Unwitting copyright contravention

[NMac]

Hi,

I have searched the forum for an answer to my situation without success. It would appear that I have, unwittingly, contravened copyright by placing a Getty image on my website. I say unwittingly because I genuinely believed I had permission to use the image. The circumstances are:

1. For 11 years I have run my own personalised gifts web site selling my own products. I also sell other merchants products on the same site through affiliate marketing.
2. One of the merchants whose products I promote, has given me (and by implication 100s of other affiliates), permission to use the images from their website to populate my web site. Unfortunately, this is a word of mouth type arrangement and I am not aware of this permission being set out in writing – but see below.
3. Having received a legal letter from Getty I emailed the merchant to confirm that I did have permission to use the images from their web site, the reply was, “Yes you can use our images if they are used to exclusively link to the gifts on our site”. I can confirm that that is exactly what I do.
4. I then informed the merchant of my predicament with Getty and the replies to my emails after that were exceptionally fast. I suspected the merchant was back peddling and in our final email he tried to differentiate between the images of their products, which I could use and images that were “creative”, which in his words were, now, “not something we would want our affiliates to use”. (The image in question is a generic photograph of a man opening a present which decorates my Father’s Day page. The link on the image and the “See All Our Father’s Day Gifts Her” button under the image go directly to the merchant as required by the merchant). The same image was being used by the merchant on his site, and my aim was to give some kind of visual continuity for the visitor as they were taken from my site to the merchant’s site.
5. As a result of the Getty letter, and being unable to differentiate which merchant images I should and should not be using, I have removed every image from my web site that I do not own (even the clip art!!), until I get this matter sorted out. This has completely decimated my web site on the run up to Christmas.

I have at all times genuinely, and sincerely, believed that I have had permission to use ALL the images from the merchant’s web site. They have never previously differentiated between those images which were permissible to use and those which were unacceptable to use. Furthermore, having just spent a lot of money having my own Christmas stock photographed I am exceptionally annoyed that I find myself in this position. Any and all advice as to where I go next would be more than welcome.

[AndyJ]

You don't mention what Getty said about the alleged infringement, for instance whether they just wanted the image removed or more likely they were seeking a fee for usage.
I don't think you need to panic, though. This sounds like a case of primary infringement, namely "issuing a[n infringing] copy to the public", for which there are a number of remedies a claimant may seek if the matter were to go to court. The main one is damages. Any damages which might be awarded against you by a court would normally be based on what Getty says is the fee/royalty applicable at the time. However, if you can convince a court that you had no reason to believe the copy infringed copyright, then section 97(1) of the CDPA 1988 would mean Getty were not entitled to damages. Here's what the section says:
"97. Provisions as to damages in infringement action.
— (1) Where in an action for infringement of copyright it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy."
The other remedies are: an account of profits, an injunction to prevent further use of the image, and seizure of the infringing copy. There are other remedies but they don't apply here. Since there is no attempt on your part to sell the image or gain financially as a direct result of using the image I think it most unlikely that a court would consider a request for an account of profits. And seizure of the image doesn't really apply here since we are taliking about a data file.
So, assuming that you feel confident that you could convince a court of your innocent use of the image, supported by the emails you have from the merchant, then you can point out to Getty that they have very little chance of gaining financially by taking you to court, and as you have already removed the image, they may see sense and not pursue the matter. However, if you have any doubts, or Getty do wish to pursue the matter, it would be advisable to consult a solicitor who specialises in IP law for advice before things get out of hand.
It is sensible to ensure that you have no other images on your site which could infringe copyright. If you do use free clipart, make sure that you make a screen copy of the page on the site where you get image from, and of their page which says the art is free of royalties, as this will cover you to a large extent in the future, when of course the actual site from which you got the clipart may have disappeared or no longer hold that particular image. I hope that when you had your stock photographed, you obtained a licence from the photographer to say you could use the images, as technically, unless it was done by an employee of your company as a part of their job description, the photographer will own the copyright, even if you commissioned the shoot.

[NMac]

Andy J,

You are a hero - I have had two sleeless nights over this because Getty wants removal of the image AND GBP574.75. I'm certain I can meet the standards that you say I should to prove myself innocent and I now feel more confident about replying to Getty. Thank you very, very much for that comprehensive answer.

[AndyJ]

Glad to have been of assistance. Since you face a tussle with Getty, which may ultimately involve you paying some fee for your unwitting use of their image, you can start from the standpoint that the fee they have asked for is not fair and reasonable. I suspect that it contains a 'punitive' element and does not just reflect their normal fee for usage. You can appeal to the Copyright Tribunal for a fair assessment of the fee payable. Their website is here: http://www.ipo.gov.uk/ctribunal/ctribunal-about.htm and is pretty much self-explanatory. Getty may also shy away if you insist on testing their 'fees' in this way, as they will be loath to have a judgement go against them as this removes their ability to demand unreasonably large fees from others in the future.

