Commercial claim for private use

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thomasfitz22
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Commercial claim for private use

Post by thomasfitz22 » Tue Feb 20, 2018 9:25 pm

hi

I am currently disputing a copyright infringement case where a photo appeared on a personal blog. This usage was non commercial and no money was received or expected for the blog article etc, the blog also only received about 40 views. The alleged copyright owner is claiming commercial rates based on the NUJ rates of £500 for 1 year commercial usage + additional damages for flagrancy. The same image however was sold on a stock image website a few years prior and is being sold elsewhere as a print for less than £50. My questions are; 1) can the commercial usage apply to a private personal blog that did not receive any monetary gain, 2) can the image value be benchmarked by what it was sold for as a stock image/print, 3) the NUJ appears to be for journalists and seems to relate to the publishing industry, is there another source where photography work can be accurately priced?

many thanks in advance, Tom

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AndyJ
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Re: Commercial claim for private use

Post by AndyJ » Thu Feb 22, 2018 10:00 pm

Hi Tom,

It's really hard to answer your question succinctly, or indeed as fully as you would like.

If the matter were ever to get to court, the court would have to decide what fee would have been freely agreed in an open market. However this is fine in theory but difficult to do in practice, because the complainant will say he would have held out for the larger amount, and the defendant would say that he wouldn't have been prepared to pay that much and have taken his business elsewhere. This is substantially what happened in a case known as Absolute Lofts, which you can read about here. You can see from that judgment how the court tries to strike a balance. And as can be seen from this follow-up judgment, the courts don't always have all the facts presented to them in order to strike the correct balance.

However, in some cases, it isn't really feasible for the defendant to say 'I would have gone elsewhere to get a similar image at a cheaper price' due to the unique nature of the photograph concerned. This is where your NUJ point comes in. The higher fees given in the Freelance Guide are more applicable to exclusive and/or unique images which a newspaper or magazine desparately wants to use in order to sell more copies. That is in contrast to the use of stock images which are very much cheaper, and are used just to illustrate an article or feature. An example of a case based on the special nature of the images can be seen here*.

Both of the cases I have mentioned refer to the use of photographs in a commercial setting. The fact that you only used the disputed image in a social, low volume context may have some bearing on how the court would calculate the damages, but unfortunatley I'm not sure how persuasive it will be in any attempt to settle this matter without going to court.

Clearly you are looking for some sort of middle ground, where the fee you pay is proportionate to the actual usage, whereas the claimant is probably also looking for an element of punishment in addition to the fee he is demanding, something which a court would only seek to do in the most egregious of cases. Unless you are able to agree to take take the matter before an independent arbitrator or mediator, I'm not sure how likely it is that the claimant will shift his position. He has the law on his side (assuming you don't have a defence to liability) and that is a powerful position to be in. Either way, you will both want to avoid going to court because that will only introduce additional expense. On that basis, if you cannot settle the matter between you, I strongly advise using Alterantive Dispute Resolution as the next best approach. You can find out details about this from your local County Court or the IPO website.

I am aware that I haven't answered your specific questions. This is because the answer to "can the commercial usage apply..." and "can the image value be benchmarked... " is yes, if the complainant wants them to. His claim only needs to meet a reasonableness test if he wants to take the matter to court. As for you last question, I'm sorry but I don't know of another guide to fees which might assist you. The best I can suggest is looking at what the stock agencies are seeking for similar images (as was done in the Absolute Lofts case).




* the Jason Sheldon case was heard in the Patents County Court, which later that year became the Intellectual Property Enterprise Court (IPEC).
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Re: Commercial claim for private use

Post by thomasfitz22 » Fri Feb 23, 2018 6:42 pm

hi AndyJ

That's extremely helpful and many thanks for taking the time to reply and provide the links etc.

Tom

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Re: Commercial claim for private use

Post by thomasfitz22 » Wed Mar 21, 2018 6:55 pm

hi AndyJ

I wonder if I can gain your thoughts again on this matter please;

- I have now received a set of photocopied claim documents by email from the claimant and the claim form has been stamped by the IPEC. The claimant has stated that they have also posted the original documents to the address on the claim form. The address on the claim form is not my address and never has been, and this is also related to the claimant's harassment where they have publicised information relating to this case online, to my work, to my customers and now to a complete stranger. My question on this is have they served me correctly as I have no idea if the documents they emailed to me are correct or complete in terms of a response pack?

