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Copyright infringement claim from German lawyer

Posted: Sat Oct 16, 2021 8:14 pm
by TTT
Hi, I have just received a Copyright Infringement Notice from a German lawyer representing Photoclaim and a photographer. There is an image on my (small) business website that is apparently copyrighted to his client and they appear to be setting me up for a damages/legal costs claim and threatening court action. They included a declaration to cease and desist form and have asked me to sign and return it within 7 days.

This image was uploaded onto my site by the website developer and I was told that all the images have licences or did not need licences. But now it seems, not this image. Evidently, I was completely unaware of this infringement until receiving the letter. The developer has now removed the image from the website.

The image is a 'filler' at the top of a sub-page of the website - it adds to the general 'feel' of the website but I do not think it could be argued that it helps my sales (these are by personal recommendation - the website is purely for information about the scope of my services).

The image is widely available on the internet for free download as a wallpaper and these, and the image on my website, have no watermark. In contrast, the image supplied by the lawyer as evidence of copyright has a watermark. There are several similarly themed images (with licences) on my website from Shutterstock and they cost £7 each with standard licences. There are also many other images on Shutterstock at the same price which are very similar to the image on my website. I have looked on the photographer's website and image licence prices are not given but are available on request.

This is pretty stressful and I am really looking for advice from anyone as to how to proceed. Thank you in advance for your help.

Re: Copyright infringement claim from German lawyer

Posted: Sun Oct 17, 2021 8:29 am
by AndyJ
Hi TTT,

We hear about this kind of claim quite often on the forums here. You don't mention how much is being claimed from you, but I expect it is a large amount in comparison to the true value of the image. I suggest you read through one or two of the other threads which detail much the same experience. PicRights Solicitor Letter Demanding Fee For Alleged Image Use, Picrights Letter for Infringement and Kodakone asking payment for copyright infrigement for example.

This should give you an idea of how to handle this claim. From your posting it sounds as though you have probably done the research we usually suggest to find if the image is being officially offered for a reasonable fee. Unfortunately the fact that the image is available for free as wallpaper without any watermark is not necessarily indicative that the photographer has authorised that use, but it is certainly relevant, and may indicate a form of honeypot entrapment in which an image is deliberately made available in this way in order to extract fees from unwitting users later. The fact that the image is still available 'for free' on that site suggests that the photographer and his lawyer have been less than thorough in getting it removed, even though it is clearly more damaging to them than your use.

These are money making operations and if the prospect of getting the full amount from you begins to look unlikely these people often don't proceed, so I advise you to be robust in your dealings with them, by offering to settle for a reasonable market rate and no more than that. Being based in Germany means that they face a number of disadvantages in trying to successfully bring a claim against you in court, as I discuss in this thread which also includes counter-arguments from regular contributor AtmosBob who I believe is a working photographer and someone called stc74 who has only ever posted once here.

Re: Copyright infringement claim from German lawyer

Posted: Sun Oct 17, 2021 11:28 am
by TTT
Thank you very much for taking the time to reply to my request, AndyJ. He has asked me to remove the image from the website and my computer which I can comply with. On other forums the advice is not to sign his form and return it because it opens up other legal possibilities to him so I plan not to do that. He has also asked me to confirm who uploaded the image if it was not me. Does this mean the website developer is the responsible party in this case, or does the buck stop with me?

I do not know how much the claim is yet. It appears that his normal mode of operation is to follow up with the legal costs/damages claim after he receives an initial response. I really appreciate you advice on how to handle things after that and I'll read through the threads you suggested. Thank you, again.

Re: Copyright infringement claim from German lawyer

Posted: Mon Oct 18, 2021 8:19 am
by AndyJ
Hi TTT,

Yes I would agree with the advice not to sign any forms, as this could amount to an admission of liability.

And as for the matter of the web developer, he is probable directly liable since he was the person responsible for sourcing and taking the image and for telling you that all the images were licensed or did not need licences. Practically speaking it is highly unlikely that any image 'would not need a licence' since all modern day images are covered by copyright and even though they may appear to have been abandoned, in fact in every case the copyright owner must provide a licence, albeit a broad one such as Creative Commons licence, in order to absolve a user from infringing the underlying copyright. In circumstances such as those you describe, a limited defence may sometimes exist under section 97 of the Copyright Designs and Patents Act 1988, which says that if a defendant did not know, and had no reason to believe, that copyright subsisted in the disputed work, then he would not be liable for damages, only other remedies such as forfeit of the goods involved etc. However I don't think that section 97 can be applied here because if the web developer made a statement to you to the effect that all the images were obtained and were being used in accordance with their licences, then that implies that you did have knowledge that copyright subsisted in those images.

It has been found in at least one UK court case* that you as the commissioner of the website could also be liable, since copyright is a matter of strict liability, but in that case there was considerable doubt about the actual involvement of the main defendant (that is, the person responsible for commissioning and running the website) and whether he exercised due diligence. I do not think this case sets a strong precedent. Furthermore, there is no suggestion that vicarious liability applies because the business relationship between you and the developer was clearly one of customer and supplier, and not employer and employee.

Certainly it would be open to you to take legal action against the developer to recover any loss or damages you incurred as a result of your dealings with the photographer.


* See papragraphs 25 - 35 of Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd & Anor [2015].

Re: Copyright infringement claim from German lawyer

Posted: Mon Oct 18, 2021 11:37 am
by TTT
Thank you again for your comprehensive and useful reply, AndyJ. I intend to send this e-mail to them:
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Thank you for your e-mail. We were not aware that the image you refer to was subject to copyright and our website developer has removed this from our website. We do not have any other access to this image, and nor have we ever had any other access to this image.

This image was uploaded to our website by our website developer, XXXXXX, and our understanding from them was that the image, together with similar images on the site, had XXXXXX licences.

