated children differently. These children are equally situated in that they are all eligible for primary school admission upon reaching the requisite school age.[37] Differential treatment occurs as parents cannot seek to admit their children under Phase 2A(1) unless it is shown that they are alumni of the school.

Nevertheless, this article submits that the differential treatment is reasonable as it is based on “legitimate reasons”.[38] The government has repeatedly, in good faith, fine-tuned and explained the objectives behind this policy. For instance, Prime Minister Lee Hisen Loong has stated that this policy adequately balances the need for primary schools to “to develop its traditions, its history, and its identity” without becoming “closed institutions”.^[39] Similar reasons have also been reflected in various Ministerial addresses to Parliament.^[40]

The constitutionality of this policy is further supported when “due regard [is given] to the nature of the executive action”. This would include the fact that the executive act is taken on a “broad-brush basis”[41] and that the government has committed to reserve 40 places for children who have no prior connections to the school.^[42] As such, if the implementation of Phase 2A(1) is treated as an exercise of executive/administrative discretion, it is unlikely to be unconstitutional.

B.     Challenging the policy in light of the Education Act

As mentioned previously, subsidiary legislation under the Education Act has stipulated some form of admission policy for government-aided schools. In addition, these schools have to “conform … [and] maintain standards that are comparable with or similar to those of Government schools”.[43] This suggests that the admission policy found under the Grant-in-aid Regulations is generally representative of the existing admission scheme that has been applied to all government schools.

Specifically, the subsidiary legislation stipulates a negative obligation to ensure schools do not “refuse any person admission to study … on the grounds only of religion or race”. The lack of mention of ‘descent’ as a prohibited basis for refusing admission suggests that it may be permissible to refuse a child’s admission to a primary school solely on the basis of his or her descent. This seems to be reminiscent of Phase 2A(1), where parents seeking admission for their child under the Phase would be prima facie rejected if they are unable to show their associated alumni membership(s).

As such, there is a limited but plausible situation where an aggrieved applicant to those schools seeks to challenge the school’s admission policy as an unconstitutional statutory classification under the abovementioned subsidiary legislation. In this sense, the reasonable classification test^[44] is relevant in evaluating the constitutionality of this policy as a statutory classification.

Akin to a constitutional challenge to the policy as an executive act, it is clear that the policy allows room for schools to discriminate between children who have parents affiliated to the school on the basis of their alumni membership and children who do not have such connections. As Phase 2A(1) limits the opportunity to admit a child into a particular primary school based on his or her parents’ alumni status, it does lead to “different treatment to different people”.^[45] In other words, this policy as interpreted from the Grant-in-aid Regulations should be prima facie discriminatory based on the ‘descent’ limb of Article 16.

Similarly, there is a distinct differentiation “capable of being apprehended by the intellect or understanding, as opposed to the senses”.^[46] In seeking to admit a child under Phase 2A(1), parents have to produce evidence of their membership in the related alumni association.

However, the last stage of the test (ie, the ‘nexus’ between the differentia and the purpose sought to be achieved by the legislation) warrants further discussion. Given the possibility to view Phase 2A(1) as originating from statute (ie, the Education Act and its subsidiary legislation), a greater emphasis should be placed on the statute when evaluating the policy’s constitutionality. Whilst the Education Act is meant to unify educational policies in the 1950s,^[47] primary school admissions were not specifically considered.^[48] In this sense, it seems that Phase 2A(1) (as viewed from the Grant-in-aid Regulations) is unconstitutional as there is simply no nexus between the purpose and object of the Act vis-à-vis the admissions policy as part of the subsidiary legislation. Furthermore, the court is not acting like a ‘mini-legislature’^[49] by finding subsidiary legislation unconstitutional. Rather, it is upholding the supremacy of the constitution as a “first order right of equality”.^[50]

VI.          Suggestions and Conclusion

The earlier section argues that, in limited circumstances, it is possible for Phase 2A(1) to be found unconstitutional under Article 16. Nevertheless, such a challenge may be academic should there be further clarifications to the policy or legislative amendments to the Education Act. For instance, the admissions policy can be expressly legislated as part of the Education Act, thus giving a clear nexus to the differentia that arises from the current policy.

There remain other aspects of the public education system where alumni affiliation may play a significant role. For instance, alumni affiliation may play a role when a student decides to appeal for admission into a Junior College or other pre-university course.^[51] As such, the government could go beyond balancing diversity and alumni support in primary schools^[52] by reconsidering the role that alumni associations play in the overall education infrastructure in Singapore.

In the age of continued disruptions and discontent towards apparent inequity, it is time for MOE to give this matter “serious consideration”^[53] and refine parts of the primary school admission policy which may be unconstitutional. In the words of then-Senior Minister of State Lawrence Wong (who had initiated the recent review of the primary school registration process and is the current Minister for Finance), any suggestions are welcomed as the government is committed to “review[ing] [the primary school admission policy] regularly … [and will] look at strategies that are going to be sustainable and that will yield more impact.”^[54]

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* LLB (Candidate) (NUS), Class of 2022. All errors and views expressed in this article remain my own.

^[1] Heng Swee Keat, “Keynote Address by Mr Heng Swee Keat, Minister for Education, at the Ministry of Education Work Plan Seminar 2015” (22 September 2015), Ministry of Education, Singapore, online: <https://www.moe.gov.sg/news/speeches/20150922-keynote-address-by-mr-heng-swee-keat-minister-for-education-at-the-ministry-of-education-work-plan-seminar-2015-on-tuesday-22-september-2015-at-9-15am-at-ngee-ann-polytechnic-convention-centre> (accessed 22 December 2021).

^[2] Ong Ye Kung, “Keynote Address by Minister for Education Ong Ye Kung, at the Economic Society of Singapore Dinner” (25 July 2018), Ministry of Education, Singapore, online: <https://www.moe.gov.sg/news/speeches/20180725-keynote-address-by-minister-for-education-ong-ye-kung-at-the-economic-society-of-singapore-dinner> (accessed 22 December 2021).

^[3] Lawrence Wong, “Addendum To The President's Address” (25 August 2020), Ministry of Education, Singapore, online: <https://www.moe.gov.sg/news/press-releases/20200825-addendum-to-the-president-s-address-1> (accessed 22 December 2021).

^[4] Constitution of the Republic of Singapore (1999 Rev Ed Sing), art 16 [Singapore Constitution].

^[5] Parliamentary Debates Singapore: Official Report, vol 94 at Question 2 (4 March 2020) (Oral Answers to Questions).

^[6] Ibid.

^[7] Justus M van der Kroef, “Nanyang University and the Dilemmas of Overseas Chinese Education” (1964) 20 China Q 96 at 113.

^[8] Parliamentary Debates Singapore: Official Report, vol 22 at col 1033-1034 (19 December 1963) (Mr Ong Pang Boon).

^[9] Specifically, Phase 2A(1) and 2A(2).

^[10] Ministry of Education, “Registration phases and key dates” (2021), online: <https://www.moe.gov.sg/primary/p1-registration/registration-phases-key-dates/> (accessed 4 May 2021) [MOE, “Registration Phases and key dates”].

[11] The amended admissions process will see “Phases 2A(1) and 2A(2) [being combined] into a single Phase 2A”: Ministry of Education, “Changes to the Primary 1 (P1) Registration Framework” (Sept 2021), online: <https://www.moe.gov.sg/primary/p1-registration/changes-to-p1-registration> (accessed 22 December 2021).

^[12] Parliamentary Debates Singapore: Official Report, vol 94 at Question 38 (19 November 2018) (Mr Ong Ye Kung) [2018 Debate].

^[13] MOE, “Registration Phases and key dates”, supra note 10.

^[14] Federation of Malaya Constitutional Commission Report (1956-1957) [Reid Report].

^[15] Report of the Constitutional Commission (1966) [Wee Report].

^[16] Federation of Malaya Constitutional Commission, “Federation of Malaya Constitutional Commission Report” (1956-1957) at [161]-[162].

^[17] Ibid.

[18] Wee Report, supra note 15 at para 39.

^[19] Britannica, The Editors of Encyclopaedia, “Descent”, Encyclopaedia Britannica, online: <https://www.britannica.com/topic/descent> (accessed 22 December 2021).

[20] Singapore Constitution, supra note 4, art 122(1)(b).

[21] (Cap 87, 1985 Rev Ed Sing) [Education Act]. The Education Act commenced on 13 December 1957.

[22] Department of Information Services, “Singapore Government Press Statement: Registration of Children to Government Chinese Primary Schools” (22 June 1957), online: <https://www.nas.gov.sg/archivesonline/speeches/record-details/4e971359-bc60-11e6-b045-0050568939ad> (accessed 22 December 2021).

[23] Department of Information Services, “Singapore Government Press Statement: Registration for Admission to Chinese Primary Schools” (23 June 1958), online: <https://www.nas.gov.sg/archivesonline/speeches/record-details/7b050178-bcf7-11e6-b045-0050568939ad> (accessed 22 December 2021).

[24] The Straits Time, “Registration of Primary One children to begin” (9 June 1965), online: <https://eresources.nlb.gov.sg/newspapers/Digitised/Article/straitstimes19650609-1.2.18> (accessed 22 December 2021).

[25] Parliamentary Debates Singapore: Official Report, vol 46 (14 May 1985) at col 30-33 (Ministerial Statement by Dr Tony Tan).

^[26] Compulsory Education Act (Cap 51, 2001 Rev Ed Sing), s 6(3) [Compulsory Education Act]: “The Minister may give such directions, not inconsistent with the provisions of this Act, as to the performance of the duties and the exercise of the powers of the Board and the Board shall give effect to any such directions.” [Emphasis added.]

^[27] Education Act, supra note 21, s 11: “The Council shall advise the Minister upon any matter of educational policy or development which may be referred to it by the Minister or which it may itself propose.” [Emphasis added.]

^[28] Parliamentary Debates Singapore: Official Report, vol 3 at col 1530 (24 April 1957) (Mr Chew Swee Kee) [1957 Debate].

^[29] Education Act, supra note 21, s 61(1).

[30] Education Act, supra note 21, s 61(2). See also s 23(1)(a) of the Interpretation Act (Cap 1, 2002 Rev Ed Sing), which provides that “[s]ubsidiary legislation made under any Act or other lawful authority shall — (a) unless it is otherwise expressly provided in any Act, be published in the Gazette …”

^[31] Education (Grant-in-aid) Regulations (Cap 87, Reg 3, 2013 Rev Ed Sing), reg 8 [Education (Grant-in-aid) Regulations]: “An aided school shall not refuse any person admission to study in the school on the grounds only of religion or race.” [Emphasis added.]

^[32] Ibid, The Schedule.

^[33] Ibid, reg 7.

[34] [2021] 1 SLR 809 [Syed Suhail].

^[35] Eng Foong Ho and others v Attorney-General [2009] 2 SLR(R) 542 at [30]-[31].

[36] Syed Suhail, supra note 34 at [62]: “… (a) whether it resulted in the appellant being treated differently from other equally situated persons; and (b) whether this differential treatment was reasonable in that it was based on legitimate reasons”.

[37] Compulsory Education Act, supra note 26, s 2 provides that a “’child of compulsory school age’ means a child above the age of 6 years who has not yet attained the age of 15 years and who satisfies such conditions for receiving primary education as the Director-General may determine … ”

[38] Syed Suhail, supra note 34 at [61].

^[39] Lee Hsien Loong, “Prime Minister Lee Hsien Loong's National Day Rally 2013 (English)” (18 August 2013), Prime Minister’s Office Singapore, online: <https://www.pmo.gov.sg/Newsroom/prime-minister-lee-hsien-loongs-national-day-rally-2013-english> (accessed 4 May 2021).

^[40] 2018 Debate, supra note 12: “... we do not want our schools to become segregated, as it will reduce opportunity for social mixing and weaken Singapore's social fabric. Thus, we try to encourage as much mixing and mingling as possible. We adjusted primary and secondary school registration to ensure primary schools do not become closed circles.” See also Parliamentary Debates Singapore: Official Report, vol 90 at Question 81 (12 August 2013) (Mr Heng Swee Keat): “Many alumni parents want their children to experience the same ethos, values and school culture that they had as students and they feel strongly that alumni priority should remain. On the other hand, parents who are not alumni but who are keen to get their children into those schools argue that there should be more diversity within each school, and to realise this, we should give less priority or allocate fewer places to children of alumni.” [2013 Debate]

[41] Syed Suhail, supra note 34 at [63].

^[42] Ibid.

[43] Education (Grant-in-aid) Regulations, supra note 31, reg 7.

^[44] Lim Meng Suang and another v Attorney-General and another appeal and another matter [2015] 1 SLR 26 at [57]-[60] [Lim Meng Suang].

^[45] Wee Report, supra note 15 at para 33 (which defined what it means by discriminatory in the context of the then-Article 8).

^[46] Lim Meng Suang, supra note 44 at [67].

^[47] 1957 Debate, supra note 28 at col 1523 (Mr Chew Swee Kee) and at col 1530 (Mr D. S. Marshall).

^[48] Ibid at col 1523-1525 (Mr Chew Swee Kee).

^[49] Lim Meng Suang, supra note 44 at [84].

^[50] Chan Sek Keong, “Equal Justice Under the Constitution and Section 377A of the Penal Code: The Roads Not Taken” (2019) 31 SAcLJ 773 at 826.

^[51] Ministry of Education, “Joint Admissions Exercise (JAE)” (2021), online: <https://www.moe.gov.sg/post-secondary/admissions/jae/submit-appeal/> (accessed 4 May 2021) states that ultimately “[a]ppeals are evaluated on a case-by-case basis by the institutions. A place may be granted only when compelling reasons are presented and vacancies are available.” [Emphasis added.]

^[52] See 2013 Debate, supra note 40.

^[53] Ibid.

^[54] Parliamentary Debates Singapore: Official Report, vol 89 at 598 (10 September 2012) (Oral Answers to Questions).

The Web Scraper’s World of Copyright Exceptions and Contractual Overrides

A PDF version of the article can be found here.

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The Web Scraper’s World of Copyright Exceptions and Contractual Overrides

Darren Ang*

“Web scrapers” are software programs designed to automate the copying of data from the Web, and they can be used for a variety of useful applications. By building upon a technical understanding of how web scrapers operate, this article discusses the two main areas of law which control the use of web scrapers (“web scraping”): copyright law, which provides for certain exceptions that may be relied upon by users of web scrapers to avoid issues of copyright infringement, and contract law, which might bind users of web scrapers under webpages’ terms of service and restrict them from conducting web scraping activities. Following which, this article turns to the growing number of statutory regimes which prohibit the use of contractual terms to exclude the operation of copyright exceptions, and considers the circumstances under which web scrapers may rely on these regimes.

I.               Introduction

“Web scrapers”,[1] technically defined, are software programs which are “designed to automate the downloading and parsing of the data from the Web”.[2] They operate by interacting with the Web’s communication protocols to extract data from webpages,[3] and they can do so at astonishing speeds. The data extracted from the use of web scrapers (“web scraping”) can then be used for a wide variety of applications.[4]

However, some of these applications are more desirable than others. On one hand, some of the most ground-breaking features of the Web, such as search engines and optimised search results, require the use of web scrapers for their implementation.[5] On the other, web scrapers have facilitated fraudulent acts such as the creation of fake accounts for credit card scams.[6] Additionally, a carelessly-programmed web scraper might cause a website to be overloaded with indiscriminate traffic, causing it to slow down or go offline entirely.[7] These “distributed denial-of-service attacks”, or as they are more commonly known, “DDoS attacks”, attract criminal liability in most jurisdictions.[8] While it is a standard practice for programmers of web scrapers to set a reasonable time delay between requests to the Web,[9] the risks to website owners still remain.

Therefore, for societies to reap the benefits of web scrapers without bearing too much of their risks, entire arsenals of legal controls have been deployed against the use of web scrapers, as well as certain applications created upon web scrapers’ outputs.[10] This article shall discuss the current state of the law regarding two of those controls: copyright law and contract law. Its primary aim is to provide readers with a general map of the complex frameworks covering this area, in a manner that may accommodate the regimes of as many jurisdictions as possible. It does so by drawing examples from multiple jurisdictions and attempting to define common threads.

Following this introduction, Part II sets the foundation of this article by providing a technical overview of how web scrapers can be used to create useful applications. Parts III and IV build upon this technical foundation, and discusses the copyright and contractual considerations of web scraping respectively. Part V discusses the intersection between these two dimensions, found in the prohibitions against using contractual terms to override the operation of statutory copyright exceptions. Finally, Part VI summarises the implications of these legal frameworks for users of web scrapers, and concludes the paper with some final thoughts about the ethics of web scraping.

II.             How Web Scraping Works

At the outset, a distinction must be drawn between the use of web scrapers themselves and the creation of applications based on web scrapers’ outputs.

In short, a web scraper merely creates copies of webpages’ source codes, which are unlikely to be of much use on their own. However, the source codes may then be processed and analysed in ways that result in useful applications. These two steps often come hand-in-hand, and they shall be discussed in turn below.

A.    Step 1: The use of web scrapers in themselves

1.     How web scrapers work: A technical overview

We begin with web scrapers themselves. Conventionally,[11] most web scrapers are programmed to do a single task: they look up the underlying source codes of webpages and copy the parts of those webpages which are relevant to the programmer.

The source code which all webpages are built upon is known as HyperText Markup Language, or HTML.[12] When we surf the Web on a web browser, the “pages” which we see on our screens are formed through the rendering of webpages’ HTML codes—that is, every word, image, or video which appears on a webpage would have been derived from some expression in HTML code.[13] As a classic example, for a web browser to display a simple webpage titled “Hello”, with the plain text “Hello, world” on it, the following HTML code would have to be rendered:

<html><title>Hello</title><body>Hello, world</body></html>

Webpages are accessed through their unique Uniform Resource Locators, or URLs.[14] By sending a “request” to a particular URL, a web browser may identify the HTML code of the webpage at that URL and render it. The same process is used by web scrapers to copy the HTML codes of webpages—they are designed to send “requests” to webpages and copy the HTML codes associated with them.[15] The programmer determines the parts of the HTML code which are relevant for the application they intend to create, and copy only those parts.[16]

2.     The Robots Exclusion Protocol and “robots.txt” files

No discussion of web scraping is complete without a brief nod to the Robots Exclusion Protocol (the “REP”).[17] Under this protocol, website owners may include a “robots.txt” file on their website,[18] which tells web scrapers which parts of it they are permitted to scrape based on certain conventions.[19]

Compliance with the REP is strictly voluntary, and programmers of web scrapers are free to ignore websites’ “robots.txt” files if they choose to do so.[20] However, as a matter of etiquette, the general practice is for programmers to ensure that their web scrapers comply with websites’ “robots.txt” files;[21] major search engines such as Google and Bing are programmed in this manner.[22] Google estimates that there are about half a billion websites which rely on this protocol.[23]

B.     Step 2: The use of web-scraped HTML code for useful applications

Once a web scraper has copied the HTML code of a webpage, this code may then be processed and used for a wide variety of applications. For example, Google’s search engine is powered by the processing of huge amounts of webpages’ HTML codes, which are obtained through web scrapers “run simultaneously by thousands of machines”.[24] Large amounts of HTML code can also be used in conjunction with statistical techniques to yield empirical conclusions,[25] which in turn, can be used for a variety of purposes.

III.           Copyright Exceptions Relevant to Web Scraping

A.    Why web scrapers might infringe copyrights

The most immediate legal concern for users of web scrapers is that their web scraping activities might infringe the copyrights of webpage owners. Computer code, which includes HTML, is explicitly classified as a type of work that may be protected by copyright under the TRIPS Agreement, which currently has 164 state parties.[26] With this in mind, the ability of web scrapers (in themselves) to copy voluminous amounts of HTML code from multiple webpages might immediately raise concerns of copyright infringement in many jurisdictions across the world.[27]

However, not all HTML code is protected by copyright, as copyright protection only extends to “expressions” and not to “ideas”.[28] In many jurisdictions, the line between “ideas” and “expressions” is drawn by the concept of “originality”, which in turn, is a fact-sensitive inquiry that looks towards the creative efforts expended by the author of a work.[29] Therefore, when considering whether web scraping might result in copyright infringement, the real question to be asked is generally whether the HTML code copied by web scrapers is “original” enough to warrant copyright protection.

This turns out to be an extremely difficult question to answer. While only an “extremely low” level of originality is required for a work to be protected by copyright,[30] there are many features of HTML code which make even this low threshold hard to cross: the code might be seen as “factual”, rather than creative, in nature;[31] or it might be seen as being primarily dictated by functional purposes rather than authorial creativity.[32] Ultimately, it is difficult to determine whether web scraping raises copyright issues, as it is difficult to determine whether specific blocks of HTML code may be protected by copyright in the first place.

Nonetheless, the vexed issues surrounding web scraping and copyright infringement can be avoided by turning to the limitations and exceptions found in most copyright statutes across the world (henceforth referred to as the “copyright exceptions”). This article shall discuss two copyright exceptions which are particularly relevant for web scraping: those for text and data mining (“TDM”), as well as the more open-ended “fair use” and “fair dealing” exceptions.

B.     Text and data mining exceptions

1.     The policy of the TDM exceptions

To alleviate the legal uncertainty associated with TDM activities, which may include certain applications of web-scraped HTML code, many jurisdictions have introduced specific copyright exceptions for them.[33]

TDM activities are generally defined as automated or computational analytical techniques used to extract new information from existing data.[34] Crucially, some form of analysis must be done—the underlying data cannot be copied without anything more. A standard example of an act which would not be exempted by the TDM exceptions is the use of an automated tool (such as a web scraper) to collate works into a database, without performing any additional analysis on the works.[35]

In general, the TDM exceptions prevent TDM activities from giving rise to liability for copyright infringement when they are done appropriately. Their shared underlying policy is that TDM activities are beneficial for the economy and society-at-large, and as a result, copyright law should not inhibit them.[36] Conversely, returning to the example from the preceding paragraph, the mere use of automated tools to copy data, without performing any additional analysis on it, would not be consistent with the exceptions’ underlying policy.

2.     Common features of TDM exceptions across jurisdictions

While the exact scopes of the TDM exceptions adopted across jurisdictions differ, they share some common features, and two of them shall be discussed below.

