Graeme Di Rollo

Keeping track of who is using your copyright-protected content online can be a daunting task.

While it is true that the internet has given rights holders significant reach, allowing them to easily licence content around the world, with greater exposure comes greater opportunity for copyright infringement.

We are often approached by companies and individuals who have fallen victim to online infringement: from those who licence images to consumer review websites.

In each case, rights holders must strike a delicate balance between protecting their existing customers and deterring unauthorised use of their content.

For photographers and image providers, this means making sure that there is a system in place for quickly identifying unauthorised image use and recovering compensation from those who are using their content without permission.

For consumer review bodies and similar platforms, it is essential that websites using their logos and certificates without permission are prevented from misleading consumers into purchasing goods or services on the basis of a fraudulent rating.

Perhaps most importantly, rights holders need to be seen to be taking an active interest in enforcing their copyright: to preserve the value of their IP, protect their customers who have purchased licenses through legitimate channels and, for review / rating bodies their reputation as a source of reliable information.

In the absence of an effective enforcement strategy, infringers might consider the “reward” of infringement to outweigh the risk of getting caught.

As many rights holders will no doubt be aware, many infringers consider that it is preferable to ask for forgiveness than it is to get permission.

So how can rights holders police the use of their content online?

The solution is more straightforward than you might think:

• Detection of copyright infringement
• Enforcement of copyright
• Copyright litigation proceedings
• What costs can copyright holders recover?

Detection of copyright infringement

As the internet is so vast, many assume that the chances of being caught out for copyright infringement are miniscule.

However, this is not the case.

These days, copyright compliance agencies work directly with image libraries, photographers and other rights holders to track down cases of online copyright infringement.

This is often done through use of sophisticated digital fingerprinting technology, which matches the imagery on websites with imagery / logos owned by the relevant rights holder in an online trawl. This is not reserved for photographs and can extend to your company logo or ratings symbols etc.

The copyright compliance agency will then draw up a list of legitimate websites that have licenses to use the rights holder’s content and a list of infringing websites that don’t. On the basis of these lists, rights holders can then decide which infringements are best to pursue from a commercial perspective.

All of the above is subject to the rights holder having done adequate due diligence to make sure that they do indeed own the copyright in the work.

For example, if the work is created by a contractor and not an employee, the copyright will vest in the creator of the work.

It is important to ensure that agreements are in place which assign the copyright in any works not created by an employee during the course of their employment.

Enforcement of copyright

Once infringements have been detected and reviewed, we can write to infringers asking for the unauthorised imagery to be taken down.

In addition to removal of the imagery, we seek a settlement payment for the period of unauthorised use of the copyright work.

Where rights holders have a regular royalty rate for their content, and are able to evidence that equivalent licences have been granted using that rate, damages are typically assessed by reference to the royalty the infringer would have paid had they purchased a licence prior to using the rights holder’s content.

Where the infringement is particularly egregious, and the infringer has demonstrated either a willingness to infringe copyright or sufficient carelessness as to the possibility of infringing copyright, we can request that the infringer pays additional damages in light of their “flagrant” copyright infringement under section 97(2) of the Copyright, Designs and Patents Act 1988 (the “1988 Act”).

Copyright litigation proceedings

Where all else fails, we can raise proceedings against the infringer for copyright infringement under the 1988 Act.

Aside from dealing with the immediate threat posed by the infringement, litigation can be a useful tool in the rights holder’s arsenal as part of a wider enforcement strategy.

In particular:

• Raising awareness: Litigation can raise public awareness of copyright infringement and the risks of using content without permission.
• Improving recoveries: Having published judgments to refer to will greatly improve rights holders’ negotiating positions with infringers. Infringers will be less likely to ignore correspondence when rights holders have a track record of raising successful court proceedings.
• Deterring infringements: Publication of positive judgments can act as an effective deterrent against future infringement as well as an incentive to purchase licences through official channels.

The majority of copyright infringement claims are heard in the Intellectual Property and Enterprise Court (IPEC) in London and the IP Court in the Court of Session, Edinburgh.

The remedies for copyright infringement set out in the 1988 Act apply on a UK-wide basis. Among the most common are:

• Interim relief – including interim injunctions (“interim interdicts” in Scotland)
• Damages (including additional damages where applicable) or an Account of Profits
• Order for delivery up of infringing material
• Publicity order – allowing the judgement to be publicised at the infringer’s expense;
• Costs / expenses awards
• Permanent injunctions / interdicts.

What costs can copyright holders recover?

In UK litigation, the general rule is that the loser has to contribute towards the winner’s legal costs.

The level of costs that will be awarded in any particular case is calculated according to a statutory scale and does not equate to the actual legal costs that the winner has incurred.

Graeme Di Rollo is a solicitor at Burness Paull