Responding to a Copyright Infringement Claim
This publication gives general guidance only. It may not always apply and should not be relied on in place of specific legal advice.
Receipt of Notification
Receiving a notification alleging that you have infringed a third party’s Copyright can be alarming. A letter of claim is likely to demand that you:
· immediately cease and desist the alleged infringement;
· provide a substantive response (in an unrealistically short timescale) to the claims made; and/or
· pay financial compensation and legal costs.
The letter of claim will then likely say that a failure to comply completely with the demands made will result in a claim being issued against you (without further notice to you). The letter may also threaten expensive injunction proceedings, or even criminal prosecution.
How do you respond to such a claim?
How you respond to a letter of claim (or any form of copyright infringement notification) in many cases can dramatically affect the chances of an early resolution of the dispute.
Before a substantive response to the claim is drafted and sent, the following are important initial considerations and steps:
1. Timing of the Response
The Civil Procedure Rules (which govern disputes before the courts) provide that a response should be provided to a letter of claim within 14 days of receipt. For a very complex case, a response can be delayed by up to 3 months, however this should not be relied upon.
In our experience, time will go very quickly following receipt of the letter of claim, particularly where an injunction may be threatened; for an injunction, the timescale for a response will be much shorter, a matter of 24-48 hours in a lot of cases.
Therefore, it is recommended that legal advice is sought as a matter of urgency.
Whether you believe you have sufficient time or not, seeking legal advice and organising representation will take time: for example, solicitors will need to consider the facts and timeline; evaluate the evidence, liaise with third parties (as required), determine the legal merits of the case, provide advice, determine strategy, take client instructions, and then draft a substantive response (which will require client instructions to finalise). It can be very difficult to achieve all of this in 14 days.
When a solicitor is first instructed, they will put the claimant/claimant’s solicitors on notice of their acting and seek further time to prepare a substantive response to the claim. However, it cannot be guaranteed that extra time will be granted, or it may be a case where extra time cannot be allowed; time is always of the essence.
2. The Merits of the Claim
Once instructed, a solicitor will need to then assess the merits of the claim, which includes (and this is not an exhaustive list) considering:
Does the work in question attract Copyright protection?
A Copyright holder has the right to protect their work by stopping others from using it without permission; it is a right that can also be licensed and sold. The Copyright Designs and Patents Act 1988 is the relevant legislation from which the rights of a Copyright holder derive.
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.
As a right, Copyright lasts for 70 years from end of the calendar year in which the author dies, so it’s important to check whether the Copyright is still in force in respect of older works.
Provided that the work in question attracts (on its face) copyright protection, the next question to consider is:
Is the correct person enforcing Copyright in the work?
A Copyright owner, or exclusive licensee to a Copyright work, has the right to enforce Copyright in a work.
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.). However, this can be varied by contractual agreements, employment, and assignments of Copyright; the lack of registration of Copyright can make it difficult to establish ownership in some cases.
It may be necessary for the solicitor to investigate further and seek evidence of ownership, however the next question is a key (and often overlooked at the outset):
Is the claimant out of time to bring their claim?
The law provides that a claim of Copyright infringement must be brought within 6 years of the date of infringement (the so-called ‘Limitation Period’). 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 the claimant is too late, they cannot bring a claim. If, however it appears the claimant is in time to bring their claim, the next question is:
Has there been an actual infringement of Copyright?
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:
· Distribution of copies
· Renting or lending copies
· Performing, showing, or playing in public
· Making an adaptation
· Putting on the internet
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
However, the above defences should be approached with caution: the exceptions are tightly drafted and can leave little scope to avoid liability.
If it appears that an infringement of Copyright has occurred, then it’s important to also consider whether what has been demanded by the claimant is a legitimate remedy:
Copyright Infringement Remedies
There are a variety of legal remedies available to a Copyright holder, including:
· Damages - representing either the loss suffered to the Copyright holder (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.
Whilst the claimant may be seeking immediate enforcement of their rights, to take a claim through the courts to a final trial can be a long and expensive process. Therefore, before issuing a claim in the High Court or IPEC, parties are encouraged by the courts to attempt to resolve their dispute ‘pre-action’ using Alternative Dispute Resolution.
Alternative Dispute Resolution
There are very effective methods of Alternative Dispute Resolution (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. The solicitor you instruct can advise on the best approach to ADR.
Conclusion: Initial Action
In consideration of the above, we would recommend that the first steps taken on receiving a notification of Copyright infringement:
1. Time is of the essence: do not delay in seeking legal advice.
2. Contact: try not make initial contact the claimant until you have sought legal advice. There is a risk that an initial response sent before obtaining legal advice may prejudice your position: it is not uncommon for inadvertent admissions to be made when trying to placate a claimant.
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.
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 is likely to be a time pressure when undertaking the initial analysis of the claim, so this preparation will greatly assist your solicitor.
4. Expertise: when seeking legal advice retain a solicitor with knowledge and expertise in Copyright and Intellectual Property (IP) law.
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.
At Saunders Law, Will Charlesworth is an IP specialist litigator with recognised expertise and considerable experience. Click here to view his profile.
Contact us today
If you have been accused of infringing Copyright, or any other Intellectual Property rights, you can contact Will Charlesworth, heading up our IP Team.
Email: [email protected]
Tel: +44207 632 4300