Copyright Infringement

Georgina Bagnall

Georgina Bagnall

Technical Assistant at Franks & Co
E : georgina.bagnall@franksco.com
T : +44 (0)114 249 9888

Georgina graduated from King’s College London with a Master’s degree in Physics, specialising in biophysics and nanotechnology. Her final year project included using emulsions to fabricate micro-patterns, for the purpose of investigating the protein folding phenomenon.
Georgina also completed modules at Queen Mary University of London and University College London.
Georgina previously worked as Research Officer for a technology transfer company. She focused on the commercialization of universities' quantum and photonics research projects.
Before joining Franks & Co Georgina worked as in Patent Administration at an IP firm in London.
Georgina is now furthering her understanding of UK, European and International patent law and is developing experience across a range of intellectual property matters, including those in patents, trade marks and designs. She also maintains and develops relationships with clients and foreign associates.
Georgina Bagnall

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What is copyright?

Copyright is a property right given to the creator of original work. The range of original work in which copyright subsists is quite substantial. These rights are awarded automatically and how long they last is dependent on the type of work protected. In the UK literary, dramatic, musical and artistic works have copyright lasting 70 years from the end of the calendar year in which the author of the work dies. Copyright can also extend to other countries through an international agreement such as the Berne Convention.

The law – rights given by copyright

If the author of the original work is employed by someone else, then copyright will be owned by the employer, subject to any agreement to the contrary. If the author is unemployed/self-employed, then copyright is owned by them personally.

The owner of the copyright has exclusive rights to do the following acts in the United Kingdom:

  • to copy the work
  • to issue copies of the work to the public
  • to rent or lend the work to the public
  • to perform, show or play the working public
  • to communicate the work to the public
  • to make an adaptation of the work or do any of the above in relation to an adaptation

The above are acts restricted by copyright, other than with the permission of the copyright owner. When a substantial part the original work has been subject to any of the above acts without permission from the author, copyright has been infringed. There is no definitive description of “substantial part” in copyright law, but it has been interpreted by the courts to mean qualitatively significant as opposed to quantitatively significant.

The author of the original work also has moral rights these include, the right to attribution and the right to object to derogatory treatment of the work. Moral rights can be contractually waved, but cannot be assigned or sold to a third party.

 

Exceptions and potential infringement defences

There are certain ‘permitted acts’ which do not infringe copyright. If the work is used for non-commercial research, private study, teaching or helping disabled people it is permitted under copyright law. Original work can also be used for the purpose of criticism, review or reporting current events, but this exception does not apply to photographs. In 2014 caricature, parody or pastiche were also added as ‘permitted acts’.

Most of these exceptions come with the limitation that they must satisfy “fair use” or fair dealing. There is no statutory definition of fair dealing, it would be interpreted on a case by case basis.

Other defences may include those based on image rights. An individual has certain rights to control the use of their image as to protect the image from being used defamatorily or offensively. In the UK, no specific right to one’s own image has been created either in any statute or expressly in case law. That being said, the law of confidential information can be used to enforce commercial aspects of image rights, Douglas v Hello! (2005) is an example where this has been successful.

 

Evidence needed to enforce copyright

In order to enforce copyright, ownership of copyright must be established. Using a photograph as an example: proof of who took the photograph would need to be shown and it would also be beneficial to show when the photograph was taken. Evidence of the infringing act would also need to be shown, in this case, there would need to be proof that the photograph was used without permission and that the image used is a “substantial part” of the original photographs.

 

Mediation and Arbitration

If you have been accused of copyright infringement, or if you have evidence that someone has infringed your work, then mediation and arbitration may be two types of alternative dispute resolution (ADR) that could be used to resolve the dispute. It is preferable for parties to engage in alternative dispute resolution, so that matters can be settled outside of court, however it is not obligatory to engage in mediation or arbitration or any other type of alternative dispute resolution. But there are many benefits to using these services, including to save costs. Further, offering alternative dispute resolution would put the claimant in the best position for an award of legal costs in court. Therefore, they should always be offered, or considered even when they are unlikely to be accepted.

 

Letter before action

A “letter before action” is recommended before engaging in a legal dispute. This not an essential step in order to make a claim, but not doing so may affect the legal costs awarded by the court. The purpose of this letter is to give the receiving party chance to remedy their actions without the need for court proceedings. It should state your claims and the proposed resolution.

Further, it may be the case that once an infringer receives the letter, they recognise the gravity of the situation and become more willing to resolve the issue or settle, than if such a letter wasn’t forthcoming.

 

Court proceedings

Copyright infringement proceedings can commence in any of the following courts.

The Intellectual Property Enterprise Court (IPEC): This was created to provide a cheaper and faster alternative to other parts of the High Court. A case will be heard at the IPEC when the damages sought are under £500,000. This court allows SMEs and individuals to safeguard their intellectual property rights without being deterred by the potential cost. It is possible to recover up to £50,000 in legal fees at this court and cases are likely to be dealt with in under a year. Remedies that are available in the High Court are also available at the IPEC.

IPEC small claims track: Claims regarding copyright infringement when the claim is for less than £10,000 will be heard at the small claims track of the IPEC. It is rare in this court that a claim for legal costs can be made and preliminary injunctions cannot be ordered in this court.

However, it is possible for a party to represent themselves, and if all parties agree the court may deal with the claim without a hearing at all, greatly reducing costs.

UK High Court: For claims not eligible to be heard at the IPEC, i.e. those whose damages exceed £500,000 or particularly complex cases will be assigned to the Chancery Division of the High Court. Here there is no cap on the damages that can be awarded and the legal costs will often be in the millions.

 

Remedies for copyright infringement

There are several remedies available for copyright infringement. These can either be sought in mediation or ordered by the court. The remedies are not exclusive and are often used in conjunction.

Injunctions: An injunction prohibits the infringing party from further copyright infringement. It is also possible to obtain interim injunctions (not using the small claims track) which are granted and enforced before the full hearing.

Damages: This will usually be the monetary amount necessary to put the claimant back in the position that they would have been if the infringement had not occurred. This is assessed each case based on numerous factors, such as the depreciation of the copyright as a result of the infringement and the amount a willing licensee would have paid.

Delivery up or seizure: Where infringing material is being sold or hired out, the copyright owner has the right to seize the infringing material or authorise another person to seize it on their behalf. Further, a claimant may seek an order for ‘delivery up’ (i.e. giving up) of the infringing material.

Licences: The defending party can undertake a licence in order to use the work lawfully. Where this occurs an injunction or order for delivery up cannot be made and the damages awarded would be limited to double the amount which would have been payable had a licence been granted before the earliest infringement.

 

Comments

When considering legal action against copyright infringement it is important to be aware of the potential costs. The legal fees for court action on a smaller case are likely to be higher than the amount recovered in damages, even when the case is successful on all issues and the lowest cost courts and procedures have been taken.

On the other hand, infringement of rights is not always just about money. Asserting rights and preventing copyright infringement may be done on principle, in which case going to court to receive a judgement could be the only remedy.

 

Please contact us for more information regarding your specific circumstances.

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