Shielding internet intermediaries from copyright liability—A comparative discourse on safe harbours in Singapore and India

• Author: Althaf Marsoof,Indranath Gupta
• Published date: 01 July 2019
• Date: 01 July 2019
• DOI: http://doi.org/10.1111/jwip.12126

J World Intellect Prop. 2019;22:234–270.wileyonlinelibrary.com/journal/jwip234

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DOI: 10.1111/jwip.12126

ORIGINAL ARTICLE

Shielding internet intermediaries from copyright

liability—A comparative discourse on safe

harbours in Singapore and India

Althaf Marsoof

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Indranath Gupta

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Division of Business Law, Nanyang Business

School, Nanyang Technological University,

Singapore

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Jindal Global Law School, O P Jindal Global

University, Sonipat, India

Correspondence

Althaf Marsoof, Assistant Professor of Law,

50 Nanyang Ave, Singapore 639798.

Email: Althaf@ntu.edu.sg

Abstract

Without intermediaries that provide access to, host and link

content, the internet will not be the vibrant place it is today.

Yet with the rising number of online copyright infringe-

ments, right holders have increasingly shifted their focus to

intermediaries in their efforts to curb infringements. This

has led to internet intermediaries being increasingly

exposed to copyright liability. In light of this, safe harbours

that provide certain classes of intermediaries with condi-

tional immunity play an important role in maintaining a

healthy balance between the interests of right holders and

third parties. In the copyright context, the Digital Millen-

nium Copyright Act 1998 (DMCA) enacted in the United

States was the first instance where such a safe harbour was

afforded to internet intermediaries. During the two decades

of the DMCA’s operation, it has been used as a blueprint to

shape safe harbours in other jurisdictions. This article

focusses on two such jurisdictions—namely, Singapore and

India—and provides a comparative and in‐depth analysis of

the safe harbour frameworks in the said jurisdictions, while

mapping out how they compare with the DMCA. In the

process, the article highlights a number of features in the

DMCA that have been remodelled in Singapore and India.

KEYWORDS

DMCA, internet intermediaries, notice and takedown, safe harbours

© 2019 The Authors. The Journal of World Intellectual Property © 2019 John Wiley & Sons Ltd

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INTRODUCTION

The internet comprises many intermediaries that facilitate access to, store and link content—Internet Service

Providers (ISPs), hosts and search engines playing a crucial role in this regard. Without intermediaries, the internet

will not be the vibrant place it is today. This is precisely why it is necessary to ensure that intermediaries are

provided sufficient protection from liability for unlawful content generated by those who make use of the internet.

In the copyright context, the Digital Millennium Copyright Act 1998 (DMCA)

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enacted in the United States (US) for

the first time introduced a safe harbour for intermediaries that shielded them from copyright liability upon fulfilling

certain conditions. The DMCA has provided the blueprint, and impetus, for similar safe harbours in other

jurisdictions. The focus of this article is on two such jurisdictions—namely, Singapore and India.

In view of the comparative nature of the article, it begins by providing some background and context to the

DMCA, followed by a discussion on the key features of the US’s safe harbour. In the second part, the article

provides an in‐depth and comprehensive analysis of the safe harbours adopted in Singapore and India, the features

of which are mapped against the DMCA safe harbour to highlight how the DMCA has been remodelled in those

jurisdictions. The strengths and weaknesses of the Singaporean and Indian approaches are also considered in the

process.

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THE DIGITAL MILLENNIUM COPYRIGHT ACT

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Some background and context

The enactment of section 512 of the DMCA in 1998, commonly referred to as the DMCA safe harbour or simply

DMCA 512, could be regarded as a significant milestone in US copyright history. Before the DMCA was enacted,

courts in the US had adopted a very aggressive approach toward intermediaries that operated in the internet

environment by finding them directly liable for copyright infringements. The bulletin board cases that came up in

the first half of the 1990s amply illustrate this trend. It appears that bulletin boards were the first forums the

internet saw, allowing users to upload, share, and download content. They were intermediaries that provided a

platform where users could store data and content, in many ways resembling the modern‐day host.

One of the earliest cases to be filed against a bulletin board was Playboy v Frena (1993), which came up before

the US District Court (Middle District of Florida). In case, the complaint of Playboy Enterprises Inc (PEI) was that a

bulletin board, operated by the defendant (i.e., Frena) distributed unauthorised copies of PEI’s copyrighted

photographs. According to the evidence, 170 of the images on the bulletin board were copies of photographs taken

from PEI’s copyrighted material. Frena in his defence admitted that these images were displayed on the bulletin

board, that he never obtained any authorisation from PEI in respect of the images and that the images were

substantially similar to the copyrighted PEI photographs. It was also admitted that the images available on the

bulletin board had been downloaded by the users of the service. However, and perhaps importantly, Frena took up

the position that he never uploaded any of the images in which PEI owned copyright and that it was the subscribers

of the bulletin board that had uploaded the contentious photographs. Frena also pleaded that as soon as he was

served with summons and was made aware of the infringements, he removed the infringing images from the

bulletin board and since then monitored the service to prevent further infringing images from being uploaded by

users.

