How to Deal with Photography Copyright Infringement via the IPEC Small Claims Track
I recently found myself at the High Court on the Strand in London, Intellectual Property Small Claims division. Most copyright infringement cases will never get as far as a courtroom, but sometimes you have no option. And so on 14th February 2019 Lindsay Dobson (Claimant) vs Andrew Thornton (Defendant) case reference IP18S00051 was heard before Judge Lambert. This was a flagrant infringement of my rights by the operator of The Leigh Studio based in Leigh on Sea, Essex. One of my articles on Copyright (the irony of that won’t be lost on you) had been reproduced in full on the Leigh Studio website. The studio owner wasn’t prepared to pay my very fair invoice and despite following court protocol to the letter he would not be convinced otherwise. The Judge who examined the case described Mr Thornton’s actions as ‘unbelievable’. My article about the common excuses made by copyright infringers is particularly relevant to this case, despite the infringer being an established full time photographer himself. As a consequence the Judge ruled that the infringer pay fees, damages and all costs - a figure in excess of four times that of my original invoice.
It’s incredibly frustrating when copyright infringement happens and very often photographers and other creatives aren’t clear as to the steps they can take. Infringers will often thumb their noses, in the belief we won’t try to pursue them. Not only that, the court system hasn’t always made adequate provision for intellectual property cases, most of which will be valued at less than £10,000. Historically this forced photographers into the standard small claims track (or ‘money claim’ process) in their local County Court to recover their loss. These cases were then heard by a Judge who may not be experienced in handling copyright claims.
As copyright infringement has grown exponentially over the years, the Courts recognised that those engaged in creative work needed a more streamlined and specialised system through which to bring a claim if their property is abused. As a result I’m pleased to say that we now have the Small Claims Track within the Intellectual Property Enterprise Court, which is based in London. As such, copyright infringement cases will be heard by an expert Judge and infringements will be dealt with more appropriately.
When it comes to tackling Copyright infringement it can be hard to know where to start. Bringing a small claim for infringement doesn’t require legal representation but there is a presumption you’ll understand the rules and protocols involved. This article will act as an overview on how to progress a copyright case through the small claims track of the intellectual property court.
Why is Copyright so Important to Photographers and other Creatives?
Under the laws of England and Wales, whatever we create is described as our intellectual property. Copyright applies to photographs, literary works, music, architecture, designs and patents. That means nobody can use our work without our express permission. The same copyright laws apply whether we’re professionals or hobbyists.
Copyright is a presumption, here in the UK we don’t need to register it - it simply exists from the moment we create something new. Key to this is the CDPA – the Copyright Designs and Patents Act 1988. If we work in any kind of creative field then we must understand at least the rudiments of copyright. This helps us to assert our rights under the law should we need to.
This discussion relates to the laws of England and Wales, however laws may differ by country and state. I’m not a lawyer, what I’ve written here is simply my view based on my own experience. Always seek legal advice before taking legal action
Any photographer, musician, writer, or designer has probably had their work reproduced or otherwise copied in some way. If we’ve given the people who’ve copied our work permission to do so, under our own specified terms, then there’s no issue. But much of the time our work is copied without our consent and without our knowledge. The world is a fairly small place thanks to the Internet and so it’s not uncommon for us to find out about unauthorised reproduction. Unless we understand the basics of copyright law, we might just accept this as an unfortunate consequence of posting our work online.
In some situations there may be a measure of justification in ignoring some infringements. And in other situations there is not. In my experience photographers seem to be particularly poor at standing up for themselves. After all, we work in a field where being friendly is part of our job. But that really doesn’t mean we should put up with our work being used for free by someone who’ll benefit from it through no effort of their own. It’s easy to forget how much our time costs, and the amount of effort which goes into creating whatever it is we produce - be it photographs, written pieces or anything else.
All too often amateur photographers are flattered when their work is taken and used. The flattery quotient seems to increase proportionately to the size and standing of whoever has infringed their property. To them, it means their work is good enough for someone else to want - and so they may regard infringement as a compliment (even when that somebody is a commercial business profiting from their talent and offering nothing in return). Don’t get me going on this one …….
What Can I do if my Copyright has been Infringed?
Since you’re the legal owner of your work, it’s entirely up to you. The best answer is to consider the merits of each infringement. For example there might be reproduction of a photograph or small snippet of text on a personal page or blog accompanied by attribution and a link to your website. Attribution doesn’t obviate the infringement, but if there’s no commercial or moral benefit to the infringer then simply instructing the infringer to remove your content might be the best course of action. But if the web page in question is a business, is connected to a business, is promoting something, or if it includes advertising (for which attracting a large readership to its ‘useful content’ would be important) then it’s another matter entirely.
