Reformation Publishing Co Ltd. v Cruiseco Ltd. [2018] EWHC 2761 (CH) (22 October 2018)

Summary

The High Court has recently awarded ordinary and additional damages for copyright infringement after two famous songs were used in a publicity video by the Defendants without obtaining the Claimant’s consent to do so.

When assessing damages, the Court considered what a reasonable licence fee would have costed to use the songs in the video.

The Defendant was also ordered to pay additional damages under Section 97(2) of the Copyright, Designs and Patents Act 1988 (CDPA) because the Defendants’ breach was flagrant and reckless.  

The Court also considered whether by placing a link to the publicity video on a filesharing website the Defendants actually communicated it to the public for the purposes of Section 20 of the CDPA.

The Facts

The Claimant was Reformation Publishing Co Ltd, a record label founded by the band Spandau Ballet. It brought an action against Cruiseco Ltd (and its Australian parent company), a travel company operating cruise holidays. 

The Defendants engaged a third party to produce a publicity video promoting one of its cruises which had a “back to the 80’s” theme. The clip used extracts from two of Spandau Ballet’s hit songs “Gold” and “True”. The publicity video was posted on the Defendants’ website and also put on a filesharing platform – Hightail – which was shared by link to several UK travel agents. The Defendants’ encouraged the travel agents to share the links on social media.

The Defendants did not obtain permission or a licence to use the songs from the Claimant who owned the copyright. 

Four days after the video clip was posted, the Claimant contacted the Defendants. The Defendants immediately removed the video clip from their website and told the travel agents who it had shared the video with not to use it. The Defendants did not, however, remove the video from the filesharing platform until two days before trial, almost a year after it was uploaded.

After a one-day trial, the Defendants accepted that it had breached the Claimant’s copyright. The case then concerned the assessment of damages flowing from the breach of copyright.

Assessment of Damages

Before Mr Justice Nugee it was accepted that the measure of damages was what a reasonable licence fee would be to use the two songs.

Mr Justice Nugee had to decide how long the Defendant’s infringement continued for. The publicity video was posted on 26th June 2017. It was removed a few days after, but it remained live for almost a year on the filesharing website. The songs used in the video were iconic. There was substantial value to the Defendants in being associated with them, even though they were only up for a short time. If the Defendants had sought the Claimants permission to use the songs for one year, then they would have been charged a licence fee. It was decided that this would be £155,000. The Claimants were awarded 25% of the fee as damages for copyright infringement, amounting to £38,750.

Mr Justice Nugee found that uploading the publicity video on the filesharing platform did not constitute a “communication to the public” for the purposes of Section 20 of the CDPA because it was only shared with the travel agents and there was no evidence of the videos being forwarded on to members of the public. The infringing activity only lasted for four days, not a year and, therefore, there was no finding of continuing infringement by the Defendants.

Additional Damages

The Claimant was also awarded additional damages under Section 97(2) of the CDPA. The Defendants had engaged an agent - Artists Network Australia - to produce the publicity video. The agent did not clear the publishing rights with the Claimant. Mr Justice Nugee found that the Defendants agent had acted “flagrantly” in that it had simply “decided to chance it”. The Claimant was therefore awarded £25,000 additional damages.

Summary

Popular and iconic songs are powerful marketing tools and are regularly used to promote products and services. Artists and publishers are well aware of the value attributed to their works – and regularly charge licence fees for their use. This is recognised by the Courts as demonstrated by this recent case. The Defendants were somewhat reckless in posting their publicity video without having the necessary permission from the Claimant. They paid the price for infringing the Claimant’s copyright  - however, the Defendants’ exposure could have been much worse if it was found that their video was shared with the wider public via social media.

Our specialist intellectual property solicitors department regularly advise clients on copyright and other intellectual property issues. If you need advice on any intellectual property infringement, then please contact a member of the Intellectual Property team today.