Copyright breach - small claims court?

[Coppock]

Hi everyone, got a quick question.
It looks like I have to take someone to court over breach of copyright (they used several designs without permission). I have the evidence and have written to her requesting compensation for the breach.

However the first letter was sent royal mail signed for - and still hasn't arrived! We sent another one special delivery, and she has to go and collect it...

The only address I have is for the limited companies office, and the phone number isn't working...

I think she's hard up because she owes money elsewhere that I know about, and they're finding her elusive as well.

It looks like it's going to go to the small claims court, my question is - am I best taking her or the company to court? All correspondence has been to her business email address, but the breach was made in a sideline project of hers? I'm guessing she'd have been putting the expenses through her books anyhow...

I'm guessing she will have some indemnity insurance on the business, but I doubt it has many assets? And I doubt the insurance would cover her for stealing artwork...

Any ideas?

Thanks everyone
Jen

 

[paulears]

If she's this dodgy, then I'd doubt she'd have insurance anyway! As you say, I expect they'd not pay up anyway if she's acted illegally anyway.

If you are having problems contacting them, then luckily so will any of her customers. The usual rule is that there is no point wasting legal action on people with no money. Best of luck, but as forgetting compensation? I suspect this will be difficult. You cannot get compensation without substantiating some kind of loss - proving this is very difficult. Let's say she used one of your designs to get work. You'd have to establish the value of the work gained as a direct result of your design, and if there were elements that were not yours, then you'd be faced with determining percentages to calculate amounts. This would be in the civil court, with no guarantee of costs. A scary prospect. Copyright and license infringements are things best dealt with without courts if you possibly can.

 

[Dawg]

If she is this skint do you have any realistic chance of actually getting any money? Getting a judgement isn't pay bearer on demand type stuff, so you are risking chucking court fees and your time down the drain.
However bitter the taste, it might be better to swallow and move on to more productive things.

On the actual question you state that a) it was a sideline, but you are only guessing b) she put it through the company books. For a court you will have to make pretty sure who to go for or it risks being thrown out with you liable for costs.

On another point, something I just don't know and would like to know: which court deals with Intellectual Property disputes? I assumed that it would be part of the High Court, rather than the Small Claims Court.

 

[Geoff T]

On another point, something I just don't know and would like to know: which court deals with Intellectual Property disputes? I assumed that it would be part of the High Court, rather than the Small Claims Court.

my understanding is - and I'm fully prepared to be prvoed wrong! - that it can be applied in either, the amount of money involved is what counts...

 

[Geoff T]

PS - Jen I've got a bit of spare time NEXT WEEK if you want me to review this for you...

 

[VeryMark]

You can only sue for copyright infringement in the High Court I'm afraid and it's not worth going after damages unless the culprit has sufficent assets or there's a point of principle at stake (e.g. if you're Getty Images).

The most practical result generally in these kind of cases therefore tends to be simply getting the other party to stop the infringing activity.

If you need help PM or email me (see link below).

 

[Coppock]

Hi, well she basically commissioned us to do some work - a lot of work. And then took the designs, got them printed twice, admitted to profits of around £900 in an email, and then didn't pay us because we had a dispute before the printing went ahead.

I want to take this further out of sheer principle now - this is about the forth time i've been hammered for being "too nice" and it's got to stop somewhere.

Thanks for the offer Geoff... I'll wait and see if she collects the letter from the post office before taking any further action.
I was going to just go straight to the small claims court to recuperate our design costs/copyright compensation. Plus we used images from Getty etc - they were purchased by ourselves but our licence would have been used without permission.

Could be a complete can of worms, but I'm hoping the experience will be worth it even if we don't get anywhere/anything...

I was going to hand deliver a letter - the office is a bit of a treck, but at least then i'll know 100% that it was received before continuing with anything.

Plus if I don't do anything she's just going to keep ripping people off - maybe I can help stop her from screwing over other businesses in the area......

Any more advice?
Thanks everyone!!!