It’s worth pointing out that the exception of ‘fair dealing’ isn’t as wide ranging as many infringers might try to have us believe. For example it’s highly unlikely that fair dealing would apply if your work is copied onto a forum, even with attribution. And it certainly wouldn’t apply if the work had been copied to a business page of any sort.
You alone have the right to determine how your work is used, where, and by whom. You also have the right to seek compensation for the use of your work. You have the right to ask for damages in relation to the unauthorised use of your material (damages are normally sought via the courts). It’s important to follow a well thought out process from the very beginning. That way, should the situation escalate as far as the courtroom (the vast majority don’t, thankfully) you’ll be able to demonstrate that you’ve acted reasonably in following a credible pre-action process.
It’s upsetting when something you’ve worked hard to create is casually copied by someone else, and passed off as their own. The more substantial and flagrant the infringement, the more despicable the act. Despite how all of that makes us feel, we need to use firm yet polite language when communicating with an infringer.
The first stage is to make screenshots of the infringed work the moment you find out about it. Then take screenshots of your work as it appears on your own website, or wherever you posted it originally. At this point it’s worth considering how far you’ll need to take your action against the infringer. This decision sets the tone for all of your communications, from the very outset.
Copyright Infringement Pre-Action Protocol
Normally the first step is to Email the infringer and inform them you’re aware your work is appearing on their website. (Until fairly recently we could look up the owner of a domain using the WHOIS records, but privacy regulations now prevent that.) You may need to do a bit of digging on the infringing website to find out who’s in charge. Tell the infringer you’ve no record of granting them permission to use your photo/text/design. Ask them where they got your content, and if they’re using any other content of yours. Don’t forget to ask them how long they’ve used the material. These questions are important, and may be relevant later on. It’s pretty standard at this point to inform them they must remove your material within 24 hours.
If I find my work published on a website which has any kind of commercial leaning then it’s my policy to send the owner a bill. This will take into account the answers I receive from the first contact as described above. I allow the infringer seven days to pay. It’s my usual policy to charge no more than I would have charged had I granted permission for them to use my work legitimately. Applying any penalty or punitive measure is usually the province of a Judge, should things proceed that far. Explain to the infringer how you arrived at your fee. If it’s a piece of work you haven’t sold before, do some research on the price of similar items and base your invoice on that. Otherwise a ‘reasonable guess’ is fine. All that matters is that your fee would be deemed fair and reasonable if it were tested in court. Bear in mind that you’ll need to justify your price later on if the infringement ends up in litigation.
Remember to tell the infringer that paying the fee doesn’t grant them the right to carry on using your work (if they wish to, a new licensing agreement would need to be drawn up and very likely an additional fee paid). Point out that if the invoice isn’t paid, you’ll have no choice but to enforce it through legal proceedings. In so doing the infringer will very likely become liable not just for the original licensing fee, but for damages and costs as well.
“Without prejudice save as to costs” - this statement is commonly placed on correspondence which contains a settlement value. It protects your financial discussions until the Court hands down a judgement. If you feel your infringer has no credible defence, and if you’ve sent them a figure for settlement, this phrase informs them that if they disagree you could seek costs on winning the case. This works best when the value of your loss is easy to quantify.
If the infringer resists or ignores your invoice, it’s good practice to send them a final reminder. As before, set a time limit and once again point out the consequences of failing to pay. It’s fine to send these communications by email.
If so far you’ve either failed to elicit a response, or if the offending party has responded with excuses or an outright refusal to pay, then the last stage in your pre-action phase is to send a Letter Before Action. This will be your third or fourth communication and it will be the last letter you’ll write before filing a claim with the court. An LBA is a serious document, one which should never be taken lightly let alone ignored by your opponent. This letter needs to be fairly detailed. Set out again what the infringer has done and the remedies you intend to seek if the matter goes to Court (such as damages, court costs, interest and any other costs which may arise).
In the LBA it’s vital you qualify what you mean by damages – of which there are various ‘heads’ depending on your situation. It’s correct to list these and also quote the relevant parts of the law. For example, the breach may have been flagrant. In essence that means that the infringer should have known better, or else the act was knowing and wilful (CDPA 97 2.). Stripping metadata from images would be an obvious example of flagrancy, likewise removing a watermark. If a photographer were to copy the work of another photographer, that in itself would be viewed as a flagrant act simply because it’s expected that a photographer understands the workings of copyright.
It’s important to consider whether the infringer may have profited from the use of your material. An obvious case would be if the infringer was selling your work, either in whole or in part. That would be the case if they were making prints, or re-licensing your work. Or if they were incorporating your creation into something else which they were promoting or selling (such as a book or design). If that’s the case then you would inform the infringer that you’ll be asking them to provide an account of profits. Simply using your work in any manner which could benefit their business in some way (such as raising their professional standing or credibility) may well be seen in a courtroom as a form of profiteering.
