no innocent infringer: Hoffman v Drug Abuse Resistance
Education (UK) Ltd [2012] EWPCC 2
The Patents County Court ruled on the use of
19 photographs on a drug charity's website. A firm commissioned by
the charity to create its website had taken the photographs from a
government website and the defendant had understood the photographs
to be Crown copyright and thus assumed that they had permission to
use them. HHJ Birss QC rejected the defendant's argument that it
had a defence of innocent infringer under s97(1) of the CDPA and
found against the defendant for an infringement of the claimant's
copyright under s16(1)(d) CDPA, awarding damages of £10,000.00 plus
interest at 4% and costs. This case clarified the narrow nature of
the 'innocent infringer' defence as well as providing a useful
illustration of assessing quantum of damages for the unauthorised
use of photographs on websites and goes some way to dispel the myth
that the courts will always go softly on a
charity.
background
The defendant in this case, Drug Abuse
Resistance Education (UK) Limited ('DARE'), is a charity that's aim
is to help young people to understand the dangers of substance
abuse and to provide them with the skills to tackle peer pressure
relating to such abuse. In 2004 DARE commissioned its web
developers to create two websites, these websites featured 19
photographs depicting various drugs. The web developers sourced the
photographs from a government sponsored website and the Defendant
took the view that they were Crown copyright and that therefore
they had the required permission to use the photographs.
Under s4 of the Copyright, Designs and Patents
Act 1988 ('CDPA') a photograph is clearly protected as an artistic
work. It is an infringement of copyright to, without the consent of
the copyright owner, copy a copyright work (s16(1)(a)) or
communicate the work to the public (s16(1)(d)). S20(2)(b) is
expressed to include making a work available to the public by
electronic transmission at a place and time chosen by them and
therefore s16(1)(d) covers works appearing on a website in this
way.
In the case at hand there was no argument that
there was no infringement and it was accepted that Mr Hoffman was
the owner of the copyright in the work, accordingly all that
remained was to consider the defendant's s97(1) defence and the
question of damages.
s97(1) CDPA 'innocent infringer'
s97(1) provides an 'innocent infringer'
defence the purpose of which is to protect a defendant who did not
know and had no reason to believe that copyright subsisted in the
work. Where this test is fulfilled no damages award will be made
against a defendant. However in this case the defendant was aware
that copyright subsisted in the work, their belief was that they
had permission to use the work due to it being covered by Crown
copyright. Unfortunately for the defendant HHJ Birss QC stated:
"To believe that one had permission under (in this case) Crown
copyright is the opposite of a belief or reason to believe that
there is no copyright in existence." Put simply the fact that
they believed the work to be Crown copyright shows that they were
aware that the work was protected by copyright and therefore an
attempt to rely on s97(1) must fail.
The rejection of the s97(1) defence meant that
the claimant was entitled to a sum of damages.
damages
Generally speaking a claimant in a copyright
infringement action is entitled to either an account of profits or
damages. In this instance the claimant (unsurprisingly due to the
nature of the defendant's use of the work) opted for damages and
based his claim on the revenue that he lost. His calculation was
for £250.00 per photograph per year for which they were used (the
photos were used for a total of four years) plus an uplift of
50% in respect of their use as thumbnails. The total damages claim
therefore came to £28,500.00. However HHJ Birss QC was of the
opinion that this sum was too high, he identified that: "The
right sum by way of damages is the sum which a willing photographer
in Mr Hoffman's position and a willing user in the defendant's
position would have agreed upon as a charge for using the
photographs on the website."
It was the Judge's view that the fee for the
use of the photos would be a single fee, not an annual fee, and
that whilst the fee would obviously increase for a longer period of
use it would also be tempered by the fact that the defendant was
using a number of photographs. Furthermore it was considered that
as the photos are of drugs then this suggests that the customers
are likely to be in the public or charitable sectors and that:
"a willing photographer operating in that market would not
realistically expect to be able to charge a fee of that
[£28,500.00] magnitude." Importantly however the Judge
provided some support for the creative industries stating that:
"photographs only exist because a photographer like Mr Hoffman
is prepared to use his skills to produce them. He is entitled to
realistic remuneration for the use of his works."
Taking all of the above into account the Judge
ended up at a figure of damages in the sum of £10,000.00.
As for interest the claimant had claimed
interest at the rate of 8% from 01 July 2006 (the midway point of
the infringements) however the Judge felt that this rate was too
high as from July 2007 to January 2012 the Bank of England base
rate has fluctuated from 5.7% to 0.5%. Accordingly the Judge gave
interest at a rate of 4% and also provided for costs in the
claimant's favour.
comment
This is an interesting, if not groundbreaking,
case. It provides a timely reminder of the limits of the s97(1)
innocent infringer defence as well as providing a useful
illustration of assessing quantum of damages for the unauthorised
use of photographs on websites and goes some way to dispel the myth
that the courts will always go softly on a charity.
A s97(1) defence is often raised by
lay-persons who see it as a 'get out of jail free' card, in reality
however it is only really of practical use when considering works
of some age where a good level of due-diligence cannot reveal
whether or not the work is still protected by copyright. Even in
such a situation the defendant is only protected from an award of
damages and may still be liable for an account of profits as well
as the other non-monetary remedies that are available to a claimant
in a copyright infringement claim.
View a full copy
of the judgment here.
