We've received a letter from a large law firm claiming to act on behalf of PicRights regarding an image that they allege was on our website.
They say that the photo agency who are a client of PicRights owns the copyright on the alleged image.
They are requesting a 4 figure sum which is to be paid to PicRights by the end of the working week. They have stated that the letter is sufficient notice of a claim against us and if necessary can be founded upon to demonstrate that they have attempted to resolve the matter without resorting to court proceedings. Our failure to respond may increase liability for costs.
Attached to the letter is a settlement and release agreement which is to be signed at the time the payment is made. This agreement is between ourselves and the copyright holding agency (not PicRights).
Can anyone provide any advice on how to proceed?
PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Hi balkan,
First of all if you haven't already done so, remove the disputed image from your website immediately.
You don't mention anything about the photo which is in dispute or how long they are claiming it has been in use, but I think it's fair to say that a four figure sum is likely to be wholly disproportionate to any alleged infringement. That is not say that their claim is without merit, but if the matter did go to court, the most the claimant could expect to receive in normal damages is the amount you would have been charged in licence fees if you had gone down that route in the first place. So, if you know the name the picture agency which is offering this image, go to their site and see if you can find the disputed image, and make a note of the fee which would be appropriate for the type of use which is complained about. Generally images are licensed under two main systems: royalty-free or rights-managed. You should read up on these terms if you need to but, put simply, a royalty free deal means you pay a one-off fee which covers use of the image for a fixed length of time (for instance, a year) for a declared number of page-views. Rights managed means that you get a licence which is more tailored to your specific requirements and may work out cheaper, especially if you only need the image for a short time or for a single publication print run. Usually this will entail a smaller fixed fee plus royalties payable based on actual consumption. Say you wanted an image to go on the packaging of a product, the rights-managed option would usually be the better way to go.
Once you have determined what fee is appropriate for your needs, multiply it by the period the image was in use. This figure should then form the basis of your counter-offer. It is, realistically, what the claimant might get if he successfully took you to court. In other words the judicial process would put him back in the position he would have been in if a normal licence had been obtained. The civil law does not, ordinarily, seek to punish, merely to provide restitution. However there are circumstances in which a claimant can allege that any infringement has been particularly egregious (for example it continued even after the alleged infringer had been notified of the claim, or the infringer had deliberately removed copyright notices from the original image), and if he manages to convince the court about this, it can lead to additional damages being awarded. Depending on the type of court in which the claim was heard, the claimant might or might not be able to ask the court to also award him his legal costs. If the small claims track of the Intellectual Property Enterprise Court (IPEC) is used (it's quicker and simpler) then legal costs cannot usually be awarded against a defendant.
However, assuming this doesn't go to court, the rights owner in this case will still have to pay both PicRights (probably a percentage of anything they recover) and the firm of solicitors which sent the letter, and so he is unlikely to accept your counter-offer unless you are prepared to re-imburse some of these costs. I suggest that you add about 10 - 15% to the licence fee amount and make that your counter-offer to settle the matter. Be aware that the claimant won't want to go to court any more than you do, however much his representatives may bluster.
Unless there are other circumstances which you haven't mentioned, you should stand your ground and not pay the full amount demanded. This sort of activity is known as copyright trolling and is generally deprecated by the courts. However if you feel there may be other grounds which make it highly likely that additional damages may be in contention, you should probably speak to a solicitor. You don't not need to worry about their deadline which is largely there to panic you into paying quickly to make the issue go away. A court would not entertain any additional costs being added to the claim just because the claimant threatened that a delay would increase the costs, and it would view three or four days to settle the matter as wholly unreasonable behaviour. Also be wary about signing anything which you do not fully understand or in which you admit any liability for infringement.
First of all if you haven't already done so, remove the disputed image from your website immediately.
You don't mention anything about the photo which is in dispute or how long they are claiming it has been in use, but I think it's fair to say that a four figure sum is likely to be wholly disproportionate to any alleged infringement. That is not say that their claim is without merit, but if the matter did go to court, the most the claimant could expect to receive in normal damages is the amount you would have been charged in licence fees if you had gone down that route in the first place. So, if you know the name the picture agency which is offering this image, go to their site and see if you can find the disputed image, and make a note of the fee which would be appropriate for the type of use which is complained about. Generally images are licensed under two main systems: royalty-free or rights-managed. You should read up on these terms if you need to but, put simply, a royalty free deal means you pay a one-off fee which covers use of the image for a fixed length of time (for instance, a year) for a declared number of page-views. Rights managed means that you get a licence which is more tailored to your specific requirements and may work out cheaper, especially if you only need the image for a short time or for a single publication print run. Usually this will entail a smaller fixed fee plus royalties payable based on actual consumption. Say you wanted an image to go on the packaging of a product, the rights-managed option would usually be the better way to go.
