Spell It Right for Spelling Bee?
30 June 2014
Did the Court of Appeal get it right in the Spelling Bee dispute?
The case of The New Straits Times Press (M) Bhd & Anor v Admal Sdn Bhd  6 MLJ 405 called into question a claim on the copyright over a concept paper called ‘NST-Spell It Right’, which was said to reduce into written form the concept and rules of an English spelling competition.
This appeal to the Court of Appeal arose from a decision of the High Court where the Respondent, Admal Sdn Bhd (“Admal”) succeeded in its claim that the Appellants, New Straits Times Press (M) Bhd (“NST’) and RHB Bhd (“RHB”), had infringed its copyright in the said concept paper by running an English spelling competition known as ‘NST-RHB Spell It Right’.
Sometime in late 2004 or early 2005, NST was in negotiations with Admal to jointly organise an English spelling competition amongst its readers. During the course of negotiations, Admal had presented a concept paper setting out the concepts and rules for an English spelling competition entitled ABX Spelling Competition (“ABX Version”) and along the way, the said ABX Version was amended to incorporate the input and suggestions provided by NST.
While Admal agreed to have the improved ABX Version concept paper named ‘NST Spell It Right’ (“Concept Paper”), its directors nevertheless affirmed a statutory declaration to declare their ownership of the copyright over the Concept Paper. Ultimately, the joint venture to implement the Concept Paper and the ‘NST Spell It Right’ competition did not materialise due to lack of sponsorship.
Subsequently, NST decided to put in place its own spelling competition after achieving greater success in procuring sponsors. In 2008, NST collaborated with a third party, RHB, in running a spelling competition known as ‘RHB-NST Spell It Right’.
The collaboration between NST and RHB to run the ‘RHB-NST Spell It Right’ spelling competition did not sit well with Admal. Accordingly, Admal initiated a legal suit in 2011 against NST and RHB, claiming for infringement of the copyright found in the Concept Paper. Admal also claimed for breach of confidence against NST for using the features in the Concept Paper without obtaining its prior consent.
DECISION OF THE HIGH COURT
At the High Court, the learned trial judge, upon hearing evidence from both sides, found that Admal held copyright ownership over the Concept Paper, and that the said copyright was infringed by NST and RHB. The learned trial judge made this finding on grounds that the concepts and the rules of the ‘RHB-NST Spell It Right’ spelling competition were substantively similar to those in the Concept Paper.
THE APPELLANTS’ ARGUMENTS
At the hearing before the Court of Appeal, it was argued by the Appellants that the Concept Paper was not entitled to copyright protection because the work lacked originality. While the Appellants acknowledged that a compilation of information is eligible for copyright, it was submitted that the Concept Paper was not eligible for copyright protection as the concepts and rules compiled therein were general and common in nature and did not differ much from the rules found in other competitions, such as debate or singing.
It was argued that the ineligibility of the Concept Paper to qualify for copyright protection was further supported by the fact that even Admal’s witness admitted during cross-examination that in coming up with the Concept Paper, the idea and concept were copied from the televised American Spelling Bee competition.
To support their defence of non-infringement, the Appellants argued that the concepts and rules in their ‘RHB-NST Spell It Right’ competition only share a ‘commonplace object or theme’ with the Concept Paper and such commonplace features should be disregarded when it comes to determining whether there was substantial copying amounting to infringement. The Appellants also argued that the learned Judge had failed to consider the differences found in both versions.
THE DECISION OF THE COURT OF APPEAL
Entitlement to copyright protection
The Court of Appeal made a distinction between what is capable of obtaining capable protection and what is entitled to copyright protection. To determine whether the Concept Paper was eligible for copyright protection, the Court of Appeal adopted the originality test from the High Court case of Kiwi Brands (M) Sdn Bhd v Multiview Enterprises Sdn Bhd  6 MLJ 38, namely that:-
Upon considering the facts, the Court of Appeal found that the Concept Paper was ineligible for copyright protection as it was nothing more than a mere compilation of already existing information that has been widely available in the public sphere for ages, including from the American Spelling Bee Competition. Accordingly, the Court of Appeal found that the Concept Paper failed to satisfy the originality test propounded in Kiwi Brands to qualify for copyright protection.
The Court of Appeal further observed that even if it had erred in ruling that the Concept Paper was not eligible for copyright protection due to its simplicity, the learned judge had also erred in ruling that the Appellants had copied from the Concept Paper.
The Court held that in determining copyright infringement, i.e. whether there was substantial copying, the learned trial judge should have taken into account the “functional object” test where the quality of the copying is relevant as opposed to the quantity of copying. Applying this test, all functional or commonplace features should be excluded when comparing whether the latter version was copied from the earlier version.
Applying the functional object test laid down in Robin George Le Strange Meakin v British Broadcasting Corporation & Ors  EWHC 2065, the Court of Appeal found that the similarities appearing in both the Concept Paper and the ‘RHB-NST Spell It Right’ competition were to be expected since every English spelling competition would necessarily incorporate the very same features. By failing to exclude these functional or commonplace features, the learned trial judge had erred in concluding that the Concept Paper had been substantially copied by the Appellants.
One of the principles of copyright protection made clear from this case is that in its simplest terms, a work must be “original” to qualify for copyright protection. As set out in Kiwi Brands, which was adopted by the Court of Appeal in this case, originality relates to the expression of thought from the author and arguably, so long as the work is not copied from other work, it is entitled to copyright protection.
The Court of Appeal here unreservedly adopted the pronouncements in Kiwi Brands that a compilation could be original and copyrightable even if the information compiled is not original. Notwithstanding this, the Court of Appeal pronounced that “we are not persuaded that the NST Spell it Right although capable of securing copyright is entitled to such protection since it is nothing more than the mere compilation of already existing information widely available in the public sphere.” The operative words here appear to be “mere compilation” and suggest that substantial efforts and skill must be invested by an author compiling non-original information to gain copyright protection over a compilation.
As to establishing copyright infringement, this case serves as a reminder that substantial copying is dictated by the quality of the copying as opposed to the quantity of copying. Accordingly, qualitative copying precludes the consideration of functional or commonplace features as such features are not entitled to copyright protection in the first place because they lack originality. Thus, only the copying of original features which are entitled to copyright protection would amount to copyright infringement.
While the Court of Appeal may have expressed reservations on the Concept Paper’s eligibility for copyright protection, it has nonetheless provided strong grounds for refuting claims that the Concept Paper was ever infringed. In conclusion, it would appear that the Court of Appeal has got it right in resolving this Spelling Bee dispute.