Copyright or wrong?
Friday, January 17, 2020
Ideas are the stuff of life for any business worth its salt. But of all the legal means of protecting ideas – trademark, patent and copyright – it’s the last which is so easy to breach, either deliberately or accidentally.
And the print sector is directly in the firing line for the act of printing makes it impossible to hide the evidence of a breach.
Nick Rose, a partner specialising in intellectual property disputes at Fieldfisher, starts the discussion by noting that “copyright does not protect the idea itself, but the form of the expression of the idea.” He gives an example: “Copyright would not arise if you simply whistled a tune, but it would do if you wrote down the notes for the tune or recorded your whistling on your phone.”
For any idea to be protected, Alan Harper, a specialist intellectual property solicitor and director at Walker Morris LLP, says that “there is a requirement for originality [of work which] means that the author must have created the work through his or her own skill, judgment and individual effort and was not copied from other works.”
Even so, it’s important to recognise that copyright only protects against copying; competitors can create something independently which, though similar, would not infringe the copyright in the original work. However, as Rose explains, “if the competitor had access to the copyright work there is an inference of copying, which the competitor must try and overcome”.
In terms of legislation, Rupert Bent, a partner specialising in IP and Media at Eversheds Sutherland, says that protection is granted under the Copyright, Designs and Patents Act 1988. He says that “not everyone realises that protection arises automatically on the creation of a qualifying work. The general rule is that the author of the qualifying work will be the first owner of copyright. But there are exceptions – when, for example, works are created by an employee in the ordinary course of their employment.” Here a statutory position provides that the employer will be the owner of the copyright in the absence of any agreement to the contrary.
Copyright cannot be registered in the UK. This is why Bent says that “if a copyright owner wishes to put others on notice that a particular piece of work is proprietary, they can do so by including a copyright notice, for example by including the © symbol or stating that it is protected and by whom.”
Rose also sees the need for creators to publicly identify their works because “many of the public are not familiar with the ins and outs of copyright law.” He says that in addition to the name of the copyright holder, the year of the creation after the symbol should be noted as copyright lasts a long time – usually the lifetime of the author plus 70 years. It’s for this reason that Harper advises businesses to proceed with caution and presume that copyright exists: “It is only when using rather old works that it may be the case that copyright has expired.”
Harper also suggests an alternative option for protecting online works. He says that “if uploading photographs it is prudent to include a copyright notice on the photograph itself, as a watermark”. This ensures that there is a clear statement of ownership which cannot be separated from the work itself.
Breaches do occur, sadly that’s a given. So, when copyright is found to have been infringed the creator can take steps to protect their work.
For Rose, the action will depend on a number of variables including the nature and extent of the copying and the sophistication and resources of the copyright holder. But he makes one key point – that “the business relationship, if any, with the apparent infringer will also be relevant as it maybe that the best course of action is to negotiate some form of licence. But if this is not possible then a letter setting out your rights and claims should be the next step.”
And it makes sense to look at the lie of the land before acting says Harper; he too draws distinction between classes of infringer. “If a competitor is misusing your copyright then a robust response is appropriate. However, if one of your customers is misusing your intellectual property (intentionally or otherwise), then you may wish to adopt a softer approach in light of your wider commercial relationship.”
But before acting, Bent suggests the creator “ensures that it actually owns the copyright in the works... as only the proprietor or certain licensees can take action against infringers”. Ownership is not always clear cut.
Next, he says that the creator should “check that the infringement is not in fact a ‘permitted act’ under the Copyright, Designs and Patents Act 1988”.
Once these points have been established, the copyright owner could contact the infringer, notify them of their rights and request that they cease the infringement. “However,” as Bent continues, “any such communications should always be very carefully considered.” As copyright is a complex area of law, and he, understandably, recommends obtaining specialist advice.
Rose thinks that infringements should not be ignored, especially “if the copying is more flagrant or widespread – a more comprehensive strategy will be needed”.
There are natural questions to be asked here: if breaches can occur easily, what steps should a business take to check if copyright exists? Are businesses responsible for checking on copyright status?
The first point to consider is that copyright infringement is an offence of strict liability. As Harper outlines, “if someone infringes copyright then the infringer has committed an offence, regardless of their intentions”.
This liability is why Rose advises businesses to be proactive. He takes the line that “if someone makes use of, copies or distributes a work that is not their own, then it is quite likely that they are infringing the copyright arising in that work”. He adds that if it is an employee of a business who carries out that infringement, the business will be liable for their actions and the infringement. And as they say, ignorance is no excuse.