Once you have determined what fee is appropriate for your needs, multiply it by the period the image was in use. This figure should then form the basis of your counter-offer. It is, realistically, what the claimant might get if he successfully took you to court. In other words the judicial process would put him back in the position he would have been in if a normal licence had been obtained. The civil law does not, ordinarily, seek to punish, merely to provide restitution. However there are circumstances in which a claimant can allege that any infringement has been particularly egregious (for example it continued even after the alleged infringer had been notified of the claim, or the infringer had deliberately removed copyright notices from the original image), and if he manages to convince the court about this, it can lead to additional damages being awarded. Depending on the type of court in which the claim was heard, the claimant might or might not be able to ask the court to also award him his legal costs. If the small claims track of the Intellectual Property Enterprise Court (IPEC) is used (it's quicker and simpler) then legal costs cannot usually be awarded against a defendant.
However, assuming this doesn't go to court, the rights owner in this case will still have to pay both PicRights (probably a percentage of anything they recover) and the firm of solicitors which sent the letter, and so he is unlikely to accept your counter-offer unless you are prepared to re-imburse some of these costs. I suggest that you add about 10 - 15% to the licence fee amount and make that your counter-offer to settle the matter. Be aware that the claimant won't want to go to court any more than you do, however much his representatives may bluster.
Unless there are other circumstances which you haven't mentioned, you should stand your ground and not pay the full amount demanded. This sort of activity is known as copyright trolling and is generally deprecated by the courts. However if you feel there may be other grounds which make it highly likely that additional damages may be in contention, you should probably speak to a solicitor. You don't not need to worry about their deadline which is largely there to panic you into paying quickly to make the issue go away. A court would not entertain any additional costs being added to the claim just because the claimant threatened that a delay would increase the costs, and it would view three or four days to settle the matter as wholly unreasonable behaviour. Also be wary about signing anything which you do not fully understand or in which you admit any liability for infringement.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Thanks for your response Andy.
I can't find the exact image on the site but I have found a number of very similar images taken from the same event which are available via the agency.
All of them have the same price of £39 for the period of time that the image is alleged to have been on the site.
Would a suitable response be along the lines of:
"We hereby aknowledge receipt of your letter and upon seeking advice submit a counter offer of £44.85. This is in line with the pricing on the website of said agency....."
I can't find the exact image on the site but I have found a number of very similar images taken from the same event which are available via the agency.
All of them have the same price of £39 for the period of time that the image is alleged to have been on the site.
Would a suitable response be along the lines of:
"We hereby aknowledge receipt of your letter and upon seeking advice submit a counter offer of £44.85. This is in line with the pricing on the website of said agency....."
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Hi balkan,
It is important that you make these people aware that you know that if they take you to court, any damages would be based on the loss sustained by the copyright owner and no more, hence that is the basis of your counter offer.
Expect a certain amout of fight back and bluster, but if you stand firm, they will eventually have to make a decision about whether to drop the claim because it is costing them too much to pursue, or come to a more sensible settlement.
Good luck
It is important that you make these people aware that you know that if they take you to court, any damages would be based on the loss sustained by the copyright owner and no more, hence that is the basis of your counter offer.
Expect a certain amout of fight back and bluster, but if you stand firm, they will eventually have to make a decision about whether to drop the claim because it is costing them too much to pursue, or come to a more sensible settlement.
Good luck
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Ok many thanks. I really do appreciate your reply.AndyJ wrote: ↑Wed Dec 04, 2019 9:18 am Hi balkan,
It is important that you make these people aware that you know that if they take you to court, any damages would be based on the loss sustained by the copyright owner and no more, hence that is the basis of your counter offer.
Expect a certain amout of fight back and bluster, but if you stand firm, they will eventually have to make a decision about whether to drop the claim because it is costing them too much to pursue, or come to a more sensible settlement.
Good luck
I have read the following information elsewhere:
"If you have infringed copyright primarily, the damages would not be limited to the charge they would normally ask for that image. The charge for using it lawfully is usually the starting point for infringement, with the damages increasing from that point."
Would you say that this person is talking about exceptional cases rather than the usual course of proceedings?