Jen

 

[Dawg]

Then do her for breach of contract, not for copyright infringement.
That's Small Claims court.
Good luck.

 

[MASSEY]

Why dont you.......... tell her to stop using them and let her off

 

[VeryMark]

If you can show you have a contract with a monetary consideration, then the Small Claims Court would seem to be the route - you can even start proceedings online.

By the way, if the other party is using images from Getty Images without permission and they become aware of it, then Getty will issue a demand for a very considerable sum (over a thousand pounds) which they will follow up with court proceedings if necessary.

What are you trying to achieve - monetary compensation, stopping use of your material or some kind of punishment? What's best for your business? - Don't let emotion get in the way, it always makes things more difficult/expensive/uncertain.

I don't know though if I would hand deliver a letter as service may then be more difficult to prove - recorded delivery or a process server is the preferred method.

 

[Coppock]

Great news - the letter has been successfully delivered!
It's out of principle, she got really nasty with me after I spent the entire bank holiday (and my daughters first birthday) trying my best to help her when she couldn't even help herself.
I'm hoping for some financial compensation for the time I spent on the job, I either get it or I don't, but the artwork I created was used twice without my permission and just sheer nastiness for my troubles

Thanks for everyones advice,
lets see what happens I guess!
Jen

 

[Geoff T]

Jen,

If it comes to getting official - take "VeryMark" up on his kind offfer, he's the expert..

(always get the best people you can on the job)

 

[bdw]

By the way, if the other party is using images from Getty Images without permission and they become aware of it, then Getty will issue a demand for a very considerable sum (over a thousand pounds) which they will follow up with court proceedings if necessary.

Actually Getty seldom if ever follow up on any of these claims. AFAIK they have never successfully taken anyone to court for this. They did settle one case out of court but (again AFAIK) the legality of what they are doing has never been tested before a judge.

Feel free to correct me if I am wrong.

 

[Dawg]

I don't recall exactly but there is/was a member here with a Scottish video/tv company who had a client or knew someone who went down for over £20k, (including legal fees). This is a vague memory and could be inaccurate.

There is a lot of disagreement about what does and doesn't happen, and what is and isn't legal, (which helps Getty as the seeds of confusion sow fear), and I think Old Welsh Guy has a certain expertise.

As with libel law it is the threat of incurring large legal expenses that leads people to settle rather than the law itself, as few are brave or foolish enough to use the Arkel vs Pressdam defence.

 

[bdw]

I like it! LOL.

 

[VeryMark]

I would not encourage anyone to ignore any letter of demand received from Getty - anybody thinking otherwise should read the thread here.

Anyone receiving a cease-and-desist letter of any kind, whether for copyright, trade mark, design right or patent infringement, should get advice from a properly qualified lawyer - and that doesn't mean your local high street solicitor who may be perfectly good at conveyancing or divorce but will have little knowledge of intellectual property law.

What you do with that advice is up to you, of course, but at least with it you won't be doing the equivalent of diving into the sea without knowing whether there are sharks.

 

[bdw]

I would not encourage anyone to ignore any letter of demand received from Getty

I was not encouraging anyone to do so Philip and I appreciate that as a copyright lawyer that must be your stance. People have to decide for themselves what they should so when they receive one of these letters. The case to which you refer is AFAIK the only they have pursued and was it not stopped before it got to court?

The article you point to is on a photography copyright website and clearly they have their own position to maintain. Getty and the other major imaging companies have been doing this for four years now and this is the only case that is ever cited. They have probably sent out hundreds of thousands of these demands worldwide and there is only this one case on record. What does that tell us?

I don't want to take this off topic and I would be happy to continue this discussion in another thread but here is the other side of this story, http://extortionletterinfo.com/.
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[bdw]

Incidentally Jenny, you have my sympathy and I can understand why you want to take this all the way. I have several websites with extensive content that I spent weeeks writing. People steal this on a regular basis and I have to pay Copyscape to check this for me. It's a real PITA but the prospect of spending the time and money pursuing them through the courts does not appeal to me. Most of them take the content down when challenged but your case is different if you can prove that she profited from the use of your material.
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[VeryMark]

I don't disagree with what you say bdw but I believe the case in question did go to court and was only stopped because the company concerned gave in because they realised what they had let themselves in for, and the site you have posted a link to is in the USA and thus not reflective of UK law.

