PicRights Express newspaper logo

[RedFoxMonster]

Hi,

I've been reading through all the advice on PicRights, thank you. However, I'm still a little unsure how best to handle them.

I bought a small business in September last year. Their website includes a press page, in which they had an image of a cutting of an article that the Express had written about the company and the Express logo also appeared alongside the image of the cutting. Today I received an email from the dreaded PicRights. I haven't dared click the link and enter the password to see how much money they are asking for. If I do this, presumably they will know that I received the email.

So my question is, is it best to ignore the email and hope for the best or do I need to click the link, face the music and try to draft a repsonse – if so, what is the best approach to take on this please?

Thanks so much for any advice you can give!
Jenny

[AndyJ]

Hi Jenny and welcome to the forum,

Since this concerns a business website I would not ignore the email. It won't be difficult for PicRights to find your business's address and so continue to pester you that way. Also, by ignoring this or any subsequent emails you run the risk of not getting notified if they decide to issue a court claim and that could lead to default judgement against you.

You don't mention if the Daily Express article contained a photograph, but if it did I imagine that this will be the reason that PicRights have come calling. Just the Express logo on its own would not usually be grounds for copyright claim when it is used in conjunction with an article.
In any event it is highly likely that you are covered by the quotation exception contained in section 30 of the Copyright Designs and Patents Act. A second line of defence would be that you inherited the website when you acquired the company and thus it would be reasonable for you to have assumed that the previous owners had taken the necessary steps to obtain any licence which might be required.

In other words I do not think you have much to worry about.

[RedFoxMonster]

Hi Andy,

Thanks so much for your speedy and reassuring reply. I will contact them and try to argue my case.

They specifically said it was the logo that they had a problem with. There was a photo included within the news clipping, but I'm almost certain that it was one belonging to the company, and they didn't mention the photo in their email, just the logo.

Below is the email I received from them along with an image of the offending web page and the Express logo. I logged in to their system and discovered they want me to pay £1000!

As an introduction, PicRights provides copyright compliance services to third-party content owners, including Mirrorpix. For further information, please visit https://mirrorpix.com/picrights.
We are acting on behalf of Mirrorpix to obtain compensation for the unauthorised past-usage of their logo.

PicRights has noticed that Mirrorpix's logo has been displayed on your website <redacted for this public forum>. However, Mirrorpix has been unable to find a licence for this usage of their logo by your organisation.

At the end of this message, we’ve attached a visual reference of the logo and its use on your website, social media or in media accessible from your website.

Our goal in contacting you is to ascertain that you hold an active licence for this use with Mirrorpix or with any other entity authorised by Mirrorpix to licence and distribute the logo:

If you do have an active licence for the use of this logo, we kindly ask you to send us your valid licence / authorisation, by visiting <redacted for this forum> and clicking the "I have a licence..." link; or

If you do not have an active licence for the use of this logo, we request that you remove the logo from your website, social media or in media accessible from your website.

Please be aware that removal of the logo alone will not resolve this issue. A payment in relation to the unauthorised past-usage is required to resolve the matter completely. You will find further information about this matter by visiting <redacted>
We would like to resolve this time-sensitive issue as soon as possible and request that you respond within 14 days from the date of this correspondence.

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I am thinking of sending this as my response...

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Dear ____,

Regarding case XYZ, this claim is without merit. The use of the logo is covered by the quotation exception contained in section 30 of the Copyright Designs and Patents Act. At best it would be seen by a court as de minimis as it is recognised standard practice to use newspaper logos as identifiers in this way, and since the amount being claimed is completely disproportionate and oppressive, it borders on something which falls within section 21 of the Theft Act 1968.

The logo has now been removed from the website regardless.

As a consequence, I do not intend to have any further dealings with you.

Jenny

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Hopefully it will do the trick! I'll report back here if I receive any response from them to help inform any other people who are targeted with these kinds of unpleasant demands.

Thanks so much for all your help

[RedFoxMonster]

This is the email I have received back from PicRights in response:

Thank you for your email,
The fee requested is set by our clients for the detection of their work without authorisation (infringement).

Regarding your comment “The logo has now been removed from the website regardless.

As a consequence, I do not intend to have any further dealings with you.”

While we appreciate the removal of the infringing content from your website, this matter is not resolved. Our client requires the payment for the past unauthorised use of their content. It would not be fair to Mirrorpix clients who pay for the use of their work if they allowed you to use their work without paying any fees.

As you have chosen not to accept our offer, the possibilities of my team to settle this matter has been exhausted and this matter will be escalated to our outside legal department. The offer has now been rescinded and you will be held liable for any possible additional fees incurred.