First, the TDM exceptions are purpose-based. That is, the exceptions can only be relied upon if the relevant TDM activities fall within the spectrum of permissible purposes, which are delineated by the relevant statutory provisions. On the narrower end of the range of TDM exceptions is the UK’s TDM exception, which only allows copies of a work to be made “for the sole purpose of research for a non-commercial purpose”.[37] On the other end, the TDM exception in Singapore’s Copyright Act allows for copies of a work to be made for the purposes of “computational data analysis”, which in turn, is defined broadly and non-exhaustively.[38]

Second, most of the TDM exceptions require the person undertaking TDM activities to have “lawful access” to the works which are being mined.[39] While the exact scope of the term “lawful access” has not been defined within these exceptions, a standard example given by many jurisdictions is having a paid subscription to access a database of works.[40]

3.     How the TDM exceptions might apply to cases involving web scraping

How, then, do the TDM exceptions apply to web scraping? It bears recalling that web scraping is a common precursor to the analysis of that code,[41] but it does not constitute any form of analysis in and of itself—it only copies the HTML codes of webpages in some form.

Therefore, the act of web scraping without anything more would not satisfy the TDM exceptions, and it is only the use of web scrapers for the purpose of creating applications upon the web-scraped data which may qualify for the exceptions, subject to the relevant requirements being met.

C.    Open-textured “fair use” and “fair dealing” exceptions

Users of web scrapers might have another string to their bows—the open-textured “fair use” and “fair dealing” exceptions, which are available in more than 40 countries around the world.[42] These, at least on their face,[43] fall on a spectrum of flexibility: at one end are the narrower “fair dealing” exceptions which exhaustively state the purposes which may qualify for them,[44] and at the other are the broader “fair use” exceptions which adopt non-exhaustive factors as guidelines for courts to determine whether the use was fair.[45]

Despite the stark differences in statutory language, the “fair use” and “fair dealing” exceptions share a common theme. They both recognise that copyright is ultimately a balancing act: it must incentivize private individuals to make creative works, while also preserving the public interest in the dissemination of creative works.[46] Following from which, some works which appear to be copyright-infringing might actually promote the underlying goals of copyright under their specific circumstances.[47] The inquiry as to whether a use was “fair” ultimately collapses into a case-by-case inquiry that takes into account all the relevant factors.[48]

These exceptions are generally wide enough to encompass a whole range of activities, and it is unsurprising that they have been raised in some cases involving allegations of copyright infringement caused by web scrapers.[49] Therefore, if a particular jurisdiction does not have a TDM exception, or if an application created upon web-scraped HTML code would not satisfy the requirements of the TDM exception, the “fair use” and “fair dealing” exceptions might still be relied upon to avoid liability for copyright infringement.

IV.           Contractual Restrictions to Web Scraping

Although users of web scrapers might escape liability for copyright infringement by relying on the exceptions discussed above, they might find themselves facing contractual liability under contracts entered into between them and website owners.

The most common way for this liability to arise is under websites’ terms of service. Additionally, considering the centrality of the REP to web scraping, the possibility of “robots.txt” files being incorporated into websites’ terms of service shall be briefly considered.

A.    Websites’ terms of service

Many websites contain a page of terms and conditions that purport to govern their use (the “terms of service”). These terms of service might contain specific restrictions against the use of web scrapers,[50] or more general restrictions against the unauthorised use of any content hosted on the website.[51]

Naturally, users of web scrapers might face contractual liability for breaching these terms—this might mean having their access restricted or their account terminated.[52] Where applications are created upon web-scraped data, the creators of those applications might also face tortious liability for inducing the users of their applications to breach websites’ terms of service.[53]

However, the above analysis proceeds on the assumption that the users of web scrapers are bound by websites’ terms of service in the first place. This assumption does not always hold true. In general, the enforceability of websites’ terms of service remains a controversial issue,[54] and it has been argued that the question should be answered with reference to basic principles of contract law.[55] In this regard, it is notable that a two-part test has been developed in US case law to guide the inquiry of whether a website’s terms of service are enforceable against a user:[56]

(1)   “[W]hether the terms were ‘reasonably communicated’ to the user; and

(2)   [W]hether the terms were accepted by the user.”

Determining whether the user of a web scraper is bound by a website’s terms of service is a complicated exercise. However, once this hurdle is crossed, the user of the web scraper would generally be bound by the terms stipulated in the website’s terms of service, which might include restrictions on their web scraping activities.

B.     Websites’ “robots.txt” files?

Unlike websites’ terms of service, which have been found to have binding force in several cases, the legal status of “robots.txt” files remains entirely uncertain.[57] Nonetheless, as the REP is a highly-established industry standard for programmers of web scrapers, it is conceivable that a case may arise in future where it is argued that a website’s “robots.txt” specifications binds web scrapers under some form of contract. This article shall attempt one such argument.

From a first-principles perspective, it may be possible for the specifications of a “robots.txt” file to be incorporated as terms into the terms of service of a website,[58] due to the status of the REP as a widely-adopted industry standard—it might be reasoned that those who use web scrapers can be taken to subjectively know that they should comply with the REP.[59] However, as the REP is strictly voluntary in nature, this may militate against a finding that the parties had intended for the “robots.txt” specifications to form a part of the terms of service.[60]

V.             Prohibitions Of Contractual Overrides to Copyright Exceptions

The above analysis suggests that, even though the use of web scrapers could be permitted by copyright exceptions under certain circumstances, contractual restrictions might ultimately impose the same (or even more stringent) restrictions upon the use of web scrapers. For example, a user of a web scraper might be able to rely on the TDM exception to escape liability for copyright infringement, but a website’s terms of service might contain a restriction against web scraping, ultimately preventing the user from scraping the website. In this situation, the contractual restrictions imposed by the website owner have effectively overridden the copyright exceptions created by statute, rendering the copyright exceptions illusory (henceforth, these types of contractual restrictions shall be referred to as “contractual overrides”).

In response to these contractual overrides, some jurisdictions have legislated for statutory prohibitions which render contractual overrides generally unenforceable (henceforth, these types of statutory provisions shall be referred to as the “prohibitions of contractual overrides”). Where these prohibitions of contractual overrides apply to the TDM exceptions, as well as the “fair use” and “fair dealing” exceptions, they shall be discussed below.

A.    Contractual overrides to the text and data mining exceptions

It bears re-emphasis that the goal of the TDM exceptions is to remove the legal inhibitions created by copyright law in respect of TDM activities.[61] In that regard, allowing contractual overrides of the exceptions effectively leaves those who engage in TDM activities at square one.[62]

The UK and Singapore have responded by introducing blanket prohibitions of contractual overrides to their TDM exceptions.[63] In these two jurisdictions, the prohibitions of contractual overrides operate straightforwardly: they essentially provide that, to the extent that any contractual term is inconsistent with their respective TDM exceptions, the contractual term is rendered unenforceable.

Additionally, the EU provides an illustrative example of how a nuanced balance might be struck based on the relevant policy considerations, namely the promotion of innovation and ensuring freedom of contract: Under the EU CDSM Directive, the general TDM exception under Article 4 can be contractually overridden, but the specific exception under Article 3, which applies to TDM activities “conducted by research organisations and cultural heritage organisations” or “for the purposes of scientific research”, cannot be.[64] This represents the policy that TDM activities can “in particular, benefit the research community and, in doing so, support innovation”,[65] while for other organisations and purposes, “[r]ightsholders should remain able to license the uses of their works”.[66]

B.     Contractual overrides to the “fair use” and “fair dealing” exceptions

While a small number of jurisdictions feature blanket prohibitions in their copyright statutes against contractual overrides to most (or all) of their copyright exceptions,[67] specific prohibitions of contractual overrides to the “fair use” and “fair dealing” exceptions are rare.[68]

Jurisdictions such as Ireland adopt straightforward blanket prohibitions which apply to their “fair use” and “fair dealing” exceptions.[69] The prohibition of contractual overrides found in Singapore’s recently amended Copyright Act is also notable, as it provides for a robust set of requirements for contractual overrides to any copyright exception to be enforceable.[70] Of particular interest to users of web scrapers is the requirement that the contract must be individually negotiated before any contractual override may be enforceable; this requirement is unlikely to be made out for most contracts between the average users of web scrapers and website owners.

C.    Contractual restrictions on the use of non-copyrighted code?

At this juncture, a technical loophole remains under the copyright statutes which contain prohibitions to contractual overrides: some contractual restrictions might apply to both copyrighted and non-copyrighted content hosted on a website,[71] while the prohibitions of contractual overrides, on their face, only apply to copyrighted content.

For users of web scrapers, this potentially means that contractual liability could result from the web scraping of HTML code that does not satisfy the requisite threshold for originality.[72] In contrast, the web scraping of sufficiently-original HTML code would not result in any liability in copyright or contract. This state of affairs is plainly unsatisfactory, and this article suggests one workaround to it through the TDM exceptions.

It bears recalling that web scraping is a common precursor to TDM activities. Under such circumstances, the policy of the TDM exceptions, that TDM activities are beneficial to societies and economies,[73] applies equally to the mining of both copyrighted and non-copyrighted content. In this regard, the EU had considered clarifying that its TDM exception and corresponding prohibition of contractual overrides would be available for TDM activities concerning non-copyrighted content as well.[74] Therefore, it might be possible for the TDM exceptions to be interpreted by the courts to cover TDM activities concerning non-copyrighted content, though admittedly it would be awkward to interpret provisions in copyright statutes to cover uses of non-copyrighted material.

It would be much harder to extend the same argument beyond the TDM exceptions. For example, the “fair use” and “fair dealing” exceptions are ultimately premised on the general policy of copyright law,[75] and it would be conceptually unruly to extend prohibitions of contractual overrides of these exceptions over the web scraping of non-copyrighted content. In these situations, it might be possible to interpret the TDM exceptions even more broadly to encompass them, as the exceptions are non-exhaustively defined to begin with.[76]

VI.           Conclusion: What This Means For Users of Web Scrapers

Having considered the two copyright exceptions which are most relevant to web scraping, the potential contractual restrictions which could bind users of web scrapers, and how the prohibitions of contractual overrides to the copyright exceptions operate—what does it all mean for users of web scrapers?

As a starting point, the answer depends on which jurisdiction’s legal framework is at play. And it must be re-emphasised that the two legal controls discussed in this article—copyrights and contracts with websites—are not the only ones which exist in the web scraper’s world.[77] Nonetheless, in jurisdictions which provide users of web scrapers with both copyright exceptions and prohibitions of contractual overrides, it is submitted that, once the requirements for the relevant exceptions are met, web scrapers can be used without too much anxiety over liability for copyright infringement or breach of contract.

Of course, regardless of which legal frameworks are in place, web scrapers should always be used ethically. This exhortation is particularly important in the present age, where anyone with a computer and an Internet connection has easy access to the tools and tutorials needed to build their own web scrapers. Technological restrictions must be respected, “robots.txt” files should be followed, and when in doubt, it is always best to seek consent.[78] Through this article, it is hoped that those who wish to use web scrapers may do so with greater confidence in the legal frameworks underlying their activities—but without ever compromising our basic human decency.

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* LL. B. (Hons) Candidate at the National University of Singapore; LL. M. Candidate at the University of Melbourne. This article would not have been possible without a proper appreciation of the technical details involved in web scraping—in that regard, I extend my most sincere gratitude to the Python programming communities on YouTube and StackOverflow for creating such wonderful programming tutorials, and making them easily and freely available. I also wish to extend the most heartfelt gratitude to Jerome Tan for the wonderful editing work and helpful comments on this piece. All errors remain my own.

[1] It is notable that “web scrapers” have been referred to in a variety of ways in the case law, such as “scraping programs”, “screen scrap[ers]”, “webcrawlers”, or “spider[s]”—see Andrew Sellars, "Twenty Years of Web Scraping and the Computer Fraud and Abuse Act" (2018) 24:2 BU J Sci & Tech L 372 at 381-382.

^[2] Jay M Patel, Getting Structured Data from the Internet: Running Web Crawlers/Scrapers on a Big Data Production Scale, (California: Aspress, 2020) at xvii. For the avoidance of doubt, this article shall refer to web scraping algorithms (the bots themselves) as “web scrapers”, the ones who program or code those algorithms as “programmers of web scrapers”, and the human users of web scrapers (such as an app developer who uses a web scraper’s output to create an application) as “users of web scrapers”.

[3] A technical explanation of this process is provided in Part II of this article. Note that the term “webpage” has been preferred over “website”; from a technical perspective, a “webpage” refers to a single block of code that may be rendered on a web browser, while a “website” usually refers to a collection of webpages which are connected in some way—see “What is the difference between webpage, website, web server, and search engine?” (8 October 2021), MDN Web Docs (blog), online: <https://developer.mozilla.org/en-US/docs/Learn/Common_questions/Pages_sites_servers_and_search_engines>.

[4] Sellars, supra note 1 at 374.

[5] For an excellent technical summary of some real-world applications of web scrapers, see Patel, supra note 2 at 1-30.

[6] Christopher Watkins, “Web Scraping Fraud: Going, Going … Ongoing” (10 September 2019), Datavisor (blog), online: <https://medium.com/datavisor/web-scraping-fraud-going-going-ongoing-c0f7a0db7310>.

[7] Danny Palmer, “What is a DDoS attack? Everything you need to know about Distributed Denial-of-Service attacks and how to protect against them” (15 October 2020), ZDnet (blog), online: <https://www.zdnet.com/article/what-is-a-ddos-attack-everything-you-need-to-know-about-ddos-attacks-and-how-to-protect-against-them/>.

[8] See e.g. Singapore: Computer Misuse Act (Cap 50A, 2007 Rev Ed Sing), s 7; UK: Computer Misuse Act 1990 (UK), c 18, s 3; US: 18 USC § 1030 (2018).

[9] See Patel, supra note 2 at 60.

[10] In addition to statutes which deal with DDoS attacks, one major area of contention concerning the use of web scrapers is in personal data protection—see e.g. “Facebook says hackers ‘scraped’ data of 533 million users in 2019 leak”, The Straits Times (7 April 2021), online: <https://www.straitstimes.com/world/united-states/facebook-says-data-on-530-million-users-scraped-before-september-2019>. While it is an incredibly fascinating area of law to look into, it is, most unfortunately, beyond the scope of this article.

[11] The technical explanations in Part II of this article are based on the conventions used by Python programmers, as it is generally accepted that the Python programming language is the industry standard language for data science and machine learning—see e.g. “Why is the Data Science Industry Demanding Python?” (10 February 2020), Institute of Data (blog), online: <https://www.institutedata.com/blog/why-is-the-data-science-industry-demanding-python/>. However, similar processes should apply for other programming languages.

[12] Patel, supra note 2 at 31.

[13] The reader may experience this by opening any webpage and finding the “View page source” setting for the browser in use—this setting shows the underlying HTML code of the webpage that is currently open. It should be noted that this article only focuses on the legal protections surrounding the HTML code; the words, images and videos that result from the rendering of HTML code might be protected by different copyrights or contractual terms.

[14] Note that the technical details regarding accessing webpages through web browsers are much more complicated than this brief description might suggest—webpages are located at a specified “Internet Protocol Address”, which might be rendered in text form through the “Domain Name System”. These are standard protocols that the Web is run upon.

[15] Patel, supra note 2 at 37.

[16] Ibid at 41-42.

[17] Google has expended significant efforts in making the REP into an Internet standard—see Henner Zeller, Lizzi Harvey & Gary, “Formalizing the Robots Exclusion Protocol Specification” (1 July 2019), Google Search Central Blog (blog), online: <https://developers.google.com/search/blog/2019/07/rep-id>.

[18] On the difference between “webpages” and “websites”, see n 3 of this article.

[19] This is the author’s simplification; for a slightly-more technical description, see Patel, supra note 2 at 59.

[20] “Can I block just bad robots?”, The Web Robots Pages (blog), online: <https://www.robotstxt.org/faq/blockjustbad.html>.

[21] Patel, supra note 2 at 387.

[22] Google: “Introduction to robots.txt”, Google Search Central Documentation, online: <https://developers.google.com/search/docs/advanced/robots/intro>; Bing: “robots.txt tester”, Microsoft Bing Webmaster Tools help & how-to, online: <https://www.bing.com/webmasters/help/robots-txt-tester-623520ca>.

[23] Zeller, Harvey & Gary, supra note 17.

[24] “Advanced: How Search Works” (22 November 2021), Google Search Central, online: <https://developers.google.com/search/docs/advanced/guidelines/how-search-works>.

[25] See e.g. Daniel Seng, “The State of the Discordant Union: An Empirical Analysis of DMCA Takedown Notices” (2014) 18 Va JL & Tech 369.

[26] See Marrakesh Agreement Establishing the World Trade Organization, 15 April 1994, 1869 UNTS 154 Annex 1C at art 9(2) at art 10(1) (entered into force 1 January 1995) [TRIPS Agreement].

[27] See e.g. the facts of The Newspaper Licensing Agency Ltd v Meltwater Holding BV [2011] EWCA Civ 890 [Meltwater].

[28] See TRIPS Agreement, supra note 26 at art 9(2). For a domestic example, see Global Yellow Pages Ltd v Promedia Directories Pte Ltd [2017] SGCA 28 at para 15 [Global Yellow Pages].

[29] See e.g. Global Yellow Pages, supra note 28 at para 24; Feist Publications, Inc. v Rural Tel. Service Co., 49 US 340 at 348 [Feist]; ECJ Infopaq International A/S v Danske Dagblades Forening, C-5/08, [2009] ECR I-6624 at para 37.

[30] Feist, supra note 29 at 345; Global Yellow Pages, supra note 28 at para 27;

[31] Feist, supra note 29 at 347. Incidentally, this line of reasoning was suggested by respondents to the public consultations for the Singapore Copyright Act—see Ministry of Law Singapore & Intellectual Property Office of Singapore, Singapore Copyright Review Report (17 January 2019) at para 2.8.1.

[32] Computer Associates Intern., Inc. v Altai, Inc. 982 F (2d) 693 at 709-710 (2nd Cir 1992).

[33] EC, Policy Department for Citizens’ Rights and Constitutional Affairs, The Exception for Text and Data Mining (TDM) in the Proposed Directive on Copyright in the Digital Single Market – Legal Aspects (February 2018) at 12-13 [TDM – Legal Aspects].

[34] UK: Copyright, Designs and Patents Act 1988 (UK), c 48, s 29A [UK CDPA]; EU: Directives EC, Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC, [2019] OJ, L 130/92 at art 3 [EU CDSM Directive]; Singapore: Copyright Act 2021 (No 22 of 2021, Sing), s 244 [Singapore Copyright Act].

[35] See Ministry of Law Singapore & Intellectual Property Office of Singapore, Public Consultation on Proposed Changes to Singapore’s Copyright Regime (23 August 2016) at para 3.64.

[36] UK: Ian Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (May 2011) at para 5.26; EU: TDM – Legal Aspects, supra note 33at 14-15; Singapore: Singapore Copyright Review Report, supra note 31 at para 2.8.4.

[37] UK CDPA, supra note 34, s 29A.

[38] Singapore Copyright Act, supra note 34, ss 243-244. This exception also applies to preparatory work done for the purposes of computational data analysis.

[39] A notable exception is Japan. See Tatsuhiro Ueno, “The Flexible Copyright Exception for ‘Non-Enjoyment’ Purposes – Recent Amendment in Japan and Its Implication” (2021) 70:2 GRUR International 145 at 149.

[40] UK: Intellectual Property Office, Exceptions to copyright: Research (October 2014) at 8; Singapore: Singapore Copyright Review Report, supra note 31 at para 2.8.5.

[41] See Sellars, supra note 1 at 373-375.

[42] Jonathan Band & Jonathan Gerafi, “The Fair Use/Fair Dealing Handbook” (March 2015), infojustice.org, online: <http://infojustice.org/wp-content/uploads/2015/03/fair-use-handbook-march-2015.pdf> at 3.

[43] There is considerable academic literature surrounding the proposition that the “fair dealing” and “fair use” exceptions are not as different as the language of their provisions might suggest—see e.g. Ariel Katz, “Debunking the Fair Use vs. Fair Dealing Myth: Have We Had Fair Use All Along?” in Shyamkrishna Balganesh, Ng-Loy Wee Loon & Sun Haochen, eds, The Cambridge Handbook of Copyright Limitations and Exceptions (Cambridge: Cambridge University Press, 2021) 111. However, a discussion on this issue would extend far beyond the scope of this article—it suffices to note that the issue exists.

[44] See e.g. UK: UK CDPA, supra note 34, ss 29, 30 and 30A; New Zealand: Copyright Act 1994 (NZ), 1994/143, ss 42-43.

[45] See e.g. Singapore: Singapore Copyright Act, supra note 34, s 191; US: 17 USC § 107.

[46] See e.g. Australia: IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14 at para 24-25; Canada: Cinar Corp. v Robinson 2013 SCC 73 at para 23, [2013] 3 SCR 1168; US: Altai, supra note 32 at 711.

[47] See e.g. Singapore: Global Yellow Pages, supra note 28 at paras 74-76; US: Campbell v Acuff-Rose Music, Inc., 114 S Ct 1164 at paras 3,4 (1994).

[48] This is true even in jurisdictions which feature the narrower “fair dealing” exceptions in their copyright statutes—see e.g. UK: Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142 at para 70; New Zealand: Media Works NZ Ltd v Sky Television Network Ltd (2007) 74 IPR 205 at para 74.

[49] See e.g. UK: Meltwater, supra note 27; US: Field v Google Inc., 412 F Supp (2d) 1106 (D. Nev. 2006).

[50] See e.g. the clause at issue in HiQ Labs, Inc. v Linkedin Corp, 938 F (3d) 985 at 991, n 5 (9th Cir 2019) [Linkedin]: more than 95 million automated attempts to scrape data were blocked every day, based on the clause in the terms of service which provided that users were not allowed to “[s]crape or copy profiles and information of others through any means (including crawlers, browser plugins and add-ons, and any other technology or manual work)”, “[u]se manual or automated software, devices, scripts robots, other means or processes to access, ‘scrape,’ ‘crawl’ or ‘spider’ the Services or any related data or information”, or “[u]se bots or other automated methods to access the Services”.

