P was the chargee of D's land. P obtained a court order for the sale of D's land. The 'Proclamation of Sale' specifically stated that there were four private caveats entered against D's land and the sale would be subject to conditions stated therein. The conditions of the sale provided, inter alia, that 10% of the purchase price was to be paid as a deposit at the fall of the auctioneer's hammer with the balance to be paid within 90 days from the date of sale. Time to pay the balance of the purchase price was made the essence of the contract and in the event of failure to do so, the deposit would be forfeited. X and Y were the successful bidders at the auction and they paid the deposit. X and Y could not pay the balance of the purchase price within time and they applied to the senior assistant registrar to extend time for payment to a new fixed date. P had no objection to such an extension of time. Subsequently the senior assistant registrar granted two more extensions of time which were not objected to by P. However, X and Y still failed to pay within the extended time. P and D objected to a further extension of time and wrote to the senior assistant registrar to forfeit the deposit. The senior assistant registrar, however, wrote a letter to X requiring him to pay the balance of the purchase price within two weeks from the date of the letter. X and Y paid the balance of the purchase price to the senior assistant registrar with the condition that the money should not be released to P until the private caveats had been removed and the land could be transferred to X and Y. D applied to the High Court, inter alia, to cancel the senior assistant registrar's letter and to forfeit the deposit. X and Y successfully applied to intervene to oppose D's application. X and Y firstly argued that D had no locus standi to make the application. It was then argued that although time was originally the essence of the contract, P, by allowing time fixed for payment to pass, had caused time to be no longer the essence of the contract. X and Y finally contended that they were not bound to pay the balance of the purchase price until the private caveats had been removed.

Held, allowing D's application: (1) in a forced sale under s 256 of the National Land Code 1965, the chargee is the vendor because the chargor abdicates his rights as the registered owner of the land in favour of the chargee. However, the chargor may intervene to set aside the sale if the sale has been conducted fraudulently, collusively or improperly to the prejudice of the chargor. The effect of setting aside the sale is to restore the chargor's right of discharge of the charge. Accordingly D had the locus standi to make this application; (2) P had merely agreed to extend time for payment of the balance of the purchase price to new fixed dates. There was no evidence to show that P was prepared to waive the condition that time was to be the essence of the contract. Since X and Y had failed to pay within the final date fixed for payment, P was entitled to request the senior assistant registrar to forfeit the deposit; (3) the conditions of sale did not subject the payment of the balance of the purchase price to the removal of the private caveats. X and Y knew about the caveats before bidding and they took the risk of purchasing the land; (4) a forced sale of land under s 256 of the Code is conducted by the registrar or licensed auctioneer as agent of the chargee who is the real vendor. The senior assistant registrar has no right to grant extension of time for payment without the chargee's consent. In this case the senior assistant registrar's extension of time for payment was made after the final fixed date for payment and after P had requested the deposit to be forfeited. The senior assistant registrar's letter extending time for payment was therefore cancelled; (5) the sale to X and Y was terminated and D's land was to be resold. The deposit was to be forfeited and paid to P in account of D after defraying the expenses of the auction.

Kuala Lumpur Finance Bhd v Yap Poh Khian [1992] 1 MLJ 472 High Court, Kuala Lumpur (Lim Beng Choon J).

D, a company, agreed to sell a piece of land to P. D also agreed to erect a building on the land and deliver vacant possession to P on 4 April 1986. The agreement also provided for liquid-ated damages to be paid by D upon its failure to deliver vacant possession within the stipulated time. Time was the essence of the agreement. D failed to deliver vacant possession within the stipulated time but P did not terminate the agreement. On 2 December 1988, D by letter indicated that it was prepared to terminate the agreement and to compensate P in the form of shares in M Bhd pursuant to a composite scheme of arrangement of D which had been approved by D's creditors and shareholders. P, by a letter dated 16 December 1988, made a counter-offer, insisting that D pay a higher sum of compensation with 50% of the sum in cash and the other 50% in shares of M Bhd. P's counter-offer was rejected by D's letter dated 14 February 1989. P did not again terminate the agreement but continued to negotiate with D. On 5 June 1989 the court sanctioned D's composite scheme of arrangement. P did not oppose or apply to vary the scheme so as to exempt themselves from the scheme. P by letter accepted the shares of M Bhd 'without prejudice' on 19 July 1989. P on 20 September 1989 finally gave notice to D that unless vacant possession was delivered within two weeks, P would, inter alia, terminate the agreement. On 25 October P by letter purported to terminate the agreement. P, inter alia, applied for a declaration that they were entitled to and did terminate the agreement. P also claimed damages for D's breach of the agreement. P applied to the High Court for summary judgment.

Held, dismissing the application: (1) upon D's failure to deliver vacant possession within the stipulated time, P had an option to treat the agreement as repudiated or to treat it as still subsisting. In this case P had allowed D to continue with the construction under the agreement; (2) under s 7 of the Contracts Act 1950 there is no such thing as acceptance of a proposal subject to conditions imposed by the promisee. P had therefore refused to accept D's offer dated 2 December 1988 and had instead made a counter-offer dated 16 December 1988 to D; (3) P were bound by the court order sanctioning the composite scheme of arrangement and were to be treated as D's creditors in respect of the late delivery of property by D. In any event, P had been fully paid compensation with regard to D's delay in the delivery of the property in the form of M Bhd's shares; (4) even if time was originally the essence of the agreement, P by their inaction, negotiations with D and acceptance of M Bhd's shares, caused time to cease to be the essence of the agreement. Time had thus become at large and P must give reasonable notice to revive time as the essence of the agreement. The two-week notice given by P's letter dated 20 September 1989, could not be considered as reasonable time in view of the circumstances of this case; (5) D had therefore raised triable issues that could not be resolved summarily.

Lee Chee Ming & Anor v Superview Development Sdn Bhd Civil Suit No S7-22-916-89 High Court, Kuala Lumpur (Lim Beng Choon J).

Syarikat Soo Brothers Construction v Gazfin Sdn Bhd [1989] 1 MLJ 64 High Court, Ipoh (Abdul Malek J).

By a written agreement dated 3 April 1978, the plaintiff sold a piece land ('the land') to the defendant company at a purchase price of RM189,525 free from all encumbrances. Upon execution of the agreement and the memorandum of transfer in favour of the defendant company, RM50,000 was paid to the plaintiff as part-payment of the purchase price with the balance of RM139,525 payable upon approval being obtained for the conversion of the category of land use from agricultural to building land, the sub-division of the land and lay-out together with individual qualified title being issued by the proper authorities, and upon approval of road and drainage plans and building plans. The plaintiff was, at all material times, a shareholder and director of the defendant company. Upon execution of the agreement, the land was immediately transferred to the defendant company which took immediate steps to apply for conversion and sub-division of the land,but there was a delay in this because the State Government was interested in acquiring the whole land. In January 1988, the State Government aborted the plan and immediately thereafter, the plaintiff lodged a private caveat on the land which automatically froze all further actions intended by the defendant company to convert and sub-divide the land. The plaintiff sued the defendant company for the inordinate delay in complying with the agreement and prayed for an order and/or declaration that the memorandum of transfer was defeasible and that it be cancelled, or that the defendant company execute a memorandum of transfer of the land to the plaintiff, or that the balance of payment of RM98,525 be settled with interest at 8% per annum starting from 28 May 1978 till date of satisfaction. The plaintiff also submitted that a sum of RM41,000 paid by the defendant company was the repayment a loan advanced to the defendant company, not part-payment of the balance purchase price as contended by the defendant company.

Held, dismissing the claim: (1) the plaintiff's cause of action was premature; (2) there was no time clause in the agreement; time was never made the essence of the contract between the parties. The plaintiff's position as a shareholder and director of the defendant company must have fostered such a close understanding between them that they saw fit not to incorporate time as of the essence of the agreement. Furthermore, the delay was not due to default on the part of the defendant company but the abortion of the acquisition plan by the State Government and the caveat lodged by the plaintiff which effectively froze all further attempts by the defendant company to convert and sub-divide the land as required by the agreement. Accordingly, there was no inordinate delay in complying with the agreement;the plaintiff's submission that the RM41,000 was the payment of a loan given to the defendant company, not part-payment of the balance of the purchase price, was defeated by the simple fact that he had only claimed RM98,525 as payment of the balance of the purchase price. By simple calculation the defendant company had paid to the plaintiff a sum total of RM91,000 (RM50,000 + RM41,000) as part payment of the purchase price, leaving a balance of RM98,525.

Lim Hoong Thoo v Grik Development Sdn Bhd [1995] 4 MLJ 783 High Court, Kuala Kangsar (Abdul Malik Ishak J).

By a sale and purchase agreement ('the agreement') which was adopted from the standard sale and purchase agreement as found in Sch E of the Housing Developers (Control and Licensing) Regulations 1982, the plaintiff ('the purchaser') purchased a house from the defendant ('the developer'). The developer, however, failed to deliver vacant possession of the house to the purchaser within the stipulated time in the agreement. The purchaser sought to terminate the agreement by sending letters of termination to the developer. The purchaser then filed an originating summons and prayed, inter alia: (i) for a declaration that the agreement had been properly terminated; (ii) that the developer must refund the money that had been paid by the purchaser; and (iii) that the purchaser was entitled to liquidated damages at the rate of 10%pa of the purchase price from the date of the delivery of vacant possession until the date of the termination of the agreement, pursuant to cl 18(2) of the agreement. The developer conceded to prayers (i) and (ii), but contended that the liquidated damages as sought for should be rejected. It was argued that the right time for the purchaser to sue for liquidated damages would be when vacant possession was delivered, because it was only then that the sum to be paid could be ascertained and became due, and that the limitation period would only be activated when vacant possession was delivered.

Held, allowing the plaintiff's claim: (1) the agreement, which was adopted from Sch E has a statutory flavour. In order to construe cl 18(2), the principles in construing statutes applied. Thus, one began by examining the language employed therein and to ask what was its natural meaning, uninfluenced by other unnecessary considerations as derived from the previous state of law; (2) the language employed in cl 18(2) of the agreement was clear and unambiguous. Its natural meaning related to the right of the purchaser to rescind and to sue immediately for liquidated damages if the developer failed to deliver the house within 24 months from the date of the agreement; (3) as time was provided to be the essence of the agreement, the stipulated time period within which the house had to be delivered to the purchaser became an essential condition of the agreement. As the developer was in breach this condition, the purchaser was entitled to elect either to rescind the agreement and sue for damages by virtue of ss 56(1) and 65 of the Contracts Act 1950 or to treat the agreement as continuing and sue for damages. The purchaser in this case had rightly exercised his former option. He was entitled to terminate the agreement, obtain the refund of the money he had paid and postrescissionary damages as envisaged under s 76 of the Contracts Act 1950.

Kang Yoon Mook Xavier v Insun Development Sdn Bhd [1995] 2 MLJ 91 High Court, Johor Bahru (Abdul Malik Ishak J).

The appellant had brought a claim for $2,000, which he alleged he lent to the respondent. The learned magistrate dismissed the claim as he held: (1) the $2,000 was a loan with interest included and as such unenforceable because the appellant was an unlicensed moneylender; (2) the money claimed was tontine money and therefore not recoverable. The appellant's appeal to the High Court was dismissed and he appealed to the Federal Court.

Held, dismissing the appeal: it would not be right for the court which did not have the advantage of seeing and hearing the witnesses to disturb the findings of fact by the learned magistrate.

Ganesan v Kalima [1975] 2 MLJ 201 Federal Court, Alor Star (Suffian LP, Lee Hun Hoe CJ (Borneo).

In this case, one Jong Nyit Siong died owning certain property including the land in dispute. By her first marriage she had a daughter and a son, the respondent herein. After the death of her husband, she set up home with the appellant until her death. Her union with the appellant was not registered. The respondent had executed a document which the appellant alleged was a transfer of the land in dispute to him, but which the respondent said was intended to give only a life interest in the land.

Held, dismissing the appeal: (1) extrinsic evidence was admissible in this case to explain or interpret the written document; (2) on the facts the appellant had not discharged the onus of showing that the document was a transfer of land to him. Observations on the application of Chinese customary law in Sarawak. A Chinese marriage contract in Sarawak is not valid unless registered under the Chinese Marriage Ordinance (Cap 74). The Chinese customary law applies on intestacy in a Chinese estate in Sarawak.

Phiong Khon v Chonh Chai Fah [1970] 2 MLJ 114 Federal Court, Kuching (Azmi LP, Ismail Khan CJ (Borneo).

In this case, the defendants applied to discharge and set aside an injunction order made by the court on 21 March 1984. The defendants had entered into a contract with the plaintiffs for the building of a five-storey office building and a factory in Shah Alam. Under the contract (contained in two letters dated 6 September 1983 and 22 February 1984), the plaintiff company was employed as a turnkey contractor. In pursuance of the said contract, the plaintiffs employed three consultant firms: architects, engineers and mechanical and electrical engineers to do architectural drawings, structural drawings and mechanical and electrical drawings and designs, respectively. The drawings and designs were listed in the schedule attached to the order which restrained the defendants from using the drawings and designs. The plaintiffs claimed that those drawings and designs belonged to them as the turnkey contractor and they were part of the service contracts between the plaintiffs and the consultants. On 1 March 1984, the defendants by letter to the plaintiffs terminated the turnkey contract. According to the plaintiffs, the defendants had made offers to the plaintiffs' consultants to terminate their respective contracts with the plaintiffs and then enter into separate arrangements with the defendants. The defendants in support of their applications admitted terminating the services of the plaintiffs as turnkey contractor. They maintained that the plaintiffs were acting as agents on their behalf in the matter of the engagement of consultants for the project and accordingly, the drawings prepared by the consultants belonged to them. The plaintiffs argued that they would suffer damages which could not be measured and money damages would not be an adequate remedy if the defendants were allowed to induce those who were in the employ of the plaintiffs to break their contracts with them and they would lose credibility with other consultants.

Held: (1) the turnkey contract in this case was based on the pure turnkey principle. The drawings and designs were the legal responsibility of the plaintiffs as turnkey contractor; (2) there is nothing in the contract or agreements to suggest that the plaintiffs were the agents of the defendants. The plaintiffs were an independent turnkey contractor and in that capacity they engaged the services of the consultants; (3) since the plaintiffs employed the three consultant firms in connection with the turnkey contract all the drawings and designs prepared by the consultants were the property of the plaintiffs; (4) money damages would not be an adequate remedy. The plaintiff company, as contractor, would lose his credibility with other consultants. Even if it is doubtful as to whether damages would be an adequate remedy from the facts shown in the various affidavits the balance of convenience lies in favour of granting the injunction.

High Mark (M) Sdn Bhd v Pacto Malaysia Sdn Bhd [1987] 2 MLJ 85 High Court, Kuala Lumpur (Zakaria Yatim J).

Siow Kwang Joon & Anor v Asia Commercial Finance (M) Bhd [1996] 3 MLJ 641 High Court, Johor Bahru (Abdul Malik Ishak J).

Re Premium Vegetable Oils Sdn Bhd; Chloride Eastern Industries Ltd (Petitioner) [1994] 4 MLJ 95; (1995) CSLR X[663] High Court, Johor Bahru (Haidar J).

Kam Mah Theatre Sdn Bhd v Tan Lay Soon [1994] 1 MLJ 108 Supreme Court, Malaysia (Abdul Hamid Omar LP, Peh Swee Chin and Eusoff Chin SCJJ).

Pub 1997 Pte Ltd v Scorpion & Ors [1994] 2 SLR 180 High Court, Singapore (Lim Teong Qwee JC).

The defendant, on the marriage of his daughter to the plaintiff, promised in writing, inter alia, to 'build and give' to the plaintiff 'a suitable house'. He afterwards built a house, and the court was satisfied, on the evidence, that he did it for the plaintiff, and had let the plaintiff into possession of it in pursuance of the promise. After residing there some years, the plaintiff fell out with the defendant and quitted the house, and some time after brought a suit for specific performance by the defendant, of his promise to 'build and give' him 'a suitable house'.

Held: (1) though the promise was void under the Statute of Frauds 1677 for uncertainty as to the house intended, and the court could not say what was 'a suitable house' yet the parties had, by their acts, pointed out the house intended, and the letting of the plaintiff into possession thereof, was a part performance which took the case out of the statute; (2) the house being ascertained, the promise to build and give 'a house' necessarily implied the gift of the land on which it was to be built, with such curtilage as was proper for the due enjoyment of the house.

Mahomed Salleh v Nacodah Merican [1889] 4 Ky 463 Supreme Court, Straits Settlements (Wood J).

The proceedings arose from a dispute over certain land (the land) which the present parties owned as tenants-in-common in undivided shares. Originally, the parties and one Mohd Yunos Valibhoy, now a bankrupt, owned the land as well as a smaller plot of land (the smaller plot). In 1992, proceedings instituted by the official assignee against the present parties to realize the bankrupt's share in the properties were finally settled by a consent order whereby the bankrupt's share in the land was conveyed to the appellants and the respondents for the sum of S$14,510,000 which was raised from the sale of the smaller plot. As a result, the appellants and the respondents became owners of approximately 25% and 75% of the land respectively. The appellants had only agreed to the terms of the consent order because of an undertaking given by the respondents, which was to the effect that the respondents would not exercise their right to apply to court for a sale of the land but would instead agree to the land being partitioned so that the appellants would obtain their 25% of the land in specie. Despite serious negotiations on the subject, the parties could not reach an agreement as to the partitioning of the land. The respondents subsequently applied to court for the land to be partitioned or alternatively that their interests in the land be sold to the appellants at a price to be fixed or alternatively that the land be sold at a public auction. After the hearing, the learned judge ordered that the land be sold by public auction subject to a reserve price to be agreed or in default of agreement to be determined by the court and that the net proceeds of sale be divided in proportion to their respective interests. The appellants appealed against the decision on the ground that the undertaking was a binding agreement between the parties and the court had no jurisdiction to order the sale. Alternatively, it was contended that the learned judge should not in exercise of his discretion order the sale of the land.

Held, dismissing the appeal: (1) the first ground turned on the construction of the undertaking. The first part of the undertaking that the respondents would not apply to court for an order of sale was based on the later part that the respondents would agree to the land being partitioned. However, the later part did not show how and in what way the partition was to be effected. In that respect, the undertaking wholly lacked certainty. It was an agreement in principle to partition the land leaving the details to be finalized. It was impossible for the court to imply the necessary terms as to the form of partition that could be said to have been intended by the parties, because far too many details were left to be discussed and agreed upon between the parties. Since the parties could not agree on how to partition the land, the respondents were clearly entitled to invoke the jurisdiction of the court to order a sale of the land; (2) in exercising its discretion to order a sale, the court would take into account all the relevant circumstances. In particular, the court would not order a sale when to do so would assist one party to commit a breach of contract. In this case, the respondents had conducted serious negotiations to partition the land pursuant to the undertaking. There was, therefore, no breach of the undertaking on their part. The other relevant factors to be taken into account in the exercise of the discretion to order a sale include the feasibility and likelihood of obtaining planning approval from the Chief Planner for any partition sought, the financial viability of the partition and the appellants' sentimental attachment to the land. These matters had been properly considered and accorded due weight by the learned judge. The nature of the land, with the different development restrictions pertaining to different parts of the land, etc, complicated the exercise of achieving a just and equitable partition of the land by the court. In all the circumstances of the case, the learned judge had correctly exercised the discretion to order a sale of the land despite the undertaking of the respondents.

Abdul Razak Valibhoy & Anor v Abdul Rahim [1995] 2 SLR 555 Court of Appeal, Singapore (Karthigesu, LP Thean JJA and Goh Joon Seng J).

A contract to build a 'suitable house' is too vague and uncertain, and cannot be specifically enforced by this court, nor can damages be awarded.

Ahmed Meah & Anor v Nacodah Merican [1890] 4 Ky 583 Supreme Court, Straits Settlements (Pellereau J).

Wilson Parking (M) Sdn Bhd ('the respondents') occupied and operated a car park owned by Wisma Sime Darby Sdn Bhd ('the appellants'). The option clause in the tenancy agreement provided, inter alia, that the appellants shall, on the written request of the respondents made three months before the expiration of the existing term, grant a tenancy of the premises for a further term of three years from the expiration of the term at a rent to be agreed. The respondents gave notice in writing within the stipulated period of their intention to exercise the option to renew the tenancy but made no mention of the rental for the proposed new term. Eventually, in response to the appellants' invitation to make an offer in respect of the rental in competition with others who had been invited to tender for the tenancy, the respondents made an offer. The respondents' tender was not accepted and the existing lease was extended for another two months to enable the respondents to wind up the car park operations. The respondents, however, took the view that because they had exercised the option within the requisite period, there was in fact a concluded tenancy agreement in respect of the car park for another three years from the date of the expiration of the term. They contended that the fact that there had been no agreement on the rental was not relevant. The appellants did not share that view and issued a writ seeking a declaration that the respondents' tenancy had been lawfully determined and for vacant possession and damages. By two summonses, the appellants sought an injunction restraining the respondents from obstructing the appellants retaking possession of the premises and summary judgment under O 14 of the Rules of the High Court 1980. The respondents, in turn, took out a summons to restrain the tenants from interfering with their continued occupation of the premises until the trial of the action. All three summonses were dismissed. The appellants appealed. The High Court judge's grounds of judgment were not made available to the Court of Appeal, and the respondents submitted that the correct order to be made was that the judge had refused to dispose of the issues summarily. They contended that there appeared to be a conflict of judicial opinion on the effect of the option clause and, accordingly, there ought to be a trial of the action. They further argued that since possession was in issue, the status quo ought to be maintained, ie the respon-dents should be kept in possession. The appellants contended that there was no real conflict in the case law on the point and all the material required for the determination of the relevant issues were before the court, and that accordingly, the matter was proper for summary disposal and the judge should have adjudicated the issues and granted the orders sought for by the appellants.

Held, allowing the appeal: (1) an option clause is void for uncertainty unless the agreement provided the machinery or some formula which the courts can utilize to ascertain what is otherwise unascertainable without the parties coming to an agreement. The courts will not lend their aid to the enforcement of an incomplete agreement. In the instant case, the rental for the renewed period of the tenancy had to be agreed by the parties. The agreement for renewal was executory and there was no machinery or formula for the court to ascertain the rent if the parties could not come to an agreement on the rent. On authority and on principle, the alleged agreement was bad for uncertainty. Thus, the option clause for a further term at 'a rent to be agreed' was void for uncertainty and there was no need for a trial to come to that conclusion; (2) it could not be said that it was implied that the appellants should have done all that was reasonably necessary to ensure that the parties reached an agreement because that would be asking the court to add yet another clause to the agreement. In any event, neither parties nor the court may insist that the parties come to an agreement; (3) the fact that the respondents believed that there would be a renewal of the tenancy and went about their business on the basis of such belief did not per se estop the appellants from taking the position that there would be no renewal of the tenancy or do away with the requirement that an agreement had to be arrived at on rental before there was renewal. There was no representation that the respondents had acted to their detriment entitling them to rely on estoppel.

Wisma Sime Darby Sdn Bhd v Wilson Parking (M) Sdn Bhd [1996] 2 MLJ 81 Court of Appeal, Kuala Lumpur (Siti Norma Yaakob, VC George JJCA And Ahmad Fairuz J).

The plaintiff claimed his share of profits and allowances in a partnership business. The defence pleaded that the plaintiff had by agreement in writing agreed to accept $2,580 in full settlement. The plaintiff pleaded that (1) the agreement was null and void as his signature was obtained by undue influence of one Budsha and (2) a larger sum being due, acceptance of a lesser amount could not satisfy the debt.

Held: (1) the plaintiff had failed on the evidence to show that the defendant had possessed or exercised a general influence and dominance over the will of the plaintiff and therefore the plea of undue influence failed; (2) the agreement was valid as it was an agreement to discharge an unliquidated, uncertain and disputed demand, and not a liquidated debt.

Haniff v Dustagir 1948 High Court, Malacca (Callow J).

Ibrahim bin Musa v Bahari bin Nayan Civil Suit No 191 of 1984 High Court, Alor Setar (KC Vohrah J).

A, a firm of solicitors, had been retained to act for bank D in a contentious matter. After the determination of the matter A delivered to D two gross sum bills of charges. D then requested A to have the bills taxed. A by letter agreed to D's request and stated that the gross sum bills were withdrawn and they would be maximizing their legal fees ('the letter'). 'The letter' also advised D to obtain independent advice on the matter of taxation and required D to confirm, inter alia, that by mutual consent no reliance was to be placed on the gross sum bills. D subsequently obtained independent advice on the matter. The senior assistant registrar initially allowed M$65,658.45 in A's favour but later reversed this ruling and only allowed M$40,454.15 inclusive of allocatur fees. A applied to the High Court to review the senior assisant registrar's taxation. D firstly alleged that its assent to A's withdrawal of the gross sum of bills was vitiated by undue influence exerted by A and the advice given by A was not independent advice. D then argued that it was not open to A to claim for interest on the amount allowed for taxation by the senior assistant registrar because A had not taken such a point in its cross objection notice to the senior assistant registrar.

Held, allowing the application: (1) the effect of ss 121(1) and 132 of the Legal Profession Act 1976 is that a solicitor may be remunerated in respect of contentious business not subject of an agreement by a gross sum, but he has to deliver a detailed bill of charges on demand in which case it can be taxed. In such a situation, the gross sum bill is of no efect and the detailed bill is not explanatory of the gross sum bill but is a substituted bill. Accordingly the amount claimed in the detailed bill may exceed the amount of the gross sum bill; (2) on the facts in this case, D's submission that its assent to A's withdrawal of the gross sum bills was vitiated by A's undue influence, was groundless; (3) the object of an award of interest is not to compensate a successful party for damage done but for him being kept out of his money; (4) interest is claimable by a solicitor even though this is not stated in his bills of charges. Under s 133 of the 1976 Act, taxing solicitors are entitled to request the court to allow interest on disbursements advanced on an overdraft rate which the taxing solicitors have to bear. In this case, A had in fact financed D's litigation by relying on an overdraft account. Accordingly an award of interest on disbursements and costs incurred by A on behalf of D, was a legal entitlement of a consequential nature and was not an 'item' within the meaning of O 59 r 34(1) of the Rules of the High Court 1980; (5) alternatively even if A's claim for interest was an 'item' under O 59 r 34(1) of the 1980 Rules, the court would exercise its discretion under O 59 r 36(4) of the 1980 Rules to award interest on disbursements and costs incurred by A on D's behalf; (6) interest should run from the date when the taxing solicitors are retained. Section 11 of the Civil Law Act 1956 confers power on the court to award interest at such rate as it thinks fit; (7) accordingly the senior assistant registrar's sum of M$40,454.15 was set aside and her earlier order of M$65,658.45 was restored but this would be exclusive of the allocatur fees.

United Malayan Banking Corp v Sykt Perumahan Luas Sdn Bhd [1991] 3 MLJ 181 High Court, Penang (Edgar Joseph Jr J).

Che Som bte Yip & Ors v Maha Pte Ltd & Ors [1989] SLR 721 High Court, Singapore (Chao Hick Tin JC).

This was a claim by P, as personal representatives of the estate of N, for the return of 50,000 shares in N Company which D1 was alleged to have wrongfully acquired from N shortly before the latter's death. D1 was the brother of N and P was the widow of N. N was the managing director of the company and all decisions relating to the company were made by him alone. However, since he knew no English, he relied on D1 for assistance in translation and interpretation. At the time of the alleged transfer, N was in hospital suffering from a terminal disease. D1 claimed that the shares had been sold to him for S$50,000. P denied that this was the case. They claimed that N was incapable of consenting to the transfer and that D1 knew this. P argued that the circumstance of the alleged transfer and the fact that N relied on his brother to prepare documents in English should lead the court to draw the inference that D1 did not acquire the shares in good faith.

Held, allowing P's claim: (1) the fixed assets alone of the company had a total value of S$199,000 at cost. This meant that each share was worth S$1.99 without taking into account other factors. The shares represented a controlling block and the company was carrying on a viable business; (2) the court had no doubt that the shares were worth more than S$50,000 and that their potential value was many times that amount; (3) however, s 113 of the Evidence Act (Cap 97) reverses this burden where one party is in a position of active confidence to the other. This section is no more than a restatement of the principle in equity which applies to every case where influence is acquired and abused, where confidence is reposed and betrayed. In such cases, equity presumes undue influence until the contrary is shown; (4) but such a relationship may exist as a fact in a particular relationship; (5) N was able to exercise his judgment independently and gave instructions for the making of his will; (6) the mere fact that N was compos mentis when he signed the various documents or when he was alleged to have done so does not necessarily reflect a conscious or knowledgeable state of mind when he signed them so as to make the documents valid in the eyes of the law. If N did not know the nature of the documents that he was signing, a plea of non est factum was available; (7) the general rule is he who asserts must prove the assertion;there are certain personal relationships which equity regards as giving rise to the presumption of undue influence because one party is deemed to be in a position of dominance vis-a-vis the other. Equity does not presume that a brother is in a confidential position to and therefore has undue influence over another sibling, not even an elder brother to a younger brother;the court was unable to find that D1 was in a position of active confidence vis-a-vis N;on the evidence, the court was wholly satisfied that P had discharged the burden of proving that there was never a sale of shares to D1. The probability was that N was unaware of the nature of the documents. Judgment was entered for P.

Lai Kwee Lan & Ors v Ng Yew Lay & Anor [1989] SLR 863 High Court, Singapore (Chan Sek Keong J).

In 1978, the first and second appellants, together with Ayala Group of Companies from the Philippines planned to incorporate a proprietary club in Malaysia. In 1979, they acquired all the shares of a company called Raintree Development Sdn Bhd ('RDB') which owned a piece of land that was identified as the proposed site of the clubhouse. In 1980, Allied Capital Sdn Bhd ('Allied') was incorporated to build the club's premises. The preponderance of the shares in RDB and Allied were, at all material times, held by the first and second appellant, who together with the fourth appellant, controlled the board of the two companies. In 1981, the shareholders of RDB sold their shares to Allied, and subsequently, RDB amended its memorandum of association and enlarged its objects to include the carrying on of the business of a recreational club called 'The Raintree Club of Kuala Lumpur' ('the club'). On 9 May 1981, RDB entered into a contract with Allied, under which Allied was to build the club's premises for RM19m. On 21 October 1981, a protem committee of the club was elected. It comprised all the nine appellants, and the first and second were elected as the president and vice-president. On 23 February 1982, the club obtained its temporary certificate of registration. Following that, a membership committee which comprised the third, fourt, fifth, eighth and ninth appellants were appointed, and it subsequently passed a resolution to grant provisional admission to membership in the club to about 300 persons, including the appellants ('the provisional members'). On 3 June 1982, the protem committee met again and passed a resolution which authorized the first and second appellants to enter into a sale and purchase agreement on behalf of the club under which the entire issued and paid up capital of RDB was to be purchased by the club from Allied for RM47m ('the share acquisition agreement'). The purpose was to acquire the building and the facilities for the club. The shares were to be resold to applicants for membership. The first extraordinary general meeting ('the EGM') unanimously resolved that the first and second appellants entered into the share acquisition agreement on behalf of the club with Allied. This was subsequently carried out. The provisional members, excluding the appellants, who were to ultimately bear the RM47m were not invited to attend the EGM. Upon the issuance of the club's final certificate of registration as a society on 20 January 1983, members of the protem committee became members of the general committee, and some of the provisional members became full members. The club's members were then informed by the general committee that the total cost of acquiring the club's premises from Allied was much more than the RM47m, due to certain additional costs. Dissatisfied, members of the club appointed an ad hoc committee to study the share acquisition agreement at the club's first annual general meeting ('the AGM'). The committee produced a report which was highly critical of the appellants, who, later, resigned as members of the general committee. The members of the club ('the respondents') brought a representative action against the appellants in the High Court for damages for breach of fiduciary duty as promoters of the club in respect of the share acquisition agreement. The appellants, however, argued that the respondents were incompetent in law to bring a representative action as they were not and had never been public officers of the club within the meaning of s 9(c) of the Societies Act 1966. The appellants further argued that promoters of a club have no fiduciary relationship with the members of the club they sought to promote. They contended that, in any event, there was no identifiable class to whom the fiduciary duty was owed, as the respondents were only provisional members at the material times. The trial judge, however, found that the action was properly instituted, and that the appellants had acted in breach of the fiduciary duty owed by them to the respondents. The judge then proceeded to enter judgment against the appellants with damages to be assessed. The appellants appealed ('the first appeal'). Meanwhile, on 24 April 1986, Allied brought a separate action against the club ('the respondents') to recover what it said was due to it under the share acquisition agreement, which amounted to RM8,409,997 plus interest. In their defence, the respondents resisted the action on the ground that the agreement had been procured by undue influence, as the first and second appellants were the major shareholders of Allied and RDB at all material times. The respondents counterclaimed and asked for a refund from Allied of the difference between RM47m and the sum which they claimed as being the fair value of the shares. Allied then pleaded for rescission of the share acquisition agreement in its counterclaim. The respondents resisted Allied's counterclaim on the basis that adjustment of the price, and not rescission, was the appropriate remedy in the circumstances of the present case, as the object sought to be achieved was disgorgement by Allied of money which it was not entitled to keep. The trial judge decided in favour of the respondents. Allied appealed ('the second appeal') and contended, inter alia, that: (i) the existence of fiduciary relationship as declared by the judge between the appellants and the respondent did not extend to Allied, which was, a separate corporate personality; (ii) the respondents could either accept the agreement which was tainted with undue influence with all its benefits and burdens, or gave it up and returned to status quo ante through the process of restitutio in integrum; but, they were not entitled to affirm the agreement and to obtain adjustment of the price at the same time; and (iii) the orders made by the judge in the two actions amounted to double recovery in the respondents' favour. The respondents had filed a cross-appeal in the second appeal on the grounds that: (i) the judge had awarded them only the costs of the counterclaim, and not the costs of Allied's action; (ii) the judge only awarded interest from the date of judgment and not from the date of the writ. The third appeal before the Court of Appeal was by Allied against the order of the High Court which directed Allied to pay the sum awarded against it into court as a condition for granting a stay pending appeal. As the Court of Appeal required time to consider the first and second appeals, which were the substantive appeals, the court decided that there ought to be an unconditional stay pending its decision. The third appeal was thus allowed at the outset, and the deposit paid into court was refunded to Allied.

Held, dismissing the first and second appeals, allowing the cross-appeal in part, and setting aside the stay of execution granted in the third appeal: (1) and (ii) the members of the club were the ultimate victims of any wrongdoing of the appellants. It followed that the procedural device of a representative action was appropriate in this case; (2) the trial judge was correct in holding that the appellants were promoters of the club, and that the fiduciary doctrine was applicable to promoters of proprietary clubs; (3) equity has, in keeping with the purpose of its origin, refrained from laying down any strict rules for determining whether a particular relationship is fiduciary in nature or gives rise to fiduciary obligations, leaving the development of its jurisprudence to a case by case basis. The maxim 'the categories of fiduciary relations are never closed' exemplifies the approach that a court of equity adopts in this sphere of human activity; (4) whether a particular set of circumstances ought to attract a fiduciary duty is a question of judicial policy. It depends upon the standard of commercial morality that the courts of a particular jurisdiction may choose to impose upon parties to a transaction, having regard to the cultural background and circumstances of the society in which they function; (5) the instant case was merely an illustration of equitable protection being extended to fiduciary undertakings by analogy with well-established fiduciary relationships. The trial judge's conclusion that the appellants as promoters were fiduciaries, was a correct direction in law and was entirely in keeping with the spirit and intendment of equity jurisrudence. The factual analysis of the judge further supported the inclusion of promoters of a club within the scope of the fiduciary doctrine; (6) where a fiduciary duty is owed to an identifiable class of persons, it is the class to whom the law directs its attention. In the present case, that class comprised all those persons who had applied for and were awaiting admission to membership of the club. Although some of them might not join the club, and others might take their place, the class did not lose its identity; (7) the trial judge had correctly concluded that the appellants had acted in breach of the duty owed by them. It was clear that the interests of the respondents was in conflict with the financial interests of the appellants. It was in the respondents' interests that the purchase price be kept as low as possible, but the appellants, who were connected to Allied or RDB in one way or another, were there to ensure that Allied reaped the highest possible profit. However, the appellants had failed to disclose their financial interests in Allied to the respondents. Further, the appellants' opinion that the purchase price of RM47m was fair and reasonable was not supported by any independent valuation. Any protestation by the appellants that they acted honestly and in good faith having the best interests of the club at heart was quite useless, for neither dishonesty nor bad faith was a necessary ingredient of the alleged wrongdoing; (8) our courts, when faced with a case of undue influence in the sphere of the law of contract, must ultimately have regard to the words of our own statute, although decisions of courts of those jurisdictions where the law is akin to our own may be referred; (9) undue influence, like all other equitable doctrines, is an extremely flexible concept. Subject to policy considerations, the categories in which it may operate are therefore not closed. It is important to apply the doctrine, as housed in s 16 of the Contracts Act 1950, to varying fact patterns in a flexible manner. In the absence of any intention on the part of Parliament to alter the doctrine, s 16, being a remedial provision, should be interpreted in a broad and liberal fashion. Even in cases which are not stricto sensu contractual in nature, the section may be resorted to by analogy; (10) the proof of dominance of the will of a party to a transaction by the other party to the transaction is not a sine qua non of the doctrine of undue influence. The doctrine applies with equal force where, from the proved or admitted facts, there is shown a relationship of confidence and an abuse of that confidence by the person in whom it was reposed; (11) the trial judge's conclusion that Allied had obtained an advantage through undue influence may be founded upon the general rules of attribution. The specific findings of the judge that the first and second appellants had abused the confidence reposed in them as fiduciaries were to be equated to an abuse of confidence by Allied. The relationship between the first and second appellants and Allied was such that their knowledge may be safely said to be that of Allied. The first and second appellants were also Allied's alter ego, so that the corporate facade may be pierced to reveal the true picture; (12) a plaintiff who proves a case of breach of trust or of fiduciary relationship is entitled to a wide range of relief, such as an account of profits, the appointment of receiver to recover money due to him, or damages. The appropriateness of the particular remedy depends very much upon the facts of each case; (13) it is axiomatic that the statement of a view upon the value of a property is an expression of opinion, and it is open to the trier of fact in the justice system to accept the opinion of one witness upon the value of a thing in preference to the opinion of another. In this case, the judge in the second appeal preferred the valuation tendered in evidence by the respondents, and this was something that was within his province; (14) pursuant to s 19(1) of the Contracts Act 1950 and s 34(1) of the Specific Relief Act 1950, the usual remedy by which an innocent party may relieve himself of all his obligations under a contract procured by undue influence is rescission; (15) the Specific Relief Act 1950, however, does not prohibit against the grant of some other kind of relief to a party who seeks to remedy a wrong perpetrated upon him by another in consequence of exerting undue influence in the wider sense which existed in this case; (16) the maxim of the law is ubi jus ibi remedium. Accordingly, if a wrong is found to have occurred in circumstances which disclose an abuse of confidence in respect of which a court of equity may grant relief, it is open to the court to grant such relief as would meet the ends of justice. In this case, to demand that rescission be the sole remedy would cause grave injustice, and this would denude equity jurisprudence of its flexibility; (17) the purpose of equity, which is to ensure disgorgement by a wrongdoer who has profited through an abuse of confidence, was achieved by getting Allied to return to the club, the difference between RM47m and the fair price of the shares, as ordered by the judge. An award of damages in a case where rescission is unavailable also accords with general principles of unjust enrichment; (18) the two awards given by the trial judge in the first and the second appeals were not for double enforcement, but for recovery of the actual loss suffered by the respondents. The respondents might obtain only nominal damages against the appellants if they recover the full sum awarded against Allied. Further, the respondents might not recover anything from Allied, and in that event, they would have to look to the appellants in the first appeal for satisfaction of the judgment. Pursuant to the control a court exercises over all its orders, there would be no double recovery; (19) although the power to award costs is discretionary, it must be exercised judicially. The general rule is that a successful litigant must have all his costs unless he has done something or omitted to do something in the conduct of the action by reason of which he should be deprived of his costs. A judge when departing from the general rule must give reasons. However, the trial judge in this case had fialed to do so. It followed that this court was entitled to exercise its original discretion, and the respondents would therefore have the costs of the action as well; (20) it was a matter of pure discretion of the the judge whether to award interest to the respondents from the date of judgment or the date of the writ. Thus, there was no merit in this part of the cross-appeal; (21) it would be a travesty of justice to say that the only way to bring an action against the appellants in the first appeal was by suing in the name of the club's public officer, bearing in mind that: (i) the action was instituted against the appellants who were, at the material time, purporting to act in their capacity as as office bearers and members of the protem committee of the club for breaching the fiduciary duties that they owed the club;(per curiam) where a transaction is tainted by undue influence, it is not only invalid as between the parties thereto and their privies, but also as against any other person who seeks to enforce the transaction with knowledge or notice, actual or constructive, that it was procured by undue influence or other any other vitiating element. A third party may safely take under such a transaction and enforce it only if he is a bona fide purchaser for value without notice of the invalidating circumstances. The doctrine of the bona fide purchaser for value without notice finds expression, in the context of the specific enforcement of contracts, in s 26(b) of the Specific Relief Act 1950.

