Statute of Limitations on copyright infringement/fair useage

[CLW433]

I chair a small, volunteer-run registered charity. Nine years ago we advertised a film screening by a university society on our news page. The event was advertised with a still from the film. Last week we received a message from ResolveUK, acting for AFP, demanding restitution for the image's use or production of a licence. I imagine that licences were issued at the time for the use of promotional images but, since the event was not ours, we have no licence. Even if we did, this was nine years ago. The news piece has since had nine years of new articles on top of it so this has to be the result of a robot scratch. There is no way any person visiting our website would have stumbled across that image. We have removed the image subsequent to their message and notified them. They are still demanding payment of a small fee. Do these circumstances constitute fair useage? And is there a statute of limitations for this sort of thing? They claim to be defending the rights of the photographer but this feels parasitical. The same image is available through Getty for £39 for a three month licence. They are demanding £79. The original photographer is contactable via Instagram. Would it make a difference to obtain his permission? I think they are banking on it being easier to pay them off than fight this but it is bullying a small NGO and I am reluctant to give in.

[snapperman67]

as several IPEC judges have pointed out to me - the statue of limitations starts from the point of discovery. This can be further supported if the infringed image has had its original file name changed, meta data removed or altered, cropped/resized, edited/flipped etc - these actions are classified as concealment and made it it considerably harder for the rights owner to find the file. Given the size of the claim - I would suggest you just pay it. If you use an image, the rights holder can claim their original license fee plus additional damages provided that they have a proven track record of licensing their work and can support this claim

Phonographic Performance Ltd v (1) Raymond Hagan (aka Raymond Edward O'Hagan) t/a Lower Ground Bar and The Brent Tavern (2) Edward Hagan t/a Lower Ground Bar (3) Gerard Byrne t/a The Brent Tavern [2016] EWHC 3076 (IPEC) His Honour Judge Hacon says at Line 25
“There are two ways of looking at the dissuasive requirement. One is that the defendant should be dissuaded from infringing again. The second is that other infringers, actual and potential, should be dissuaded from infringing. It seems to me that the court may take either or both into account, as may be appropriate.”

In Webb v London Tenants (a company limited by guarantee), IP21S0019, his honour Deputy District Judge Vary said:“28. I also accept Mr Webb’s argument that there must be some additional damages to reflect the fact that he has had to pursue this infringement.Copyright infringement in photographs is widespread, and there would be no dissuasive effect to infringement if the worst outcome as paying what the infringer should have paid had he bought a licence. The court should seek to deter infringement generally. Additional damages are one route through which it may do so. Interest at higher rates is another.”

[CLW433]

Thanks. I understood that the Limitations Act 1980 meant 6 years from initiation of cause of tort. So, if the image has not been touched (in this case, lost in the depths of a news archive) for nine years, surely it is not possible to prove damage.

[AndyJ]

Snapperman slightly misstates how the Limitation Act works. Section 2 says

2 Time limit for actions founded on tort.

An action founded on tort shall not be brought after the expiration of six years from the date on which the cause of action accrued.

In layman's terms this means that the 6 year limitation starts to run from the date that a copyright owner had a right to sue for infringement (and not from when the infringement was discovered). The part where Snappman confuses the issue, is that he elides section 2 with section 32(1) which says

32 Postponement of limitation period in case of fraud, concealment or mistake.

(1) Subject to subsection (3), (4A) and (4B) below, where in the case of any action for which a period of limitation is prescribed by this Act, either—

(a) the action is based upon the fraud of the defendant; or

(b) any fact relevant to the plaintiff’s right of action has been deliberately concealed from him by the defendant; or

(c) the action is for relief from the consequences of a mistake;

the period of limitation shall not begin to run until the plaintiff has discovered the fraud, concealment or mistake (as the case may be) or could with reasonable diligence have discovered it.

References in this subsection to the defendant include references to the defendant’s agent and to any person through whom the defendant claims and his agent.

This is the only place where the Act talks about discovery of the tort. I agree with Snapperman that where there has been some act of concealment then it is more likely that the section 32(1)(b) provison will apply. However note the second part which I have highlighted. Image searching technology has been around for far longer than 9 years, so it is entirely arguable that the image discovered recently could just as easily have been discovered 9 years ago.

My only comment on Snapperman's other point about damages needing to be deterrent in nature, is that this tends to only apply where the infringer appears to need deterring, perhaps due to the profligacy of his infringing. Note that the concept of deterrence was introduced by EU law and was never traditionally found in UK civil restitution.

The other thing you asked about was whether there was a defence under the fair dealing exceptions. I don't think there is. If the purpose of the advertisement had been a critique or review of the film then it is possible that section 30 (1) of the CPDA might have applied, but none of the other exceptions can be said to apply. In particular, since the image was posted on your society's news page, the use of images to support the reporting of current events is specifically excluded from section 30 (2). There is no caselaw to support the idea that a photograph can be 'quoted'. And finally, for the majority of the fair dealing exceptions to be permissible, the source of the image has to be cited.

I agree with you that the figure of £79 has been chosen to make it more appealing, when compared to demands for several hundreds which we often hear about on the forums. If I was being cynical, I might suggest that charging double the licence fee means that the copyright owner will get exactly what he would have got if a licence had been bought, and ResolveUK also get their fee. You can be reasonably sure that the photographer will not get more that his licence fee percentage out of such a deal, after AFP take their cut. The original fee which a photographer charges for a licence should include all his reasonable overheads including enforcement of his rights. The cost of trawling the internet looking for infrignement is the same whether it uncovers 100 instances or none.

