Recently we received a rather worrying email from a solicior based in Germany who is working on behalf of a fairly well known photo copyright infringement claim website. They are claiming that we have used an image on our website from their client without prior permission and by doing so are violating the exclusive rights of use of their client. They are citing German copyright law.
The image was actually supplied by a third party advertiser who apparently used a search engine to find and download the image in question, under the impression that it was copyright free and available to use.
In total they are claiming for around 4,000 euros, and want the payment asap. They claim the image is worth nearly 1500 euros and because there was a lack of indication of source this results in another cost of 1500 euros. When you add solicitor fees the total comes in at around 4,000 euros, which to me sounds very high and not justified whatsoever. I would happily pay a fair price to make the problem go away.
We have removed the image but how should I play this from here?
I personally think the photographer in question (who actually owns the photo copyright claim website after some research) simply prices his work super high, releases it on to the web and then hopes someone falls into their trap.
We are based in the UK, so how would this play out if it went to court? Would they have to come over her to persue the claim?
Any help would be much appreciated.
We have covered similar issues to this one a number of times. The most recent 2 examples being here and here.
Coming to the specifics of the claim letter you have received, the fact that this is from a German lawyer doesn't really make a lot of difference, as the claim could be dealt with in the courts here in the UK or in Germany under current EU rules* (known as the European Small Claims Procedure). However this Regulation will cease to have effect in the UK after 31 December 2020.
There is one significant difference between German copyright law and that which applies here in the UK and that concerns the attribution issue for which you are being charged an extra €1,500. Unless the original image bore a credit on the site where it was found then a lack of a credit when it was transferred to your site would not be an infringement of the attribution right. This is because under UK law the moral right to be credited as the author of a work needs to be asserted beforehand (see section 78 of the Copyright Designs and Patents Act 1988). Just a notice saying something like "© 2019" or some general statement in the terms and conditions of the other site are insufficient to constitute an assertion by the photographer. I'm guessing that as the person who found this image assumed that it wasn't subject to copyright, there wasn't a credit on it originally.
That still leaves the matter of the remaining €2,500. This is totally disproportionate unless the image has some very special characteristics such that a newspaper might pay that sort of money for an exclusive licence. Unless the image was actually hosted on the advertiser's own website (see the first link above where this is discussed in more detail) or was served to your site by something like Google AdSense, then it is likely that you are vicariously liable for what appears there. However that still means the advertiser is basically liable for the infringement and you could seek to recover any damages from him.
You also have a slight advantage in that if the German lawyers and their client want (ultimately) to use the British courts to sue for damages, then it will be expensive for them due to the logistics involved and the fact they would probably need to sub-contract to a UK legal firm, and since under the UK's small claims procedure (claims under £10,000) legal costs cannot be recovered, they would effectively not gain anything after paying their own legal costs. Alternatively if they sue you in the German court system, they then face the extra cost of getting that judgment enforced by the UK courts. This is time consuming, costly, and if, as is likely, it all happens after we have left the EU, it is not at all certain that the current reciprocal arrangements will still be in operation.
I suggest you try and find a similar image on a UK photo stock site and using their fee structure, calculate what you would have been charged for the duration that the image was on your site, and make that the basis of your counter-offer. Add a small (say 10%) uplift to cover their administrative costs and see what happens. It would do no harm to explain the difficulties they face in trying to bring the matter to court, either here or in Germany, and why the €1,500 for the missing credit would only apply if the matter was dealt with under German law (assuming there was no credit visually embedded in the image).
The minute you feel things are getting more serious, I strongly advise you to contact the IP Pro Bono Unit. I feel relatively sure that they would be interested in taking on the case as it involves a cross-border dispute.
I hope this gives you something to work on. Good luck.
* For a number of reasons, not least that it is outside the scope of this forum, and would expand the length of this reply threefold, I do not intend to go into the details of the European Small Claims Procedure here. However one important thing to note is that as you are not in any form of contractual relationship with the photographer and/or the claims management company, the ESCP could not be used in your case unless you admit liability, so don't do so when making you counter-offer.
