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Copyright Infringement Advice Example


Lawdit Solicitors - Expert Author

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4 February 2011

Below is an example of how our advice for copyright infringemet is given to solicitors and other lawyers that have clients that require legal advice. The content of this advice was written based on specific facts and are not to be relied upon as if they were given on a gernalised basis.


Thank you for your instructions. The content of this advice is based on what I have been supplied to date and from what I have seen.

Your client's rights


(1) Artist work namely, photographs.

(2) Literacy work namely, text on the website

(3) Typographical layout namely the way the website pages have been set out

Unregistered rights for XXX

Infringement: Copyright

Based on what I have seen, there is a clear claim for infringement of your client's copyright. The strongest claim being that for infringement of their artist work (photographs etc). To be able to succeed with a claim for infringement of artist work, your client will need to be able to show:

Subsistence of title

(1) That they are the author of the works (i.e. did your client, or an employee of your client, actually take the photographs?). Or did your client buy the photographs on their website from a database? If yes, are they merely a licensee or did they buy the rights in the photos? Please can you find this out?

(2) If they are the authors (meaning that they took the photos) are they the legal owners to the photos? There can be main reasons why this is not the case. If the photographs were taken by them or by an employee, legal ownership will be automatic. However, if they were purchased, most people assume that once they have paid for the images, they become the legal owner - this is not true. The CDPA states that for legal title to pass, an assignment must be executed in writing.

Subsistence of rights

(3) One needs to be able to show that the work is capable of copyright protection. Too often people create work that is an adaptation or insufficient skill labour and effort has been deployed rendering the work void of copyright protection. Since the artist works are photographs, I do not have any issue that you client will get caught out by this heading.

Damages suffered

(4) Your client will need to be able to show what damage they have suffered as a result of the infringement. One head of damage is to ask what the client would have received (or lost in this case) if the infringer had paid a license for the images. Alternatively, what would the client be able to charge the infringers as a reasonable royalty fee for use of the photographs on their website. Both calculations will mean that the other side have to pay a sum of money to compensation your client.

The infringement of literacy work is not clear from what I have seen, but based on the fact that the term XXX is still visible on the infringer's website to date, it would suggest that perhaps there are other parts of the websites (including the HTML or other areas of the site’s source code) that have been copied for ease of creation. I did notice that the website is down. Please comment.

In terms of typographical arrangement, this is always worth throwing in to the other side when the letter of demand is sent to them.

Substantial copying

The underlying question is has the other side copied a substantial part of your client's work. The issue of substantial part must be judged by applying the normal rule that substantiality is about quality rather than quantity. As to the relevant quality, this again must be considered by reference to the reason why copyright should be in the work, which is to protect and reward the investment of skill and labour in the presentation and layout of the edition. The question is therefore whether there has there been a copying of a sufficient amount of the relevant skill and labour expended on the creation of the new work. In your client's case, the photographs are identical and there can be no doubt that there is infringement. All that your client will need to show is that they had title in the works from the outset.

Infringement: Passing off

I will not repeat or rehearse the legal requirements to passing off, simply because it is my understanding that you will already know this and do not need to be spoon fed (with respect). Therefore, my view is as follows:

Goodwill/Misrepresentation - Your client has been trading for 8 years. It is plausible that during the 8 years, many people would have come to appreciate the brand (XXX) and also visitors to the website would have begun to recognise the look and feel and the general appearance of the website enough so that if they came across another website that had the same photos (for example only) that the visitor would be confused or that there would be a likelihood of confusion between the websites. This is conceivable.

Damages - only test your client would need to be able to satisfy is to show that it has suffered or will suffer damage as a result. Loss of business is always hard to show, but to assert that business would have been received by the other side as a result of the infringement would be easier to assert. We would need to think very carefully about this area if we are to plead passing off in any claim or letter before the claim.

I would like to know what the client has done during the 8 years to be able to assert that it has goodwill. I know you say that they have been involved in certain publications and other advertising locally, but I would be keen to know what sort of money has been invested in getting the type of exposure you say and also how widespread is this exposure?

Remedies (might expect to seek at trial)

1. An injunction to restrain the other side from infringing your client's copyright.

2. Order for destruction or delivery up of the infringing works.

3. An Order that the other side advertise the contents of only court judgment in a local magazine etc (always a good one).

4. Damages

5. Interest

6. Costs

Strengths and weaknesses

The copyright claim against the other side is your client's strongest claim as long as we can show title. The passing off is always going to be an uncertain claim because it will rely on satisfying 3 limbs.

Steps going forward with costs projection

I propose you prepare and send a letter of demand to the other side putting them on notice of the infringement. If the exchange of pre-action correspondence fails to resolve the matter, then issue proceedings for (at this stage only) for copyright infringement only.

Costs for preparing a letter of demand can be between 450-750 + VAT depending on what is pleaded.

An estimate for costs for litigating are as follows (including outside expenses and office supply charges but excluding VAT) in respect of (1) accepting your/your client's instructions; (2) drafting the claim form; (3) drafting the particulars of claim; (4) preparing all appendices relating to the claim; (5) supplying you/your client with a proposed set of papers for your/your client's consideration; (6) finalising and incorporating your/your client's comments; (7) correspondence with the court; (8) issuing papers into court; (9) serving the papers on the other side formally (the method to be determined); (10) drafting and sending the certificate of service to the court; and (11) any further miscellaneous matters throughout; to be in the region of 2,500 and 3,000 plus VAT. Court fees are likely to be in the region of 500 - 1000 (no VAT) for commencing the claim, but could be more depending on how much damage your client considered it has suffered.

I hope the above is helpful. Any questions, please feel free to contact me on 023 8023 5979.

About the Author

Lawdit 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 Designers Association.

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Article Published/Sorted/Amended on Scopulus 2011-02-10 14:12:46 in Legal Articles

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