[snapperman67]

Here we go again - you don't understand the statue of limitations act in regards to copyright


Agripicture Images Limited v Telegraph Media Group Limited Case No: IP16S00113

District Judge Vary stated in regards to a defence of beyond statue use of a photograph
17. However, on the limited evidence and submissions that I necessarily had before me, I was not
satisfied that placing a photograph on a website which remains live constitutes only a single act of
infringement.

18. Whenever the webpage has been viewed, the photograph will have been transmitted from a server
to the recipient's computer, causing a copy to be made on at least the recipient's computer. It will
also have been stored by electronic means (within the meaning of s17(2)) on servers, and on the
recipient's computer. The exceptions in s. 28A may provide a defence to intermediaries who
transmit the work, but they do not exempt the person who controls the website itself and controls
the material placed on the website.
19. I respect of s. 20(2)(b), I was also not satisfied on the evidence and submissions before me that
placing the photograph on a website was a single act of "making available". It seems more in
keeping with the intention of the section that this was an ongoing act. Otherwise, once an
infringer has placed an infringing copy of the work on a website, then provided he remains
undetected for six years he becomes free to leave the infringing material on the website
indefinitely. I believe that the answer to Mr Stables' argument is that the limitation period starts to
run once the infringer has taken down the image

20. Even if limitation does not provide a complete defence, it limits damages to the period from 23
September 2010 (6 years before the claim form) until the image was taken down on 27 May 2016

I have clarity from several IPEC judges in this regard, all have stated that my interpretation is correct.

With regards to damages, I would refer you to
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, Article 13 1(a) states when the judicial authorities set the damages: “they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement”. For a self employed litigant in person bringing an action in the High court represents a huge burden of time which has a sever economic impact for the claimant who would otherwise use that time productively to create income both now and in the future. Loosing weeks worth of time due to litigation will have an effect on the claimants livelihood long into the future.

Recent judgements from District Judge Soloman and District Judge Obadai have seen awards of between 2x-4x additional damages to photographers. The message is very clear, don't expect to pay just the normal license fee for picture usage if you are caught infringing.

[AndyJ]

I am gratified that you feel the need to expand my understanding of the Limitation Act 1980.

However the parts of DIstrict Judge Richard Vary's judgment in Agripicture Images Limited v Telegraph Media Group Limited which you cited do not involve an interpretation of the Limitation Act, but rather they are the learned Judge's obiter dicta on when infringement may be said to occur. With all due respect to ŧhe judge, he has misdirected himself on the law. As the Supreme Court found in the case of Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Ors, a finding approved by the Court of Justice of the European Union, the exception to copyright in Section 28A CDPA applies to the entire process of transmission of a work in a network. For the characteristics of the acts within the transmission system which need to be considered to establish if they are covered by the exception, see paragrapgh 11 of Lord Sumption's speech which says

— the act is temporary;

— it is transient or incidental;

— it is an integral and essential part of a technological process;

— the sole purpose of that process is to enable a transmission in a network between third parties by an intermediary of a lawful use of a work or protected subject-matter; and

— the act has no independent economic significance.

The rest of the judgment goes on to explain how this assessment applies to the whole process from originating server to the user's computer or device. Therefore since no act of infringement occurs any time a recipient views a page, the only infringing act occurs when the infringer places a copy of the image on his server and makes it available to the public. This is a single act and it is this act which leads to the cause of action accruing (per section 2 Limitation Act). To be fair to the District Judge he does say that he based his comments on the limited evidence and submissions before him at the trial.

As for your second point, I entirely agree that the origin of the deterrence dimension originates in Directive 2004/48/EC, and I alluded to that fact in my earlier reply. However the Directive alone has no legal effect in the UK. It didn't before Brexit, and it doesn't now. Any legal effect it does have came as a consequence of the secondary legislation known as the Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006/1028), and since these Regulations are still in force they represent the assimilated UK law on the subject. The relevant part is regulation 3 which says:

Assessment of damages

3.—(1) Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement.

(2) When awarding such damages—

(a) all appropriate aspects shall be taken into account, including in particular—

(i) the negative economic consequences, including any lost profits, which the claimant has suffered, and any unfair profits made by the defendant; and

(ii) elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or

(b) where appropriate, they may be awarded on the basis of the royalties or fees which would have been due had the defendant obtained a licence.

(3) This regulation does not affect the operation of any enactment or rule of law relating to remedies for the infringement of intellectual property rights except to the extent that it is inconsistent with the provisions of this regulation.

(4) In the application of this regulation to—

(a) Scotland, “claimant” includes pursuer; “defendant” includes defender; and “enactment” includes an enactment comprised in, or an instrument made under, an Act of the Scottish Parliament; and

(b) Northern Ireland, “claimant” includes plaintiff.

This is the law which the courts of the UK are required to apply. You should note that firstly, the specific provisions listed only apply where the defendant knew or had reasonable grounds for knowing that he was engaging in infrringing activity (something which would need to be proved by the claimant), and secondly the words deterrent or deterrence do not appear and therefore do not form part of the court's consideration of the factors when determining the quantum of damages. As subsection (3) acknowledges, other parts of the law can also affect the assessment process, and that is the case here. Section 97(2) CDPA says

(2) The court may in an action for infringement of copyright having regard to all the circumstances, and in particular to—

(a) the flagrancy of the infringement, and

(b) any benefit accruing to the defendant by reason of the infringement,

award such additional damages as the justice of the case may require.

This is why I said in my earlier reply that additional damages should normally be limited to cases where the infringer demonstrated flagrancy - for instance repeat offenders. Again, note the absence of the word deterrence.

I do not expect you (snapperman) to accept my points and we will have to agree to differ. I make the argument here for the general readership so that they can make up their own minds on the issue.