 

[bdw]

Philip, this is not relevant to Jenny's case. As I said I would be happy to discuss this in a new thread if you want to start one.

 

[Coppock]

Thanks for everyones help!
Will be sure to keep this thread updated with any progress.

We don't get this happening very often - probably once or twice a year, and I wasn't going to do anything again, but then thought "what would one of the business owners I admire do in this situation..." and the answer was "lay the law down"! Even if it's long winded, hassle etc - it's out of principle!

Jen

 

[The Dancer]

I too am in the throws of a Getty Image claim and am being hammered by Pinsent Masons. I am being threatened with court action unless I pay almost £3,000 including their £600 of additional costs. I have consulted a specialist law firm who have quoted a minimum of £2,000 to defend the claim and have pretty much said that they would advise me to pay in full anyway. I have scoured and read many articles and bulletin boards that cover this subject of unknown copyright infringement because a third party web company developed the site and they all seem to say the saem thing. Pay up. It is scandalous even extortion but it is legal and there is nothing you can do. One thing I do know is that Getty in the UK have NEVER won a case in court. They have won damages against AJ Coles that was settled out of court.

Now in my case, having researched, it is my understanding that although I am an innocent party in this and I was not aware of the copyright infringement, innocence in the eyes of the law is not a defence.

Therefore let's say I admit to damages as I did have the benefit of the image. The question is then not if I am liable for damages, but how much. Getty Images admit that they do not know how long the image was used for or the scope of the image. Therefore they estimate (in other words guess) what the damage should be.

I am not by any means a legal expert but here is some case law:-

In Stovin-Bradford v Volpoint Ltd [1971] Ch 1007 it was stated at 1016 "The defendants took the plaintiffs plan and took it as if they had a licence to use it as they pleased - to take so much of it as suited them and leave out what they did not want. They ought to pay as damages an amount equivalent to the fee which they would have had to pay for a licence".

Copinger at 22-163 states in cases where the right to exploit the Image is by way of licences for royalty payments, "If the infringer uses the right without a licence, the measure of damages is the amount he would have had to pay by way of royalty instead of acting illegally".

And finally,

In General Tire and Rubber Co v Firestone Tyre and Rubber Co [1975] FSR 273 it was said that at 274 "damages should be assessed so as to put the injured party in the position he would have been in if he had not sustained the wrong, and thus the appropriate measure of damages where a patentee exploited a patent by granting licences was the "going rate" for such a licence at the time that infringement commenced" and that this "requires the judge assessing damages to take into account any licences actually granted and the rates of royalty fixed by them, to estimate their relevance and comparability, to apply them so far as he can to the bargain hypothetically to be made between the patentee and the infringer, and to the extent to which they do not provide a figure on which the damage can be measured, to consider any other evidence, according to its relevance and weight, upon which he can fix a rate of royalty which would have been agreed".

Therefore it would appear that although I do not think at can be disputed that in these unfortunate situations that damages need to be paid, it is my non-legally trained opinion that the damages are limited to what it would have cost to purchase the licence in the first place and not the extortionate amount the Getty Images and Pinsent Masons try to scare and bully people into paying.

I am convinced they are playing a numbers game that will scare enough people into simply paying what they ask for through fear, and make the whole process worthwhile for them.

I would welcome thoughts on this.

If you can show you have a contract with a monetary consideration, then the Small Claims Court would seem to be the route - you can even start proceedings online.

By the way, if the other party is using images from Getty Images without permission and they become aware of it, then Getty will issue a demand for a very considerable sum (over a thousand pounds) which they will follow up with court proceedings if necessary.