Tengku Abdullah ibni Sultan Abu Bakar & Ors v Mohd Latiff bin Shah Mohd & Ors and other appeals [1996] 2 MLJ 265 Court of Appeal, Kuala Lumpur (Gopal Sri Ram, Abdul Malek and Ahmad Fairuz JJCA).

This action concerned three civil suits, civil suit No 204 of 1986 ('the first suit'), civil suit No 96 of 1986 ('the second suit') and civil suit No 1084 of 1986 ('the third suit'), which have been consolidated. At the trial, however, the second suit was not proceeded with. In the third suit, Allied Capital, a private limited company incorporated in Malaysia, brought an action against the secretary of the Raintree Club ('the Club') as the registered officer of the Club. It was alleged that by a written agreement dated 24 August 1982 ('the agreement') entered into between Allied Capital on one part, and Tengku Abdullah and Gen Yusoff, both acting for and on behalf of the Club on the other part, it was agreed that the plaintiff would sell to the Club shares in Raintree Development for the sum of RM47m. Allied Capital alleged that the Club failed to pay the remaining sum of RM8,408,997. While admitting the purchase of the shares for RM47m, the defendant contended that the Club had been induced into the agreement under the undue influence of Allied Capital. The defendant stated, inter alia, that at all material times, Tengku Abdullah and Gen Yusoff were the major shareholders of Allied Capital and Raintree Development. The defendant counterclaimed and contended that the true value of the shares was only RM24,597,162 and that the defendant was entitled to counterclaim the sum of RM16,571,734 being the difference between the amount paid and the actual value of the shares. The plaintiffs in the first suit were suing on behalf of themselves and all other members of the Club except the defendants, arising from the said agreement. The plaintiffs' claim against the first to the fourth defendants (which included Tengku Abdullah and Gen Yusoff) was for damages for breach of fiduciary duty as promoters of the Club while the claim against all nine defendants was for damages for their breach of duty to exercise due care, skill and diligence. The defendants, however, argued that the plaintiffs were incompetent in law to bring a representative action within the meaning of O 15 r 12 of the Rules of the High Court 1980 ('the RHC'), as the plaintiffs were not members of the Club as at 24 August 1982, when the cause of action was alleged to have accrued. It was also said that the plaintiffs were not and had never been the public officers of the Club within the meaning of s 9(c) of the Societies Act 1966. The defendants also submitted that any cause of action based on breach of fiduciary duty did not accrue to the plaintiffs as they were not members of the Club at the material time. In any case, they argued that promoters of a Club have no fiduciary relationship with the members of the Club they sought to promote. The key issues which arose were: (i) whether the first suit was properly brought before the court; (ii) the membership of the Club at the relevant time; (iii) whether the defendants in the first suit were promoters of the Club and owed a fiduciary duty to the Club; (iv) whether there was a breach of the fiduciary duty, if any, owed by the defendants to the Club; and (v) whether the Club was induced to enter into the agreement under the undue influence of Allied Capital.

Held, allowing the plaintiffs' claim in the first suit but dismissing Allied Capital's claim and allowing the defendant's counterclaim in the third suit: (1) it was not disputed that the Club did not have a public officer at the material time. However, a person may commence a legal action in the capacity of his individual right as a member of a society. As such, the plaintiffs in the first suit were competent to bring the suit in a representative capacity even though none of them was a public officer of the Club; (2) it could not be said that when the agreement was executed, the defendants were the only members of the Club, whereas none of the plaintiffs was then a member and thus not competent to bring the first suit. On the available documentary evidence which must prevail, the Club was only registered under the Societies Act 1966 on 20 January 1983, and thus, the defendants could not have become full members of the Club as at 24 August 1982, when the agreement was executed; (3) a fiduciary relationship exists not only in relation to a company but also between two persons, such as when one person entrusted to another the negotiation of a contract on his behalf or for his benefit and relied on the other to procure for him the best terms available. In the circumstances, there was a fiduciary relationship between the promoters of the Club and the Club and/or the members of the club; (4) the question whether a person was or was not a promoter was one of fact to be decided by the court. All the nine defendants in the first suit were the promoters of the Club, as they were the members of the protem committee who were appointed to take the necessary steps to obtain the registration of the Club. They were thus in fiduciary relationship with the Club; (5) the first to fourth defendants in the first suit were in effect the vendors as well as the purchasers of the shares of Raintree Development, and also the promoters of the Club. Although they had declared their interest in Allied Capital, they, as promoters of the Club, could not run away from their fiduciary duty to the Club. In the circumstances of the case, each of the defendants had an interest either as shareholder, director or employee of the companies owned by Tengku Abdullah and Gen Yusoff, or the Ayala Group with which Tengku Abdullah and Gen Yusoff worked closely in mooting the idea of the Club. When the protem committee resolved to purchase the shares in Raintree Development for RM47m, all the defendants were not in a position to act impartially. There was no independent and intelligent judgment on the transaction to purchase the shares. The promoters were biased and nothing was done to protect the interests of the Club. On the relevant evidence adduced in the first suit, the defendants had been in breach of their fiduciary duty to the Club; (6) since there had been a breach of the fiduciary relationship between the defendants and the Club, the rights of the members of the club were affected. All the members of the Club, including present members were liable to pay the purchase price of the shares. The plaintiffs were thus entitled to bring a representative action under O 15 r 12 of the RHC. All the persons who were represented by the plaintiffs have the same common interest in bringing the action; (7) the defendants in the first suit, as promoters of the Club, had failed to exercise due care, skill and diligence in the exercise of their duty in promoting the Club. They failed to get independent advice on the value of the shares and were only concerned in promoting their own interest; (8) a contract is said to be induced by undue influence where the relations subsisting between the parties were such that one of the parties was in a position to dominate the will of the other, and used that position to obtain an unfair advantage over the other. Where one party stood in a fiduciary relation to the other, that party was deemed to be in a position to dominate the will of the other. In this case, the plaintiff in the third suit was deemed to have exercised undue influence over the Club in the execution of the agreement; (9) the value of the shares as at 24 August 1982 was RM25,718,000. As the Club had paid RM41,168,876, judgment should be entered on the defendant's counterclaim for the difference of RM15,450,876 to be refunded.

Mohd Latiff bin Shah Mohd & Ors v Tengku Abdullah ibni Sultan Abu Bakar & Ors and other actions [1995] 2 MLJ 705 High Court, Kuala Lumpur (Zakaria Yatim J).

The plaintiffs, Polygram Records Sdn Bhd, entered into a written agreement ('the first contract') with a rock group, The Search ('the group'), on 7 October 1984. They were signed on by Eric Yeoh ('Eric'), the then artiste and repertoire manager of the plaintiffs. The first contract was for a period of two years, with an option for two further periods of one year each, exercisable at the discretion of the plaintiffs, and not the group. On 12 June 1985, a new contract ('the second contract') was entered into between the plaintiffs and the group, purportedly for the reason that there were some changes in the composition of the group. Although the second contract contained many provisions which were identical to that contained in the first contract, there was a major modification, which the group claimed was not brought to their attention. The modification was that the period of option which the members of the group to the plaintiffs was extended to two additional periods of 24 months each, instead of the two additional periods of 12 months each under the first contract. It was established during the trial that no copy of the second contract was ever given to the group until 1987, when the solicitor acting for the group requested a copy of it for the purposes of the present action. After the release of the third album with Polygram in February 1987, it was clear that the group was dissatisfied with their existing arrangements with Polygram and sometime at the end of 1987, the group made the recording of an album under a new company, Go-Search. Go-Search was a company incorporated by the members of the group themselves. The company did only the recordings, whilst another company, Pacific Music Corp (M) Sdn Bhd ('the sixth defendant') did the distribution. In 1988, Polygram commenced proceedings against the group for breach of contract and against the sixth defendant for inducing the group to breach their contract with Polygram. The group counterclaimed, inter alia, for a declaration that both the contracts were voidable on the grounds of undue influence that both the contracts were voidable on the grounds of undue influence; for the assignment of the relevant copyright in all the songs recorded by the group with the plaintiff; and for a declaration that a clause in the second contract was void in restraint of trade. The issue before the court was whether at the time when the group began recording for Go-Search, in late 1987, they were still contractually bound to Polygram, either under the terms of the first contract or the second contract.

Held, dismissing the plaintiff's claim and allowing part of the group's counterclaim: (1) and that the royalties would be paid to them. There was, therefore a clear intention on their part to enter into the recording contract with Polygram and was therefore no misrepresentation and least of all undue influence when the group entered into the first contract; (2) a party who signs a written contract is bound by the terms of the contract, except in the limited cases where fraud, undue influence or misrepresentation may be established. Therefore, the argument by the group that the first contract was not binding on them since they did not 'agree to the terms' could be dismissed summarily; (3) whilst it was true that the initial period of the first contract expired on 6 October 1986, and there was no evidence that the plaintiffs had exercised their rights under the option to extend the duration of the first contract, the plaintiffs themselves never contemplated any extension of the first contract as they had always acted on the belief that the first contract was substituted by the second; (4) if a new contract is entered into by the parties, whatever its terms, the old contract is extinguished. In the present case, the clear intention of both the parties was to replace the first contract with the second contract. The group, therefore, was under no obligation to perform their part of the bargain under the first contract, as the first contract had been extinguished. After substitution by the second contract, no rights or liabilities could arise out of the first contract; (5) therefore, the first contract was not in force at the time when the group began recording for Go-Search and no question as to the group having breached their obligations under the first contract arose in this case; (6) there was insufficient evidence to find that the second contract was voidable by reason of false misrepresentation; (7) by virtue of s 28 of the Contracts Act 1950 ('the Act'), agreements entered into under undue influence are voidable. In this case, there was evidence to show that there existed a close relationship between the group and Eric which was a relationship of trust and confidence. Therefore, Eric was in a position to procure them to enter into the second contract. For these reasons, the presumption of undue influence arises. However, before the group may set aside the contract on the grounds of undue influence, they must prove that the contract was 'unconscionable' or one of manifest disadvantage to them. The terms in the second agreement were not new terms, but merely those which were already known to the group, by virtue of the first contract. Although the period of the contract was extended under the second contract, the duration was not such as to render the entire contract manifestly disadvantageous to the group; (8) although the second contract was valid and legally binding between the parties, there was no evidence at all to indicate that the plaintiffs had exercised their rights to extend the period of the second contract for a further term of two years. Therefore, the contract had lapsed before the group began recording for Go-Search; (9) the covenant, whereby the group undertook to provide exclusive recording rights to the plaintiffs during the currency of their recording contract, was not a covenant in restraint of trade and was therefore not rendered void under s 28 of the Act. Section 28 is only applicable in cases where a person is restrained from carrying on his trade or profession in the post-contract period and not during the currency of the contract. It therefore follows that a clause in the second contract which was a covenant in restraint of trade was void ab initio and not binding on the group when they began recording for Go-Search; (10) therefore, the group was not in breach of any contract with Polygram when they began recording for Go-Search. The plaintiffs claim against the group failed. As a result of that, the plaintiffs' claim against the sixth defendant for inducing the group to breach their contract with Polygram must necessarily fail; (11) under the law relating to copyright of sound recordings, the copyright to the sound recordings belongs to the plaintiffs, and as such no question of reassignment of such copyright to the group arises in this case; (12) the plaintiffs were to pay the group all royalties due to them under the second contract, in respect of the sales of all the four albums recorded by the group, in accordance with cl 5(1) of the second contract even though cl 5(6) states that where the group was no longer contractually bound by the plaintiffs, they were only entitled to receive 50% of the royalty rates payable. This was because where a later clause in a contract destroys the effect of an earlier clause, or where a clause in a contract is inconsistent with the main object of the contract, the later clause may be rejected as being repugnant to the earlier clause or to the main object of the contract. Clause 5(6) was therefore void; (13) (obiter) in this case, in both the first and the second contracts, reference was made throughout the contracts as though each and every one of the members of the group was entering into a separate and individual contract with Polygram. If the contract was with individual members of the group, then clearly only those who were parties to the relevant contract were bound by the terms of that particular contract. However, if it was intended that the contract was to be with Polygram and The Search, as a group, then the legal status of the group was unclear: whether it was an association, a coduals. The advantage of such an entity is that, as the contract is entered into with a legal entity, any change in the membership of the group would not affect the legal status of the contract. The contract remained with the group and not with the individual members. Although these issues were not directly addressed by the group to challenge the liability of some of the group, recording companies and artistes need to pay more heed to such issues; (14) (obiter) one exceptional circumstances under which a party to a written contract may seek to set it aside is on the grounds of non est factum. Non est factum was not pleaded in the present case to challenge the validity of the first contract, and even if it had been pleaded, the group would not be in a position to establish that the contract entered into by them was 'radically or substantially or fundamentally' different to that they had intended to sign; (15) (obiter) even if the element of manifest disadvantage need no longer be established as a separate requirement in cases of presumed undue influence, the group still might not be able to set aside the second contract as they appeared to have affirmed the contract; (16) considering the circumstances and the evidence adduced, the members of the group understood the nature of the first contract; the duration of the contract; their obligations to record for Polygram;(obiter) in Malaysia, there is some support for the view that, public policy may, in some exceptional cases, demand that certain contracts which are grossly unfair to one of the parties ought to be set aside on the grounds of inequality of bargaining power under s 24(e) of the Act.

Polygram Records Sdn Bhd v The Search & Anor [1994] 3 MLJ 127 High Court, Kuala Lumpur (Visu Sinnadurai J).

In this case, the plaintiff had agreed to transfer her land as security for an advance of $220,000 to the plaintiff or her account. The money was to be used to pay off a charge on the land and also to pay the first defendant an amount payable by the brother-in-law of the plaintiff for whom the first defendant had stood surety in getting an advance from a bank. The first and second defendants were advocates and solicitors and acted for the plaintiff in preparing the necessary documents. The land was transferred to the second defendant by a memorandum of transfer but there was an agreement adding that the land was not to be sold to any other person without the consent of the plaintiff and the second defendant undertook to transfer the land to the plaintiff in the event of her paying the sum of $220,000. The defendant assured the plaintiff that although the transaction was in the form of a sale, the land would always remain a security. He also assured her that although the period of repayment was limited to one year, the property would be transferred to her nevertheless even after it. It was alleged that the second defendant had instead and in complete disregard of the memorandum and its addition and in collusion with the first defendant unlawfully and inequitably transferred the land to him and later the second defendant in order to defeat the plaintiff's title in collusion with the third defendant, also an advocate and solicitor, unlawfully and inequitably transferred the land to the third defendant. The third defendant brought an action for possession of the land against the plaintiff and obtained an order for possession. The plaintiff appealed against the decision but being out of time her appeal was dismissed. She then filed caveats against the land but on an application by the third defendant the caveats were set aside (see [1979] 1 MLJ 173). The plaintiff then brought the action against the defendants for breach of contract, with undue influence, for breach of trust and for fraud.

Held: (1) in this case there was privity of contract between the plaintiff and the second defendant. On the facts the second defendant in fact bought the land on behalf of the first defendant. The first defendant was the undisclosed principal and the second defendant was his agent and therefore the first and second defendants were liable on the contract; (2) in this case the first and second defendants had acted as solicitors for the plaintiff and the burden of proving that the contract was not induced by undue influence was on them as they were in a position to dominate the will of the plaintiff. The defendants had not discharged that burden and the plaintiff was therefore entitled to repudiate the contract; (3) in this case the first and second defendants as solicitors were entrusted by the plaintiff with the holding of the document of transfer as security. Since only the equitable interest was with them they were constructive trustees of the property and as they had transferred the land to themselves they had committed a breach of trust; (4) the defendants in this case were guilty of fraud against the plaintiff; (5) judgment should therefore be entered for the plaintiff as prayed; (6) in this case on the facts the three defendants had committed a grave and abominable act of contempt against the courts as they had made the courts the subject of their deception and mischief and they should be punished for it. The defendants must be committed to prison for a period of two years.

Tara Rajaratnam v Datuk Jagindar Singh & Ors [1983] 2 MLJ 127 High Court, Johore Bahru (Abdul Razak J).

Maria Chia Sook Lan v Bank of China 1975 Privy Council Appeal from Singapore (Lord Simon of Glaisdale, Lord Morris of Borth-Y-Gest, Lord Salmon, Lord Fraser of Tullybelton & Lord Russell of Killowen).

Khushvinder Singh Chopra v Mookka Pillai Rajagopal & Ors [1996] 2 SLR 379 High Court, Singapore (Lim Teong Qwee JC).

Mookka Pillai Rajagopal & Ors v Khushvinder Singh Chopra [1996] 3 SLR 457 Court of Appeal, Singapore (Karthigesu and LP Thean JJA, Goh Joon Seng J).

The plaintiff, an advocate and solicitor, was instructed by the second defendant to act for him in respect of discharging an existing mortgage over the defendants' property (the property) and to effect a subsequent mortgage of the property as security for a loan. No instructions were, however, given on this intended transaction. On 14 October 1993, the second and third defendants, who were husband and wife, gave the plaintiff a written option to purchase the property for S$1.2m (the written offer). The option was not signed by the first defendant who was the second defendant's father and the other co-owner of the property. The second defendant received S$12,000 from the plaintiff and was given a note written by the plaintiff agreeing to pay the second defendant S$50,000 on 24 July 1993 (the handwritten note). Later the same day, the second defendant attended at the plaintiff's office and was given a typewritten note signed by the plaintiff containing slightly different terms from that in the written offer (the typewritten note). The plaintiff claimed that he was initially appointed as solicitor for the defendants, being the vendors of the property, but had, on 25 October 1993, after accepting the offer to purchase, discharged himself as their solicitor upon learning that the first defendant had indicated his unwillingness to proceed with the sale. The defendants refused to proceed with the sale of the property, appointed another firm of solicitors and gave another party an option to purchase it. However, in November 1993, the plaintiff sent to the second defendant a draft of a written agreement which provided that in consideration of the second defendant agreeing to waive payment of the sum of S$50,000, the purchase price for the property was increased to S$1.25m. All the defendants later signed this agreement (the supplemental agreement). In December, the defendants gave a joint statutory declaration acknowledging the written offer to be binding and confirming that they had voluntarily entered into the transactions described in the written offer and the supplemental agreement. When the defendants then refused to proceed with the sale, the plaintiff commenced an action for specific performance. He claimed that he was granted and had exercised an option to purchase the property, which he alleged was contained in and evidenced by the written offer, the handwritten note and the typewritten note and that the terms of the agreement were later varied by the supplemental agreement. Alternatively, the plaintiff claimed that the supplemental agreement was a fresh agreement for the sale of the property. The defendants contended, inter alia, that the handwritten note and typewritten note did not contain the terms of an option to purchase, that these notes did not form part of such option by virtue of s 93 of the Evidence Act (Cap 97, 1990 Ed) and that the written offer was not binding as the first defendant had not consented to it. The defendants also alleged that the plaintiff had exercised undue influence in obtaining the signatures of the second and third defendants to the written offer and the signatures of all the defendants to the supplemental agreement or alternatively, there was a presumption of undue influence by virtue of the relationship of solicitor and client which the plaintiff had failed to rebut. The plaintiff denied any undue influence and alleged, in the alternative, that the sale of the property was subsequently affirmed.

Held, allowing the plaintiff's claim: (1) the written offer and the handwritten note, being contemporaneous documents, contained or evidenced the terms of an option to purchase the property for S$1.25m. However, the first defendant did not confer on the second defendant any authority to sign the written offer on his behalf nor did he hold the second defendant out as having any such authority and accordingly, the written offer was not binding on the first defendant. Similarly, the typewritten note was not binding as it was not given with the consent of any of the defendants and it was not contemporaneous with the written offer and the handwritten note; (2) the written offer was not binding on the first defendant when it was given to the plaintiff but, by the supplemental agreement, the first defendant had treated it as a written offer granted to him. The agreement for sale and purchase of the property for S$1.25m was, therefore, made when the written offer was accepted on 25 October 1993 and was later varied by the supplemental agreement; (3) even if the plaintiff had known that the second defendant was in financial difficulty and had said that once the second defendant became a bankrupt, it would be impossible for him to sell the property, that would not amount to undue influence. It was wrong to set aside transactions by reason only that the buyers - whether lawyers or not - had referred to the financial difficulties of the seller and to the seller's inability to sell should they become bankrupt; (4) no unfair advantage had been taken of the second defendant or of anything the plaintiff knew or of the position in which he was in relation to the second defendant and he had not obtained any unfair advantage by reason of such knowledge. Further, there had been no unconscientious use of any special capacity or opportunity that affected the second defendant's will or freedom of judgment. There was no actual undue influence by the plaintiff that induced the signing of the written offer by the second defendant nor was there any actual undue influence in respect of the third defendant; (5) on the evidence, the signatures of the defendants to the supplemental agreement were also not obtained by actual undue influence on the part of the plaintiff; (6) with respect to presumed undue influence, the first question was whether one person was in a position to exert influence over another. If not then undue influence could not be presumed. It was not sufficient merely to prove that one person was or had been the solicitor of the other. In such cases, the client must go on to prove that confidence or trust was reposed in the solicitor and that the solicitor was in a position to exert influence on the client in respect of the transaction impugned; (7) the second question was whether the exercise of undue influence was likely to have happened. When the transaction was explicable only on the basis that undue influence had been exercised to procure it, there would be good grounds for presuming that it resulted from the exercise of undue influence. If a gift was so large as not to be reasonably accounted for on the grounds of friendship, relationship, charity, or other ordinary motives on which ordinary men acted, there would be good grounds for such a presumption. If the transaction was disadvantageous to one party and the other was in a position to exert influence, this would be a relevant consideration; (8) on the evidence, no confidence or trust was reposed in the plaintiff and he was not in a position to exert any influence on any of the defendants in respect of the written offer or the supplemental agreement; (9) if the transaction was procured by undue influence whether actual or presumed, it was not void but only voidable, and on equitable grounds. Since the defendants had affirmed the transaction, the written offer and the supplemental agreement would not be set aside even if they were made as a result of any undue influence exerted by the plaintiff. Further, for the defence of undue influence to succeed, some of the statements in the statutory declaration would have had to be untrue. The conduct of the parties would then be seriously in question and this was a matter to be taken into consideration when the question was whether the court should come to their aid in the exercise of its equitable jurisdiction; (10) (per curiam) a transaction need not be shown to be manifestly disadvantageous to the person relying on undue influence, whether actual or presumed, for it to be set aside on the ground.

Khushvinder Singh Chopra v Mookka Pillai Rajagopal & Ors [1996] 2 SLR 379 High Court, Singapore (Lim Teong Qwee JC).

Tengku Abdullah ibni Sultan Abu Bakar & Ors v Mohd Latiff bin Shah Mohd & Ors and other appeals [1996] 2 MLJ 265 Court of Appeal, Kuala Lumpur (Gopal Sri Ram, Abdul Malek and Ahmad Fairuz JJCA).

The plaintiff was a purchaser of a property and sued for specific performance of an agreement of sale and purchase contained in and constituted by a memor-andum in writing by the first defendant. The registered proprietors were in fact the second and third defendants who are the son and daughter of the first defendant. The first defendant admitted that he signed the agreement but alleged that he did not give free consent as he was exposed to influence from the plaintiff who was his spiritual adviser. The second and third defendants took the position that they neither knew or approved of the agreement at the time of its execution by the first defendant nor did they subsequently ratify the same. According to the plaintiff, the first defendant suggested in 1964 to the plaintiff that she buys a house in the town area. He offered to sell her the house and she could pay whenever able. A price of $22,000 was mentioned and she accepted. Subsequently, she, together with DW2 (whom she later married), paid the first defendant a sum of $1,700 in the presence of the second and third defendants, and the first defendant acknowledged the same in his own handwriting. Numerous payments were then made by the plaintiff who moved into the house in May 1964, and each time the first defendant acknowledged the same. Sometime in 1972, the plaintiff wished to settle the balance and it was then that the plaintiff first discovered that the property was registered in the name of the second and third defendants. They refused to execute a transfer and the plaintiff consulted her solicitors who sent a formal demand in 1976. No satisfactory response was made and the plaintiff caused to be issued the writ in 1978. The first defendant alleged that the plaintiff urged him to persuade the second and third defendants to sell the property to her and if successful, he and his family would be blessed with good health and prosperity; if not, he would suffer dire consequences. The plaintiff paid him $1,700 and brought two exercise books to record the contents from a piece of paper written by the plaintiff's friend. Further, he alleged that the plaintiff was told by him that he was not the owner but the plaintiff threatened that if he did not persuade the second and third defendants to sell the property, he would be responsible for all dire con-sequences. Under these circumstances, he had no choice but to sign on the exercise book. This was not disclosed to his children. Subsequently, the first defendant pressed the plaintiff for further payments to which the plaintiff replied that she needed time to sell off the family estate. He further alleged that the plaintiff requested that the property be rented out to her.

Held, allowing the plaintiff's claim: (1) the defendants appear to be a closely knit family and completely devoted to each other and lived together for many years. They were the sort of family who would have confided in each other regarding any matter of importance and of common interest. To say that in signing the agreement, the first defendant did so without the authority express or implied of the second and third defendants is something which strains credibility to such an extent that such an assertion is false and untrue; (2) the first defendant's conduct was hardly that of a victim of the plaintiff's undue influence. He is an educated man and the agreement was in his clear and firm personal handwriting and is hardly consistent with the state of affairs as he alleged. Further, he took no steps to repudiate the agreement notwithstanding that the instalment payments continued for a very considerable period of time and if there was undue influence, such influence could not have persisted for so many years. There was also no allegation of undue influence by his solicitors when the plaintiff's solicitors called for a date for completion; (3) the plaintiff's evidence that all the defendants were present when the agreement was signed was accepted and thus it was binding upon the second and third defendants for it was signed by the first defendant as their duly authorized agent; (4) only in exceptional circumstances will the equitable remedy of setting aside a transaction on grounds of undue influence be granted. Courts are not inclined to intervene even if the bargain may appear harsh, unless it can also be demonstrated that the transaction was to the manifest disadvantage of the person subjected to the dominating influence; (5) and (d) that its exercise brought about the transaction. None of these conditions were satisfied by the defence; (6) to rely on undue influence, the party must show that (a) the other party had the capacity to influence him; (b) the influence was exercised; (c) its exercise was undue;in an action for specific performance of an agreement or for a declaration of title to land, it is essentially an action to recover land and for purposes of limitation, time runs from the date of any infringement or at least a clear and unequivocal threat to infringe that right. In this case, the cause of action accrued from the date of service (28 January 1972) of the letter by the second and third defendants' solicitors refusing the demand by the plaintiff calling for a transfer of the property. This refusal constituted evidence of the first clear unequivocal threat to infringe the plaintiff's title. As the writ was issued on 8 December 1978 and the period of limitation is 12 years by reason of s 9 of the Limitation Act, the action was commenced well within time.

Saw Gaik Beow v Cheong Yew Weng & Ors [1989] 3 MLJ 301 High Court, Penang (Edgar Joseph Jr J).

In 1973, Pek Boon Bok ('the father' or 'the deceased') died intestate leaving a substantial estate to be shared among his widow, Mdm Ow, and his 13 children, seven of whom were from his marriage with his first wife who pre-deceased him, and the other six of whom were the issue of his second marriage. Letters of administration to the deceased's estate were subsequently granted to Mdm Ow and the first defendant, the deceased's fourth son. Mdm Ow herself died in 1988. At that time the estate had not yet been wound up. The next year, the remaining and major asset of the estate was sold, and in 1990 the 13 siblings entered into a deed of family arrangement which dealt with their inheritance from the estate of their father. Now the plaintiffs, who are Mdm Ow's third and fourth children, seek to set aside that deed on the grounds that: (a) the first defendant, in breach of his fiduciary position, manipulated to deprive Mdm Ow's children of their full entitlement in their father's estate and place all their money completely in his hands and control; (b) the deed is detrimental to them and is an unconscionable document; and (c) alternatively, that they were persuaded to execute the deed by coercion or fraud or by the undue influence of the first defendant over them. The action was started against the first defendant as the only surviving administrator of the father's estate and against the second defendant as the executor of Mdm Ow's estate. In relation to the second defendant, the allegation was that he had condoned the first defendant's actions and/or had connived with the first defendant to cause loss to the estate of Mdm Ow and thereby to her heirs, her six children. The second defendant, a bankrupt, did not take an active part in the proceedings and by the time the hearing started before me, judgment had been obtained against him. The case therefore proceeded against the first defendant only. The stand taken by the first defendant was that the plaintiffs as well as all the other siblings signed the deed voluntarily with full knowledge and appreciation of its contents and the effects of the arrangement. He denies that he was in breach of any duty or that he had persuaded the plaintiffs to sign the deed by the exercise of coercion, fraud or undue influence. He also denies that the deed is unconscionable. Further, he asserted that the plaintiffs were not entitled to rescind or set aside the deed because they have affirmed or acquiesced in it, they do not come to court with clean hands and, finally, because they were unable to put the parties who entered into the deed back into their original positions.

Held, setting aside the arrangement: (1) a court faced with the issue as to whether a particular family arrangement should be upheld or set aside has to be aware that family arrangements are very special creatures which have to be treated rather differently from the commercial transactions with which it is more often concerned. The law relating to family arrangements makes it clear that when dealing with an agreement between members of a family which is intended to be generally and reasonably for the benefit of the family, the court has to consider what, in the broadest view of the matter is most in the interest of the family. In doing so, it has regard to considerations such as whether the arrangement has the result of avoiding disputes in the family, or preserves the family's honour, or allows family property to continue in the family; (2) in this instance, the last consideration is clearly apt since it is clear that one of the first defendant's intentions when he proposed and pushed through the arrangement was to ensure that the siblings' inheritance from their father was not divided up and, perhaps, dissipated, but continued to work for all of them though in a different form; (3) various factors can affect the validity of a family arrangement. Adequacy of consideration is not usually an issue since in the nature of such an arrangement founded on sentiment rather than commerce, only part of the consideration is value, the other part being love and affection. If, however, the inadequacy of the consideration is so gross as to lead the court to the conclusion that a party to the arrangement either did not understand what he was doing or was the victim of some imposition, the court can set aside the arrangement; (4) what is most important in considering the validity of such an arrangement is first whether it was founded in an honest disclosure of material facts and, secondly, whether any undue influence was brought to bear on any party to the arrangement; (5) as an administrator of the estate and one who was involved in its affairs from the very beginning, Lam Kong had a duty to draw up full and complete accounts of the estate. In these accounts he would have had to show, to the best of his ability, the amounts which Mdm Ow had received from the estate and the amounts which she had paid on the estate's behalf. He owed this duty as much to his own full siblings as to Mdm Ow's children. Instead, not only did he present accounts which left out the expenses paid by Mdm Ow (an omission that is all the more glaring because of the care he took to itemize and recover the expenses he himself had incurred for the estate), but he went further to emphasize to all parties the amount which Mdm Ow had supposedly taken for her own benefit from the date of her husband's death; (6) it appeared that not only did the first defendant fail to disclose the true state of the accounts to Mdm Ow's children but that this non-disclosure was fully intentional. At all times he was aware of the importance of the accounts and he lost no opportunity to have his siblings acknowledge that they had examined and accepted such accounts. He also lost no opportunity to reinforce the impression which the siblings had that Mdm Ow had used the money she collected from the estate for her own benefit. He did this despite knowing full well that she had made substantial payments on the estate's behalf from the time of the deceased's death. The first defendant must have been aware that if the true position had been disclosed to Mdm Ow's children, he would have faced a lot more opposition to his proposal as to what they should accept as their share. Further, even if the plaintiffs had taken the opportunity to examine the accounts of the estate which the first defendant had purported to extend to them, they would not have been able to ascertain the true state of affairs; (7) the first defendant's concealment of the true extent of Mdm Ow's involvement in the expenses of the estate and his failure to draw up proper accounts constituted material non-disclosures in the context of his proposal that the family arrangement be accepted. On the basis of non-disclosure alone, the deed should be set aside as the plaintiffs did not have the information which they needed to come to a considered decision on the arrangement; (8) there are two distinct categories of cases in which the courts will set aside a transaction on the basis of a plea of undue influence. The first category, the 'actual undue influence' category, comprises those cases where the plea is upheld only if the court is satisfied that such influence has been affirmatively proved on the evidence. The second category, the 'presumed undue influence' category, comprises those cases in which the relationship between the parties will lead the court to presume that undue influence has been exerted unless evidence is adduced proving the contrary. A plaintiff pleading undue influence can rely on either actual or presumed undue influence or both but there are difftegory; (9) where the court is being invited to draw a presumption of undue influence, the plaintiff must show that the parties had a particular relationship, for example they were father and child or solicitor and client, which enabled one of them to influence the decisions of the other. In addition, the complainant must prove the wrongfulness of the transaction by showing that it constituted an advantage taken of the person subject to the influence which failing proof to the contrary was explicable only on the basis that undue influence had been exercised to procure it. Accordingly, in order to succeed on a plea of presumed undue influence, it must be shown that the resulting transaction was manifestly disadvantageous to the person subject to the influence; (10) there was for some time considerable doubt whether a plaintiff who had satisfied the court that he or she entered into a transaction because actual undue influence had been exerted over him or her had, in addition, to prove that this transaction was manifestly disadvantageous. The first defendant was substantially older than either plaintiff. He was more educated than they were and considerably more experienced and successful in business. He had been handling the affairs of the estate since 1977, had dealt with the various problems that had arisen and had also been active in making proposals for the development of the property and the use of the siblings' inheritance. The plaintiffs must have regarded him as knowing all that there was to know about the affairs of the estate. As such he was in a position in which he could exercise influence over them. As far as the exercise of the influence was concerned, the first defendant did exercise his influence as administrator of the estate. It was clear from that that the first defendant put pressure on the second plaintiff to sign the deed. He knew that she was concerned about the second defendant and that she was keen also to see some money in her own hands. He therefore promised to buy the second defendant's and her shares if she signed the deed. On the basis of the foregoing facts, the exercise of the influence was undue and the second plaintiff entered into the transaction as a result of it; (11) prima facie, therefore, the deed constituted a wrongful advantage taken by the first defendant over the plaintiffs. The burden of rebutting the presumption lies on the first defendant. He had not discharged this burden.

Pek Nam Kee & Anor v Peh Lam Kong & Anor Suit No 20 of 1991 High Court, Singapore (Judith Prakash JC).

Khushvinder Singh Chopra v Mookka Pillai Rajagopal & Ors [1996] 2 SLR 379 High Court, Singapore (Lim Teong Qwee JC).

Lim Geok Hian v Lim Guan Chin [1994] 1 SLR 203 High Court, Singapore (LP Thean J).

Fong Whye Koon v Chan Ah Thong [1996] 2 SLR 706 High Court, Singapore (Warren LH Khoo J).

Fong Whye Koon v Chan Ah Thong [1996] 2 SLR 706 High Court, Singapore (Warren LH Khoo J).

This was an appeal by D1 and D2 against the decision of the assistant registrar in dismissing their application to set aside a judgment given against them in default of appearance. D1 and D2 were directors of a defunct company. They executed guarantees in favour of P who had extended finance to their company. They claimed, inter alia, (1) that the guarantees was obtained from them under the undue influence of one H, (2) that they did not know the contents and nature of the document which they signed, (3) that they did not receive any independent legal advice, (4) that they did not exercise any powers and duties of a director but merely did whatever H asked of them.

Held, dismissing the appeal: (1) the court's intervention is intended on the grounds of public policy to protect persons from being deprived of their property by trickery, coercion, fraud or other wrongdoings; (2) the presumption of undue influence did not apply between employer and employee; (3) it appeared to the court that the signing of the guarantees by D1 and D2 reflects an act of abiding faith in the ability of H rather than coercion; (4) the defence of non est factum could only be relied on if they exercised reasonable care. On the facts, D1 and D2 did not exercise such care; (5) D1 and D2 had not shown they had any reasonable prospect of success in the defence. The conduct of D1 and D2 in ignoring the service of process when they allowed judgment to be entered in default fortified the court's view that their conduct was deliberate.

Hong Leong Finance Ltd v Tay Keow Neo & Anor [1992] 1 SLR 205 High Court, Singapore (Rubin JC).

The senior assistant registrar had earlier granted P liberty to enter final judgment against D for the sum in question together with interest and costs. D had failed to pay any instalment due under each of the three agreements entered into with P. D had appealed to the High Court against the decision of the registrar. D contended that P's statement of claim did not disclose any cause of action. It was also contended that since P's chairman, X, was the uncle of D, the three agreements were procured through the undue influence of P.