- I am proposing to bring an harassment counter claim against the claimant for their unacceptable conduct which has caused some serious reputational damage amongst other things. I have already issued them with an harassment warning letter to which they replied stating that they undertook their actions to stop a crime being committed? and if I payed up then they would take no further action, this is one of a number of threats that they have executed because I didn't pay their demand. My question is should I bring this as a counter claim as part of the IPEC small claims track or would it be better to pursue this as a separate matter as the likely damages I will be claiming will be higher than the claimant's infringement claim?

Many thanks in advance, Tom

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Re: Commercial claim for private use

Post by AndyJ » Wed Mar 21, 2018 9:52 pm

Hi Tom,

Now that proceedings have been begun against you I am limited in the amount of help I can give you. However since both your questions relate to matters of procedure, I will do my best to help with those. On the actual matter of defending the claim, you should either consult your own solicitor, or contact the IP Pro Bono Unit for advice.

Firstly the claimant is required to follow Rule 7.5 of the Civil Procedure Rules Part 7. As you can see, service of claim forms can be by a number of methods, including by email, although in your case it would appear that the specified method was by post, with the email just as a back up. Accordiingly you should follow rule 7.7 and ask for the claim form and particulars of claim to be sent to your correct postal address.

Secondly, I am not entirely clear on what grounds you are thinking of counter-claiming. If it is for harassment (rather than defamtion) under the Protection from Harassment Act 1997 then that is not a matter the IPEC can deal with and you would need to bring the claim via your local County Court. And because this would be a separate action it would not technically be a counter-claim. There are no provisions under copyright law for making a counter-claim for making unreasonable threats. However the unreasonable behaviour of either party can be a factor when the court comes to decide on the question of costs.
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Re: Commercial claim for private use

Post by thomasfitz22 » Fri Mar 23, 2018 6:52 pm

hi AndyJ

That's extremely helpful and many thanks for taking the time to reply and provide the links etc. I do have a further question if that's OK.

On the Acknowledgement of Service form N9 it states that the defendant has 28 days from the date of service to file a defence if the form N9 form is filed within 14 days. However, the IPEC guide to the small claims track published/updated February 2018 states 42 days or 70 days subject to whether the claimant has stated that practice direction has been followed, 42 days if they have an 70 days if they haven't. The IPEC guide also does not mention 28 days.

I was slightly confused by what seemed to be a conflict on this and contacted the court, they replied and said that I should refer to the form and the guide and if this didn't answer my question then to contact citizens advice. I contacted citizens advice and they could not tell me the answer but suggested that I file the N9 form stating that I will be following the guide timescales and not the form and will file my defence within 42 days.

I'm confused by this and would have thought the court would be able to advise on the process, however any thoughts on why the difference or have i missed the point somewhere etc?

Many thanks in advance, Tom

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Re: Commercial claim for private use

Post by AndyJ » Sat Mar 24, 2018 10:05 am

Hi Tom,

Again as this is question about procedure and not the litigation, I can try to help.

What you have encountered is the tangled nature of the Civil Procedure Rules (CPR). Form N9 is designed for the standard rules found in CPR Part 15 for the defence reply. However CPR Part 63, which contains the rules for Intellectual Property cases, sets out a modified timetable for cases which are destined for the IPEC. You can find them set out in Rule 63.22. This is why the IPEC Guidance Notes say what they do. I am rather surprised the court staff didn't know the answer, although not surprised when it comes to Citizens Advice since this is a specialist area of the law.

So depending on whether the Particulars of Claim you received were endorsed to say they comply with the pre-action code of practice, you have either 42 (comply) or 70 days (do not comply) to file your response. Incidentally, if the particulars were endorsed to say they conform to the code, a copy of it should have been enclosed with the Particulars.
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Re: Commercial claim for private use

Post by thomasfitz22 » Sat Mar 24, 2018 7:44 pm

hi AndyJ

Many thanks once again and this makes it clearer. Yes, the claimant did provide a statement of compliance with the practice direction albeit a one-liner so I have informed the court within my acknowledgement of service return that I assume 42 days to file my defence from the date of service.

Many thanks, Tom

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