If the infringer has failed to give you credit for your work then you may be able to claim damages where there has been a breach of ‘statutory duty’.
There may have been consequential losses, which could be the case if your content is exposed in a way which puts it at risk of additional infringement or even orphaning.
It should be clear at this stage that if the infringer fails to act then they could end up owing you very much more than the value of the original licensing fee. Inform the infringer they have (7 to 14 days) to pay your invoice and if they don’t you’ll seek remedy through the courts. It’s good practise to state in the LBA that you’ve adhered to pre-action protocol and you remain open to mediation.
Bringing a Claim for Copyright Infringement in Court
IP cases are arguably more complex than a straightforward financial dispute. By handing more of the work to the claimant (the claimant is the infringed party – the person bringing the case) the Patents Court is able to keep their fees in line with normal County Court procedure. And thus we saw the emergence of a dedicated Small Claims Track within the Intellectual Property Enterprise Court, which is based at the High Court in London.
It makes sense to do as much research as possible on relevant case law and court process. If your claim is likely to be less than £10,000 (including damages and costs) then you can make use of the IPEC Small Claims Track. Claims in excess of that would be allocated to the IPEC Multi Track. Be aware that you as the claimant will be tasked with serving the sealed court forms on the defendant(s) who in turn will be tasked with serving his or her responses to all parties (not just the court). There is a set process for paperwork which has to be followed and this is set out in the IPEC Small Claims Guide. This Guide will reference sets of rules called ‘Parts’.
To begin your claim you’ll first download form N1. Fill in a copy for the court and a copy for each defendant. It’s important you follow the instructions in the IPEC Guide on how to correctly complete this form, otherwise the court will send it straight back to you. At this stage you’ll set out the Particulars of your claim briefly on the form - you’ll have plenty of time later on to go into more detail if you need to. You must state on the claim form how much you’re claiming for. The court won’t decide this for you - it’s very much a case of ‘if you don’t ask, you don’t get’. This means a degree of guesswork is involved when calculating damages. The most common practice is to initially set damages at three or four times the value of the licensing fee, and then to add on costs. If the case progresses to trial the Judge will examine that accordingly, but you do need a starting point. You’ll also state any interest you intend to claim and when it’s calculated from.
It goes without saying that including proof to back up your claim is a prerequisite. This can be screenshots of your work on the defendant’s website plus copies of your originals and proof you’ve tried to settle the matter in your pre-action dialogue. This is the point at which you’ll pay your first court fee. It’s based on the total value you’re claiming for (not just your original licensing fee). Don’t worry, it’s affordable and you’ll get this back when you win your case (assuming you’ve asked the court to award costs). I say ‘when’ you win, because if you can prove your work has been infringed then there’s little prospect that your opponent can successfully argue otherwise.
Send the claim form and ‘particulars’ to the Court. The court will stamp (seal) each copy of the claim and these will then be returned to you. It’s your job to serve the sealed claim form and the Particulars of Claim (the proof and the arguments you intend to rely on) on the defendant(s). Make sure you also include a ‘response pack’ for your opponent to fill in (Forms N9, N9A, N9B, N1C). I never use a signed for service when serving documents - it’s too easy for a defendant to refuse a package (chances are they’ll guess what it is). I just send it via regular first class post, gaining a certificate of postage from the Post Office. Remember to send a Certificate of Service to the court. Occasionally a defendant will say they hadn’t received the paperwork - in my experience Courts rarely accept that as an excuse.
The defendant has 14 days with which to reply to your Claim. He or she will need to fill in the appropriate form which you supplied as part of the response pack. In so doing, the defendant is telling the court (and the claimant) of their intentions. At this point they’re required to inform all parties whether they intend to pay up or defend the case. If submitting a defence, the defendant will have a little more time in which to do that. If they fail to respond, then you can ask the court for a Judgement in Default.
Where a defence has been filed, a Judge will conduct a preliminary examination of the case and will determine whether the matter should proceed to a hearing. If so, a Notice of Hearing and a set of Directions will be sent out to all parties. Directions are instructions which usually ask for further documentation as well as allowing both parties a final opportunity to put forward any additional evidence or witness statements. At this stage it’s commonplace for the claimant to submit a more detailed account of their case and if necessary a response to the defence (in total, no more than about 4 sides). It also helps the court if you can supply a well reasoned breakdown of what you’re asking for in terms of damages and costs. At this stage there’ll be more costs to claim and more interest. Additional costs will be in the form of the final hearing fee as well as reasonable costs involved in attending Court - and loss of earnings at the court rate for the day in question (assuming you attend).
I’d advise you pay the hearing fee promptly because if you forget to your case is likely to be struck out.