[51] See e.g. the clause at issue in PropertyGuru Pte Ltd v 99 Pte Ltd [2018] SGHC 52 at para 77 [PropertyGuru]: the terms of service state that the site’s content can “only be used for your own and non-commercial use, and not for publication, distribution, transmission, retransmission, redistribution, broadcast, reproduction or circulation to someone else in the same company or organisation, and not for posting to other websites or forums, newsgroups, mailing lists, electronic bulletin boards, or Internet Relay Chats operated by other websites”.

[52] See Linkedin, supra note 50.

[53] This argument was attempted unsuccessfully in PropertyGuru, supra note 51. As a causal link between the alleged act of inducement and alleged breaches could not be established, the court did not see the need to examine the other elements of the tort. However, in the author’s view, the tort of inducement of breach of contract would be an appropriate cause of action in a situation involving an application built upon web-scraped data, where the web scraping constituted a breach of a website’s terms of service.

[54] See Meltwater, supra note 27 at para 49.

[55] Eliza Mik, “Contracts Governing the Use of Websites” (2016) Sing JLS 70 at 74-75.

[56] Kevin Conroy & John Shope, “Legal Analysis: Look Before You Click: The Enforceability of Website and Smartphone App Terms and Conditions” (2019) 63 Boston Bar J 23 at 23. Note also the categorical “click-wrap”, “browse-wrap” or “sign-in wrap” approach from US case law, which Professor Mik criticises for failing to examine the intention of the contracting parties—see Mik, ibid at 73-74.

[57] See “Can a /robots.txt be used in a court of law?”, The Web Robots Pages (blog), online: <http://www.robotstxt.org/faq/legal.html>.

[58] It is assumed that that the “robots.txt” file cannot constitute a contract in itself, either due to lack of consideration or lack of intention to create legal relations.

[59] See Thornton v Shoe Lane Parking Ltd [1971] 1 All ER 686 (a party is bound by terms which they either know of, or reasonable steps have been taken to give them notice of the terms; see also the famous “red hand rule”, on the same page) at 690.

[60] Carlill v Carbolic Smoke Ball Company [1983] 1 QB 256 at 261-262.

[61] See Part II.B of this paper.

[62] Singapore Copyright Review Report, supra note 31 at para 2.14.8. Note that this may be limited to particular situations where contractual overrides are likely to be prevalent—see e.g. TDM – Legal Aspects, supra note 33 at 13 (which notes that “[r]esearch and database providers often contractually override exceptions and limitations”).

[63] UK CDPA, supra note 34, s 29A(5); Singapore Copyright Act, supra note 34, s 187(1)(c).

[64] EU CDSM Directive, supra note 34, articles 3 and 4 read with article 7(1).

[65] Ibid, recital 8.

[66] Ibid, recital 18.

[67] See the examples cited in “Protecting Exceptions Against Contract Override: A Review of Provisions for Libraries” (27 November 2019), IFLA, online: <https://www.ifla.org/publications/node/92678> at 3.

[68] The author could not find any specific prohibitions of contractual overrides of the “fair use” and “fair dealing” provisions.

[69] Copyright and Related Rights Act, 2000 (No. 28 of 2000, Ireland), s 2(10).

[70] Singapore Copyright Act, supra note 34, s 186(2)(a).

[71] See e.g. the clauses extracted at n 50 and n 51 of this article.

[72] It bears re-emphasis that the issue of whether users of websites are contractually bound by these terms is controversial—see generally Part IV of this paper. At the very least, this is a source of legal uncertainty for users of web scrapers.

[73] See Part III.B.1 of this article.

[74] TDM – Legal Aspects, supra note 33 at 6.

[75] See Part III.C of this article.

[76] See Part III.B.1 of this article.

[77] See Part I of this article.

[78] When seeking consent from website owners, they might offer access to their application programming interfaces (“APIs”), which could operate more efficiently than web scrapers!

In Conversation with Dr. Michael Hwang

A PDF version of this article is available here.

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IN CONVERSATION WITH DR. MICHAEL HWANG

Interviewers: Clement Yew* & Zhuoyan Yang**

This is the fifth part of a series of interviews that the Intellectual Property Students Association (“IPSA”) has conducted with key players of the intellectual property (“IP”) field in Singapore. These key players represent a diversity of views in the field of IP dispute resolution. The Singapore IP Strategy 2030 Report has highlighted that Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. [1] The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore intends to employ towards advancing its goal as an IP dispute resolution hub.

On 18 November 2021, IPSA had the opportunity to interview Dr Michael Hwang SC, a Senior Counsel of the Supreme Court of Singapore and Chartered Arbitrator at the Singapore International Arbitration Centre (“SIAC”). He has over 50 years of practice experience and is a recognized expert in multiple areas of practice, including company, finance, banking, and most relevantly, IP law. As an accredited arbitrator of numerous international arbitration institutions, Dr Hwang has been involved in many arbitrations and mediations involving a host of countries in the Asia Pacific region and beyond. His experience makes him well-positioned to provide invaluable insights on the global arbitration landscape and its interactions with IP.

Q1: How do claims over IP rights arise as an issue to be decided in arbitration?

Dr Hwang noted that although parties usually submit to arbitration in the context of commercial contracts, the arbitration clause itself is often drafted in very broad terms. The typical way to draft an arbitration clause is that “any dispute arising under or arising out of this contract” shall be arbitrated. When the wording “arising out of” or “in connection with” is used, even a separate contract or tortious issue (typically an allegedly fraudulent misrepresentation inducing a contract) may be arbitrated so long as the issue is related to the contract containing the arbitration clause in some way.

Dr Hwang provided the following example: A manufacturer of branded goods may appoint a distributor cum licensee in a foreign country for his goods. If the distributer proceeds to register the trademark of the goods for himself in that foreign country, and this registration is impliedly or expressly prohibited by the contract, the matter may be resolved by arbitration if the contract includes an arbitration clause, although there may have to be a further application to court to remove the offending registration.

Q2: Can parties arbitrate on IP disputes?

Dr Hwang answered: “In principle, there should not be a barrier for IP rights to be heard by an arbitral tribunal.” However, there was significant academic debate about whether IP rights are arbitrable. The traditional view in certain countries was that IP rights are not arbitrable. However, it is now broadly accepted that disputes relating to IP rights, like disputes relating to any other type of privately held rights, are arbitrable.[2] With regard to this concern, Dr Hwang commented that the only reason why many people think IP issues may not be arbitrated is that intellectual property rights are derived from public registries (e.g., trade marks and patents for registered designs). Many thus assume that related disputes should be resolved by these registries under the dispute resolution platform prescribed in the relevant legislation.[3]

Dr Hwang explained that this phenomenon of legal rights emanating from a registry is not unique to IP rights and can be observed in other areas of law. For example, land titles are derived from the Land Titles Registry. To resolve the apparent conflict, one simply has to look at the IP dispute in a different light, that is, as a breach of contract. This breach of contract could arise because one party wrongly registered a certain IP right. The claimant thus, in arbitration, seeks to obtain an order for the registered proprietor to remove his/her registered right from the registry. Dr Hwang observed that this is a more roundabout way of doing things but is certainly not impossible. In other words, while an arbitral tribunal cannot decide on the application for IP rights itself, they can decide on breaches of contract or even fiduciary duties.[4]

Commenting further on the current status of arbitrability of IP disputes, Dr Hwang noted that since 2001, Section 11 of Singapore’s International Arbitration Act has stated that any dispute which the parties had agreed to submit to arbitration would be arbitrable unless it was contrary to public policy.[5] Thus, there was already a strong argument that IP disputes were arbitrable. However, in some countries, there is still adherence to the older view that IP disputes are not arbitrable.

In Dr Hwang’s opinion, the term “public policy” is reserved for specific issues such as criminal and family law issues. In relation to the common law world generally, Dr Hwang noted “the tide seems to be moving slowly, [we] just have to wait for the decisions [which raise arbitrability as an issue] to come to the right courts before the right judges.” Alternatively, jurisdictions that subscribe to the older view that IP disputes are not arbitrable may be inspired by Singapore’s legislation to similarly change their own legislation so as to clarify that IP rights are indeed arbitrable.

Dr Hwang cautioned that differences in judicial opinion may pose issues. Like the IAA, the New York Convention provides that the enforcing court can refuse recognition and enforcement of an award when they find that such recognition or enforcement would be contrary to its public policy.[6] This may occur if a foreign award is sought to be enforced in a country where “public policy” is interpreted to include IP issues as well.

Q3: Have you seen any recent trends in arbitration with cases involving IP? What do you think are the reasons for these trends, and where do you think these trends are headed in the future?

Dr Hwang shared three trends. Firstly, the general trend he noticed was that parties focus on contractual grounds of argument even though their cases involve a breach of IP rights. He proffered two reasons why this may be so. First, there is a category of cases which ostensibly involve IP rights but the issue in dispute is actually wholly contractual in nature. These include breaches of licensing and franchising agreements. A recent arbitration trend in Singapore is the rise in disputes on video game rights. Second, parties may use contractual arguments because it is difficult to fit their case within the traditional IP remedies classification, such as remedies of injunctive relief. Dr Hwang elaborated on a case regarding the building of chemical plants. During a pitch meeting, a specialist in designing chemical plants (“the Designer”) had shared information on how to build a chemical plant with a prospective chemical plant operator (“the Operator”). The Designer and the Operator entered into a widely drafted non-disclosure agreement covering all information and plans disclosed to the Operator during and after the pitch meeting. Two years later, the Designer (i.e., the Claimant) learnt that the Operator had built a chemical plant that was almost identical to the plans shown and information disclosed to the Operator at and following that pitch meeting without permission. Initially, Designer wanted to rely on breach of the non-disclosure agreement to obtain an injunction to halt the building of two further plants which the breaching party had planned to build. However, the Designer decided that the practicalities of enforcing an injunction in China where the breach occurred were too difficult. In the end, it chose to pursue damages and the tribunal awarded the Designer Wrotham Park damages, that is, damages measured by such a sum of money as might reasonably have been demanded as a quid pro quo for relaxing the restrictive term breached.[7] The award of these damages may not have been possible in a traditional cause of action under IP law.

The second broad observation pointed out by Dr Hwang was that a contractual cause of action does not mean that the tribunal and/or advocates would invariably forget about the background IP context. He illustrated with a case where a property owner had commissioned a world-renowned architect to design and build a one-of-a-kind property. The commissioning agreement included an unorthodox clause providing that the architect would not duplicate this design for another building. A few years later, an arbitral claim was brought for alleged breach of this clause when the architect was in the midst of designing another project. Dr Hwang shared that in deciding on the factual issue of whether the new building would reproduce the key architectural features of the commissioned building, he had to turn to the law of copyright for guidance. Otherwise, there would not have been any disciplined basis and criteria on which to make the factual finding of reproducing the essential design of the original building. Eventually, the tribunal heard expert testimony from both parties’ architects to identify the similar and different features of the existing building and the yet-to-be-constructed building (based on the building plans), not unlike the inquiry for copying in copyright law.[8]

Thirdly, Dr Hwang drew our attention to a specific procedural norm which is often used in IP and trade secret disputes. This was the use of a protocol called “attorney-eyes only.” Under this protocol, where there is a request for either side to produce relevant documents which the requesting party does not possess, the tribunal can make orders to preserve the commercial or technical confidentiality of these documents. Parties will disclose documents to the other side only for the purposes of arbitration, and only to very limited persons such as the external attorneys and external expert witnesses.

Q4: A survey published in May 2021 reported that Singapore was tied with London as the top arbitral seat in the world.[9] In your opinion, how can an institution distinguish itself as an ideal seat for international arbitration for IP disputes?

Dr Hwang pointed out that the reporting and classification of caseload was an important factor that influenced whether parties and their lawyers choose to arbitrate at any given arbitration institution (e.g. SIAC). This is particularly so where disputes are increasingly more niche and specific, such as cryptocurrency disputes. Tracking and providing separate datasets for IP cases as opposed to lumping them under broader classifications, such as contractual or commercial disputes, may provide effective guidance for parties choosing their dispute resolution forum.

Q5: You are known for proposing innovative changes to arbitration rules and legislation. Do you think there should be any reform in Singapore with regard to international arbitration law and IP disputes?

Dr Hwang assured us that “the good news is that the reforms have already come.” Apart from adopting a narrower reading of the public policy prohibition, Part IIA of the IAA makes Singapore much more well-positioned to hear IP disputes.[10] Part IIA was introduced in 2019 and provides a self-contained regime where parties can arbitrate to resolve an IP rights dispute as long as they have some form of a contract in which they agree to arbitrate any IP rights disputes.[11] Dr Hwang noted that this Part also has the effect of overriding other IP dispute resolution legislation.[12] Dr Hwang commented that there is probably no other jurisdiction which has arbitration legislation which is comparable to the breadth of the provisions in Part IIA, which are very widely drafted.

Q6: One of the highlighted objectives of the Singapore IP Strategy 2030 is to build and promote Singapore as an IP Dispute Resolution Hub. Do you have any suggestions on what else can be done by the relevant stakeholders to promote the arbitration of IP disputes in Singapore?

Dr Hwang expressed that he is very impressed by the enthusiasm of the Intellectual Property Office of Singapore (“IPOS”), related government officials, and the IP bar in pushing Singapore to become an IP dispute resolution hub. Dr Hwang recognized that IPOS has been active in promoting this goal to the lay public and professionals working with IP. For example, IPOS has recently been running a series of webinars on how to interest qualified professionals in becoming patent examiners or patent dispute expert witnesses. Dr Hwang noted that the slots for these webinars were quickly filled up. He suggested that it may be a good idea to pause and assess how the public responds to existing efforts before embarking on further initiatives.

Q7: What advice would you give to law students aspiring to practice in international arbitration?

Dr Hwang’s advice was to start by going through SIAC web archives for free webinars on arbitration cases and to sign up for the mailing lists of other arbitration institutions. He added that one “could spend many hours educating yourself [with resources] from all over the world if you are really determined.” In addition, he recommended interested students to peruse The Principles and Practice of International Arbitration by Margaret L. Moses, which he thinks is a relatively accessible text for beginners but contains a wealth of helpful information expressed in clear and readable language.

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* LLB (Candidate) (NUS), Class of 2024.

** LLB (Candidate) (NUS), Class of 2022.

[1] Intellectual Property Office of Singapore, Singapore IP Strategy (SIPS) 2030 Report, (Singapore: Intellectual Property Office of Singapore, 2021), online: <https://www.ipos.gov.sg/docs/default-source/default-document-library/singapore-ip-strategy-report-2030-18may2021.pdf> (accessed 16 December 2021).

[2] World Intellectual Property Organization, “Why Arbitration in Intellectual Property?”, online: <https://www.wipo.int/amc/en/arbitration/why-is-arb.html> (accessed 18 December 2021).

[3] See e.g. Trade Marks Act (Cap 332, 2005 Rev Ed Sing), ss 22(5) and 23(5) which provide that an application for revocation or invalidation of registered trade mark “may be made either to the Registrar or to the Court.”

[4] In partnerships or joint ventures (especially in the technology industry), it is often possible to find a fiduciary relationship between the partners or joint ventures of a company or a project. See Turf Club Auto Emporium Pte Ltd v Yeo Boong Hua [2018] 2 SLR 655 at [43] for an elaboration of when fiduciary duties may arise.

[5] International Arbitration Act (Cap 143A, 2020 Rev Ed Sing) [IAA].

[6] Convention on the Recognition and Enforcement of Foreign Arbitral Awards, 10 June 1958, 330 UNTS 38, art V(2)(b).

[7] Wrotham Park Estate Co Ltd v Parkside Homes Ltd [1974] 1 WLR 798.

[8] In copyright infringement, the court undertakes a visual comparison of the copyright work and the alleged infringing work, noting the similarities and the differences, to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence: see Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416.

[9] K.C. Vijayan, “Singapore clinches top spot as preferred arbitration hub for first time: Survey” The Straits Times (10 June 2021), online: <https://www.straitstimes.com/singapore/courts-crime/singapore-clinches-top-spot-as-preferred-arbitration-hub-for-first-time> (accessed 18 December 2021).

[10] Supra note 5.

[11] IAA, 26B(1) provides that an IP rights dispute is capable of settlement by arbitration as between the parties to the IP rights dispute.

[12] IAA, s 26B(3).

Is Singapore's Constitutional Supremacy An Illusion?

A PDF version of this article is available here.

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IS SINGAPORE’S CONSTITUTIONAL SUPREMACY AN Illusion?

Desmond Chye*

I.         Introduction

The conventional wisdom is that Singapore operates under the principle of constitutional supremacy by virtue of Article 4 of the Constitution of the Republic of Singapore.[1] Unfortunately, the reality is much murkier than what the Constitution would like one to believe for there has been a steady stream of academic debate, since at least the 1980s, over whether constitutional supremacy actually exists in form and in substance locally. In this article, I shall explore the arguments for and against constitutional supremacy and conclude that while it does exist in theory, it is unfortunately weak in practice. This is as the capabilities of and the actions by the bodies supposedly co-equal under the Constitution are not really synonymous with that of a state practising constitutional supremacy.

II.         when does constitutional supremacy arise?

The core difference between parliamentary and constitutional supremacy lies in the scope of legislative power accorded to parliament. Under the former, the legislature has the unfettered right to make or undo any law whereas under the latter, the legislature’s ability is fettered by the Constitution such that any acts of parliament inconsistent with the Constitution would be void.[2] A parliament is ‘unfettered’ if it meets Dicey’s criteria for a ‘sovereign parliament’: (1) when parliament is free to amend all laws, fundamental or otherwise in the same manner as other laws; (2) when there is no legal distinction between constitutional and other laws; and (3) when there are no other bodies which can nullify an act of parliament.[3] As such, Dicey observed that constitutional supremacy requires the following characteristics: (1) the constitution must be written; (2) it must be rigid; and (3) acts by the legislature must be capable of invalidation if they amount to overstepping their constitutionally prescribed authority.[4]

In addition to the Diceyean factors, the constitution must also be a ‘grundnorm’[5] for it to be supreme. Similar to how a creature cannot be superior to its maker, an “instrument cannot validate itself by declaring itself valid” hence a constitution can only attain supremacy if it is authorised by a higher power.[6] For constitutions which are already at the apex of the legal order, this ‘higher power’ must be external to the organs created under the constitution.[7] Examples include popular acceptance via a referendum, a gift by a departing colonial overlord to its former subjects, and even a revolutionary upheaval that imposes a new legal order illegitimately.[8] As a corollary to this principle, a constitution created by a legislative act cannot give rise to constitutional supremacy for it would mean that parliament, not the constitution, is the grundnorm.

III.         SINGAPORE’s theoretical basis for constitutional supremacy

There is a theoretical basis for constitutional supremacy in Singapore. On the Diceyean front, the Constitution clearly meets the required criteria as amending the Constitution is legally fettered. Article 4 of the Constitution declares that “any law enacted by the Legislature after the commencement of this Constitution which is inconsistent with this Constitution shall, to the extent of the inconsistency, be void”, which is enforced by the Judiciary under Article 93.[9] Article 5 of the Constitution further stipulates that bills seeking to amend the Constitution must obtain the support of “not less than two-thirds of the total number of Members of Parliament (excluding nominated Members)”.[10] On the matter of the grundnorm, some difficulties have been voiced but those views can be safely ignored for the reasons elaborated below.

Relying on the grundnorm theory, Andrew Harding opined that the Constitution cannot be supreme because it was created by an Act of Parliament, the Republic of Singapore Independence Act, 1965.[11] Harding theorised that when Singapore became independent, the Malaysian Parliament failed to transfer its plenary powers to the Singapore Parliament via the Constitution and Malaysia (Singapore Amendment) Act, 1965[12] due to drafting errors in section 5 of the Singapore Amendment.[13] This was as the offending section stated that the “executive authority and legislative powers of the Parliament of Malaysia” [emphasis added] would be “transferred so as to vest in the Government of Singapore” [emphasis added].[14] The problems with the phraseology are twofold: (1) Malaysia’s Parliament did not have executive authority; and (2) it could not have been intended to vest executive and legislative powers in the “Government” as that customarily refers to the Executive.[15] Harding further posited that “Government” could not have referred to the legislature as otherwise the phrase “Legislature of Singapore” would have been used instead, as evidenced by the usage of the latter phrase in section 7 of the same Act.[16] According to Harding, these errors then deprived Singapore’s Parliament of its required plenary powers to subsequently enact Singapore’s post-independence constitution via the RSIA.[17] Harding thus opined that the only way the Constitution could have come into being via the RSIA is by rationalising the whole affair as a ‘revolutionary situation’.[18] Under this theory, Parliament assumed plenary powers on its own accord in the ensuing legal vacuum which it then used to pass the RSIA.[19] As a result of this, Harding concluded that the Constitution is not the grundnorm but rather “a manifestation of the grundnorm” that rests in parliamentary supremacy.[20]

However, Harding’s theory is unsustainable as it relies on a flawed assumption that the Constitution of the State of Singapore, 1963[21] was no longer valid at the time the RSIA was passed.[22] The 1963 Constitution was actually still valid post independence as section 7 of the Singapore Amendment enabled it to apply when it stated that “[a]ll present laws in force in Singapore immediately before Singapore Day shall continue to have effect”[23] such that the 1963 Constitution “evolved into or succeeded as the constitution of the 1965 State of Singapore on Singapore Day”.[24] This means that the RSIA was not an act of a supreme parliament creating a new constitution but rather that of an inferior parliament amending the existing constitution.[25]

Moreover, Harding’s reasoning with regards to the errors in section 5 is dubious. As analysed by former Chief Justice Chan Sek Keong, the apparent incongruity of the phrases used can be easily avoided by taking a purposive interpretation of them. The former Chief Justice pointed out that the phrase “executive authority” is likely to be free standing as it is not qualified by the words “of Parliament of Malaysia to make laws” such that it should not be read as so qualified.[26] For the issue with the phrase “Government of Singapore”, the former Chief Justice perceptively observed that any ambiguity would be removed should it be read purposively—it would refer to Singapore’s Parliament and the Head of State respectively.[27]

Lastly, even if Harding’s interpretation of section 5 of the Singapore Amendment is correct, Parliament would have still acquired the necessary plenary powers to enact the RSIA without the need for the ‘revolutionary situation’ envisaged by him. As held by the Singapore Court of Appeal in Public Prosecutor v Taw Cheng Kong,[28] the mere fact that section 5 of the Singapore Amendment failed to transfer plenary powers from the Malaysian Parliament did not leave the Singapore Parliament entirely without recourse.[29] This was as Singapore’s Parliament was able to separately obtain the required plenary powers from the “political fact of Singapore’s independence and sovereignty” which had “the consequences of vesting the Legislative Assembly of Singapore with plenary powers on Singapore Day”.[30] Harding’s proposition is thus not convincing in proving that Singapore lacks a theoretical basis to find constitutional supremacy.