Held, dismissing the appeal: (1) in the instant case, having regard to the pleadings of P, the court ruled that P's statement of claim had disclosed a cause of action against D; (2) having regard to s 16 of the Contracts Act 1950, there was no evidence to show that X was in a position to dominate the will of D. There was no evidence that he had obtained an unfair advantage over D. There was also no evidence that X had real or apparent authority over D. On the other hand, the three agreements entered into between the parties were advantageous to D. In the result, D by signing the agreements were not induced by undue influence by P or X; (3) as for the allegation of misrepresentation, the court ruled that there was no evidence of misrepresentation as required by s 18 of the Contracts Act 1950; (4) as D had no defence at all, the decision of the registrar was upheld by the court.

Kee Hup Leasing Sdn Bhd v Ng Kim Hoy & Anor Suit No C1-23-3746-1986 High Court, Kuala Lumpur (Zakaria Yatim J).

Teck Guan Trading Sdn Bhd v Hydrotek Engineering (S) Sdn Bhd & Ors [1996] 4 MLJ 331 High Court, Kota Kinabalu (Ian Chin J).

The appellants, who were twin brothers, inherited 3,835 acres of land in Karambunai, Sabah ('the land') from their mother and grandmother when they were still infants. A restriction existed in the title of the land, in that a copy of the Land Regulations of British North Borneo 1894 ('the 1894 Regulations') containing a clause ('cl 20) which forbade any dealing on the land with non-natives, was attached to the title. However, when the appellants reached 16 years of age in 1982, they signed a memorandum of intent ('the memorandum') with the first respondent to grant it a 99-year lease over 1,500 acres of the land. The appellants' father and Pengiran Othman, ie their relative and the then Minister of Federal Territory, acted as their legal representatives. In October 1982, the third respondent, who was the managing director of the first and third respondents company, had paid various sums to the appellants in compliance with the memorandum, including the estate duty leviable on the land which had not been settled by the appellants. In 1984, the appellants who had attained 18 years of age excecuted an agreement ('the first agreement') which contained almost similar terms as contained in the memorandum. Being aware that subleasing was prohibited by cl 20 of the 1894 Regulations, the appellant applied to amend the title by deleting cl 20 of the annexure. On 3 December 1984, the pengarah Tanah dan Ukur, Sabah ('the fourth respondent') deleted cl 20 and registered the amendment. In the same year, the appellants executed a second agreement with the first respondent to replace the first agreement. Under the second agreement, the rental to be paid to the appellants for the sublease was fixed at RM22.5m for the duration of the lease period. It was to be settled by the first respondent by alloting 9m shares of its company to the appellants. This allotment, however, never took place, but instead a purported transfer of the shares was made to the appellants who, in turn, executed a trust deed with the second respondent wherein the appellants acknowledged that they held the shares as trustees for the second respondent. It was agreed that the balance of the rental amounting to RM13.5m was to be settled by the second respondent through the creation of another trust, and by instalments on terms and conditions specifically set out in the second agreement. Between 1987 and 1991, substantial sums of money were advanced by the third respondent to the appellants for their education and maintenance, and they were set off as rental due under the sublease. In 1991, the appellants entered into another agreement with the first respondent. This time, 600 acres of land was sold, and another 1,781 acres was leased for 99 years to the first respondent. The consideration of RM4.8m was fully paid by the first respondent. As at April 1994, the appellants were only beneficially entitled to 500 acres, the remaining areas having either been sold or subleased to the first respondent. The appellants contended that they only became aware of the implications of the agreements that they had executed when the first respondent sought a declaration from the court that the bulk of the land had become its property. The appellants sought a rescission of all the agreements and the trust deed, and a declaration that they were all void and invalid on the grounds: (i) that the appellants had been unduly influenced by the third respondent to enter into the various agreements with the first respondent without consideration; and (ii) that the deletion of cl 20 of the 1894 Regulations was ultra vires the powers of the fourth respondent. They also sought an order to expunge the memoranda of sublease and transfer from the register, and to reinstate cl 20. The High Court allowed the respondent's application to strike out the appellants' action under O 18 r 19 of the Rules of the High Court 1980 ('the RHC') on the grounds that the appellants' statement of claim disclosed no reasonable cause of action, was frivolous, vexatious, and an abuse of the process of court. The appellants appealed.

Held, dismissing the appeal: (1) the discretionary power to dismiss an action summarily under O 18 r 19 of the RHC and under the inherent jurisdiction of the court is a drastic power which should only be exercised in plain and obvious cases. When a case is argued on the affidavit evidence available, it must become plain and obvious that the case has no chance of success; (2) when a question of law becomes an issue, this in itself will not prevent the court from granting the application, for as long as the court is satisfied that the issue of law is unarguable and unsustainable, it may proceed to determine that question. Where the affidavit evidence discloses a dispute of facts, such facts must be analysed, and if they are found to be inconsistent with the undisputed contemporary documents or inherently improbable in themselves, the court is entitled to reject those facts and proceed upon the undisputed contemporaneous documentary evidence; (3) the doctrine of undue influence was to save persons from being forced, tricked or misled in anyway by others into parting with their property. In the light of the documentary evidence, it could not be said that the appellants had been denied of any independent legal advice when they executed the various agreements. They executed the agreements freely. They had not been rushed into executing the agreements within a limited period of time; (4) the memorandum was nothing more than an expression of the intentions of the parties to enter into a contractual relationship. From the outset, the parties were on equal footing and there was therefore no question of one party dominating the will of the other. The fact that the land was burdened with an estate duty debt which was eventually settled by the third respondent did not characterize him as the superior person with a dominating will. Furthermore, with each agreement executed, the appellants had been compensated either in cash or in kind, ie good consideration had been given; (5) the restriction placed by cl 20 of the 1894 Regulations was not incorporated as a numbered condition in the title itself, but that the whole of the 1894 Regulations was attached to the title. Since the 1894 Regulations had been repealed, the reference to cl 20 in the title could only mean that it was intended to be just another condition to the title. That being so, it could be deleted by the consent of the parties to the lease who were the successors in title, and such consent empowered the fourth respondent to effect the deletion of cl 20. Accordingly, the respondents had no case to answer.

Pengiran Othman Shah bin Pengiran Mohd Yusoff & Anor v Karambunai Resorts Sdn Bhd (formerly known as Lipkland (Sabah) Sdn Bhd) & Ors [1996] 1 MLJ 309 Court of Appeal, Kuala Lumpur (Gopal Sri Ram, NH Chan and Siti Norma Yaakob JJCA).

The defendants were the trustees of Sin Sze Si Sze Ya Temple. In January 1945, an agreement was entered into between the plaintiff and the then surviving trustees of the temple, for the sale of a shophouse belonging to the temple for which the purchase price was fixed and had been paid. The plaintiff, subsequent to the agreement, was permitted to collect the rent from the tenant of the shophouse and did so until 1 December 1950, when as a result of a letter, the tenant paid rent to the trustees which he had previously done before the date of the agreement. However, under the trust deed of the temple, the then surviving trustees were unable to sell the property in dispute even with leave of the court.

Held: (1) by s 20(e) of the Specific Relief (Malay States) Ordinance 1950, the agreement was unenforceable and the defendants must therefore repay the plaintiff the amount which the then surviving trustees received from him; (2) the plaintiff is accountable to the defendants for the rents and profits of the shophouse for the period from January 1945 to 1 December 1950.

Chung Peng Chee v Cho Yew Fai & Ors [1954] MLJ 100 High Court, Kuala Lumpur (Wilson J).

=This was an appeal by the plaintiff against the decision of the assistant registrar who (a) struck out the plaintiff's statement of claim and dismissed the plaintiff's action with costs and (b) made no orders in respect of the relief sought by the plaintiff under s 17(2) of the Business Registration Act (Cap 32) ('the Act') and the application to amend the statement of claim. The facts, briefly, were as follows. The managing director of the defendants, one L, and the plaintiff were father and son respectively. The plaintiff had registered a sole proprietorship known as 'B Company'. B Company was terminated on 11 January 1985. Some arrangements were made for the defendant company to purchase some of the goods from the plaintiff. Between 5 November 1986 and 18 December 1987, the plaintiffs issued a large number of invoices addressed to the defendants under the printed name of B company for the sale of the goods. The plaintiff sued the defendants for the sum of S$125,023.26, being the balance of the price of the goods sold and delivered to them. The defendants argued that between 5 November 1986 and 18 December 1987, the plaintiff was trading without a valid Certificate of Registration and any contract made with the plaintiff was illegal, void and unenforceable under s 17(1) of the Act. The question before the court was whether the court had the jurisdiction to grant the relief under s 17(2) of the Act and if so, whether in the circumstances of the case, there was sufficient grounds for the exercise of the court's discretion to grant the relief to the plaintiff under s 17(2) of the Act in respect of the disability.

Held, allowing the appeal: (1) the plaintiff was entitled either to have the relief granted to or denied him, and a 'No Order' in the circumstances was inappropriate; (2) in the light of the authorities and having regard to the circumstances of this case, there were sufficient reasons for the court to exercise its discretion and grant the plaintiff relief under s 17(2) as against the disability under s 17(1) of the Act; (3) the court is clothed with jurisdiction by s 17(2) to remove the disability imposed by s 17(1) both before and after the commencement of an action; (4) the assistant registrar's decision to strike out the statement of claim and dismiss the action is to be set aside; (5) the plaintiff is to be allowed to amend the statement of claim to clarify whatever the dealings were between the plaintiff and the defendants to enable the substantive issues to be resolved at the trial.

Lim Feng Chieh (formerly t/a Intra-Smit Agencies) v GS Auto Supply Pte Ltd [1993] 2 SLR 489 High Court, Singapore (Amarjeet JC).

In this case, the appellants owned a piece of land on which were six units of bungalows. They entered into an agreement whereby the respondents agreed to buy and the appellants agreed to sell the property. Payment was to be made in two lump sums. The first payment of $190,000 was paid on the date of execution and the balance was to be paid on or before 31 November 1983. Vacant possession of the bungalows was to be given on the execution of the memorandum of transfer on 31 November 1983. However, the appellants gave vacant possession of the bungalows to the respondents before the execution of the memorandum of transfer. The agreement provided that in the event of the agreement becoming impossible of performance due to acts of the government, the appellants shall on demand by the respondents refund all the moneys received under the agreement. The land and bungalows were acquired by the government and the respondents gave notice of the revocation of the agreement and requested the refund of $190,000. In their defence, the appellants admitted the respondents' claim but claimed a set-off for rentals received by the respondents. It appeared that the respondents had allowed Sacon Construction Sdn Bhd the use of the bungalows without payment and the latter had entered into an arrangement with ED Zublin AG for the use of the bungalows. The respondents applied to strike out the counterclaim and for an order for summary judgment. The learned trial judge ordered the appellants' counterclaim to be struck out and entered judgment for the respondents. The appellants appealed. The appellants' claim had been based on the equitable principles of unjust enrichment and constructive trust. However, on appeal, the appellants abandoned their ground of constructive trust.

Held, dismissing the appeal: (1) the learned judge was correct in stating that unjust enrichment was irrelevant in the light of the facts of the case, as the claim about the respondents' having to account to the appellants for having received the rents or not having received it, had not been provided for under the agreement; (2) in any case the question of unjust enrichment had not been properly pleaded in this case.

Brown & Root (Labuan) Sdn Bhd v Pada Sdn Bhd [1987] 1 MLJ 239 Supreme Court, Kota Kinabalu (Lee Hun Hoe CJ (Borneo).

The plaintiffs' claim against the defendants was for damages arising out of the defendants' breach of contract in failing to deliver 5,500 metric tons of toluene. The plaintiffs were buyers of bulk chemicals, including toluene. The defendants were importers and distributors of chemicals. On 5 January 1994, the parties concluded a contract for the sale by the defendants of 5,500 metric tons of toluene to the plaintiffs. The essential terms of the contract were that the defendants were to ship the toluene in three different lots to three different ports, viz 1,00 metric tons for Shekou, 1,500 metric tons for Kuantan and 3,00 metric tons for Merak. The agreed sale price was US$248 per metric ton CFR. Shipment was to be not later than 15 February 1994 from a Korean port and payment was to be by irrevocable letter of credit at sight in favour of the defendants. The shipment date in the contract was, however, not adhered to due to storage problems and the parties held numerous discussions by correspondence and orally from 5 January 1994 through to February 1994 to agree to a mutually acceptable date. On 19 February 1994, the defendants sought to increase the agreed price of US$248 per metric ton by the imposition of a penalty charge of US$20 per metric ton, ostensibly for late delivery. The plaintiffs were not prepared to accept the additional charge and the defendants then purported to rescind the contract and refused delivery. It was the plaintiffs' case that, although the contract provided for shipment to be not later than 15 February 1994, this term was varied by agreement on 1 February 1994 when the defendants offered unconditionally, following the plaintiffs' request, to ship the goods by end February 1994 instead of by 15 February 1994, and when the plaintiffs accepted this offer. The shipment date was further varied, again unconditionally, by agreement of the parties when the defendants offered in a fax sent by them to the plaintiffs on 1 February 1994 to ship the goods by the second half of March 1994 which offer the plaintiffs accepted on 18 March 1994. Accordingly, when the defendants attempted on 19 February 1994 to impose the penalty charge, it was the plaintiffs' case that they did not have to pay the charge and the defendants' unjustified refusal thereafter to perform the contract resulted in the plaintiffs having to buy the goods from other sources at a higher rate than the contracted rate of US$248 per metric ton, thereby suffering damages. The defendants claimed that there was no contract concluded between the parties as the contract had been mutually rescinded by the parties. Alternatively, the defendants claimed that if there was a subsisting contract, it was subject to a penalty charge which was binding on the plaintiffs. The plaintiffs in delaying shipment and refusing to accept the penalty charge were in repudiatory breach of contract and the defendants had accepted the breach by cancelling the contract. The defendants further claimed that in any event the plaintiffs had failed to mitigate their losses.

Held, allowing the plaintiffs' claim: (1) the defendants had no basis in law or on the evidence for refusing to deliver the toluene they had contracted to sell to the plaintiffs. The contract remained valid. All that happened was that its shipment date was varied by agreement of the parties initially to a shipment by end February 1994 and later to a shipment or loading by the second half of March 1994 and with no penalty charge payable. (2) in deciding whether to rescind or affirm a contract the innocent party need have no regard to considerations of mitigation of loss. Having made such an election, he would be able to recover such loss as was unavailable following the election and that in some, perhaps exceptional circumstances it may be reasonable at a stage after the decision to rescind or affirm the contract, to adopt a course of action which would nullify the effect of that decision. A plaintiff was under no duty to mitigate his loss. He was completely free to act as he judged to be in his best interest; (3) in this case, after the defendants repudiated the contract, the plaintiffs' solicitors wrote to the defendants giving them until 10am on 3 March 1994 to confirm that they would perform the contract. The letter made it clear that the plaintiffs had received an offer from an alternative supplier to supply the substitute goods at US$289.50. The defendants responded stating that the plaintiffs' other purchases were of no concern to them. Thus, it was reasonable at the time to believe that the defendants were unlikely to be ready or willing to supply toluene to the plaintiffs at US$268 per metric ton because the effect of the exchange of the correspondence between the parties following the defendants' cancellation of the contract was in content and tone effectively to say to the plaintiffs the defendants would have nothing more to do with the plaintiffs and because the defendants had not offered in response to the plaintiffs' fax of 2 March 1994 their toluene cargo at US$268 per metric ton.

Thiam Joo Pte Ltd v Lucky-Goldstar Trading (Singapore) Pte Ltd [1997] 2 SLR 269 High Court, Singapore (Christopher Lau JC).

The plaintiff in this case claimed against the defendant damages for breach of contract to purchase wood chips. By an agreement of 17 January 1974 entered between the plaintiff and the defendant, for five years from the date of the said agreement, the defendant agreed to purchase from the plaintiff all wood chips produced by the plaintiff on terms set out in the agreement with an option to renew for a further period of five years on the same terms and conditions by giving two months' notice to the other party. The plaintiff claimed that the price of wood chips was $18 per long ton (LT) of 2,240 lbs and it was increased by mutual agreement. The plaintiff undertook to produce not less than 24,000 LT per year. In May 1974, the defendant requested the plaintiff to increase production to 2,800 tons per month and the plaintiff agreed. The plaintiff alleged that it bought machinery and took steps to increase production capacity to 3,000 tons per month from April 1975. In March 1975, the defendant countermanded the request to increase production and requested the plaintiff to produce only 500 tons per month from 1 April 1975. The plaintiff did not accept the said request. The plaintiff alleged that instead of taking delivery of 2,800 LT per month the defendant took delivery from April 1975 of a much lesser quantity. By a letter of 27 August 1975, the defendant sought to repudiate the agreement and took no delivery as from that date. The plaintiff claimed loss of profit from April to August 1975 and estimated loss from September 1975 to December 1983. The defendant did not dispute the agreement but contended that the plaintiff had misrepresented to the defendant all material particulars relating to cost factors as well as the gain factor. It was argued that subsequent to the said agreement the parties did not adhere to the terms and thereby released each other from liability under the agreement. Although the plaintiff was to supply the defendant a minimum of 2,000 LT the plaintiff in fact supplied a fluctuating quantity per month and less than the stipulated minimum of 2,000 LT per month and at various prices per LT, not $18 per LT. The main issue of law was whether the terms of the agreement had been so altered, varied and waived by mutual consent and conduct of the parties that the defendant was no longer liable under the agreement.

Held: (1) partial rescission did not completely destroy the contractual relation between the parties. It merely modified that relationship by cutting out part of the rights and obligations involved therein with or without the substitution of new rights and obligations in their place; (2) in the present case the parties had in so far as the price increases were concerned varied that part of the agreement and had mutually agreed to new terms. In regard to additional tonnage to be produced new terms were added without varying that part of the agreement where the defendant, inter alia, agreed to purchase wood chips of not less than 24,000 tons per annum; (3) the defendant's contention that a new contract had been substituted had no merit whatsoever. The defendant had committed a breach of the agreement and must therefore bear the damages arising from their failure to perform the agreement; (4) in cases of breach of contract the aggrieved party was only entitled to recover such part of the loss actually resulting as was at the time of the contract reasonably foreseeable as liable to result from the breach; (5) in order to determine whether or not the plaintiff was entitled to recover damages during the renewal period it was open to the court to consider, first, the nature and effect of the plaintiff's right to renew, and secondly, the loss of profit, if any, recoverable by the plaintiff; (6) in the light of the agreement and in the absence of any subsequent agreement concerning the renewal as and when the variations were made to the agreement it was no longer possible for this court to conclude that it was within the contemplation of the parties that the right to renew on the same terms and conditions in the agreement must necessarily include the right to renew on terms and conditions different from those contained in the agreement; (7) the actual loss liable to result from the breach of the agreement by the defendant as was at the time of the contract reasonably foreseeable must strictly arise from the defendant's failure to perform the agreement then subsisting between the parties and not for loss anticipated to arise during the currency of some future agreement. Therefore the plaintiff was not entitled to recover damages for anticipated loss of profit during the renewal period.

Kepong Wood Products Co Sdn Bhd v Daishowa (M) Wood Products Sdn Bhd [1979] 1 MLJ 195 High Court, Kuala Lumpur (Abdul Hamid J).

The respondents were a company engaged in offering projects for the setting up of oil rigs. By a written agency agreement dated 16 June 1989 (the agency agreement), the appellants were appointed as the respondents' nonexclusive agents to market the respondents' projects in the People's Republic of China. It was provided in the agency agreement, inter alia, that commission was payable by the respondents for services performed by the appellants, such amount to be agreed in writing, on a case by case basis. On 22 September 1989, the parties entered into a written agreement (the project agreement) with respect to a specific project known as the Weizhou 114 project. The project agreement provided that the respondents were to pay the appellants a commission upon successful execution of the project in accordance with the terms in the agency agreement, such rate of commission to be calculated in accordance with a specified formula and that the respondents shall pay the appellant 20% of the agreed commission, 30 days after being awarded the project. The appellants later offered to reduce the percentage of commission payable should the respondents reduce their quoted price for the project agreement. On 27 February 1990, the respondents signed two agreements with the China National Offshore Oil Corp (CNOC), in which the respondents agreed to take on the obligation of providing funds to prepay all the costs necessary for the Weizhou 114 project, and CNOC were to subsequently repay the respondents out of the income from crude oil sales under the terms of the two contracts. The appellants felt that the signing of the two contracts entitled them to their commission and sought payment of it. At a meeting with the respondents on 5 March 1990, a fixed commission of US$750,000 for the project was proposed. In a fax to the respondents the next day, the appellants communicated their acceptance of this proposal and sought the remittance of 20% of the commission, amounting to US$150,000. This commission was, in fact, at a reduced rate of 0.75%, the specified rate in the project agreement being 1.25%. On 7 April 1990, the respondents confirmed the amount but sought to postpone payment. Subsequently, on the respondents failing to obtain the necessary financing for the project, CNOC terminated the two contracts. The appellants then brought this action against the respondents for the payment of US$150,000. The respondents' defence was that commission was only payable when they managed to obtain financing for the project and not before, arguing, inter alia, that the project was never awarded to them as CNOC only signed the contract to facilitate the respondents' efforts to obtain financing for the project, and that the project would be awarded to them only if they were successful in obtaining the necessary financing. In the court below, the learned judicial commissioner treated the appellants' reliance on the dealings between the parties in early March 1990 as an assertion of a separate and distinct contract to pay US$150,000 commission and not as an assertion of a variation to the terms of the existing written contracts. He held that this agreement was lacking in certainty and in consideration. He also held that the project had never actually been awarded to the respondents, as he found that the respondents were not placed in a position so as to be able to work on the project. Further, the learned judicial commissioner also found that there was an inconsistency between the appellant's pleadings and their case at trial, in the sense that it was pleaded that the project was only procured in April or May 1990, whereas their case proceeded on the basis that the project was awarded to the respondents on the signing of the two contracts on 27 February 1990.

Held, allowing the appeal: (1) appellate courts are exceedingly slow to overturn findings of fact based on evidence given by witnesses which the trial judge had the advantage of hearing firsthand but this reluctance is not quite so pronounced when the findings of fact are actually inferences made from primary facts which are not in dispute. The learned judicial commissioner's findings that there was no certainty as to when the commission was to become payable and that no commission was payable until the financial package was finalized, fell into the latter category. It was far from clear that the letters suggested that the commission would only become payable if the financial package was finalized. At the same time, the respondents never pleaded that the parties had agreed to the commission being conditional upon the financial package being arranged. It was not open to the learned judicial commissioner to make this finding of fact in the absence of an amendment to the pleadings; (2) the reduction of commission from 1.25% of the project value to only 0.75% constituted consideration from the appellants. It was the respondents who did not appear to have given any consideration for the variation. The learned judicial commissioner also erred in finding that the appellants had not pleaded any consideration as the statement of claim had sufficiently set out the appellants' allegation of fact that the quantum of the commission had been varied by agreement from that provided under the project agreement to US$750,000. Although the appellants did not then go on to explicitly characterize this as consideration for the variation, it was clear that this was not necessary. Material facts must be pleaded but the legal conclusions to be drawn from them need not be; (3) the oral agreement between the parties was a variation of the terms of the project agreement, ie the amount and availability of commission, and not a separate and distinct agreement. The reduction in the quantum of commission did not affect the question of when the commission was to be paid as this was governed by the other terms of the project agreement left untouched by the subsequent oral variation. Under the project agreement, the appellant was entitled to 20% of the agreed commission, payable 30 days after the award of the project, and there was therefore no uncertainty about when the US$750,000 in commission was to be paid; (4) the signing of the two contracts on 27 February 1990, prima facie, constituted an award of the project in question and 20% of the US$750,000 became due and payable 30 days thereafter. There was no evidence to support the respondents' contention that the project would only have been awarded on the respondents' successfully obtaining the requisite financing. The respondents had clearly entered into binding contracts with CNOC especially as CNOC had considered the respondents' failure to arrange financing as a breach of contract and not a failure of a condition precedent to the award of the project when they terminated the contracts; (5) even if 'award' meant that the respondents were to be placed in a position to be able to work on the project, it must be that everything had to be done by the party awarding the project to enable the respondents to work on the project. Here, CNOC had to be taken to have awarded the project to the respondents as they had done all that it could to enable the respondents to start work. Although the financing never came through, that was not CNOC's responsibility; (6) the learned judicial commissioner erred in finding that the appellants' pleadings did not accord with the appellants' contention at trial that the project was awarded on 27 February 1990. The appellants had clearly pleaded that the payment was due in or about the month of April or May 1990, this being 30 days after the date of award and that isolated the date on which the project was awarded sufficiently close to 27 February 1990.

MK (Project Management) Ltd v Baker Marine Energy Pte Ltd [1995] 1 SLR 36 Court of Appeal, Singapore (Karthigesu and LP Thean JJA and Goh Joon Seng J).

Chin Shoo Cheen Steven & Anor v Ocean Investments Pte Ltd & Ors Suit No 1137 of 1990 High Court, Singapore (Warren LH Khoo J).

The appellants entered into a shipbuilding contract with Argos whereby the latter undertook to build and deliver to the appellants a vessel at the price of US$7,460,000 payable by instalments. Two instalments of US$373,000 each were paid by the appellants to Argos. But Argos was unable to proceed further with the construction. This led to a novation agreement dated 7 March 1992 being entered into between the appellants, Argos, the respondents' parent company, UDL Holdings, and Argos' parent company, Chung Wah. This novation agreement provided that the original shipbuilding contract be undertaken by the respondents. A formal deed of novation was made with the respondents on 12 March 1992 whereby the respondents assumed all the liabilities and obligations of Argos under the original contract. Argos was also concurrently released from all liabilities thereunder. Pursuant to the novation agreement, the appellants made some instalment payments to the respondents. Clause 7 of the novation agreement provided: 'Energy shall establish a revolving letter of credit of up to the limit of É S$8m in favour of UDL or the assignee according to the terms of purchase orders issued by UDL or the assignee for the purchase of material and equipment required for the completion of the vesselÉ If this letter of credit is not established within 60 days of the execution of the agreement, the contract shall become null and void.' The appellants and respondents subsequently entered into negotiations to substitute a standby letter of credit for the revolving letter of credit as provided in cl 7 of the novation agreement. The negotiations were not completely followed through. The respondents then terminated the contract on 15 May 1992, on the basis that by cl 7, the appellants were required to establish the (revolving or standby) letter of credit by 6 May 1992 (60 days after 7 March 1992), but they did not do so. The appellants sued the respondents for breach of contract and delivery of the hull, material and equipment. The respondents counterclaimed a declaration that the contract was null and void and damages for breach of contract. The High Court dismissed the claim and allowed the counterclaim. The appellants appealed. The issues on appeal were primarily: first, whether there was a concluded agreement to amend cl 7 of the novation agreement by substituting a standby letter of credit for a revolving letter of credit; secondly, whether the appellants were entitled to an extension of time to fulfil their obligation (original or amended) under cl 7; thirdly, whether the respondents were in breach of contract when they gave notice on 15 May 1992 to terminate the original contract; and whether the learned trial judge erred in failing to give credit to the appellants for the moneys paid to Argos.

Held, allowing the appeal in part: (1) the appellants and the respondents had reached a concluded agreement to vary cl 7 of the novation agreement by substituting a standby letter of credit to be furnished by the appellants' bank in favour of the respondents' bank for the revolving letter of credit as provided in cl 7; (2) but the obligation of the appellants under cl 7 to obtain and procure the issue of such credit within the time therein stated remained. The appellants had not complied with such obligations and were in breach; (3) the court would not imply a term into the contract to provide for an extension of time. A term so implied must be a necessary term, regardless of whether the 'business efficacy test' or the 'officious bystander test' was adopted; (4) such an implication was not necessary because the parties had, under cl 7 of the novation agreement, expressly provided for a time mechanism to operate. Also, the parties must have, when negotiating the variation of cl 7, borne in mind the time frame provided in cl 7, and would have negotiated for a time extension if they had found the time remaining available too short; (5) the appellants would not be entitled to an extension of time under the doctrine of equitable estoppel because there was no evidence that the negotiations for the substitution were undertaken with the common understanding that the time prescribed in cl 7 would be suspended or would not be insisted upon strictly. The factual situation could not raise such an estoppel against the respondents; (6) the respondents became a party to the original shipbuilding contract and must give credit to the payments made by the appellants to Argos (together with the sums paid by the appellants to the respondents). These sums would go towards the final assessment; (7) the appellants were not entitled to recover the amounts paid to the respondents because there was no total failure of consideration: the work the respondents performed on the vessel provided consideration for the instalment which the appellants as the buyer of the ship had to pay, and for which they remained liable even though the respondents had terminated the contract.

Energy Shipping Co Ltd v UDL Shipping (Singapore) Pte Ltd [1995] 3 SLR 25 Court of Appeal, Singapore (Yong Pung How CJ, Karthigesu and LP Thean JJA).

By an agreement dated 18 December 1984, made between the respondent/plaintiff and one Tharoomals (HK) Ltd ('Tharoomals') it was agreed that the plaintiff would open letters of credit in favour of one or more beneficiaries and at the risk and responsibility of Tharoomals in payment of a shipment of 2,200 pieces of video cassette recorders. Under the same agreement the defendant guaranteed the entire amount payable by Tharoomals under the agreement to the plaintiff. Pursuant to the agreement, the plaintiff opened letters of credit. As a result, Tharoomals became liable to pay the plaintiff the amount of S$1,969,000 and interest thereon. On 9 July 1985, the plaintiff commenced this action against the defendant as guarantor claiming the sum of S$2,172,026.19 being the aggregate of the sums alleged to be owing by Tharoomals under the agreement together with accrued interest up to the date of issue of the writ. On 1 August 1985, the plaintiff took out a summons for summary judgment against the defendant. On 8 January 1986, the assistant registrar gave the defendant conditional leave to defend upon payment into court of the sum claimed or furnishing a bank guarantee within 30 days and costs of $700 in the event of default. The defendant appealed. The issues before the court were whether on the facts the assistant registrar ought to have granted conditional leave to defend and whether the condition was onerous. The defendant pleaded, inter alia, a material variation of the agreement without his consent which thereby discharged him from liability.

Held, dismissing the appeal: (1) although in law (a) there is a distinction between mere knowledge of the variation and consent to the variation and (b) the guarantor is under no duty to warn the creditor agreeing to a variation with the principal when he knows that the variation is going to occur, an implied consent may be inferred from the circumstances, eg where the guarantor himself arranges the variation or where he is involved in the preparation of documents necessary for its execution; (2) where a guarantor is a director of the principal debtor company and he negotiates with the creditor in that capacity, he will seldom, if ever, be allowed to plead that he had not assented to the variation in his capacity as a guarantor but only in his capacity as a director of the principal debtor; (3) the totality of the affidavit evidence of the plaintiff strongly suggests that the defendant was fully aware of what was going on between the plaintiff and Tharoomals and indeed had participated in all the relevant facets of the deal; (4) taking into account all the circumstances of this case, the defence was shadowy and there was something suspicious in the defendant's mode of presenting his case.

Coronation Electronics Ltd v Lalchand Mahtani [1986] SLR 307 High Court, Singapore (Chan Sek Keong JC).

The defendant sought the service of the plaintiff in finding a contractor for a building project who would provide financing facilities to the supplier or the sub-contractor by way of a letter of credit. In a letter of confirmation written by the defendant to the plaintiff, the defendant had nominated P as the main contractor and a certain sub-contractor A to be appointed by the plaintiff. It was mentioned there that the letter of credit should be opened by P to A. However, the defendant later changed its mind and L was nominated as the sub-contractor instead of A. The plaintiff claimed against the defendant for the facilitating fee for procuring a contractor for the building project. The defendant denied that the plaintiff's appointment of contractor and the opening of letter of credit were done under the terms and in accordance with the said letter of confirmation. The issue was whether there was a contract between the plaintiff and the defendant and if so whether the defendant was in breach of it, ie whether the plaintiff had fully performed its contractual obligations by appointing L instead of A as the sub-contractor. During the trial, the plaintiff produced another letter from L to the plaintiff to show that the said letter of confirmation had been substituted by this other letter. This other letter from L to the plaintiff confirmed their obligation to pay for the service rendered by the plaintiff in securing the sub-contract work from P. The plaintiff claimed that this letter from L was an indication of the defendant's agreement to vary the terms of the agreement in relation to the appointment of L instead of A. The defendant however said that this letter was not a variation but a substitution of the entire agreement. The plaintiff objected to the defendant putting forward this argument as it was not pleaded.

Held, allowing the defendant's counterclaim: (1) there was no verbal consent to any variation of the letter of confirmation; (2) the issue of the letter from L had been generally pleaded by the defendant. The plaintiff was far from being surprised. It was the plaintiff who produced the document at trial despite initial objection by the defendant. In getting the letter admitted and subsequently raising the issue on pleading, the plaintiff was technically getting the court to accept its version of the document and at the same time denying the defendant the right to challenge the document by eliciting evidence to the contrary. This technical objection, if upheld, would result in serious injustice to the defendant; (3) even if there was a radical departure from the pleading, such departure was the result of the plaintiff's own deliberate act and therefore not open to subsequent objection; (4) the letter from L was in fact a substitution of the letter of confirmation.

Sumeria Enterprise Sdn Bhd v Seberai Majuharta Sdn Bhd [1995] 4 MLJ 542 High Court, Shah Alam (Wan Yahya J).

Chin Shoo Cheen Steven & Anor v Ocean Investments Pte Ltd & Ors Suit No 1137 of 1990 High Court, Singapore (Warren LH Khoo J).

BSP, a company, entered a contract with HMMGC, the main contractor, for the execution of civil works under contract. The latter subsequently entered into a subcontract for the performance of part of the works with the first defendant, a partnership ('the first subcontract'). The second defendant, Liew, was the main supervisor of the subcontract for the first defendant. The first defendant then appointed the plaintiffs as its subcontractors under another subcontract ('the second subcontract'). Under the second subcontract, the first defendant shall keep 10% of the unit cost price which was to be divided equally between Kassim, a partner of the first defendant and Liew. Seventy percent of the sum paid by BSP was to be passed to the plaintiffs. The latter, however, were to meet all the expenses of the project from the 70% passed to them by the first defendant. Based on the various bills which they had submitted to the first defendant, the plaintiffs submitted that the work done by them under the second subcontract amounted to $310,767.60. This sum was reached on the basis of the agreed unit prices and was supported by EWOs signed by Liew. From this sum, the plaintiffs admitted that there should be deducted $119,896.70 which was paid by the first defendant either to them or to other persons by way of disbursements for expenses. The plaintiffs asserted that this left a balance of $190,890.90 due to the plaintiffs unpaid. On the other hand, the first defendant relied on a verbal agreement, varying the original agreement between the plaintiffs and Liew that the first defendant would pay to the plaintiffs only 50% of the 'net profit'. The 'net profit' would be found by the deduction of all payments made by or on behalf of the plaintiffs, after the 20% due to HMMGC and the 10% due to the first defendant had first been deducted. Another issue before the court was whether Liew was a partner in the first defendant. It was not disputed that Liew was the man with whom the plaintiffs primarily dealt and was in charge of the project. It was also with Liew with whom the plaintiffs agreed their contract. Liew also signed as correct the various bills presented by the plaintiffs. He signed and agreed to the lists of payments put forward by the plaintiffs and claims submitted by the first defendant to HMMGC. Liew was not registered as a member of the first defendant and was never described in any correspondence as a partner. Kassim, a partner of the first defendant, testified that Liew was never a member of the partnership. Liew was not paid a salary but was to receive a share of profits of the projects which were undertaken by the first defendant.

Held, judgment for the plaintiffs against both defendants who will be jointly and severally liable for it: (1) from the facts, the court rejected the suggestion in the defence that there was a variation of the previous contract as suggested in the defence and found that the plaintiffs were entitled to 70% of whatever was paid over by BSP to HMMGC, all the expenses to be paid by the plaintiffs; (2) if Liew had held himself out as a partner, even if he were not one, he could properly be treated as if he were and made liable, as a partner would be, for any debts incurred by the partnership while he was a member of it. In this case, Liew did not hold himself out as a partner in the first defendant to the plaintiffs; (3) whether or not a partnership exists involves a practical test. It is not sufficient for the other partners merely to deny the existence of a partnership as both Liew and Kassim did. The test according to s 192 of the Contract Act is whether there has been an agreement between Liew and Kassim to combine their 'property, labour and skill' and to share the profits. From the facts, there was such an agreement to combine their labour and skill between Liew and Kassim. There may have been nothing in writing, so that the agreement must be implied from the circumstances. Even if the word 'partner' was not used, it was clear that Liew with the agreement of Kassim, express or tacit, was a partner of the first defendant in the latter's contract with the plaintiffs. Therefore, there existed a partnership for the purposes of the contract to which the plaintiffs were a party, which would make the partnership itself and any member of it liable for debts incurred by the partnership.

Yap Tung Tack & Anor v Sharikat Alimah Abdullah Enterprise & Anor Civil Suit No 127 of 1991 High Court, Brunei (Roberts CJ).

Asia Commercial Finance (M) Bhd v Leong Choong Shin [1997] 5 MLJ 17 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

The plaintiff is a company incorporated in Hong Kong. On 11 May 1982, the plaintiff entered into a contract ('the said contract') for the construction of a building in Penang. Subsequent to entering into the said contract, the plaintiff took possession of the building site on 1 October 1982. The plaintiff carried out certain works and was paid for the works carried out. Certain disputes then arose between the parties to the said contract. The dispute before the court now is whether the said contract is void because the plaintiff, being a foreign company, did not register itself in Malaysia as a foreign company pursuant to the provisions of the Companies Act 1965 (Act 125). With regard to the other disputes between the parties, the plaintiff wishes that these disputes be resolved by arbitration as stated in prayer 2 of their claim, if the court holds that the said contract is a valid contract. The question also arises as to whether the contract is void because it is against public policy.

Held: (1) in order to render the said contract void under s 24(b) of the Contracts Act 1950 (Act 136), there must be a sufficient nexus between the provisions of the Companies Act and the said contract. In the present case, there is nothing in the Companies Act which prohibits the making of the said contract. The Act does not lay down any requirement with which a foreign company must comply before entering into such contract. There is therefore no sufficient nexus between the Companies Act and the said contract. The contract in question is a valid contract under s 24(b) of the Contracts Act 1950; (2) the contract is also not opposed to public policy under s 24(e) of the Contracts Act 1950; (3) an order in terms of prayer 2 should also be granted.

Hopewell Construction Co Ltd v Eastern & Oriental Hotel (1951) Sdn Bhd [1988] 2 MLJ 621 High Court, Kuala Lumpur (Zakaria Yatim J).

In this case, the plaintiff had advanced the sum of $10,000 to a company of which the defendant was the managing director in consideration of which the defendant agreed to pay him 20 cents on every ton of timber and other produce extracted from certain forest lands, of which the company were sub-licensees. Subsequently, a petition was presented for the winding up of the company. Thereupon an agreement was entered into whereby in consideration of the plaintiff's undertaking not to support the creditors' petition for winding up, the defendant undertook to pay the plaintiff the sum of $10,000 which had been loaned to the company. When the petition came up for hearing, counsel who appeared for the plaintiff opposed the petition. The defendant then gave the plaintiff a cheque for $5,000 as part payment of the sum of $10,000. This was dishonoured and the plaintiff then sued the defendant for breach of contract. The defendant alleged, inter alia, that (a) the original agreement between the company and the plaintiff was a moneylending transaction and as the plaintiff had not complied with the provisions of the Moneylenders Ordinance 1951, the agreement was unenforceable; (b) that the agreement between the plaintiff and the defendant was illegal and immoral on the ground of interfering with the course of justice. It was also argued on behalf of the plaintiff that the agreement by the defendant was a contract of indemnity.

