Ownership of goods created

[MrAgadem]

I have an infringement claim, but my problem regards subsequent possession of the items created.

More than 10 years ago I was commissioned to paint a public figure to illustrate a magazine article. They license short use for publication and I retain copyright. The subject, X, then rang up asking to buy the original artwork, which I agreed. During the conversation he asked if it could be used and I explained I was only selling the painting not the rights, that I could quote for usage if given details. Standard stuff. Upon receiving the artwork, X signed and returned a print of it to me.

In november/december a company produced material that includes X along with what is clearly a model of my illustration. I know but cannot document that 3 duplicates were made for filming and X took them all home after. My work has clearly been copied because everything that is unique to it has been replicated including the pose, costume, colouration and minor details. A professional body agreed this was an infringement. At the very least, if X didn't supply the image to create the sculptures, on the day of filming he was in a position to recognise my work, identify me as the creator and know I'd want a fee. I feel this might qualify as flagrancy.

After some google-fu I now have full email addresses of the legal dept and identified the two people most likely to deal with such matters. I'm able to make progress and from past experience such organisations settle infringement claims when presented with evidence without needing court action. I can clearly document the history I've just explained.

However, I feel the sculptures themselves need to also be addressed as they have a value. They are unique and unauthorised; I may not have consented to them being made in the first place. That X has obtained them for nought as a perk adds insult to injury.

Fundamentally; what's the best way I can deal with infringing items in terms of ownership, or simply recognising their value?
Is it possible that I can request by letter the three sculptures 'delivered up' to me? (without court action)
can I add a price to my claim for the value of the three sculptures? (equivalent items sell for £237 each, though arguably if they were to come up for sale, having been owned by X could add to their value)

The sculptor will also have created a mold, which in theory at least, enables future copies.

Any advice would be much appreciated.

[ATMOSBOB]

As infringing articles you can ask for them to be destroyed but I'm not sure about owning them to sell at a profit.

I had an infringement many years ago of printed material and went through the problem of having the infringing copies removed from the market. I also asked for the printing film to be delivered up to me. The printer had no hesitation in handing over all the material but it was of no value to me.

[MrAgadem]

Thank you, ATMOSBOB. For clarity; I'm enquiring about gaining possession myself purely to deny X the benefit of posessing them, given he turned a blind eye to the infringement. They are highly desireable to him as they depict his likeness. Worst case for me would be in the future if X were to sell them.

If I were to obtain the three I'd destroy two and keep one as a trophy.

I have been unable to identify the craftsman commissioned by the company to produce the items.

[AndyJ]

Hi Mr Agadem,

I'm not sure which work you are claiming has been infringed - the original painting now owned by X, or the version of which appeared in the magazine. Obviously you own copyright in both versions but you imply that X was the person who authorised the copying, whereas if this was done based on the magazine illustration, X may be blameless. The fact that he took the models home with him shows, at best, that he is relatively vain, but it doesn't establish that he authorised or condoned the infringement. I would not see that fact that he ought to have known that the models were based on your original work as flagrancy since the flagrancy would need to be with regard to the actions of the infringer, presumably the production company. They in turn may have believed they were acting in good faith, and nothing you have told us points to flagrancy on the part of the production company, although it would seem that they are liable for infringement contrary to section 17(3) of the Copyright Designs and Patents Act 1988. And since I assume that the use of the models was for a TV program which was subsequently broadcast, the company will also be liable for infringement contrary to section 20(2).

If you were to sue in the courts, one of the remedies which would be available to you is seizure of the infringing models, and this would not automatically be coupled to an order for their destruction, meaning that you could dispose of the models as you wished. Obviously since these remedies are available through the courts, they are also legitimate things for you to demand in an out-of-court settlement too. The value of the three models is irrelevant for the purposes of seizure or destruction, and barely relevant to the infringement, since their value on the open market is not why they were made or how they were exploited. The two most obvious ways of establishing the amount of damages is:

1. to calculate what you would have charged the production company if they had asked for permission to use your painting as the basis for the models. Presumably this figure would have been more than the fee you charged the magazine, or
2. The more complicated method would be based on the profits the production company made from the broadacst etc of their film. Clearly the damages would represent a proportion of the overall profit since the use of the models would have contributed to, but not been the sole cause of, the value of production

As you say, with luck the production company will be keen to settle without the need to go to court, but they of course are unable to bring about the surrender of the models, which they gave to X. For that, you may need to get a court order, which should be relatively straightforward once you have got the production company to accept liability for the infringement.

[MrAgadem]

Thanks for your insightful reply Andy.

Yes, fundamentally I seek the fee I should have received for the broadcast, which is simple to establish as I've done similar work before. Obtaining the models would merely be a 'best case' on top. Always aim high!

Both original and illustration are 100% identical; I gave the history purely as it established I own copyright and it previously existed. As my image is extremely difficult to find I doubt the third party they commissioned to sculpt it made use of it independently. I think X having the original on his wall offers much more probable access, and it's no coincidence he ended up with the models. However I appreciate irritation isn't a basis for action, and that the facts of my claim are against the company.

May as well try asking for surrender of the models as I have little to lose.. I'll let you know how it ends up. Thank you once again.

[MrAgadem]

May I ask; are you at all entitled to disclosure from the infringer of how they used the material?

I ask because last time I had to deal with infringement, their response included a full a list of where they'd published it and how my work came to be used. It was about 14x the exposure I'd first been aware of. With my present case I've realised the material I saw would also have been shown on three other outlets automatically.

Was I possibly spoilt last time by them sharing that, or could I expect it again? Even request it?

To my eyes the company legally responsible for the infringement hasn't anything to lose from spilling the beans, if use of a work is unquestionable.

[AndyJ]

Hi Mr Agadem,

Yes you can certainly ask for disclosure of all the uses which have been made of the copies. However without a direction or order from the court, which would normally be given following a case management conference or directions hearing, the defendant isn't forced to comply with your request. That said, a failure to comply with your request, assuming that they don't deny any infringement, might subsequently be interpreted as bad faith on their part and possibly be seen as an attempt to evade full liability for all the acts of infringement which may have occurred.

[MrAgadem]

Thanks again Andy; interesting. I'm told they're looking into it so await their response.

[MrAgadem]

I've had my reply. As this is publicly accessible I'll just say that they agreed to the sum requested and the return of goods without question. Couldn't fault their response at all.

Thanks very much for your help. A lot of interesting points on the topics here, from both sides of a problem.

[AndyJ]

Hi Mr Agadem,

I'm very pleased this has gone so well for you.