IV.         weak constitutional supremacy

Notwithstanding the theoretical basis for finding constitutional supremacy in Singapore, whether it actually exists in practice is another matter. The Diceyean factors must not only be met in form but also in substance. Unfortunately, it does not appear that constitutional supremacy is strongly adhered to locally. This is as the legal fetters on what laws the legislature can pass are too lenient and, the Judiciary’s fear of overstepping its constitutional role has inadvertently given too much leeway to the executive and legislature to enact laws which weaken constitutional supremacy.

A.             Weak Legal Fetters

Enforcing the text of the Constitution alone is insufficient to achieve constitutional supremacy in practice as the Constitution lacks clauses, such as an eternity clause,[31] that impose legal immutability on its core provisions. In fact, if one looks at the text of the Constitution, there are no limitations whatsoever against the permissible range of amendments the legislature can make.[32] This means that in theory, any constitutional bills, including those that would ‘constitutionalise’ ordinary bills establishing a dictatorship, can be passed so long as the requirement for two-thirds majority support in Parliament under Article 5 is met. Such an outcome would render Article 4’s supremacy clause toothless against a rogue legislature bent on effacing the Constitution—a threat not insignificant in Singapore where the ruling party has held on to their parliamentary supermajority since independence.

In light of the lenient constitutional text, a common law check in the form of the basic structure doctrine to limit the range of permissible amendments is thus necessary. The courts are however unwilling to adopt anything other than an emaciated form of the doctrine. At its core, the basic structure doctrine involves the “judiciary deduc[ing] certain core characteristics of the constitutional order from the text, underlying philosophy, and history, and declar[ing] these to be unamendable”.[33] There are two flavours to the doctrine based on how rigorously it is applied, the ‘thick’ version in Kesavananda Bharati v State of Kerala[34] which allows courts to invalidate amendments should any constitutional values[35] be undermined, and the ‘thin’ version espoused in Mohammad Faizal bin Sabtu v Public Prosecutor[36] which only allows for invalidation if the amendment derogates from Westminster-style separation of powers.[37] The former has yet to be endorsed locally and it is nebulous whether the latter applies as all mentions of thin doctrine have only been in obiter and were draped in an abundance of caution.[38]

Even if the thin version applied, it would be of questionable efficacy. Firstly, it does not police the relationship between the government and its citizens as it only deals with “how political power is organised and divided between the organs of State in a particular society”.[39] This is problematic because a constitution at its core is a ‘social contract’ between the governors and the governed that sets out the rights and liabilities each party owes to the other. If this ‘contractual’ relationship is incapable of enforcement, then the constitution’s raison d’être is undermined.

Secondly, the thin version does not appear very effective at preserving ‘Westminster-style’ separation of powers. A core tenet of the Westminster system is that every citizen must have a right to representation in parliament—a constituency cannot be denied an elected representative.[40] However, the thin version allows a denial of representation, as demonstrated by the court’s obiter dicta in Wong Souk Yee which dispensed with the need to hold a by-election to fill up any post-election vacancies arising in a Group Representation Constituency (“GRC”):

Even if the right to representation forms part of the basic structure of the Constitution, it does not follow that there is a particular form of representation that is “fundamental and essential” to the Westminster model of government such that it cannot be departed from. In our judgment, there is nothing in principle that would prevent Parliament from devising the GRC scheme in such a way that a GRC could be left to be represented by less than its full complement of Members where one or more of them has vacated his or her seat. It is therefore unnecessary to consider the existence and scope of the basic structure doctrine for the purpose of disposing of this appeal.[41] [emphasis added]

Although the court explained it in terms of the ‘form of representation’ which suggests that having complete or incomplete representation is just a variation on the Westminster system, this is fallacious thinking. Fundamentally, the right to representation is a binary question: one either has representation or he does not. As such, only variations as to the quality of representation can count as variations to the Westminster system. In Wong Souk Yee however, the issue was not with the quality of representation, which the learned judge seemed to have implied by using the ‘complete or incomplete representation’ comparison, but rather the total absence of representation vis-à-vis the fifth parliamentary seat. In short, the voters were denied a voice separate from the other members due to the vacant seat. This analysis is possible because GRC members do not all act as one Member of Parliament serving the constituency. If it was converse, then Wong Souk Yee’s reasoning would have been sustainable for the seat would have remained completely filled until all members vacated. Seen in this light, the Westminster system was in fact derogated when the voters were denied a by-election to replace their missing Member of Parliament. The thin doctrine thus failed its purpose of protecting the Westminster system.

B.             Excessive Judicial Deference to the Legislature and Executive

The prevailing philosophy of the courts, born out of the fear of judicial overreach, is unfortunately too deferential to the legislature and executive for them to serve as the enforcer of constitutional supremacy. According to the Diceyean characterisation of constitutional supremacy, the legislative, executive and judicial branches are co-equal under the constitution with the duty entrusted to the judicial branch to ensure that all organs of state adhere to their constitutionally demarcated roles.[42] In discharging this sacred role, it is regrettable that the local courts adopt a ‘green light’ approach.[43] Under this philosophy, the judiciary is not “the first line of defence against administrative abuses of power: instead, control can and should come internally from Parliament and the Executive itself”.[44] In short, the judiciary prefers the government to practice ‘ownself check ownself’ and would seek to trust the government’s judgment as much as possible.[45] While there may be perfectly legitimate, compelling socio-political reasons for the court to adopt this lenient approach, it comes at the expense of constitutional supremacy by emaciating the judiciary’s checking power.

Perhaps the most vivid example of the damage wrought to constitutional supremacy is the fact that clauses which oust judicial review of legislative or executive acts can be valid. This occurred in the watershed case of Teo Soh Lung v Minister for Home Affairs[46] which affirmed the constitutionality of the amendments to Article 149 of the Constitution that ousted the court’s judicial review powers over cases relating to subversion or national security under the Internal Security Act.[47] In coming to their decision, the court displayed their ‘green light’ preferences by deferring to the decision of Parliament to leave it “to the Cabinet and the President acting in accordance with the advice of the Cabinet to determine whether it is necessary in the interests of national security to detain a person”[48] under the ISA. Such an approach threatens the foundations of constitutional supremacy by allowing a supposedly co-equal body to be ‘more equal’ than the rest.

Even though there has been some rhetorical flourish of late decrying ouster clauses, the fact remains that the courts are still very hesitant to invalidate them. In Nagaenthran a/l K Dharmalingam v Public Prosecutor,[49] the defendant claimed that section 33B(4) of the Misuse of Drugs Act (reproduced below) is an unconstitutional ouster clause because it blocks the court from reviewing whether the Public Prosecutor’s determination was valid.[50]

Section 33B(4) of the MDA: “The determination of whether or not any person has substantively assisted the Central Narcotics Bureau in disrupting drug trafficking activities shall be at the sole discretion of the Public Prosecutor and no action or proceeding shall lie against the Public Prosecutor in relation to any such determination unless it is proved to the court that the determination was done in bad faith or with malice.” [emphasis added]

The court, in a radical departure from Teo Soh Lung, opined that an ouster clause would be “constitutionally suspect for being in violation of Article 93 of the Singapore Constitution as well as the principle of the separation of powers”.[51] However, the actual impact of that statement remains highly unclear as the court continued to approach the case in a conservative, ‘green light’ way by taking a very narrow view of what counts as an ouster clause. This was as the court, after incanting the famous phrase from Chng Suan Tze v Minister for Home Affairs[52] that “[a]ll power has legal limits and the rule of law demands that the courts should be able to examine the exercise of discretionary power”,[53] found that section 33B(4) of the MDA was not intended by Parliament to be an ouster clause but rather only an immunity clause, which is constitutional.[54] Chief Justice Sundaresh Menon explained that the clause’s purpose is not to “exclude the jurisdiction of the courts to supervise the legality of the [Public Prosecutor]’s determination under [section] 33B(2)(b) of the MDA” but rather only to “immunise the [Public Prosecutor] from suit save on the stated grounds”.[55]

With due respect to the learned Chief Justice, it is surprising that the clause in Nagaenthran is not an ouster clause because section 33B(4) of the MDA appears to be on all fours with the ouster clause in section 8B(2) of the ISA. Section 33B(4) of the MDA also prevents the court from reviewing the validity of the decision maker’s determination save on some exceptions (bad faith and malice in this case). While this was something the Chief Justice noticed when he observed that “Parliament intended the inquiry under [section] 33B(2)(b) to be determined solely by the [Public Prosecutor] and not by the court”,[56] he ultimately found that both clauses were distinguishable. The core thrust of the Chief Justice’s argument appears to be that there was no ouster of the court’s jurisdiction over how the Public Prosecutor made his determination because the court would not have adjudicated on it anyway.[57] This was as the Chief Justice, concurring with Parliament, treated the determination’s validity as non-justiciable for being something the judiciary could not have competently adjudicated on due to a lack of specialist knowledge on the matter.[58] There is however a logical deficiency in this argument: finding that one would not have adjudicated on a case, even if given a choice, is not equivalent to not stripping away one’s right to adjudicate on the case. The former is a voluntary choice by the Judiciary to abstain from making a judgment while the latter is an involuntary ouster of the court’s discretion to judge by Parliament. The clause in Nagaenthran should thus be interpreted similarly as Teo Soh Lung’s—one that ousts judicial review. Alas, it would appear that the ‘green light’ approach still holds much sway over the judiciary.

V.         CONCLUSION

While constitutional supremacy has firm theoretical roots in the soil of our legal landscape, it unfortunately does not have much of a trunk on the surface. I express no judgment on whether this legal deficiency is a positive or negative one for our nation. It is a complex issue with strong arguments on both sides. Hardnosed pragmatism should trump rigid legal dogma, but at the same time, loosening the guardrails might invite trouble should the winds of authoritarianism blow in our direction. The purpose of this article is not to opine on what we should strive for but rather just to raise awareness of how weak constitutional supremacy is in Singapore.

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* LLB (Candidate), National University of Singapore, Class of 2023. All errors and views expressed in this article remain my own.

[1] (1999 Rev Ed) [Constitution].

[2] A V Dicey, Introduction to the Study of the Law of the Constitution (Great Britain: Liberty Classics, 1982) at 3–4 [Dicey].

[3] Ibid at 37–39.

[4] Ibid at 78–79.

[5] A J Harding, “Parliament and the Grundnorm in Singapore” (1983) 25:2 Malaya L Rev 351 at 357 [Harding].

[6] Ibid.

[7] H Kelsen, General Theory of Law and State, translated by A Wedberg (Cambridge: Harvard University Press, 1945) at 114–115.

[8] Ibid.

[9] Constitution, supra note 1.

[10] Ibid.

[11] (Act 9 of 1965) [RSIA].

[12] (Act 53 of 1965) [Singapore Amendment].

[13] Harding, supra note 5 at 364–366.

[14] Singapore Amendment, supra note 12.

[15] Harding, supra note 5 at 364–366.

[16] Ibid.

[17] Ibid.

[18] Ibid.

[19] Ibid.

[20] Ibid.

[21] [1963 Constitution].

[22] Chan Sek Keong, “Basic Structure and Supremacy of the Singapore Constitution” (2017) 29: Special Issue Sing Ac LJ 619 at 658 [Chan, “Basic Structure”].

[23] Singapore Amendment, supra note 12.

[24] Chan, “Basic Structure”, supra note 22 at 655.

[25] Ibid at 658.

[26] Ibid at 650.

[27] Ibid.

[28] [1998] 2 SLR(R) 489 (CA).

[29] Ibid at paras 29–33.

[30] Ibid.

[31] See Article 79(3) of the Basic Law for the Federal Republic of Germany in the revised version published in the Federal Law Gazette Part III, classification number 100–1, as last amended by Article 1 of the Act of 29 September 2020 (Federal Law Gazette I p 2048): “Amendments to this Basic Law affecting the division of the Federation into Länder, their participation on principle in the legislative process, or the principles laid down in Arts 1 and 20 shall be inadmissible”.

[32] The requirements for a valid amendment to the Constitution are found in Article 5.

[33] Jaclyn L Neo, “Towards a “Thin” Basic Structure Doctrine in Singapore (I-CONnect Column)” (17 January 2018), I-CONnect: Blog of the International Journal of Constitutional Law, online: <http://www.iconnectblog.com/2018/01/towards-a-thin-basic-structure-doctrine-in-singapore-i-connect-column/>.

[34] AIR 1973 SC 1461 per Sikri CJ’s judgment.

[35] These values are normally abstract ideals drawn from a constitution’s preamble.

[36] [2012] SGHC 163.

[37] Ibid at para 11.

[38] See Ravi s/o Madasamy v Attorney-General [2017] 5 SLR 489 (HC) at paras 65–66 and Wong Souk Yee v Attorney-General [2019] 1 SLR 1223 (CA) at paras 77–78 [Wong Souk Yee].

[39] Yong Vui Kong v Public Prosecutor [2015] 2 SLR 1129 (CA) at para 71.

[40] Vellama d/o Marie Muthu v Attorney-General [2013] 4 SLR 1 (CA) at para 79.

[41] Ibid at para 78.

[42] Dicey, supra note 2 at 40.

[43] Chan Sek Keong, “Judicial Review—From Angst To Empathy, A Lecture to Singapore Management University Second Year Law Students” (2010) 22: Sing Ac LJ 469 at para 29.

[44] Ibid.

[45] Ibid at para 37.

[46] [1989] 1 SLR(R) 461 (CA) at paras 15–16 [Teo Soh Lung].

[47] (Cap 143, 1985 Rev Ed) [ISA].

[48] Teo Soh Lung, supra note 46 at para 19.

[49] [2019] SGCA 37 [Nagaenthran].

[50] (Cap 185, 2008 Rev Ed) [MDA].

[51] Nagaenthran, supra note 49 at para 74.

[52] [1988] 2 SLR(R) 525 (CA).

[53] Nagaenthran, supra note 49 at para 73.

[54] Ibid at para 74.

[55] Ibid at para 51.

[56] Ibid at para 67.

[57] Ibid at paras 67–74.

[58] Ibid at paras 66–67.

In Conversation with Mr Jason Chan

A PDF version of this article is available here.

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IN CONVERSATION WITH MR JASON CHAN

Interviewers: Annabel Kwek & Kayleigh Lim*

This is the fourth part of a series of interviews that the Intellectual Property Students Association ("IPSA") has conducted with key players of the intellectual property ("IP") field in Singapore. These key players represent a diversity of views in the field of IP dispute resolution. The Singapore IP Strategy 2030 Report has highlighted that Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. [1] The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore intends to employ towards advancing its goal as an IP dispute resolution hub.

On 20 August 2021, IPSA had the opportunity to interview Mr Jason Chan, Director of Amica Law LLC. Given his unique position as an IP adjudicator with the Intellectual Property Office of Singapore (“IPOS”), a domain name disputes mediator with the Singapore Mediation Centre, and a member of the Ministry of Law’s Review Committee of Singapore’s IP Dispute Resolution Framework, Mr Chan gave us illuminating glimpses into IP Disputes and the future of IP litigation in Singapore.

Q1: Having practiced IP law for the last 29 years, could you share about how the IP litigation scene has evolved and what challenges you faced as a result?

Mr Chan described his experience with the boiling frog metaphor. Similar to how a frog in a pot will not be aware of it being boiled if the water was brought to a boil slowly, Mr Chan found it difficult to articulate the extent of change in the IP litigation scene since he has been a part of the local IP practice scene throughout its changes.

Mr Chan elaborated that in his early days as a pupil and associate in Allen & Gledhill, the bread and butter of IP practice comprised of search warrant work. This entailed weekly raids at places like Sim Lim Square, Lucky Plaza and shops in Chinatown against the sale of counterfeit watches, perfumes, handbags, and other consumer products. Over time, this work began to dry up arising from the increasing affluence of Singaporeans and growing anti-counterfeit sentiments.

He noted that IP infringement has now taken on a more sophisticated form, such as the sale of TV boxes which allow for the streaming of pirated content. Unlike simple counterfeit products, such products only facilitate or enable infringement. Legislation thus had to be amended to take into account new forms of infringing activities. However, that said, Mr Chan highlighted that Singapore is no longer a destination for counterfeit products but has become a transhipment hub for such products. Thus, legal issues are more likely to arise from transhipments into and from Singapore, as opposed to the importation and sale of products, such as in the case of Burberry Ltd v Megastar Shipping Pte Ltd.[2]

Mr Chan reflected that the IP litigation scene has matured to include increasingly complex cases. For instance, the amendments to the Trade Marks Act[3] has led to legal ramifications that are more difficult for litigators to handle. [4] Mr Chan also cites the case of Starwood Hotels & Resorts Worldwide, Inc and Sheraton International IP, LLC v Staywell Hospitality Pty Limited as evidence of an evolving body of law.[5] In Starwood, the Singapore Court of Appeals (“SGCA”) clarified the principles applicable in opposition proceedings and infringement actions. Notably, in relation to the doctrine and test of “similarity and likelihood of confusion” in determining whether registration of trade mark could be refused pursuant to s 8(2) of the TMA, the SGCA held that the step-by-step approach would apply.[6] This entailed the requirements of (a) similarity of marks; (b) similarity of goods or services; and (c) likelihood of confusion arising from the two similarities, which can pose challenges when applied to the facts of each particular case especially since factual, subjective or extraneous factors will invariably arise.

Another observation that Mr Chan made was that there was a growing influx of pharmaceutical cases. One example is Zyfas Medical Co v Millennium Pharmaceuticals, Inc.[7] This is in part due to the large market for generic medicine and growing pharmaceutical industry locally. Mr Chan noted that this contrasts to the early days of the IP scene, when such cases rarely arose. He posited that one possible explanation for the rise in pharmaceutical litigation might be the lucrative nature of bidding for tenders issued by the Ministry of Health to supply therapeutics to local medical facilities. Pursuant to the Health Products (Therapeutic Products) Regulations 2016,[8] an applicant seeking product registration and marketing approval of a drug product is first required to declare any patent in force in respect of the said drug product to the Health Sciences Authority. This is known as the “patent linkage” regime. The regime plays a key role in ensuring that brand-name drugs can protect their patents. However, in order to out-compete rivals, companies producing generic medicine may seek to bypass the regime entirely to obtain registration and marketing approval without being subject to the 30-month moratorium imposed by the TPR. This is what exactly transpired in Zyfas.

Further, the rise of pharmaceutical cases also led to a rise in biotechnology related subject-matter disputes. Legal practitioners thus need to spend more time with clients and subject-matter experts to understand the relevant technology. Mr Chan cautioned that if this was not done, practitioners would not be able to effectively engage in case management, cross-examination nor conduct their case strategically with the client’s best interests in mind. Mr Chan also noted that it is now not uncommon for many individuals to be on board in a single case. In his own practice, inhouse patent attorneys in disciplines spanning from mechanical engineering to chemistry are often roped in to support patent litigation proceedings. This has inevitably led to greater scale and costs of litigation.

Nevertheless, Mr Chan observed that Singapore’s IP litigation scene is still in its infancy as compared to that of in the UK and other more mature jurisdictions. Notwithstanding the evolution of the landscape up to this point, the real challenge will likely arise in the next 10 to 20 years amidst changes to the IP litigation system, the Rules of Court,[9] and the overall civil process.

Q2: You have served as an IP adjudicator with the Intellectual Property Office of Singapore as well as a mediator with the Singapore Mediation Centre. Could you share how you typically advise your clients in relation to IP disputes?

When proffering advice, Mr Chan sets his focus on the client’s main objectives in any dispute. From the perspective of an IP rights holder, litigation invariably puts its IP rights at risk. Mr Chan noted that most of the time, the defendant would, in response to an action, seek to invalidate the relevant IP rights in issue, such as attempting to invalidate a patent or registered design. Thus, Mr Chan would advise clients to be mindful of exposing their IP to the risk of invalidation where the extent or scale of infringement is not significant or where there are possible alternative dispute resolutions options to explore. This is converse to the aims of a defendant, who may have no choice but to aggressively contest a claim where their business revolves around the importation or sale of a singular product or provision of a service which is now put under the threat of litigation.

Mr Chan also advised that lawyers should keep in mind the enforceability of any judgment or award. While Mr Chan has been successful in securing positive outcomes in certain cases, he lamented that the costs could not be recovered because the defendant had elected to be wound up rather than fork out costs or damages. Thus, litigation may come with huge costs to a party even if it is successful.

Beyond litigation, he emphasised the need to explore alternative dispute resolution options. Negotiations might result in outcomes that are more commercially expedient, especially where the client’s objectives are achieved without the accompanying exposure of risk to their IP rights. Mr Chan also drew attention to the upcoming changes to the Rules of Court,[10] where lawyers now have an active duty to explore mediation from the start and throughout legal proceedings. This, he observed, places a greater onus and responsibility on lawyers to encourage mediation.

Q3: Since you are a part of the Ministry of Law’s committee to review Singapore’s IP dispute resolution framework, how do you think the proposed amendments[11] will aid in improving the IP litigation scene?

Mr Chan believes that the proposed amendments to Singapore’s IP Dispute Resolution Framework would lead to more accessible and effective dispute resolution procedures. Notably, under the “fast track” in the new dual-track system, features such as caps on costs, recoverable damages, length of trial and early active case management will be introduced to ensure cases are dealt with expeditiously at proportionate cost. Conversely, the “normal track” would cover difficult cases such as novel patent cases. Such differentiation helps to ensure that more cases will be resolved, even when patentees are unable to protect their IP rights as a result of high litigation costs. Mr Chan pointed that this was the case in Attorney-General v Ting Choon Meng,[12] where the patentees gave up their suit because they couldn’t afford lawyer fees. A dual-track system would have possibly been helpful in such situations. Moreover, Mr Chan noted that the proposed amendments better align Singapore’s IP litigation process with the mature systems in the US and UK.

