This article examines the intellectual property (IP) liability of internet platforms in Singapore, focusing on user-generated content (UGC) in e-commerce and social media. It contrasts the legal landscape for trade mark and copyright infringement.
E-commerce platforms face risks related to trade mark infringement through merchant listings and potential liability as joint tortfeasors, highlighting the importance of implementing effective takedown procedures, given that there is no statutory safe habour under the Trade Marks Act. Social media platforms may qualify for safe harbour protection under the Copyright Act as Network Service Providers (NSPs), subject to conditions like implementing notice-and-takedown mechanisms, avoiding direct financial benefit from infringement, and registering with IPOS. This note underscores the necessity for platforms to adopt proactive measures to minimize IP liability and foster a legally compliant online environment in Singapore.
Joint tortfeasor is derived from common law. In the context of intellectual property rights infringement, this can be broadly explained as a means to attach liability to a party other than the primary wrong actor. This liability is based on proof of some act of facilitation of the primary act, as well as acting pursuant to a common design - which might be fulfilled by proving knowledge of the culpability of the primary act. Although untested in Singapore courts, there may be some basis to argue that an e-commerce platform could be liable as a joint tortfeasor if the platform persists in allowing infringing merchant listings to remain active despite having been put on notice through takedown requests.
Under Singapore law, platform operators are generally not held primarily liable for intellectual property infringement committed by their users unless they have directly engaged in or authorized the infringing acts.
In terms of secondary liability, an e-commerce platform could be considered a joint tortfeasor under common law if knowledge of the infringement can be proven. A person who procures and induces another to commit a tort becomes a joint tortfeasor. There is no direct case on point but the decision in Calvin Klein, Inc and another v HS International Pte Ltd and others [2016] SGHC 214 suggests that a typical market place will not be ordinarily liable for trade mark infringement in respect of listings by the platforms users.
In Calvin Klein, Inc and another v HS International Pte Ltd and others [2016] SGHC 214, the defendant's attempt to characterize its website as an e-commerce market place failed because the court found that the defendant's role involved facilitating purchases by buying products from Taobao on behalf of users, arranging for their delivery to Singapore, and then selling them to these users. It was implicit that the court would have allowed the defendant's argument of non infringement had the court accepted the defendant's characterisation that its website is indeed an e-commerce market place.
As such, the current position in Singapore is that e-commerce platforms may be held liable for trade mark infringement if they have knowledge of infringing listings and fail to take necessary measures to remove them. Platforms are not likely to be liable merely because infringing listings exist on their site, provided they promptly remove such listings once made aware of their presence. However, if a platform knows or should have known about infringing activities and fails to take action, it could be held jointly liable with the infringing party under the common law concept of joint tortfeasorship.
The Trade Marks Act provides for damages and statutory damages. Damages per se require the plaintiff to prove actual losses. Statutory damages do not require proof of losses and are generally considered easier to establish but are likely restricted to primary infringers.
It is unlikely that a joint tortfeasor would be liable for statutory damages, although this point remains untested in Singapore case law. Statutory damages present a greater risk to platforms, even absent case law explicitly extending liability to joint tortfeasors in trade mark infringement cases.
While knowledge is not a prerequisite for obtaining statutory damages, the infringer's knowledge or intention may influence the quantum of statutory damages or whether other remedies, such as an account of profits, are granted. Therefore, platforms should implement take-down procedures when they are made aware of infringements occurring on their platforms.
To minimize potential liability for statutory damages, platforms should implement take-down frameworks that align with current industry best practices.
There is no safe harbour provision for trade mark infringement under the Trade Marks Act. Safe harbour provisions exist only under the Copyright Act. Social media platforms could potentially be liable for direct infringement in respect of content hosted on their platforms – such content could be said to be reproduced (when stored on the platform facilities) and "communicating" to the public – both acts are within the exclusive rights of the copyright owner. It is, therefore, necessary to consider the application of safe harbour provisions under the Singapore Copyright Act.
Social media platforms, such as YouTube, Facebook, and Instagram, may qualify as Network Service Providers (NSPs) under Singapore’s Copyright Act if they meet the criteria of providing services for the transmission, routing, or storage of data without modifying the content. They are unlikely to be considered Network Connection Providers (NCPs), which typically refer to entities providing physical or technical network connections (e.g., Internet Service Providers).
To benefit from safe harbour protections as NSPs, social media platforms must act as intermediaries without directly controlling or substantially modifying user-generated content and must comply with conditions such as implementing notice-and-takedown mechanisms. Their classification depends on their role in facilitating content sharing and their adherence to the Copyright Act's requirements.
The safe harbour provisions under the Singapore Copyright Act provide conditional immunity to NSPs and NCPs from liability for copyright infringement by third parties. These provisions aim to protect intermediaries who act as mere conduits for content. Key features include:
1. Scope of Safe Harbour
The provisions apply to activities such as:
2. Conditions for Immunity
To qualify for safe harbour, intermediaries must:
If these conditions are fulfilled, the platform can benefit from safe harbour immunity, even with an advertising-based revenue model. Failure to meet these requirements may expose the platform to liability.
Further clarification on “direct financial benefit” – Section 318(3) of the Copyright Act clarifies "direct financial benefit": In deciding whether a financial benefit is directly attributable to a rights infringement for the purposes of subsection (2)(a), all relevant matters must be considered, including —
a. industry practice in relation to the charging for services by NSPs; and
b. whether the financial benefit is greater than the benefit that would usually result from charging in accordance with accepted industry practices.
Navigating intellectual property liability for internet platforms in Singapore requires a nuanced understanding of both trade mark and copyright law. While e-commerce platforms face potential secondary liability for trade mark infringements by users, particularly through the concept of joint tortfeasorship, the absence of a statutory safe harbour underscores the importance of proactive measures like implementing robust takedown procedures.
Social media platforms, on the other hand, can leverage the safe harbour provisions within the Copyright Act, provided they meet the criteria for Network Service Providers, adhere to notice-and-takedown obligations, and avoid direct financial benefit from infringing activities. Ultimately, platforms must proactively manage risks through robust IP policies, user education, and vigilant monitoring to mitigate liability and foster a legally compliant online environment.