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Yes, as I mentioned the basic principle of civil justice is to put the claimant back in the position where he would have been if the infringing work had been correctly licensed in the first place. Additional damages only arise if the behaviour of the infringer is judged to be flagrant (see section 97(2)(a) of the Copyright Designs and Patents Act 1988). I gave some examples of what might been seen as flagrancy in a previous reply. The picture has been muddied a little by Article 3 (2) of the European Union Enforcement Directive whichbalkan wrote: ↑Wed Dec 04, 2019 9:26 am I have read the following information elsewhere:
"If you have infringed copyright primarily, the damages would not be limited to the charge they would normally ask for that image. The charge for using it lawfully is usually the starting point for infringement, with the damages increasing from that point."
Would you say that this person is talking about exceptional cases rather than the usual course of proceedings?
which reads as follows:
A number of claimants in recent cases before the courts have latched onto the word 'dissuasive' to say that punitive damages (ie additional damages) ought to be the norm. However, assuming that any infringement on your part occurred unknowingly, based on a mistaken assumption that the image was being made freely available by the copyright owner, then a clear reading of later parts of the Directive (Article 13 (2) in particular) means that an infringer in such circumstances should not be subjected to any dissuasive or punitive damages. Accordingly, if pressed, you should explain that any infringement on your part was wholly unwitting. Obviously if the image was obtained and used on your website by a third party such as a web-designer, you can honestly claim not to have been aware that the use of the image was unlawful. It doesn't absolve you from vicarious liability for the actions of a third party, but it does tend to mitigate against any additional damages.2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
Bear in mind that everything I have said up to now is based on a general reading of the law. It does not take into account all the specific circumstamces of your particular case, and so if you have any remaining doubts about how to proceed, I strongly advise you to get your own legal advice.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
AndyJ wrote: ↑Wed Dec 04, 2019 10:38 amYes, as I mentioned the basic principle of civil justice is to put the claimant back in the position where he would have been if the infringing work had been correctly licensed in the first place. Additional damages only arise if the behaviour of the infringer is judged to be flagrant (see section 97(2)(a) of the Copyright Designs and Patents Act 1988). I gave some examples of what might been seen as flagrancy in a previous reply. The picture has been muddied a little by Article 3 (2) of the European Union Enforcement Directive whichbalkan wrote: ↑Wed Dec 04, 2019 9:26 am I have read the following information elsewhere:
"If you have infringed copyright primarily, the damages would not be limited to the charge they would normally ask for that image. The charge for using it lawfully is usually the starting point for infringement, with the damages increasing from that point."
Would you say that this person is talking about exceptional cases rather than the usual course of proceedings?
which reads as follows:A number of claimants in recent cases before the courts have latched onto the word 'dissuasive' to say that punitive damages (ie additional damages) ought to be the norm. However, assuming that any infringement on your part occurred unknowingly, based on a mistaken assumption that the image was being made freely available by the copyright owner, then a clear reading of later parts of the Directive (Article 13 (2) in particular) means that an infringer in such circumstances should not be subjected to any dissuasive or punitive damages. Accordingly, if pressed, you should explain that any infringement on your part was wholly unwitting. Obviously if the image was obtained and used on your website by a third party such as a web-designer, you can honestly claim not to have been aware that the use of the image was unlawful. It doesn't absolve you from vicarious liability for the actions of a third party, but it does tend to mitigate against any additional damages.2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
Bear in mind that everything I have said up to now is based on a general reading of the law. It does not take into account all the specific circumstamces of your particular case, and so if you have any remaining doubts about how to proceed, I strongly advise you to get your own legal advice.
Thanks for all your help Andy.
We had sent two emails to them already to which they had not responded (the law firm). We were waiting on a response before submitting a counter offer. They have now sent a letter saying that they will pass the claim on to the agency who is the rights holder to see if they want to take the matter further (the agency is not a client of the law firm). Due to the fact that we hadn't communicated with them.
We have now spoken to the law firm and have been given another email address that should be monitored to which we can send correspondence.
Can you clarify at all as it feels as though we're in limbo slightly. The law firm has said that they've passed the claim on to the rights holder who is not their client. There was no mention of PicRights in this letter. Should we now deal directly with the agency themselves?
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Hi balkan,
I am slightly mystified by all this. I would be surprised that, if an agency (eg Getty or Shutterstock etc) is the rights holder, they would be using the services of PicRights as agencies would normally deal direct with anyone they suspected of infringement. PicRights tend
to offer their services directly to photographers who either can't be bothered with the hassle or don't have sufficient knowledge about the law when it comes to such matters.
