Making a Copyright Infringement Claim: A Guide

This publication gives general guidance only. It may not always apply and should not be relied on in place of specific legal advice.

In a technologically driven society, copyright has, for both individuals and corporations, emerged as easily one of the most valuable assets they can hold. For a brand owner, a creator of digital content, or a designer of a new product, for example, it is essential that valuable copyright is protected.

The online world has however created a dangerous environment for copyright, where rights are frequently infringed. Copyright infringement seriously harms or destroys not only the value of the copyright itself, but also individuals and commercial organisations behind the right.

If you suspect that your copyright has been infringed, instructing specialists in copyright litigation without delay, is critical.

In this note, we set out:

1. issues to consider; and
2. initial steps to take, when making a claim for copyright infringement.

Addressing each of the above:

1. Issues to Consider

The first issue to consider is whether copyright protects the work in question.

The Work

Under the Copyright Designs and Patents Act 1988, a copyright holder has the right to protect their work by stopping others from using it without permission.

Copyright doesn’t protect an idea; it protects the representation of an idea in the form of an original ‘work’.

Original works protected by Copyright include:

• Literary (books, manuscripts etc.)
• Artistic (illustration, photography, painting etc.)
• Music (sound and music recordings)
• Non-literary work (software, web content, databases)
• Film and TV recordings and broadcasts
• The layout of published editions of dramatic, written, and musical works.

It does not have to be something of significant artistic merit to attract Copyright protection: it can extend for example to business reports and templates, client databases and software code.

If it appears that the work in question is protected by copyright, the next issue to consider is whether you have the right to bring a claim.

Copyright Owner

A copyright owner, or exclusive licensee to a copyright work, has the right to enforce copyright in a work; establishing the correct owner of copyright however, is not always straightforward.

Copyright does not require registration: it arises automatically upon creation of the work in question: for example, in the writing of a script, the taking of a photograph or the creation of a digital artwork. The creator of a work is normally the first owner of Copyright in a work (the photographer, the writer etc.). This however may be varied by contractual agreements, employment, and assignments of Copyright, and the lack of registration of Copyright can make it difficult to establish ownership.

Once ownership has been established, the next issue to consider is whether there has been an infringement of copyright.

Infringement

Copyright infringement occurs when someone uses the whole, or a substantial part, of a work without the Copyright owner’s permission. Copyright law prohibits any of the following unauthorised acts by a third party in respect of a work:

• Copying
• Distribution of copies
• Renting or lending copies
• Performing, showing, or playing in public
• Making an adaptation
• Putting on the internet

However, if there is evidence of one of the above unauthorised acts having occurred, there may still be a defence for an alleged infringer (so-called ‘copyright exceptions’):

• Criticism, review and reporting current events
• Parody, caricature and pastiche
• Fair dealing
• Non-commercial research and private study
• Teaching

However, the above defences are tightly drafted and can leave little scope to avoid liability, so it is recommended that legal advice is sought on this point.

If it appears that an infringement of copyright has occurred, the next issue to consider is whether the claim is still ‘within limitation’.

Limitation

The law provides that a claim for copyright infringement must be brought within six years of the date of infringement: the “Limitation Period”. If it is now outside of the Limitation Period, then a claim will be ‘out of time’ and may not be brought (issued at court).

It is not uncommon for claimants to be caught-out by the Limitation Period and fall out of time in which to bring their claim.

If it appears that the deadline for limitation is approaching, then legal advice should be sought as a matter of urgency; it may be necessary to take protective steps and issue a claim without delay, however that is something we recommend is discussed with legal counsel whether you consider it an issue, or not.

If limitation is determined not to be an issue, the first step in making a claim will be to send a letter of claim to the infringing party.

Initial Contact

Before a claim is issued at court, the ‘Practice Direction on Pre-action Conduct’ under the CPR (the court rules) provides that a party seeking to enforce their rights sends a ‘letter of claim’ to the proposed defendant (the infringer).

A letter of claim should set out concise details of the claim including:

• the basis on which the claim is made;
• a summary of the facts;
• supporting documentation and evidence; and
• what remedies are being sought.

The letter of claim will invariably take the form of a strongly worded cease and desist letter, covering the above points, demanding (some or all of the following):

• Damages - representing either the loss suffered to the copyright owner (lost royalties or other revenue), or in the alternative, an ‘account of profits’ (divesting the infringer of the profits generated from their infringement).
• An injunction - to prevent further infringement and/or the seizure and delivery-up of the infringing work to the copyright holder.
• A Declaration - from the Court that works infringe copyright.
• Costs - Payment of legal costs.

The infringing party then has 14 days in which to respond.

If you fail to send a letter of claim, or if the infringing party fails to respond substantively to the letter of claim, the court can award costs against that party, regardless of the outcome of the claim at trial i.e. you may win at trial, yet still have costs awarded against you.

An Injunction

If the damage caused by the copyright infringement is ongoing and too great to wait until trial (12 to 18 months in the future), because damages that may be awarded at trial would not be adequate remedy, it will be necessary to consider applying for an injunction.

An injunction is a court order requiring a party to either cease and desist a course of action, or positively take a course of action (to hand over goods, for example).

There are strict criteria in seeking an injunction (because it is a draconian remedy), and each case turns on its facts; if you consider an injunction may be necessary, we recommend that legal advice is sought as a matter of urgency (as delay can be a bar to injunctive relief).

ADR

Absent an injunction, parties to a dispute are encouraged by the courts to attempt to resolve their dispute using Alternative Dispute Resolution (ADR). There are very effective methods of ADR, such as mediation, which can help settle claims before they are issued at court, or if a claim is issued, to settle ‘out of court’.

A party that fails to consider ADR in earnest can risk their costs position, even if they win at trial. A solicitor can advise on the best strategy and approach to ADR.

2. Initial Steps to Take

There are a lot of issues to consider when making a copyright infringement claim, however, the points listed below are the first steps we would suggest are taken on discovering that your copyright may have been infringed:

1. Time is of the essence: do not delay in seeking legal advice. Even if you do not consider that an injunction is required, or that limitation is a concern, a delay in enforcing copyright could prejudice your claim.
2. Contact: we could caution against initial contact with the infringing party until you have sought legal advice. There is a risk that initial contact with an infringer, before obtaining legal advice, may prejudice your position: it is not uncommon for inadvertent admissions to be made when trying to seek a remedy.
3. Capture: relevant evidence. It can be difficult to identify what evidence may be relevant at an early stage before speaking with a solicitor, however it’s important to capture what you consider could be relevant. With an increasing reliance on online evidence, capturing something before it is deleted/destroyed, is important.
4. Expertise: when seeking legal advice, retain a solicitor with knowledge and expertise in Copyright and Intellectual Property (IP) law. Also, you can prepare a chronology of events, and bundle of relevant evidence for review by those legally advising you (this should not delay contacting a solicitor though). There may be a  time pressure when undertaking the initial analysis of the claim, so this preparation will greatly assist your solicitor. There is a considerable amount of work to be done at the outset of a matter, and throughout, and there are plenty of traps to snare the unwary (the above considerations are only some of the important issues to be covered); it is recommended that a specialist is retained from the outset.

Contact us today

If you believe your copyright has been infringed, c a member of our team today.

Tel: +44207 632 4300