Copyright Claim Court Mediation Service
At the same time the Directions are sent out, the court will also send you details of their mediation service. In the Small Claims Track this is free, and it’s recommended that both the claimant and the defendant agreed to mediation. This simply means that a mutually convenient telephone call will be arranged with a court mediator who will act as a go between during the discussion. You don’t need to speak directly with your opponent if you don’t want to. Nothing you discuss at the mediation session will be shared with the Judge.
I’ve always been in two minds about mediation. I can’t help feeling that it’s more about getting the case off the Court list, and less about justice. But it’s also true to say that many claimants or defendants dread the prospect of the court room, and will make an effort to avoid that. Some defendants have also realised at this point that a court judgement could be extremely costly and it may be better to try and seek some kind of financial middle ground beforehand. It would be unrealistic at this stage to expect a claimant to simply accept an offer in payment of their original fee and the costs they’ve already paid out to the court. After all, the defendant could have offered to settle at literally any point before now. For that reason a pre-trial settlement would generally need to recognise damages as well as costs. There’s no obligation for either party to accept any offer, nor does the Judge automatically know what was discussed. If you can’t reach an agreement, the case proceeds to trial.
Despite any reservations you may have, it’s sensible to agree to mediation. In my last case I felt that the defendant’s state of mind was such that mediation would be counter-productive. As a result the Judge denied my claim for discretionary quantum for the hours I’d invested in the case. The Judge agreed that the defence had been ill-reasoned, but the judge pointed out that the defendant could argue I had been unreasonable by not agreeing to mediation. In other words, just do it.
Attending a Copyright Claim Hearing at the Small Claims Track of the IPEC
In the UK intellectual property hearings usually take place at the High Court on the Strand in London. This is where the Patents Court is located, and a specialist Intellectual Property Judge will hear your case. If your case has been allocated to the Small Claims Track the hearing isn’t too formal. By that I mean the Judge won’t be in a gown, instead everybody will be in normal business attire. There is usually the Judge, his or her clerk, the Claimant, the Defendant and any witnesses. The hearings tend to be fairly brief and are often over in an hour, unless the case is complex.
It’s all too easy over the months between discovering the infringement and getting to court to forget key parts of your argument. Make a bulleted list of what you’re claiming for and why. Don’t get too wrapped up in what your opponent has put in his or her defence. If they’ve made a whole raft of excuses the Judge is likely to dismiss what they say. It isn’t up to you to disprove any of the defendant’s assertions - it is instead up to your opponent to prove them. And that really is the best way of summarising court action - you can’t simply make a statement, you have to be able to back it up. If you can’t, your case or your defence could be viewed as unreasonable or even vexatious.
Assuming you win (and it’s highly unlikely that any case where infringement can be proved would not be successful) the judge will decide how much your opponent has to pay you. A timescale will be set for that, it’s usually 14 days. If you don’t get paid within that timescale there are measures you can take to enforce the judgement.
What is it Like to Bring a Case for Copyright Infringement in the Small Claims Track at the IPEC?
Nobody wants to end up in court. But there will always be the odd infringer who will not accept they’ve done wrong, nor do they wish to pay for the use of the work they took without permission. I will say this is fairly rare - the statistics I’ve heard suggest that more than 95% of cases never get as far as court. That’s reassuring. But unfortunately some infringers give you no choice. I suspect these people probably think you’re bluffing when you talk about the possibility of litigation, and that you’ll just give up.
Very few of us can afford legal advice, particularly if the claim we’re pursuing amounts to just a few hundred pounds. The good news is that copyright isn’t too complex to understand, providing you gain information from credible sources. Forums can be hit or miss - it’s hard to sift the wheat from the chaff and very often the advice can be nothing more than a best guess. You can instead ensure that you understand the law by reading the relevant sections of the Copyright Act, and the information provided by the various bodies which represent photographers. EPUK is a good resource.
Consequences for Copyright Infringers
It’s an undoubtedly horrible feeling when somebody takes your work, particularly if they then decide to metaphorically raise their middle finger when you attempt to recover your loss. Be prepared for a defence to include a raft of teeth grinding excuses. Don’t worry, the IP Judges have seen all of this hundreds of times before and they give it no credence. I never cease to be baffled by a defendant who thinks they can win a clear-cut infringement case. It’s not uncommon for a Judge to award quantum which might be several times that of the original invoice which you sent to the infringer. Not only that, the infringer is also risking their reputation. That’s rarely something which can be rebuilt in a hurry.
When I deal with an infringer who politely apologises and pays up immediately I tend not to name them (although most other photographers do, perhaps understandably). But if I’m put in the position of having to see a case through via the court system then I’ll have no hesitation in writing about the case on my blog, or referencing it is an example in a forum discussion. This helps to inform other photographers, and hopefully acts as a deterrent to any who may be considering stealing the work of others.