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success for photographer against innocent infringer

29 February 2012

THE CASE

David Hoffman v Drug Abuse Resistance Education (UK) Limited

The Patents County Court

19 January 2012

In a short and concise judgment His Honour Judge Birss QC found, perhaps unsurprisingly, that innocence was not a defence to copyright infringement. In this case, where the defendant mistakenly believed that it was entitled to display the claimants photographs on its websites, the defendant also sought to blame its website designer, and the source of the photographs (a website operated by the Department of Health), for the infringement which took place. Although liability was straightforward to establish, the judgment also provides helpful guidance on quantifying damages in cases concerning the online infringement of photographic works.

The Facts

In this case an anti-drug charity, Drug Abuse Resistance Education Limited ("D.A.R.E.") displayed 19 photographs of various drugs on its websites www.dareteens.co.uk and www.dare.uk.com. Copyright in the photographs was owned by David Hoffman, a professional photographer.

D.A.R.E. did not dispute that it displayed the photographs on its websites, nor did it dispute that the photographs were copyright works, or that Mr Hoffman was the owner of those works.

D.A.R.E.s defence to the claim surrounded the circumstances in which the photographs were obtained. In particular, D.A.R.E. had engaged the services of a third party website designer to design its websites and the designer, having obtained the photographs and included them on the website, incorrectly informed D.A.R.E. that the photographs were subject to Crown Copyright and were therefore free to use. The website designer had provided D.A.R.E. with this information as a consequence of misleading information available on the Department of Healths "Talk to FRANK" website - the website from which the photographs had been obtained.

The defence, encapsulated in a letter from D.A.R.E. (no formal defence was filed because D.A.R.E. was in liquidation), claimed simply that D.A.R.E. "had not intentionally or knowingly infringed copyright" and that "the Department of Health and their misleading web site were the cause of any infringement". The courts job was to determine whether these particular circumstances could enable D.A.R.E. to defend a claim for damages.

Liability

s.16(1) of the Copyright Designs and Patents Act 1988 specifies the various acts which the author of a copyright work has the exclusive right to do. Carrying out any of these acts without the permission of the author constitutes an infringement of a copyright work contrary to s.16(2).

Although Mr Hoffmans particulars of claim did not specify which of the acts set out in s.16(1) had been carried out by D.A.R.E. the judge had no difficulty in finding that infringement had taken place.

Because infringement occurs where any of the acts referred to in s.16(1) are carried out without the permission of the author, the fact that D.A.R.E. believed it had permission to use the photographs was held to be irrelevant. Where establishing liability for primary infringement is concerned, neither intention nor knowledge are a requirement. The issue of liability therefore turned on which infringing acts had been committed and by whom.

According to the judge, someone had clearly copied the photographs by putting them on the servers hosting D.A.R.E.s website. However it was acknowledged that it could be argued that the act of copying was committed by the website designer, and not by D.A.R.E, since it was the website designer who obtained the photographs from the Talk to FRANK website and placed them on D.A.R.E.s websites.

Notwithstanding this, it was held that, D.A.R.E. had committed the act of communicating the work to the public. Communication to the public" includes making the relevant work available to the public via electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them. The fact that the circumstances of the case arose, according to D.A.R.E., as a consequence of the actions of its website designer was irrelevant for the purposes of this act of infringement. In this case, Mr Hoffmans copyright works were communicated to the public via D.A.R.E.s websites. D.A.R.E. was the owner of those websites, and it was D.A.R.E. who was ultimately responsible for those websites and liable for infringement under s.20.

Damages

Although innocence is not a defence to liability, it can in certain circumstances provide a partial defence by excluding a claim for damages. The relevant provision is s.97 of the Act which applies if the defendant did not know, and had no reason to believe, that copyright subsisted in the work. If s.97 applies, the defendant will not be required to pay damages.

In this case D.A.R.E. believed that it was entitled to use Mr Hoffmans photographs because it incorrectly understood that the content of the Talk to FRANK website was covered by Crown copyright. The defence under s.97 only applies where the defendant does not believe that copyright subsists. Clearly this did not cover the circumstances of this case - D.A.R.E. believed that copyright did subsist in the works; it just wrongly believed that it was owned by the Crown. Accordingly, s.97 did not apply and D.A.R.E. was liable to pay damages.

In terms of the level of damages, Mr Hoffman claimed for £28,500 in damages calculated by reference to National Union of Journalists (NUJ) standard rates. Working on this basis, Mr Hoffman claimed a rate of £250 per photograph per year (19 photographs used over 4 years) with an uplift of 50 as remuneration for D.A.R.E.s further use of each of the photographs in thumbnail form.

The court assessed damages according to a sum which a willing photographer in Mr Hoffmans position and a willing user in D.A.R.E.s position would have agreed upon. On this basis, basis the judge awarded a lower sum of damages - £10,000 - by taking a number of discounting factors into account. In particular the Judge believed that: although photographers would typically agree a rate per photograph, a substantial volume discount would have been agreed for the licensing of 19 photographs; the fees for a 4 year licence would not have scaled linearly with the number of years (i.e. additional discounts would apply having regard to the length of the licence); the use of thumbnails would not have commanded additional fees; and not all 19 photographs were displayed on the website for the whole of the 4 year period.

Judge Birss also had regard to the nature of the photographs and the markets within which the parties operate. Taking account of the fact that drugs were the subject matter of the photographs, the judge concluded that the likely market for such photographs would be charities and public sector organisations who would be less likely to pay a high price for a copyright licence.

The judge also applied interest at a rate of 4 (£2,444.57) which was determined by reference to the Bank of England base rate during the relevant period. Mr Hoffman had previously claimed a rate of 8.

Comment

This decision helpfully summarises the legal position in relation to innocent infringement - both in terms of establishing infringement, and also in relation to the availability of the s.97 defence.

In particular, the case highlights just how narrowly the scope of s.97 defence is. It seems that it is only likely to apply in relation to old works (i.e. where the defendant believes that copyright has expired) or in relation to works in which copyright protection seems unlikely to apply.

The case also helpfully highlights some of the relevant factors which the court will take into account when quantifying damages where copyright in photographic works is infringed.

This article was first published in Intellectual Property Magazine

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