Q4: We note that you will be speaking at a course organised by IPOS International titled “Acting as an Expert Witness in a Patent Dispute.” How do you think Singapore can build up a bigger pool of expert witnesses to strengthen its position as an IP dispute resolution hub?

Foreign expert witnesses are usually engaged in patent litigation for cases concerning complex subject-matter, such as software and biotechnology. However, Mr Chan opined that sourcing for and engaging foreign experts is costly and impractical for litigation. He believes that we should aim to be able to tap into a local pool of qualified experts, given the number of well-known academic and research institutions here. However, many local experts remain reluctant to be a witness as they are often unclear about what being an expert witness entails. Thus, IPOS has sought to demystify the fear around being an expert witness by educating academics and technical experts in the field. Hopefully, this will help to ensure that Singapore will be regarded as a one-stop centre where international parties do not have to worry about finding an expert witness, whether for court proceedings or arbitrations.

To further bolster Singapore’s position as a destination for IP disputes, agencies such as IPOS and the Ministry of Law should consider looking at the conditions for conducting experiments. Pursuant to section 87A, rule 6 of the Rules of Court,[13] a party who desires to establish any fact by experimental proof must serve a Notice of Experiments on the other party. However, the rules do not provide any guidance as to how the experiment should be conducted. Also, experiments may not even be conducted in Singapore due to the lack of available dedicated facilities especially since some facilities remain solely for private academic or research purposes. Mr Chan therefore suggested that IPOS could consider working with various institutions and even industry operators so that facilities could be utilised for the purposes of litigation or arbitration. This may include partnering academic institutions like National University of Singapore (NUS), National Technical University (NTU) or Agency for Science, Technology and Research (A*STAR). Confidentiality has also become an important consideration and a source of contention with experiments since confidential or proprietary information are often involved with commercial ramifications. Element Six Technologies Ltd v IIa Technologies Pte Ltd is one such example.[14] In Mr Chan’s opinion, having an independent, trustworthy and secure facility to conduct confidential experiments would again help to persuade parties to litigate or arbitrate their disputes in Singapore.

Further, Mr Chan believes that the existence of concrete laws is insufficient for Singapore to be an attractive IP hub. Aside from practical considerations such as the lack of facilities in which experiments can be conducted and adequate facilities in court to aid the hearing of complex cases, IPOS may consider providing parties with logistical support, such as accommodation, teleworking and conferencing facilities for foreign parties. Singapore should look into improving on the practical aspects of litigation and arbitration so that parties are persuaded to consider Singapore as a better destination for IP dispute resolution. This would go a long way in developing Singapore into an attractive IP hub for court or arbitral proceedings.

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^* LLB (Candidate) (NUS), Class of 2023.

[1] Intellectual Property Office of Singapore, Singapore IP Strategy 2030 Report (Singapore: Intellectual Property Office of Singapore, 2021), online: <https://www.ipos.gov.sg/docs/default-source/default-document-library/singapore-ip-strategy-report-2030-18May2021.pdf>.

[2] [2019] SGCA 01.

[3] (Cap 332, 2005 Rev Ed Sing) [TMA].

[4] For example, the doctrine of well-known marks was first introduced following amendments made to the Trade Marks Act in 1999. Under the doctrine, an owner of a well-known trade mark may take action to ensure protection of their mark under the TMA, even if it is not registered in Singapore.

[5] [2013] SGCA 65 [Starwood].

[6] Ibid, at [15].

[7] [2020] SGCA 84 [Zyfas].

[8] (Cap. 122D) [TPR].

[9] (Cap 332, 2014 Rev Ed Sing).

[10] Ibid, s 80.

[11] According to the Final Report: Review of Singapore’s IP Dispute Resolution Framework, proposed amendments include 1) the establishment of a standalone IP division within the High Court; 2) the introduction of a dual-track system; 3) providing IPOS with the power to issue formal copyright opinions admissible as legal opinions; and 4) the formalisation of pre-grant third party observations and introduction of binding post-grant re-examination proceedings.

[12] [2017] SGCA 6.

[13] Supra note 12.

[14] [2020] SGHC 26.

Pairing Section 300(c) Murder with Section 34 Common Intention: The Case for a "Co-Terminous" Approach

A PDF version of this article is available here.

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Pairing Section 300(c) Murder with Section 34 Common Intention:

The Case for a “Co-terminous” Approach

Alan Tan Khee Jin*

(forthcoming article, Singapore Law Review Vol. 38)

Since the Court of Appeal’s pronouncement on accomplice liability in Daniel Vijay, doubts have arisen over the exact mens rea required of the secondary offender for a section 300(c) murder conviction. Several courts have suggested that he must have intended or known that the injuries inflicted by the primary offender were sufficient in the ordinary course of nature to cause death. This article disagrees with that approach, for it unjustifiably confers a more favourable test on the secondary offender. Instead, a “co-terminous” approach should be adopted that subjects all assailants to a consistent section 300(c) test.

I.                    Murder and Common Intention under section 34: An Overview

Prior to the enactment of the new section 308A on group crimes, prosecutors in Singapore regularly invoked section 34 of the Penal Code to impose constructive liability on secondary offenders or accomplices for violent crimes committed “in furtherance of the common intention of all.” Thus, in cases where death occurs and the primary offender is charged with section 300 murder, the secondary offender can also face a murder charge under one of the limbs of section 300, read with section 34.[1]

In the seminal case of Daniel Vijay s/o Katherasan & others v. PP[2], the Court of Appeal clarified the meaning of section 34’s key phrase that imposes constructive liability—“in furtherance of the common intention of all”. To convict the secondary offender, the Court held that the prosecution must prove that he had shared in the primary offender’s intention to commit the requisite crime. Thus, in a straightforward “single crime” situation where A and B plan to kill the victim with B standing guard and A committing the actual killing, section 34 imposes constructive liability on B even if he had had no actus reus for the killing. In other words, section 34 serves to construct the actus reus and impute it to B, so long as there was a common intention (the mens rea) on both A’s and B’s part to kill.

In the so-called “twin crime” situation, A and B set out to rob the victim but A, the primary offender, formed the intention (either pre-meditated or on the spot) to kill the victim in the course of the robbery. Here, B, the secondary offender, can be convicted of section 300(a) read with section 34 if he can be shown to have had the intention to cause the victim’s death, even if he had had no actual physical role (the actus reus) in the killing. As long as he had participated in the initial crime of robbery, he can be convicted for the collateral crime of murder if he and the primary offender shared in a common intention to kill. Conversely, if his only intention was to rob, B cannot be convicted of murder.

Under the earlier test expounded by the Court of Appeal in Lee Chez Kee v. PP[3], it would suffice to convict B in the above scenario if the prosecution can prove that he had subjective knowledge of the likelihood of A killing the victim. Hence, this is a more favourable test for the prosecution since it need not meet the high bar of proving B’s intention to cause death. Instead, all that needs proving is the lower mens rea of knowledge or foresight of the likelihood of death being caused. For instance, if B had known of an earlier hostility between A and the victim and that A had brought along a lethal weapon, B can be convicted of section 300(a) murder read with section 34 despite his not having had the intention to cause death. Here, B’s actus reus would have been participation in the initial act (the robbery). He would not have had the actus reus of causing the victim’s death since the act—the lethal blow—was committed by the primary offender. Again, the successful invocation of section 34 serves to construct this actus reus for B.

It must be emphasised that the Court of Appeal, in formulating the Daniel Vijay test, did not expressly overrule Lee Chez Kee. In fact, the Court did not view the two tests to be vastly different. Chan Sek Keong CJ, in delivering the judgment in Daniel Vijay, saw common intention as, in principle, a more exacting requirement than subjective knowledge.[4] That said, Chan CJ went on to observe that in certain circumstances, subjective knowledge may be evidence of the existence of a particular intention.[5] Hence, the secondary offender’s subjective foresight of the likelihood of the primary offender committing the collateral offence may be viewed by the court as evidence of the shared intention to commit that offence. In this way, intention can be inferred from that subjective knowledge.

At the outset, it is critical to note that section 34 is also relevant in cases like PP v. Miya Manik[6] where death ensued in a melee and there is insufficient evidence to show who had delivered the fatal blow (or the co-assailants could have escaped arrest). Thus, all the offenders could each have delivered blows, with the sum total of blows causing the victim’s death but without conclusive evidence of the contribution of each party’s blows. In yet another difficult scenario exemplified by PP v. Azlin binte Arujunah,[7] death could have been caused by cumulative injuries arising from the acts of different assailants in a series of separate incidents. The major challenge in each of these cases is to divine the common intention of the parties.

II.                 The Trouble with Section 300(c)

Reading section 34 with section 300(a) is straightforward. The true difficulty with section 34 only arises when it is paired with section 300(c), where the primary offender acts with the “intention of causing bodily injury to any person, and the bodily injury intended to be inflicted is sufficient in the ordinary course of nature to cause death”. The established case law following the seminal Indian Supreme Court case of Virsa Singh v. State of Punjab[8] has consistently interpreted the latter part of section 300(c) in an objective fashion. This means that as long as the primary offender, A, intended to cause a bodily injury, it would not matter if he did not know that the injury he inflicted was sufficient in the ordinary course of nature to cause death.

Hence, as long as the injury is one that would ordinarily be sufficient to cause death, A would be liable. For instance, if A slashes the victim in the leg with a parang or chopper and the victim bleeds to death, section 300(c) is attracted as long as A can be proved to have intended to inflict that bodily injury (it not being accidental or unintentional or some other kind of injury being intended).[9] It would not matter if A never intended death, or did not know that the injury would be fatal. Indeed, if he did so intend death or know of the likelihood of death, his act would have been covered by section 300(a) (intention to cause death) or section 300(b) (such bodily injury as he knows would be likely to cause death).

While this interpretation of section 300(c) serves commendably to avoid overlaps with the other limbs of section 300 (particularly section 300(b) that requires knowledge of the likelihood of death), it is difficult to reconcile with the retributivist principle that requires the accused to be punished strictly for his moral culpability, and no more. In essence, section 300(c) can potentially convict for unintended or unforeseen consequences going beyond the accused’s subjective moral culpability. As such, it can only be justified (if at all) by the principle of utilitarianism—thus, no one should have the license to go around slashing his victims’ legs,[10] and one takes whatever consequences (including death) that arise from that act. This would provide both specific and general deterrence established by the principle of utilitarianism.

From the retributivist perspective, section 300(c) is thus wholly out of kilter with the other limbs of section 300 that prescribe a higher degree of mens rea for moral culpability. Again, the lowered mens rea in section 300(c) (effectively a form of constructive liability for unintended consequences) can only be justified by strict utilitarianism. Indeed, this construction of section 300(c) may be reminiscent of the now-discredited common law adage that a man is to be taken to intend the natural consequences of his act. As it turns out, the courts in Singapore (and elsewhere in the Penal Code jurisdictions) have long struggled with these uncomfortable implications of section 300(c), particularly when the accused intended a lesser injury but death nevertheless ensued.

One such case is the leading Singapore authority of Lim Poh Lye v. PP.[11] There, Chao Hick Tin JA in the Court of Appeal held that if the offender intended to inflict what, in his view, was an inconsequential injury, where, in fact, that injury is proved to be fatal, he would be caught by section 300(c) for murder.[12] Thus, if the injury caused was clearly intended but the offender did not realise the true extent and consequences of that injury, he would be liable.[13] However, if the accused only intended to cause a particular minor injury, which injury would not, in the normal course of nature, cause death, but, in fact caused a different injury sufficient in the ordinary course of nature to cause death, section 300(c) would not be attracted.[14] Here, Chao JA was clearly stepping away from the dictum of Yong Pung How CJ in the earlier case of Tan Joo Cheng v. PP[15]—that even if the accused intended a relatively minor injury, he would be caught by section 300(c) if death eventuated.

Another important fine-tuning arose in the High Court case of PP v. AFR.[16] Thus, if the cause of death is remote and not within reasonable contemplation, section 300(c) would not be made out. Indeed, this position has since been underlined and confirmed by the prosecution itself after the Attorney-General’s Chambers (“AGC”) released a rare public statement in December 2017 in the wake of the famous case of a young woman, Annie Ee, whose death had been caused by abuse at the hand of her housemates. The victim had been hit with a large roll of shrink wrap, and later died from acute fat embolism ensuing from her wounds. The prosecution explained why murder charges were not brought:

The evidence given by the forensic pathologist was that Ms Ee's death was caused by acute fat embolism. This was an unusual occurrence that would not have ordinarily resulted from the injuries inflicted by Pua and Tan ... As Pua and Tan did not intend to cause Annie's death, and the injuries they inflicted would not ordinarily cause death, the offences of murder and culpable homicide cannot be proved against them.[17]

As seen from the above, section 300(c) is controversial enough for the sole offender simply due to the possible imposition of liability for unintended consequences going beyond her moral culpability. The courts, and the prosecution, have thus bent over backwards to restrict the operation of section 300(c) to cases where the accused intended to inflict (and so inflicted) injuries that would ordinarily have caused death. In other words, if he intended to inflict injuries that were relatively minor and that would not ordinarily cause death, section 300(c) would not be satisfied. That death still ensued in such cases could then be viewed as a remote or unusual occurrence. This is a valiant but fundamentally still unsatisfactory attempt to blunt the anti-retributivist edges of section 300(c). Inevitably, the approach necessitates an enquiry into the seriousness of the injuries, ie whether they were objectively serious enough to ordinarily lead to death.[18]

III.              Invoking Section 34 with Section 300(c)

A.      An “Elevated Mens Rea” Approach?

In the event, the pairing of section 34 with section 300(c) for the secondary offender(s) poses even thornier problems. Daniel Vijay was just such a case. The overriding policy concern here is that if the primary offender can be convicted on a lowered mens rea under section 300(c) for what is in essence an unintended consequence, extending such liability to the secondary offender would be even more troubling given that he would typically have no actus reus in causing fatal injuries. Indeed, apart from the melee cases, the secondary offender would likely be one or several steps removed from the primary offender’s act of causing fatal injuries.[19] Indeed, his only actus reus would have been participation in the initial crime (of robbery, rape, extortion, etc.) before things got out of hand with the primary offender.

For this very reason, the Singapore courts have also displayed caution (though only relatively recently) in convicting the secondary offender under section 300(c) read with section 34. This would have been especially true in the period before 2013 when the death penalty was still mandatory for all section 300(c) convictions, both for the primary and secondary offenders. In Daniel Vijay itself, the Court of Appeal found that the secondary offenders did not share in the primary offender’s intention to inflict fatal injuries on the victim, despite their knowing that a weapon had been brought to the scene and that violence would be used to overpower the victim in order to facilitate the robbery.[20] As explained above, Chan CJ shifted the test from one of subjective foresight (Lee Chez Kee) to one of intention to commit the collateral act.

In PP v. Ellarry bin Puling,[21] the first case in the High Court to apply the Daniel Vijay test, Chan Seng Onn J interpreted the application of section 34 to section 300(c) as demanding a “high degree of specificity” in the secondary offender’s intent before there could be conviction.[22] In other words, the prosecution had to show that the secondary offender intended to inflict the specific injury that was actually inflicted that caused death. This has led to the observation that the mens rea test for the secondary offender has effectively been elevated to that of section 300(a), ie he had to be shown to have the intention to cause death. In fact, Chan J. himself alluded to such elevation.[23]

In the last year or so, there have been two High Court decisions—PP v. Azlin binte Arujunah and PP v. Miya Manik—professing to employ such “elevated mens rea” to the secondary offenders. In fact, these are the first judgments to have explicitly required the secondary offenders to intend (or know) that the injuries inflicted were sufficient in the ordinary course of nature to cause death. In PP v. Azlin binte Arujunah, Valerie Thean J, in acquitting the two co-accused for section 300(c) murder of their child, found that:

… in order for constructive liability to be imposed under s 300(c) read with s 34 of the Penal Code, the offenders must share a common intention to cause s 300(c) injury, and not any other type of injury, meaning that the fact that the injury is sufficient in the ordinary course of nature to cause death must be intended. [24]

Incidentally, Thean J was also the judge in PP v. Miya Manik, a judgment released just two days before Azlin bte Arujunah. In Miya Manik, Thean J acquitted the accused on similar grounds that common intention to inflict a section 300(c) injury had not been proven beyond reasonable doubt. In addition, she stated that “the fatal nature of the injury had also to be commonly intended.”[25] Interestingly, in neither case was it made explicit that the prosecution had failed to show that the secondary offenders intended or knew that the injuries would be sufficient in the ordinary course of nature to cause death. Instead, both cases were decided on the more rudimentary basis that there was no proof to begin with of a common intention to inflict the kind of injuries that would attract section 300(c).[26] The acquittals for section 300(c) then led to the accused in both cases being charged and convicted for causing grievous hurt under section 326 read with section 34.

In other words, there did not appear to be a need to elevate the secondary offenders’ mens rea to that of section 300(a) to dispose of the cases. That said, it may well have been a relevant consideration in Thean J’s mind—that the accused in both cases (viewed as secondary offenders) would need to be shown to have the elevated mens rea for conviction, and that the prosecution had therefore failed to prove common intention on the whole.[27] In any event, to intend (or know) that the injury was sufficient in the ordinary course of nature to cause death goes against the established grain of section 300(c) jurisprudence. In other words, if Thean J is correct, the test for the secondary offender has become different from and more exacting than the corresponding section 300(c) test for the primary offender. Where was the authority for this view?

In reaching her conclusion in both Azlin bte Arujunah and Miya Manik, Thean J drew support from several passages in Chan CJ’s judgment in Daniel Vijay. These passages purportedly sought to distinguish between a section 300(c) test applying to the primary offender simpliciter and that applying to secondary offenders.[28] In particular, Thean J sought to rely on the following passage from Chan CJ’s judgment:

[W]e are of the view that he [the secondary offender] should not be made constructively liable for the offence of s 300(c) murder arising from the actual doer’s criminal act unless there is a common intention to cause, specifically, a s 300(c) injury, and not any other type of injury.[29]

Chan CJ’s short-form reference to “specifically, a s 300(c) injury” is enigmatic. To understand what he meant by this phrase, it is apposite to reproduce his views in Daniel Vijay:

… Different policy considerations apply when imputing direct liability for murder and when imputing constructive liability for that offence. … It does not necessarily follow that the Virsa Singh interpretation of s 300(c), which is applicable to the actual doer, is or should be equally applicable to a secondary offender, especially where the secondary offender did not inflict any injury on the victim at all. In other words, as a principle of criminal liability, it may not be unjust or unreasonable to hold the actual doer liable for s 300(c) murder by applying the Virsa Singh test since (as just mentioned) he was the one who inflicted the s 300(c) injury sustained by the victim. However, it may not be just or reasonable to apply the Virsa Singh test to hold a secondary offender constructively liable for s 300(c) murder where he had no intention to do the specific criminal act done by the actual doer which gave rise to the offence of s 300(c) murder, and also did not subjectively know either that that criminal act might likely be committed or that that criminal act would result in s 300(c) injury to the victim.[30]

Earlier, Chan CJ had observed:

In this respect, it is not sufficient, in our view, for s 34 to apply if the secondary offender merely has subjective knowledge that the victim might likely suffer an injury (or, for that matter, if the secondary offender shares a common intention with the actual doer to inflict an injury on the victim), and that injury is subsequently shown to be of a type which is sufficiently serious to amount to s 300(c) injury.[31]

Chan CJ further observed:

In the context of s 300(c) injury, a common intention to cause such injury is substantially the same as a common intention to cause death by the infliction of the specific injury which was in fact caused to the victim since s 300(c) injury is, by definition, injury that is sufficient in the ordinary course of nature to cause death.[32]

Then, Chan CJ concluded:

In contrast, in the former case (ie, where a secondary offender is charged with murder under s 300(c) read with s 34), because of the express words “in furtherance of the common intention of all” in s 34, it is necessary to consider whether there was a common intention among all the offenders to inflict s 300(c) injury on the victim (the inflicting of such injury being the criminal act which gives rise to the offence of s 300(c) murder). This is a critical distinction to bear in mind.[33]

Now, these passages do reveal that Chan CJ did have in mind a more exacting mens rea requirement for the secondary offender when reading section 300(c) with section 34.[34] After all, he was at pains to explain why different policy considerations should apply to a secondary offender, given that he did not inflict the fatal injury. There is also a hint that the Virsa Singh approach, while drastic, could be fairly applied to the primary offender since it would not be unjust or unreasonable to do so. But it would be wholly different, in Chan CJ’s reckoning, where the secondary offender is concerned. This reluctance must be seen in an important context—at the time, the secondary offender would also suffer the mandatory death penalty for a section 300(c) conviction.[35] Here, it is submitted that Chan CJ’s and Chan J’s concerns in Daniel Vijay and Ellarry bin Puling respectively can be traced to the overriding discomfort with the secondary offenders receiving the mandatory death penalty.

Again, we need to go back to what Chan CJ could have meant by his truncated term “s 300(c) injury” that appears numerous times in Daniel Vijay.[36] In his judgment,[37] he had first defined this as “bodily injury which was sufficient in the ordinary course of nature to cause death (hereafter referred to as “s 300(c) injury)”. That, in itself, reveals little. While Chan CJ did go on to express caution about applying the Virsa Singh approach to the secondary offender,[38] nowhere in the Daniel Vijay judgment is it stated that the secondary offender had to intend or know that the injury inflicted by the primary offender was sufficient in the ordinary course of nature to cause death.

In other words, it is not at all clear that Daniel Vijay is authority for applying the “elevated mens rea” approach to the secondary offender. As stated above, Chan CJ dispensed with the facts in Daniel Vijay by holding that the requisite test was intention—and that the two secondary offenders never shared in the primary offender’s intention to inflict bodily injury. Much like in Azlin bte Arujunah and Miya Manik, whether the secondary offenders intended or knew that the injury was sufficient in the ordinary course of nature to cause death was not directly material to the holding. In any event, it is submitted that Chan CJ’s cautiousness in applying section 34 with section 300(c) lies more with the problems and possible injustices inherent in section 300(c) itself (for which see below) as well as the then-mandatory death penalty.