The right in question was PEI’s right to distribute and display copies of the copyrighted works to the public,

which was an exclusive right vested under the US Copyright Act 1976 (17 U.S.C. §106) on a copyright owner. The

Court held that “[t]here is no dispute that […] Frena supplied a product containing unauthorized copies of a

copyrighted work. It does not matter that […] Frena claims he did not make the copies”and that the defendant’s

“display of PEI’s copyrighted photographs to subscribers was a public display”(Playboy v Frena, 1993, pp.

1556–1557) Thus, although Frena was merely providing the services of a bulletin board, that permitted third

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parties to upload images onto the platform, thus, enabling the public display and distribution of those images, he

was caught up for direct copyright infringement. It was not a defence for Frena that he lacked knowledge of the

infringements or that he took prompt action once he did become aware. Thus, even though Frena through his

bulletin board was acting as an intermediary—providing only the technical functions of a host that facilitated

subscribers to upload, distribute, and display content (images)—the Court felt it fit to find Frena and his bulletin

board liable for copyright infringement on the basis that they were primary infringers.

The second instance where direct copyright infringement was found on the part of bulletin board was in Sega v

Maphia (1994), albeit this was in the context of a hearing for a preliminary injunction. This case concerned a bulletin

board known as “Maphia”operated by Sherman. The bulletin board was dedicated to sharing video games. Just as in

Playboy v Frena (1993), the users of the bulletin board uploaded and downloaded the games in which Sega had

copyright. This privilege was afforded to anyone who subscribed to the bulletin board’s service or to those who had

purchased a device from Maphia that enabled Sega game cartridges to be copied and their contents to be

distributed via the bulletin board with other users. It is quite clear that Maphia’s business model was geared to

promote the infringement of Sega’s copyright. While this no doubt was a suitable case to find Maphia, and its

operator, liable for copyright infringement, what was troubling is the basis upon which the US District Court

(Northern District of California) imputed liability on the intermediary concerned—“Sega has established a prima

facie case of direct copyright infringement”(Sega v Maphia, 1994, p. 686).

The fact that US courts in, at least, two instances had found an intermediary that did not itself commit

infringements liable for direct copyright infringement was troubling and destined to have ramifications on other

intermediaries providing similar hosting services. Notably, however, these decisions were doubted in RTC v Netcome

(1995), which not surprisingly also concerned a bulletin board, as well as an ISP. The facts, in this case, were similar

to those of the previous cases—in that certain copyrighted material became published and available on an online

forum. Apart from the person who uploaded the infringing material (Dennis Erlich) onto the forum, a bulletin board

and an ISP were also made defendants. As such, the US District Court (Northern District of California) had to

consider the liability of actors who provided the technical facilities used by Dennis Erlich in uploading the infringing

material onto the forum. Commenting on Playboy v Frena (1993), the Court observed:

Playboy concluded that the defendant infringed the plaintiff’s exclusive rights to publicly distribute and

display copies of its works. […] The court is not entirely convinced that the mere possession of a digital copy

on a [bulletin board] that is accessible to some members of the public constitutes direct infringement by the

[bulletin board] operator (RTC v Netcome, 1995, para 21).

Commenting on Sega v Maphia (1994), the Court observed:

This court is not convinced that Sega provides support for a finding of direct infringement where copies are

made on a defendant’s [bulletin board] by users who upload files. Although there is some language in Sega

regarding direct infringement, it is entirely conclusory. […] The court’s reference to the “knowledge of

Defendant”indicates that the court was focusing on contributory infringement, as knowledge is not an

element of direct infringement (RTC v Netcome, 1995, para 19).

Accordingly, in RTC v Netcome (1995), the Court decided that the better approach to dealing with the liability of

intermediaries was to treat them as contributory infringers—“Netcom is not free from liability just because it did

not directly infringe plaintiffs’works; it may still be liable as a contributory infringer”(RTC v Netcome, 1995, para

24). The decision in RTC v Netcome (1995) was followed by the US District Court (Northern District of Illinois) in

Marobie‐FL v NAFED (1997).Interestingly, Wilken J, who awarded the preliminary injunction against Maphia in Sega

v Maphia (1994), on the basis that Maphia had engaged in direct copyright infringement, seems to have been

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