Sued for copyright infringement

If you are worried about infringement or your work has been copied and you want to take action.
Lali12
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Sued for copyright infringement

Post by Lali12 » Mon Feb 26, 2018 12:59 pm

Hi

If anyone can give some advice that would be great. I’m
posting on behalf of a friend who recently received a letter before claim from solicitors claiming that she has infringed their clients copyright by using an image on her website. The letter claims that their client the photographer is the owner of the copyrighted image and is protected under law by as an original artistic work under S4(1) of the copyright designs and
Patent act 1988. The letter does not state any details of the photographer owning copyright and the image did not have any water mark etc on. When the image was sent to my friend on the letter it now had a watermark type reference to a photograph agency. The letter states that my friend has infringed their clients copyright and that they will commence proceedings which can provide remedies including injunction, damages to compensate the client or an account of profits made by my friend. They’ve asked for a total of £4,000 which has not been broken down in any way. They ask her to undertake that she agrees that she’s infringed the copyright and that she will pay the amount or they will take it to court. As some background info on her part, she had asked a website designer Abroad to create a website for her and did not know that such an image had been used on the website. Neither her or the designer knew the image had copyright and the designer has told her it was got off google images with no watermark. Once the letter was received she immediately instructed the designer to remove the image which has been done. The image was only on the website for a couple of months if that and she made no profit or otherwise from it- it was just used for decor and has no relevance to her business. She wrote to the solicitors
Explaining this and apologized whilst not admitting liability. They have come back and said that this apology doesn’t compensate their client for damages and loss (again not specified what losses or damages) and that she must offer a reasonable sum or they will take it to court. She’s unsure what to do as she was unaware of the use of this image and about its copyright. She does not have the funds to defend it using solicitors and the business does not make
Money to be able to pay for this. Do you have any advice on what she should do and how to
Respond? Thank you!!

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Re: Sued for copyright infringement

Post by AndyJ » Mon Feb 26, 2018 4:01 pm

Hi Lali,

The letter before claim should have contained a number of things which from your description appear to be lacking. First there should be a categorical statement that the photographer owns the copyright in the disputed imge. It may seem that this was the case, but he/she could for instance, have assigned the copyright to a picture agency such as Getty, which would then mean that the photographer no longer had standing to bring the claim.

The next, and a very important, point is how the figure of £4,000 was arrived at. It is a very high figure but without knowing what it represents, it is hard for your friend to assess whether it is fair. Certainly based on the details you have supplied it would seem to be manifestly unfair and disproportionate. I suspect that the figure includes an element of 'punishment', which a court would not entertain when making its finding over damages.

If the circumstances of how the site was created are the full picture, then your friend would only be liable for secondary infringement, that is to say using or possessig an infringing copy in the course of business. This is still serious but much less so than primary infringement. Your friend should definitely continue to make no admission about liability, even to secondary infringement. To save me re-writing what I said in a previous similar case, take a look at this thread on the forum which may help your friend to understand where she stands.

As your friend cannot afford to engage a solicitor, I strongly advise her to contact Citizens Advice in order that she doesn't have to deal directly with the other party's solicitors. If the worst happens and the photographer does decide to sue, then further free support may be available to your friend through the IP Pro Bono service.
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Re: Sued for copyright infringement

Post by Lali12 » Mon Feb 26, 2018 5:44 pm

Thank you for your very helpful reply! I did come across that thread that you linked above and it was very helpful.

As some more information: there is nothing to show that there was dialogue or an agreement between the designer and my friend in regards to obtaining images for the site. Given this, does this mean that she would be liable for secondary infringement regardless and if so can she dispute it entirely as she was completely unaware of it and of any copyright?