Even if Daniel Vijay were authority for elevating the secondary offender’s mens rea, it is doubtful that this is the correct approach. To require a higher or more specific mens rea on the part of the secondary offender is to make it exceedingly difficult for the prosecution to secure his conviction. The overwhelming policy for such an approach is, of course, the recognition that the secondary offender is typically—by way of actus reus—removed from the act of causing death. The supposition then, is that his mens rea must exceed that of the primary offender before he, too, can be found guilty of section 300(c) murder.

Such an approach would take care of and make sense in the very rare category of cases like Chia Kee Chen v. PP[39] where the secondary offender was actually the mastermind who had recruited the primary offender and planned the operation to beat up the victim severely. Even if it was unclear whether he delivered the fatal blows, the secondary offender in such cases can still be comfortably convicted for section 300(c) read with section 34 under the “elevated mens rea” approach. Indeed, based on the evidence, his mens rea would exceed the primary offender’s in that he either intended or knew it likely that death would ensue (hence, having a high degree of specificity in his mens rea).

But what about the majority of group crimes that do not involve a mastermind secondary offender? In these cases, the elevation of the secondary offender’s mens rea to approximate section 300(a) will make it almost impossible for the prosecution to secure conviction. This is simply because it is exceedingly difficult to prove an intention to cause death beyond reasonable doubt. In fact, it would be difficult even in a mastermind case.

In cases involving a melee or where the causative contribution of each party towards death cannot be determined, there is no reliable way to tell the primary offender apart from the secondary offender, much less to separate and apply different mens rea tests to each. Even in the “plain vanilla” “twin crimes” where A and B set out to rob but A ends up causing death (B being the mere follower), it does not make sense to demand separate legal tests, to the point of requiring an elevated section 300(a) or section 300(b) mens rea for the secondary offender. If nothing else, requiring that the secondary offender intended or knew that the injuries inflicted by the primary offender would be sufficient in the ordinary course of nature to cause death renders section 300(c) otiose in the light of the existing section 300(a) and section 300(b). What then could be a more satisfactory solution?

B.      The “Co-terminous” Approach

The policy reason for favouring the secondary offender who is more removed from the victim’s death is an understandable one. However, resorting to an effective section 300(a) test tips the scales too much in the secondary offender’s favour, making his conviction almost impossible to secure for a section 300(c) charge. Instead, the test to be adopted should be what I term a “co-terminous” one. The secondary offender’s mens rea should be co-terminous with the primary offender’s section 300(c) mens rea, no more and no less.[40] In other words, all that is required to convict the secondary offender is for the prosecution to show that he, too, shared in the primary offender’s intention to cause some bodily injury to the victim. That that bodily injury is one sufficient in the ordinary course of nature to cause death need not be intended by or known to the secondary offender. This would be the familiar Virsa Singh objective approach that we have seen employed in section 300(c) jurisprudence, making the same test applicable to both primary and secondary offenders.

This “co-terminous” test will more justly settle those cases involving melee killings or where it is difficult to assign causation to each offender’s blow(s). In such cases, all the accused persons—be they primary or secondary offenders—should be found guilty of section 300(c) read with section 34 if it can be shown that they all shared in the intention (either pre-meditated or formed on the spot) to inflict bodily injury on the victim. That the injury subsequently proves fatal is a separate objective enquiry that has no bearing whatsoever on either offender’s mens rea. Indeed, consistent with Lim Poh Lye, if the injury caused was clearly intended by both the primary and secondary offender but neither realised the true extent and consequences of that injury, they should both be found liable.[41]

The “co-terminous” approach would thus find both the primary and secondary offenders guilty (or innocent) simultaneously, ie with consistency of result. Here, we must remember that sentencing can now be tailored to the role that each played—the automatic death sentence for section 300(c) is a relic of history. Each offender can be sentenced to the extent of the individual role played and his overall moral culpability, taking into account any mitigating circumstances.

In fact, the “co-terminous” approach is also more consistent with the sentencing principles for secondary offenders laid out in Michael Anak Garing v. PP.[42] In that case, the Court of Appeal held that in deciding whether a secondary offender acted in blatant disregard for human life (and thus meriting the discretionary death penalty under section 300(c)), the relevant factors would be his mental state at the time of the attack and his actual role or participation in it. To elevate the mens rea required of the secondary offender to that of section 300(a) would be to wholly negate the 2012 amendments to the Penal Code (that made the death penalty discretionary for section 300(c)) and the sentencing principles of Michael Anak Garing. Were the mens rea requirement elevated to such a threshold, every secondary offender found guilty under section 300(c) read with section 34 would necessarily exceed the threshold set out in Michael Anak Garing. In every such case, the result can only be the death penalty—why then would Parliament have made the death sentence discretionary?

The “co-terminous approach” does have some judicial support, even if it is not labelled as such.[43] It was seemingly adopted in Chia Kee Chen, where the relevant enquiries were what fatal injury was dealt to the victim and whether the assailants shared a common intention to inflict the injuries in question.[44] At no point did the Court of Appeal consider whether the accused intended or knew that the injury was sufficient in the ordinary course of nature to cause death.[45] Nor did the Court directly address whether a higher mens rea was required. There was no such need as the accused was the mastermind. He would likely have satisfied both the “elevated mens rea” and “co-terminous” tests.

Elevating the secondary offender’s mens rea to section 300(a) would not make sense generally. Why should one offender benefit from a more favourable test compared to the rest? Who should this test be applied to, when the primary offender(s) are unknown or are at large? Even if all the assailants have been apprehended, there could still be evidential difficulties in determining who delivered the fatal blow or what contributions each party’s blows made to the victim’s death. Logically, all of them—whether primary or secondary offenders—should benefit from the same favourable test that approximates section 300(a), and all will likely be acquitted. So where does that leave section 300(c) in group crimes?

C.     Back to the Real Problem

This leads us to the nub of the problem. The original sin for the current legal quandary on secondary offenders does not reside in section 34 nor Daniel Vijay. The test in Daniel Vijay requiring the prosecution to prove that the secondary offender intended whatever the primary offender intended (or “shared in the common intention”) is arguably sound, and entirely consistent with the “co-terminous” approach. The real problem is, and has always been, with section 300(c). It is precisely because section 300(c) imposes a form of constructive liability that the secondary offender risks section 34 constructive liability for section 300(c) constructive liability. In other words, constructive liability twice over?

It is submitted that this quandary lies behind the tortured interpretation of the short-form label “s. 300(c) injury” used by the Court of Appeal in Daniel Vijay. The High Court in Azlin bte Arujunah and Miya Manik has now chosen to read “s. 300(c) injury” to require the secondary offender to intend or know that the injuries inflicted by the primary offender were sufficient in the ordinary course of nature to cause death, possibly to distinguish the section 300(c) offence from that of grievous hurt. As argued above, this artificially creates separate tests for the primary and secondary offenders and goes against the long-standing section 300(c) jurisprudence. In fact, nowhere in Daniel Vijay is it clearly explained that “s. 300(c) injury” means the secondary offender has to intend or know that the injuries inflicted by the primary offender would ordinarily cause death. Again, if nothing else, this interpretation renders section 300(c) otiose in the light of section 300(a) and section 300(b).

Another way to imagine the problem with section 300(c) is to compare its ambit with the offence of voluntarily causing grievous hurt resulting in death. By definition, the moment a primary offender intends to inflict and does inflict serious injuries (of the kinds that would ordinarily lead to death), liability for section 300(c) would already have coalesced or been consummated.[46] This is because the fact that the injuries are sufficient in the ordinary course of nature to cause death is a separate enquiry. For secondary offenders, the issue should be no different—if the “co-terminous” approach applies, liability crystallises the moment the intended injuries are inflicted. It is therefore artificial to acquit the secondary offenders of section 300(c) read with section 34, only to amend the charge and convict them of grievous hurt read with section 34. Indeed, one way to get around this artificiality is to insist on “elevated mens rea” to distinguish section 300(c) murder from grievous hurt simpliciter. But this only belies the true problem that is section 300(c).

The true solution is a legislative, not judicial, one. Section 300(c) should simply be abolished for being out of step with the other limbs of section 300. What is left would be section 300(a), for the most part, since section 300(b) and section 300(d) cover rare factual instances.[47] If the prosecution were made to use section 300(a) to prove murder in all instances, then the courts will simply have to inquire if the secondary offender(s) shared in the intention to cause death. No one would need to benefit from an elevated or more favourable mens rea test, which is exactly the kind of legal gymnastics that the current situation compels. The different kinds of accomplice liability cases can all be accommodated by combining section 34 (as interpreted by Daniel Vijay) with section 300(a)—the mastermind, melee, and plain vanilla accomplice cases.[48]

D.    Reverting to the Lee Chez Kee test?

Be that as it may, section 300(c) lives. There is possibly a third way to settle the relationship between section 34 and section 300(c). This is to abandon the Daniel Vijay approach altogether and restore the Lee Chez Kee test for section 34—viz. it suffices for the prosecution to prove the secondary offender’s subjective knowledge of the likelihood of the primary offender committing the collateral act. But this does not really solve the problem—in fact, it simply begs the enquiry again: subjective knowledge of the likelihood of what act? That the primary offender was likely to inflict serious/fatal section 300(c) injuries? But to maintain absolute fidelity with the section 300(c) jurisprudence, there must strictly be no enquiry as to the secondary offender’s knowledge of the likelihood of death. Injuries that are “sufficient in the ordinary course of nature to cause death” already connote an objective likelihood; it does not make sense to have a subjective knowledge of the likelihood of an objective likelihood.

In other words, knowledge of the likelihood of death under section 300(c) must remain irrelevant for both the primary and secondary offenders. Under the Lee Chez Kee approach, all the prosecution has to prove is that the secondary offender had some subjective knowledge of the likelihood of the primary offender inflicting an injury (although not a minor one), without more. The problem is that this swings the pendulum too much in the other direction, this time to the prosecution’s favour. All the prosecution needs to prove is that the secondary offender had a suspicion of an injury being inflicted (to reiterate, it cannot be a minor injury, but neither need there be a suspicion of serious injury or death). The mere fact that a weapon is brought would likely trigger this suspicion, and conviction would be too easily obtained.

IV.              Conclusion

In sum, there are not two, but at least three possible approaches in interpreting section 300(c) read with section 34. They are:

(a) The “elevated mens rea” approach—the secondary offender benefits in that the prosecution must effectively prove section 300(a) or section 300(b) mens rea beyond reasonable doubt. This is the most favourable position for the accused, but least favourable for the prosecution. Put another way, it does not make sense to charge both assailants for section 300(c) read with section 34 when the secondary offender (if he can be distinguished from the primary offender) is effectively being tried for section 300(a) or section 300(b). For the reasons argued above, this should not be the preferred test.

(b) Resurrecting the Lee Chez Kee test—the prosecution has to prove that the secondary offender subjectively had knowledge or foresight of the likelihood that the primary offender(s) would inflict bodily injury (and the bodily injury is objectively sufficient in the ordinary course of nature to cause death). This is the least favourable approach for the accused, and the most favourable for the prosecution since it does not have to prove intention in any form, simply subjective knowledge. Thus, any knowledge or even suspicion of a weapon being brought along by the primary offender would most likely suffice to convict.[49]

(c) The “co-terminous mens rea” approach—the prosecution has to prove that the secondary offender had (or shared in) the intention of causing some bodily injury, but need not show further that he intended death or knew that that injury was one that would ordinarily cause death. Nevertheless, the prosecution still has the burden to prove intention to cause bodily injury (just not intention to cause death).

My contention here is that the “co-terminous” approach effects the most just and appropriate balance in the adversarial criminal process. The prosecution still has to prove the high mens rea of intention, though only the intention to inflict a bodily injury. Any alternative approach risks tilting the balance too much in favour of either the accused or the prosecution. While these are all imperfect fixes to a problem that is necessarily section 300(c)’s making, the “co-terminous” approach makes virtue out of necessity in best approximating the fairest balance between the prosecution and defence.

V.                 Epilogue

Although I have some sympathy for the reconsideration of Daniel Vijay and the resurrection of the Lee Chez Kee subjective foresight approach for general application to all crimes (this is fodder for another article), my chief concern here is with the Lee Chez Kee test’s application to section 300(c) murder—again, underlining the fact that the problem is truly section 300(c)’s.

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* Professor, Faculty of Law, National University of Singapore. I thank my clever students Ryan Leong Lup Mun and Kai Kiran Gosian (NUS Law Class of 2024) for sharing their incisive thoughts in class and with me. All errors remain mine.

[1] Penal Code (Cap 224, 2008 Rev Ed Sing), s 34: “When a criminal act is done by several persons, in furtherance of the common intention of all, each of such persons is liable for that act in the same manner as if the act were done by him alone” [emphasis added].

[2] [2010] 4 SLR 1119 (CA).

[3] [2008] 3 SLR(R) 447 (CA).

[4] Daniel Vijay, supra note 2, at para 87.

[5] Ibid, at para 89. Nowhere is this clearer than on the facts of Illustration (f) set out by Chan CJ at para 168, providing for the court to infer intention from knowledge.

[6] [2020] SGHC 164.

[7] [2020] SGHC 168.

[8] 4 AIR 1958 SC 465.

[9] Ibid, at para 12.

[10] Cf Vivian Bose J’s own words in Virsa Singh, ibid, at para 13, explaining the rationale for section 300(c) in the Indian Penal Code: “No one has a license to run around inflicting injuries that are sufficient to cause death in the ordinary course of nature and claim that they are not guilty of murder. If they inflict injuries of that kind, they must face the consequences.”

[11] [2005] 4 SLR(R) 582 (CA).

[12] Ibid, at para 23.

[13] Ibid.

[14] Ibid, at para 22.

[15] [1992] 1 SLR 620 (CA). See also the wealth of scholarly ink spilled on the section 300(c) problem, including M. Sornarajah, “The Definition of Murder Under the Penal Code” [1993] SJLS 1, Stanley Yeo, “Academic Contributions and Judicial Interpretations of Section 300(c) Murder”, Singapore Law Gazette (April 2004); Jordan Tan Zhengxian, “Murder Misunderstood: Fundamental Errors in Singapore, Malaysia and India’s Locus Classicus on Section 300(c) Murder” [2012] SJLS 112; and this author, Alan Tan Khee Jin, “Revisiting Section 300(c) Murder in Singapore” [2005] 17 SAcLJ 693.

[16] [2011] 3 SLR 653 (HC).

[17] Ng Huiwen, “Death of Annie Ee: AGC explains why couple who abused her were not charged with murder” (18 December 2017), online: The Straits Times <www.straitstimes.com/singapore/death-of-annie-ee-agc-explains-why-couple-who-abused-her-were-not-charged-with-murder> [emphasis added]. The original statement is no longer available on the AGC website.

[18] See Chao Hick Tin JA in Lim Poh Lye, supra note 11 at para 46, doubting the relevance of seriousness from the accused’s perspective. Chao JA is correct, since the correct enquiry is into objective seriousness—it is immaterial whether the accused subjectively appreciated if the injuries were serious.

[19] But it is not at all clear that this policy consideration is supportable. After all, the very point of section 34 is to ascribe criminal liability to a secondary offender who lacks the actus reus for being removed from the primary offender’s collateral acts. In other words, that is the precise nature of constructive liability.

[20] Daniel Vijay, supra note 2, at para 148.

[21] [2011] SGHC 214 (HC).

[22] Ibid, at para 74.

[23] Ibid, at para 100.

[24] Azlin bte Arujunah, supra note 7, at para 97 [emphasis added].

[25] Miya Manik, supra note 6, at para 78.

[26] In Azlin bte Arujunah, the problem was that there were four incidents that led to the fatal cumulative scald injury, and it could not be established that both accused shared in a common intention to inflict that cumulative injury, or to inflict the injuries in each of the four individual incidents. In Miya Manik, it was found that there was no evidence of a common intention to inflict serious injury. In Thean J’s words, “the assailants simply wished to demonstrate their force without going so far as to inflict fatal wounds”, ibid, at para 105.

[27] It is more likely than not that such elevated mens rea was—in Thean J’s view—dispositive of both cases, thus opening the way for grievous hurt convictions instead. If the same injuries that constituted the offence of grievous hurt were co-terminous with that constituting section 300(c), the only way to distinguish the two offences would be to insist on an elevated mens rea for section 300(c) murder. But a fundamental problem with this interpretation is that it renders section 300(c) otiose in the light of section 300(a) and section 300(b), even if for the secondary offender only.

[28] Azlin bte Arujunah, supra note 7, at para 95.

[29] Ibid, at para 91 [emphasis in original], referencing Daniel Vijay at para 76. This passage actually appears at para 145 of Daniel Vijay, not para 76 as stated by Thean J.

[30] Daniel Vijay, supra note 2, at para 76 [emphasis added].

[31] Ibid, at para 74 [emphasis added].

[32] Ibid, at para 146 [emphasis added].

[33] Ibid, at para 167. This passage was also relied upon by Thean J in both Azlin bte Arujunah and Miya Manik, at paras 93 and 77 respectively.

[34] There are other paragraphs in Daniel Vijay illustrating Chan CJ’s concern—apart from paras 76 and 145, see paras 74, 146 and 167, also referenced by Thean J in Azlin bte Arujunah.

[35] Parliament amended the Penal Code in 2012 such that with effect from 1st January 2013, only section 300(a) murder attracted the mandatory death penalty. For section 300(b), section 300(c) and section 300(d) murder, the court has discretion to impose either the death penalty or imprisonment for life and caning.

[36] Supra note 34.

[37] Daniel Vijay, supra note 2, at para 49.

[38] In Daniel Vijay, at para 146, Chan CJ provided two examples where section 34 read with section 300(c) would not be attracted for secondary offenders—where the assailants had a common intention to give the victim a good beating or to disfigure him. In either case, if death occurs, the secondary offenders would not be liable (see also the scenarios at para 168 referenced by Thean J in Azlin bte Arujunah, supra note 7, at para 96). However, Chan CJ did not state clearly if the primary offenders would be liable in those scenarios. If the “co-terminous” approach were used, as this article argues below, neither the primary nor secondary offenders should be found liable since the intended injury would not be one that would ordinarily lead to death to begin with.

[39] [2018] 2 SLR 249 (CA).

[40] It appears this is the position taken by the prosecution in Azlin bte Arujunah, supra note 7, at para 94.

[41] Lim Poh Lye, supra note 11, at para 23.

[42] [2017] 1 SLR 748 (CA). I credit my students, Ryan Leong Lup Mun and Kai Kiran Gosian, for this astute observation.

[43] See Chan CJ in Daniel Vijay, supra note 2, at para 168, giving various scenarios where section 34 and section 300(c) might or might not apply. Illustrations (b) and (c) would be consistent with the “co-terminous” approach, even though it remains unclear what Chan CJ meant by causing “s. 300(c) injury”. It is submitted that the participants need not intend or know that the injury would be sufficient in the ordinary course of nature to cause death. See also Imran bin Mohd Arip v PP [2021] 1 SLR 744, where the Court of Appeal, at para 135, felt that “in other words, it would not suffice if A’s mental state falls short of the mental state of B” (B being the primary offender). The Court did not anticipate A’s mental state to exceed that of B, suggesting that the expectation was simply to match it in a “co-terminous” fashion. The co-terminous approach also seems to have been adopted by the Court of Appeal in Michael Anak Garing, supra note 42, at para 55.

[44] Supra note 39, at para 87.

[45] It should be noted that Thean J in Azlin bte Arujunah, supra note 7, at para 102, read Sundaresh Menon CJ in Chia Kee Chen, ibid, at para 89 as requiring “a common intention to inflict the particular s. 300(c) injuries”. Again, this is neither here nor there. Like Chan CJ, Menon CJ never went on to insist that the secondary offender had to know or intend that the injuries were sufficient in the ordinary course of nature to cause death.

[46] This is reminiscent of the approach of the Court of Appeal in Wang Wenfeng v. PP [2012] 4 SLR 590 characterising section 300(c) as an offence that inherently satisfies coincidence of actus reus and mens rea.

[47] Resort could also be had to section 299 (culpable homicide not amounting to murder) and sections 322, 325 and 326 for voluntarily causing grievous hurt (which includes death).

[48] Admittedly, the multiple-incident cases like Azlin bte Arujunah will continue to vex. But that problem persists regardless of which test is employed.

[49] See also the formulation in the new section 308A—“… a deadly weapon, or anything which, used as a weapon of offence, is likely to cause death”—which suggests that the fact that a weapon is a deadly one or one likely to cause death is a strictly objective enquiry that is independent of the accused’s mens rea.

In Conversation with Dr. Stanley Lai

A PDF version of this article is available here.

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IN CONVERSATION WITH DR. STANLEY LAI

Interviewers: Faye-Anne Ho* & Chye Shu Li**

This is the third part of a series of interviews that the Intellectual Property Students Association ("IPSA") has conducted with key players of the intellectual property ("IP") field in Singapore. These key players represent a diversity of views in the field of IP dispute resolution. The Singapore IP Strategy 2030 Report has highlighted that Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. [1] The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore intends to employ towards advancing its goal as an IP dispute resolution hub.

On 30 July 2021, Dr. Stanley Lai SC, partner and the head of the Intellectual Property Practice and Co-Head of the Cybersecurity and Data Protection Practice at Allen & Gledhill, gave us a glimpse into the world of dispute resolution for intellectual property disputes. As the chairman of the Intellectual Property Office of Singapore (“IPOS”), and as one of the senior mediators of the Singapore Mediation Centre (“SMC”), Dr. Lai is uniquely positioned to provide insights on all facets of IP disputes, and in particular, mediation.

Q1: You have a wealth of experience in IP disputes, mainly in IP litigation but also as a member of the Singapore International Arbitration Centre (“SIAC”) IP Panel and as a World Intellectual Property Organization (“WIPO”) and SMC mediator. In your experience, which mode of dispute resolution is the most popular among clients for IP matters and why? In what circumstances would mediation be a good option for disputing parties to consider?