What are you trying to achieve - monetary compensation, stopping use of your material or some kind of punishment? What's best for your business? - Don't let emotion get in the way, it always makes things more difficult/expensive/uncertain.

I don't know though if I would hand deliver a letter as service may then be more difficult to prove - recorded delivery or a process server is the preferred method.

 

[bdw]

Now in my case, having researched, it is my understanding that although I am an innocent party in this and I was not aware of the copyright infringement, innocence in the eyes of the law is not a defence.

It is actually.

Where in an action for infringement of copyright it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.

 

[The Dancer]

BDW, thanks for your reply. I don't think this is correct.

Based on your quote below I would have to have thought or had reason to believe that a photo was not an item that required a copyright licence, not that I did not know that the image had been used without the correct licence, which is a different slant.

Quote:
Where in an action for infringement of copyright it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.

 

[bdw]

It's down to interpretation I suppose but if someone employs a third party to do a website and they supply the images or if they get an image from a free CD or whatever I don't think they would have any reason to believe that copyright subsisted. There are other similar circumstances where people could be in possession of an image without realising there were any copyright issues.

Based on that law I don't think any UK judge would rule in favour of Getty in these circumstances. It's my belief that this is why they are scared to test it in court.

 

[VeryMark]

It's down to interpretation I suppose but if someone employs a third party to do a website and they supply the images or if they get an image from a free CD or whatever I don't think they would have any reason to believe that copyright subsisted. There are other similar circumstances where people could be in possession of an image without realising there were any copyright issues.

Based on that law I don't think any UK judge would rule in favour of Getty in these circumstances. It's my belief that this is why they are scared to test it in court.

In general, all images are copyright whether they have been obtained from Google Images or a free CD or any other source and to assume otherwise is naive in my opinion.

The only exceptions are where for example copyright has expired due to the age of the image (but note that a new photograph of an old image creates a new copyright in that photograph), or the image was created in a foreign country in circumstances where no copyright exists in the UK, or a Creative Commons or other licence exists which allows the necessary copying.

Moreover, ignorance is generally no excuse for infringement, but it may affect the remedy which the courts will grant.

However, whilst a copyright owner is not entitled to damages in respect of infringement if you can show that at the time you did not know and had no reason to believe that copyright existed or that you were infringing this does not affect the copyright owner's right to an injunction to prevent further infringement or an account of profits or delivery up or destruction of any infringing material.

Nevertheless, an injunction might not be granted against an innocent infringer who makes it clear, once he is aware, that he does not intend to continue infringing and the court may refuse to order an account of profits.

To show that you are an innocent infringer requires evidence, not mere ignorance - to say simply that you found it on the Internet or a free cd or that someone gave it to you is not enough.

If for example a web designer used an image in creating your website and had assured you that he had obtained any necessary copyright licences and you had believable written evidence of this, then you might qualify as an innocent infringer.

If in that case you are accused of infringement, the correct course initially in my view would be to (a) provide that evidence to the copyright owner or their solicitors together with full details of the web designer or other person responsible, and (b) show that you have removed the image, destroyed all copies of it, and do not intend to use it again without a valid licence, and (c) offer a reasonable amount in compensation for the licence fee you would have been required to pay.

(Of course, one would want to have terms and conditions applicable to any supplier that included a warranty against the supply of any infringing material and an undertaking to indemnify you against any loss or damage for any breach of such warranty.)

If despite the foregoing the copyright owner or their solicitors refuses to accept (a), (b) and (c) as settling the matter, then it is a question of course of being prepared to stick to your guns or not. Employing a professional firm of lawyers experienced in such matters might then be of assistance.

I hope this is helpful.

 

[bdw]

In general, all images are copyright whether they have been obtained from Google Images or a free CD or any other source and to assume otherwise is naive in my opinion.

Yes but your opinion is based on the fact that you are a copyright lawyer.

If for example a web designer used an image in creating your website and had assured you that he had obtained any necessary copyright licences and you had believable written evidence of this, then you might qualify as an innocent infringer.