Held: (1) the legality or otherwise of the agreement between the plaintiff and the company was not the main issue in this case and in any event on the facts, the statutory presumption that the plaintiff was a moneylender had been rebutted; (2) as the agreement between the plaintiff and the defendant in this case was an attempt to defraud the other creditors in the winding-up petition, it was void, as the consideration for it was unlawful. The agreement was therefore unenforceable at the instance of the plaintiff; (3) the contract between the plaintiff and the defendant was not a contract of indemnity but, even if it was, there was no evidence to show that the company had refused to make repayment upon proper notice of demand, and therefore there was nothing for the defendant to indemnify the plaintiff.

Amman Singh v Vasudevan [1973] 1 MLJ 210 High Court, Kuala Lumpur (Mohamed Azmi J).

In this case, the respondents had agreed to sell and the appellants had agreed to buy certain immovable property. It was a condition of the agreement that the sale should be subject to the approval of the Foreign Investment Committee. The Foreign Investment Committee refused its approval but suggested that the property be transferred to a joint venture company of which at least 30% of its equity is held by Bumiputras. The respondents contended that the agreement became void when the Foreign Investment Committee refused to approve the sale, while the appellants maintained that the agreement did not become void but still subsisted because there was a conditional approval. The learned trial judge held that the agreement became void and he made a number of consequential orders. The appellants appealed.

Held: (1) the agreement became void because of the refusal of the Foreign Investment Committee to approve the sale over which neither the appellants nor the respondents had control and therefore the various consequential orders made by the learned trial judge were valid; (2) whether it is held that the requirement as to approval is a contingent condition or a mere promissory condition the result would not be different. In the first case, there was no agreement to enforce until the requirement was satisfied and the deposit was returnable under the provision of the agreement itself as there was no ground for withholding it any longer; whereas in the second case, although there was a subsisting contract, it was, however, defeated or frustrated by a supervening event, which is non-fulfilment of the requirement and in this case also the deposit was refundable as money had and received for the use of the appellants who had paid it.

National Land Finance Co-operative Society Ltd v Sharidal Sdn Bhd [1983] 2 MLJ 211 Federal Court, Kuala Lumpur (Salleh Abas CJ (Malaya).

The respondent/defendant had entered into an agreement dated 12 April 1971 with the appellant/plaintiff for the sale of a piece of land. The respondent represented to the appellant that he was in a position to transfer the land to him. However, the appellant subsequently discovered that the respondent was in no position to do so and he had no title to the land. The respondent had signed the agreement as a 'vendor' and received a 'deposit' of $1,200 for the land which was priced at $4,500. He stated in court that he was only acting as a broker. It was stated by a witness that the piece of land sold stood in the name of one Ismail bin Yusof as on 12 April 1971, and that there was a restriction imposed upon the said land in that no transactions could be entertained without the prior written permission of the Mentri Besar.

Held, allowing the appeal: (1) s 66 of the Contracts (Malay States) Ordinance 1950 applied to the circumstances of this case, in that there was unjust enrichment. The respondent was at no time able to execute the transfer in favour of the appellant, and there was no suggestion that the said Ismail was ready and willing to execute the transfer; (2) therefore, the order of the learned magistrate must be set aside and the sum of $1,200 refunded to the appellant with costs.

Wong Lee Sing v Mansor [1972] 2 MLJ 154 High Court, Ipoh (Sharma J).

The appellant had agreed to sell a portion of a piece of land to the respondent, the appellant undertaking to execute the transfer 'as soon as the land is sub-divided by the government'. It was also agreed that if the appellant refused to transfer the land after it had been sub-divided he was to refund the money, three times the amount of the purchase price. The appellant did not apply for sub-division of the land and the respondent applied for specific performance of the contract. The appellant offered to refund three times the amount of the purchase price. The learned trial judge made an order for specific performance holding: (a) the engagement to apply for sub-division must be performed within a reasonable time and considering the time lapse the appellant had failed to do so and (b) the agreement to transfer might be specifically expressed despite the appellant's willingness to make the penalty payment provided. On appeal, it was argued that the contract was void ab initio as the sub-division was forbidden under the Kelantan Land Enactment 1938 and the National Land Code 1965 (Act 56/1965).

Held, dismissing the appeal (Ali FJ dissenting): (1) although the sub-division was forbidden under the Kelantan Land Enactment and the National Land Code there was provision for exemption under the enactments and therefore the contract was not ab initio; (2) in the circumstances the appeal must be dismissed and an order made for the appellant to submit an application for sub-division to the Land Office within two weeks of the judgment of the court.

Hassan v Ismail [1970] 1 MLJ 210 Federal Court, Kuala Trengganu (Azmi LP, Suffian and Ali FJJ).

In this case, the appellant sued the respondent for the refund of $15,000 paid as premium under an agreement of lease. In the agreement, the respondent was described as the registered owner of the land. In fact he was not the registered owner and he so described himself to circumvent the provisions of s 104(1) of the Kelantan Land Enactment 1938. The respondent was not a native of Kelantan. The learned President of the Sessions Court dismissed the appellant's claim and the appeal before the High Court was also dismissed. The appellant appealed.

Held: (1) since the respondent was not a person qualified to grant a lease and since the agreement was for the avowed purpose of deceiving a public authority, the agreement must be regarded as void and of no effect. Under s 66 of the Contracts Act 1950 (Act 136) the appellant was accordingly entitled to a refund of the premium; (2) after the notice of repudiation by the respondent the parties agreed to have a tenancy conditional upon the installation of electricity in the premises. The installation of electricity was delayed and the appellant was entitled to rescind the agreement. However, its claim for damages was not supported by satisfactory evidence and should be dismissed.

Apex Pharmacy Holdings Sdn Bhd v Chee Chin [1984] 2 MLJ 287 Federal Court, Kota Bahru (Salleh Abas LP, Wan Suleiman and Hashim Yeop A Sani FJJ).

The respondent had alleged that he had entered into an agreement for the purchase of certain lands belonging to an estate of which the appellant was the administratrix. At the time of the alleged agreement the respondent was a minor. The learned trial judge held that the agreement was void but he went on to hold that the purchase price having been paid in full and the respondent let into possession, a constructive trust had been created and the deceased held the lands in trust for the respondent. The appellant appealed.

Held, allowing the appeal: (1) to import a constructive trust in this case and grant a declaration that the appellant as administratrix held the lands as trustee for the respondent and that the respondent was entitled to possession of the lands was in effect to enforce an agreement which was void ab initio; (2) an order should be made for the purchase price to be repaid on the respondent vacating the lands.

Leha bte Jusoh v Awang Johari bin Hashim [1978] 1 MLJ 202 Federal Court, Penang (Ong Hock Sim, Raja Azlan Shah and Chang Min Tat FJJ).

The appellants had applied for leave to sign final judgment against the respondent for the sum of $250,000 being refund of deposit. The appellants alleged that the money had been given to the respondent to assist him to acquire certain premises in Kuala Lumpur. In return for the financial assistance, the respondent had agreed to lease the premises to the appellants for a period of ten years, the money paid to be treated as advanced payments for the rental. Subsequently the appellants exercised their right to terminate the agreement and claim refund of the money they had paid. The respondent had admitted owing the money and asked for time to repay but his letter was not marked 'without prejudice'. The senior assistant registrar gave leave to sign final judgment under O 32 r 6 of the Rules of the Supreme Court but the order was set aside by the learned judge in the High Court. The appellants appealed.

Held: the application should have been dealt with under O 14 and not under O 32 r 6. In the circumstances, the proper order to be made would be that the respondent be given leave to defend conditional upon his paying into court the sum of $250,000.

Ted Bates (M) Sdn Bhd v Balbir Singh Jholl [1979] 2 MLJ 257 Federal Court, Kuala Lumpur (Lee Hun Hoe CJ (Borneo).

In this case, the plaintiff claimed against the defendant the sum of $34,790 and interest in respect of what he called a friendly loan. The issues which arose in the case were whether the loan transaction had contravened the Moneylenders Ordinance 1951 and if so whether the plaintiff was nevertheless entitled to restitution of the amounts actually loaned.

Held: (1) on the facts the defendant had proved that the plaintiff was an unlicensed moneylender, and it followed therefore that s 15 of the Moneylenders Ordinance rendered the agreements between the parties unenforceable and that such agreements would be held to be void by virtue of s 2(g) of the Contracts Act 1950 (Act 136); (2) the plaintiff was an unlicensed moneylender who had contravened s 15 of the Moneylenders Ordinance and who had loaned that money at excessive interest contrary to s 22 of the ordinance and who was aware at all times of the nature of his transactions. His claim both in respect of the principal and interest, was unenforceable and void and must be dismissed.

Soh Eng Keng v Lim Chin Wah [1979] 2 MLJ 91 High Court, Melaka (Wan Yahya J).

The respondent sued the appellant on a guarantee. It appeared that the guarantee was given to stifle a criminal prosecution for criminal breach of trust of certain jewellery entrusted by the respondent to the appellant.

Held, by the Court of Appeal: the agreement of guarantee sued upon was void as being contrary to public policy.

Engku Leh v Che Wok 1948 Court of Appeal, Kota Bahru (Pretheroe Ag CJ, Murray-Aynsley CJ(S).

The respondent purchased a motor car ('the vehicle') from T for RM82,000. The respondent paid a sum of RM57,000 out of which RM40,517.97 was paid to T, and RM16,482.03 to Public Finance Bhd ('the appellants'), for the purpose of settling T's outstanding account with the appellants. For the balance of RM25,000, the respondent (as hirer) entered into a hire-purchase agreement ('the agreement') with the appellants (as owners) wherein that sum was advanced by the appellants to the respondent to pay T the balance of the purchase price. The respondent had also signed a letter of indemnity whereby he agreed to indemnify the appellants against all losses in the event the appellants lost the title and possession of the vehicle. Six weeks after the agreement was executed, the vehicle was seized by the Customs and Excise Department for an alleged offence. The respondent filed an action in the sessions court for the return of the RM57,000 and a further sum which had been expended on repairs and other charges on the vehicle. He contended that, by reason of the seizure, the appellants had breached the implied warranties and conditions provided for under s 7(1) of the Hire-Purchase Act 1967 ('the Act'), and that there had been a total failure of consideration. Relying on the provisions of the letter of indemnity, the appellants counterclaimed for payment of the sum of RM25,294.01. The appellants contended that: (i) there was no breach of s 7(1)(b) of the Act, as the implied condition that the owner should have a right to sell the goods at the time when the property was to pass under the section, only arose when the last instalment had been paid, which was not the case here; (ii) s 7(1)(b) was not applicable to second-hand vehicle; and (iii) in any event, the implied condition under s 7(1)(b) had been precluded by the letter of indemnity. The appellants also argued that the letter was not part of the hire-purchase agreement, and therefore did not contravene s 34 of the Act. The sessions court allowed the respondent's claim and dismissed the appellants' counterclaim. The appellants appealed.

Held, dismissing the appeal: (1) the conduct and actions of the appellants showed that they had held themselves out as the owners of the vehicle at the time the agreement was entered into, and that they were capable of giving a good title to the respondent whenever he might choose to end the hiring by paying the balance due. However, as the vehicle was seized by the customs soon after the agreement was executed and had not been returned to either party since, it had become impossible for the appellants to pass a good title to the respondent. Pursuant to s 57(2) of the Contracts Act 1950, the agreement had become void, and the appellants were obliged to return the RM57,000 to the respondent under s 66 of the Contract Act 1950; (2) s 7(4) of the Act preserves the implied condition at common law whereby the owner had to have a good title when he entered into the hire-purchase agreement, and not when the final payment was made. The phrase 'at the time when the property is to pass' in s 7(1)(b) means at the time when a hirer decides to pay all sums due under a hire-purchase agreement. A breach of s 7(1)(b) amounts to a breach which goes to the root of the agreement, entitling a hirer to recover the amount already paid by him. The Act does not differentiate between new and second-hand goods as far as ownership is concerned. It also does not provide that the implied condition and warranties under s 7(1) do not apply to second-hand goods. An implied condition that the owner shall have good title to pass cannot be excluded from a hire-purchase agreement; (3) the letter of indemnity formed part of the agreement. The letter, which purported to exclude provisions of the Act which was meant to provide protection to hirers, contravened the Act and was void under s 34(a), (b) and (g) of the Act. There had been a total failure of consideration, and the appellants could not claim that the implied condition as to title provided for under s 7(1)(b) of the Act was not applicable.

Public Finance Bhd v Ehwan bin Saring [1996] 1 MLJ 331 High Court, Johor Bahru (Mohd Ghazali J).

The defendants were owners of a piece of land. Their first agreement to sell the said land to one Loong Koi was abortive and the defendants enlisted the assistance of the solicitor for Loong Koi to find a purchaser for the land. An option was given to purchase the land to one Madam Kong Yoke Sam. The option was an open-dated one exercisable only after Loong Koi showed no more interest in the land. The plaintiffs exercised the option through the said solicitor and claimed for specific performance of the agreement. The defendants resisted the claim and argued, inter alia, that there was no privity of contract or any contractual relationship between them and the plaintiffs. The defendants further claimed that the option had expired and even if the plaintiffs had exercised the option within the prescribed period, the option was not valid due to lack of consideration. The plaintiffs lodged a caveat against the defendants' land.

Held: (1) the option was void for lack of consideration; (2) as far as the National Land Code 1965 (Act 56/1965) is concerned the whole system of caveats is founded on the principle that they exist for the protection of alleged as well as proven interests. In this case, no action had been taken by the defendants to remove the caveat on the grounds that the plaintiffs had no interest in the terms of the National Land Code 1965 for capacity to lodge the caveat; (3) the arguments of the defendants based on the lack of privity of contract cannot therefore succeed; (4) since no time was fixed, the offer would lapse after the expiration of a reasonable time. An offer lapses after a reasonable time not because this must be implied in the offer but because failure to accept within a reasonable time implies rejection by the offeree; (5) the court can take into account the conduct of the parties after the offer was made in deciding whether the offeree has allowed too long a time to lapse before accepting; (6) the option had been revoked well before the purported intention to exercise the option; (7) the plaintiffs, therefore, cannot succeed in their present action and the caveat should be removed forthwith.

Macon Works & Trading Sdn Bhd v Phang Hon Chin & Anor [1976] 2 MLJ 177 High Court, Ipoh (Hashim Yeop A Sani J).

The plaintiffs were the registered owners of a two-storey shophouse in Kepong. In March 1971 they entered into an agreement with the defendant giving him a lease of the whole of the ground floor of the building for a period of six years commencing 15 August 1970. Clause 4(c) of the agreement provided for the defendant to have the first option to renew the lease for a period of six years at a reasonable rent to be mutually agreed upon. The agreement was not registered as required under s 222 of the National Land Code 1965 (Act 56/1965). The plaintiffs' qualified title which was originally issued and registered on 23 May 1970 stipulated that the land on which the building stood could not be transferred, leased, tenanted, charged or otherwise disposed of without the written approval from the Collector of Land Revenue for a period of ten years from the date of registration of the title so that this restriction on the face of the document continued up to and including 22 May 1980. On 7 June 1976, the plaintiffs gave notice that they did not wish to renew or extend the lease and indicated that they would take vacant possession of the building on 15 August 1976. The defendant, however, on 16 July 1976 intimated his intention to exercise his option under cl 4(c) to renew the lease for another six years. The learned President of the Sessions Court dismissed with costs the plaintiffs' claim for vacant possession of the shophouse and for specific damages for its unlawful occupation. On appeal,

Held, allowing the appeal: (1) from the qualified title, the restriction which appeared on its face applied not to the approved application as such but to the title itself so that the provisions of s 225 of the National Land Code operated in this case. In this case, the agreement was not in the prescribed form as required by s 221. On these facts alone the agreement could not have been registered and consequently was not enforceable under the National Land Code as not having vested an interest in the defendant. It was in fact void for being in breach of the Code; (2) the defendant could not rely upon the provision contained in the void agreement as conferring upon him the right to exercise an option; (3) the defendant could not also rely on the protection afforded by s 206(3) of the National Land Code since this subsection afforded protection only in relation to the term of a current agreement and does not extend to protect a right to enter into a future agreement.

Wong Kim Swee & Ors v Tham Hock Cham [1981] 2 MLJ 207 High Court, Kuala Lumpur (Vohrah J).

In this case, the respondent sued the appellant for repayment of what he claimed to be a friendly loan. The learned President of the Sessions Court found, however, that the loan was in fact a moneylending transaction. He held, however, that as the appellant had admitted that a sum of $3,000 was in fact borrowed by him, judgment should be given for the respondent for this sum. The appellant appealed.

Held, allowing the appeal: in this case the true position was that the contract was an unenforceable and void one from the very beginning and each party was aware of this and therefore the learned President was wrong in ordering restitution of the sum lent.

Suu Lin Chong v Lee Yaw Seong [1979] 2 MLJ 48 High Court, Melaka (Wan Yahya J).

The appellant and the first respondent had entered into a sale and purchase agreement ('the agreement') under which the latter was to sell and the former was to purchase certain shares of a corporation which were registered in the name of the second respondent. However, before the sale and purchase transaction of the said shares could be completed, the parties concerned realized that under s 45(1) of the Banking and Financial Institutions Act 1989 ('the Act'), a written consent from the Minister of Finance was necessary before the transfer of the said shares could be effected. Thus both the appellant and the first respondent applied to Bank Negara for the necessary written consent but their applications were rejected. Consequently, the first respondent repudiated the agreement, and the appellant issued a writ for damages for breach of contract. The trial court rejected the appellant's contention that the agreement was valid and enforceable by virtue of s 125 of the Act, and accepted the respondents' contention that the agreement was void and unenforceable for failing to comply with s 45(1) of the Act, which also meant that the appellant lacked the capacity to enter into the agreement in the first place. The appellant appealed to the Supreme Court.

Held, dismissing the appeal: (1) their Lordships disagreed with the trial court's interpretation of the Act, in particular that of the saving provision in s 125 of the Act. The Act, including s 45(1) of the Act, does not in terms say that an agreement entered into in contravention of it is to be void. On the contrary, it provides by s 125 of the Act, a saving provision which says that 'except as otherwise provided in this Act or in pursuance of any provision of this Act', no contract or agreement in contravention of any provision of the Act shall be void solely by reason of that contravention. Thus while the Act prohibits and penalises (by s 45(1)) certain agreements and contracts, it nevertheless reveals (by s 125) an intention that generally, such prohibited agreements and contracts shall still be valid and enforceable unless the Act specifically provides that such agreements and contracts are to be void as well; (2) although the agreement had contravened s 45(1) of the Act, this contravention itself was not enough to render the agreement void under s 125 of the Act unless, there are some other provisions in the Act which have that effect. Thus upon considering ss 48(1) and 54(1) and (11) of the Act, their Lordships were satisfied that these 'invalidating provisions' fall well within the meaning and ambit of the words 'Except as otherwise provided in this Act, or in pursuance of any provision of this Act' which appear in s 125 of the Act; (3) however, the broad and crucial question for decision in this case was whether the agreement was unlawful by reason thereof as being an act or undertaking which was forbidden by law, in that it violated a prohibitory enactment, and that it was by reason of that violation void. In this context, their Lordships considered s 24 of the Contracts Act 1950, which basically provides that an agreement is void if its consideration or object is unlawful by reason, inter alia, of it being forbidden in law; (4) after having considered the provisions of s 24 of the Contracts Act 1950, their Lordships came to the inevitable conclusion that the agreement had contravened s 45(1) of the Act, and the agreement, being an act or undertaking which was forbidden by law in that it violated a prohibitory enactment of the legislature, was void by reason of having violated the principles enshrined in s 24 of the Contracts Act 1950.

Coramas Sdn Bhd v Rakyat First Merchant Bankers Bhd & Anor [1994] 1 MLJ 369 Supreme Court, Kuala Lumpur (Harun Hashim and Edgar Joseph Jr SCJJ and Lim Beng Choon J).

This was an application by way of summons-in-chambers for an order that the applicant-chargee may be at liberty to discontinue this action which they had started by way of originating summons. The respondent-chargor borrowed a sum of $15,000 at an interest of 12% per annum from the applicant-chargee, the Overseas Union Finance Ltd, a licensed moneylender. Repayment of the loan was on demand, whilst meanwhile the respondent-chargor was to repay the principal sum at a monthly instalment of $346.50. The respondent-chargor charged his land at No 14-C, Jalan Raja Laut, Kuala Lumpur, to the applicant-chargee, as security for repayment of the loan. The charge was duly registered. A memorandum of agreement for the loan was drawn up pursuant to s 16 of the Moneylenders Ordinance 1951 and signed by the parties on 21 January 1969. A memorandum of charge was also signed by the parties on the same day. On 19 August 1969, the applicant-chargee delivered a statutory notice of default under Form 16D of the National Land Code 1965 (Act 56/1965) to the respondent-chargor reminding him that he had failed to pay the total sum of $1,386 for four monthly instalments, and that if he did not remedy the breach within the time stipulated, the applicant-chargee would proceed to apply for an order for sale. As this notice was not complied with, the applicant-chargee, on 3 December 1969, applied by originating summons for an order that the said land be sold by public auction. In his affidavit, the respondent-chargor opposed this application on three grounds: (1) the contract was unenforceable as the memorandum of agreement did not comply with s 16 of the Moneylenders Ordinance 1951, in that the date of the loan was not correctly stated and the terms of the loan were not correctly set out; (2) the charge was void because being an executor-cum-trustee he did not have power either under the will or the Trustee Ordinance 1949 to charge the land; (3) the notice of default was in the wrong form and therefore not an effective notice. He contended that it should be in Form 16E under s 255 and not Form 16D under s 254 of the National Land Code. Subsequently, however, the applicant-chargee sought to discontinue the action on the ground that even if the court were to grant an order for sale he, the applicant, would find difficulty in selling the property, it being a residence and in an area where the value had fallen. This application was opposed by the respondent-chargor on the grounds that an originating summons could not be discontinued and that the applicant-chargee knowing that he could not get the order for sale, now tried to get an illegal charge on the land by discontinuing the action.

Held: (1) the memorandum of agreement was signed and delivered on 21 January 1969 and not 18 January 1969 as stated in the memorandum. Furthermore, the memorandum stated that payment of the loan was to be made on 18 January but in actual fact the payment was made in various amounts on different dates subsequent to the signing on 21 January. These circumstances constituted a non-compliance of s 16(3) of the Moneylenders Ordinance in that the terms were not fully set out. Therefore the memorandum did not contain all the terms of and the real date of the loan. This constituted a material error which tended to mislead and made the contract unenforceable; (2) the burden is always on the person seeking to enforce the contract to show that the requirements of the section have been fulfilled. Here the applicant had not discharged the burden. He did not reply to the respondent-chargor's affidavit which alleged that he had not complied with the ordinance. The contract was by reason of this non-compliance unenforceable; (3) neither the will nor the Trustee Ordinance conferred power upon the respondent/chargor to charge the said land. As such the charge was void; (4) Form 16D can be used for any charge, whereas Form 16E is to be used specially where the principal sum is payable on demand. Even where the principal sum is payable on demand, Form 16D can still be used. In this case, when the chargee demanded payment it was for the principal sum plus interest for four monthly instalments. It was thus proper to use Form 16D; (5) under O 26 r 1 of the Rules of the Supreme Court 1957, a plaintiff may discontinue an action by notice in writing before the defence or after the defence before taking any other proceeding in the action. At any later stage, leave to discontinue must be obtained. Under O 55 r 5A the method of proceeding prescribed for a sale, etc, is by originating summons. Therefore an originating summons taken as of course under O 55 r 5A is a civil proceeding commenced 'in such ... manner (other than a writ) as is prescribed by these Rules ...', and consequently as falling within the definition of an action. Since by definition an originating summons in this case could properly be called an action, O 26 r 1 could be invoked to discontinue it. Since an originating summons is an action coupled with the fact that the respondent-chargor had a defence, the rules of discontinuance could be invoked in this case. However, the court has a discretion whether to allow a discontinuance. In the circumstances of this case, the application to discontinue was dismissed.

Overseas Union Finance Ltd v Lim Joo Chong [1971] 2 MLJ 124 High Court, Kuala Lumpur (Raja Azlan Shah J).

The Melaka State Authority gave notice that a certain piece of land was to be compulsorily acquired. An inquiry was conducted and the Pemungut Hasil Tanah awarded RM616,146 in favour of the registered owner, namely one Lee Chim Giang of the estate of Lee Keng Liat (these people have since passed away). The first defendant is the personal representative of the estate of Lee Keng Liat while the second defendant is the Pemungut Hasil Tanah. During the inquiry, it transpired that there was a contender to the compensation. From the evidence, it was discovered that sometime in 1935, one Tan Tai Tip (TTT) had bought the said property from Lee Chim Giang and TTT had gone into occupation of the said land. Aside from being in possession of the assessment and quit rent receipts, the plaintiffs (the executors and trustees of the estate of TTT) also produced the original title of the said property. The document had been handed down by TTT to his children and later given to the PHT for the purposes of the enquiry. Apart from the land being exploited by the family of the said TTT, part of it was let out to a third party. The first defendant contended that there was never a sale of the said property to TTT by Lee Chim Giang and even if there was, it was an illegal transaction and thus null and void as the property is Malay customary land and therefore no transfer of customary land could be valid unless it was made to an individual qualified to become a customary land holder. The plaintiffs, on the other hand, argued that the vendor was a trustee on behalf of the buyer in relation to the said property. The plaintiffs later changed this prayer and substituted it with one that TTT was entitled to exclusive possession of the land.

Held, allowing the prayer: (1) there was a contract for the sale and purchase of the said property which was concluded in 1935. Such contract was good but subject to validation by the relevant authorities; (2) a transaction between non-Malays over a piece of Malay customary land does not automatically become a void transaction but merely becomes a conditional sale until validated in accordance with the provisions of the Ordinance; (3) for a bare trust to be created, the contractual events, which result in the vendor becoming a bare trustee must be complete, namely upon receipt by the vendor of the full purchase price, timeously paid and when the vendor has given the purchaser a duly executed, valid and registrable transfer of the land in due form. Since there was no proof to show that the vendor had given TTT a duly executed, valid and registrable transfer of the land in due form, there was no bare trust; (4) based on the following facts, namely (i) that the plaintiffs had lived on the said property for 47 years prior to the inquiry in 1982; (ii) that they had enjoyed quiet enjoyment over the land for that span of time; (iii) that the first defendant was fully aware of the presence and occupation of the plaintiffs on the land; (iv) that the first defendant stood by without voicing any dissent when the land was fully cultivated and when buildings were erected; (v) that the plaintiffs had expended energy, time and money on it; (vi) that the land was also a source of income for the plaintiffs; (vii) that all the assessments and quit rents were paid for by the plaintiffs; (viii) that the first defendant during those years had shown absolutely no interest in the land or even the enquiry until the cheque for RM616,146 appeared; (ix) that the first defendant had not incurred a single cent from 1935; (x) that the first defendant did not register her interest in the Malacca Customary Registry; (xi) that the non-action of the plaintiffs must have had the blessings of the first defendant for 47 years for otherwise the contract would have been called off; the rules of equity therefore will apply to allow the declarations sought for by the plaintiffs.

Wong Ah Yah & Anor v Lee Joo Eng & Anor Civil Suit No 22-27-1988 High Court, Malacca (Suriyadi J).

The appellant had applied for foreclosure of charged land arising from a moneylending transaction and the application had been dismissed. No consequential orders were made. Subsequently the respondent applied by summons-in-chamber for an order for the delivery of the issue document of title, the discharge of the charge and the cancellation of the memorial of the charge. In the same proceedings, the appellant claimed restitution. The learned judge of the High Court gave orders in terms of the respondent's application but dismissed the appellant's claim for restitution. The appellant appealed.

Held: (1) the application of the respondent should have been made by originating summons but the failure to comply with the procedure laid down under the Rules of the Supreme Court was only an irregularity which was curable under O 70 r 1 of the rules; (2) in this case the appellants could not have been ignorant of the fact that he had breached the Moneylenders Ordinance and therefore there could not be an order for restitution.

Wong Yoon Chai v Lee Ah Chin [1981] 1 MLJ 219 Federal Court, Johore Bahru (Raja Azlan Shah CJ (Malaya).

In a written agreement, the plaintiff agreed to sell to the defendants 3,700,000 of his shares comprising 56.06% of the total 6m issued and paid-up shares in Paka-Ubat (Pantai Holdings) Sdn Bhd ('PUPH'). The plaintiff handed over to the defendants 3,432,000 share certificates, and upon the defendants' agreement, the plaintiff was released of his liability to hand over the remaining 268,000 shares. The defendants paid RM9,990,000 to the plaintiff, but failed to have the shares registered under their name. In this originating summons, the plaintiff sought a declaration that the agreement had come to an end and was unenforceable, and an order for the return of the certificates and shares transfer forms by the defendants and the plaintiff will return the money to the defendants. PUPH held 7,700,000 shares, comprising 40.53% out of 19m issued and paid-up shares in Hospital Pantai Bhd ('HPB'), listed on the second board of the KLSE. The listing had been approved by the Capital Issues Committee ('CIC') on the condition that the HPB shareholders were prohibited from selling the shares within the period of three years from the date HPB was listed. The plaintiff averred that the CIC condition prohibits him from selling the shares without prior approval of the CIC, and according to cl 7 of their agreement, it was the defendants' responsibility to obtain such an approval. According to the plaintiff's contention, the contract was a contingent contract. Therefore, without the approval of the CIC, the agreement becomes invalid or void. Counsel for the plaintiff also argued that the agreement was invalid because it contravened s 9(1)(c) of the Johore State Development Corporation Enactment 1968 which states that the defendants could not buy stock and shares in any public or private companies without prior written approval from the Minister of Finance, unless the Minister had given a general or specific direction regarding the matter. The questions of law argued in this application were: (a) whether CIC approval was required for the sale of PUPH shares; (b) whether the CIC condition was applicable to the sale of PUPH shares since PUPH was holding 40.53% of the HPB shares; and (c) whether the agreement was invalid because the sale of the shares contravened s 19(1)(c) of the Johore State Development Corporation Enactment 1968.

Held, allowing the application: (1) the CIC condition was not applicable to the sale of shares in this case. The condition prevents or prohibits the sale of HPB shares by HPB shareholders. In this case, the shares put on sale were not HPB shares, but the share of PUPH. The vendor was not PUPH as HPB shareholders, but as shareholders in PUPH; (2) the plaintiff's contention as regards the effect of the absence of CIC's approval on cl 7 of the agreement was not successful; (3) since the purchase of the shares was without the written consent and direction of the Minister of Finance, the purchase of the shares was prohibited by s 19(1)(c) of the Johore State Development Corporation Enactment 1968. The defendants did not have the capacity to purchase the shares and, therefore, the agreement was invalid.

Dato' Mahmood bin Osman Merican v Perbadanan Kemajuan Ekonomi Negeri Johor [1993] 1 MLJ 399 High Court, Kuala Lumpur (Abdul Aziz J).

[Annotation: This judgment was delivered in Bahasa Malaysia.]

This was an appeal against the judgment of the High Court granting leave to the respondents to sign final judgment. The appellant alleged that there was an oral agreement between him and the owner of the land, allowing him to occupy the land for as long as he wished during his lifetime. It was argued for the respondents that the contract was void for uncertainty.

Held: under s 30 of the Contracts (Malay States) Ordinance 1950 the oral agreement in this case was void for uncertainty and therefore the learned trial judge was right in giving the respondents leave to sign final judgment for possession against the appellant.

Hajara Singh v Muthukaruppan & Ors [1967] 1 MLJ 167 Federal Court, Ipoh (Barakbah LP, Azmi CJ (Malaya).

Bijak Utama Sdn Bhd v Adwin Sdn Bhd Civil Suit No 22-128 of 1996—High Court, Johor Bahru (Mohd Ghazali J).

The plaintiff sought to recover a quantity of white pepper said to amount to 69.30 piculs and valued at $8,316. On or about 5 September 1945, the pepper was sold to a Japanese firm at $38 (Japanese currency) per picul. The defendant claimed that he subsequently bought the pepper from the Japanese firm. Later still the Custodian of Property took the pepper into his custody. The Custodian was joined as co-defendant, but he interpleaded and whilst admitting that the pepper was in his possession he stated that he claimed no interest therein. The Resident's Court, Second Division, gave judgment for the plaintiff. The defendant appealed to the Supreme Court.

Held: on the facts, the Japanese firm acquired only a voidable title and no title passed to the appellant.

Wee Kok Eng v Gan Ah Chang [1948] SCR 10 Supreme Court, Sarawak, North Borneo and Brunei

In this case, the appellants were housing developers. The respondents had agreed to buy three units of flats from the appellants and paid a deposit of $20,000. The deposit was made before the issuance of the developers' licence to the appellants. The respondents subsequently refused to sign the sale and purchase agreement and claimed a refund of the deposit. The learned President of the Sessions Court held that the deposit was meant to be a booking fee and not part payment. The appellants had not obtained the licence and permit at the time of collecting the deposit and therefore they were not authorized to collect the deposit. He therefore ordered the refund of the deposit. An appeal to the High Court was dismissed. The appellants appealed to the Supreme Court.

Held: the agreement in this case was valid but was voidable at the instance of the buyers. The buyers had elected to avoid the agreement and they were entitled to claim for the return of the deposit.

Beca (M) Sdn Bhd v Tan Choong Kuang & Anor [1986] 1 MLJ 390 Supreme Court, Kota Kinabalu (Lee Hun Hoe CJ (Borneo).

Tan Bok Seong v Sin Bee Seng & Co (Port Weld) Sdn Bhd & Ors (1995) CSLR VI[501] High Court, Kuala Kangsar (Abdul Malik Ishak J).

Jusuf Kaliman & Anor v Outram Realty (Pte) Ltd 1984 High Court, Singapore (Wee Chong Jin CJ).

Annamallay Chitty v Nash 1980 High Court, Straits Settlements (Leach J).

Fiscal Consultants Pte Ltd v Asia Commercial Finance Ltd [1981] 2 MLJ 64 High Court, Singapore (Lai Kew Chai J).

Kau Nia Enterprise (Pte) Ltd v Teck Wah Corp (Pte) Ltd 1980 High Court, Singapore (Lai Kew Chai J).

Fraser v Everett [1889] 4 Ky 512 High Court, Straits Settlements (Wood Ag CJ).

Mohamed Selan v PB Securities Sdn Bhd [1992] 1 MLJ 762 High Court, Kuala Lumpur (Eusoff Chin J).

P, the registered owners of the lands in question, entered into an agreement to sell the said lands to D. This agreement was subsequently revoked and replaced by another agreement. Subsequently, a fresh agreement was entered into for the sale and purchase of the said lands. Under the terms of the agreement, D was to make certain payments by the date specified therein. When no payment was received from D, P terminated the agreement and forfeited the deposit paid by D. P also applied to remove D's caveat entered against the said lands. D contended, inter alia, that as time was no longer of the essence of the agreement, P in terminating the agreement had committed a breach of contract.

Held, allowing P's application: (1) on an application by the caveatee under s 397 of the National Land Code 1965 for the removal of a caveat, the onus is on the caveator to satisfy the court that his claim to an interest in the property does raise a serious question to be tried; (2) in the instant case, there was no evidence to show that time was no longer of the essence of the agreement. There was also no evidence to show that P's conduct amounted to a waiver of their rights to require D to pay the various instalments of the purchase price strictly in accordance with the agreement. To constitute a waiver, there must be an intentional act with knowledge; (3) as there was no serious question to be tried, P's application to have D's caveat removed was allowed by the court.

Cheang Koon Hock & Ors v Kean Tatt Development Sdn Bhd Originating Motion 25-15-89 High Court, Penang (Wan Adnan J).

Brown Noel Trading Pte Ltd v Donald & McArthy Pte Ltd [1997] 1 SLR 1 Court of Appeal, Singapore (Yong Pung How CJ, Karthigesu and LP Thean JJA).

Ung Ah Moi & Ors v Hampshire [1887] 4 Ky 296 Court of Appeal, Straits Settlements (Ford CJ, Wood, Pellereau and Goldney JJ).

Ong Choon Lin t/a Syarikat Federal Motor Trading v The New Zealand Insurance Co Ltd Civil Suit No 330 of 1983 High Court, Ipoh (Peh Swee Chin J).

D were a finance company. They advanced money to L to enable it to redevelop a piece of land. L retained P as architect. Shortly after the purchase of the property the market collapsed and the government imposed a requirement for office development permits. These two events put an end to the immediate prospects of developing the site. Over the next five and a half years L and P tried to put together schemes to enable the development to go ahead. Meanwhile interest due to D increased. By 1979 the amount due to D had reached about £9m mostly in accumulated interest, an amount which would not be recovered if D chose to sell the land. They accordingly decided to finance the development themselves, but only on the condition that P was dismissed. P sued D for wrongful interference with contract. The trial judge dismissed the claim. P appealed to the Court of Appeal.

Held, dismissing the appeal: (1) P had satisfied four of the five ingredients of the tort, ie (a) that there was a direct interference by D with P's contract with L, (b) that D knew that P were employed by L under a binding contract and that their conduct would interfere with that contract, (c) that D intended to bring P's contract to an end, and (d) that D's interference had caused damage to P. P, however, failed to establish the last ingredient, viz, that D's conduct must not have been justified; (2) the onus of proving justification was on D. The test was, did D have an equal or superior right? (3) justification for interference with P's contractual right based on an equal or superior right in D must clearly be a legal right. Such right may derive from property or from contractual rights; (4) D had the rights of a secured creditor, ie the right to be repaid their loan together with interest; in support of that right they had the right to sell the land or appoint a receiver. They were not bound to exercise these remedies in defence of their rights, but had they done so P's contract would have come to an end. P would have had no cause of action in that case. If, instead of exercising their rights as secured creditor, D reached an accommodation with the borrower under which P's contract was terminated, it would be anomalous not to hold that D was similarly justified in so acting. P's appeal was accordingly dismissed.

Edwin Hill & Partners v First National Finance Corp plc [1988] 3 All ER 801 Court of Appeal, England (Browne-Wilkinson VC, Nourse and Stuart-Smith LJJ).

Creative Technology Ltd v Aztech Systems Pte Ltd [1997] 1 SLR 621 Court of Appeal, Singapore (Karthigesu and LP Thean JJA, Lai Kew Chai J).

Television Broadcasts & Ors v Seremban Video Centre Sdn Bhd [1985] 1 MLJ 171 High Court, Seremban (Peh Swee Chin J).

Chong Loy Sen & Anor v Public Prosecutor [1986] SLR 284 High Court, Singapore (LP Thean J).

