Claimant’s Guide to Copyright Infringement

Copyright protects original literary, dramatic, musical and artistic works, including films, music and computer programs.  It protects against the copying of another’s work and the physical expression or representation of an idea but it does not protect against independent development of the same idea. 

Copyright ownership allows the owner to prevent the unauthorised use of the work, such as making copies or uploading the work to the internet.  It is very important to appreciate that copyright law is intended to prevent copying but does not provide a monopoly; it does not matter if a similar or identical work already exists if it has not been copied.    

Copyright automatically arises on the creation of the work and lasts for 70 years after the death of the author in relation to dramatic, artistic, literary and musical works.  The creator of the work is usually the first owner of the copyright in it. 

Types of copyright infringement

There are two types of copyright infringement – primary copyright infringement and secondary copyright infringement.

Primary copyright infringement occurs when someone carries out certain acts regarding the work without the permission of the author.  These acts include: 

• Copying the work;
• Issuing copies to the public;
• Renting or lending the work to the public;
• Performing, showing or playing the work in public;
• Communicating the work to the public;
• Making an adaptation of the work; and
• Importing infringing copies.

Infringement arises where one of the restricted acts mentioned above is committed in respect of the whole or a substantial part of the work, either directly or indirectly. 

It is a question of fact in each case whether there has been an infringement.  If someone copies the whole of a copyright work, clearly there will be infringement.  In most cases however the position is not so clear-cut and the key test is whether a substantial part of the copyright work has been copied. 

Infringement does not depend on the copier having seen the original work or knowing that he/she was copying.  There can still be infringement if the copier has information in relation to the original copyright work regardless of whether the copier knew they were copying or intended to copy the work. 

Secondary copyright infringement claims deal with those further down the supply chain.  The following are infringing acts if carried out without the licence of the copyright owner in relation to infringing copies of copyright works:

• Importing into the UK (other than for private and domestic use);
• Possessing or dealing;
• Providing means for making copies (including transfer by a telecommunications system);
• Permitting use of premises for an infringing performance; and
• Supplying apparatus for an infringing performance.

Unlike in cases of primary copyright infringement, there is no cause of action for secondary copyright infringement unless the defendant knows or has reason to believe that the material or particular activity is infringing.

How to bring a breach of copyright claim

Breach of copyright claims can be extremely technical and complex meaning they are often dealt with by specialist courts in both England and Wales.  For this reason, we always recommend that claimants in copyright infringement proceedings instruct specialist intellectual property solicitors.  It is also quite common for a specialist intellectual property barrister to be instructed as well in order to represent claimants in court.

If infringement proceedings are contemplated, a claimant should first write a letter of claim to the potential defendant(s).  This letter of claim should put the defendant(s) on notice of a claim and give the defendant(s) a reasonable amount of time (normally between 14 and 28 days but could be up to 3 months in complex cases) to respond to the claims made against them.  The letter of claim must sufficiently identify the copyright works to enable the defendant(s) to evaluate them and formulate a view on infringement.  The best way to do this is to provide a copy of the copyright work or a link to an online example.  All parties involved in copyright infringement claims are expected to act reasonably in exchanging information and evidence prior to court proceedings being issued.

If the claim cannot be resolved then it is likely court proceedings will need to be issued.  Claims for copyright infringement are brought in the High Court, specifically in the Intellectual Property List of the Business and Property Courts.  Lower value claims are brought in the specialist Intellectual Property Enterprise Court (IPEC) where capped costs operate.  IPEC also has its own small claims track which deals with copyright infringement cases which are worth less than £10,000. 

Only the copyright owner or someone with an exclusive licence to the copyright work can bring infringement proceedings.  If the copyright in the work is jointly owned, any of the joint owners can issue a claim. 

To issue court proceedings, specific court documents will need to be drafted.  These are a claim form and particulars of claim.  There will also be a court fee payable to issue court proceedings which depends on the value of the claim and the relief sought.  We always recommend that these documents are drafted by a barrister with assistance from a solicitor in order to ensure they comply with the court rules.  These documents will identify the parties, state the cause(s) of action and the remedies sought. 