IMO it is absolutely not naive of Joe Public to assume that he can use the images from a CD prominently labeled as "free images". Neither is it naive of anyone who buys a website in good faith to assume that it is anything other than perfectly legal.

It is unreasonable to expect that Joe Public would even consider these things when he is not even aware that they exist. Personally I don't think that there is judge in the land who would be anything other than sympathetic when faced with a case like this.
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[Dawg]

Yes but your opinion is based on the fact that you are a copyright lawyer.

Brilliant! So his opinion is open to question and/or suspect because he is an expert in the field?
Priceless.

IMO it is absolutely not naive of Joe Public to assume that he can use the images from a CD prominently labeled as "free images". Neither is it naive of anyone who buys a website in good faith to assume that it is anything other than perfectly legal.

It is unreasonable to expect that Joe Public would even consider these things when he is not even aware that they exist. Personally I don't think that there is judge in the land who would be anything other than sympathetic when faced with a case like this.
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Unfortunately your view of what is and is not reasonable might not accord with the law. And judges, whilst they might be sympathetic have a duty to uphold the law, which generally they do.
So whilst your opinion is valid as a layman's opinion, it could mislead people reading a business forum into thinking they can break the law with impunity because they believed bad advice and misleading quotes on that forum.

Given the above I think we would agree that the law is badly framed, unfairly expensive to challenge, and often unjust.

 

[bdw]

So whilst your opinion is valid as a layman's opinion, it could mislead people reading a business forum into thinking they can break the law with impunity because they believed bad advice and misleading quotes on that forum.

What? Are you serious?

 

[VeryMark]

Without wishing to become emotional or to engage in criticism, I have to say that what I wrote was an attempt to summarise the law concerned to the best of my knowledge and ability, based on approximately 40 years experience as a qualified intellectual property lawyer and having to hand a shelf of the relevant law books - incidentally, the cost of the current issue of Copinger & Skone James on Copyright (the leading work) is £588.00!

....... and yes, whilst judges may be sympathetic, they have a duty to apply the law -Robin Jacob, the leading English judge on intellectual property cases in the Court of Appeal said for example recently in the L'Oreal v Bellure case "I do not agree with or welcome this conclusion ....... But my duty is to apply it", when giving judgement against the defendants.

Also, unfortunately, if you wish to present your case in court it will cost you an exhorbitant amount!

Therefore, it is better to avoid if possible putting yourself into a legally vulnerable position in the first place.

 

[Dawg]

What? Are you serious?

Yes I am serious.

The quote you gave in #23 was commented on, and heavily qualified if not corrected by post #26.

You then queried the quality of the advice given in #26 in #27, giving an impression, to some perhaps, that your opinion on copyright law carries the same weight as that of a copyright lawyer. This is a misleading impression and carries with it a risk that someone might act on your advice.
I agree that anyone acting on this advice would be foolish, however, and please correct me if I am wrong, you normally seem to want to guard the foolish from their folly with rules and regulations. Would self regulation in this case, lessening the possibility of misleading, be inappropriate?

 

[VeryMark]

.. if you wish to present your case in court it will cost you an exhorbitant amount!

........ unless of course you have legal expenses insurance you can rely on.

 

[bdw]

based on approximately 40 years experience as a qualified intellectual property lawyer

I did not in any way question your legal qualifications. I questioned your perception of copyright naivete based on the fact that you are "in the trade".

You then queried the quality of the advice given in #26 in #27, giving an impression, to some perhaps, that your opinion on copyright law carries the same weight as that of a copyright lawyer. This is a misleading impression and carries with it a risk that someone might act on your advice.

Dawg, what kind of a halfwit would consider my opinion on copyright law as the equal of that from a lawyer? If you have something to contribute please do it sensibly rather than trying to score points against me.

Incidentally these are my opinions as I clearly stated and I stand by them 100%.

 

[Dawg]

Dawg, what kind of a halfwit would consider my opinion on copyright law as the equal of that from a lawyer? If you have something to contribute please do it sensibly rather than trying to score points against me.