The image has been on our site since April 2016 and only on the sub-page you refer to.

Before we can consider this further, would you please provide (a) proof of copyright ownership, (b) proof that you are who you claim to be, (c) the legal costs and damages you are proposing, and (d) a justification for these.

Please note that this is not acceptance of any liability on our part.
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Is this a reasonable (and safe) response for now? The image first appears on the web archive of our site in April 2016. Thank you again for your help.

Re: Copyright infringement claim from German lawyer

Posted: Mon Oct 18, 2021 2:11 pm
by AndyJ
Hi TTT,

For the reason I gave in my previous reply I don't think you should say you were unaware that the image was subject to copyright. If you thought that a valid licence had been obtained by the developer, then clearly there had to a copyright underlying this licence. Your second paragraph correctly summarises your understanding that this was a lawful use of the image, based on warranties given to you by the developer.

I would probably not include a reference to legal costs. Assuming that there has been genuine infringement, the photographer would be entitled to damages equal to his actual loss (ie the standard licence fee which would have been payable had one been obtained from the start), plus a small amount to cover his reasonable administrative expenses. That is not the same as his legal costs, which may exceed the amount of damages several times over. A reasonable amount is usually set at around 5 - 10% of the amount of damages. Therefore you should not indicate that you intend to entertain the idea of all his legal expenses. If the matter was eventually dealt with in the UK courts, the photographer would not be entitled to claim back his legal costs if his claim succeeded.

Re: Copyright infringement claim from German lawyer

Posted: Mon Oct 18, 2021 3:35 pm
by TTT
Thank you, AndyJ. Very, very helpful again and very much appreciated. I'll get in touch with him and wait for his reply......

Re: Copyright infringement claim from German lawyer

Posted: Thu Nov 04, 2021 12:16 pm
by TTT
Hi AndyJ, I have just received a reply from the lawyer and he is claiming (euros): 3575 damages (2740 licence + 835 interest), 95 documentation, 780 legal fees (4450 total). For the damages he is using German MFM-tables (100% added for lack of attribution) although the photographer does not advertise his fees on his website (you need to contact him for a quote). He is giving me a week to pay. I would be very grateful for any advice/thoughts you may be able to share with respect to how I should handle this going forward. Thank you again for your help.

Re: Copyright infringement claim from German lawyer

Posted: Fri Nov 05, 2021 7:36 am
by AndyJ
Hi TTT,

Unfortunately, I can't advise you on how to conduct your negotiations in detail as that would amount to giving you legal advice which is only something your own solicitor can do. However, it is fair to say that much, if not all, of what is being demanded is totally disproportionate to the actual alleged infringement. In a civil case such as this, the photographer is only entitled to be reimbursed for the actual fee he would have charged, plus some reasonable administrative expenses (say an additional 5 - 10%).

Since it sounds as if the claim is being based on the German system, you need to weigh up the gamble of simply refusing to go any further with this. To do that you really need to get your own legal advice. You can find a solicitor local to you who specialises in intellectual property law by using the Law Society's Find a Solicitor website. Just scroll down in the 'Your legal Issue' box and select the 'Business - Media, IT and Intellectual Property' option, then enter your location and search. You should then be presented with a number of relatively local firms who have at least one member of staff who deals with IP matters. Your should be able to arrange a short, free consultation over the phone in which you can explain your issue and get an idea of the cost of instructing the solicitor to deal with the matter on your behalf. As you have a small business, I don't think Citizen's Advice will be able to help you. However if you are a member of a trade body or professional association, they may also be a source of legal advice. Check your public liability insurance to see if that covers you for claims of this type.

I hope this helps.

Re: Copyright infringement claim from German lawyer

Posted: Fri Nov 05, 2021 12:03 pm
by AndyJ
Hi again TTT,

Just to add to my previous comments, if you decide not to consult a solicitor and want to take things forward on your own, bear in mind what I said in an earlier posting about the difficulty faced by a German litigant in bringing this matter to court. If he decides to use the UK court system that poses logistical and possibly language problems. In theory he could launch the case here without legal representation, but in all probability he would need to engage a UK based solicitor. The UK's IPEC small claims court does not award legal costs to the winning party, and so since his legal costs from bringing a claim in the UK would undoubtedly exceed even the amount of damages currently being claimed, this is not economically sensible. It becomes even less sensible when he realises that a UK court will not entertain anything like that amount as being fair in the circumstances. If he brings a claim in the German courts, then while he is more certain of winning, he faces an uphill battle in getting any judgment enforced against you here in the UK. Now that we have left the EU, the old cross-border processes* (known as Brussels I and the Lugano Convention) for enforcing civil judgments no longer apply to the UK.

Both of these situations are less favourable to the claimant and so it makes sense for him and his legal team to negotiate a fair settlement which avoids having to go to court.

* There is a third treaty known as Rome II which is also relevant here. This treaty concerns the selection of the appropriate jurisdiction in non-contractual civil disputes, rather than the enforcement of judgments, but it becomes relevant if it is necessary for you to argue that the German court is not an appropriate forum to decide this issue in view of Article 8(2) of the EU Regulation linked to above.

Re: Copyright infringement claim from German lawyer

Posted: Mon Nov 08, 2021 12:33 pm
by TTT
Hi AndyJ,
Thank you very much once again for your sound advice. Just to follow up on your last post, if this claim did go through the German courts, and he managed to lodge the outcome of the claim in the UK, what is the process after that? For example, would the UK courts just pass the result of the German case to my company as a debt that is being claimed? If that were to happen and then the debt cannot be paid, would the UK court then automatically seek insolvency/liquidation on his behalf or would this be something that the German Lawyer would also have to do? Very grateful for all the useful information you are providing, AndyJ, thank you.