Charity website -- alleged copyright infringement

[Donlad]

I am Secretary of a Scottish Charitable Trust. We have received the standard letter from Adrian at fairlicensing@PA Media Group demanding payment for an asserted copyright breach. We would be happy to remove the image which has only been on view since early March.

We are obviously a non commercial body, and exist to preserve and enhance the history of a famous Scottish football team. As a charity, we are obviously completely separate from that Club. We have 12 Trustees. We run a website and the claim arises from that website.

They are asserting that an image is their intellectual property. It comes from Season 2000/2001, although only loaded onto our website two weeks ago.
Alamy do have images from that season but the relevant image is not on the Alamy website. The cost for a basic licence is £15 and an enhanced one is £29 for the images from that season. They are seeking £468 less the usual prompt payment discount of 10% if we pay within a week.

The image that we uploaded is actually of the cover of the Former Players magazine from a few years back, although clearly we are not wanting to get them into trouble. QUESTION: how are we supposed to know that this image was held by PA Media -- most of the images come from the Club -- and what evidence should we ask for to verify their claim ? It seems to me that there are no reasonable steps to that we could have taken which would have revealed their copyright ownership.

Having read a number of threads on this extremely helpful website, would I be right to assume that the advice might be to make a without prejudice offer to settle the matter of say £50? ( Licence plus a contribution to costs)?

p.s. I am aware of the different Scottish legal position.

[AndyJ]

Hi Donlad and welcome to the forum,

Since there appears to be some uncertainty about who might actually own the copyright to this particular image, you are certainly entitled to ask PA Media to provide proof that they represent the photographer who took the image originally. When you say 'most of the images came from the club', do you know if they were commissioned by the club and what licensing deal was established at the time? Unless the photographer was on the staff of the club at the time, the club will have needed to ensure they had a licence to use the image when the former players magazine was produced. That licence might well have been limited in time and also in respect of how the image could be used subsequently.

Unfortunately I don't think a court is likely to accept your argument that there was no way to find the copyright owner. Clearly, due to its age the photograph is covered by copyright, and the onus was on you to get permission if you are not the copyright owner and don't have a current licence to use it.

If it turns out that you may have infringed the copyright then, yes, I would agree with the amount of your counter-offer. The only difference between your case and the majority of the others discussed here is that, if this went to court in Scotland, there is no equivalent of the Intellectual Property Enterprise Court (of England and Wales) small claims track. The way the law of copyright actually works in Scotland is the same as in England and Wales.

[Donlad]

Hi Andy

Many thanks for your timeous (to use a Scottish word, not employed south of the Border) reply. It is very much appreciated.

Would I be right to assume that simply ignoring the letter as a vexatious try-on would place us in breach of the Court guidelines, and potentially expose us to damages?

We will pursue the question of what licence the Club may have had 24 years ago. We will also probe who PA are acting for.

Assuming we have accidentally infringed copyright, we are minded to make a number of short points, realising that this will be of little moment to the infringements team at PA Media./ Alamy. However it may be of some interest to a Court.

1. We are a Charity and thus have no profit seeking motive
2. The offending image was immediately taken down. It was only on view for three weeks.
3. The violation of copyright (if there was one) was completely inadvertent, and could not have been easily anticipated

Nonetheless we are prepared to make 'a without prejudice offer, save for costs' based upon the licensing fee for such a stock image (£29 from Alamy) plus a contribution to costs £21. Total £50. In our view this amounts to a reasonable offer to settle the matter, and anything further might well be deemed as unjust enrichment.

Should we mention that as the History Trust, relating to a football club, we would anticipate substantial pro-bono legal support in this matter should it proceed to Court?

We would then stand our ground, repeating the offer as being reasonable, and see where it goes.

[AndyJ]

Hi Donlad,

Yes I would suggest that you don't ignore the claim. That would be viewed adversely if the matter went to court.

