Copyright infringement/breach of licensing agreement

If you are worried about infringement or your work has been copied and you want to take action.
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ALC
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Copyright infringement/breach of licensing agreement

Post by ALC » Tue Nov 10, 2015 1:04 pm

I'm new here and would be grateful for any help you can offer with regard to the following.

Some time ago and as a one off I allowed a small UK knitting yarn producer/retailer that had approached me via Flickr to use one of my copyright photographs of a sheep, for free but with a photographer credit, in a low print run book of knitting patterns. It subsequently came to my attention that they had used the image (without crediting me) to promote the book in their online newsletter. A brief and perfectly polite email exchange served as a C&D notice and the affair was settled amicably.

Fast forward to 2014 and I received a request from the same company re. licensing the image. They subsequently paid me for a non-exclusive, non-transferable royalty-free license to use the image in and only in their advertising and promotional material, in print and online, in perpetuity. The license included clear exclusions including a number with regard to making the file available to any third party. During the course of this process it became clear, by their own admittance, that they had applied to me for the license retrospectively after using my uncredited image extensively to promote their products at the premier knitting industry trade fair in the USA. Nonetheless, although I expressed my concern to them regarding this further misuse, we again proceeded amicably. (It is perhaps relevant that as a result of that trade fair their yarns are now marketed across the USA as well as in Europe.)

Earlier this month (Nov, 2015) it came to my attention that the same image had appeared, without my permission or a photographer credit, in an article on the current state of the knitting yarn industry in the UK that had been published in the independent.co.uk. The author of the article was a freelance copy writer. I immediately emailed the business concerned and they admitted by return to having supplied the image file to the newspaper when asked for a quote etc. for the piece. A staff member unaware of the license agreement is being blamed for this. They also stated that they had expected to hear from me re. the issue, that they had already contacted the Independent asking that the image be credited to me, and that the Independent had so far not obliged.

I emailed the Independent who responded by removing the image from their website (on 5th November) as requested and who replied that they had acted in good faith and felt they had no case to answer re. breach of copyright, suggesting that I contact the 'agency' that supplied them with the image.

I then emailed the knitting yarn business concerned again, politely pointing out to them that a timely email to myself, the photographer, would have resulted in an earlier removal of the image. I also outlined for them the clauses of the license they had breached and underlined that the issue was not the lack of a photographer credit but both the misuse of the image/breach of the license and any potential loss of income arising from that. I stated that I would be seeking some kind of redress. Since then the business has been trying to contact me by telephone but I am determined that all correspondence will be via email or letter.

So that's where I am at. My question, because I am pretty much at the limit of what I know re. copyright and licensing, is what is my best course of action going forwards.

Many thanks in advance for any advice.

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AndyJ
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Post by AndyJ » Wed Nov 11, 2015 6:13 pm

Hi ALC,
Unfortunately the story you have recounted sounds all too familiar. When people receive free licences they often forget the detailed terms attached to the licence and assume they can do whatever they like with the work which has been licensed to them.
I'm not really sure what you want to do. Obviously the company has breached your licence terms and the good thing is that they have acknowledged this, so really if you are looking for some sort of financial compensation for the extra work on your part and for the unauthorised sub-licensing, it shouldn't be too difficult to reach some sort of settlement. However you need to decide how much you think is appropriate. I assume that you don't want to end the basic agreement, although this is clearly an option since they have breached your licence terms. If the company prove difficult when hard cash is being discussed, you could suggest going to arbitration, but as that costs money, it could well wipe out any compensation you might be seeking. I really would not recommend going to the small claims court because the costs will be several hundred pounds even if you do it all yourself without a lawyer, and you would only be entitled to claim any incidental costs (loss of wages, travel, postage etc) in addition to an award of damages you might expect to receive. Since the damages would be limited to what you might have expected to get had the licence be used correctly, and that was unspecified in your earlier agreement, I think it would be a very hollow victory if you went down that route.
I would forget about pursuing any claim against the Independent. While you do have grounds for a claim, they will string out the dispute and fight it with their legal team, and so you are likely to need the help of lawyer also, and that would soon run up horrendous bills.
Returning to your negotiations with the wool company, there are a number of websites you can look at to try and arrive at a sensible fee for the additional use of the image, although they will tend to be just guides, not definitive amounts, based on the market value of your image. Try the NUJ website first, and then maybe Google to try and find some other comparators. Ignore the stock agencies such as Shutterstock or Getty because their fees take into account their own cut, and generally speaking they are going for volume sales.
And finally it might be worth adding to your original terms a short clause stipulating the consequences of any future breaches. This might concentrate their minds on ensuring that members of their staff understand your terms. As it clearly important to you, you need to make it abundantly clear that the credit is mandatory in all circumstances, and that a failure to include it would invoke whatever penalty you choose. It is important that you use the words "I assert my right to be credited as the author of this photograph", as without that or something quite similar, the wool company can avoid liability over that aspect. This is another rreason not to try and take on the Independent as they would be able to claim that they had no reason to assume that an assertion over a credit had been made, and thus would not be liable for omitting it.
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

ALC
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Post by ALC » Wed Nov 11, 2015 6:25 pm

Many, many thanks for this, and I do take your point re. the Independent. The section of the license I've pasted in below does I think already address what you say about being clear as to penalities and asserting copyright. But I can see that sticking to settling with the business concerned is probably my best option.

4. Warranties and Limitation of Liability

4.1 The Photographer makes NO warranties, express or implied, regarding the Licensed Material, including, without limitation, any implied warranties of quality or exclusivity or originality or merchantability or fitness for any particular purpose. The Photographer shall not be liable to The Licensee or any other person or entity for any punitive, special, indirect, consequential, incidental or other similar damages, costs or losses arising out of this Agreement or out of the use of the Licensed Material even if The Photographer has been advised of the possibility of such damages, costs or losses.

4.2 The Licensee shall indemnify and defend The Photographer against all punitive, special, indirect, consequential, incidental or other similar damages, costs or losses, including reasonable legal fees and expenses, arising out of or related to a breach of this Agreement, and/or the use or modification of the Licensed Material alone or in combination with any other material, and/or any claim by a third party relating to the use of the Licensed Material, alone or in combination with any other material, and/or The Licensee's failure to abide by the restrictions and conditions in Sections 2 and 3.

4.3 The Licensee agrees to use the Licensed Material at The Licensee's own risk.

4.4 The photographer warrants ownership of the copyright for the Licensed Material

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