The defendant(s) will then be given an opportunity to file and serve a defence to the claim (normally within 28 days of the court proceedings being issued but extensions of time can be agreed). 

After that, the court is likely to order the parties to take the following steps to prepare the case for trial: disclosure of documents, witness statements and experts reports.  It is our experience however that most copyright infringement cases settle without the need for there to be a trial.          

Remedies available if claim successful

There are various remedies available to copyright holders where copyright infringement is proven, including:

• Interlocutory relief – including Norwich Pharmacal orders, search orders, freezing orders and interim injunctions;
• Orders for delivery up;
• Seizure of infringing copies and other articles;
• Forfeiture;
• Final injunctions;
• Damages or an account of profits; and
• Recovery of costs.

Norwich Pharmacal orders refer to the power the UK courts have to make an order for the disclosure of the identity of a wrongdoer against anyone who, albeit innocently, becomes involved in the wrongful act of copyright infringement.  These orders can be of considerable practical importance where a copyright owner has evidence that third parties have infringed copyright but is unable to find out their name(s) and address(es). 

A search order provides for the preservation of the subject matter of an action, or of documents and articles relating to the action.  It requires a defendant to allow the claimant’s solicitors to search the defendant’s premises and remove all items covered by the search order.  In order to obtain a search order, a claimant must show, among other things, an extremely strong case for copyright infringement, that the defendant’s actions have resulted in very serious potential or actual damage to the claimant’s interests and that there is clear evidence that incriminating documents or items are in the defendant’s possession and there is a real possibility that the defendant may destroy or dispose of such documents or items. 

Claimants in copyright infringement claims may also seek a freezing order in order to preserve property or evidence before any judgment can be obtain or satisfied.  In order to obtain a freezing order, claimants must have a good arguable case that copyright infringement has taken place and also provide solid evidence that there is a real risk that any judgment ordered by the court will not be satisfied. 

An interim injunction is an injunction granted before trial.  A copyright owner may want to seek an interim injunction to prevent further copyright infringement before the trial takes place.  In order to obtain an interim injunction, a claimant must satisfy the court that there is a serious question of copyright infringement to be tried and that the claimant has a real prospect of success of proving copyright infringement.  If the court is satisfied of this, it must then consider the “balance of convenience” test which requires the court to consider whether the inconvenience to the defendant, if the injunction was granted, would outweigh the convenience to the claimant.  Where the factors appear to be evenly balanced, the courts will try to preserve the status quo. 

Copyright owners can also apply to the court seeking an order for delivery up of infringing copies of the copyright work or articles specifically designed or adapted for making copies of a particular copyright work which the defendant has in his possession, custody or control.  A copyright owner also has the right to seize infringing copies in respect of copyright work that the copyright owner would be entitled to apply for an order for delivery up.  In addition to this, an order can also be obtained from the court that infringing copies or articles seized or delivered up are to be destroyed or forfeited to the copyright owner. 

A final injunction is a court order prohibiting a defendant from infringing the claimant’s copyright further.  This will be granted to a claimant who succeeds in establishing copyright infringement at trial. 

A claimant who succeeds in establishing copyright infringement can also recover damages.  Claimants can elect either for an account of profits or an inquiry into damages.  Damages are intended to put the claimant in the position it would have been in had the copyright infringement not occurred, while an account of profits is intended to make the defendant give up the profits made as a result of the copyright infringement.  Before deciding whether to elect for an account of profits or an inquiry as to damages, the claimant is entitled to seek certain outline commercial information about the defendant. 

Finally, successful claimants in copyright infringement proceedings are normally entitled to recover their costs from the unsuccessful defendant.  As a general rule, normally 70% of costs are recoverable unless capped costs apply.  Conversely, an unsuccessful claimant in copyright infringement proceedings will be liable to the defendant’s costs in successfully defending the claim.

Our specialist intellectual property disputes team routinely advises on a broad range of disputes relating to copyright along with other intellectual property disputes relating to trade marks, patents, confidential information and data protection.  The team is also highly skilled at advising on design rights and reputation management issues and are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally.  If you need advice on copyright or other intellectual property infringements, please do not hesitate to contact a member of the team today.