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Re: Sued for copyright infringement

Posted: Thu Mar 01, 2018 11:16 am
by AndyJ
Hi Lali,

I don't think you can take that approach to calculating the 'loss' to the photographer, firstly because you don't know the actual split between the photographer and the agency, and secondly, as you have been told, the only legal way in which a licence for this image can be obtained is through Caters, so in order for the photographer to get his percentage, the whole amount of the fee would have to be paid. That is not to say you can't make the reduced figure the basis of the counter-offer, because obviously you can offer whatever figure you wish. However by using your reasoning, you make the basis for your counter-offer less logical.

If the matter were to go to court, the court would take the figure of the fee stated by Caters as the starting point for damages since this reflects the normal way in which the transaction would have operated. I do not know when the photographer began his relationship with Caters concerning this image, but the fact that the version which was used on the website didn't have Caters watermark is not determinative of whether they were acting for him at the relevant time the image was used. It may be that the watermark was previously present but the web designer himself, or some third party, removed it prior to it being incorporated into your friend's website.

Yes, you can draft and sign the letter on behalf of your friend, but you should begin by stating that she has authorised you to do so, and why it is necessary, due to her poor English. The same would apply if she suffered from some physical disability such as visual impairment.

Re: Sued for copyright infringement

Posted: Thu Mar 01, 2018 11:39 am
by Lali12
OK - that is helpful to know. I was just reading through our thread again and the one you linked in our first conversation.. Just to be clear on my behalf - why is my friend not liable for primary infringement? I understand that if anything she could be liable for secondary infringement based on not knowing the pic was an infringing copy but what does primary infringement have to show?

Re: Sued for copyright infringement

Posted: Thu Mar 01, 2018 6:24 pm
by AndyJ
Hi Lali,

Your friend is not liable for primary infringement because she neither copied the disputed image nor authorised or encouraged another person to copy the image. Furthermore she is not responsible for making the disputed image available to the public since any such communication that may have occurred was the direct result of an act or acts by the web designer in creating the website and arranging for it to go online. In dealing with the web designer she had the reasonable expectation that he would act professionally and provide a website which was legal and free from infringing material. As a non-technical person she relied upon the skill of the web designer to provide these things as part of her contract with him. The fact that the web designer, as a self-employed person, failed to provide a legal site lies outside any obligation upon your friend to carry out due diligence or to be in any way vicariously liable for his neglect or infringing activity*. Furthermore, once she was made aware of the alleged infringement of the photographer's work, she acted expeditiously to remove the disputed image, again relying on the web designer to do this as she lacked the necessary skills to do so herself.

The grounds for a primary infringement claim can be found in sections 16 - 21 of the Copyright Designs and Patents Act 1988. The only ones which are relevant here are section 17 (copying) and section 20(2)(a) (making available to the public).

There are various legal authorities which I won't list here, that hold that if a person A contracts with B who is not an employee of A, to carry out work for which they (B) are professionally qualified and B acts negligently with regard to something which is within the professional competence of B, A cannot be held liable for this neglect, save to the very limited extent where A has a duty of care to an actual employee, C, who is harmed by B's neglect. Obviously in the case we are talking about, your friend has no such relationship with either the photographer or his agents.

Re: Sued for copyright infringement

Posted: Thu May 10, 2018 6:29 pm
by Fatty
I have to say I disagree with Andy J on this being a secondary infringement. The operator of the website is the person who is communicating the work to the public and therefore in breach of section 20. Furthermore if your friend employs a web designer to build the website on their behalf they are vicariously liable for the actions of the the web designer just as if they had carried out tose actions themselves. Thus your friend is in breach of section 17 as well.

The scenario of employing a web designer is a very common scenario resulting in a copyright infringement, particularly if the web designer is under pressure to produce the website as cheaply as possible. I think you would do well to read the judgement in the case of David Hoffman vs Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2

Where I do agree with Andy J is that negotiating an out of court settlement is probably the best outcome for both parties. I note the normal value of the work appears to be £750 and the claim is £4000 so there is probably room to meet between those figures. Your claimant is claiming 5 1/3 x the normal value of the work in question which is well within the range of damages awarded by the Intellectual Property Enterprise Court. They can award rather more and in Absolute Lofts South West London Ltd vs Artisan Home Improvements Ltd & Darren Mark Ludbrook [2015] EWHC 2608 (IPEC) the court awarded 20x the normal value of the work In that case the defendant made a lot of money from the infringement which I don't believe is the case here so I wouldn't expect you to face 20 x £750.

From the claimants point of view, he cannot claim a ridiculously high figure as that would incur the wrath of the court and he would likely end up with only his normal fee of £750 which will hardly be worth his while going to London for. Having said that, for him to get his £4k , if he thinks he can, will involve an awful lot of work in bringing a claim in the Intellectual Property Enterprise Court. I would expect he would be happy to settle for rather less if he can avoid this work. This also means its better to settle the claim before its issued in court as by that time the claimant will have done a lot of work and be much less happy about accepting a big reduction in his claim.

What figure the court would award is very difficult to say without knowing all the facts of the case. I understand the web designer claims to have found the image with no name or identification on it. I have known web designers say this and then be presented with evidence that in actual fact they obtained the image from the photography seller and simply removed the name. If that were the case then it would immediately make the claim of £4k seem actually very reasonable. Assuming your designer is being truthful and the image was found with no name on it, it is still a very flagrant act to simply find it on google images and then copy it into your Commercial website. Copyright is not some mysterious and rare thing which just applies to a few unusual works, Copyright applies automatically to all photographs from the moment the shutter is pressed until 70 years after the death of the photographer. This means every photograph taken in the last 70 years is a copyright work. If you search for almost anything on Google images, almost all the photos you see will be copyright protected.