The problem is, as Bent explains, it’s not possible to search a register or database to see if copyright exists. And where copyright notices and © symbols can be used to signpost where works are proprietary, this is not always the case. It’s for this reason that he recommends that “where a work is being used that is not owned by the individual wanting to use it, then efforts must be made to obtain consent or the right to use it from the owner”.
Harper takes the same tack. He says that if content is being provided by a third party, firms should “require them to prove that you will have the right to use the work and that it will not infringe the rights of others.”
By extension, Bent says that employment contracts and contracts with third-party contractors or freelancers should assign ownership to the business.
Another option is to look at the file of anything sent electronically, there might be a copyright statement or other information that would suggest who created the piece and when.
Fundamentally, both Bent and Rose suggest care before using material. Says Bent: “Caution must always be exercised as proceeding without the right to use, say, a licence, could result in infringement, regardless of whether or not such infringement is intentional.”
Rose, on the other hand, says to be careful not to infringe by mistake. “Some believe that they can avoid being an infringer by breaking down a work into multiple parts or modifying elements of it, but this could still amount to infringement.” This isn’t so - the test for whether copyright is infringed requires a qualitative assessment of whether a substantial part of the copyright in the work has been taken. There is, says Rose, no minimum number of changes that will avoid copyright infringement.
Notification of a breach
So, how should a firm react if a claim is lodged? Should they pay up or ignore the notification? Rose is emphatic: “Ignoring the claim is ill-advised as in the event that the claim proceeded to court, the court will not look kindly on an infringing party who has buried their head in the sand.”
Bent, thinks the reaction should depend on the circumstances. He advises a number of steps that involve understanding whether or not the firm has the right or permission to use the works; whether it has actually committed the acts alleged; the strength of the allegations and any possible defences; the nature of the claim and what is being sought; and whether it is worth the time and cost that will be incurred in defending the claim.
In fact, asking the ‘copyright owner’ at an early stage for evidence of ownership is a move advocated by Rose too. His view is that if the infringement is of a minor nature “it may be wise to negotiate a fair price for use of the work with the copyright owner”.
Harper takes a more direct approach. He thinks that once the claim is understood a response can be issued: “It may be that you cease the infringing act if you have been caught ‘red handed’ or you may resist the claim if it is meritless. Either way I would strongly advise seeking legal advice to ensure you obtain the best possible outcome.”
There are range of remedies available for a copyright holder against an infringer that a court can order. The key one for Rose is an injunction preventing them from doing anything else that infringes the copyright such as manufacturing or selling any products incorporating the copyright.
After injunction, courts can also order the delivery up of the goods to the rights holder, forfeiture and destruction of the goods and seizure of all infringing goods. Harper says of this that “the fate of the goods typically will be decided by the rights holder. It is not uncommon for a rights holder to seek destruction of all infringing goods”. Naturally, this will sting an infringer financially.
The last stage is the potential for an award of damages or an account of profits. Damages are intended to put the rights holder in the position it would have been in if the infringing act had not occurred; an account of profits is intended to make the infringer hand over the profits made as a result of the infringing act. Of these options, Harper says that “the choice of which to select is left to the rights holder... usually, a rights holder will choose the avenue that will result in the largest monetary award”. On top of this come the legal costs which can often be much larger than the actual damages or account of profits award – in the High Court this can often reach many hundreds of thousands of pounds.
But there is one more risk for infringers says Harper, that criminal offences can be committed with a breach. However, he says that “criminal cases against copyright infringers are rare and are usually reserved for actions against counterfeiters”.
It’s entirely clear that printers – all businesses for that matter – should have processes in place whereby they are able to identify copyright work and ensure that they own then necessary rights. Copyright infringement is a serious issue for the print sector.
An illustrator is a case in point
A well-known illustrator – anonymised for legal reasons – found their work used without permission or payment. The illustrator engaged a law firm to act but the infringer refused to engage, leaving her with no compensation, legal costs and only the expensive option of legal proceedings to effect recovery.
Using the IP lawyer did free up the illustrator to work on other projects. But it didn’t get her the outcome she wanted - only large legal bills. One alternative she noted was the small claims court route, but that may not work for complex IP-related claims.
The illustrator feels that copyright infringement is a wide-scale problem and affects others like her as well as photographers and designers. In her opinion, the copyright laws are being ignored, leaving businesses to benefit from what is in effect stolen work.
The nub of the matter for many of those in the creative industries is that they don’t have the financial resources to protect their position; they also fear retribution.