PicRights would have engaged the solicitors on behalf of the rightsholder and so the rightsholder would be the solicitor's client, which may explain why PicRights was not mentioned in their response. As I think I explained previously, PicRights does not have legal standing to bring any claims before a court.
Are the solicitors saying that they never received your two emails? I assume this is the reason why they gave you another email address to use. Solicitors are renown for taking a long time to deal with routine paperwork (as parodied by Charles Dickens in Bleak House), and of course the interruption over Christmas and New Year won't have helped, however the delay may be a sign that they have lost interest in pursuing matters. Fortunately, even if they haven't, since you have complied with their instructions so far, none of this will count against you if at a later stage the matter does end up in court. It is not your fault if you were supplied with the wrong email address in the first place.
I am slightly mystified by all this. I would be surprised that, if an agency (eg Getty or Shutterstock etc) is the rights holder, they would be using the services of PicRights as agencies would normally deal direct with anyone they suspected of infringement. PicRights tend
to offer their services directly to photographers who either can't be bothered with the hassle or don't have sufficient knowledge about the law when it comes to such matters.
PicRights would have engaged the solicitors on behalf of the rightsholder and so the rightsholder would be the solicitor's client, which may explain why PicRights was not mentioned in their response. As I think I explained previously, PicRights does not have legal standing to bring any claims before a court.
Are the solicitors saying that they never received your two emails? I assume this is the reason why they gave you another email address to use. Solicitors are renown for taking a long time to deal with routine paperwork (as parodied by Charles Dickens in Bleak House), and of course the interruption over Christmas and New Year won't have helped, however the delay may be a sign that they have lost interest in pursuing matters. Fortunately, even if they haven't, since you have complied with their instructions so far, none of this will count against you if at a later stage the matter does end up in court. It is not your fault if you were supplied with the wrong email address in the first place.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Hi Andy,AndyJ wrote: ↑Fri Jan 17, 2020 9:36 am Hi balkan,
I am slightly mystified by all this. I would be surprised that, if an agency (eg Getty or Shutterstock etc) is the rights holder, they would be using the services of PicRights as agencies would normally deal direct with anyone they suspected of infringement. PicRights tend
to offer their services directly to photographers who either can't be bothered with the hassle or don't have sufficient knowledge about the law when it comes to such matters.
PicRights would have engaged the solicitors on behalf of the rightsholder and so the rightsholder would be the solicitor's client, which may explain why PicRights was not mentioned in their response. As I think I explained previously, PicRights does not have legal standing to bring any claims before a court.
Are the solicitors saying that they never received your two emails? I assume this is the reason why they gave you another email address to use. Solicitors are renown for taking a long time to deal with routine paperwork (as parodied by Charles Dickens in Bleak House), and of course the interuption over Christmas and New Year won't have helped, however the delay may be a sign that they have lost interest in pursuing matters. Fortunately, even if they haven't, since you have complied with their instructions so far, none of this will count against you if at a later stage the matter does end up in court. It is not your fault if you were supplied with the wrong email address in the first place.
This agency in particular have used their services rather than dealing direct.
Yes, they said that neither were received. They were going to check with the IT dept.
In this latest letter they state that they will now take instructions from the agency (rather than picrights) on pursuing legal proceedings and any proceedings would include an order for payment of legal costs. This was due to the fact that they hadn't received a settlement proposal (as they never received the emails sent).
Would it be a potential option to submit a counter offer to the new email address?
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Bear in mind that I am not your legal advisor and I cannot advise you on the specific conduct of your litigation. But yes I think that submitting your counter-offer at this stage, along with the explanation I mentioned earlier in this thread about how you arrived at the figure in your offer, might help to move matters forward. By acting in a positive manner aimed at reaching a reasonable settlement on which both sides can agree, your actions will be viewed favourably if the matter ever goes to court, and reduces the chance of additional damages being awarded against you.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Hello, can I ask what was the outcome as I have a similar issue with picrights? Thank you
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
I would also be interested in knowing the outcome as my club has two similar claims from PicRights.
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Neil Burnett
- New Member
- Posts: 2
- Joined: Fri Sep 04, 2020 12:22 pm
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
I am a new member and live in South Africa. I have also had a letter from PicRights on behalf of Agence France-Presse.
As background, I am an agent for conference speakers predominantly in South Africa. I have a website which has a biography and normally a photo for each speaker. When taking on a new speaker I would require the applicant to supply the biography and a photo. In the case in question I received the photo from the new speaker together with his biography. I do not believe that I am liable at all since the photo was supplied by the new speaker without any warning of copyright. There was no indication on the photo that rights were restricted either. Ironically I never booked this speaker so earned nothing from marketing him.