As for your points, the only one which has any traction is the fact that you took the image down immediately. Had you not done so that might have been cited as evidence of flagrancy which in turn might have led to a claim for additional damages. Since copyright infringement is a matter of strict liability, both your inadvertence and the charitable nature of the organisation would be irrelevant for the purpose of establishing liability.

And if you are able to get some pro bono legal assistance it might be worth deploying it at this early stage, as it wlll have greater effect now. This is because these types of speculative claims rely on the victim being frightened by the threats and, usually, unsure of their legal position. A firmly worded letter from an advocate at this stage would tend to show PA Media that they have a fight on their hands and so might accept the counter offer as the best outcome for them.

[Les]

Would a case like this go to a Scottish court or to IPEC?

[AndyJ]

In theory it could go either way, but as the defendant is in Scotland, the Scottish courts would generally be the more appropriate forum. But as we have said before with cases like this, that would only happen if the claimant was very sure of getting a win.

[Les]

What are the disadvantages (or advantages) for the defendant if the claimant chooses the Scottish system rather than IPEC? For example can they seek expenses if they win? Can they go for punitive costs? I know there's no 'fast track'.

[AndyJ]

Hi Les,

If the claim went through the Scottish court system it would be heard in the Outer House of the Court of Session. And the court can award the winning party their legal costs. Like the IPEC, the Outer House has specialist intellectual property judges who would hear the case, meaning tthat there is less likelihood of a surprising outcome.
But unlike the IPEC small claims court where the procedure is expressly set up to encourage litiigants in person, the Outer House does not have a streamlined and less formal fast track system, meaning that a full trial may last longer than would be the case in the IPEC SCT, with all that that implies with regard to legal costs.
The actual law which the Outer House would apply is the same Copyright, Designs and Patents Act which applies to the rest of the UK, so to that extent, the opportunities for additional damages (not usually referred to as 'punitive') are the same. The only difference of note is that in Scotland the claimant or plaintiff is referred to as the pursuer and the defendant is the defender.

[Les]

In case it helps I got the following information from a solicitor in Scotland:
The company could choose to bring their claim either under IPEC or under Scottish law - it would be their choice. While there's no 'fast track' in Scotland it would still most likely be a 'small claim' (up to £3000). In Scotland, the losing party will generally be found liable for costs however the expenses which are recoverable in small claims in Scotland are pretty limited depending on the size of the claim.

You do not need to employ a solicitor to raise or defend a small claim.

If the value of the claim is £200 or less, and the case has been defended, there will normally be no award of expenses. In this situation, any court fees paid will not be recoverable.
If the value of the claim is between £200 and £1500, and the case has been defended, the maximum amount of expenses which can normally be awarded by the court to the successful party is £150.
If the value of the claim is between £1500 and £3000, and the case has been defended, the maximum amount of expenses which can normally be awarded by the court to the successful party is 10% of the value of the claim.
There are exceptions to the normal limits on awarding expenses where:
 The defender has not stated a defence
 The defender does not proceed with his defence
 The defender has not acted in good faith in defending the action
 The sheriff has found that either the pursuer’s or the defender’s conduct in the case has been unreasonable

[stevedavies]

That's useful info, Les.
Are those figures the same in terms of claims through the IPEC?

[AndyJ]

Hi Steve,
No they aren't applicable to the IPEC small claims track. The expenses (as opposed to legal costs) which the IPEC SCT may award are the claimant's lost earnigs up to £90 in value, his travelling expenses for the day of the hearing, and cost of the filing and hearing fees. As you know, no legal costs are awarded. These expenses are irrespective of whether the defendant 'defends' the claim, although obviously if he successfully defends the claim, ie he wins, then he does pay the claimant anything and may be awarded the same lost earnings and travel expenses as would have been payable to a successful claimant.
Unfortunately I have no experience of using the Scottish sheriff courts for this kind of litigation. My understanding is that they may only hear the most simple and straightforward cases, although how the demarcation is decided is unclear to me.