Incidentally these are my opinions as I clearly stated and I stand by them 100%.

Actually it's not about you and your opinions, or about scoring points against you, or being 'sensible', which I take it to mean allowing your statements to go unchallenged.

It's about bringing the readers notice to the fact that your opinions are likely to mislead and wrongly inform in an area of law. It is about people reading this forum who aren't you, it's about flagging up to an audience searching for information that some offered here is pish.
I think this is sensible. And statements made are not made to score points against you, but to challenge uninformed, rigid and doctrinaire thinking from whatever source.

PS I give good ad hominem too. When not being sensible, (yawn) or scoring points...

 

[bdw]

PS I give good ad hominem too.

Oh yes, I bow to your much more superior expertise in that field (particularly where I am concerned). Your bagpipe comment did not go unnoticed. Very clever!

 

[Dawg]

Your bagpipe comment did not go unnoticed. Very clever!

Ho hum. All about you, (again).
Actually the bagpipe thing I picked up in a letter to the Times on Friday. It amused me so I used it.
Weirdly, I don't spend every waking hour thinking of ways to wind you up. Serendipity and spur of the moment serve well enough.

 

[bdw]

Therefore, it is better to avoid if possible putting yourself into a legally vulnerable position in the first place.

Yes, I totally agree. But...

I have been very close to this process, reading and contributing to several forums since December 2006 when I got my own letter. I have learned quite a lot about it during this period. On the FSB website I volunteered to write a summary of the situation and the consequences of receiving a letter. This summary offered information on what had happened to many of the people involved, what the imaging companies were up to and (based on the feedback we were receiving) what was likely to happen.

Despite asking people not to contact me off the forum I became an unofficial point of contact. I had to field telephone calls from concerned people and answer their emails. I was also verbally abused by several people on the forum who could not accept that some people were totally innocent in this situation. One of them even put a curse on me and my family and when confronted with this told a pack of lies to defend his actions. It got so intolerable that I eventually had to insist that the thread and my summary was removed.

Much of the ire in that discussion stemmed from the photographic community's failure to accept that there were circumstances where people could receive one of these claims through no fault of their own. And that appears to be where we are going with this thread.

IMO it is absolutely not naive of Joe Public to assume that he can use the images from a CD prominently labeled as "free images". Neither is it naive of anyone who buys a website in good faith to assume that it is anything other than perfectly legal.

Philip, what I said was...

It is unreasonable to expect that Joe Public would even consider these things when he is not even aware that they exist. Personally I don't think that there is judge in the land who would be anything other than sympathetic when faced with a case like this.

Now while I accept that court costs could be very expensive can I ask you a question based on your legal experience? Let's say that a small business person employed a web design company to build a website for a business in good faith. The web designer used an image illegally. It the business person subsequently received a Getty letter and was taken to court do you think a judge would be sympathetic to his case?
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[stugster]

I don't recall exactly but there is/was a member here with a Scottish video/tv company who had a client or knew someone who went down for over £20k, (including legal fees). This is a vague memory and could be inaccurate.

Yup. I know who you're talking about, but they're engaged at present.

Getty do indeed go for the jugular whenever a copyright infringement issue arises that they feel they can prosecute.

 

[stugster]

Having just read this thread in its entirety, I'm amazed at the defence put up by bdw for the copyright issues.

If a web designer creates a website using copyrighted images, and the owner of the website gets brought up in court, the only defence the owner has of the infringement is detailed within the contract between the designer and the client.

If the issues of who owns the copyrighted materials is not in the contract, then the designer isn't a very good businessman.

Ignorance is not a defence. A judge would look at the facts of the matter. The website owner is using copyrighted information. There's a breach. It is not for the owner of the material to have to look at how or why the infringer is breaching the copyright.

 

[Rainbow Chasers']

Assuming that these infringing items are sold online - you can contact the website host, who will push the site owner to remove, or the take the website down. May be another avenue.