Public Prosecutor v Teoh Ai Nee & Anor [1994] 1 SLR 452 High Court, Singapore (Yong Pung How CJ).

In this case, the plaintiff signed a declaration acknowledging the receipt of the 1974 literature prize money awarded by the defendants in respect of a play written by him and declaring his ownership of the copyright of the work. He also undertook in the declaration to enter into an agreement with the defendants relating to copyright and the payment of royalty. No formal agreement was signed but the play was published by the defendants. The plaintiff claimed damages and an injunction.

Held: in the circumstances, the plaintiff's copyright had been infringed by the defendants. The defendants, their servants or agents should be restrained from further publishing or distributing the plaintiff's work and they should pay $10,000 damages and costs to the plaintiff.

Syed Alwi v Dewan Bahasa dan Pustaka [1980] 1 MLJ 129 High Court, Kuala Lumpur (Vohrah J).

D were local retailers of music instruments and publications. P were music publishers in the United Kingdom. P sued D for infringement of copyright and passing off. D admitted that they had infringed the copyright of P and consented to judgment being entered against them, with an inquiry to be held to quantify damages. P had obtained an Anton Piller order and had undertaken to keep in safe custody any articles which might be taken. A considerable quantity of materials was seized and removed, to be kept in safe custody by P's solicitors. D were unhappy as they believed that genuine copies of the works, which they had bought from P and for which they had paid, had also been taken away. Following a joint inspection of the seized items by both parties, D took out a summons-in-chambers for an order that P release and return unconditionally to them those music publications for which they had paid.

Held, granting D's application: (1) the Anton Piller order allowed P to remove only unauthorized reproductions of the works. In this case, D had been purchasing genuine copies of the works from P for some 20 years, and the stocks in their premises included both such genuine copies of the works and unauthorized reproductions; (2) this much was in fact admitted by the chairman and managing director of P; (3) P must ensure that only unauthorized reproductions are removed and no more; (4) this may well impose a heavy burden on plaintiffs in some cases, as in this case, where authentic publications in the premises are mixed with unauthorized reproductions, and identification and separation may no longer be a simple matter; (5) this was not an argument which found any favour with the court at all. D in this case had already admitted liability and consented to judgment being entered against them; (6) some bundles of allegedly unauthorized reproductions were even taken away without their being unpacked for examination; in the result, it was an inescapable inference that at least some copies of the works were also removed;in the court's opinion, the sweeping powers accorded to plaintiffs by Anton Piller orders, which are so freely granted by our courts, impose on plaintiffs a serious responsibility to see that the terms of the orders are strictly adhered to and that there is no breach of any of the terms;P's solitary argument against the release and return of any of the seized materials was that they constituted the evidence which P needed to prove their case;if what P really meant was that the retention of all the seized materials would be necessary to enable them to quantify damages, this appeared to the court to be a totally unrealistic approach towards this particular problem. The prayers in their own statement of claim had asked for damages, or alternatively an account of profits. The court could not see, in the absence of any explanation, how unsold materials could help them; the court therefore made an order that the music publications set out in the schedule be released and returned to D.

Peters Edition Ltd v Renner Piano Co; Associated Board of the Royal Schools of Music v Renner Piano Co [1989] CLR 1045 High Court, Singapore (Yong Pung How J).

In this case, the respondent employed the appellant, a firm of architects to build a 27-storey office building at Jalan Ampang on the usual terms as defined by the Pertubuhan Arkitek Malaysia (PAM) conditions of engagement. The overall fee agreed was 4% of the total contract cost of the project. While approval of the plans was still under consideration by the relevant authority, the appellant sued the respondent for the balance of the professional fees of S$14,000. The respondent denied the claim and counterclaimed for breach of contract. Subsequently, the appellant terminated its services as architects on the ground of failure of payment of fees. The respondent requested that the dispute be referred to the PAM for decision and pending reference that the appellant should issue a letter of release to enable them to engage another architect to continue with the work. The appellant denied the request and said that until all the fees were paid they would not issue a letter of release. The respondent applied by summons-in-chambers for an order that the appellant forthwith issue the respondent with a letter of release to enable the respondent to engage another architect to proceed with the proposed construction of the building.

Held, in the High Court by Chan J: (1) in any event, the respondent did not want the plans but a letter of release so that it could appoint another architect to take over the project; (2) an architect is entitled to the copyright in his plans, but there is an implied licence that he will allow his plans to be used for all purposes connected with the erection of buildings to which they relate in return for a reasonable fee; (3) pending the determination of the reasonable fee due to the appellant, the respondent had an implied licence to use the plans; (4)

Held, affirming the decision of the High Court: (1) as the respondent was not disputing liability but the amount it would have to pay, the giving of the letter would not in any way affect the outcome of the trial; (2) the appellant's possessory lien on the plans was lost when it parted with the plans without making any reservations;however, as no architect would take over the project without a letter of release from the appellant, an order compelling the appellant to grant the letter of release would be made, if only to give business efficacy to the licence. The appellant appealed, inter alia, on the ground that it was contrary to principle to grant a mandatory order of this nature on an interlocutory application before trial. the order directing the appellant to issue the letter of release by mandatory injunction is merely incidental;in the circumstances of this case, the court could not allow the appellant to withhold the letter of release as to do so would mean 'that the architect can hold the client to ransom'.

TR Hamzah & Yeang Sdn Bhd v Lazar Sdn Bhd [1985] 2 MLJ 45 Federal Court, Kuala Lumpur (Lee Hun Hoe CJ (Borneo).

[Annotation: The report of this case published in [1985] 2 MLJ 45 sets out both the lower court judgment and the judgment of the appeal court.]

The applicants, Auvi Pte Ltd, are a private limited company which was incorporated in 1974. Their principal line of business relates to the sale and distribution of high fidelity equipment. They are the agents and/or distributors of a number of foreign brands of such equipment. The applicants maintain a corporate logo using the name 'AUVI' ('the AUVI logo'). It has never been used by the applicants as a trade mark on any product. However, they have used the logo in all their advertisements and in their stationery in the course of trade. The applicants had commissioned and paid their advertising agents to design the logo for them in 1976. Though it was the intention of the applicants and the advertising agents that the copyright should belong to the former, no formal agreement of the copyright was executed until 1988. Trade mark No 4767/83 ('the AUVI mark') was registered on 7 September 1983 in favour of the two respondents, who were trading as partners under the style of AV Electronics (Sabah) Trading Co. The AUVI mark was advertised in the gazette on 27 September 1985, but the applicants only became aware of the said registration in March 1987. The applicants sought to have the AUVI mark expunged from the register on the ground that it was entered without sufficient cause. The issues arising therein were: (a) whether the second respondent created the AUVI mark independently or whether he created it by copying the applicants' logo; (b) assuming the respondents were found to have copied the AUVI logo, whether there was originality in the AUVI logo and whether it constituted an artistic work enjoying copyright protection under the Copyright Act 1911 ('the 1911 Act'); (c) whether the applicants were 'persons aggrieved' within the meaning of s 39(1)(a) of the Trade Marks Act (Cap 332) ('the Act') to enable them to institute rectification proceedings; (d) if they were persons aggrieved, whether the applicants were entitled to ask for rectification when they were, at the time of registration of the AUVI mark, not the legal owners of the copyright in the logo but only owners in equity; and (e) whether there was delay on the applicants' part in instituting these proceedings after knowing of the AUVI mark. The respondents' counsel further contended that even if the applicants' case was proven, there was a wide discretion vested in the court under s 39(1)(a) of the Act. He submitted that the court did not necessarily have to expunge the mark; it could make such variation to the registered mark as it deemed fit including the specification of the goods to which the mark relates.

Held, allowing the application: (1) in view of, inter alia, the many inconsistencies in the respondents' evidence, the court rejected their evidence that the AUVI mark was created by joining four letters of the alphabet which the second respondent found in a Japanese magazine; (2) the substantial similarity between the AUVI logo and the AUVI mark gave rise to a prima facie inference of copying by the respondents. The burden was on the respondents to rebut, which they failed to discharge; (3) in law, there can be infringement even though the imitation is not an exact replica. It does not matter whether the size of the copy has been increased or reduced, or whether the whole or part only of the original was copied; (4) nor does it necessarily involve inventiveness. All that needs to be shown is that the author created it and has not copied it from another, and that he has expended a substantial amount of skill or labour towards its creation. Simplicity per se does not prevent a work from acquiring copyright. Whether an author has made use of an existing subject matter in creating his drawing, it is always a question of determining whether he has put in sufficient skill and labour to justify copyright protection for his result; (5) the AUVI logo was an artistic work which enjoyed copyright protection under the 1911 Act. By virtue of the transitional provisions in the Copyright Act 1987, the AUVI logo continues to enjoy copyright protection under the current law; (6) the applicants were 'persons aggrieved' within the meaning of s 39(1)(a) of the Act in that they had a 'real interest in having the register rectified'. The fact that the applicants had an alternative remedy available does not preclude the applicants from being 'persons aggrieved'. The applicants had a genuine interest in protecting their copyright in the logo and to have the mark removed from the register; (7) in order to be considered as 'persons aggrieved', the applicants need not show a trade rivalry between themselves and the registered proprietor. The construction of these two words should not be unduly limited and should be given a wide meaning. Whether a person has any real grievance must be looked at in the circumstances of the case; (8) to determine whether the AUVI mark is wrongfully remaining on the register, the relevant date would be the date on which the proceedings were commenced. Although on the date of registration of the AUVI mark the applicants were only owners in equity, on the date of the proceedings, they were already the legal owners of the copyright in the AUVI logo, and were therefore entitled to ask for rectification of the register; (9) there was no real delay on the applicants' part in coming to court for reliefs. Even if there had been some delay, there is no evidence that the respondents' position has been adversely or substantially affected by the alleged delay. In any event, delay on the part of an applicant in coming to court for reliefs is no bar to the application; (10) originality does not mean novelty or uniqueness;to vary a mark from a device mark to a word mark would involve a change which substantially affects the identity of the mark. It would amount to allowing a new mark to be entered on the register without giving third parties a chance to oppose. The court was not prepared to let the respondents have the exclusive right to the use of the four letters, AUVI, without requiring them to go through the normal process.

Re AUVI Trade Mark; Auvi Pte Ltd v Seah Siew Tee & Anor [1992] 1 SLR 639 High Court, Singapore (Chao Hick Tin J).

Two consolidated suits were brought by the plaintiffs, who are Australian-based companies, against the defendant, a company incorporated in Malaysia, for the enforcement of copyright in certain artistic works relating to pumps known as 'slurry pumps' which are designed, manufactured and distributed by the plaintiffs worldwide. In the lead action, the plaintiffs alleged that the defendant were reproducing slurry pump parts which were copies of the plaintiffs' slurry pump parts and engineering drawings of the same, with the intention to distribute their products by sale to the public. In the other action, the plaintiffs alleged that the defendant were reproducing certain moulds identical to the moulds used by the plaintiffs to make the slurry pump parts. The plaintiffs contended that they had not given their consent or licence to the defendant to copy, reproduce or manufacture any slurry pump parts or mould and any attempt by the defendant to indirectly copy, reproduce or manufacture any pump part or mould by a process known as 'reverse engineering' was an infringement of the plaintiffs' copyright to such parts and moulds and the three-dimensional form of the plaintiffs' slurry pump parts and moulds. In defence, the defendant pleaded that since they were not copying any of the plaintiffs' engineering drawings to reproduce the pump parts and moulds, reproducing such pump parts and moulds by way of reverse engineering does not amount to an infringement of either the plaintiffs' copyright to the engineering drawings relating to the pump parts and moulds or the three-dimensional form of the plaintiffs' slurry pump parts and moulds. Pursuant to a consent order made under O 33 r 2 of the Rules of the High Court 1980, the plaintiffs referred nine questions of law as preliminary issues: (1) Are engineering drawings (two-dimensional) capable of being eligible for copyright under the Copyright Act 1987 ('the Act') as 'artistic works'? (2) Are the three-dimensional products of such engineering drawings (two-dimensional) also within the meaning of the Act? (3) Do such three-dimensional works enjoy copyright in themselves, that is to say, in their three-dimensional form? (4) Is the material reproduction of the whole of the three-dimensional works or a substantial part thereof through copying by way of 'reverse engineering' an infringement of the copyright in such engineering drawings (two-dimensional)? (5) Is the material reproduction of the whole of such three-dimensional works or a substantial part thereof through copying by way of 'reverse engineering' an infringement of copyright in such three-dimensional works? (6) Can the copyright owner of the copyright in such engineering drawings (two-dimensional) enforce his rights under the provisions of the Act in respect of such infringement under question (4)? (7) Can the copyright owner of the copyright in such three-dimensional products enforce his rights under the provisions of the Act in respect of such infringement under question (5)? (8) Having regard to the provisions of the Copyright (Application To Other Countries) Regulations 1990, can copyright subsist in work which is eligible for copyright under the provisions of the Act, if such work originated from a specified country, although such work may not enjoy copyright protection under the laws of that specified country? (9) Does such a work described in question (8) above enjoy the rights and protection provided under the Act?

Held, determining all nine preliminary issues in the affirmative and making an order in favour of the plaintiffs: (1) the court rejected the defendant's argument that engineering drawings have no artistic quality and do not qualify for copyright protection as artistic works within s 7 of the Act. Since s 3 of the Act does not qualify the type of drawings eligible for protection and the provisions are wide enough to include engineering drawings, there is no room to limit the protection by imputing into the definition of 'artistic work' a qualification that the drawings must possess some form of artistic quality; (2) copyright not only vests in the engineering drawings (two-dimensional) as 'artistic works' but has been extended and enlarged to cover the finished products (three-dimensional) as well and which have been manufactured from the drawings. It therefore follows that three-dimensional works enjoy copyright in themselves; (3) 'reverse engineering' is nothing more than a technique or process by which a product or a substantial part of that product, is reproduced by indirectly copying through inspecting and measuring the product or a substantial part of the product without sight of the drawings or blueprints relating to the product or a substantial part of the product. It is clear that direct copying of drawings or other forms of artistic work as defined by the Act is an infringement and enforceable under the Act. Since the Act makes direct copying an infringement, it is only right and proper that indirect copying is also an infringement, as to conclude otherwise would go against the intention of the legislature in enacting the Act as it did. It therefore also follows that any material reproduction by reverse engineering of the whole or substantial part of the three-dimensional works must amount to an infringement of the copyright in such three-dimensional works under s 36 of the Act; (4) applying the provisions of ss 3, 13 and 32 of the Act to the facts of the instant case, the plaintiffs as the copyright owners of the engineering drawings, are entitled to enforce their rights under s 37 of the Act when the defendant infringed the copyright to the engineering drawings and any three-dimensional work by reproducing identical slurry pump parts and moulds by way of reverse engineering; (5) the Copyright (Application To Other Countries) Regulations 1990 ('the Regulations') accord copyright protection to works that originate in countries which are members of the Berne Convention. Both Australia, the home of the plaintiffs, and Malaysia are members of the Berne Convention. The provisions of the Act have through the Regulations been extended to Australia as well and by virtue of this, any specific work which originates in Australia which is eligible for copyright if such work had originated in Malaysia, would enjoy copyright protection even though the local laws of Australia do not accord such protection in such works. It follows that works from a specified country which do not enjoy copyright protection in their country of origin, nonetheless is vested with such protection under the Act; (6) the defendant argued that costs of the present application should be costs in the cause, as the nine questions were only raised as preliminary issues and the trial of the whole suit has not commenced. In rejecting the defendant's argument, the court considered that costs should follow the event and accordingly award costs to the plaintiffs in any event.

Peko Wallsend Operations Ltd & Ors v Linatex Process Rubber Bhd and another action [1993] 1 MLJ 225 High Court, Kuala Lumpur (Siti Norma Yaakob J).

D distributed 350 calendars containing unauthorized artworks by P, an artist. P claimed damages for infringement of copyright and loss of licence fee. D appealed and P cross-appealed against the assessment of damages. P also claimed a licence fee at twice the value of the artworks.

Held, allowing D's appeal and dismissing P's cross-appeal: (1) based on the actual sales of some of the artworks in Singapore and on P's own comparative pricing, the value of the artworks was assessed at S$15,000; (2) bearing in mind that only 350 copies of the calenders were involved, a licence fee of one and a half times the value is more than reasonable.

Ting Peng Yew v Singapore Envelopes Co Pte Ltd [1991] 2 MLJ 398 High Court, Singapore (Goh Joon Seng J).

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

Re AUVI Trade Mark; Auvi Pte Ltd v Seah Siew Tee & Anor [1992] 1 SLR 639 High Court, Singapore (Chao Hick Tin J).

Foo Loke Ying & Anor v Television Broadcasts Ltd & Ors [1985] 2 MLJ 35 Supreme Court, Kuala Lumpur (Abdul Hamid CJ, Hashim Yeop A Sani and Abdoolcader SCJJ).

Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors [1997] 2 MLJ 429 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

Creative Technology Ltd v Aztech Systems Pte Ltd [1997] 1 SLR 621 Court of Appeal, Singapore (Karthigesu and LP Thean JJA, Lai Kew Chai J).

The appellants (Creative) claimed that the respondents (Aztech) had disassembled and copied a substantial portion of the firmware program contained in the microprocessor of Creative's Sound Blaster Card. Creative also claimed that their copyright in TEST.SBC (a program ancillary to and supplied with the Sound Blaster package) had been infringed when it was copied for the purpose of effecting assembly through the running of the DEBUG program. Aztech denied disassembly of the firmware. However, they admitted that they ran the program TEST.SBC in order to make, they claimed, a non-infringing, compatible sound card. To run the program, it had to be downloaded, ie copied into the memory of a PC. Aztech argued, however, that the disassembly of TEST.SBC was a fair dealing for the purpose of research or private study under s 35(1) of the Singapore Copyright Act (Cap 63, 1988 Ed) (the Act). Alternatively, Aztech argued that as rightful owners of the TEST.SBC program, they had an implied license (following the principle in the case of Betts v Willmott) to use it for any reasonable purpose, including investigating how it interacted with the Sound Blaster card. The judicial commissioner below held that Creative had not shown that Aztech had access to the firmware program. He further found that the alleged similarities between the Aztech and Creative firmware had been successfully explained away by Aztech. As to the program TEST.SBC, he found that Aztech was entitled to rely on the defence under s 35(1) of the Act. Furthermore, such a use of TEST.SBC was a right of ownership implied in the software license.

Held, allowing the appeal: (1) after considering all the evidence adduced in the court below, the court was of the view that the similarities between the two firmware programs were such that the chance of independent development on the part of Aztech was low; (2) Aztech had the means and sufficient time to extract the firmware program from Creative's Sound Blaster card. The firmware located in the microprocessor chip was protected with varying degrees of efficacy depending on the manufacturer supplying the chip. Aztech could have obtained a Creative card without the protection mechanism at all in which case the contents of the firmware could have been accessed within minutes or alternatively, it could have overcome the protection mechanism by electronic means; (3) Aztech argued that the time frame within which they were alleged to have committed the copying was far too short. They produced evidence that it was necessary to analyse the entire firmware program in order to obtain useful information pertaining to the commands of interest to them. However, this cumbrous process could have been avoided through the location within the firmware program of the `command-dispatcher' which directed a command received by the card to the appropriate part of the firmware code. Once this command dispatcher was located, the portions of code pertaining to the commands of interest could be easily discerned. According to Dr Nichols, the expert assessor, Creative's command dispatcher would take an average programmer no more than a few days to locate; (4) the literal similarities which existed (including the programming errors) between the Aztech and Creative firmwares, when viewed in toto, raised the irresistible inference that the chances of independent development on the part of Aztech were low. Aztech failed to provide a reasonable explanation consistent with the absence of any copying through disassembly. The learned judicial commissioner failed to give effect to the cumulative weight and significance of all the similarities in reaching his decision, including similarities in non-essentials and errors; (5) reproductions had to be made of the whole or a substantial part of a work to constitute a copyright infringement: see ss 10(1)(b) and 26 of the Act. Although only 4% or less of Aztech's firmware code was actually identical to Creative's code and therefore did not amount to a `substantial taking', this did not prejudice the court's finding of infringement by disassembly which involved a degree of reproduction and adaptation having a greater impact in terms of revealing the ideas and interfaces of a copyright holder's program, insights which would not otherwise have been obtained by independent development or empirical observation within a given time frame; (6) although the trial judge's findings of fact were to be respected by an appellate court, they were not sacrosanct and could be reversed to correct findings of fact that were reached on the wrong basis. The learned judicial commissioner, while having considered the evidence as a whole, failed to address the cumulative weight of all the similarities as a whole; (7) creative contended that the judicial commissioner had erred in that he had held that the burden of proof remained with the party that asserted it. The burden of proof in a claim for copyright infringement remained with the plaintiff to prove copying and access to his work. Where there was sufficient resemblance shown between the two works, the court would be invited to draw an inference of copying which the defendant then had an opportunity of rebutting by giving an alternative explanation of the similarities. In the court's view, the burden shifted. The relevant question was whether the inference of copying could be displaced by evidence from Aztech of how they had arrived at their design and that they had not done so by copying. There was nothing to suggest, however, that the judicial commissioner did not apply these principles. This ground of appeal therefore failed; (8) the first defence relied upon by Aztech in relation to the TEST.SBC program was that of fair dealing found in s 35(1) of the Act. Establishing the defence involved two separate questions. Firstly, was the use for the purpose of research or private study? Secondly, was the use fair? Section 35(1) of the Act excluded commercial research, as well as private study for commercial purposes. The word `study' was qualified by the word `private' and should be construed to refer only to individuals actually performing a study. In order to come within the `private study' exception, the dealing (usually copying) had to be undertaken by the student himself. To adopt a broader construction of `private study' to include `private study for commercial purposes' would render otiose the specific exclusion of commercial research under s 35(5), in that all commercial research would almost inevitably be private study as well. It could not have been the intention of Parliament to propagatethis non-distinction. The respondents were therefore precluded from the defence in s 35(1) of the Act and there was no need to consider the second question as to whether the copying was `fair'; (9) the principle in Betts v Willmott which Aztech relied on had to be considered in the context of the facts of that case which concerned patent law. The court had difficulty in extending the well-founded proposition in patent law to the law of copyright. The essential difference between rights granted to the patent owner and the copyright holder was that the rights granted to the former included the right to use and sell the work. It was therefore necessary, in the context of patent law, that a right to use or sell the patented article be implied in favour of the purchaser who would otherwise not be able to do anything with what he had purchased. However, this principle did not sit comfortably with copyright principles. When a patented article was sold to an ordinary purchaser, the patentee had no legitimate expectation or interest in controlling the further use of the article by the purchaser. Effectively, there was nothing left of the patentee's rights. On the other hand, a copyright owner who sold his work still retained the economic and moral rights of authorship. Sale of such a product did not constitute the implied granting by the copyright owner of permission to do whatever the purchaser wished with the product. The principle in Betts v Willmott was inapplicable in the Singapore copyright context; (10) the British Leyland v Armstrong case was distinct from Betts v Willmott despite Aztech's contentions to the contrary. It was not an application of the principle in Betts v Willmott in the context of copyright law. It was also doubtful whether the right of repair as established in that case was indeed based on an implied license; (11) section 39(3) which was derived from s 117 of the US Copyright Act 17 USC 107 (1988) was enacted to achieve the limited purpose of permitting the rightful owner of the program to input and use it in his computer. Aztech's copy of TEST.SBC was not made as an essential step in the utilisation of the program in conjunction with the machine. On the contrary, copies were made as part of the running of the DEBUG program and not as part of an essential step in the utilisation of TEST.SBC. Aztech's conduct was not protected by s 39(3). The decision of Vault Corp v Quaid Software Ltd 847 F2d 255 insofar as its remarks on s 117 were concerned was unusually broad and not supported by other American courts. The section did not protect a user who `disassembles object code, converts it from assembly into source code, and makes printouts and photocopies of the refined source code version'.

Creative Technology Ltd v Aztech Systems Pte Ltd [1997] 1 SLR 621 Court of Appeal, Singapore (Karthigesu and LP Thean JJA, Lai Kew Chai J).

Creative Technology Ltd v Aztech Systems Pte Ltd [1997] 1 SLR 621 Court of Appeal, Singapore (Karthigesu and LP Thean JJA, Lai Kew Chai J).

Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors [1997] 2 MLJ 429 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

The plaintiffs were companies engaged in the business of designing, developing and marketing of software programs. They claimed that the defendants had infringed the copyright of their computer software programs (`the programs') by reproducing and distributing them to the public. The plaintiffs submitted that the defendants had `hacked' or modified the programs to circumvent the `dongle' which was a security feature for the programs. The plaintiffs argued that there was a statutory presumption in favour of the ownership being vested in the plaintiffs under s 26(4) of the Copyright Act 1987 (`the Act'). The defendants contended otherwise and further submitted that the authorship of a work was entirely different from `ownership' of the work, and relying on the definition of `author' in s 3 of the Act, submitted that the `author' of a work had to refer only to a natural person. The defendants denied any copyright subsisted in the programs, or that the second plaintiff was the creator or owner of the programs. The defendants claimed that the programs were the joint works of the first plaintiff and the first and second defendants, thus making the parties as joint owners of the copyright. Even if there was a copyright on the programs, the programs alleged to be infringing were the improved and upgraded versions of an existing program which the copyright did not cover. It was also the case of the defendants that the plaintiffs had infringed the copyright of a similar predecessor program operated by CSM. The defendants further contended that they had the licence or consent of the plaintiffs by way of an oral distributorship agreement between the second plaintiff and the first defendant and that the plaintiffs had acquiesced to it by acts done; therefore, the plaintiffs were estopped and precluded from denying the implied licence of the defendants in reproducing, distributing and modifying the programs and their improved versions. The issues before the court were, inter alia, whether: (i) the programs were protected by copyright; (ii) there was an infringement; (iii)the ownership in the copyright vested in the plaintiffs; (iv) the improved versions could attract copyright; and (v) there was an implied licence.

Held, allowing the plaintiffs' claim: (1) software programs were protected by s 3 of the Act which should be read broadly to include all manifestation of that set of instructions which could be read by a computer in whatever converted form; (2) the `hacking' done by the defendants to circumvent the `dongle' was in fact an infringement of the copyright although it was done without direct copying of the original program; (3) s 7(2) of the Act provided that although the quality of a work was unimportant, a literary work was eligible for copyright if the requirements of sub-s (3) of the section were fulfilled. Copyright protection had to be given to the work and not to the idea and that so long as original skill and labour was extended, copyright protection had to prevail. A computer program such as the plaintiffs', as a species of `literary work' under Malaysia law, was eligible for copyright if `sufficient effort' had been expended on it to render the work `original' and the work was `reduced to material form'. Even if the allegation that the plaintiffs had infringed CSM's earlier copyright was true, the resultant program of the plaintiffs, if `original', would attract separate copyright by virtue of s 7(4) of the Act. It was also not right to say that copyright could subsist in some parts of a literary work without subsisting in other parts, and that no copyright would be held to subsist in those parts which consisted of copied raw material on which no labour and skill had been expended; (4) since CSM was not a party to this instant suit, it was impermissible to assume questions of ownership of the earlier versions without proper evidence being led and the issues proven; (5) if an `author' could also mean a `qualified person' and `qualified person' was defined by the Act as including a body corporate, it could not be right to read the word `author' in s 26(4) as referring only to natural persons. In the fast developing sphere of corporate ownership, it is incongruous to hold that a corporate body could not claim entitlement to copyright ownership. Once there was on display on the program the name of a person or a corporate body (in this case, the plaintiffs), then by virtue of s 10 of the Act read together with s26(4) of the Act, copyright ownership should vest in that said person or corporate body; (6) there was no evidence to suggest any implied licence granted to the defendants. The acts as alleged to acquiesce the agreement were not proven. With the implied licence, the defendants would not need to circumvent the `dongle'.

Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors [1997] 2 MLJ 429 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

Creative Purpose Sdn Bhd & Anor v Integrated Trans Corp Sdn Bhd & Ors [1997] 2 MLJ 429 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

Berjasa Information System Sdn Bhd v Tan Gaik Leong (t/a Jurukur Berjasa) & Anor [1996] 1 MLJ 808 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

Berjasa Information System Sdn Bhd v Tan Gaik Leong (t/a Jurukur Berjasa) & Anor [1996] 1 MLJ 808 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

The appellants, a Malaysian company, and their branch in Singapore, develop and sell computer interfaces, both hardware and software. They claim that since 1984 they have become best known for their PABX interface system. The respondent was employed by the appellants as a systems engineer and was involved in installing and modifying programs of the appellants' Call Accounting Interface System ('CAI'). In October 1985, he was relieved from doing installation work as the appellants' director noticed that the respondent was looking through and modifying previously written programs. The respondent resigned in February 1986 and undertook in writing that he would, upon termination of his employment, return to the appellants 'all documents, manuals and software that [were] related to products developed and supported by [the respondent] throughout [the respondent's] period of employment'. In 1986, the appellants learned that another company was offering an alternative software program in relation to the call accounting system and known as 'TMS-11'. They received information that the company had installed a telephone call accounting system for a hotel which was similar to the CAI system. They also received a copy of the company's program which the appellants believed were directly modified from their CAI program. A search at the Registry of Companies revealed that the respondent has been a director and secretary of the company from July 1986. On 11 May 1987, the appellants issued a writ against the respondent alleging infringement of copyright, misuse as a former employee of confidential information and breach of fiduciary duties. The claim is for damages, and an injunction restraining the respondent from using or disclosing any trade secrets and confidential information relating to the appellants' computer programs. On the same day, the appellants applied ex parte and obtained an interim injunction and an Anton Piller order. The appellants carried out a raid on the respondent's premises and seized several articles and documents. The appellants later filed a notice of motion for various interlocutory orders. After hearing the application, the court ordered, inter alia, the return of all documents, diskettes, etc relating to the respondent's TMS system which were obtained in the raid and to pay damages to the respondent to be assessed by the registrar for the retention of the respondent's things. The appellants appealed against the order, and also sought an order to restrain the respondents from publishing, selling or otherwise dealing with his TMS programs or any other programs which either reproduce or are adaptations of the CAI system.

Held, allowing the appeal and granting the orders sought: (1) the court was satisfied that there was a serious question of infringement to be tried and that the guidelines of American Cyanamid were not followed by the learned judge; (2) the controversial nature of the competing expert evidence was such that it was impossible in an interlocutory proceeding to form any confident finding of fact on the extent of copying, and that there was infringement under the Copyright Act (Cap 63, 1988 Ed); (3) the interlocutory view of the appellate court was that questions whether copyright in the CAI system had subsisted under the 1911 Act and whether there were infringements by the respondent were also serious questions which had to be fully canvassed and tried; (4) the learned judge had erred in finding that no impropriety on the part of the respondent had been shown and in concluding that the appellants' claim 'was a highly contentious claim'. There was also affidavit evidence, which was not really controverted, that the company had developed other computer programs and are able to continue with their business; (5) damages would have been difficult to assess, as it would be difficult to establish a co-relation between any drop in the sales of the appellants with the alleged infringements and alleged breaches of fiduciary duties of fidelity and confidence. The learned judge's finding that this was 'pre-eminently a case for damages' was therefore not accepted; (6) the appellants had over three-and-a-half years developed their CAI system, and had incurred expenses doing so. The learned judge had enjoined the respondent from using the trade secrets and confidential information relating to the CAI system and there was no warrant why the respondent should not have been enjoined not to copy or adapt the appellants' CAI system in their TMS, TMS-11 or any other adaptation of any of the appellants' CAI system.

Federal Computer Services Sdn Bhd v Ang Jee Hai Eric [1991] SLR 259 Court of Appeal, Singapore (Yong Pung How CJ, Lai Kew Chai and Chao Hick Tin JJ).

Berjasa Information System Sdn Bhd ('the plaintiff company') was incorporated by one Aw Kong Koy ('Aw') and the first defendant who were both directors and shareholders of the company in the proportion of 60% and 40% respectively. The plaintiff company was incorporated for the purpose of proposing and supplying a software system to Lembaga Air Perak ('the second defendant') for its map and asset management project. The proposal for the software system was prepared by the plaintiff company and presented to the second defendant in the name of the first defendant. By letter dated 10 January 1991 ('the assignment letter'), the first defendant assigned the development of the project (save for the surveying part of it) to the plaintiff company in return for a 3% fee on claims made by the plaintiff company. The plaintiff company accepted the assignment. The first defendant then entered into an agreement ('the agreement') with the second defendant, whereby the first defendant was described as a consultant, and it was provided that the copyright of the software should remain the property of the first defendant. Aw, in his affidavit, affirmed that he was the author of the software which he prepared for and on behalf of the plaintiff company, and he averred that in the circumstances, the copyright of the software system belonged to the plaintiff company. At the commencement of the software system, the plaintiff company's copyright notice was displayed as part of the system. The defendants had been using the software system since early 1991 and had not registered any objection over the plaintiff company's claim to the copyright as displayed in the copyright notice. On 4 September 1993, the first defendant, relying on the agreement entered into between himself and the second defendant, claimed copyright over the software system. Subsequently, the first defendant informed the plaintiff company that its services were no longer required. The plaintiff company applied to the High Court for a declaration that the software system was owned, with regard to copyright, by them, and a further declaration that they were entitled to display the copyright notice on the software system. They contended that the first defendant was estopped from claiming copyright to the software as neither defendants had, prior to September 1993, registered a protest over the plaintiffs' claim to copyright at the start of the system, and that although the second defendant had averred that it had directed the first defendant to remove the copyright notice, the second defendant had not written to the plaintiff company in that regard. The first defendant claimed that the copyright belonged to him, on the basis that: (i) he had only commissioned the plaintiff company to prepare the system; and (ii) an assignment in accordance with s 27(3) of the Copyright Act 1987 ('the Act') had to be in writing and referred to specifically, but there was nothing in the assignment letter which indicated that the ownership of the copyright had passed with the assignment of the project.

Held, allowing the plaintiffs' application: (1) from the assignment letter, it was the clear intention of the first defendant that the plaintiff company should author the software system, minus that part which dealt with the survey. It was an unequivocal appointment to create the software system; (2) there was no evidence to show that the plaintiff company was commissioned by the first defendant to prepare the software system. The very fact that the plaintiff company were incorporated showed that it was the desire of both the directors that whilst one director (the first defendant) prepared the survey and the proposal to the project, the other director (Aw) would produce or author the software system incorporating the survey plans and drawings in computer callisthenics. In any event, relying on the definition of 'author' in s 3(g) of the Act, and since the software system was prepared by the plaintiff company through Aw, the plaintiff company was the author; (3) from the documentary evidence and the affidavits, there was a clear intention to vest the copyright ownership in the plaintiff company. From the time the software system was developed, the plaintiff company's claim to copyright was displayed prominently as a copyright notice. However, neither of the defendants registered a protest; (4) furthermore, if the defendants had commissioned the plaintiff company to do the work, there was no reason why a series of debit notes were forwarded by the plaintiff company to the first defendant for various services. There ought to have been one invoice to have the entire sum claimed. Moreover, in the assignment letter, there was no mention of the plaintiff company's fees. The only fees referred to therein was the first defendant's fees; (5) the conduct of the defendants and their act of silence had estopped them from claiming ownership of the copyright; (6) since the plaintiffs were regarded the authors, the burden was on the first defendant to show that there was an assignment of the copyright in order for s 26 of the Act to operate in his favour but he failed to do so; (7) the word 'assignment', referred to in the assignment letter had the meaning given to it in the Concise Oxford Dictionary, ie 'something assigned especially a task allotted to a person'. In the instant case, the plaintiff company, through the expertise of Aw, were assigned the task of producing the software system whilst the first defendant reserved to himself the task of surveying; (8) the reference to s 27(3) of the Act by the defendants' counsel would seem to suggest that his clients had the copyright to assign. But that was not the case; (9) (per curiam) in drafting affidavits, it is not only the legal duty of a practitioner, but also his moral duty, to address his mind properly to the preparation of an affidavit so that it would reflect a cogent and cohesive narration of facts being a true reflection of his client's case. A client is not expected to have the knowledge of a solicitor in legal draftsmanship. A practitioner, therefore, owes a duty to prevent his client from affirming an affidavit that bears contradictions to any earlier averments, and to safeguard him from a possible charge of making a false affidavit.

Berjasa Information System Sdn Bhd v Tan Gaik Leong (t/a Jurukur Berjasa) & Anor [1996] 1 MLJ 808 High Court, Kuala Lumpur (Kamalanathan Ratnam JC).

This appeal arose out of a criminal prosecution brought by way of private summons under a fiat by the Public Prosecutor. Chuang Ping Derg (Chuang), also the complainant, was the managing director of Rahmonic Resources Pte Ltd (Rahmonic). The respondent was a company in Singapore that builds mechanical handlers. Its managing director was Kerwin Ang. Together both companies entered into a joint venture project for NSC Penang. Their collaboration entailed Rahmonic supplying the software that resided in vision systems as well as vision hardware. The respondent supplied the mechanical handlers. After the two companies parted ways, a total of 12 charges were brought against the respondent for various offences under ss 136(1), 136(2) and 136(3) of the Copyright Act (Cap 63) (the Act). The software which were relevant to these charges were the tGraph, TM/TC Driver and Mark and Lead Inspecting program (version 1.5) used in the semi-conductor industry. The appellant's case was that these three software programs were Chuang's creation and that the proprietorship of their individual copyrights vested in him. Chuang claimed that the respondent had sold or distributed these software programs without authority to third parties and were thus guilty of the offences charged. On 19 May 1993, pursuant to two search warrants issued under s 136(9) of the Act, these software programs were allegedly found in the respon-dent's premises in one of its computers. Chuang also alleged that he had the opportunity to visit the premises of a company in Kuala Lumpur, Malaysia called 'Harris' with his counsel. There he found that the vision software which they were using were suspiciously similar to his copyrighted software. Chuang claimed that Haltech (M) Sdn Bhd (Haltech), another Malaysian company, is the distributor for the respon-dent in that country. Thus, the appellant contended that a sale had been made to Haltech, and the latter subsequently sold the software to Harris. The trial judge found that there was prima facie evidence of the subsistence of the copyright in the said three software programs. There was also prima facie evidence of the respondent's knowledge or constructive knowledge that the copies of the software found in its premises pursuant to the search warrants were infringing copies. However, he held that the appellant had failed to adduce sufficient evidence to support the elements of 'sale', 'possession for the purposes of sale', 'distribution for purpose of trade' and 'make for the purpose of sale' as required in the corresponding 12 charges respectively. Consequently, there was no case to answer, and he acquitted the respondent of all the charges. The appellant appealed.