I have a few questions on what you think she should do moving forward in the response letter that will be sent out do you think the following should be stated:

- mention of the fact the solicitor letter lacks detail about ownership of copyright and ask for evidence of this? How would we know if the photographer has assigned his rights to the agency that is watermarked on the picture now- what would need to be shown to prove he still has or had copyright on the image? (The original picture that was used never had even the watermark of the agency on there.. Does this make any difference in relation to copyright?)
- ask how they came up with the £4K figure (the only thing specified was that £1k is their clients current legal fees and the rest is damages)
- continue disputing the entire claim.. would
primary/ secondary infringement need to be mentioned or any laws relating to this?
- do any laws need to be specified on her behalf that would help her defence? I noticed that s23 of the CPDA was mentioned in relation to secondary infringement and this could be used as a defence.. but does relying on this and mentioning it in the letter indicate that she admits to secondary infringement?
- would mentioning s97 (1) CPDA be helpful to state that she knows no remedies would be available if taken to court or should she not mention this at all?
- what should she be concluding with given that she disputes the matter entirely?
- in your opinion is it better that she offers an amount to settle (does this then indictae she accepts liability?) and if so how much is sensible?

She is very worried about the threat of court but she also thinks that this could be a money making scheme on behalf of the Photohrapher due to the lack of formality of the letter and the amount requested. Generally is this threat of taking to court really followed through in similar circumstances?

She has gone to citizens advice but they have only pointed her in the direction of IP solicitors Who are too costly for her.. if she responds herself will the solicitors not take her as seriously do you think?

Thank you!!!

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Re: Sued for copyright infringement

Post by AndyJ » Mon Feb 26, 2018 8:48 pm

Hi again Lali,

Quite a bit to go through here, and I should preface my response by saying we can't actually give specific legal advice on how to conduct litigation. That would require a proper client/solicitor relationship which for obvious reasons can't exist here.

That said I think your friend would be sensible to seek some sort of out of court settlement. In the first instance that could be by way of a counter-offer, and if the other party refuses to negoitate, then ask to take the matter to a formal dispute resolution forum, either mediation or arbitration. This would involve some additional costs but rather less than going to court. A failure to agree to arbitration would count against the claimant if the matter goes to court.

The letter in reply can certainly ask for confirmation in writing (rather than 'proof') that the photographer retains ownership of the copyright. And it should most definitely ask for further details about the make up of the fee demanded and the assumptions which were made in arriving at that fee. While your friend is not really able to question the so-called legal fees element, it is worth saying that they are very high for simply writing a single letter and possibly advising their client in what is a fairly straightforward matter. Half that amount would seem more reasonable. Then returning to the actual fee, ie £3000, demanded for the alleged infringement, you or she will need to do some research on the picture agency website which now appears on the watermark, and see what fee would have applied had your friend's web designer gone there to source the image. I suggest that if it is available in the case of this image, a royalty-free rate would be appropriate for the use you mentioned (that is to say, as a background illustration). Calculate the total fee based on the period the image was on the website and make this the basis of the counter offer. It would be hard to justify a fee of £3000, if the agency would only have asked for a hundred or so pounds today.

The reply can also mention that your friend utterly rejects that this was primary infringement on her part for the reasons she has already explained to the claimant. She can then say (without admitting any liablity), that at most there may be grounds for a claim of secondary infringement. She should then quote the whole of section 23(3) because the last part of the section is, effectively, her defence against the claim. Here's the relevant bit of section 23 (2)
The copyright in a work is infringed by a person who, without the licence of the copyright owner—
(a) possesses in the course of a business [...]
an article which is, and which he knows or has reason to believe is, an infringing copy of the work.
(with my added emphasis)
In section 23(2) the onus is on the claimant to show that the alleged secondary infringer knew or should have known that the disputed image was an infringing copy. Obviously your friend didn't know, and due to her trust in the web designer (who was the primary infringer), she had no reason to believe it was an infringing copy. I don't for one moment expect the claimant's solicitors to accept this proposition and drop the claim altogether, but there is a real possibility that if they pursue the matter to court, they might lose on that point. This should strengthen your friend's hand when it comes to reaching a settlement.

Because section 23(2) is so helpful in this instance, it would not help that much to also quote section 97(1) at this stage, although it would certainly be something which might come into play if the matter goes to court. The reason I say this is that 97(1) requires that the alleged infringer did not know that copyright existed in the work, or had reasonable grounds for believing it didn't. That is rather different from just not even thinking about the issue of copyright at all. Copyright is likely to exist in virtually all photographs which have been created in the last 60 or so years, so it is not reasonable to assume that it does exist without some very strong evidence to support that theory. Clearly there is a distinction between knowing or knowing that copyright exists, and knowing or not knowing that an image which has been supplied by a third party is an infringing copy.

