Fair Dealing After License Refusal?

[darthvader]

Hi Everyone,

So, I have a question that relates to some of my photographs. I was approached for a license by a broadcaster, specifically told them they could not have a license for the images they wanted to use and I did not want my photographs using. They used the images anyway, citing fair use.

The images were not critiqued, discussed or described, they were used as illustrations to reaffirm a point made.

The broadcaster also refuses to remove the images citing Fair Dealing, despite request for them to remove.

Under these circumstances, what steps steps should I take and where does the law actually sit?

Thanks

DV

[AndyJ]

Hi Ken,

Good to hear from you again. From what you have said, I can't see any grounds which would support a fair dealing defence. You don't mention if the broadcaster credited you as the author of the images, but if they didn't then their claim to fair dealiing fails at the first hurdle. In your third sentence you use the term fair use, then later refer to the broadcaster citing fair dealing. These are two separate concepts, the first being US doctrine and the second is the UK doctrine and they have substantial differences. Assuming that the broadcaster is a UK based entity or that the program they broadcast was made available in the UK, then it is the UK law of fair dealing which applies.

The fact that they originally sought a licence and this was refused counts in your favour, as does the fact that they refused to remove the images once you had pointed out the alleged infringement, and both these factors would allow you to make a separate claim for additional damges for flagrancy, alongside the claim for infringement.

You could handle this entirely on your own by raising a claim in the Small Claims Track of the IPEC, following the procedure set out here: IPEC Small Claims Guidance or if you find that a little dauniting, you should speak to a solicitor who specialises in Intellectual Property law. The disadvantage of this latter course is that your legal fees will not be recoverable even if you win your claim, so the fees might wipe out the damages you would be awarded. If you have professional indemnity insurance as a photographer, you should check your policy to see if it includes free legal support for issues such as this.

To find a solicitor who has the requisite IP legal experience, use the Law Society's website, and select Media, IT and Intellectual Property from the 'Your Legal Issue' menu and add your location in the other box.

[darthvader]

Hi Ken,

Good to hear from you again. From what you have said, I can't see any grounds which would support a fair dealing defence. You don't mention if the broadcaster credited you as the author of the images, but if they didn't then their claim to fair dealiing fails at the first hurdle. In your third sentence you use the term fair use, then later refer to the broadcaster citing fair dealing. These are two separate concepts, the first being US doctrine and the second is the UK doctrine and they have substantial differences. Assuming that the broadcaster is a UK based entity or that the program they broadcast was made available in the UK, then it is the UK law of fair dealing which applies.

The fact that they originally sought a licence and this was refused counts in your favour, as does the fact that they refused to remove the images once you had pointed out the alleged infringement, and both these factors would allow you to make a separate claim for additional damges for flagrancy, alongside the claim for infringement.

You could handle this entirely on your own by raising a claim in the Small Claims Track of the IPEC, following the procedure set out here: IPEC Small Claims Guidance or if you find that a little dauniting, you should speak to a solicitor who specialises in Intellectual Property law. The disadvantage of this latter course is that your legal fees will not be recoverable even if you win your claim, so the fees might wipe out the damages you would be awarded. If you have professional indemnity insurance as a photographer, you should check your policy to see if it includes free legal support for issues such as this.

To find a solicitor who has the requisite IP legal experience, use the Law Society's website, and select Media, IT and Intellectual Property from the 'Your Legal Issue' menu and add your location in the other box.

Thanks for your reply Andy.

These are photographs that I own the rights to. They used 2 of them in a documentary as illustrative props to add credibility to the narration.

They have cited fair dealing under quotation. The images are displayed for a few seconds each and credit the original photographer but not my company, which they know owns the rights.

They are point blank refusing to remove the images and trying to pay for a retroactive license.

I’d like advice about what I can say in order to force their hand to remove and settle, but I’d also be willing to file court proceedings.

Any help you can give would be great.


Ken

[AndyJ]

Hi Ken,

There is no legal precedent for 'quoting' a photograph, per Section 30 (1ZA) of the Copyright Designs and Patents Act 1988, so it's hard to be categorical about this. However on balance I think that merely using the images to illustrate a documentary, without some very close link between the subject matter of the images and the subject of the documentary would be problematic. Most professional film makers would recognise the need to clear rights before using other people's copyright works, just as they would expect the rights in their work to be respected.

The principle of fair dealing (which is the name of the UK doctrine) rests on something called the Berne Convention three step test. You can read a brief article on this on Wikipedia, and googling the term will bring up many, more in depth, academic articles on the subject. On the basis of the second step of the test as applied to your case, the mere inclusion of the images in the documentary does not, of itself, amount to something which prevents or precludes you, for example, selling licences to other parties to use these photographs. To that extent it may be hard to say that the use in the documentary conflicts with your right to exploit the images more generally. I assume it is fairly unlikely that the images as they appear in the documentary would be capable of being captured in sufficiently high quality for subsequent use elsewhere, say on a website or in a book.

You are on stronger ground when it comes to the third step of the test which considers if there has been disproportionate harm to you as the rights holder in this specific instance, where you have been deprived of the opportunity to sell a licence to the film makers.

The matter of the citation is equally problematic. The law merely says that "the quotation [should be] accompanied by a sufficient acknowledgement (unless this would be impossible for reasons of practicality or otherwise)". Sufficient acknowledgement is defined in Section 178 as follows:

“sufficient acknowledgement” means an acknowledgement identifying the work in question by its title or other description, and identifying the author unless—
(a) in the case of a published work, it is published anonymously;
(b) in the case of an unpublished work, it is not possible for a person to ascertain the identity of the author by reasonable inquiry;

It would appear that the documentary makers have complied with this requirement by citing the original photographer, and do not need to credit your company as the current owner of the copyright.

I'm sorry that I can't be more certain about your overall position. If you feel it is worth it, you should consult a solicitor as I outlined in my previous reply, and let them view the documentary so that they can provide a more informed opinion. As I am not your legal advisor, I can't do that.