My initial response to PicRights was to immediately delete the picture and then explain this situation to PicRights. They thanked me for deleting the picture but said I was still liable for the costs (in SA Rands it is R 22,385 or approx. $ 1,345). Today I got a follow up from them and decided to delve into the matter a bit deeper. I have the following to add to my initial position (that I was given the picture by the new speaker and assumed he held the rights):-
1. I searched the web using google to find the picture and find out what the cost would be to use it. Google did not return the picture in question.
2. Then I searched using the speaker's name and Agence France-Presse. This directed me to Getty Images where I found the picture in question with a watermark. The price shown is $150 (small), $350 (medium) and $499 (large) and the license type is Rights-managed.
3. The picture given to me by the new speaker did not have a watermark to warn me it was owned by someone else.
To summarise, I do not believe I am liable but do not know if "ignorance" will be a sufficient defence. Can you please advise?
Due to Covid-19 the conference industry in South Africa has all but collapsed so I literally do not have the money demanded by PicRights.
As background, I am an agent for conference speakers predominantly in South Africa. I have a website which has a biography and normally a photo for each speaker. When taking on a new speaker I would require the applicant to supply the biography and a photo. In the case in question I received the photo from the new speaker together with his biography. I do not believe that I am liable at all since the photo was supplied by the new speaker without any warning of copyright. There was no indication on the photo that rights were restricted either. Ironically I never booked this speaker so earned nothing from marketing him.
My initial response to PicRights was to immediately delete the picture and then explain this situation to PicRights. They thanked me for deleting the picture but said I was still liable for the costs (in SA Rands it is R 22,385 or approx. $ 1,345). Today I got a follow up from them and decided to delve into the matter a bit deeper. I have the following to add to my initial position (that I was given the picture by the new speaker and assumed he held the rights):-
1. I searched the web using google to find the picture and find out what the cost would be to use it. Google did not return the picture in question.
2. Then I searched using the speaker's name and Agence France-Presse. This directed me to Getty Images where I found the picture in question with a watermark. The price shown is $150 (small), $350 (medium) and $499 (large) and the license type is Rights-managed.
3. The picture given to me by the new speaker did not have a watermark to warn me it was owned by someone else.
To summarise, I do not believe I am liable but do not know if "ignorance" will be a sufficient defence. Can you please advise?
Due to Covid-19 the conference industry in South Africa has all but collapsed so I literally do not have the money demanded by PicRights.
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Hi Neil,
I am not familiar with the day-to-day application of the South African law on copyright, which I believe is currently in the process of being amended, so treat what I say with a degree of caution.
If you received the photograph in good faith then you should not be liable for primary infringement because you were operating under the authority of the person who supplied the image, and it was reasonable to assume that he/she had the rights to their own portrait. This would mean that any liability would be limited to secondary use, namely using an infringing picture in the course of business. This falls under section 23 (2) the South African Copyright Act 1978 (as amended). This sub-section includes an important proviso that person using the image for the purpose of trade had prior knowledge that doing so constituted an infringement of that copyright or would have constituted such an infringement if the article had been made in the Republic. From what you have said, it is clear that you did not have such knowledge and so the liability falls away.
As I say, you might want to check with a lawyer in South Africa, as I am not at all clear how the courts there would accept the secondary infringement defence in your case.
I am not familiar with the day-to-day application of the South African law on copyright, which I believe is currently in the process of being amended, so treat what I say with a degree of caution.
If you received the photograph in good faith then you should not be liable for primary infringement because you were operating under the authority of the person who supplied the image, and it was reasonable to assume that he/she had the rights to their own portrait. This would mean that any liability would be limited to secondary use, namely using an infringing picture in the course of business. This falls under section 23 (2) the South African Copyright Act 1978 (as amended). This sub-section includes an important proviso that person using the image for the purpose of trade had prior knowledge that doing so constituted an infringement of that copyright or would have constituted such an infringement if the article had been made in the Republic. From what you have said, it is clear that you did not have such knowledge and so the liability falls away.
As I say, you might want to check with a lawyer in South Africa, as I am not at all clear how the courts there would accept the secondary infringement defence in your case.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Neil Burnett
- New Member
- Posts: 2
- Joined: Fri Sep 04, 2020 12:22 pm
Re: PicRights Solicitor Letter Demanding Fee For Alleged Image Use
Thanks AndyJ,
Thanks for this encouraging advice; I will look into it and post the outcome.
Neil
Thanks for this encouraging advice; I will look into it and post the outcome.
Neil