Held, dismissing the appeal: (1) at the close of the prosecution case, where only circumstantial evidence is adduced, the court would look at the totality of the evidence and draw the reasonable inferences from the primary facts. All that was required at this stage was a minimum evaluation of the evidence as a whole; (2) the present case involved only circumstantial evidence. Based on the totality of the evidence here, it was pure conjecture that a sale or distribution to Haltech had taken place. In the absence of direct evidence, more circumstantial evidence was required to satisfy the Haw Tua Tau test on the facts of this case. A reasonable inference had to point to a distinct and reasonable possibility and not just a mere suspicion. Mere possession of the infringing works per se did not prove that they were for the purposes of sale or distribution. Inferences amounting to conjecture and speculation were clearly not within the contemplation of the Haw Tua Tau test. Thus, it was unreasonable to infer that a sale or distribution had taken place; (3) the presumption of sale under s 136(7) of the Copyright Act applied only when at least five copies of the work could easily be made available independently. This was because the possession and sheer number of independent copies would imply that they were for sale. In the present case, all the alleged copies were found in a single computer. Since there was no possibility of making quick and independent sales, the presumption was inapplicable. In any case, even if the presumption of sale were invoked, it was already so obviously rebutted by the prosecution's own evidence that an essential element of the charge could not be supported; (4) the power conferred under s 58 of the Criminal Procedure Code (Cap 68) to produce any document or thing was specific. An applicant must be precise as to the documents which he wished the other party to produce. To allow otherwise, in the present case, was clearly unfair to the respondent since this would have practically permitted the applicant (the appellant) to initiate criminal proceedings against the respondent without having first amassed sufficient evidence to make his case. The scope of the summons here was too wide and amounted to a 'fishing expedition'. Therefore, the application had been rightly refused.

Public Prosecutor v IC Automation (S) Pte Ltd [1996] 3 SLR 249 High Court, Singapore (Yong Pung How CJ).

Sunvic Production Pte Ltd (referor) v Composers and Authors Society of Singapore Ltd (licensing body) [1993] AIPR 194 Copyright Tribunal, Singapore (Khoo Oon Soo (President).

The referor, Sunvic Production Pte Ltd ('Sunvic'), brought a reference under s 161 of the Copyright Act ('the Act') in respect of a licence scheme entitled 'Standard Tariff LP (Singapore)' covering the grant of licences for the public performance of light or popular music in places where a charge is made for admission. The licence scheme was first brought into operation in Singapore in 1988 by the Performing Rights Society ('PRS'), the predecessor of the Composers and Authors Society of Singapore Ltd ('Compass'). The initial reference was brought by Sunvic on 8 October 1992 under s 163(2) of the Act in respect of three past concerts and 'all future concerts'. At the commencement of the hearing, the tribunal dealt with the powers of the tribunal under s 163(1) of the Act and held that there was no power to make a retrospective order for the three past concerts and the application in respect of 'all future concerts' was not one which was properly formulated under s 163(2) of the Act, which was for a specific entertainment: a particular concert or event. The tribunal agreed with the submission by Compass that Sunvic should in fact have made a reference under s 161 of the Act in respect of the dispute over future concerts. As a result of the decision of the tribunal on the scope of the tribunal's jurisdiction under s 163(2) of the Act, Sunvic applied, on the first day of the hearing, to change the basis of the hearing to a reference under s 161(1)(b) of the Act, which was not objected to by Compass, and the tribunal exempted Sunvic from having to comply with the procedural requirements of advertisement of the reference and service of notice of the reference. The reference under s 161 of the Act was filed on 9 September 1993. Sunvic's main objection was that the tariff rate which was fixed in the licence scheme at 3% of the gross admission receipts, less entertainment tax, was unreasonable. Sunvic's grounds for lowering the tariff rate were, inter alia, that: (a) the artistes performing in concerts had already been paid large sums for performing; (b) music use was only one of the several factors which went towards the making of a concert; (c) the rate in Singapore was higher than in Hong Kong, Australia and Malaysia; (d) there was a need to lower costs and encourage the development of the industry; (e) the 3% tariff rate could represent a substantial percentage of the net profits of the promoter; and (f) most of the licence fees would be remitted overseas. Sunvic proposed that the tariff rate be set at 1.5% on the first S$150,000 and 1% on the second S$150,000 and 0.5% on the balance. The proposal also included deduction from the gross ticket receipts, ticket booking fees or charges and credit card charges.

Held, determining that a reasonable rate in Singapore was 2.5% of the gross ticket receipts, less entertainment tax: (1) on a reference of an existing licence scheme under s 161(5) of the Act, the order of the tribunal confirming or varying the scheme under s 161(5) will relate to cases included in the class of cases to which the reference relates. All cases covered by the class will be affected; (2) on a reference under s 161, the tribunal has no power to backdate its order and the effective date is the date of the order. Until the tribunal gives its decisions, the licensor is entitled to license on the terms set out in his scheme and he cannot be compelled by the prospective licensee, before the decision, to accept other terms. Moreover, the tribunal has no power under s 161 to substitute an entirely different scheme for the one referred to it; (3) the payment to the artiste is in respect of his appearance and his performance. The royalty payment is in respect of the copyright in the works that are publicly performed and is geared towards securing the economic value of that right as a chose in action; (4) its importance, however, cannot be ignored; (5) evidence that there is a degree of market acceptance of the 3% rate is not conclusive on the issue of whether the rate is reasonable; (6) the rate in other countries may serve as useful comparison but undue weightage should not be attached. The issue is whether the rate is reasonable in the context of conditions in Singapore; (7) the fact that some concerts have turned in losses has to be balanced with the principle that it is not for copyright owners to subsidize those losses; (8) it would not be right to depress the royalty rate on account of the fact that the ultimate beneficiaries in many cases would be foreign authors and composers; (9) deductions for ticket booking fees such as those charged by ticketing agents SISTIC and credit card charges should not be allowed; (10) a fair and reasonable rate is a fixed percentage rate as opposed to a sliding percentage rate as it does not discriminate between show promoters and is applied uniformly across the board; (11) the music may not always be the dominant consideration in the minds of the audience in a live performance;'reasonableness' is not a factor which can be pinned down with mathematical precision. It is essentially a question of what is fair in the local circumstances. The reasonable rate in Singapore is 2.5% of gross ticket receipts less entertainment tax.

Sunvic Production Pte Ltd (referor) v Composers and Authors Society of Singapore Ltd (licensing body) [1993] AIPR 194 Copyright Tribunal, Singapore (Khoo Oon Soo (President).

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

The plaintiff was a writer of two literary works entitled 'Jalan Yang Berlubang' and 'Ukuran Hati Mulia' (hereinafter referred to as the said literary works). The plaintiff sent 30 manuscripts amongst which was the said literary works to the defendants who were a firm of book publishers. There was an oral agreement with the defendant's editor called Encik Alias sometime in 1977 or early 1978 whereby in consideration of advance royalties of $300 and an annual payment of royalty of 10% of the retail sale price of each copy of the said literary works sold, the defendants were given a licence to publish and sell by way of trade to the public the said literary works. There was to have been a written agreement but no such written agreement was made as the plaintiff was told by the defendants that 'it would be signed later'. However, in early 1980 the plaintiff discovered that the words 'oleh Mokhtar AK' were printed on the cover of the said literary works. As Mokhtar AK is another writer, the plaintiff complained that the intention of the defendants was to convey the idea that the said literary works were written by Mokhtar AK. On the reverse side of the title page of each of the said literary works, the name of the defendants was printed immediately after a letter 'C' within a circle which indicated that the ownership of the copyright belonged to the person whose name followed it. The plaintiff brought an action against the defendants for copyright infringement. The only issue before the court was the award of damages.

Held: (1) compensation cannot be given for any remote and indirect loss or damage sustained by reason of the breach of the agreement. But the plaintiff was entitled to damages for infringement of his copyright in the said literary works; (2) in an action for infringement of copyright damages have been said to be at large ie not limited to the pecuniary loss that can be specifically proved. Where the plaintiff's proper feelings of dignity and pride have been injured aggravated damages may be awarded; (3) taking a conservative and less liberal view, the plaintiff would be entitled to damages in the sum of $2,500.

Mokhtar Haji Jamaludin v Pustaka Sistem Pelajaran [1986] 2 MLJ 376 High Court, Kuala Lumpur (Gunn Chit Tuan J).

Lance Court Furnishings Pte Ltd v Public Prosecutor [1993] 3 SLR 969 High Court, Singapore (Kan Ting Chiu JC).

P made a complaint under the Copyright Act (Cap 63) that D had infringed their copyright. As a result of the complaint, a search warrant was issued for the seizure of various documents, including industrial drawings. The warrant was executed on 12 April 1990 but upon the intervention of D's solicitors, the documents were handed over to the police. On 19 April P commenced the present action for breach of copyright and obtained an ex parte interim injunction and an Anton Piller order authorizing them to seize certain equipment, industrial drawings and commercial papers. D subsequently obtained an order suspending the operation of the injunction and the Anton Piller order. On 3 and 4 May, P made copies of documents released to them by the police. These were the documents originally seized under the search warrant. D applied to court for an order restraining P from using the photocopies for the present proceedings.

Held, dismissing the application: (1) the court rejected the argument that evidence obtained for the purpose of criminal proceedings could not be used for civil proceedings; (2) if D had been pro-secuted under the Copyright Act and the documents had been produced in court, P would have been en-titled to have access to them for the purpose of proving their claim in the civil action, even if D had been acquitted. The fact that there was as yet no prosecution could not make any difference as the information that P had obtained was information to which they would have been entitled in discovery proceedings; (3) even if the search warrants had not been issued, P would have secured the documents under the Anton Piller order; (4) as there was no allegation that P was copying the documents for any purpose other than the civil proceedings that they had already commenced, D's application was dismissed with costs.

Ransome/Tempil Inc v Romar Positioning Equipment Pte Ltd & Anor Suit No 705 of 1990 High Court, Singapore (Chan Sek Keong J).

In this case, the shops of all the plaintiffs were raided by the police and the video tapes (which were thought to have infringed the copyright of the defendant) that were found on the premises were seized. Three of the directors of the fourth, fifth and sixth plaintiffs were arrested and later released on bail of $10,000 each. Two of the directors were subsequently charged before a magistrate and their cases were pending. On 20 January 1981 the plaintiffs took out an originating summons in the Commercial Division of the High Court to secure a declaration that copyright should not subsist in a work under s 6(1)(a) of the Copyright Act 1969 (Act 10) if a foreigner is not a permanent resident or resident in the country.

Held: (1) the word 'author' has no nationality. It means exactly what it says. It is an originator, like the author of a book. It does not mean a local author or an author who is a citizen nor could it mean someone who is not a foreigner. The word 'author' could not mean a resident author or a foreign author who was present in the country; (2) this was not a proper case in which the discretion of the court should have been exercised to make the declaration sought for by the plaintiffs.

Lee Yee Seng & Ors v Golden Star Video Bhd [1981] 2 MLJ 43 High Court, Kuala Lumpur (Chan J).

Peko Wallsend Operations Ltd & Ors v Linatex Process Rubber Bhd and another action [1993] 1 MLJ 225 High Court, Kuala Lumpur (Siti Norma Yaakob J).

The plaintiff was an Australian company which carried on the business of, among other things, shipbuilding. They claimed copyright in certain specifications and drawings of certain vessels by reason of their first publication in Australia in 1981 or thereabout. By a notice of motion dated 29 August 1986, the plaintiff applied for, inter alia, (i) an interim injunction restraining the defendants and each of them until after the trial of this action or until further order, whether by their officers, servants or agents or otherwise howsoever, from infringing and/or causing, enabling or assisting others to infringe the plaintiff's copyright and (ii) a mandatory injunction for delivery to the plaintiff's solicitors copies of the specifications and drawings and all other plans, working drawings and written information relating to those vessels that were in their possession, custody or control. The issue before the court was whether the plaintiff had copyright in Singapore in the specifications and drawings under the Copyright Act 1911 of the United Kingdom as applied in Singapore.

Held: (1) upon the repeal of the 1911 Act by the Legislature in Australia in 1969, Australia ceased to be a 'dominion to which this Act extends' as stated in s 26(1) of the 1911 Act. Therefore the 1911 Act no longer extended to Australia; (2) work emanating from Australia after 30 April 1969 did not enjoy any copyright protection. Hence the plaintiff did not have any copyright in the specifications and drawings under the 1911 Act in Singapore.

Australian Shipbuilding Industries (WA) Pty Ltd v Assets Able Pte Ltd & Anor [1986] SLR 495 High Court, Singapore (LP Thean J).

Television Broadcasts Ltd & Ors v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346 High Court, Kuala Lumpur (Chan J).

The first respondent, a limited company incorporated in Hong Kong, are the makers and owners of the copyright in certain cinematograph films in Hong Kong, and the second and third respondents are respectively the licensee and sub-licensee in Malaysia. The films were video recordings to be shown on television screens for which purpose they were copied on to tapes for sale and hire as video cassettes. The films were published in Malaysia within 30 days of their first publication in Hong Kong. The appellants in a representative action suing on behalf of themselves and other members of the Perak Video Tape Dealers Association issued a writ seeking a declaration that the first respondent is not entitled to copyright in Malaysia in respect of the cinematograph films produced by them in Hong Kong and consequential injunctive relief and damage. George J dismissed the appellants' claim and they appealed against the decision.

Held: (1) video-tape comes within the definition of 'cinematograph film' in s 2(1) of the Cinematograph Films Act 1969. The definition of 'cinematograph film' makes no reference to cinematography or any other process but concentrates chiefly on the essential characteristic of a sequence of visual images capable of being shown as a moving picture; (2) the marginal note to s 5 of the Copyright Act 1969(Act 10) reads 'Copyright by virtue of citizenship or residence' and that to s 6 'Copyright by reference to country of origin'. It is therefore abundantly clear that they are distinct provisions to be read separately and operating independently of each other; (3) the provisions of the Act under consideration call for a purposive and literal construction which is one that follows the literal meaning of the enactment where that meaning is in accordance with the legislative purpose and applies where the literal meaning is clear and reflects the purposes of the enactment. There is no justification or warrant to read the provisions of ss 5 and 6 together so as to restrict the application of s 6 only to works eligible for copyright as specified therein of which the author is a qualified person as defined in s 5; (4) there is ambiguity in s 2(2) of the Act and on the provisions of the Act as they now stand 'any country' must necessarily mean Malaysia and would include any other qualifying country to which the Act is extended under the provisions of any regulations if and when made under s 20. In this case there was publication in Hong Kong in the first instance and upon publication in Malaysia within a period of 30 days of the earlier publication in Hong Kong within the intendment of s 2(2)(c), the provisions of s 6(1)(a) of the Act would operate to confer copyright on the films in question. The first respondent as the author is accordingly vested under s 12 of the Act with copyright in respect thereof.

Foo Loke Ying & Anor v Television Broadcasts Ltd & Ors [1985] 2 MLJ 35 Supreme Court, Kuala Lumpur (Abdul Hamid CJ, Hashim Yeop A Sani and Abdoolcader SCJJ).

[Annotation: The report of this case published in [1985] 2 MLJ 35 sets out both the lower court judgment and the judgment of the appeal court.]

The first plaintiffs were a limited company incorporated under the laws of Hong Kong with a registered office in Hong Kong. The second plaintiffs were a limited company incorporated under the laws of Malaysia with a registered office in Kuala Lumpur. The first plaintiffs claimed that they were the copyright owners of the disputed cinematograph films. On 15 September 1980 the second plaintiffs entered into a licence agreement with the first plaintiffs whereby the second plaintiffs were granted by the first plaintiffs the exclusive rights in Malaysia to (a) distribute the said cinematograph films produced by the first plaintiffs on videogram by way of rental and (b) to produce videograms of the said cinematograph films for rental distribution. The plaintiffs claimed that the defendants had, without licence and/or consent from the plaintiffs, infringed the first plaintiffs' copyright by reproducing for distribution the said cinematograph films and/or distributing them or exhibiting publicly the infringing copy video cassettes. The plaintiffs applied to the court and obtained an Anton Piller order against the defendants. The defendants sought to set aside the said order.

Held, allowing the defendants' application: (1) there is no provision in the Copyright Act 1969 (Act 10) which directly confers copyright in Malaysia in respect of works originating in a foreign country; (2) since the first plaintiffs were a company incorporated under the laws of Hong Kong with a registered office in Hong Kong, they could not claim copyright under the Copyright Act in Malaysia in respect of the said cinematograph films broadcast in Hong Kong; (3) there is no evidence that Malaysia had concluded any bilateral arrangement with the United Kingdom to protect copyright of works originating in Hong Kong. Malaysia, therefore, is under no legal obligation whatsoever to protect copyright of works originating in foreign countries; (4) since the second plaintiffs were not the authors of the said cinematograph films they could not claim any copyright in this country because copyright conferred by s 6 of the Copyright Act rests only in the author; (5) since both the first and the second plaintiffs did not have copyright in respect of the said cinematograph films in this country, they were not entitled to the Anton Piller order granted on 27 June 1983. The said order should therefore be set aside.

Asia Television Ltd & Anor v Mega Video Recording Supply Centre [1985] 1 MLJ 250 High Court, Kuala Lumpur (Zakaria Yatim J).

[Annotation: See also Foo Loke Ying v Television Broadcasts Ltd & Ors [1985] 2 MLJ 35 where a subsequent decision of the Supreme Court decided not to follow the Asia TV decision.]

In this case, the plaintiffs had obtained an interim injunction by which the defendant was restrained from committing various acts of infringing the copyright in respect of cinematograph films. The order incorporated directions of the Anton Piller type authorizing the plaintiff to enter the premises of the defendant for the purpose of removing infringing materials and inspecting and photographing instruments and materials. The defendant applied to set aside the interim injunction on the following grounds: (a) the damage in this case was not irreparable and the injunction ought to be set aside; (b) the affidavit sworn by the general manager of the third plaintiff was improper in view of s 12A(2) of the Copyright Act 1969 (Act 10) which requires the affidavit to be made by a responsible officer of the company; (c) as the first and second plaintiffs were foreign companies they could not acquire any copyright in Malaysia unless there was an executive order to extend the application of the Act to such foreign companies or citizens of a foreign country as a result of some international treaty signed for that purpose; (d) the third plaintiff was a bare licensee and could not therefore sue in his own name.

Held, dismissing the application: (1) the applicant for an injunction must show that damages would not be an adequate remedy and one of the ways of establishing this is to show that the damage is irreparable when for example the act complained of is likely to destroy the subject matter in question. In this case publication of the cinematograph films in the form of video cassettes could be regarded as such destruction of the copyright and therefore the plaintiffs had shown that the damage was irreparable; (2) the provisions of s 12(A)(2) of the Copyright Act 1969 are merely directory and not mandatory. The defendant need not be a salaried or high ranking employee of the first or second plaintiff to be such a responsible officer. Such a responsible officer would include an attorney acting under a power of attorney or other person duly authorized by the company or body of persons; (3) s 6 of the Copyright Act 1969 enabled a foreigner to acquire copyright in Malaysia; (4) a non-exclusive licensee can sue in his own name if he joins the copyright proprietor.

Television Broadcasts & Ors v Seremban Video Centre Sdn Bhd [1985] 1 MLJ 171 High Court, Seremban (Peh Swee Chin J).

In this case, three actions were consolidated by an order of court made on 6 September 1982. The plaintiffs brought an action against the same defendant for infringement of their copyright in those works. The main question before the court was how is the Copyright Act 1911 (hereinafter called the 1911 Act) to be construed: whether it is to be construed so as to confer copyright protection on the said works, all of which were first published in the United Kingdom, or only on works first published in Singapore.

Held, allowing the plaintiffs' claim: (1) the question for determination turns on the construction of the 1911 Act in the context of Singapore as a sovereign independent state; (2) the 1911 Act and para 41 of the Seventh Schedule to the Copyright Act 1956 of the United Kingdom were immediately before Singapore Day part of the law of Singapore and by virtue of s 13 of the Singapore Independence Act and art 162 of the Constitution continued in force thereafter and are still in force as part of the law of Singapore; (3) in construing the 1911 Act and following the majority decision in Public Prosecutor v Anthony Wee Boon Chye & Anor 1 MLJ 189, the expression 'the parts of His Majesty's dominions' in s 1(1) of the 1911 Act is to be construed as a geographical expression, ie a geographical area covering all countries which fall within the British dominions to which the 1911 Act extends. In the instant case, the United Kingdom is within this geographical area and the said works being first published there enjoy copyright protection.

Butterworth & Co (Publishers) Ltd & Ors v Ng Sui Nam; Longman Group Ltd & Anor v Ng Sui Nam; The Royal Academy of Music & Anor v Ng Sui Nam 1984 High Court, Singapore (LP Thean J).

[Annotation: Decision affirmed at [1987] 2 MLJ 5.]

In this appeal concerning infringement of the copyright of certain original literary works of the respondents, the appellant Ng Sui Nam appealed against the decision ('the main decision') of Thean J, who held in three consolidated suits that the respondent publishers were entitled to copyright protection in Singapore in respect of such original works first published in the United Kingdom during the following periods: (a) before 1 June 1957; (b) 27 January 1959 to 3 June 1959; (c) 3 June 1959 to 16 September 1963; (d) 16 September 1963 to 9 August 1965; and (e) 9 August 1965 to the present. (See [1985] 1 MLJ 196.) The learned judge also decided ('the single period decision') that such works first published in the United Kingdom during the period from 1 June 1957 to 26 January 1959, were not entitled to copyright protection. In the result, the appellant appealed against the main decision and the respondents cross-appealed against the single period decision. The appellant contended that the said works were not entitled to copyright protection in Singapore in any of the six periods, whereas the respondents contended otherwise. Counsel for the appellant said that the appeal, although arising out of a copyright dispute, involved a point of constitutional law, which is whether and to what extent the Copyright Act 1911 of the United Kingdom ('the 1911 Act') requires reinterpretation and, if so, what it should be, as a result of Singapore becoming an independent state on 16 September 1963. The 1911 Act came into force in Singapore when it was part of the Straits Settlements on 1 July 1912, pursuant to a proclamation by the Governor. The 1911 Act was repealed in the United Kingdom by the Copyright Act 1956 ('the 1956 Act') on 1 June 1956. The 1956 Act was not extended or applied to Singapore except para 41 of the Seventh Schedule thereof, which in a modified form was extended to Singapore on 26 January 1959, by the Copyright Act 1956 (Transitional Extension) Order 1959 (SI 193 of 1959) ('the 1959 Extension Order'). On 16 September 1963 ('Malaysia Day'), Singapore became independent as a constituent state of the Federation of Malaysia. As part of the constitutional arrangements Singapore was granted a constitution ('the Constitution of Singapore') by an Order in Council (SI No 1495 of 1963). On 9 August 1965 ('Singapore Day'), Singapore ceased to be a state of Malaysia and became an independent and sovereign republic. The main decision turned on the meaning of the following expression ('the crucial expression') in s 1(1) of the 1911 Act: '... copyright shall subsist throughout parts of His Majesty's dominions to which this Act extends... ' The single period decision depended upon the construction of the Seventh Schedule of the 1956 Act. The appellant's case was that, as a consequence of Singapore becoming an independent state, the crucial expression underwent a transformation to refer only to 'Singapore'. The respondents' contention is that the word 'extends' refers to all those countries which (including those which have since 1911 become independent) once constituted parts of His Majesty's dominions to which the 1911 Act extended and in which the 1911 Act has not been repealed. The respondents also contended that Thean J miscontrued the Seventh Schedule of the 1956 Act.

Held, dismissing the appeal and the cross-appeal: (1) the expression 'this Act' in the crucial expression does not and cannot be transformed on Malaysia Day to mean 'this Act of the Parliament of Singapore'. It meant and continues to mean 'this 1911 Act' which is continued by the Constitution of Singapore as part of the law of Singapore. The court knows of no principle or authority which supports the view that the attainment of independence of a territory, which is a historical fact, ipso facto changes the legislative source of its inherited laws, which is another historical fact; (2) if the expression 'this Act' does not mean 'this Act of the Parliament of Singapore', then the appellant's contention on the meaning of the word 'extends' in the crucial expression also fails; (3) the crucial expression was intended to (a) include within its ambit not only all British dominions which existed on the date of coming into force of the 1911 Act, including those self-governing dominions which have extended the 1911 Act to themselves, but also all such dominions thereafter, and (b) exclude therefrom all those dominions which should refuse to extend the Act to themselves or which have repealed the Act after it has been extended to them; (4) it is not incorrect to say that the expression 'His Majesty's dominions' has become a mere geographical expression, drained of any political content, so far as concerned Singapore when it became independent. There is no inconsistency between Thean J's main decision and his single period decision; (5) the constitutional enactments providing for Singapore's independence make it clear that all existing laws prior to Malaysia Day shall subsist on and after Malaysia Day, subject only to such modifications as are required to make them conform to the Constitution of Singapore; (6) the extension of para 41 to Singapore did not automatically bring with it the operation of para 39 of the Seventh Schedule of the 1956 Act; (7) the court is bound by the decisions of the Federal Court sitting in appeals from the High Court of Singapore in the same way and to the same extent that it is bound by the Court of Appeal of the Straits Settlements.

Ng Sui Nam v Butterworth & Co (Publishers) Ltd & Ors [1987] SLR 66 Court of Appeal, Singapore (Lai Kew Chai and Chua JJ, and Chan Sek Keong JC).

Public Prosecutor v Teoh Ai Nee & Anor [1994] 1 SLR 452 High Court, Singapore (Yong Pung How CJ).

The applicants were partners of a business known as Rainbow Sound Enterprise in Singapore. They were each convicted on 14 charges for being in possession for sale of pirated copies of gramophone records, an offence punishable under s 3(1) of the Copyright (Gramophone Records and Government Broadcasting) Act (Cap 188, 1970 Ed) and were each fined $300 on each of the 14 charges. The tapes relating to the 14 charges were ordered to be forfeited.

Held, dismissing the appeal: (1) the words 'copyright subsisted' in s 5(1)(a) of the Act obviously mean copyright subsisted in Singapore, as that is the copyright contemplated and recognized by the law of Singapore. If an affidavit in accordance with s 5(1) of the Act is used it is essential to state therein that at a particular date copyright in relation to the record in question subsisted in Singapore and the words 'in Singapore' are necessary; (2) the statutory definition of a 'gramophone record' contemplates a sound track, other than a track associated with a cinematograph film, as a gramophone record. A recording of a song in a tape (which also contains a record of other songs) is a gramophone record within the meaning of the Act, and if the gramophone record of that song was made or reproduced without the consent lawfully given by the owner of the copyright of the record of such song, then it is a pirated copy within the meaning of s 2 of the Act.

Chong Loy Sen & Anor v Public Prosecutor [1986] SLR 284 High Court, Singapore (Thean J).

The appellant appealed against his conviction on six charges of having in his possession for sale pirated copies of gramophone records contrary to s 3(1) of the Copyright (Gramophone Records and Government Broadcasting) Act (Cap 188, 1970 Ed). The alleged pirated copies were cassette tapes found in the premises of Corina Music Centre of which the appellant was the sole proprietor. The main contention in this appeal was that the prosecution had failed to prove that the cassette tapes in the possession of the appellant were copies of the gramophone records in which copyright subsisted.

Held: in this case, there was ample evidence to hold that there was sufficient prima facie evidence that the cassettes were copies of the gramophone records within the meaning of the Act.

Lok Shoon Shing v Quek Swee Kit & Ors 1980 High Court, Singapore (Wee Chong Jin CJ).

The appellant had been convicted of having in his possession cassette tapes alleged to contain reproductions of a gramophone record, an offence under s 3(1) of the Copyright (Gramophone Records and Government Broadcasting) Act (Cap 188, 1970 Ed). It appeared that the tapes were purchased from the appellant's shop and subsequently the records were listened to and found to contain copies of songs in which a copyright subsisted.

Held, allowing the appeal: (1) the evidence of the witnesses who heard the tape was insufficient to prove that the cassette tape was a copy or reproduction of the record in which the copyright subsisted. It was incumbent on the prosecution to prove that the cassette tape, the alleged pirated copy, was an exact copy or reproduction of the gramophone record; (2) s 3(1) of the Copyright (Gramophone Records and Government Broadcasting) Act made it an offence for a person who, inter alia, made or reproduced any copies of any gramophone record without the consent of the owner. It clearly could not have been intended by the Legislature that a person who made or reproduced a single copy of a gramophone record in which a copyright subsisted was guilty of a criminal offence.

Kwah Hai Gong v Public Prosecutor 1978 High Court, Singapore (Wee Chong Jin CJ).

The complainants, EMI (Malaysia) Sdn Bhd, owned copyright in a number of Malay songs which they had bought from the composers after entering into formal agreements with them. They had sent out notices at various intervals to record dealers including the appellants warning them of copyright infringements in respect of their gramophone records but the appellants had shown no intention of paying any heed to these warnings. A report was lodged with the police and on 13 November 1971, the complainants' managing director, Tanner, accompanied two police officers to the appellant's shop where the police seized 110 records. Earlier on, on the same day, another police officer had bought three records from the appellants' shop. These records were found not to be the complainants' records and that they were inferior quality records. This was testified by one Mrs Beh to whom Tanner had given some of his powers and duties including the power to buy and sell copyright without restriction. The appellants were found guilty of two charges under s 15(1)(b) of the Copyright Act 1969 (Act 10). The first charge was that the appellants had by way of trade exposed 105 infringing copies of musical works contained in gramophone records for which copyright then subsisted in favour of EMI (Malaysia) Sdn Bhd and the second charge was that the appellants sold three infringing copies of musical works contained in gramophone records for which copyright then subsisted in favour of EMI (Malaysia) Sdn Bhd.

Held, dismissing the appeal: (1) copyright in a work may subsist only by virtue of the Copyright Act so that before proving that the appellants had sold or by way of trade exposed the infringing copies of the musical works contained in the gramophone records the prosecution had first of all to prove that the musical works were eligible for copyright within the meaning of s 4 of the Act and under s 5(1) that the authors of the musical works were citizens of or permanent residents in Malaysia at the time when they made the musical works; (2) all the ingredients in the charges had been proved, and there was no reason to interfere with the magistrate's decision.

Chew Onn Yuen & Anor v Public Prosecutor [1977] 2 MLJ 118 High Court, Seremban (Ajaib Singh J).

In this case, the appellant had been convicted on a charge of possessing for sale pirated copies of certain gramophone records which were protected by copyright. It was alleged that the appellant had in her possession for sale unauthorized cartridge and cassette tape reproductions of the gramophone records. It was argued on appeal that the cartridges and cassette tapes did not come within the definition of 'pirated copies'.

Held: (1) the cartridges and cassette tapes found in the possession of the appellant came within the definition of 'pirated copies' in the Copyright (Gramophone Records and Government Broadcasting) Act (Cap 188, 1970 Ed); (2) as the learned magistrate had found that the cartridges and cassette tapes were pirated copies of the copyrights and the appellant had not shown on the balance of probabilities that she had no reason to suppose that she was dealing with pirated copies and that in all respects she had acted innocently, there was no reason to interfere with the findings of the learned magistrate. Therefore the appeal should be dismissed.

Heng Yik Fang v Public Prosecutor 1972 High Court, Singapore (Wee Chong Jin CJ).

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

Aztech Systems Pte Ltd v Creative Technology Ltd [1996] 1 SLR 683 High Court, Singapore (Lim Teong Qwee JC (Dr Robert Wedig, Assessor).

Lotus Development Corporation & Anor v Ong Seow Pheng & Ors [1997] 1 SLR 484 High Court, Singapore (Judith Prakash J).

The first plaintiff is a company incorporated in the State of Massachusetts, United States of America. It operates the John Robert Powers ('JRP') School in the United States. JRP School was first established in 1923 for the purposes of providing courses on social development and self-improvement. The second plaintiff is a company registered under the laws of Netherlands and has the exclusive right to franchise the name 'John Robert Powers' and to operate JRP Schools in various jurisdictions around the world, including Singapore. Under the franchise, JRP Manuals ('the manual(s)') are distributed to the franchisee. These manuals were first written in 1977. In November 1983 the defendant became the second plaintiff's first franchisee in Singapore under the name of The Finishing School Pte Ltd ('the School'). On 14 February 1988 this franchise agreement was terminated. Unfortunately the termination of the franchise between the second plaintiff and the defendant was not amicable. In Suit No 321 of 1988 the second plaintiff brought an action against the School for outstanding royalties and breach of the franchise agreement. An injunction was obtained on 15 February 1988 to restrain the defendant from, inter alia, using the JRP name and to deliver up all materials obtained from the franchise. The defendant stopped using the JRP name, the materials were handed over and the royalties were paid. No notice of dis-continuance has been filed for Suit No 321 of 1988. On 22 February 1988 the defendant set up her own school under the name Clea Professional Image Consultants ('Clea') and she informed the public of the change two months later by a press announcement. On 1 March 1988 Jeshevio Personal Development Systems Pte Ltd, owned by the third plaintiff, was appointed as the new franchisee. At the commencement of this action, this franchise agreement still subsisted. However JRP School no longer operates in Singapore as it was closed at end December 1992 although there were plans to reopen it in April this year. This action was for copyright infringement under the Copyright Act (Cap 63) ('the Act') and passing off. In the statement of claim the plaintiffs alleged that the defendants infringed their copyright in: (a) the manual; (b) a course syllabus for the 'Executive Image Programme' written by the third plaintiff during her term as franchisee; and that (c) she attempted to pass off Clea and the courses she conducted, as JRP School and JRP courses, respectively.

Held, allowing the claim in part: (1) by virtue of s 31 of the Act, copyright is infringed when a non-owner does any of the acts set out in s 26 without the licence or authority of the owner; (2) it is clear that copyright can subsist in a compilation. The definition of `literary work' in s 7 of the Act expressly includes a compilation; (3) s 10 of the Act provides that copying must be 'substantial'. Substantiality is not merely a matter of quantum, but of quality. In deciding this question of fact, the court will look at the nature of the material copied and the degree of skill, effort and labour the defendants have appropriated; (4) if the photocopying had been done by the defendant, this amounts to reproduction of work in which copyright subsists. Here the part taken is wholly original, the object of the copyist is the same as the original author's, and it is used as a tool by a competitor. The fact that it is merely two pages does not detract from this as the crucial issue is that of substantiality; (5) the classic example of passing off takes place when one trader represents his goods to be those of another trader with a better reputation. However modern cases show that passing off is also possible when one trader represents the inverse: that the goods of another trader are his own; (6) five characteristics must be present in order to create a valid cause of action for passing off: (1) misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so; (7) goodwill is thereby damaged; (8) here the misappropriation was done in the course of the trade itself. This should make no difference to the plaintiffs' entitlement to a remedy. Notes and work materials are only obtained by effort, enterprise and expense. It is part of the product that both schools sell. Where the defendant's misrepresentation denies to the plaintiffs the credit due, the plaintiffs' product is no longer unique. In these circumstances the franchise would not be viewed with value by potential customers;the defendant's state of mind is irrelevant as the tort of passing off does not require a mental element in the sense of a deliberate intention to injure coupled with improper motive.

Robert John Powers School Inc & Ors v Denyse Bernadette Tessensohn t/a Clea Professional Image Consultants [1993] 3 SLR 724 High Court, Singapore (Lai Siu Chiu JC).

[Annotation: Affirmed on appeal. See [1994] 3 SLR 308.]

Lotus Development Corporation & Anor v Ong Seow Pheng & Ors [1997] 1 SLR 484 High Court, Singapore (Judith Prakash J).

The plaintiff, an artist, claimed damages for infringement of copyright and loss of licence fee when the defendant distributed 350 table calendars containing unauthorized reproductions of the plaintiff's artworks. Interlocutory judgment was granted and damages in respect of licence fee were assessed at $62,385 based on one and a half times the $41,590 assessed value of the artworks. The defendant appealed against the assessment of damages. The plaintiff also cross-appealed against the assessed value of the artworks, and also claimed a licence fee at twice the value of the artworks.

Held, allowing the defendant's appeal and dismissing the plaintiff's cross-appeals: (1) the plaintiff's assessment of the value of the artworks was based on prices offered for sale in Australia. However, none of the artworks were sold in Australia, and in fact were sold in Singapore at prices well below the posted prices. Based on the actual sales of some of the artworks in Singapore and on the plaintiff's own comparative pricing, the value of the 12 artworks was assessed at $15,000; (2) as to the plaintiff's claim for damages at twice the value of the artworks, bearing in mind that only 350 copies of calendars were involved, a licence fee of one and a half times the value is more than reasonable. There is no reason why the rate should be any different due to the different artform; (3) the defendant's appeal is allowed and the sum of $22,500 is awarded to the plaintiff by way of loss of licence fee, with interest at 6% pa from the date of the filing of the writ. The plaintiff's cross-appeals are dismissed and the defendant is awarded costs of the appeal.

Ting Peng Yew v Singapore Envelopes Co Pte Ltd [1991] 2 MLJ 398 High Court, Singapore (Goh Joon Seng J).

Lotus Development Corporation & Anor v Ong Seow Pheng & Ors [1997] 1 SLR 484 High Court, Singapore (Judith Prakash J).

Aztech Systems Pte Ltd v Creative Technology Ltd [1996] 1 SLR 683 High Court, Singapore (Lim Teong Qwee JC (Dr Robert Wedig, Assessor).

Aztech Systems Pte Ltd v Creative Technology Ltd [1996] 1 SLR 683 High Court, Singapore (Lim Teong Qwee JC (Dr Robert Wedig, Assessor).

Creative Technology, the defendants, developed the 'Sound Blaster' family of sound cards. The subject-matter of this litigation concerned one of Creative's sound cards (the sound card) which used the Intel 80C51 chip. Creative wrote a computer program ('source code' or 'firmware') for this chip (Creative chip). The firmware was permanently stored on the read-only memory (ROM) of the chip. To prevent the firmware from being reproduced (dumped) from the chip, the firmware was protected by security arrangements in the chip put in place by Intel and Matra, the manufacturers of the Intel 80C51 chip. Creative's firmware was programmed to respond to commands from application programs, including specialized programs designed to communicate with the sound cards (referred to as 'drivers'). One of the available drivers was CT-VOICE.DRV, which was provided by Creative to purchasers of its sound card. In addition, Creative also bundled with the sound card a software called TEST-SBC. Aztech were producers of the 'Sound Galaxy' family of sound cards. It sought to make its sound cards 'compatible' with four other sound standards associated with other sound cards, of which the Sound Blaster was one of them (Sound Blaster compatibility). For Aztech's Sound Galaxy to be compatible with each of these four standards, its card had to be able to accept and respond to the commands from application programs in the same way as if the commands were issued to the sound card associated with each sound standard. Aztech investigated Creative's sound card and thus developed the Sound Galaxy NX, Sound Galaxy BX and Sound Galaxy NX PRO cards which were, among others, Sound Blaster compatible. Like the Sound Blaster, Aztech's cards also used the Intel 80C51 chip. It was not disputed that Aztech wrote firmware for the chip which was stored on its ROM. Creative alleged that in investigating Sound Blaster compatibility and in developing its Sound Blaster compatible sound cards, Aztech infringed Creative's copyright in the firmware in Creative's chip as well as the two pieces of software TEST-SBC and CT-VOICE.DRV by copying the whole or parts of Creative's programs. Aztech denied infringement. Firstly, it asserted that its firmware was developed independently and without access to the source code of Creative's program. Alternatively, if in the process of development, there was any reproduction of a substantial part of Creative's copyrighted work, then the reproduction for such development amounted to a fair dealing for the purpose of private study. Thirdly, Aztech claimed that it had a 'non-derogation from grant' defence on the basis that Creative, by attacking compatible sound card manufacturers, would render the grant which it gave to software developers to develop software for Sound Blaster as an industry sound standard 'unfit' or 'materially unfit' for the purpose for which the grant was made. This was because Creative, by its conduct in representing that its sound standard was going to be an industry standard, did not warn its software developers as to the dangers of embedding the driver CT-VOICE.DRV in the software. Finally, Aztech claimed it had a right to use the card and its associated software under the principle in Betts v Willmott (1871) 6 Ch App 239 so it did not infringe Creative's copyright in doing so.

