Speculative invoicing or protecting your ipr
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Written on 07
Speculative invoicing is in essence the sending of tens of
thousands of letters before action demanding payments in the region of
£500++++++ the tactic is to scare people into paying the sums by
threatening to issue court proceedings. Proceedings are normally never
issued. This is often because the economic model for speculative
invoicing means that it is more profitable to collect monies from those
who pay rather than incur substantial costs in pursuing those who do
not pay in court.
I have personal experience of this method of recovering
proceedings. Between 2006-2010 I acted for many hundreds probably more
of individuals who had received letters threatening legal action for
copyright infringement. All the Solicitors responsible were disciplined
and it seemed the process was brought to an end. These matters mainly
Getty Ireland (Getty)
For the last few years Getty continues to send letters
threatening legal action. It winds me up as I feel I am benefiting from
the process too as I offer the same advice, and send the same denial
letter. Itís a game of repeat. I am receiving three to four enquiries a
week from web designers, their clients and other companies referring to
a letter received from Getty Ireland or its debt collection agents
threatening legal action. I charge a minimum sum of £350+VAT.
They usually receive two letters and more threats but as far as I am
aware no claims have been issued by Getty.
Whilst I understand the argument concerning court costs surely
the correct forum is the small claims court? They could make an example
of someone and use this to encourage people to settle.
However there is a big problem for Getty?
Getty is not the owner of the work. It makes this clear in the
Letter of Claim. It states it is the exclusive licensee of the
copyrights, the maths is quite staggering. Letís say (and I dont know)
20,000 letters are sent out claiming £495 for each infringement this
would still generate about an waful amount of money.
But can an exclusive licensee bring a claim? Well yes
but.....we need to see the licence. How can any lawyer advise to settle
or defend until such time as the licence is produced?
UK law is contained in the Copyright Designs and Patents Act
1988 ( 'CDPA')
The CDPA 1988 includes the following provisions:
92.(1) In this Part an 'exclusive licence' means a licence in writing
signed by on behalf of the copyright owner authorising the licensee to
the exclusion of all other persons, including the person granting the
licence, to exercise a right which would otherwise be exercisable by
the copyright owner.
Provisions as to damages in infringement action
(2) The court may in an action for infringement of copyright having
regard to all the circumstances, and in particular to-
(a) the flagrancy of the infringement, and
(b) any benefit accruing to the defendant by reason of the infringement,
award such additional damages as the justice of the case may require.
Rights and remedies of exclusive licenseee
101.(1) An exclusive licensee has, except against the copyright owner,
the same rights and remedies in respect of matters occurring after the
grant of the licence as if the licence had been an assignment.
(2) His rights and remedies are concurrent with those of the copyright
owner; and references in the relevant provisions of this Part to the
copyright owner shall be construed accordingly.
Have arguable wrongs been committed against Getty?
Maybe. Maybe not. Probably. Who knows? Getty NEVER (not in my
experience) produces a copy of the licence which allows them to fulfil
the requirements for an exclusive licence in section 92(1) CDPA ie so
as to give Getty title to sue the intended Defendants for infringement
of copyright; so how can anyone advise a Client to settle with Getty if
it fails to satisfy the basic requirements under the CDPA.
Its simple;if I had an exclusive licence from someone and a
third party uses it without my permission I will sue and when asked to
produce the licence, I'll happily do so.
If not, then I'll shurrup!
Written by Michael Coyle
About the Author
Solicitors offer services and advice for litigation,
commercial contracts, Intellectual Property and IT legal agreements. We
are experts in commercial law with a heavy emphasis on Intellectual
Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of
Higher Court Advocates and we are the appointed Solicitors to the
largest webdesign association in the world, the United Kingdom Website
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