I have basically replied saying that I need some time to examine how the third party advertiser sourced the image in question before I can send a detailed reply. They have come back saying they need an answer in just over a week, so this has bought me a little more time. At no time have I accepted any fault but have stressed how serious we will take this.
Looking at your major points.
This is a good question.
On the photographer's website where they market the image, I can't see any exact credit line on that actual page.
If you download the image, however, and then click on properties/details, the name of the photographer does appear under the authors bit. It just displays their name, nothing more. Also, if you view the image on the search engine: it does say Creator: Name of photographer and then Information extracted from IPTC Photo Metadata.
You can find a very similar image on a stock photography website such as Alamy.com for no more than £50, which makes me question why the photographer in question is charging 1400 euros for a 6 month license to use their image. They do try and market their image as exclusive use: "Licenses with exclusivity to one industry for any kind of use of the Licensed Material on the Internet are priced as follows." So they are def trying to justify this hefty price tag by doing this as they want to look like they operate differently from a stock image website I'm gussing. I suppose it gives them license to try and claim for more money in a case like this, quite clever really.
If you actually Google the image in question, you can also see a number of other websites displaying the image as well, without a credit in most cases as well. Of course they might not have the permission to do this but I thought it might help my case a little.
When I finally go back to them with a detailed reply I will certainly make it crystal clear the difficulties they face in trying to bring the matter to court, either here or in Germany.
They are no tyrying to charge VAT as well.
Before going on to look at your specific points, can I just get some clarification about how the image appeared on your site? Firstly, is/was the image actually hosted on your server, or did it get called from a third party server via a hyperlink? If it was the latter then the issue stops dead there as there is no infringement under EU law due to two decisions of the Court of Justice of the European Union (CJEU) known as Svensson and GS Media. I dealt with this in more detail in another thread just over a week ago*.
So assuming that the image was actually stored on your server, how did it get there? Does the advertiser have unmoderated access to your site which allows them to directly upload their own material in much the same way as a user can upload pictures to a Facebook or Instagram account? If so then you probably qualify for so-called 'safe harbor' status under the EU's ECommerce Directive (Articles 14-15), meaning that you are not liable for any infringing content uploaded by someone else and which you were not previously aware was infringing, and you removed the material expeditiously once you were informed.
Or the worst case scenario: the advertiser provided the material including the disputed image (say, via an email or on a memory stick) and you or one of your staff put it on the server. If this roughly describes the process, then as I mentioned before you would almost certainly bear vicarious liability even though you did not know the image was infringing.
So turning to your new points.
Attribution. If the image as it appeared on your website had the same embedded metadata showing the photographer's name, then you cannot be said to have denied him a credit as that is exactly how the image appears on his own site. However if the metadata has been wiped, it would be helpful if you find out by whom this was done, since they then bear responsibility for the moral rights infringement, albeit you may also be vicariously liable for making the image available to the public in this uncredited state. Bear in mind that under UK law this is unlikely to be an issue at all because here the author needs to assert his/her right to a credit, and using metadata which is not visible when viewing the image in the normal way does not meet this criterion. As section 78 makes clear the assertion process is primarily based on a quasi-contractual relationship between the author and any licensee, and anyone who is unaware of this by virtue of being outside the relationship is not liable for infringement of the so-called paternity right - the key words are 'so as to bind him in relation to that act' at the end of sub-paragraph (1).
Exclusivity. The photographer is entitled to charge whatever fee he likes for his work. In theory the market then decides whether it is worth the amount being asked. However in this case the fee appears to be based on the licensee obtaining an exclusive licence within a particular industry (in my view this is not what exclusivity means in relation to normal photography licensing practice), yet you say the image appears (whether legally or not) on several other sites. If these other sites do have licences and operate in a similar business sector to each other then clearly the blurb on the photographer's site is nonsense, and the higher than average fee is unjustified.