I suspect that your friend will not have any sort of indemnity from the web designer as to the legality of the contents of the site he designed, but if there are any general terms of business (say, on his own website) which might imply a 'professional' service etc, then your friend should include this in support of her reliance that the web designer had acted ethically and legally in creating her site.

And finally I am quite sure that your friend is right and this is money making scheme. In view of the amounts involved I suspect that a part of the £3000 fee would go to some claims management agent (or indeed to the solicitors as a success fee), and the reason the amount is so large is to ensure everyone (apart from your friend) comes out of the deal with a tidy bit of cash for very little effort. In the USA, where this behaviour is considerably more prevalent, it is known as copyright trolling and is frowned upon in the courts there.

I an sorry that Citizens Advice were unhelpful. I had heard recently that they are moving away from cases of this sort, due I suppose to reduced finances, but this is regretable since it leaves people like your friend with few places to turn for affordably help.
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Re: Sued for copyright infringement

Post by Lali12 » Mon Feb 26, 2018 10:49 pm

Thanks for your detailed reply that is very helpful indeed!!

I will have a long read through it and take it from there. Also just a thought - if the picture had the agency watermark on there does this mean that the rights of the picture belong to the agency or can the Photohrapher still
Own the copyright even though the agency watermark is on the picture? Can they both have rights to it? I will be finding out the price of the picture had the designer have gone to the agency to source it but is that all the designer would have had to do.. contact the agency for the fee due and nothing in regards to the Photohrapher himself?

Given that the watermark never existed on the original image used and that no logo whatsoever was on there.. how would the designer have known to contact the agency? The only way we now know this is because the image that was attached to the letter before claim now had a watermark of the agency...

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Re: Sued for copyright infringement

Post by AndyJ » Tue Feb 27, 2018 8:20 am

Hi Lali

Yes the photographer could still own the copyright despite the image having an agency's watermark on it. The photographer is most likely to have licensed the agency to market the image on his behalf. So in other words the watermark serves the same function as an estate agent's board outside your house. It tells a prospective purchaser who to contact, but isn't claiming the estate agent is the owner of the house.

Before the watermark was there, copyright would still have existed, and the web designer should have known that he was responsible for getting clearance to use the image. There are various things he could have done to track down the copyright owner, including checking the meta data embedded in the digital file to see if there was a copyright notice or some other identification, or doing a global search on the internet (using something like TinEye or Google reverse image search) to try and locate the photographer's own website or that of an agency which represented him, and so on.

Had the web designer contacted the agency in the first place (let's assume they were acting for the photographer at the time) then the fee he would have paid at that time would have been split, probably 50/50, between the agency and the photographer, and that would have been all that was needed to gain authorisation to use the image. However now, since permission was not obtained, the web designer is liable for primary infringement which is a matter of strict liability, that is to say, his state of knowledge or belief about the existence of copyright has no bearing on his liability, unlike in the case of secondary infringement.

Your friend should seek to recover from her web designer whatever she is required to pay the photographer, although given that the designer is based outside the jurisdiction of the UK courts, I doubt that she will have much success, unless she has yet to pay him for the original work done on the site.
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Re: Sued for copyright infringement

Post by Lali12 » Tue Feb 27, 2018 9:42 pm

Thanks for the info that’s very helpful. I noticed you said that she should deny primary infringement and can say there may be grounds for secondary infringement (but not admit this).. but you also said she can counter offer the amount she would have had to pay the agency had the designer had gone to them. If she counter offers, doesn’t this automatically mean she is admitting liability at some level? So how could she deny both primary and secondary infringement? Would be grateful to get some clarity on this! Also I’m not sure how to go about contacting the agency for requesting the price of the picture, worried to mention the actual website (which they’ve asked for to get a quote) due to this case hanging over us and may cause more issues than present.. any thoughts? Thank you!!