Held, dismissing the defendants' claim: (1) on the evidence presented, it was highly improbable that Aztech gained access to the object code or source code of Creative's firmware by circumventing the security measures on the chip (i) by dumping it by the visual optical method and (ii) by repairing the security fuse in the way described by Creative's expert. It was equally improbable that Aztech gained access by dumping the code from a chip without the implemented security measures. It was more likely that Aztech's firmware was developed without access to Creative's firmware; (2) Aztech's code would have produced an incorrect result, and an error in Creative's code was not reproduced in Aztech's code. Also, certain conclusions in Creative's expert report had to be rejected as they were founded on false premises; (3) the court also found, with respect to the similarities in the coding of Creative's and Aztech's firmware that were alleged to have been copied by Aztech, that Aztech had not infringed Creative's copyright whether by copying it or copying those parts relating to the coding of the various algorithms, commands and tables. (The detailed findings were not found in the judgment but in the appendix which was only made available to the parties to the litigation.); (4) there was no doubt that Creative's program TEST-SBC had been copied by Aztech in the course of Aztech's investigations into Creative's sound card, but there was no or insufficient evidence that CT-VOICE.DRV or any other software program was similarly copied by disassembly or in the course of such investigations; (5) the word 'study' in s 35 meant 'the devotion of time and attention to acquiring information or knowledge'. The defence of fair dealing for private study extended to study by companies or persons carrying on business as there was no reason why s 35(5), which excluded commercial research as 'research' for the purpose of s 35, did not apply to qualify 'study' as well. Instead, the word 'private' was used to qualify 'study'. Furthermore, s 35(2) invited for consideration as one of the matters in determining whether a dealing was a fair dealing, whether the dealing was of a commercial nature. Hence some private study for commercial purposes might count as a defence to a claim for infringement. It did not follow that the defence of fair dealing was excluded in every case where the purpose of the copying could be categorized as being of a commercial nature; (6) the word 'private' as in 'private study' in s 35 means 'kept or removed from public knowledge or observation'. A study is 'private' if the study and the information and knowledge acquired through it are kept or removed from public knowledge or observation and this is so even if the purpose may be of a commercial nature; (7) the factors set out in s 35(2) were not intended to be exhaustive. There was also the matter of public interest to be considered; (8) the court considered the various factors: purpose and character of the dealing, nature of the work, amount and substantiality of the part copied, effect upon the potential market or value of the work and the public interest. As to public interest, the court ruled that competition should be promoted, and the making of Sound Blaster sound cards was likely to be good for the industry. The end user would have a choice of sound cards, and the industry would benefit in the development and marketing of sound cards and of applications software; (9) considering all these factors, the court ruled that Aztech's dealing with TEST-SBC constituted fair dealing for the purpose of private study and its defence succeeded; (10) the defence of 'non-derogation from grant' was not accepted because Creative only gave an option to its software developers to develop software with the embedded driver, and the developers were free to exercise the option. This was unlike the position of a buyer of a car in which the exhaust pipe was not optional and was bound to fail during the life of the car. Also, by exercising its copyright, Creative was not preventing anything granted by it from being repaired; (11) in this respect, Aztech's explanation of the investigation and testing process was reasonable. Further, there were significant differences between Aztech's and Creative's coding of a particular feature of the sound card (the ADPCM feature);the principle in Betts v Willmott was of general application and not limited to patent cases. Having purchased a Sound Blaster card together with TEST-SBC, Aztech was entitled in the exercise of its rights of ownership over the card to use it by running it and TEST-SBC and studying its mode of operation with a view to designing a Sound Blaster compatible sound card. It was so entitled because such use was a right of ownership conferred on it by virtue of its purchase of the Sound Blaster card. This right of ownership was different from Creative's exclusive right to reproduce or to copy the program TEST-SBC. This defence thus was accepted.

Aztech Systems Pte Ltd v Creative Technology Ltd [1996] 1 SLR 683 High Court, Singapore (Lim Teong Qwee JC (Dr Robert Wedig, Assessor).

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

The respondent company, who were manufacturers and suppliers of building products made of expanded metal, sold their products under the trade name 'Expamet' and were the registered proprietors of the trade mark 'Hy-Rib' in respect of expanded metal in Singapore. The first appellants were a company set up by the respondents and controlled by the second appellant as a joint venture. Subsequently, the second appellant bought over the respondents' shares in the first appellants. Under cl 5 of the sale and purchase agreement, the second appellant warranted that the first appellants would not, without the previous written consent of the respondents, make use of the respondents' registered trade mark 'Hy-Rib'. In May 1992, the first appellants began selling expanded metal products under the name 'EMCO'. Their products had names and product reference numbers similar to those used to identify the respondents' corresponding products and the brochures advertising their products were similar to those advertising the respondents' products. In April 1993, the respondents commenced proceedings against the appellants. The respondents' claims against the first appellants were for trade mark infringement in relation to the trade mark 'Hy-Rib', passing off and infringement of the respondents' copyright in the diagrams and texts found in the respondents' brochures. The respondents claimed damages against the second appellant for breach of cl 5 of the sale and purchase agreement. On 12 April 1993, the respondents obtained ex parte a comprehensive interim order against the first appellants containing, inter alia, an interim injunction restraining the first appellants from infringing the respondents' trade mark 'Hy-Rib' and from dealing with the brochures containing complete or substantial copies of diagrams and texts described in the order; an Anton Piller order; and an order for discovery and disclosure of information. The respondents also applied for and obtained from the magistrates' court a search warrant for suspected offences under s 73 of the Trade Marks Act (Cap 332, 1992 Ed). The interim order was executed on 13 April 1993. After the commencement of the search, the second appellant gave instructions that the search be discontinued and that no documents were to be taken out of the premises. Thereupon, the respondents' solicitors produced the search warrant and seized all the documents objected to by the first appellants, including invoices and quotations for 1993 but not those for 1992. The appellants applied to discharge or vary the interim order. The application was dismissed. The appellants appealed on the following grounds: (1) the respondents had not made a full and frank disclosure of material facts in obtaining the ex parte interim order, ie they had failed to disclose certain matters which adversely affected the strength of their claim to ownership of copyright in the works which were the subject of the claim for copyright infringement and they had failed to reveal the existence of a long-standing close relationship between the respondents and the appellants; (2) the respondents had failed to give the appellants prior notice of the ex parte application; (3) the respondents had failed to ensure proper compliance with the terms governing the execution of the Anton Piller order, in that eight people had entered the first appellants' premises when the order permitted the entry of not more than seven persons; (4) the Anton Piller order was not even warranted in this instance, as there was no real risk of the appellants destroying or dissipating material evidence for the purpose of the trial; (5) the interim injunctions should not have been granted because damages would have been an adequate remedy to the respondents and the balance of convenience was in the appellants' favour; and (6) there was a real risk of self-incrimination if the appellants were required to comply with the order for discovery.

Held, allowing the appeal in part: (1) the matters relating to the authorship of the works in question were not material facts which the respondents should have disclosed to the judge hearing the ex parte application as the ownership of copyright was not in issue when the action was commenced and when the ex parte application was heard. The respondents were then entitled to rely on s 130(1) of the Copyright Act (Cap 63, 1988 Ed) to establish a prima facie case of subsistence of their ownership of the copyright; (2) the past relationship between the parties was not a material fact for disclosure; (3) the terms of an Anton Piller order must be strictly complied with and it is the duty of the solicitor executing the Anton Piller order to ensure due and proper compliance with all the terms. As the number of persons who entered the first appellants' premises exceeded that prescribed in the order, there was a defect in the execution of the Anton Piller order. However, the order need not be discharged on this ground if Ð as in this case Ð the non-compliance had not caused any prejudice to the appellants; (4) the respondents did not have to give prior notice of their ex parte application to the appellants. The application for the Anton Piller order by its very nature requires that no advance or prior notice be given to the affected party, as otherwise the purpose of the order would be defeated; (5) the Anton Piller order would however be discharged as the respondents had not shown that there was a grave danger of the appellants destroying or dissipating material evidence for the purpose of the trial and there was no material before the court from which it could justifiably draw an inference that the appellants had the propensity to destroy or dissipate material evidence. There was, therefore, no ground for the respondents to even apply for the Anton Piller order; (6) the interim injunctions, on the other hand, would remain as the respondents had shown that they had considerable goodwill in their products sold in Singapore under their trade marks, and the injury to the goodwill and the loss of the respondents would be difficult to quantify in monetary terms. Further, there were grounds for believing that they would not be adequately compensated by damages should they succeed at the trial of the action, if the interlocutory injunctions were discharged. The balance of convenience was, therefore, in the respondents' favour; (7) the appellants' defence to the respondents' claim did not preclude them from relying on the privilege against self-incrimination. The defences relied upon by the first appellants were statutory defences under ss 16, 46(2) and 52(b) of the Trade Marks Act (Cap 332, 1992 Ed). The discovery required by the respondents would not add anything to or subtract anything from the first appellants' defences to the respondents' claim for trade mark infringement. On the other hand, compliance with the order for discovery would render the first appellants liable for one or more separate charges for offences under the Trade Marks Act, in particular s 73. If the respondents succeeded on their trade mark infringement claim and the appellants failed to furnish the documents and information sought, the court may then draw adverse inferences against the appellants when it came to assessing damages; (8) the first appellants had established that they had a bona fide claim of privilege against self-incrimination. Although the respondents had some documents seized pursuant to their search warrants, the production of additional documents and the supply of additional information under the order might render the first appellants liable for additional or other charges under the Trade Marks Act. The order effectively compelled the first appellants to incriminate themselves in relation to offences arising from past acts of trade mark infringement. In the result, the order for discovery was discharged; (9) (per curiam) where a party obtains an order, the responsibility is on him to ensure that there is no ambiguity therein. If indeed there is an ambiguity, he cannot rely on it to his own advantage.

Expanded Metal Manufacturing Pte Ltd & Anor v Expanded Metal Co Ltd [1995] 1 SLR 673 Court of Appeal, Singapore (Karthigesu and LP Thean JJA and Chao Hick Tin JJ).

Public Prosecutor v Teoh Ai Nee & Anor [1994] 1 SLR 452 High Court, Singapore (Yong Pung How CJ).

The plaintiffs were computer software companies producing software packages which usually contained computer diskettes containing the plaintiff's computer programme and an accompanying set of the plaintiffs' instruction manuals. The plaintiffs obtained summary judgment against the defendants for copyright infringement and the judge ordered an inquiry as to the damages or an account of profits and payments of all sums found to be owing to the plaintiffs as well as an inquiry into the additional damages payable by the defendants under ss 119 and 120 of the Copyright Act (Cap 63) (the Act). On the evidence presented at the assessment of damages, the assistant registrar found that the defendants had dealt with 6,720 infringing copies of the plaintiffs' manuals and 31 infringing copies of plaintiffs' computer programmes. The defendants told their customers to make enough copies of the programmes to sell each with a copy of the manual as a package. The assistant registrar attributed 10% of the net profit of each software package (the package) to the value of the manuals of the same and 90% thereof to the computer programmes. Using these percentages, he calculated the profits which the plaintiffs would have lost had they been able to sell the 6,720 manuals and 31 diskettes separately and quantified the damages as US$173,157.35. The assistant registrar also awarded the plaintiffs additional damages of $20,000 under s 119(4) of the Act. The plaintiffs appealed on the ground that the damages awarded under both heads were inadequate. They contended that they had been deprived of the profits from 6,720 complete packages because the defendants had `authorised' their customers under s 31(1) of the Act to copy the programmes supplied, thus infringing the whole of the plaintiffs' package, so that their customers could in turn sell complete packages instead of the manuals simpliciter. Secondly, the plaintiffs argued that the defendants were joint tortfeasors with their customers who duplicated the diskettes and on-sold them together with the manuals supplied by the defendants as a package and therefore should be liable for the damages sustained in relation to the packages.

Held, allowing the appeal: (1) the defendants had been `authorising' their customers, within the meaning of s 31(1) of the Act, to commit further acts of infringement because the defendants were selling their infringing products on a wholesale basis to persons whom they knew were in the business of retailing pirated computer packages to the public and capable of copying the same. It was not material that they had no actual physical control either over their customers or the instruments which would be used to make the copies nor was it material that the defendants had no authority to authorise the duplication of the plaintiffs' programmes and manuals; (2) the defendants and their customers were joint tortfeasors as they acted in concert with one another for the purpose of selling infringing packages. Although the defendants were not players in the retail market, they had an interest in seeing the pirate retailers increase sales of the infringing software packages as it would ultimately benefit them; (3) accordingly, the damages for copyright infringement were increased to US$1,658,169.17 in respect of 6,717 packages, US$94.04 for three sets of manuals and US$4,907.37 for 20 sets of software; (4) the award of damages under ss 119 and 120 of the Act should reflect the odium in which the court held the defendants' conduct and serve as a punishment and deterrence but should not be so great as to represent an extraordinary profit for the plaintiffs; (5) the award made by the assistant registrar under ss 119 and 120 of the Act was inadequate in the light of the scale and flagrancy of the defendants' operations, which was admitted by the first defendant to be the largest supplier of pirated software and manuals. The first defendant had other means of earning a good living and was fully aware of the intellectual property rights of the plaintiffs. In spite of that fact, the defendants had been prepared to take a calculated risk in producing and selling pirated copies of the plaintiffs' products. Accordingly a more appropriate sum was US$200,000.

Lotus Development Corporation & Anor v Ong Seow Pheng & Ors [1997] 1 SLR 484 High Court, Singapore (Judith Prakash J).

This is an application for interim injunctions against the defendants in the plaintiffs' claim for copyright infringement and passing off. The plaintiffs alleged that the defendants had infringed their copyright in certain outline drawings of the Remus car exhaust systems under s 32 of the Copyright Act by the importation and sale, etc of car exhaust systems which the defendants knew or ought reasonably to know were not made with the consent of the plaintiffs. The plaintiffs also claimed that the defendants were marketing the Remus exhaust systems without being their authorized dealers and were guilty of passing off. The plaintiffs claimed that what they were marketing, through their authorized dealers, were not just the products themselves, but a package consisting of the products, the service and a noquestionsasked twoyear warranty. The plaintiffs claimed that the defendants were passing themselves off as offering such a package.

Held, dismissing the application: (1) apart from their claims for damages and delivery up, if the interlocutory injunctions sought by the plaintiffs were granted, they would in substance obtain all the reliefs that they seek without proceeding to a final hearing. In such circumstances, it was legitimate for the court to have some regard for the apparent strength of the plaintiffs' case by reference to facts or law not in dispute, making due allowance for the possibility that particular points of fact or law might be decided one way or another at the trial; (2) the threshold for the plaintiffs to cross should be somewhat higher than that their claim should not be frivolous or vexatious or that it should merely be arguable. The American Cyanamid principles should be used as guidelines rather than as immutable rules in the exercise of the court's discretionary jurisdiction in the matter of granting or withholding interim reliefs; (3) when considering an application for an interim injunction, whether mandatory or prohibitory, the court should take whichever course appears to carry the lower risk of injustice if it should turn out to have been wrong at the trial in the sense of granting relief to a party who failed to establish his right at the trial or of failing to grant relief to a party who succeeded at the trial; (4) there was a lower risk of injustice to refuse the applications than to grant them since it would be easier to prove how much damage the plaintiffs had suffered as a result of the unauthorized sale by the defendants than to prove how much the defendants would have made if they had been allowed to continue selling; (5) while copyright could be infringed by dealings in articles which were threedimensional reproductions of twodimensional drawings, in this case it had been shown that the originality of at least some of the drawings was open to question; (6) further as the claim was based on s 32 of the Copyright Act, the defendants were liable only if they knew or ought to have known that the making of the articles was carried out without the consent of the copyright owner. This had not been, nor could it be, alleged by the plaintiffs as the defendants were selling products obtained from the plaintiffs' own sole distributors in the United Kingdom; (7) the fact that there was a new point of law which should be considered at a trial was of neutral, if not negative, value when considering whether interim reliefs should be granted; (8) on the passing off claim based on the concept of a package, the sort of quality control that was asserted by the plaintiffs was in any event no where near the standards in those cases where such concept had been upheld. The plaintiffs's case based on that concept did not appear to be of great strength.

Remus Innovation ForschungsUnd Abgasanlagen Produktionsgesellschaft Mbh & Anor v Hong Boon Siong & Ors [1995] 2 SLR 148 High Court, Singapore (Warren LH Khoo J).

The plaintiffs, Goodyear Tire & Rubber Co, and Goodyear Malaysia Bhd, applied by way of summons-in-chambers for, inter alia, orders to restrain the defendant, Silverstone Tire & Rubber Co Sdn Bhd, from reproducing, possessing, distributing or selling tyres known as 'aquagrip tyres', and, from passing off the said 'aquagrip tyres' as and for the plaintiffs' proprietary 'aquatred tyres'. The plaintiffs asserted that they were the original designers and inventors of 'aquatred tyres' as well as the copyright owners of the dimensional drawings of 'aquatred tyres'. The plaintiffs claim that their 'aquatred tyres' have a unique and distinctive 'get-up', and that the dimensional drawings of the 'aquatred tyres' are artistic works which are eligible for protection under the Copyright Act 1987. It was the plaintiffs' contention that the defendant's 'aquagrip tyres' were manufactured from dimensional drawings which were themselves a reproduction or a substantial reproduction of the plaintiffs' dimensional drawings for 'aquatred tyres'. The defendant argued that copyright is different from patents in that patents protect ideas while copyright only protects artistic works which are original, and not ideas. The defendant also submitted that the plaintiffs were only seeking to protect the function of tyres and not the artistic works in relation to the tyres, and furthermore, there was no evidence to show who the author of the plaintiffs' dimensional drawings was, or any contract to prove that the author contrived the dimensional drawings whilst under the employment of the plaintiffs, nor any evidence that the plaintiffs' dimensional drawings were contrived well before that of the defendant's dimensional drawings.

Held, dismissing the plaintiffs' application: (1) it is not concerned with the reproduction of ideas, but with the reproduction of the form in which ideas are expressed. Unlike patents, copyright is not a monopoly, and if it can be shown that two precisely similar works were produced wholly independently of one another, there can be no infringement of one copyright by the other. Ideas, however original, are not protected by copyright; (2) the plaintiffs were only seeking to protect the idea concerning the function of their tyres and not any artistic values, and that idea relates merely to the principle on which the tyres function; (3) the plaintiffs had not established who the author of their dimensional drawings was, when the drawings were produced and whether copyright for them still subsists, whether the author was employed by the plaintiffs to produce the drawings, and whether the drawings were original; (4) the plaintiffs had not shown that the 'get-up' of their 'aquatred tyres' was distinctive to the exclusion of all others and that potential buyers would recognize the said tyres by the 'get-up' and not by the brand-name of the tyres. The availability of the plaintiffs' 'aquatred tyres' in the local market was also not long enough to establish any reasonable goodwill and reputation; (5) copyright law is concerned with the negative right of preventing the copying of physical material;an early trial of the plaintiffs' main action against the defendant would be more appropriate than to grant the orders and injunctions sought by the plaintiffs as the balance of convenience lies in the defendant's favour. To grant the said injunctions would certainly give the plaintiffs an unfair monopoly of the market in 'aqua tyres'.

Goodyear Tire and Rubber Co & Anor v Silverstone Tire & Rubber Co Sdn Bhd [1994] 1 MLJ 348 High Court, Kuala Lumpur (Abdul Malek J).

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

Peko Wallsend Operations Ltd & Ors v Linatex Process Rubber Bhd and another action [1993] 1 MLJ 225 High Court, Kuala Lumpur (Siti Norma Yaakob J).

The first and second respondents were charged with exposing for sale infringing copies of sound recordings and with being in possession of infringing copies of sound recordings for the purpose of selling under ss 136(1)(b) and 136(2)(a) of the Copyright Act (Cap 63, 1988 Ed) read with s 34, Penal Code (Cap 224), in furtherance of their common intention. The prosecution of the respondents had proceeded by way of a private fiat. The ten sound recordings in question of Cliff Richard and The Beatles were imported articles. After hearing their defence, the district judge acquitted the respondents and the prosecution appealed. The first and second respondents were the proprietors of a music store at the time their store was raided. In the district court, evidence was adduced to show that they had been in the general business of dealing in records, cassette tapes and compact discs for ten years, and their scale of operations was very large. The prosecution adduced evidence to show that the sound recordings which were the subjectmatter of the charges were not made with the licence of the Singapore copyright owner, EMI Singapore. Some of the infringing sound recordings were budget or lowpriced CDs, but others were only marginally cheaper than the 'originals' produced by EMI. All lacked the EMI label and EMI copyright notices, but they all had some other form of copyright notices to the effect that 'all rights of the producer and of the owner of the work reproduced reserved. Unauthorized copying, hiring, lending, public performance and broadcasting of this record prohibited.' On the issue of general business knowledge, the district judge had accepted the respondents' witnesses' testimony that it was general business knowledge that (i) recording companies could grant licences to reproduce and distribute sound recordings in different countries and these could be released under different labels, and that (ii) it was common for recording artistes to record under different labels. The district judge did not accept the evidence of the prosecution's witness that all original sound recordings of Cliff Richard and The Beatles were released under the EMI, Apple and Parlophone labels, nor did she accept the evidence that there had been local publications and advertisements to this effect. But the district judge had admitted the evidence tendered by the prosecution that the respondents' music store had been previously raided in 1983 and 1984 and that the respondents had been charged with copyright offences relating to the possession of infringing gramophone records for which they had pleaded guilty. These gramophone records were, like some of the sound recordings in the present charges, recordings by Cliff Richard. But they were not imported but purchased from local salesmen. The prosecution also tendered evidence which showed that the respondents had previously dealt with the 'genuine' copies of the sound recordings produced by EMI, and that the 'genuine' copies had inlay cards and packagings which differed from the infringing copies. Finally, the prosecution adduced evidence to show that the second respondent had contacted both of his overseas suppliers at MIDEM 1991, which was a reputable international music trade fair held in France. At this fair, one of his suppliers, Patricia Records, was raided by the French police and some reports of the incident were published in MIDEM 1991 News and Billboard Guide 1991. The MIDEM 1991 News article did not mention Patricia Records by name, unlike Billboard Guide 1991 which did. However the district judge accepted the evidence of the second respondent that he had no knowledge of the raid, and the evidence of both respondents that they did not read the article in Billboard Guide though they subscribed to it. The defence of the respondents was that they had taken oral and contractual assurances from their two overseas suppliers (of which Patricia Records was one) that the goods supplied were legally manufactured, that the requisite copyright fees had been paid and that such goods could be imported into Singapore. One of the respondents' witnesses, who was the exIFPI (International Federation of Producers of Phonograms and Videogrammes) deputy regional director for the Asia Pacific Region and a qualified intellectual property lawyer based in Malaysia, also testified that the second respondent had sought his advice on the legality of his imports from Patricia Records into Singapore and Malaysia before the goods were imported. He had advised the second respondent that the contractual assurance which they had secured from Patricia Records was sufficient to protect the respondents against copyright infringement arising from importation. The advice which was sought was based on the supply agreement with Patricia Records which the respondents had faxed to the witness, with the name of the supplier blanked out, as was common practice. The advice was, however, wrong as it was based on the law as it then was as decided in PP v Teo Ai Nee [1994] 1 SLR 452, since it was the consent of the Singapore copyright holder, and not some other copyright holder, which had to be sought. The district judge had accepted the evidence of the respondents that they had no actual knowledge that the imported copies of sound recordings were infringing copies. The issue was whether they 'ought reasonably to have known' that the copies were infringing copies of sound recordings.

Held, dismissing the appeal: (1) the state of knowledge contemplated by s 136 (as well as in the provisions which are in pari materia, ie ss 32, 33, 104 and 105) in the phrase 'where he knows' was actual knowledge; (2) the state of knowledge contemplated by s 136 (as well as in the provisions which are in pari materia, ie ss 32, 33, 104 and 105) in the phrase 'where he ought reasonably to know' was knowledge of circumstances which would put an honest and reasonable man on inquiry or 'constructive knowledge'; (3) proof of actual knowledge could come from the defendant's own statements or conduct, or through the 'notice mechanism' where the copyright owner gives notice to the defendant that he is dealing with infringing goods where specific details are supplied in the notice and where a sufficient period of time is given to the defendant to make inquiries; (4) but pursuit of inquiries with respect to imports may be more difficult and due allowance ought to be given, since these commercial dealings necessarily involve foreign parties and knowledge of foreign copyright laws, and the interaction between foreign and Singapore copyright laws; (5) but whether the defendant 'ought reasonably to know' that the copies of articles were infringing will depend on the particular circumstances of each case. The court was not concerned with just any knowledge of circumstances which would indicate the facts or which would put an honest or reasonable man on inquiry. The court was concerned with reasonable inferences to be drawn from a concrete situation as disclosed in the evidence as it affected the particular person; (6) the court might be prepared to accept that the defendant 'ought reasonably to know' by taking into account the ordinary understanding expected of persons in his line of business. But such general knowledge of business activities was only one aspect of the totality of evidence in evaluating whether the defendant 'ought reasonably to know' that the copies were infringing; (7) in considering the totality of the evidence, factors such as publicity given to the general business knowledge, the nature of the business which the defendant undertook and the nature of the copyrighted work in issue were very significant; (8) based on the totality of the evidence: (i) that the respondents would have the general business knowledge of those associated with the business of dealing in sound recordings and would have the knowledge that they could be dealing in pirated goods, (ii) that this general business knowledge would include knowledge that recordings could be reproduced under different licences in different countries and that artistes could record under different labels, (iii) that there was no reason to suspect that the imported copies were infringing because there was no such indication that they were pirated, either from their lower price, from their lack of copyright labels (there were actually copyright labels) or from their lack of EMI labels, (iv) that not much weight was given to the MIDEM 1991 raid as the respondents did not have actual knowledge, nor was the knowledge of the raid general business knowledge, nor was there anything on the evidence to connect the raid to the copyright owner, EMI and to the present sound recordings, (v) that the respondents had taken oral and contractual assurances of the legitimacy of their imports from their overseas suppliers and (vi) that they had also sought and secured legal advice on the legality of their imports from a qualified legal adviser, though the advice was incorrect. All these, especially (v) and (vi), constitute strong evidence that the respondents had acted reasonably and honestly, led the court to the view that the prosecution failed to make out, beyond reasonable doubt, that the respondents 'ought reasonably to know' that their imports were infringing. There was also no evidence that they had such actual knowledge. On this basis, the appeal against acquittal was dismissed; (9) (per curiam) (i) there was no general proposition that a retailer did not have a duty to undertake to check his stock to protect himself from liability. Whether the retailer needed to check his stock will depend on the totality of the circumstances. While an honest and reasonable businessman, in the absence of any knowledge that he possessed infringing copies, was usually under no duty to check his stock, a defendant who deliberately refrained from checking his stock when he was made aware that he may have infringing copies of items in his inventory cannot be heard to say that he lacks the requisite knowledge because he was shutting his eyes to the obvious, (ii) unless there were circumstances giving rise to reasonable suspicion, a purchaser or importer of copyrighted materials did not have an obligation to make copyright inquiries such as seeking copyright clearance, but the fact that a trader sought some form of assurance from his suppliers that the goods they were dealing with were not infringing would be considered as part of the totality of the evidence, and would point very favourably towards the trader's lack of such requisite knowledge under s 136, (iii) ss 11, 14 and 15 of the Evidence Act were unnecessarily constrained in their application to the admissibility of 'similar fact evidence', and should be supplemented by the common law test for admitting 'similar fact evidence'. With the abandoning of the requirement that 'similar fact evidence' should have 'striking similarity', the common law test for admissible 'similar fact evidence' Ð that its probative force in support of the allegation that an accused person committed a crime must be sufficiently great to make it just to admit the evidence, and sufficiently great to outweigh any prejudice to the accused in tending to show that he was guilty of another crime Ð ought to be applied in Singapore, (iv) the low purchase price of articles per se is not enough to put any honest and reasonable businessmen on inquiry that they were buying infringing copies, (v) the absence of copyright notices and labels would not lead a reasonable man to infer that the articles were infringing, or to pursue such inquiries because: (i) there is no system of registration of Singapore copyright ownership, (ii) copyright holders can grant licences to reproduce and distribute articles in different countries of the world and under different labels, and (iii) both international copyright conventions and US law do not uniformly mandate the placement of copyright notices or copyright symbols such as the (C) and (P) symbol, (vi) while importers cannot absolve themselves from liability because they had sought and obtained the wrong legal advice through the legal adviser's mistake of law, the fact that such advice had been sought was some evidence to disprove the inference that the importers ought reasonably to know that the imported articles were infringing.

Public Prosecutor v Teo Ai Nee & Anor [1995] 2 SLR 69 High Court, Singapore (Yong Pung How CJ).

Television Broadcasts & Ors v Seremban Video Centre Sdn Bhd [1985] 1 MLJ 171 High Court, Seremban (Peh Swee Chin J).

Television Broadcasts Ltd & Ors v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346 High Court, Kuala Lumpur (Chan J).

Sunvic Production Pte Ltd (referor) v Composers and Authors Society of Singapore Ltd (licensing body) [1993] AIPR 194 Copyright Tribunal, Singapore (Khoo Oon Soo (President).

This was an action by the plaintiff against the defendants for infringement of copyright in a textbook which was translated from a manuscript in English to Bahasa Malaysia. The Bahasa Malaysia version of the book entitled 'Kursus Ulangkaji Rampaian Sains' (P1) was first published in 1979, and the reprint edition was published in 1980 or closer to 1979. Since 1979 the plaintiff has not assigned the copyright of P1 to anyone nor has a licence been granted by the plaintiff to anyone to publish or reproduce it. The plaintiff claimed that the defendant had infringed the plaintiff's copyright and rights in the nature of copyright in P1 by publishing, distributing, selling without the licence of the plaintiff the work entitled 'Kursus Lengkap Peperiksaan SPM Rampaian Sains' (D11), the general arrangements, language and features and errors of which are similar to the plaintiff's P1. Another copy of 'Kursus Lengkap Peperiksaan SPM Rampaian Sains' (P12) was published by the defendant in 1981. P12 was the first reprint of D11.

Held: (1) P1 as a whole was original and protected by copyright under Copyright Act 1969 (Act 10) and a substantial part of P1 was copied not because of the physical amount of the reproduction but because of the substantial significance of that which was copied. What the court had to consider was the quality rather than the quantity of the pirated parts reproduced; (2) the copyists of the relevant diagrams and tables were thereby relieved of the necessity of using their own skill and labour in reproducing those tables and diagrams and had, thereto, taken a free ride on the efforts of the original author and artist; (3) the parts taken were done animo furandi, that is with an intention on the part of the copyists of saving themselves time and labour; (4) the defendant's use of the parts taken into D11 was such as to compete with and affect the sales of the plaintiff's book (P1), as a result of which the plaintiff had decided not to publish further editions of P1; (5) an injunction should be issued to restrain the defendant, its directors, officers, servants or agents from, inter alia, reproducing without the licence of the plaintiff any copies of the work entitled 'Kursus Lengkap Peperiksaan SPM Rampaian Sains Ð Terbitan Pertama Ð 1980' or any other reproduction of the plaintiff's literary works entitled 'Kursus Ulangkaji Rampaian Sains'; (6) the defendant must deliver up all infringing copies and plates in its possession, power, custody or control; (7) an inquiry must be held as to damages or at the plaintiff's option an account of profits and payment of all sums found due upon such inquiry or account with interest thereon. Per curiam: '... it was not contended by the defence that the translation was not entitled to copyright protection; but even if the contention had been advanced, I was prepared, with respect, to follow the ratio in that English case and to hold that a translation of a literary work is eligible to copyright in the country.'

Longman Malaysia Sdn Bhd v Pustaka Delta Pelajaran Sdn Bhd [1987] 2 MLJ 359 High Court, Kuala Lumpur (Gunn Chit Tuan J).

P had earlier obtained an Anton Piller order against D. P had contended in their supporting affidavit, inter alia, that the copyright in the respective books which consisted of anthologies of short stories and poems had been duly assigned to them; that they had published both the books and that D had infringed their copyright in both the works by publishing, distributing, exhibiting and selling infringed copies of each of the works. P had also successfully arranged a trap purchase of D's shop. However, on execution of the Anton Piller order, infringing copies of the books were not found. D applied to have the order dissolved and sought an order for damages suffered by them as a result thereof to be assessed and paid. Counsel for D contended that P had no copyright in either of the works as there was no evidence that the actual authors of the stories and poems had assigned their copyright in the works of P.

Held, (dismissing D's application): (1) in the instant case, P were not claiming copyright to the individual stories or poems but to the collection or anthologies. In principle and on authority, an anthology of stories and poems could be the subject of copyright. In the instant case, the copyright in the books had been assigned by the authors to P; (2) in a copyright infringement complaint, suspicion followed by a successful trap purchase exercise supported by prima facie evidence of ownership in the copyright, as in the instant case, is sufficient to justify the giving of an Anton Piller order; (3) D's application to set aside the order was, accordingly, dismissed.

Penerbit Fajar Bakti Sdn Bhd v Cahaya Surya Buky Dan Alat Tulis [1989] 1 MLJ 386 High Court, Kuala Lumpur (VC George J).

The three cases were brought by software companies seeking summary judgment for breach of their respective copyrights in software and manuals produced and marketed by them. These applications were heard on the same day. All three applications arose out of a raid made by private investigators and the police on the first and second defendants' home on 28 October 1991. During the raid a large variety of unlicensed copies of software and computer manuals were found. The second defendant is the wife of the first defendant. The third defendant is the brother of the first defendant.

Held, allowing the plaintiffs' claim: (1) s 27(2) of the Copyright Act (Cap 63) ('the Act') specifies the conditions necessary for copyright to subsist in a work; (2) where copyright subsists in work prior to the 1987 Act, ss 210 and 211(2) of the Act come into play; (3) in the case of works published in the United States, the copyright in those works are protected by the Copyright (International Protection) Regulations 1987 ('the Regulations'); (4) it extends protection to countries provided for by the 1911 Act by widening sub-s (c), and it excises the necessity of compliance with sub-ss (d) and (e) of s 27(2). It is in this light that the Regulations must be looked at; (5) the clear intent of s 211(2) is to deal with works covered by s 27(2) but published before 1987. Thus the function of s 211(2) in regard to works protected by the Regulations is to eliminate the necessity of compliance with subsections (d) and (e) of s 27(2) where the works are pre-1987. Section 210 and reg 6 then provide the second barrier. It follows then that reg 6 does not apply to s 211(2) because it does not need to. The task of s 211(2) is not to reconsider that which is dealt with by s 210 but to modify s 27(2) which is dealt with by reg 3; (6) however for pre-1987 works there is an additional barrier of s 210 which is a section that is negative in effect. Regulation 6 modifies this. Thus if the copyright has not expired prior to 1987 it will be recognized; (7) the defendants' attempts at explanation were completely without merit. The physical evidence alone is enough to convince me that the defendants were in the business of making unlicensed copies of software and manuals for sale on an organized large scale basis. No ordinary home user would have purchased such a large variety of different types of programmes, some of which were very similar and performed the same function. Purchasing for the purposes of resale would not explain the large number of unlicensed copies of manuals, invoices for the huge quantities of blank Maxwell diskettes and the correspondence with the printers, other dealers, customers and software companies. The defendants had attempted to explain that the records were not their own, but those of Indonesian parties who used Spot Technology as an import-export agent. This explanation was totally unconvincing, and the absence of details of these parties apart from the ritual incantation of the name Eugene did not aid their case; (8) upon an ordinary reading of that section, the function of s 211(2) is not to limit the type of works that s 27(2) caters for but to relax the 'if, but only if' conditions that the works must meet for cases concerning pre-1987 works;thus the combined effect of the Act and the Regulations is this: the Act applies to countries specified in the Schedule; a distinction is made between pre and post-1987 works; for post-1987 works reg 3 and s 27(2) must be attained; for pre-1987 works there is no need to comply with s 27(2)(d) and s 27(2)(e);this was an appropriate case for the award of additional damages. The defendants had displayed a calculated disregard of the plaintiffs' rights in their highly profitable pursuit of pecuniary benefit. More importantly their products were exact copies of the plaintiffs' but at far lower prices: this rendered the plaintiffs' products extremely unattractive to the ordinary consumer and other retailers. Further, owing to the fact that they sometimes managed to sell their unlicensed copies even before the authorized copies came onto the local and regional market they also cornered that portion of the market that wanted the latest software and manuals. The plaintiffs had suffered additional loss that was difficult to compensate; thus an inquiry as to such additional damages as may be appropriate was necessary.

Novell Inc v Ong Seow Pheng & Ors and other actions [1993] 3 SLR 700 High Court, Singapore (Punch Coomaraswamy J).

Both the plaintiffs and the defendants were fax-modem manufacturers. In this action, the plaintiffs claimed that a fax-modem marketed by the defendants under the latter's trade name 'Nimrod' infringed the plaintiffs' copyright in the printed circuit board design of a fax-modem marketed by the plaintiffs under the name 'COMFAX CF-29SR'. According to the plaintiffs, the printed circuit board layout as well as the artwork design (the design) pertaining to their modem were the product of their consultant engineer, Mr Soh. They alleged that the design was unlawfully copied by the third party when the latter had access to the plaintiffs' premises at a time he was assisting in the development of the design. The defendants did not dispute that the plaintiffs' modem and their 'Nimrod' modem were almost identical in layout and component placements. However, they denied that they had knowingly copied the plaintiffs' product. They asserted that the third party, who became their employee subsequently, developed the design himself. The third party asserted that he, and not Mr Soh, was the author and brain behind the plaintiffs' modem. He alleged that he was the one who instructed and guided Mr Soh in setting out the layout of the plaintiffs' modem card from the sample demonstrations board and the full schematic drawings provided by an American modem manufacturer known as Navin/Sierra Systems (Navin). What Mr Soh did, according to the third party, was merely to plot the layout lines on the computer, by operating a computer assisted design software known as Protel, under the close supervision by the third party. The third party also claimed that the diskette containing the completed design was given to him by Mr Soh, and from this design and by using the schematic diagrams of Navin, he developed the defendants' modem card with some modifications. The second ground of defence raised by the defendants and the third party was that the plaintiffs had not established their title or ownership to the design, giving them a right to sue; since Mr Soh, the alleged author of the design, was not an employee of the plaintiffs, the copyright in the design was vested in Mr Soh, and, by virtue of s 194(3) of the Copyright Act (Cap 63, 1988 Ed) (the Act), no assignment of copyright would have effect unless it was in writing signed by or on behalf of the assignor. The third ground of defence was that the design was not protected as the design, which was produced from schematic diagrams based on Navin's schematic diagrams, could not be regarded as original. Another issue that arose was whether the design could be considered a 'literary work'. The last ground of defence was that the defendants were entitled to the 'non-expert's defence' set out in s 69 of the Act, even if it were proved that the third party had copied the plaintiffs' design.