While litigation continues to be the primary preference for dispute resolution when the validity of IP rights is an issue, Dr. Stanley Lai believes that there is a growing interest in IP arbitration and mediation. He attributes this to the “changes to the arbitration regime in Singapore which allow for an arbitrator to rule on the substantive validity of (even foreign) IP rights, whose finding then becomes contractually binding on the disputants.” In particular, this paves the way for expeditious resolution of disputes concerning the validity of foreign IP rights, which courts of law generally consider non-justiciable for reasons of territoriality. Further, a “specialist pool of IP mediators [have] paved the way for disputes on validity to be more efficiently resolved either through non-assertion/no-challenge arrangements … or as an issue to be taken out of the settlement discussions altogether.”

Dr. Lai also believes that these alternative dispute resolution (“ADR”) mechanisms are complementary in nature:

“I like to think of arbitration and mediation as operating in tandem, especially since we also have an Arb-Med-Arb procedure under the SIAC rules.[2] That being said, there are also certain types of IP disputes where parties opt directly for mediation in the first instance.

Given the way our rules have evolved, parties should apply their minds to ADR options very early on. In fact, in the upcoming changes to our civil justice reform system, judges will be able to proactively order parties to attempt negotiations or mediation. As long as parties show an intention to participate in mediation and secure an outcome, there is little that cannot be mediated.”

Q2: In your view, is mediation an option which only arises when the case is “less clear cut,” i.e. a party is not reasonably assured of victory in court?

Dr. Lai responded that:

“If the case was clear-cut, then counsel would have advised parties to resolve the dispute without the need for litigation. Most of the cases that end up in court carry factual, emotional or scientific discrepancies that require ventilation and resolution in court.

An experienced mediator would be able to evaluate parties’ interests and positions, and be cognizant of the risks of pursuing litigation to finality, whether as a matter of law or evidence. The skill is then to facilitate the understanding of disputants to these issues, so that a good party-driven settlement can result without the need of incurring more time and costs.”

Q3: With the new Singapore Convention on Mediation and various initiatives by IPOS to encourage IP mediation,[3] do you see a shift towards mediation as the preferred mode of dispute resolution in the future? Why or why not?

Dr. Lai described the Singapore Convention on Mediation as “a very important international instrument which has taken mediation into the global spotlight.” He pointed towards the concerns of time and cost that favour mediation, before highlighting the appeal of mediation for IP disputes: “Mediation raises a real possibility of consolidating all the global disputes into a single negotiation, so that parties stand to gain a lot more, in terms of finality and cost-savings.”

Dr. Lai also reiterated changes in the arbitration landscape, noting that:

“The IP Dispute Resolution Act, which was enacted last year, amended the arbitration legislation such that any findings from an arbitration in Singapore will bind the parties to the arbitration, and will not necessarily have an impact on what happens in the register in the home country of concern. This extends to matters of validity, and even matters that may usually not be regarded as immediately arbitrable from a jurisdictional standpoint. This may also reduce the scope and frequency of jurisdictional challenges before arbitration panels.”

Q4: In your experience, do you see less well-resourced actors such as individual inventors and small and medium enterprises (“SMEs”) choosing ADR options such as mediation over litigation? What more can be done to increase accessibility of justice for such actors? On the other hand, what are some ways to attract more well-resourced entities to choose mediation?

Dr. Lai answered that mediation “should not be chosen solely on the basis of cost considerations” as it is a process which works only if “both parties are equally seized of the merits and weaknesses of a dispute before entering into a mediation process.”

Dr. Lai elaborated that:

“I think that it is not so much a consideration of whether a party chooses mediation because of costs considerations. In any litigation, regardless of how resourced they are, the parties should only pursue mediation if they genuinely intend to explore and exhaust the possibility of pre-trial or pre-action settlement. It cannot be a situation where a less-resourced actor elects mediation because it better suits their concerns over legal costs and disbursements – the well-resourced actor must willingly participate in the process as well, with the prospect of achieving a compromise.”

Dr. Lai also believes that the Courts (Civil and Criminal Justice) Reform Bill, which was passed in Parliament on 14 September 2021, provides for cases that lack such reciprocity as it empowers the courts to order parties to attempt to resolve their dispute by amicable resolution.[4] Ultimately, however, Dr. Lai cautions against attributing the preference for ADR options over litigation due to cost:

“I don’t think mediation on its own can be thought of as a process that favours a less resourced actor – because for the settlement to really work, both parties have to participate, regardless of where they stand in terms of bargaining position.”

Q5: How do you think the 2018 proposal for a specialised IP division within the Singapore courts, which would result in a more streamlined process for IP claims, will affect the choices in the mode of IP dispute resolution in Singapore?[5] For example, do you think it would encourage more litigation over mediation, due to the simplicity and accessibility provided under the “fast track”?[6]

Dr. Lai identified the various benefits of the more streamlined process for IP claims. He pointed toward the imposition of judge-led pre-trial conferences which focus the attention of parties and counsel on the issues of fact, law and science that should be distilled for the court’s determination, and the evidence that will be proffered for the purposes of trial. The effect of this is that “SMEs and individual creators and inventors can obtain a swift resolution, which can contribute to savings in time and costs.”

While multinational corporations (“MNCs”) also benefit from this streamlined process as it will be easier for them to secure an injunction, Dr. Lai hopes that this new process will level the playing field.

“What we’re also hoping to see are individual creators – who may not otherwise have an easy way to vent an assertion of copyright or claim a corporate infringement – taking advantage of this process and resolving a matter, sometimes against a big company. More disputes would result from these developments, and through that, more mediations will take place.”

However, Dr. Lai reminded us that litigation and mediation should not be viewed mutually exclusive dispute resolution options. He also noted that few parties instinctively opt for mediation as a dispute resolution mechanism.

“Parties need to realize that the downside to not completing the mediation is that you carry on with a court-based process or an arbitration-based process, to a final all or nothing outcome. A timeously deliberated settlement in itself is a very important coercive factor to think about to resolve a dispute. The Affidavit of Evidence-In-Chief (“AEIC”) exchange or summons for directions or the actual trial itself … gives parties pause because they will be thinking of additional costs that need to be incurred, coupled with the uncertainty of outcome, both at trial as well as an appeal to the Appellate Division, or the Court of Appeal.”

Finally, Dr. Lai considered other ways through which parties may eventually end up opting for mediation as a dispute resolution mechanism.

“Sometimes, a dispute resolution contract contains staggered pre-escalation clauses that basically impose a mediation process prior to launching court proceedings. That’s the other way parties can come to a mediation with the prospect of a negotiated settlement. One of the roles of a mediator is to bring home to the parties the reality of the risk of uncertainty over a formal dispute resolution process like litigation and arbitration. That in itself is also an incentive to bring parties together to reach certain closure and make concessions. As formal proceedings have not begun, there may be less emotion that is invested in the dispute, especially before provocative statements and other unpleasantries are inserted into pleadings and affidavits. The best settlements are the result of give and take – it is very rarely a zero-sum game.”

Q6: A key aim of the Singapore IP Strategy 2030 is to grow international IP dispute resolution in Singapore. What are some things that can help realise this aim?

To grow international IP dispute resolution in Singapore, Singapore has to become a hub for international IP mediations, and Singapore needs to train its local legal pool to ensure that it is up to standard.

Dr. Lai directed our attention toward recognised expert panels that can provide “a pool of scientific and statistical expertise for litigants who come to Singapore to resolve their disputes, or to perform neutral evaluations.” The Singapore International Commercial Court also tries international disputes that have little or no connection with Singapore or Singapore law:

“A strong international bench in the Singapore International Commercial Court would also allow parties to try foreign IP disputes in Singapore. The Singapore International Mediation Centre, with its pool of experienced and trained international mediators, are best placed to support this effort and bring their expertise to bear on the settlement of cross-jurisdictional and global disputes.”

He also believes that mediation as a dispute resolution option can supplement and complement the existing landscape.

“Dispute resolution processes like mediation can give parties the option to reach a settled outcome without the need to pursue a litigation that results in a zero-sum game, especially for areas where there is a scarcity of settled law. I think having this option itself is part of the Singapore IP Strategy 2030, where you have a vibrant dispute resolution system for IP, specialist judges, a growing body of local counsel that are able to deal with this – working alongside their international counterparts. You also have the two formidable mediation institutions – the Singapore Mediation Centre and the Singapore International Mediation Centre – to support the vision. I think that’s the game plan going forward, and I fully support it.”

With regard to how Singapore can ensure that the local legal pool is up to standard, Dr. Lai emphasizes the importance of upskilling and training.

“The senior lawyers need to train. My firm is certainly placing a great focus on training and mentoring. You will find that most of the lawyers doing IP litigation in Allen & Gledhill are also commercial litigators. They are not just doing IP, although we have one or two lawyers that specialise in IP disputes only. My personal vision has always been to make IP litigation a necessary skill set for all commercial litigators. The extent that IP features in the diet of our litigators would also turn on a more informed personal choice and preference, depending on the proclivities of the individual litigator.

IP is a very specialised field of practice. What we seek to do is to demystify it with general litigators, and with that, you’re much more likely to see more disputes, rather than only confining it within one specialist pool of lawyers. As legal practice develops, there are very few areas of law where you can afford to maintain a pool of specialist lawyers who specialize in only one genre of legal practice. Clients are increasingly looking out for not just depth but also breadth in the kind of litigation and work that you do. As an IP and general disputes lawyer, I have also had to develop, over the past 10 years, complementary skill sets in data protection and cybersecurity, whilst keeping abreast with developments in artificial intelligence, blockchain, tokenization and cloud computing technology and other areas such generics, bio-similars and gene-editing within the field of the life sciences. It has been an exciting journey, which I have taken together with a steadfast team of colleagues whom I cherish and respect.”

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* LLB (Candidate) (NUS), Class of 2022.

** LLB (SMU), Class of 2021; Young IP Mediator.

[1] Intellectual Property Office of Singapore, Singapore IP Strategy 2030 Report (Singapore: Intellectual Property Office of Singapore, 2021), online: <https://www.ipos.gov.sg/docs/default-source/default-document-library/singapore-ip-strategy-report-2030-18May2021.pdf>.

[2] “Arb-Med-Arb” is a process whereby a dispute is first referred to arbitration before mediation is attempted. If parties are able to settle their dispute through mediation, their mediated settlement may be recorded by the arbitral tribunal in the form of a consent award. The consent award is generally accepted as an arbitral award, and, subject to any local legislation and/or requirements, is generally enforceable in more than 150 countries under the New York Convention. If parties are unable to settle their dispute through mediation, they may continue with the arbitration proceedings.

[3] Notable initiatives include IPOS’ Enhanced Mediation Protection Scheme (EMPS) and the Young IP Mediator initiative.

[4] Bill 18, Courts (Civil and Criminal Justice) Reform Bill, 1st Sess, 14th Parl, 2021, cl 71 (second reading 13 September 2021).

[5] Public Consultation on Intellectual Property (“IP”) Dispute Resolution Reforms, Ministry of Law (October 2018) at para 8.

[6] The proposed “fast track” places restrictions on the length of trial, the quantum of damages recoverable, and the amount of costs awarded. It also involves early and active management by the trial judge, complemented by procedural rules to allow greater judicial control over the conduct of cases.

In Conversation with Justice Simon Thorley QC

A PDF version of this article is available here.

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In Conversation with Justice SIMON THORLEY QC

Interviewers: Bryan Ong Junyu* & Shaktivel Arumugam**

This is the second part of a series of interviews that the Intellectual Property Students Association ("IPSA") has conducted with key players of the intellectual property ("IP") field in Singapore. They represent a diversity of views in the field of IP dispute resolution. As the Singapore IP Strategy 2030 Report highlights, Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore is intending to employ towards advancing its objectives.

On 30 June 2021, IPSA was given the opportunity to interview the learned Justice Simon Thorley QC, who sits on the panel of the Singapore International Commercial Court (SICC). Justice Thorley provided invaluable insights on issues ranging from confidentiality to enforceability and dove deeper into the landmark case of B2C2 Ltd v Quoine Pte Ltd, which was upheld on the breach of contract claim but reversed on the breach of trust claim by the Singapore Court of Appeal (SGCA).

Q1: You’ve served as an International Judge of the SICC since 2015. Would you be able to share, from your experience, some reasons that parties have for preferring SICC dispute resolution over international arbitration (or even mediation)?

Justice Thorley prefaced his response with a disclaimer that his perspective is based on anecdotal evidence. He pointed towards four differences in procedure in the SICC and the Singapore International Arbitration Centre (SIAC): (i) the right of appeal; (ii) privity; (iii) confidentiality; and (iv) the difference between judges and arbitrators.

(i)      Right of Appeal

The SICC is part of the Supreme Court and thus, cases heard before the SICC have an automatic right of appeal. Conversely, the rights of appeal are limited in the SIAC. (An SIAC award can only be set aside in exceptional circumstances.)

     Justice Thorley pointed out that “[t]he SICC does acknowledge that there are human frailties in judges who do on occasion get things wrong and all national systems have systems of appeal to ensure that justice is done and errors can be corrected.”

     In addition, given that there is only one tier of appeal in Singapore, up to 5 judges can be on the bench where necessary. The ability to appoint an amicus curiae further buttresses this appeal mechanism.

(ii)      Ability to order third parties to be joined as parties to the action

Given that the SICC is part of the Supreme Court and governed by the Rules of Court in the Supreme Court of Judicature Act[1], the SICC is empowered to order third parties to be joined as parties to the action.[2] Here, Justice Thorley acknowledged one of the weaknesses of arbitration— third parties affected by a contractual dispute who are not signatories to the contract are unable to seek relief.

(iii)    Confidentiality

With regards to confidentiality, arbitration appears to be the preferred option, given that arbitration is almost always conducted under an obligation of confidence. In comparison, SICC operates on the basis of open justice, although there are procedures for elements of confidentiality.

     Here, Justice Thorley pointed out that the procedures implemented by the SICC do not suggest a “one-way street kind of confidentiality”. Instead, he notes that “[t]he oxygen of publicity does encourage people to be far less aggressive in their litigation stance. [W]hen [litigation is] public, [parties] have to be more reasonable [and] the court can compel them to be reasonable.”

(iv)    Judges vs Arbitrators

Justice Thorley observed that “[t]he benefit of the SICC is that they have appointed International Judges with significant expertise in particular areas of law and litigation. For example, construction disputes, shipping disputes, and in my case, IP disputes.”

     In essence, the benefit of the SICC is that the judge that is appointed will have a background in the field the dispute concerns. There is also greater certainty in terms of scheduling since the docket system utilised by the SICC ensures that the judge will see the case from start to finish. This system allows for case management to be confirmed within two weeks from when a judge is given a case. It also enables parties to agree on when the trial is going to be conducted and thus, work backwards from there.

     In contrast, delays can happen in arbitration since the appointment of arbitrators takes time. The selected arbitrators may also be less experienced in the field. However, Justice Thorley reiterated that the SICC is not trying to subsume the functions of the SIAC, but to complement it.

Q2: Do you think concerns of international enforceability might make arbitration more attractive compared to the SICC as a platform for IP dispute resolution, especially since the 1958 Convention on the Recognition and Enforcement of Foreign Arbitral Awards[3] has extensive global reach consisting of 150 countries? We note, in this connection, that in 2018, the Supreme Court of Judicature Act was amended to, among other things, clarify that the SICC’s supervisory jurisdiction extends to international arbitration disputes seated in Singapore.[4] How have developments such as these had an impact on Singapore’s position as an international dispute resolution forum in general, and IP/Information Technology (IT) disputes in particular?

The short answer is yes. In principle, the SIAC is more attractive in terms of enforceability (due to the presence of the New York Convention). Nonetheless, Justice Thorley highlighted that, in reality, there are not many drawbacks in getting a judgment from the SICC enforced as opposed to the SIAC. There are three basic ways to enforce a SICC judgment internationally.

     First, Singapore has treaties with 10 other jurisdictions, including India, Pakistan, and Brunei, amongst others. These treaties mean that a judgment can very easily be enforced in these jurisdictions, assuming that the usual requirements to enforce such a judgment are fulfilled (eg, a court of competent jurisdiction, no indication of fraud, process of natural justice and not against public policy).

     Second, such judgments are enforceable by virtue of the Convention of 30 June 2005 on Choice of Court Agreements.[5] This is the equivalent of the New York Convention for courts. All 27 European Union countries are covered by this convention, while the United States and China have signed but not ratified it.

     Third, judgments are enforced through the principle of reciprocity. This covers countries like Japan and China. In fact, there is now a memorandum of guidance (MoG) between Singapore and China setting out the documents that need to be filed to enable reciprocity. However, the MoG does not explicitly include IP. This is because there is still significant national influence when it comes to enforcing IP rights.

     Justice Thorley highlighted that the International Judges of the SICC are also experienced arbitrators. This means that “anybody arbitrating before the SIAC will know that there is going to be an appeal to the supervisory court (ie, the Supreme Court). Such appeals can be listed in the SICC. Hence, the parties know that any appeal will be dealt with efficiently by somebody who knows what they are doing and understands the arbitration system.”

Q3: Singapore employs various strategies to become a leading IP dispute resolution centre such as strengthening its legislative framework (eg, by introducing amendments to the Arbitration Act[6] and the International Arbitration Act[7] in 2019, which clarify that IP rights disputes are arbitrable in Singapore) and developing its capabilities through training and professional development (eg, by cultivating a pool of expert witnesses). What else can Singapore do to strengthen its position as a choice location for IP dispute resolution, in particular for IP litigation?

Preliminarily, Intellectual Property Rights (IPRs) do cause difficulty for international tribunals of any sort, given that they are the result of a registration process on a national basis—commonly referred to as the principle of territoriality. This is evident from the provision which is present in various international conventions regulating patent law which states that only the granting state can revoke a patent in question. Justice Thorley noted that “[t]his leads to, in the case of Europe, for example, the need for multiple litigation.” This is because getting an injunction in one European jurisdiction does not have extraterritorial effect.

     Justice Thorley pointed out the difficulties in setting up an international court which could declare that IPRs are invalid on an international basis. While this has been attempted in Europe in the form of a central court litigating patents granted by the European patent office, the German Constitutional Court has had difficulty with this because it was handing over jurisdiction to an international tribunal.

     Simply put, one has to accept that there are limits to extraterritorial effect. Despite this, the SICC is still an attractive forum for resolving IP licensing disputes. Justice Thorley identified patent infringement disputes that surface under the guise of a breach of contract, where the issue is “whether a modification to a previously infringing product on which a royalty is payable has the effect of making it non-infringing so that no royalty is payable”.

     In order to be an attractive forum for resolving such IP disputes, one must have experienced judges—both in IP Law and those “with a technical bent” who can understand the technology.

     For completeness, Justice Thorley acknowledged the assistance rendered by expert witnesses. He is “personally… in favour of parties appointing their own experts… The parties can ensure the experts understand the technology. The process of cross examination ensures that they are independent.” To ensure that the expert reports remain relevant in assisting the judge, Justice Thorley also shared that it is common practice for him and his colleagues to narrow down and agree on the legal issues that the expert report should address before the expert witness is cross examined.

Q4: Your decision in B2C2 Ltd v Quoine Pte Ltd[8], which was upheld on the breach of contract claim but reversed on the breach of trust claim by the SGCA[9], has been recognised as one of the first instances to apply contractual principles and trust law to a cryptocurrency trading case. Is there anything in particular that you would like to highlight about this case?

Justice Thorley said “[y]es! It was very hard work. As the trial judge, it was factually extremely complex. We had to work out how two computer algorithms worked and were interrelated to each other. This emphasises the need for expert evidence that is focused, comprehensible and objective. I was fortunate to have two experts, both of whom knew their subject matter and were very balanced. They were able to assist me in determining how exactly the two algorithms worked.”

     Justice Thorley further emphasised that the need for confidentiality also compounded the complexity of the case. The defendant not only ran an exchange for bartering cryptocurrencies and fiat currencies, but also they traded on that exchange. This meant that they were in direct competition with B2C2. B2C2’s algorithm worked extremely well and hence, they obviously did not want Quoine to find out what it was. The experts thus had to work within many constraints such that the confidentiality of B2C2’s algorithm would not be breached. They had to work within a closed facility and could not take photographs. Any notes that they took were effectively sterilised. However, Justice Thorley admitted that at least one representative of the defendant would need to know, to some degree, how the algorithms interacted so that further commercial decisions can be made. This led to a need for further checks and balances tailored specifically for the case.

     Finally, the complexity of the case was also compounded by the fact that, prior to the case, the law of unilateral and mutual mistake had never dealt with computer programmes. Usually, two people trade under a misapprehension and a judge is able to set in stone what everybody knew at a particular date. However, in this case, the computer programmes were working twenty four-seven. They were programmed to do certain things in the event something unplanned happened. Justice Thorley observed that “[b]oth programmes worked as intended. The question was whether the plaintiff's programme was intended to take advantage of such a mistake or to protect the plaintiff from such a situation.” Justice Thorley shared that he “adopted an objective approach, writing wholly new law. Thus, it was not very surprising when the SGCA… sat as a bench of five [when the case went on appeal].” The SGCA had three local judges, two overseas judges and the benefit of an amicus curiae.

     The Court of Appeal upheld Justice Thorley’s decision on the breach of contract issue, but overruled the decision on the breach of trust issue by a majority of four to one. This illustrates the benefit of parties using the SICC as a forum of dispute resolution where difficult legal matters are concerned. Justice Thorley notes that “if this had been an SIAC case, I doubt the supervisory judges would have set the award aside on the basis of either limb and certainly not on the breach of contract. Moreover, the case would not have had the investigation of five judges and an amicus.” Judge Thorley quips that he will “never forget B2C2… It was hard work writing the judgment but it was a satisfying exercise.”

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* LLB (Candidate) (NUS), Class of 2022.

** LLB (NUS), Class of 2021.

[1] Cap 322, 2007 Rev Ed Sing, s 80.

[2] Ibid at O 4, r 1; O 15, r 4.

[3] 10 June 1958, 330 UNTS 3 (entered into force 7 June 1959) [New York Convention].

[4] Supreme Court of Judicature Act, supra note 1.

[5] 30 June 2005 (entered into force 1 October 2015), online: <https://www.hcch.net/en/instruments/conventions/specialised-sections/choice-of-court>.