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Re: Sued for copyright infringement

Post by AndyJ » Wed Feb 28, 2018 1:01 am

Hi lali,

Sorry I wasn't as clear as I might have been. Yes she should deny liability to secondary infringement on the grounds of having no knowledge that the image supplied by the web designer was an infringing copy. However I am reasonably sure the photographer's solicitor is unlikely to agree with her and drop the claim. Therefore the counter-offer is a fall back position to try and settle the matter. However if she wants to make a stand on the section 23(2) defence then she must be prepared for the possbility that the matter may go to court. That will be stressful and more expensive and there is no guarantee she will win. Settling can be done without admitting liability, just in order to end the matter.

And as for the issue of getting the fee the agency might charge, you should not actually contact the agency. Just go on their website and search for the image. Once you have found it there should be details of the fees alongside the listing of the image. There may be two rates quoted: rights managed and royalty free (RM and RF). You should select the RF rate if it is available. Royalty free means you pay a one-off fee for the type of use (website and lowish quality) and don't have to pay royalties based on the volume of traffic the site gets, or some other metric. Rights managed means that there will be the need to pay further royalties at a later stage. If for any reason you can't find the actual image, look for another one supplied by the same photographer and use the fee for that, or if that fails look at another very similar image to the one which was used. Clearly both these lattter options are not as satisfactory as finding the fee for the actual image, for the purpose of making a counte-offer.
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Re: Sued for copyright infringement

Post by Lali12 » Wed Feb 28, 2018 11:04 am

Thanks!! The agency site doesn’t list the pictures as other agencies do you have to contact them directly. They’ve said that they license images on behalf of photographers and so all their images are Rights Managed and not Royalty Free. They therefore need to charge higher fees for rights managed pictures but it’s a one off licensing fee with nothing after that. They’ve given me the price for the picture for the amount of time it was actually up on the website (around 6 months) and is £750. So would this be the counter offer if they reject the letter on the basis that she does not admit to either primary or secondary infringement and having no knowledge of the infringing copy?

Also as they’ve said all their images are rights managed- does this mean that the photographer shouldn’t have brought the claim as he assigned his rights to the agency and if anything the agency could have tried to claim? What does rights managed pictures mean in relation to the claim itself does it make any difference that none of the pictures that photographers provide to them are royalty free?

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Re: Sued for copyright infringement

Post by AndyJ » Wed Feb 28, 2018 3:16 pm

Hi lali,

From the way you spoke about the disputed image I had rather formed the impresion it wasn't particulrly significant or unique, and that "it was just used for decor and has no relevance to her business". Therefore I find the fee of £750 for 6 months use on a website quite high even if it is for a rights managed licence. However since I have no knowledge of the agency or indeed the photographer, it's hard to comment further than that. In any event I believe that the figure quoted should form the basis of any counter-offer, supposing that your friend wants to make such an offer. The counter-offer would also need to address the element for legal costs already incurred, although I do not suggest the full £1,000 should be the figure your friend chooses to offer.

Turning to your second point, 'rights managed' is merely a method of handling licences for images. It doesn't imply or require that the photographer has to assign his rights. By engaging the agency to act on his behalf, he gives them authority to negotiate or set fixed fees without necessarily referring each inquiry back to the photographer. I suspect that the decision not to issue royalty free images is a policy decison by the agency, and so you shouln't read anything into that aspect in particular.
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Re: Sued for copyright infringement

Post by Lali12 » Wed Feb 28, 2018 3:44 pm

Yes that is correct it was just for decor on her website. I asked the agency for the fee giving them a hypothetical scenario very similar to what her designer should have done in the first instance and this is the quote they came back to me with. I asked about a range of pictures including the one that’s the cause of this dispute and they gave me £750 for one picture or £1k for 2 pictures so I don’t think it’s to do with what picture you choose..i have no clue what a general fee for these kinds of pictures would cost but if you say it doesn’t really make a difference whether it’s rotalty free or not in terms of the price then maybe it’s just the way the agency prices pictures. The agency is caters news agency so it does a range of different things. I’m not sure how to begin a counter claim figure if I’m not 100% sure on the price of the pic had the designer had gone to the agency regarding my friends specific website.. it’s very stressful as she really doesn’t have the funds and I’ve been trying to help her as her English isn’t great.. I have some limited legal knowledge so she’s asked me to write it on her behalf if this is allowed although I am not a qualified lawyer..