* when you read the other thread, you will note that with reference to the GS Media decision a commercial website may not benefit from immunity if it makes a financial gain from providing a link to infringing material. However as you describe it, the only person benefitting from the use of the image is the advertiser and, I suggest, it is far too big a leap to say that because you may be paid by the advertiser you therefore directly benefit from the link. Clearly the advertiser would pay you the same amount whatever image he provided. Given that a number of academics and others have questioned the correctness of the CJEU's decision in GS Media and how it should be implemented in future cases, I suggest it is less rather than more likely that such a decision would automatically go against you.
How the image appeared on your site
Yes the advertiser bascially provided all the material including the disputed image via email and we then uploaded it to our website etc. We believe the third party advertiser downloaded the image from a popular search engine, but were under the impression that it was free to use. I'm assuming we should never admit error/delibrate fault here and continue to say we thought it was freely available at the time of downloading.
Yes I believe the image appeared on our website with exactly the same embedded metadata showing the photographer's name. It was never actively removed and looking at the original image that was supplied by the advertiser it def mentions the name of the photogrpaher in the properties/details/author bit.
Also, when I searched for the image in question that had been indexed by the actual search engine, it also clearly said the name of the photographer. Creator: Name of photographer and then Information extracted from IPTC Photo Metadata.
Yes in my view it's priced high so they can ask for a high amount of money in the event of a claim, but as you say are free to charge what they want and let the market decide.
Let us know how you get on.
I'm assuming we should never admit error/delibrate fault here and continue to say we thought it was freely available at the time of downloading?
I will def keep you posted on my progress.
Again, I just want to say a big thanks for your help.
Yes, nothing to be gained by making an admission, and possibly a lot to lose, so just bypass the issue and talk in terms of wanting to resolve matters in a pragmatic way.
I am about to reply to the solicitor, and have a quick question.
Should I actually state where/how the third party advertiser sourced the image or not mention this?
I can't see any harm in naming the site, especially if it gives the impression that the image is being made available under a free-to-use licence such as Creative Commons. That would certainly support your narrative but, sadly, I'm not sure it will make a lot of difference: these people seem to be out to make money.
I have finally had a reply from their solictor (nearly six weeks after my response). Is there a way to send you this privately by any chance?
But in short, they are saying that UK law is not applicable in this case, that there is no doubt that this case would be accepted by a German court and decided on basis of German law, adding that EU law and German law is very clear when it comes to questions about the jurisdiction and governing law in the case of copyright infringements. It then goes on with lots of technical jargon that I don't really understand.
They have rejected my counter offer but have now lowered there claim to under 3000 euros, stating it's in the interest of an out of court settlement and only to avoid a time-consuming and costly legal dispute.
They end by saying: If you are willing to accept this I expect the payment and the signed cease and desist declaration until 08.10.2020.
Any help would of course be much appreciated.
As things are made more complicated by their assertion that this case falls under the jurisdiction of the German courts, and I have no real-world experience of the day to day workings of the German legal system, I think you should now seek your own professional legal advice. Again, I highly recommend the IP Pro Bono Unit (especially as if they accept your case, their services are free) or you should be able to get a 30 minute initial free consultation with a solicitor who specialises in Intellectual Property issues. Whatever the German lawyers may say, EU law still provides a lot of protection for internet service providers (which I would say applies to you in this case) and so it is not a foregone conclusion that the German courts would find you liable, but in order to argue that, you would need to be represented in the German court which would involve extra expense. On the plus side, if they do go to court it is unlikely the case would be heard before 31 December 2020 after which it would be considerably more difficult for them to enforce any judgment against you as we in the UK would no longer be subject to the European Small Claims Procedure.
I'm sorry I can't offer more tailored advice but I am forbidden by UK law from providing the sort of detailed advice on which you conduct litigation, as I am not your solicitor. This is a so-called protected legal service and is there as much for your protection as it is to maintain the monopoly of the legal services!
Previously you said: "Alternatively if they sue you in the German court system, they then face the extra cost of getting that judgment enforced by the UK courts."
I'm assuming this is still the case?