[6] Cap 10, 2002 Rev Ed Sing.

[7] Cap 143A, 2002 Rev Ed Sing.

[8] [2019] 4 SLR 17 (HC(I)) [B2C2].

[9] [2020] 2 SLR 20 (CA).

In Conversation with Justice Dedar Singh Gill

A PDF version of this article is available here.

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In Conversation with Justice Dedar Singh Gill

Interviewers: Bryan Ong Junyu* & Shaktivel Arumugam**

This is the first part of a series of interviews that the Intellectual Property Students Association ("IPSA") has conducted with key players of the intellectual property ("IP") field in Singapore. They represent a diversity of views in the field of IP dispute resolution. As the Singapore IP Strategy 2030 Report highlights, Singapore is currently seeking to strengthen its position as a dispute resolution hub for IP disputes. The main purpose of these interviews is therefore to explore and discuss the various strategies that Singapore is intending to employ towards advancing its objectives.

IPSA had the honour of interviewing Justice Dedar Singh Gill, who was sworn in to the High Court (SGHC) as Judicial Commissioner in August 2018 and Judge in August 2020. He touches on significant judgements in the IP and Information Technology (IT) domain, the strengths of Singapore’s judiciary, and key reforms that are in the process of being implemented.

Q1: An interesting feature of Singapore’s legal system is the option for the court to appoint amicus curiae or court-appointed legal experts. Could you share, for our readers’ benefit, how these options have been employed by the courts in IP/IT cases? Could you please discuss unique features of Singapore’s system that benefit litigants in IP/IT legal proceedings in Singapore?

Justice Gill observed that:

“An amicus curiae is usually appointed by the Court of Appeal (SGCA) where a case raises a novel or complex question of law, or where the appeal will benefit from specialised legal knowledge. Leading IP academics, such as Professor Ng-Loy Wee Loon and Professor David Llewelyn, were appointed as amicus curiae in recent SGCA decisions concerning IP law (eg, Burberry Ltd v Megastar Shipping Pte Ltd[1], Société des Produits Nestlé SA v Petra Foods Ltd[2], and Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc[3]).

At the General Division of the SGHC, junior advocates can also be appointed as young amicus curiae (YAC) to assist the court in a similar manner. In the recent case of Bellingham, Alex v Reed, Michael[4], a YAC was appointed to assist the court in interpreting the scope of section 32(1) of the Personal Data Protection Act 2012[5]. The appointed amicus curiae and YAC will address issues specified by the court, thereby assisting the judiciary in developing the law and enriching local jurisprudence for the benefit of future litigants.

Apart from the amicus curiae and YAC schemes, Singapore’s judiciary also taps on the expertise of renowned IP practitioners through the Singapore International Commercial Court (SICC). B2C2 Ltd v Quoine Pte Ltd[6], an SICC case involving a contractual dispute arising from a glitch on a currency exchange platform that used deterministic algorithms, was heard by Simon Thorley IJ, a leading Queen’s Counsel in the field of IP Law.”

Q2: Singapore enjoys a reputation for a strong rule of law, supported by a highly skilled judiciary that is well regarded internationally. We understand that the General Division of the SGHC has had an IP/IT list since 2002. The list presently features 11 judges (including 3 Judicial Commissioners). In addition, in recent years, the SGCA has handed down a number of important decisions in this field. What do you think are the key strengths of Singapore’s judiciary and legal system in the field of IP/IT? Furthermore, in recent years, there have been substantial developments in Singapore’s IP/IT law and the SGCA has handed down a number of significant judgments in this field.[7] Some of these cases were heard by a five-judge panel in the SGCA (instead of the usual three) and amicus curiae were appointed. In many of these cases, the SGCA undertook a comparative analysis of the approaches taken in various foreign jurisdictions (eg, United Kingdom (UK), European Union (EU), United States (US), to name a few). Would you be able to share your observations and comments in this regard?

Justice Gill noted the three key strengths of the SGCA when it comes to decision-making: (i) sensitivity to the policy considerations underpinning IP regimes; (ii) willingness to adapt the law, where appropriate, to better cater to an increasingly digitised world; and (iii) readiness to review settled positions and change the law where it is desirable as a matter of logic and principle.

(i) Sensitivity to the Policy Considerations Underpinning IP Regimes;

Justice Gill highlighted the SGCA’s independent and careful evaluation of the policy considerations that have led to the departure from established positions in the EU, the UK and the US. He demonstrated his point with reference to the landmark case of Staywell[8]. He shared that:

“In Staywell, after considering the doctrine of initial interest confusion in the US, UK and EU, the SGCA decisively concluded that this doctrine ought not to be introduced into Singapore trade mark law.[9] The effect of introducing this doctrine into Singapore trade mark law, is that confusion which arises initially, but which would have been dispelled by the time of the purchase, can constitute confusion for the purpose of sections 8(2) and 27(2) of the Trade Marks Act[10]. The court found that this doctrine is inconsistent with the purpose of sections 8(2) and 27(2) of the TMA: while the doctrine of initial interest confusion seeks to protect the reputation of a well-known mark, sections 8(2) and 27(2) of the TMA are concerned with the origin of goods. Further, if the initial confusion has been dispelled by the time of purchase, the function of the trade mark as a ‘badge of origin’ is not undermined. As a result, the court declined to import the doctrine of initial interest confusion into Singapore trade mark law.”

(ii) Willingness to Adapt the Law, Where Appropriate, to Better Cater to an Increasingly Digitised World; and

On this point, Justice Gill mentioned that:

"In I-Admin (Singapore) Pte Ltd v Hong Ying Ting, the court recognised that advances in modern technology make it significantly easier to access, copy, and disseminate confidential information almost instantaneously, often without the plaintiffs’ knowledge.[11] To better protect owners from loss, the court modified its approach towards breach of confidence claims: now, claimants only need to prove that the information possesses the quality of confidentiality and was imparted in circumstances which imported an obligation of confidence. Thereafter, the burden is shifted to the defendant to prove that his conscience is unaffected.[12]”

(iii) Readiness to Review Settled Positions and Change the Law Where it is Desirable as a Matter Of Logic And Principle.

Justice Gill returned to the case of Staywell, a case “emblematic of the judiciary’s willingness to refine the law where necessary”.

Prior to Staywell, the court in The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd held that the confusion inquiry requires the court to consider all the circumstances, including extraneous factors which go beyond matters relating to similarity of marks and goods.[13] Guided by the underlying aim of the trade marks regime—to prevent confusion, Polo found that the law ought not to extend protection in cases where extraneous matters indicates that the confusion is merely imaginary.

However, Justice Gill pointed out the following:

“In Staywell, the court observed that even though the risk of origin-based confusion is the primary interest sought to be protected by trade mark law, the proprietary rights of a trade mark owner must also be vindicated.[14] A liberal approach towards the admissibility of extraneous factors would enable a subsequent trader to enter the market using a trade mark that is very similar to the senior mark and applied to similar if not identical goods, and yet avoid liability by means of an express disclaimer or by selling his goods at a much lower price, on the basis that confusion has been dispelled due to these differentiating steps. Allowing extraneous factors to readily displace a finding of likely confusion would not meaningfully uphold property rights represented by the trade mark.

Accordingly, the court in Staywell held that there must be a limit to the range of external factors.[15] Departing from its previous decisions starting with Polo, the court held that extraneous factors in the confusion inquiry are only permissible to the extent that they are: (a) intrinsic to the very nature of the goods and/or (b) affect the impact that similarity of marks and goods has on consumers; extraneous factors consisting of differences created by a trader’s differentiating steps (eg, pricing differentials and packaging) are impermissible in the confusion inquiry.[16] The change was brought about after a detailed consideration of the case law from the UK and EU.”

Justice Gill also noted Singapore’s IP legislation is updated regularly to keep abreast with international developments. For instance, as a result of the United States-Singapore Free Trade Agreement[17], Singapore amended the TMA in 2004 to accord a higher standard of protection to well-known trade marks in response to the Joint Recommendation adopted at the 34th World Intellectual Property Organisation Meeting.[18] At the same time, Singapore directly imported the definition of “dilution” set out in the US Trademark Act of 1946 into its local trade mark legislation. Another example would be the enactment of the Geographical Indications Act[19] in 2014 as a result of the European Union-Singapore Free Trade Agreement[20], which established a system of registration of geographical indications (GI). More recently, the GI Act was further amended in 2020 to improve the running of the GI Registry and provide greater clarity to traders and producers.

Q3: A key aspect of ensuring Singapore becomes a hub for IP Dispute Resolution is ensuring that such dispute resolution is cost effective. One such mechanism is encapsulated in the proposed reforms to allow for a new “track” that places restrictions on the length of trial, the quantum of damages recoverable, and the amount of costs awarded. While we understand that these reforms are still in the process of being implemented, what would be the key benefits that litigants can look forward to?

Justice Gill commented that:

“This new “track” provides a simplified process for IP claims. Modelled after the UK Intellectual Property Enterprise Court (IPEC), this track enables litigants to resolve their disputes in an expeditious and cost-efficient manner. This is significant, given that IP litigation tends, in general, to be more expensive than other types of litigation by virtue of the highly technical nature of the dispute which often calls for expert evidence. It is hoped that the simplified process track will play an important role in ensuring that litigants with more limited budgets can still access justice through the courts, notwithstanding the consolidation of civil IP disputes at the SGHC.

The introduction of this track, alongside existing procedures and timelines that apply to disputes presently on the SGHC IP list, gives litigants control over the costs of proceedings. The Minister of Law has indicated that litigants will generally be able to choose between the simplified process track and the normal track. Litigants with greater financial resources can opt for the normal track while cost-sensitive litigants can choose the simplified process track, which limits the length of proceedings and caps the costs and damages recoverable. Although it is ultimately for the court to decide which court the case is heard, the UK courts generally endeavour to accommodate parties’ agreement to use the IPEC. It remains to be seen if similar weight would be given to parties’ agreements in Singapore.”

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* LLB (Candidate) (NUS), Class of 2022.

** LLB (NUS), Class of 2021.

[1] [2019] 1 SLR 536 (CA).

[2] [2017] 1 SLR 35 (CA).

[3] [2014] 1 SLR 911 (CA) [Staywell].

[4] [2021] SGHC 125.

[5] No 26 of 2012, Sing.

[6] [2019] 4 SLR 17 (HC(I)).

[7] Andrew Phang, Goh Yihan & Jerrold Soh, “The Development of Singapore Law: A Bicentennial Retrospective” (2020) 32:2 Sing Ac LJ 804 at paras 94-100.

[8] Staywell, supra note 3.

[9] Ibid at paras 105-116.

[10] Cap 332, 2005 Rev Ed Sing [TMA].

[11] [2020] 1 SLR 1130 at para 55 (CA).

[12] Ibid at paras 61-62.

[13] [2006] 2 SLR (R) 690 at paras 8, 28-32 (CA) [Polo].

[14] Staywell, supra note 3 at paras 78, 95.

[15] Ibid at para 90.

[16] Ibid at para 95.

[17] United States and Singapore, 4 September 2003 (entered into force 1 January 2004).

[18] Trade Marks (Amendment) Act 2004 (No 20 of 2004, Sing).

[19] No. 19 of 2014, Sing [GI Act].

[20] European Union and Singapore, 19 October 2018 (entered into force 21 November 2019).

Director's Duties: Re-Examining the Bona Fide Test

A PDF version of the article can be found here.

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Director’s duties: Re-examining the bona fide test

Desmond Chye & Russell Vaz*

I.                    Introduction

It is well-established that directors are fiduciaries of the company they serve. As fiduciaries, they owe a host of duties, including the duty to act bona fide in the company’s best interests. Unfortunately, recent developments have created uncertainty over how the test is to be applied. In particular, whether the test has a substantive objective component in addition to a subjective one. The dominant interpretation is that both components are part of the test. However, closer inspection exposes some flaws in this interpretation. This article will explore the arguments for the contrary position: that the test for the duty to act bona fide in the company’s interests is purely subjective.

II.                 The Original Test

Originally, the Singapore courts’ test for assessing bona fides was purely subjective. Directors need only act in “what they consider – not what a court may consider – is in the interests of the company” to satisfy the duty.[1] Courts were motivated by “strong policy considerations” to avoid “coerc[ing directors] into exercising defensive commercial judgment” that “will dampen, if not stifle, the appetite for commercial risk and entrepreneurship”.[2] As such, the duty would not be breached if the directors acted in the “honest and reasonable belief that they were for the best interest of the company, even if those decisions turned out subsequently to be money-losing ones”.[3]

It is apposite to note that the test may occasionally dip into the realm of objectivity. This is also known as the evidential standard version of the objective test. In the Singapore High Court case of Cheam Tat Pang v PP[4] the Learned Judge made the following remark:[5]

“It is settled law that if directors take risks which no director could honestly believe to be taken in the interests of the company, such actions could well support allegations that the directors in question had acted in breach of their fiduciary duties to the company”.

The Learned Judge’s remarks appear limited to establishing the evidential proof of the subjective mind of the director in question to see if he did in fact act reasonably. As such, the evidential objectivity did not detract from the overall subjectivity of the test.

III.              The Dominant Interpretation of the Current Test

The locus classicus for the new test is Ho Kang Peng v Scintronix.[6] The facts of the case are simple: the defendant director effectively paid bribes to advance the company’s overseas interests.[7] In applying the bona fide test, the courts stated:[8]

“However, this does not mean that the court should refrain from exercising any supervision over directors as long as they claim to be genuinely acting to promote the company’s interests. First, “where the transaction is not objectively in the company’s interests, a judge may very well draw an inference that the directors were not acting honestly”... The test in Charterbridge Corporation Ltd v Lloyds Bank Ltd [1970] Ch 62 (at 74) of “whether an intelligent and honest man in the position of a director of the company concerned, could, in the whole of the existing circumstances, have reasonably believed that the transactions were for the benefit of the company”, has been accepted and applied by this court in Intraco (CA) (at [28]). On the other hand, it will be difficult to find that a director has acted bona fide in the interests of the company if he “take[s] risks which no director could honestly believe to be taken in the interests of the company”… Secondly, it seems that the requirement of bona fide or honesty will not be satisfied if the director acted dishonestly even if for the purported aim of maximising profits for the company.” (emphasis added)

By advocating for the standard of an “intelligent and honest man”, and stating that acting for the company’s best interests would be insufficient, the courts seemed to be introducing a substantive objective component.

This interpretation of Scintronix has been largely accepted as the orthodoxy. Subsequent cases, such as the Singapore Court of Appeal case of Goh Chan Peng v Beyonics Technology Ltd[9] appear to support this view, stating that the bona fide test has “both subjective and objective elements”.[10] Eminent local academics such as Professors Dan Puchniak and Tan Cheng Han SC have also adopted the position that the test has a substantive objective component.[11]

IV.              The Alternative Interpretation of the Current Test

A.      Case Authority supporting a Purely Subjective Standard

A closer inspection of Scintronix reveals that it may not have laid down a discrete objective component at all. Phrases like “intelligent and honest man” which hinted at an objective standard were tempered with statements that they would only be used to “draw an inference” or when directors only “purport” to act in the company’s best interest.[12] This suggests that the courts were only advocating the use of an objective evidentiary tool to determine the director’s subjective state of mind, keeping in line with the traditional test. Furthermore, the court never explicitly stated that there would be an objective component. This is an odd oversight considering the uninterrupted pedigree of the purely subjective test.

The apparent support of Beyonics is also to be doubted. The court commented that “where the transaction is not objectively in the company’s interests, a judge may very well draw an inference that the directors were not acting honestly” (emphasis added).[13] This statement suggests that the courts were using an objective evidentiary tool as explicated by Professor Walter Woon. This possibility was noted by the Singapore High Court in Ong Bee Chew v Ong Shu Lin,[14] acknowledging that Beyonics could have merely used an objective evidentiary tool. We note that while Ong Bee Chew did ultimately support the two-part test, this was for procedural fairness rather than doctrinal accuracy as Beyonics was not available to the parties at the time of their submission.[15]

Furthermore, as suggested by Professor Hans Tjio, Scintronix may have simply applied the original Charterbridge test instead.[16] The court in Charterbridge Corporation Ltd v Lloyds Bank Ltd[17] held that the objective standard of an “an intelligent and honest man” would only be applied where the director exercised no discretion at all.[18] The rationale behind it is simple – failing to engage in any subjective consideration whatsoever, an objective assessment remained the only way to determine if he had acted in the company’s interests.[19] In Scintronix, the court found that “[t]he wrong committed by the Appellant in the present case cannot be regarded as an error of judgment – it arose because he failed to exercise any judgment at all.” (emphasis added).[20] As determined by Professor Tjio, this indicates Scintronix was merely a use of the original Charterbridge test in Singapore, applying the objective standard only when no discretion was exercised.[21] This would leave the traditional subjective test largely intact.

B.      Policy Arguments supporting a Purely Subjective Standard

The main public policy rationale for a substantive objective component is to prevent directors from carrying out immoral acts they believe were in the company’s best interests. Under a purely subjective test, he would be exonerated, lowering the standards of commercial morality.  However, the need to maintain a minimum standard of commercial morality must be balanced against the need to avoid stifling entrepreneurship with excessive judicial interference. 

Unfortunately, the two-part test risks stifling entrepreneurship. Its vagueness instils undue fear in directors who would be unsure of what standard to act on. Courts have elucidated that the objective component depends on whether, “objectively, the transactions were not in the company’s interests”.[22] However, in an attempt to mitigate judicial interference, they have softened the standard, stating that is only serves to “[hold] directors to minimum standards of commercial morality” and that the court will thus apply “a very low baseline in order to avoid unnecessary interference”.[23] Unfortunately, ‘commercial morality’ is a nebulously defined criterion that does little to resolve the uncertainty.

Furthermore, the test is phrased very widely as it takes the perspective of an ‘honest and intelligent director’ such that even negligence can potentially fall under the objective limb. This problem was evident in Scintronix where the court made the following remark:[24]

“He simply continued a highly irregular and improper practice which he understood to have been initiated by the previous management under a different form without so much as inquiring why it was made, whether it would implicate the Company, and whether proper sanction had been obtained. He had failed to exercise reasonable care.” (emphasis added)

While the subsequent cases of Beyonics and Ong Bee Chew all stressed a ‘minimum standard’, they never repudiated Scintronix’s requirement for ‘reasonable care’ such that it is possible for the broad standard to persist since that would comport with what is expected of an ‘honest and intelligent’ director. 

If the objective standard is truly, as a plain reading of the judgement indicates, that of an ‘honest and intelligent director’, the substantive objective test would impose too harsh a burden on directors. This is as 99% of all domestic companies are Small Medium Enterprises.[25] It is unrealistic to expect small businesses to have the funds to hire professionals to function as directors. Nor is it realistic to expect all business owners, many of whom are uneducated, to perform the role of an “honest and intelligent director”. Imposing such an exacting standard would “dampen, if not stifle, the appetite for commercial risk and entrepreneurship”.[26]

C.     Applying the Purely Subjective Test to existing Case Law 

The existing case law has dealt solely with the issue of bribery. Bribery satisfies the targeted fact matrix of being both immoral and prima facie in the company’s interest. However, such situations could have been easily prevented by a purely subjective test. As noted in Scintronix, bribery does not help the company’s long-term interests, only its short-term interests.[27] Ergo, a director could subjectively believe giving a bribe to be in the company’s short-term interest but still fail to subjectively believe it is in the company’s interests as a whole, after taking its long-term interests into account. The situation of receiving a bribe, as in Beyonics, is much more straightforward – the director accepted a bribe to do something he otherwise would not have done. It is unlikely any director could subjectively believe that accepting a bribe would further the company’s interests.

V.                 Conclusion

The bona fide test plays a critical role in regulating director’s duties. Uncertainty over its components could prompt unwarranted defensive decision making, curtailing the economic potential of Singapore’s businesses. A clearer test is therefore needed. While we hope that the courts will take the flaws of the two-part test into account, we recognise that the current orthodox interpretation of the bona fide test will likely remain the law for the foreseeable future. Our article merely aims to explore the possibility of an alternative rather than to overturn the status quo.

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* LLB (Candidate) (NUS), Class of 2023. All errors and views expressed in this article remain our own.

[1] Cheong Kim Hock v Lin Securities [1992] 2 SLR 349 [Cheong Kim Hock] at para 26.

[2] Vita Health Laboratories Pte Ltd v Pang Seng Meng [2004] 4 SLR 162 [Vita] at para 17.

[3] ECRC Land Pte Ltd v Ho Wing On Christopher [2004] 1 SLR(R) 105 at para 49.

[4] [1996] 1 SLR 541.

[5] Ibid at para 80.

[6] [2014] 3 SLR 0329 [Scintronix].

[7] Ibid at paras 32-34.

[8] Ibid at paras 38-39.

[9] [2017] 2 SLR 592 [Beyonics].

[10] Ibid at para 35.

[11] D Puchniak, CH Tan & SS Tang, “Company Law” (2017) 18 SAL Ann Rev 247 at paras 9.7-9.8.

[12] Scintronix, supra note 6 at paras 32-34.

[13] Beyonics, supra note 9 at para 36.

[14] [2017] SGHC 285 [Ong Bee Chew] at para 78.

[15] Ibid at para 78.

[16] Hans Tjio, P Koh & PW Lee, Corporate Law (Academy Publishing, 2015) [Tjio, Koh & Lee (2015)] at para 09.043.

[17] [1970] Ch 62 [Charterbridge].

[18] Ibid at 74.

[19] Tjio, Koh & Lee (2015) supra note 16 at para 09.043.

[20] Scintronix, supra note 6 at para 40.

[21] Tjio, Koh & Lee (2015) supra note 16 at para 09.043.

[22] Beyonics, supra note 9 at para 35.

[23] Ong Bee Chew, supra note 14 at para 84.

[24] Scintronix, supra note 6 at para 40.

[25] Singapore Department of Statistics, “Topline Estimates For All Enterprises And SMEs, Annual” (accessed 2 January 2021)

<https://www.tablebuilder.singstat.gov.sg/publicfacing/createDataTable.action?refId=15808>

[26] Vita, supra note 2 at para 17.

[27] Scintronix, supra note 6 at para 37.