Roadget Business Pte Ltd & Anor v Whaleco UK Limited

An online marketplace operator is not liable for copyright infringement merely because users upload and view protected material. Under the Copyright, Designs and Patents Act 1988, temporary copies made during ordinary browsing may fall within s. 28A. The user’s economic benefit in deciding whether to buy goods is not, without more, independent economic significance.

Communication to the public requires a deliberate intervention, in full knowledge of the relevant consequences, aimed at giving access to protected works. General awareness that infringement may occur is insufficient. Secondary infringement requires specific knowledge or facts giving reason to believe, with time to evaluate them. A platform’s role and knowledge are assessed in relation to the disputed content.

Shein brought copyright claims against Temu concerning photographs used in product listings on Temu’s UK marketplace. After substantial narrowing of the pleaded case, the liability trial concerned four employee photographs and one supplier photograph, the Strawberry Nightdress.

The issues included copyright ownership and accrued rights of action, consent, authorisation of copying under s. 17 of the Copyright, Designs and Patents Act 1988, communication to the public under s. 20, secondary infringement under s. 23, the temporary-copy exception in s. 28A, and the hosting defence under Regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002. Temu also pursued liability under cross-undertakings in damages given for interim take-down orders. The central questions were whether Shein had title to sue and whether Temu’s conduct constituted infringement or was otherwise protected.

Disposition. Shein’s copyright claim failed. Temu’s IP counterclaim succeeded on liability, with quantum to be determined at the third trial.

1. Copyright ownership. Ms Chang was the first copyright owner of the Strawberry Nightdress photographs. The initial commission gave Mr Lin a non-exclusive licence to use them; it did not establish that the photographs were commissioned specifically for Jiameiluo or Shein. The unpleaded arguments based on transfer of that licence and an implied equitable assignment were rejected. The later Framework Agreement applied because cooperation on an old product included continuing photography and rights-transfer work. Once Ms Chang assigned rights to Jiameiluo under the Agency Commissioning Agreement, clauses II.8(4) and (6), read with clause III.4, transferred copyright and accrued rights of action to Roadget. The accrued rights of action were held equitably, but s. 136 of the Law of Property Act 1925 did not bar the claim because there was no realistic risk of double vexation. The claim was not an abuse of process: actual knowledge was required, and the evidence did not establish the firmly grounded and targeted suspicion plus deliberate avoidance required for blind-eye knowledge under Manifest Shipping v Uni-Polaris Shipping [2003] 1 AC 469.
2. Consent and copying. Mr Lin’s licence enabled him to consent to use of the photographs on the Sexy Secret store, so the Strawberry Nightdress claim failed on consent. Users were inferred to have viewed the remaining photographs. Applying Public Relations Consultants v Newspaper Licensing Agency (Meltwater) [2013] UKSC 18, the temporary copies made during ordinary browsing satisfied s. 28A, including the requirement of no independent economic significance. Temu had not authorised infringement: its retail platform merely enabled uploads and viewing, did not encourage infringement, and used contractual and take-down measures.
3. Communication and secondary infringement. Under s. 20, a platform operator must do more than provide the means of access. It must deliberately intervene, in full knowledge of the consequences, with the aim of giving the public access to protected works. General knowledge that some uploaded content may infringe is insufficient. Temu did not make such an intervention. Under s. 23, Temu lacked knowledge or reason to believe that the specific photographs were infringing before removal. Its removal process was reasonably expeditious.
4. Hosting defence and counterclaim. Although unnecessary to the result, the court held that Regulation 19 would have applied. Temu’s role concerning the disputed photographs was technical, automatic and passive, and its knowledge was neither specific nor inadequately addressed after notification. The interim orders were a dominant and effective cause of the losses claimed by Temu because removing the photographs necessarily removed the product listings. Temu had acted reasonably in mitigation.