I'm very much hoping their legal department will not take any further action

[AndyJ]

Well I hope so too. That last line about "you will be held liable for any possible additional fees incurred" is pure fiction. If the matter went to court, which of course it won't because, as you have mentioned, it is de minimis, then the court would only award damages equal to the amount lost by the claimant due to not selling a licence. Their legal costs incurred either prior to trial or for the court proceedings themselves are not awarded against a defendant in the Intellectual Property Enterprise Court small claims track which deals with claims valued under £10,000.

But for all the reasons I mentioned earlier, they will know that this claim has virtually no chance of succeeding and so their (possibly notional) legal department should advise them accordingly.

[AndyJ]

Jenny,

I spent a little more time thinking about this issue last night. I am working on the assumption that this claim is based solely on the use of the Daily Express masthead which probably looks something like this*:
The actual words 'Daily' and 'Express' have no copyright protection. There is no creativity attached to them, and in any case since the title was created in 1900 any copyright that might once have existed is now gone. There is no specific protection in the font (see sections 54 and 55 of the Copyright Designs and Patents Act 1988). So that just leaves the Crusader logo.

This logo first appeared in around 1930, albeit that the words Daily Express were in a different font at that time. At the time of its introduction the logo possibly met the criteria to be treated as an artistic work and so copyright would have existed for the life time of the artist plus 70 years. Let's assume that the artist was about 30 years old when the he created the logo and he lived to the age of 70. That takes us to 2040, so the logo may well still be protected by copyright at present. I think it is fair to assume that Reach plc (the owners of the Express and Mirrorpix) are the successors in title to any copyright. But we then need to look at the fair dealing exceptions. The main two concerned here are both contained within section 30 CDPA, namely the reporting of current events (section 30(2) and (3)) and the exception for the purpose of quotation (section 30(1ZA)). The former exception has a very long history and arises from the practice of newspapers republishing news reports which appeared in other newspapers. Today this is frequently done, not just by other nespapers, by reproducing the article in facsimile as is the case on your website. Provided this was proportionate to the need to reproduce the information in the cutting, and the source was cited (which it of course was) then this would probably come well within the fair dealing ambit. The quotation exception requires similar consideration about proportionality and the need for the source to be cited, but is wider in the scope of what may be quoted.. So the use of the logo as part of the masthead, which in turn performs the function of crediting the source of the article, is entirely justifiable. And lastly, under the copyright heading, there is the fact that the whole issue is probably de minimis.

The final comment concerns trade marks. Although I do not understand this to have been raised by PicRights, it is worth just touching on it here. Reach plc (technically their subsidiary Express Newspapers) owns registered trade marks for the words Daily Express, and two versions of the Crusader logo (here and here). All three marks are only registered in Class 16 (Newspapers). However there can be no viable claim for trade mark infringement since, firstly your site was using the marks in connection with the genuine goods of the trade mark owner (ie the article) (see section 12 of the Trade Marks Act 1994) and in any case your use was not in the course of trade in selling newspapers or related products (section 10(2) TMA 1994). Furthermore if PicRights or anyone else associated with Mirrorpix etc made any unjustified threat of taking action over trade mark infringment, they could be liable to be sued per sections 21 - 21F).

*Incidentally, I am able legally to show the masthead image here because I have not copied the image, but instead I have linked to Wikimedia Commons where the image is freely, and I believe, legally made available. This means that my link is covered by the caselaw of the Court of Justice of the European Union in Svensson and GS Media.

[RedFoxMonster]

Wow, thanks so much for your in-depth research and reply Andy. Yes, it was similar to the logo you reference, however it's just the Express logo, without the DAILY word – i.e. the image of the crusader with the word EXPRESS. It appeared underneath the article cutting on our website so hopefully that's fair use by the sounds of what you're saying.

Maybe I should write to Trading Standards or someone to lodge a complaint against PicRights and try to stop them from unfairly trying to extract money from others in this way. I can understand the need to protect genuine copyright of images but this seems like extortion rather than a genuine copyright infringement issue. Their scare tactics are horrible and I imagine they are probably causing a lot of people a lot of stress.

[AndyJ]

Hi Jenny,

I doubt if Trading Standards will want to get involved. They tend to concentrate on the criminal infringement of copyright and leave the civil claims to the courts to resolve. The point being that, distasteful though PicRights's activities are they are not actually doing anything illegal.
They come from much the same cesspit as the 'Have you had an accident which wasn't your fault?' claims companies who then take the lion's share of any payout which a claimant is awarded.

Just as an aside, I would suggest not using the term Fair Use in this context. That is the name of the American doctrine which although it covers many of the same exceptions as the UK doctrine of Fair Dealing, when it comes to assessing Fair Use, the US courts use an utterly different set of factors to be considered. In general the Fair Use Doctrine, as interpreted by the US courts, tends to be more permissive than the UK system.