Counterclaim in copyright infringement case

[IPMatters]

Hi all,

Things just got a bit tricky!
We recently received a counterclaim in response to our copyright claim. In their defence the Defendant admitted to taking the said image randomly from another website (to happily sell a property on their website). They go on to say that it was the photographer that in fact took their image ! However they are now counterclaiming for 'breach of data'. They have not provided any evidence of this, and we have no idea if our computer was somehow hacked. Merely that another company contacted them about a breach.
So we are in effect off piste, off topic now. So far removed from what is a serious flagrant act by the defendant.

Any suggestions lovely people?

Many thanks
Helen

[IPMatters]

Update!

I have deduced that the Defendant had not completed the entire N9b form (Defence and Counterclaim), as I noticed a page is missing!
So basically what I think is happening is that they (Defendant) gave their defence statement on the front page of the form, and are likely waiting for us to withdraw the case before submitting the complete form together with the court fee for the counterclaim.

This is honestly so bizarre. The Defendant company has even emailed the court with this partly completed N9b form. Anyway, I would hope to get more information regarding this alleged data breach counterclaim, as so far this has not been made clear.

Hope to still get some feedback from you all.

Thanks
Helen

[AndyJ]

Hi Helen,

I have to say I am not at all clear about the alleged circumstances which have led up to this claim and why you think that, possibly, your computer might have been hacked.

If the defendant submits an incomplete defence form then, ordinarily, the court clerks would return it and ask for the extra page. However I think you are suggesting that the defendant will submit the form in full to the court and include a counterclaim alleging this breach of data, but withhold a page from you. If that is so, then they will be breach of the pre-action protocol and the court will not be impressed by this. Anyway, the case remains live due to the counterclaim, and all that needs to happen later is that the main (your) claim can be withdrawn at the case management stage if you so choose.

As for what the data breach might look like, it's hard to say since I have so few facts about any of this. Normally, assuming this is a claim under the Data Protection Act, the IPEC can't deal with the issue, so the matter would probably be passed to the Media and Communications List of the High Court. Without knowing the detailed nature of the counterclaim it's not really possible to comment further. Here's the guide to the workings of the King's Bench Division, of which the MAC list is a part: King's Bench Guide

Since this now some distance away from a straightforward issue, you might be advised to get some preliminary legal advice from a specialist solicitor. You can find one via the Law Society website. Just choose Media IT and Intellectual Property as the area of law, and select your own part of the country, and see what results you get. You should initially seek a short (say 20-30 minute) free consultation probably on the phone or zoom etc. Then, depending on what you are told at this interview, you can decide how to proceed. It is not worth running up large legal bills if ultimately you want to drop the claim before the hearing.

[IPMatters]

Hi Andy,

Many thanks for your reply.

This is complicated sorry!

What I think is going on here, is that another company were also caught in a breach of copyright having lifted an image from another website to nicely furnish theirs. They were really angry and threatened all sorts of unsavoury backlash, such as spreading the word to destroy the creative's reputation and future work possibilities.

The defendany company counterclaiming said there had been a breach of data, without saying what exactly. I have since noticed that an email address from the aforementioned company was included within an email sent to the Defendant in error.
Whilst this error is regrettable, the Defendant has not outlined any aspect of the data breach, nor any financial loss attributed to it. This is quite simply a case of disgruntlement.
Worst still the Defendant company now say in their partly completed defense statement (as you know page 2 is missing) that the image in fact belongs to them. That a staff member took it and that it is the Claimant who is claiming it as his own! This is indeed extremely hurtful.

In a seperate email the Defendant stated that they were only seeking x amount, but would claim twice that amount were we to pursue the copyright claim. Therefore I believe the Defendant company want it to seem as though they have completed the form, but are holding off with completing it and submitting the court fee, waiting for the creative to back down.
Unfortunately given their latest defamatory statement, alleging that the image is theirs, has put an entirely different perspective on things.

Apologise if I am confusing or not explaining things well enough. I tend to deal with really awful people, companies who ought to know better.

Thanks Andy

Best
Helen

[AndyJ]

Hi Helen,

I have to say I am still pretty unclear about the whole issue. That is not really important because I am not advising you on how to conduct your litigation. I am merely trying outline in general terms what the law says in situations like this. Let me just recap what I think I understand. An image created by your client was used on website A and then the person/company you are calling the defendant, but let's call them B, copied the image without permission and used it on B's site. You on behalf of the photographer have raised a claim against B and so far B has paid money equalling the amount being claimed into your account. In the meantime you or your client has begun proceedings in the IPEC by issuing a claim form. B has not fully completed and filed his defence and has said that he or his company intends to sue for some unspecified breach of his data. You believe that B will withdraw his counter-claim if you withdraw your claim. The most recent development is that B now says he owns the copyright in the image which is the subject to the initial claim by your client. I'm not sure how this stacks up against the fact that B has to all intents, agreed to settle your initial claim by depositing the money in your account.

If I have the story correctly, then much depends on you/your client's appetite for a long dispute. As I mentioned if B persues a data protection claim or even one under Article 8 of the HRA, then the IPEC can't deal with that aspect and it will have to go to the MAC list. Since the copyright claim doesn't depend on the data breach claim being heard, the IPEC can go ahead and hear the copyright claim, and also now the counter-claim that B owns the copyright in the image, if that is what B decides to do.

This could get expensive, because of the complication of the possible counter-claim over ownership of the copyright. So unless you have good grounds for proceeding with the claim even though B has made a payment in full settlement of that claim, then both parties would be well advised to use alternative dispute resolution to resolve the matter. Assuming B is prepared to go along with ADR, you can get details of how to do this from the IPO website.

Unfortunately because a claim form has been issued, litigation is now underway and I cannot provide you with any advice on how to conduct that litigation as I am not your legal advisor and clearly I can't do due diligence via a public forum.

[IPMatters]

Hi,

Thanks for your response Andy.

So let me try explaining it a bit better sorry.

A company (A) took a photographer's image and published it for their own website marketing. They were angry at being caught. They threatened to spread stories and stop the photographer from getting future work. Despite threats they bizzarly simultaneously tried to engage his services by offering 'potential' work. It was all a game. The photographer declined to work with people who threatened him.
The said company (A) refused to negotiate via the Letter of Claim, and instead deposited a random, smaller amount of money (than the claim) into the photographer's bank account.
A claim was raised regardless and progressed. The response pack was sent to the said company (A) which they ignored- ie, no defence was submitted. But then, they deposed another amount of money. I have left the court to answer this one as they as Defendant’s need to reply to the claim, not do their alternative choice.

In another seperate case of absolute flagrancy, a company (B) took a completely different image belonging to the photographer. This company have basically said. 'Get the photographer to withdraw his copyright claim or we will pursue him for a data breach'. Somehow an email address from the above 1st company (A) mentioned, ended up attached to that of company (B). It is therefore clear that company A and B are joined in a disgruntled attack.

Company B have not offered any evidence, or substantiated any losses, simply a clear message to say that they will counterclaim if we do not stop the copyright claim. Again, they want me to acknowledge receipt of this defence and counterclaim, but it is incomplete because they are waiting on a withdrawal of Claim!

Yes, entirely regrettable that this data breach occurred, although unclear how this happened. (Company A had previously said something about our account being possibly hacked and putting in a joined attack with others!)

You are right I believe in saying that the court would need to assign their counterclaim claim for data breach to a different court.


Thanks again. Appreciate it.

Helen
PS. I don't seem to be getting notifications, so pls contact me directly if you like.

[AndyJ]

Thanks for the clarification. Definitely a muddle.