I don't know what the image looks like. If its an image of Isambard Kingdom Brunel leaning on a steam ship then you might have a defence under section 97(1), however if its an obliviously post war image then not only do you have no 97(1) image but your use is likely to be considered flagrant as well thus exposing you to additional damages pursuant to section 97(2).

Anyway, Jaw Jaw is better than war war so hopefully you can or will negotiate an acceptable compromise. Please let us know how you get on. I notice that your original post was in February and we are now in May, so either you will be settled out of court by now or are currently reading papers with a High Court seal on them. Let us know how you are getting on.

Re: Sued for copyright infringement

Posted: Thu May 10, 2018 9:08 pm
by AndyJ
Fatty wrote:
Thu May 10, 2018 6:29 pm
I have to say I disagree with Andy J on this being a secondary infringement. The operator of the website is the person who is communicating the work to the public and therefore in breach of section 20. Furthermore if your friend employs a web designer to build the website on their behalf they are vicariously liable for the actions of the the web designer just as if they had carried out tose actions themselves. Thus your friend is in breach of section 17 as well.
Hi Fatty,

Thanks for your comments. Your view that the scenario outlined by Lali would be primary infringement contrary to section 20(2), that is to say unauthorised communication to the public, seems to be based solely on the dicta of Mr Justice Birss in David Hoffman vs Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 . With the greatest respect to the learned judge, since the time of that judgment we have had several decisions from the Court of Justice of the European Union which seriously affect his analysis of 'communication to the public'. The cases are in chronological order: Svensson, Bestwater (not available in English), Filmspeler and GS Media. Now although all of those cases mainly involved the subject of linking as the method of making a copyright work available to the public, in at least two of them the technique of framing was also at issue, so that taken together, the CJEU has signalled a distinct and narrow application to the wording of Article 3.1 of the Information Society Directive 2001/29/EC, which Mr Justice Birss cites at [21] in his judgment in Hoffman. Indeed in GS Media the CJEU went so far as to say that in certain circumstances there would be no infringement even if the website being linked to held unauthorised (ie infringing) material.

And I can see no support from the Hoffman judgment for your claim that a website owner would be vicariously liable for the actions of their web developers. Indeed in [20] of the judgment the judge says explicitly "I note that Mr Hoffman does not put his case on the basis that the defendant is liable for the acts of the web designer firm either as a joint tortfeasor nor does he advance any argument based on authorising under s16(2)" and consequently the judge makes no finding on liability under sections 16(2) or 17. And as I explained in my note at the end of my last posting, vicarious liability cannot arise in the circumstances which have been described, hence Lali's friend would not be liable, based on the facts that we have been given, for infringement under section 17 (copying).

Re: Sued for copyright infringement

Posted: Fri May 11, 2018 11:58 am
by Fatty
I won't argue about vicarious liability as there is plenty of case law on the subject and my interest is more in copyright law and your discussion of primary and secondary infringement is most interesting.

We are all somewhat disadvantaged because most England and Wales cases of this nature involving photographs are heard in the small claims track of the Intellectual Property Enterprise Court, and unfortunately it is the policy of the court not to allow Small Claims Track Cases to be published on This leaves us somewhat in the dark, however I can tell you that I am aware of a number of cases in the SCT where defendants have laid blame on Web Designers but the court has gone on to find them liable for primary infringement under section 20.

I realise SCT cases do not set precedent but this is where most defendants will find themselves and I am not aware of any precedent setting cases which have argued that such circumstances amount to secondary infringement. The you mention have quite different circumstances and involving hotlinking / framing which does not appear to be the case here.

If one is operating a website, ie being the registrant, paying for its domain name and server space and using it for ones business then the content on that website is being communicated to the public. Hotlinking/framing is quite a different argument because the content is not actually on the website in question whereas in this case, from what we know so far, it appears that it is.

After much googling the only relevant case I can find was IP14S01982 Webb vs VA Events & Ors , which was not on an official source but was widely reported. District Judge Hart said the following:-

"In relation to the assessment of damages it is important to note at the outset that
whatever the defendants say was done without their knowledge by the web designer it
does not change the fact that they are liable here for primary infringement under the
CDPA on the undisputed facts of this case. The primary infringement provisions at
section 16(d) and section 20 involve infringing by communicating the image to the
public and by making it available by electronic transmission in such a way that
members of the public might access it from a place and a time chosen by them. To
that extent it is irrelevant who designed the website. The website was used by the
company and by Mr X and Mr Y as the controlling mind of the company
and they are therefore liable for the undisputed primary infringement."

(personal names redacted)

If one were to apply common sense rather than legal argument, it makes sense that such circumstances will be seen as primary infringement. If it were otherwise then every defendant would simply say a web designer did it and pay no damages. If that were the case there would be no need for an IPEC SCT at all. On the contrary Copyright Law is there to protect the income of the artists who create the work so its logical that if doubt exists then the court would lean in the direction of protecting the artist.

If, like me, you have an interest in more judgements being published, why not write to the court. While they are not keen on having images on bailii there has been a suggestion that they will put a number of judgment transcripts on their own official government website. If that can be encouraged it would bring more clarity to both claimants and defendants. ... rise-court