Held, judgment for the plaintiffs: (1) based on the evidence presented, Mr Soh was the author who produced the design for the plaintiffs and the third party had copied the plaintiffs' design without their consent and approval; (2) as Mr Soh had explicitly conceded that the design developed was the property of the plaintiffs, the defendants and the third party could not ascribe the right to Mr Soh. Therefore, the issue of assignment, as envisaged under s 194(3) of the Act, did not arise; (3) 'Literary work' as used in the Act included anything that was written down and contained information which could be read by somebody D as opposed to merely appreciated with the eye D unless expressly taken out of the definition, eg in the case of musical notation. This meant that that which was not expressly taken out remained within the definition. The design, which contained much technical information by way of a multitude of markings, lines, circles, holes, printed figures, abbreviations and codes with a view to placing thereon the various resistors, capacitors, transistors, transformers, inductors and the requisite switches, could, therefore, be grouped with the family of circuit diagrams, and qualify as a 'literary work'; (4) the design was clearly artistic work as provided in s 7(1) of the Act, and was entitled to copyright protection so long as it satisfied the 'originality' requirement; (5) for work to be 'original' for the purposes of the Act, it was not necessary that all materials used be entirely new. Artistic copyright was essentially concerned with visual image. It was clear from a comparison of the plaintiffs' design and Navin's that the differences between them were striking; the design was neither a mere reproduction of Navin's layout with minor modifications nor an insignificant variation of the same. There was, accordingly, originality in the plaintiffs' design: much intellectual effort and industry had gone into the product; (6) on the other hand, since the plaintiffs' board and the defendants' board were 95% substantially the same, it was clear that the defendants' design was copied almost to the last detail from the plaintiffs' design. There was no independent design by the third party; (7) the 'non-expert' defence in s 69 of the Act was put in place to encompass instances of three-dimensional objects being manufactured from two-dimensional artistic work and the manufacture of two-dimensional objects from three-dimensional artistic works; the section was not intended to cover cases where direct copying was involved. The 'non-expert' defence, therefore, failed in this case. To the court, as a notional non-expert, it would appear that there was an unmitigated act of substantial reproduction of not only the plaintiffs' design but also the end product, namely, the plaintiffs' COMFAX CS-29SR; (8) on the evidence, the defendants had not been aware of any infringement on the part of the third party when they embarked on their project. Additionally, the defendants, by not contesting the plaintiffs' motion for injunction at the outset, made themselves eligible for the mitigating provisions of s 119(3) of the Act. Consequently, the plaintiffs were only entitled to an account of profits, and not damages, in respect of the infringement; (9) this case was a contest between the plaintiffs and the third party, with the defendants seeking shelter behind the shadow of the third party. The third party was, accordingly, ordered to bear the costs of the plaintiffs.

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

The plaintiff, a chartered civil and structural engineer, claimed a declaration that he was entitled to the copyright in all documents and drawings prepared by him for the construction of schools for the government.

Held: on the facts the plaintiff, in preparing the drawings, had substantially copied from PWD drawings and therefore the plaintiff's drawings though they come within the meaning of 'literary work' in the enactment were not original literary work so as to qualify for a copyright.

Lau Foo Sun v Government of Malaysia [1970] 1 MLJ 20 High Court, Kuala Lumpur (Gill FJ).

[Annotation: Decision on facts, reversed on appeal with respect to the finding on originality.]

The appellant, a chartered civil and structural engineer, had claimed a declaration that he was entitled to the copyright in the engineering drawings and designs prepared by him for the construction of double-storey classrooms for schools for the government. It was held in the High Court ([1970] 1 MLJ 20) that the appellant in preparing the drawings had substantially copied from PWD drawings and therefore the appellant's drawings and designs were not original literary works so as to qualify for copyright under the Copyright Enactment (FMS Cap 73). The appellant appealed.

Held, allowing the appeal: the respondent had not rebutted the presumption that copyright existed in the appellant's works, as they had failed to prove that the appellant's works were nothing more than direct tracings of other original works or drawings. The engineering drawings and designs were 'literary work' within the meaning of the Copyright Enactment and they were also 'original literary work' within the meaning of the enactment.

Lau Foo Sun v Government of Malaysia [1974] 1 MLJ 28 Federal Court, Kuala Lumpur (Azmi LP, Suffian CJ and Ali FJ).

In mid-1987, the plaintiffs commenced this action against the defendant, alleging infringements of copyright in their computer software, misuse as a former employee of confidential information in respect of the computer software and breaches of fiduciary duties. They sought the usual injunctive reliefs and damages. The trial was heard in October 1991 and after a hearing of 25 days, it was adjourned. At the initial stage of the hearing, the combined effect of s 239(1) and s 209(2) of the Copyright Act (Cap 63) ('the Act') had to be interpreted.

Held: (1) the effect of the two sections which took effect on and after 10 April 1987 was that in Singapore, a computer program made and completed before 10 April 1987 was copyrightable as a literary work only by virtue of s 239(1) of the Act and that such a computer program could not enjoy copyright independently of s 239(1) of the Act; (2) on a plain reading of s 209(2), it is clear that nothing done in relation to that computer before 10 April 1987 shall constitute an infringement of the copyright; (3) the 1911 UK Copyright Act exclusively set out the law of copyright of Singapore until it was repealed by s 203 of the Act which came into force on 10 April 1987; (4) and then, if necessary, the company they keep; (5) every judicial interpretation of a statute is a search for the true legislative intention. The starting point is to look at and interpret the text, that is, the words used;Parliament intended to put an end to the debate itself on the question whether computer programs enjoyed copyright protection from their creation under the 1911 Act and also intended to wipe the slate clean in relation to all past infringements under both civil and criminal law. It cannot realistically be imagined that Parliament would still intend infringers to be sued or prosecuted on any copyright which subsisted independently of s 239(1).

Federal Computer Services Sdn Bhd v Ang Jee Hai Eric [1993] 3 SLR 388 High Court, Singapore (Lai Kew Chai J).

P were engaged in, inter alia, making, producing and publishing musical works and sound recordings. P commenced proceedings against D seeking, inter alia, an injunction to restrain D, his servants or agents from infringing P's copyright in the musical works and from passing off the musical works not of P's manufacture as and for that of P. P had not authorised D or any one else to reproduce and distribute the musical works and sound recordings. D denied infringing P's copyright in the musical works or that he had been dealing in sound cassette recordings not belonging to P.

Held, (allowing P's application for an injunction): (1) having considered all the evidence, the learned judge was satisfied that there had been infringement of P's copyright in the musical works and that D had been passing off those musical works not of P's manufacture as those of P; (2) as D had been reproducing and/or disposing of unlawfully, without the licence or consent of P, P's musical works in cassette or had otherwise caused or assisted others to reproduce them without P's consent, the learned judge granted P the injunction sought so as to restrain D from doing any of those acts; (3) D was also ordered to deliver to P all infringing copies of the musical works which were in D's possession, power, custody or control. The learned judge also ordered that there be an inquiry as to damages or, at P's option, an account of profits and payment of all sums found due upon taking such inquiry or account.

Dunia Muzik Wea Sdn Bhd & Anor v Koh Tay Eng (t/a Syarikat Oscar Records and Tapes) [1989] 2 MLJ 356 High Court, Kuala Lumpur (Gunn Chit Tuan J).

The respondents, proprietors of a music store, were charged with knowingly exposing for sale and knowingly having in their possession for sale infringing copies (namely, ten compact discs) of certain sound recordings, under ss 136(1)(b) and 136(2)(a) of the Copyright Act (Cap 63) ('the Act') respectively. At the outset of the trial, the prosecution tendered an affidavit under s 137(1) of the Act to establish the existence and the ownership of the copyright by EMI Records Ltd ('EMI') in the sound recordings. During the trial, it was established that the compact discs were expressed to have been manufactured in the EEC and Japan (in the form of markings on the discs) and that EMI had not consented to their manufacture. At the conclusion of the prosecution's case, the trail court however held that there was no case for the respondents to answer on two grounds. Firstly, for an infringing article manufactured abroad to come within the definition of 'infringing copy' in the second limb of s 7 of the Act, it must be established that the making of the article was carried out without the consent of the owner of the copyright of the article in the country in which it was manufactured; and as the prosecution had not adduced evidence regarding the existence of copyright protection in, and the non-consensual manufacture of the compact discs within the EEC and Japan, this interpretation must necessarily mean that the prosecution had failed to prove its case. The trial court relied principally on the interpretation of the words '... the making of the article ...' in s 105(1) of the Act, made by Chan Sek Keong J in Television Broadcasts v Golden Line Video & Marketing [1989] 1 MLJ 201: that as the latter had interpreted those words as a reference to the making of the article abroad, it would make more sense to interpret the subsequent reference to the copyright owner in s 105(1) as being the copyright owner in the country of manufacture since the only consent reasonably required to manufacture the article abroad would be the consent of that person. Secondly, in relation to one of the charges under s 136(2)(a), the presumption laid down in the s 137(1) affidavit that EMI's copyright subsisted in Singapore at the material time had been rebutted, it having been established that the work in question was first recorded in 1958 and, following Butterworth v Ng Sui Nam [1985] 1 MLJ 196, that where the country of first publication at that time was England, no copyright to it could be acquired by EMI in Singapore in that way, as it fell within the 1956-59 interregnum during which such copyright would not be recognized under the Copyright Act 1911 and thus the Act. The prosecution appealed, contending, inter alia, that the second limb of s 7 should be interpreted such that the relevant consent is the consent of the copyright holder at the place of importation. They did so on the following grounds: (1) that this was the ordinary and natural meaning of the words in question; (2) the practical consequences of preferring the trial court's interpretation; (3) that if the trial court's interpretation was adopted, this would lead to a wholesale evasion of the copyright protection afforded to Singapore copyright holders by the Act. Relying on Pepper v Hart [1992] 3 WLR 1032 and s 9A of the Interpretation Act (Cap 1), they referred to the speeches by the Minister of Law when the relevant Bill was passed to reveal the government's policy of protecting the localised rights of Singapore copyright owners and the exertion of Singapore's copyright laws within its jurisdiction.

Held, allowing the appeal: (1) s 25(2) makes it clear that, in the context of an article being imported without the licence of the copyright owner in the second limb of s 7, the copyright owner referred to is the owner in the country of importation. As this was the case, the subsequent allusion in s 7 to the consent of the copyright owner, in the context of the manufacture of the article, must likewise refer to the consent of the owner of the copyright in the country of importation. On a plain and instinctive interpretation of the words in the section, it seems completely ordinary and natural that the expression 'the owner of the copyright', in respect of the two elements of the section, importation and non-consensual manufacture, must be taken to have the same meaning in the section; (2) on the other hand, the interpretation of the trial court would prove impossible in practice as it would require the Singapore copyright owner, in order to enforce his rights against imports, to be able to establish, beyond reasonable doubt, the country of origin of the imports, the ownership of the relevant copyright in that country and the breach of that copyright in relation to the manufacture of the article there. This would not only result in the expenditure of considerable time and expense, but would, in the court's opinion, pose too onerous an obligation on the party seeking to enforce his intellectual property rights in Singapore; (3) although the court did not have primary regard to the competing policy factors involved in the instant case, reference to the relevant preparatory materials prior to the passing of the Act would indicate that the legislature had rejected the interpretation adopted by the trial court; (4) distinguishing the Golden Line case, the learned judge in that part of his judgment relied on by the trial court was replying to plaintiff's counsel's reliance on two decisions involving foreign statutes wherein the test used did not refer to the actual place of manufacture of the article in question but to whether the person would have committed an infringement of copyright had he manufactured the article in the country of importation. No doubt the learned judge felt compelled to emphasize as he did that as regards the domestic copyright law the test is to the actual making of the article abroad before it was imported and not the hypothetical test propounded by foreign copyright laws; (5) as regards the trial court's other holding, it was not necessarily the prosecution's case at trial that the work in question had been first published in England, there being other ways in which EMI's copyright in that recording could exist in Singapore. The wording of s 137(1) meant that the onus was on the defence at trial to prove that the copyright could not subsist in any of the ways and until then, the prosecution was entitled not to give evidence as to which of the ways they relied on to derive their copyright; (6) the case was accordingly sent back to the trial court to call on the respondents to enter upon their defence.

Public Prosecutor v Teoh Ai Nee & Anor [1994] 1 SLR 452 High Court, Singapore (Yong Pung How CJ).

[Annotation: Affirmed on appeal. See [1995] 2 SLR 69.]

The appellant was convicted on three charges of having in his possession contrivances capable of being used for the purposes of making infringing copies of textbooks the copyrights of which were vested in the complainant. He appealed against conviction and sentence. The appeal was on the grounds that the fines of $1,500 on each of the three charges were excessive and that the legislation had not provided for any fine or punishment for the possession of a duplicating contrivance.

Held, allowing only the appeal on sentence: (1) there is in the Copyright Act 1969 (Act 10) read as a whole a clear distinction between an infringing copy and a contrivance; (2) Parliament had failed to provide a punishment for the offence of possession of contrivances for the making of infringing copies of copyright materials.

Soon Kim Seng v Public Prosecutor [1978] 2 MLJ 107 High Court, Kuala Lumpur (Chang Min Tat J).

The six appellants were jointly charged with and convicted for 19 offences under s 3(1) of the Copyright (Gramophone Records and Government Broadcasting) Act (Cap 64, 1985 Ed) (the Act) for having in their possession for sale a number of pirated cassette tapes. They were sentenced to a fine of $200 each for each charge or in default ten days' imprisonment for each charge. The court further ordered that all tapes seized be forfeited to the complainant for destruction. At the trial the various cassette tapes which formed the subject matter of the charges were proved to be pirated copies by affidavit evidence and admitted in accordance with s 5 of the Act. The prosecution also produced in evidence to prove the identities of the partners of Supreme Record Centre a document from the Registry of Companies with the title 'INSTANT INFORMATION SERVICE'. Counsel for the accused did not object to the admission in evidence of this document. This document was a computer printout obtained from the Registry of Companies and Businesses. The district judge called for the defence. The accused elected not to give evidence and they were accordingly convicted. The accused appealed. On appeal, the main contention of the appellants was that the conviction was wrong as there was insufficient evidence to support an essential ingredient of the offence namely 'possession' by the appellants. This submission contained two separate elements: (1) there was no evidence to connect the appellants to the cassette tapes and (2) 'possession' in s 3 of the Act required mens rea, of which there was no evidence in regard to the appellants.

Held, allowing the appeal: (1) what s 16 of the Business Registration Act (Cap 32, 1985 Ed) contemplated is a 'copy of or an extract from any document filed with the Registrar'. The Instant Information sheet contained information retrieved from a data base. The data base itself holds and is a record of all the relevant information abstracted from documents filed with the registry. The computer printout was not a copy of or an extract from any document filed in the registry. It was an original document. It contained information retrieved from some kind of data base or a memory bank of a computer. But it was an original document containing evidence which was hearsay; (2) it is clear law that inadmissible evidence does not become admissible because of failure of counsel to object to its admission; (3) in the circumstances of the present case, there was no admissible evidence which proved that the appellants were at the material time the partners of the firm in whose premises the pirated tapes were seized and thus no link was established between the tapes and the appellants; (4) the convictions must be quashed and the fines should be refunded. The order for the forfeiture and destruction of the pirated tapes must be confirmed.

Aw Kew Lim & Ors v Public Prosecutor [1987] SLR 410 High Court, Singapore (Chan Sek Keong JC).

The respondent was discharged and acquitted in the magistrate's court on a charge of being in possession at his bookshop of 18 infringing copies of literary work, an offence under s 15(1)(d) of the Copyright Act 1969 (Act 10). The prosecution was instituted and conducted by an advocate and solicitor on the basis that the offence was a non-seizable offence. Unbeknown to the parties and magistrate, the non-seizable offence under s 15(1)(d) of the Act became seizable by an amendment to the Act, and thus the case could not be conducted by an advocate and solicitor unless he has fiat from the Public Prosecutor or his department. Neither the complainant nor his counsel had any written authority from the Public Prosecutor or his department to prosecute.

Held, allowing the appeal: (1) the omission was not a mere irregularity but an illegality that could not be cured by s 422 of the Criminal Procedure Code (FMS Cap 6) and, as such, the private prosecution before the magistrate was a nullity ab initio; (2) the order of acquittal was set aside and an order of discharge not amounting to an acquittal was substituted.

Public Prosecutor v KM Basheer Ahmad [1982] 2 MLJ 78 High Court, Kuala Lumpur (Mohamed Azmi J).

Real Electronics Industries Singapore (Pte) Ltd v Nimrod Engineering Pte Ltd (T Vimalanathan, third party) [1996] 1 SLR 336 High Court, Singapore (Rubin J).

This is an application by the plaintiffs for an order of committal against the defendant for contempt of court for failing to comply with an order dated 26 April 1984 ('the order'). The order was an injunction restraining the defendant from infringing the plaintiffs' copyright of recordings of certain songs and to place into custody of the plaintiffs' solicitors all pirated copies of those recordings. By an order made on 11 January 1985 the interim injunction was continued until the trial of the action or until further order. The plaintiffs alleged that the defendant had breached the order by offering for sale and selling pirated copies of the plaintiffs' recordings on four occasions, viz, on 6 June 1984, 12 November 1984, 22 January 1985 and 29 March 1985.

Held: (1) no evidence has been adduced to show that these alleged offending sound tapes are copies or substantial copies of the fourth plaintiff's recordings of the relevant songs; (2) in contempt proceedings, the standard of proof is one beyond reasonable doubt. The plaintiffs have failed to establish that the defendant had committed a breach of the terms of the order.

Polygram Records Sdn Bhd & Ors v Phua Tai Eng 1984 High Court, Singapore (Thean J).

The present case involved criminal revision relating to Ipoh Arrest Case CAC 675/81 and Kampar Arrest Case No A185/81 wherein two accused persons were separately charged under s 15(1) of the Copyright Act 1969 (Act 10) (the said Act). Learned counsel for the accused persons contended that after the copies of the video tapes were seized no proceedings against either of the accused persons were instituted within six months of the seizure as required under s 15(4) of the said Act. It was further argued that proceedings were deemed to be instituted only when the accused was arrested and charged in court. But as this was not done in either of the two cases, the magistrate's court had no jurisdiction to hear the cases. The record showed that in Ipoh Arrest Case CAC 675/81 the search warrant was ordered to be issued by the magistrate on 10 February 1981. The search warrant was, however, signed by the Registrar of the Sessions Court. The record also showed that the warrant of arrest which was ordered to be issued on 29 July 1981 was duly signed and sealed but left undated. In Kampar Arrest Case No A185/81 the police raided the premises of the accused and seized copies of the video tapes on 13 January 1981 without any search warrant.

Held: (1) the arrest of the accused person is the commencement or is the institution of proceedings within the meaning of s 15(4)(b) of the said Act; (2) the magistrate who considers the information on oath for the issue of a search warrant under s 15(4) has to sign the warrant himself for otherwise he is not issuing it under his hand. This judicial function of the magistrate cannot be delegated. In Ipoh Arrest Case CAC 675/81, the search warrant was therefore invalid rendering the proceeding null and void; (3) in case of CAC 675/81 the omission to date the warrant of arrest was a serious defect which left it invalid and could not be acted upon; (4) in case CAC 675/81, if the seizure of the tapes had been lawful the arrest of the accused on 18 August 1981 was outside the six month's limit and therefore the magistrate's court had no jurisdiction to hear the case; (5) in Kampar Arrest Case No A185/81, the raid on the premises of the accused and seizure of copies of video tapes without any search warrant was a serious irregularity rendering the search and seizure of the video tapes illegal. Since proceedings under s 15(1) of the Copyright Act can only commence if the infringing copies are lawfully seized under s 15(4) and not otherwise, the arrest of the accused and all subsequent proceedings were invalid; (6) in the interest of justice the accused person should be acquitted and discharged and the tapes be returned to them.

Public Prosecutor v Then Mee Kom; Public Prosecutor v Chan Kam Lai [1983] 2 MLJ 344 High Court, Ipoh (Ajaib Singh J).

[Annotation: This case whilst not overruled was disapproved of in Television Broadcasts Ltd v Mandarin Video [1983] 2 MLJ 346. See also Oh Teck Soon v Public Prosecutor at [1985] 1 MLJ 437 and [1986] 1 MLJ 488.]

In this case the police on 16 July 1981 seized copies of tapes from the accused under a search warrant issued by a magistrate under s 15(4) of the Copyright Act 1969 (Act 10). The accused was charged in court the same day for offences under the Copyright Act. After a number of postponements, the accused was discharged on 14 September 1982, the discharge not amounting to an acquittal. Subsequently the accused was arrested on a warrant of arrest issued by the magistrate and he was produced before the magistrate on 1 December 1982. The same two charges were proffered against him. A preliminary objection was raised that the prosecution was out of time. The learned magistrate was of the view that the second prosecution was in fact a continuation of the first one and as such it was not caught by the six months' limitation under s 15(4) of the Copyright Act. He therefore overruled the preliminary objection. The accused appealed.

Held: (1) the second prosecution in this case could not be a continuation of the first one. The proceedings which were instituted within six months of the seizure of the tapes terminated when the accused was discharged. As the second proceedings were not instituted within the six-month period the magistrate's court had no jurisdiction to take cognizance of the offences with which the accused was charged on the second occasion; (2) the ruling by the learned magistrate was not a ruling on mere procedure from which there could be no right of appeal. The ruling went to the very jurisdiction of the magistrate's court and as such the appeal was in order; (3) in the exercise of the appellate jurisdiction as well as the revisionary powers of the High Court the accused should be acquitted and discharged.

Oh Teck Soon v Public Prosecutor [1985] 1 MLJ 437 High Court, Ipoh (Ajaib Singh J).

[Annotation: The prosecutor took out a Supreme Court reference on a question of law in respect of the decision on the limitation effects of s 15(4). The Supreme Court at [1986] 1 MLJ 488 took a contrary view, namely, s 15(4) does not limit the time for instituting criminal proceedings. See also Television Broadcasts Ltd & Ors v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346; Public Prosecutor v Chan Kam Lai [1983] 2 MLJ 344.]

In this case, the police on 16 July 1981 raided certain premises in Ipoh and seized copies of video tapes under a warrant issued by a magistrate under s 15(4) of the Copyright Act 1969 (Act 10). The accused was arrested and charged the same day for offences under the Copyright Act. After a number of postponements the accused was discharged on 14 September 1982, the discharge not amounting to an acquittal. Subsequently the accused was arrested on a warrant of arrest issued by the magistrate and he was produced before the magistrate on 1 December 1982. The same two charges were proffered against him. A preliminary objection was raised that the prosecution was out of time. The learned magistrate was of the view that the second prosecution was a continuation of the first prosecution and as such was not caught by the six-month period under s 15(4) of the Copyright Act. He overruled the preliminary objection. The accused appealed to the High Court. The learned judge of the High Court held that although the appeal was on a preliminary point it was a question of jurisdiction and therefore the appeal was in order. He held that the second prosecution should not be construed as a continuation of the first one. The proceedings which were instituted within six months of the seizure of the tapes terminated when the accused was discharged. As the second proceedings were not instituted within the six-month period the magistrate's court had no jurisdiction to take cognizance of the offences with which the accused was charged on the second occasion. He therefore acquitted and discharged the accused Ð see [1985] 1 MLJ 437. The Public Prosecutor thereupon referred the following question to the Supreme Court Ð 'Whether by virtue of s 15(4) of the Copyright Act 1969, the prosecution is barred by law from instituting a criminal charge against any person under s 15, six months after the seizure of the video tapes, the subject matter of the charge.'

Held: the central subject of s 15(4) of the Copyright Act 1969, is the return or disposal of the infringing copies or contrivance seized under that provision. It would be wrong to construe s 15(4) of the Act as a provision laying down a time-table for prosecution. The answer to the question posed is therefore in the negative.

Public Prosecutor v Oh Teck Soon [1986] 1 MLJ 488 Supreme Court, Kuala Lumpur (Lee Hun Hoe CJ (Borneo).

[Annotation: See also Television Broadcasts Ltd & Ors v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346; Public Prosecutor v Chan Kam Lai [1983] 2 MLJ 344.]

Lance Court Furnishings Pte Ltd v Public Prosecutor [1993] 3 SLR 969 High Court, Singapore (Kan Ting Chiu JC).

The applicant is Lance Court Furnishings Pte Ltd. The applicant moved the High Court to quash a search warrant issued and executed against it by M/s Anju/Woodridge. The search warrant, issued by a magistrate, stated that M/s Anju/Woodridge are owners of design copyright in certain fabrics and Lance Court Furnishings was in possession of fabrics which infringed the copyright of M/s Anju/Woodridge for purposes of sale or distribution. These fabrics had designs and had been manufactured in the United States and were for sale in Singapore. Lance Court Furnishings contended that M/s Anju/Woodridge did not have the necessary copyright as these designs had been industrially applied without registration in the United Kingdom and the magistrate was wrong in issuing the search warrant. Lance Court Furnishings received the fiat from the public prosecutor to defend the action. The question arose as to the conditions necessary for the forfeiture of design copyright which had not been registered under the United Kingdom Registered Designs Act 1949. A further question also arose as to whether the public prosecutor was the proper respondent in this matter before the fiat was given to Lance Court Furnishings.

Held, setting aside the search warrant: (1) the warrant in the instant case was issued under s 136(9) of the Copyright Act (Cap 63) in relation to information on oath of a copyright offence under the subsection of the said section and hence, by virtue of art 35(8) of the Constitution of the Republic of Singapore, the public prosecutor may be deemed to be the proper respondent as he has complete authority over the conduct of any proceedings for any offence; (2) when copyright subsists in designs and they are industrially applied and offered for sale, the designs must be registered under the United Kingdom Registered Designs Act 1949 failing which, any copying of such designs in Singapore would not be a copyright infringement; (3) however, industrial application must be in Singapore and not anywhere else; (4) if the industrial application is in other countries but the sale of fabrics with such designs is in Singapore and the designs have not been registered under the United Kingdom Registered Designs Act 1949, there will be no automatic forfeiture of copyright in Singapore; (5) in the immediate case the designs were applied industrially in the United States and hence the designs enjoy copyright in Singapore despite lack of registration in the United Kingdom; (6) forfeiture of copyright for designs which have not been registered in the United Kingdom will only come into operation if designs are industrially applied in Singapore and they are sold in Singapore or elsewhere; (7) a complaint under s 136 of the Copyright Act (Cap 63) for a search warrant should clearly reflect that the complainant verily believes that the person in possession of the infringing articles knew or ought reasonably to know of the infringements, in the instant case this was not done and as such the search warrant issued must be set aside; (8) the warrant may cover items relating to suspected infringements but the complainant must state the basis for such suspicion; (9) production of such infringing articles before the magistrate may be waived if such production is not possible or practical; (10) documents evidencing infringement which in themselves are not the infringing copies cannot be seized under a warrant issued under s 136(9) of the Copyright Act (Cap 63); (11) the search warrant may name other persons together with police officers to conduct the search and seize infringing items.

Lance Court Furnishings Pte Ltd v Public Prosecutor [1993] 3 SLR 969 High Court, Singapore (Kan Ting Chiu JC).

Lance Court Furnishings Pte Ltd v Public Prosecutor [1993] 3 SLR 969 High Court, Singapore (Kan Ting Chiu JC).

In this case, the magistrate issued an order requiring the return to the owner of some of the articles seized by the police at Ipoh by virtue of two search warrants, in the form prescribed under the Criminal Procedure Code (FMS Cap 6), which he had earlier issued in consequence, in each case, of an information on oath made pursuant to the provision of s 15(4) of the Copyright Act 1969 (Act 10). The effect of the information was that the informants had good cause to suspect that offences under s 15(1) of the Act had been committed. Subsequently, Kah Wai Video (Ipoh) Sdn Bhd came forward to claim certain articles seized but not specified in the search warrant. After hearing arguments in open court, the issuing magistrate made the said order requiring the return of the articles to the owner through the police. Two questions involved are: (1) whether it was beyond the powers of the magistrate to have made the order and (2) whether, even if he had the necessary power to do so, the making of the order was unlawful exercise of discretion within the principles enunciated by Lord Greene MR in Associated Provincial Picture Houses Ltd v Wednesbury Corp [1948] 1 KB 223.

Held: (1) the issuing magistrate had neither the power nor the authority to direct the return of the unscheduled articles seized by the police authorities to the owners even if he had second thoughts about the propriety of his having issued the warrants of search in the first place; (2) if the issuing magistrate had the power to make the order for return of the unscheduled articles, then on the facts he ought not to have exercised the power in the manner he did because there was no illegal seizure; (3) having regard to the circumstances of this case, the police were authorized to seize and remove the unscheduled articles by virtue of the implied extension of powers under the warrant and/or the extension of their common law powers subject to the limitations imposed by s 15(4)(b); (4) they were also authorized to retain them in their custody and control to facilitate investigations into offences under s 5(1) subject, of course, to the limitation imposed by s 15(4)(b); (5) in any event, even if the police authorities are not authorized to conduct the search or to effect a seizure they may be open, at most, to some sort of civil action. But this is a far cry from saying that a prosecution will not lie under s 15(1) where there has been an illegal seizure of infringing copies; (6) the order of the magistrate directing the return of the unscheduled articles was quashed and substituted in its place an order that the police authorities be authorized to retain custody and control thereof to facilitate investigations into possible offences in contravention of s 15(1). The order made by the issuing magistrate as regards the scheduled articles was varied so as to enable the police authorities to continue to retain custody and control thereof, to facilitate investigations into possible offences in contravention of s 15(1).

Re Kah Wai Video (Ipoh) Sdn Bhd [1987] 2 MLJ 459 High Court, Ipoh (Edgar Joseph Jr J).

[Annotation: The Supreme Court had, on 19 August 1985, in Supreme Court Criminal Application No 15/85 made pursuant to the provision of s 66(1) of the Courts of Judicature Act 1964 (Act 91), refused leave to Kah Wai Video (Ipoh) Sdn Bhd to appeal to the Supreme Court against the judgment of Edgar Joseph Jr N. Further the Supreme Court had also on 24 March 1986 in Supreme Court Criminal Appeal No 24/85 dismissed an appeal lodged by the same Kah Wai Video (Ipoh) Sdn Bhd in respect of the same judgment following a preliminary objection by the senior federal counsel for the respondents that the appeal was incompetent, no leave having been obtained.]

In this case, the appellants who claimed copyright in certain films in video cassette form alleged infringement by the respondents of their copyright and instituted proceedings for relief by way of injunctions, delivery of the offending articles, discovery, and damages. On the issue of the writs they applied ex parte for and obtained Anton Piller orders. The respondents then applied to set aside these orders and for the return of all the cassettes, documents and other articles removed from their premises pursuant to the ex parte orders. The learned judge found no merit in the contentions advanced by the respondents in their application to set aside the orders made except on the question of the publication of the films under the Copyright Act 1969 (Act 10) taken in conjunction with the Films (Censorship) Act 1952 (Act 35). He held that as no certificates of approval were obtained as required under the Films (Censorship) Act there was no valid publication of the films within the provision of the Copyright Act as the publication in Malaysia must be a lawful one. He accordingly adjudged the publication of the films by the appellants to be unlawful, illegal and an offence punishable under the Films (Censorship) Act and decided in effect that no copyright had been acquired as a result. He therefore allowed the respondent's applications, set aside the ex parte orders he had previously made and ordered the return of the articles removed from the respondent's premises. See [1983] 2 MLJ 409. The appellants appealed.

Held allowing the appeals: (1) there was no prohibition in either of the Acts which would preclude the appellants from acquiring copyright if they were otherwise qualified although they were in breach of the provisions of the Films (Censorship) Act which is concerned only with criminal liability and provides a penalty for breach of its relevant provisions; (2) non-compliance with the provisions of the Films (Censorship) Act does not affect the acquisition of copyright under the Copyright Act. There is no express or implied prohibition linking the respective requirements of the two statutes and accordingly no nexus to justify reading these conjunctively and importing the requirements of one as a condition precedent to the operation of the other; (3) in this case since the appellants have in the first instance ex facie acquired copyright this needs to be protected pending a full hearing of the actions instituted.

Asia Television Ltd & Anor v Viwa Video Sdn Bhd & Connected Cases [1984] 2 MLJ 304 Federal Court, Ipoh (Abdul Hamid CJ (Malaya).

On 10 June 1983, the plaintiff obtained an interim injunction in the nature of an Anton Piller order on an ex parte application restraining the defendants from reproducing, disposing, renting or hiring out for private or domestic viewing or publicly exhibiting cinematograph films in the form of video tapes over which the plaintiffs claimed copyright. The defendants were also ordered to give a full account of all the infringing copies of the video tapes in their possession, custody or control and to deliver and surrender the said tapes to the plaintiffs. The defendants had applied to set aside the injunction and for the return of the video tapes and the 24 record cards. The defendants contended, inter alia, that the plaintiffs had no copyright in the cinematograph films contained in the video tapes because the plaintiffs had infringed the provisions of the Films (Censorship) Act 1952 (Act 35).

Held: (1) when the cinematograph films contained in the video tapes in the present case were published in Malaysia within 30 days of their publication in Hong Kong, no certificate of approval had been issued in respect of the films by the Board of Film Censors. The publication of the said films in the video tapes was therefore unlawful, illegal and constituted an offence punishable under the Films (Censorship) Act; (2) the said cinematograph films contained in the video tapes belonging to the plaintiffs had no copyright since the publication was unlawful. The plaintiffs were thus in no position to maintain any action for infringement of copyright in respect of these films; (3) the interim injunction should be set aside and the 84 tapes and the 24 record cards be returned to the defendants forthwith.

Asia Television Ltd & Anor v Viwa Video Sdn Bhd [1983] 2 MLJ 407 High Court, Ipoh (Ajaib Singh J).

[Annotation: Reversed on appeal, see [1984] 2 MLJ 304.]

The first two plaintiffs, TVB and RTV, were producers of the television series and programmes which were shown on Hong Kong Television. TVB and RTV were owners of the copyright in those television films or soap operas. The third plaintiff, Golden Star, had the exclusive right from them to reproduce those films on video cassettes for distribution to their dealers or outlets for hiring out to the public. From investigations conducted by Golden Star, the defendants had been hiring out pirated copies of their television series on the black market. They had not given permission to the defendants to make copies of or put on video cassettes their films. The plaintiffs therefore sought for an ex parte order, the Anton Piller order, before the writ was even served against the defendants. The plaintiffs wanted to take the defendants by surprise so that they could not get rid of incriminating evidence and their stock of infringing video cassettes. The plaintiffs therefore feared that unless they obtain an Anton Piller order the defendants would easily remove, destroy or erase incriminating documents and articles. The said order was granted by the present court. The defendants objected on the following grounds: (a) the defendants claimed privilege against self-incrimination; (b) as the plaintiffs had allegedly committed offences contrary to s 15(1) of the Films (Censorship) Act 1952 (Act 35), they had lost their copyright to the films; (c) the films were not made available in sufficient quantities to satisfy the reasonable requirement of the public under s 2(2)(a) of the Copyright Act 1969 (Act 10).

Held: (1) there was a strong prima facie case against the defendants that they had been dealing in illicit films and that the plaintiffs had satisfied the requirements for the making of an Anton Piller order; (2) the usefulness of the Anton Piller order is on the element of surprise. This is essential in cases of piracy. If the pirates have been forewarned then vital documents and articles would be lost, hidden or destroyed; (3) the defendants in this case were dealing with pirated video cassettes which infringed the plaintiffs' rights; (4) in this country the privilege against self-incrimination has been withdrawn: s 132 of the Evidence Act 1950 (Act 56). In view of s 132 (3), the Anton Piller order had to be modified to carry a statement in terms of s 132(2). The defendants must be informed that the answers given by them in response to the order will not subject them to the risk of arrest or prosecution and that their evidence will not be used in any criminal proceedings, except a prosecution for giving false evidence by their answers; (5) s 15(1)(a) of the Films (Censorship) Act 1952 makes it an offence to exhibit, sell, hire or distribute any film without a certificate. The court, however, ought to be very slow to hold that the Films (Censorship) Act 1952 intends to interfere with the rights and remedies given by the ordinary law of copyright; (6) if Golden Star had infringed the Films (Censorship) Act 1952 then they could be prosecuted and they would have to pay the penalty. However, their rights under the Copyright Act 1969 remained and could be enforced; (7) for copyright to subsist, the films must be published in Malaysia within 30 days of their being first shown in any country, in this case, Hong Kong; (8) for the films to be published within the meaning of s 2(2)(a) of the Copyright Act 1969, it is enough if they were on offer and sufficient copies were available to meet the anticipated public demand. In this case, the video cassettes were with the dealers, who being businessmen, were prepared to supply on demand. The plaintiffs need not prove any positive acts of offer; (9) TVB and RTV as makers of the film could, by virtue of s 2(1) of the Copyright Act 1969, sue. Golden Star as the exclusive licensee could also sue. Should Golden Star merely have a licence and not be an exclusive licensee, they were proper parties so long as they had joined TVB and RTV as co-plaintiffs.

Television Broadcasts Ltd & Ors v Mandarin Video Holdings Sdn Bhd [1983] 2 MLJ 346 High Court, Kuala Lumpur (Chan J).

P1 was the owner of the copyright in various films. P2 and P3 were the exclusive agents and licensees for the distribution of those films. D obtained 435 copies of various films from R, which had in turn received them from P3. D were not authorized sub-licensees. D rented out the videos to the public without R's consent or authorization. P sued for infringement of copyright.

Held, (dismissing the action): (1) the rights of a copyright owner of a cinematograph film are those of reproduction, public performance, broadcasting and diffusion. Copyright in a cinematograph film does not extend beyond these rights. The Select Committee on the Copyright Bill had rejected a submission that the right to distribute films by sale or rental should be one of the rights of the copyright owner; (2) it was not alleged that the video tapes in question were pirated tapes. A purchaser of non-infringing copyright articles obtains full ownership of the articles although he does not obtain the copyright. Any dealings by him with such articles in the way of trade, whether by sale or hire, are not infringements of copyright because the copyright owner has no exclusive right to any such dealings with such articles.

Television Broadcasts Ltd & Ors v Golden Line Video & Marketing Pte Ltd [1988] SLR 930 High Court, Singapore (Chan Sek Keong J).

Class One Video Distributors Sdn Bhd & Anor v Chanan Singh a/l Sher Singh & Anor [1997] 5 MLJ 209 High Court, Kuala Lumpur (Haidar J).