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Re: Sued for copyright infringement

Post by AndyJ » Wed Feb 28, 2018 5:05 pm

Hi Lali,

I had heard that Caters can be quite expensive. I think this may be because they specialise in newsworthy images (like the famous monkey selfie, from a year ago).

As I mentioned previously I can't assist you with actual litigation so you will need to find the right form of words to make the counter-offer. However if it makes things simpler, why not break the process down into two stages. Deny all liability, relying on: a) your friend was merely in possession of the image (this doesn't need to be denied) in the course of business, b) since she had no knowledge nor any reason to have such knowledge, that the image was an infringing copy, she faces no liability under section 23(2). Then see what their response is. If I am right that they will not accept this and drop the claim, then your friend will need to make the decision about a counter-offer. Since the amount of the counter-offer may be in the vicinity of £1000 - £1,500 it then becomes necessary to balance that against the cost of employing a solicitor to fight the claim. At the very least it would be worth seeing if you can find a solicitor local to you who specialises in IP matters and who will be prepared to offer a free 10 or 20 minute consulation to evaluate your case. You can find a solicitor via the Law Society website. In the 'Your legal issue' box, scroll down to the Business section, then select Media, IT and IP, and then enter you location. It is important to consult a solicitor with a background in Intellectual Property law.

And finally you don't have to be legally qualified to assist your friend, although clearly getting proper representation is something I would advise if you feel out of your depth.
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Re: Sued for copyright infringement

Post by Lali12 » Wed Feb 28, 2018 6:44 pm

Yes thank you I will do that. I will be having a look on the law society website to see if anyone can assist further. I’ve just received an email from caters saying we wouldn’t be able to license direct from the photographer as they grant caters exclusive rights to manage the sale on their behalf and they then pay the photographers. Does this exclusivity and not being able to license from the Photohrapher himself still mean the Photohrapher has the right to bring the claim? Sorry to keep going back and forth on this I just want to be sure! Thanks again

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Re: Sued for copyright infringement

Post by AndyJ » Wed Feb 28, 2018 7:37 pm

Hi Lali,

Yes, if Caters are the photographer's exclusive agents that just means that the photographer can't do his own licensing deals in parallel to Caters. It doesn't affect his underlying right to bring claims. See section 96:
96 Infringement actionable by copyright owner.

(1) An infringement of copyright is actionable by the copyright owner.

(2) In an action for infringement of copyright all such relief by way of damages, injunctions, accounts or otherwise is available to the plaintiff as is available in respect of the infringement of any other property right.

(3) This section has effect subject to the following provisions of this Chapter.
The only time this would not be the case is if the licence agreement between the photographer and the agency specifically transferred this right to the agency.
Note also that section 101 would permit an exclusive licensee to bring a claim for infringement if they wished to:
101 Rights and remedies of exclusive licensee.

(1) An exclusive licensee has, except against the copyright owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

(2) His rights and remedies are concurrent with those of the copyright owner; and references in the relevant provisions of this Part to the copyright owner shall be construed accordingly.

(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner.
As you can see from sub section (2) this right exists alongside the copyright owner's right, not in place of it.
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Re: Sued for copyright infringement

Post by Lali12 » Thu Mar 01, 2018 10:29 am

OK yes understood. I have been having a look on citizens advice website about copyright infringement and found some helpful parts. In that, if it gets to the stage of counter offer - the way to calculate damages would be account for profits (there were none) or inquiry as to damages (the amount of profit the photographer lost due to the designer not sourcing it from the agency.) - In this case, if the agency has said the photo would cost 750 for 6 months, and from that they share profits with the photographer, I guess the amount he would have lost is his share of the profits if that is half the amount i.e. 375.. am I correct in this? Perhaps this could be a start of counter offer including legal fees. Could I write the letter on her behalf and sign it off from myself? Is this legal!

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