[AndyJ]

Just a quick follow up.
I was aware that Getty http://en.wikipedia.org/wiki/Getty_Imag ... nforcement was renown for making, in the opinion of many people, excessive demands where infringement is alleged to have taken place, so I did a bit of hunting around and came up with a few links which may be useful, if only so you know that you're not the only one in this situation.
The first one is an American site, so looks at the problem from the perspective of US law which differs from UK law in several aspects. However it contains a lot of common sense advice and seems to have been checked by a lawyer. http://extortionletterinfo.com/

The second site is a little more idiosyncratic and not 100% accurate as far as the UK law is concerned, but it does also contain a number of links (which I haven't bothered to check out) on the subject. http://www.zyra.info/getstu.htm

An article on the general subject: http://www.theregister.co.uk/2006/12/11 ... copyright/

And finally, the outcome of one case that Getty has taken to court: http://www.out-law.com//default.aspx?page=10367

[NMac]

Thank you for your continued updates. I have looked at the links and I suggest that they, together with your clear advice, are going to be invaluable to me in this matter.
I will endevour to ensure I keep you informed of the final outcome of this case.
Once again, thank you for your time and effort on my behalf.

[NMac]

Hi Andy. Well it's now been three months since I took your advice regarding this matter and I am pleased to say that I have had no further dealings with G*t*y. I wrote to them back in October and simply stated the facts in much the same way that I have done above. I finished the letter with a paragraph that stated I would defend myself vigorously under the section of the Act you have quoted. They have not replied to my letter. Consequently, I am hoping I have fallen off their radar and they will continue to gather low hanging fruit elsewhere. As you suggest, pursuing a case against me that they may not win might not be in their best interest.

Naturally, I would have preferred some correspondence from them that confirmed this matter was closed - I still dread looking in the mail box each day. But until I have to deal with them again may I take this opportunity of thanking you very, very much for your advice (and if you're not charging for it may I suggest you have a PayPal account where donations can be made to you or your favourite charity..........)

All the best for 2011

Neill

[AndyJ]

Thanks for the update Neill. Like you I hope that they have moved on to pursue others they see as easier targets. I am happy to have been of some help.
Andy

[NMac]

I knew I shouldn't have been so confident. No sooner had I posted my comments above I receive another letter from GTTY (do you think they monitor this forum )

Anyway, they have replied to my rebuttal with, "...copyright legislation provides for strict liability, meaning that you can be found liable for infringement regardless of your level of knowledge of the infringement or your intent". They have given me “one last chance” to pay the £600 before taking legal action for damages which could amount to more than the £600 currently being demanded.

I’ve had another look at the section of the Act you suggested as a defence and I’ve also looked again at some of the links you kindly provided. These links suggest that this particular defence is rarely used because copyright naturally exists at the time of conception and consequently, unless extenuating circumstances exist, I should automatically be aware that the image was subject to copyright. My defence is not that I didn’t know it was subject to copyright but that I was given carte blanche permission to use images from a merchant’s web site to populate my site believing that the merchant had authority to allow me to use those images. The web site owner failed to state that I could not use this specific image. IF he had I wouldn’t have used it. I doubt if I could rely on the merchant to back me and anyway, it appears GTTY are only interested in pursuing the end user – me!!!!!!

I’ve also had a look at the Copyright Tribunal link you sent me and I have emailed them today to see if this is the sort of case they would consider. I am awaiting their reply.

I am encouraged by a comment made at the end of the link you gave where although GTTY actually won their case. It stated, “Courts will usually award as damages the normal commercial fee that would have been paid by a company to license the image in the first place in such cases and award additional damages only where a company can show that the breach of copyright was flagrant”. I’m happy that my breach was honest and certainly not flagrant.

Everything I’ve read about GTTY shows them as bullies. Having spent 14 years in the Army and 18 years as a police officer I really don’t like bullies. I’m up for a fight but fearful of losing big style. What would you suggest is the worse that could happen if I fought? Do you have a good (but cheap!!) contact for a copyright solicitor or do I swallow my pride and pay the bully?????????

[AndyJ]

Hi Neill,
That is indeed bad news. As you say, the section I pointed to in an earlier reply does hinge on the knowledge (or the assumption that) copyright exists in a work.
But you are right that these are bullying tactics and the fee demanded is disproportionate to the actual licence fee or royalty you would have had to pay had you obtained the image directly from Getty. The courts take a number of things into account when awarding damages, not least of which is the assessed damage to the copyright owner's economic interest in the work resulting from your infringement. Clearly in this case, that was minimal because others still can and probably do licence this image from Getty. I'm not sure if this was what is referred to as micro-stock, but if it was then the principle is that the image is re-licensed many times over for a relatively small fee.
If it's any consolation the Courts have recently taken a dim view of a simiilar kind of bullying tactic as practised by lawyers chasing file-sharers. Whilst this is a slightly different area of copyright law (and one which the recent Digial Economy Act 2010 addresses), it is heartening to see Michael Coyle's comments in this article: http://www.lawdit.co.uk/reading_room/ro ... he-end.htm

[AndyJ]

Neill, If you are still visiting the forum here are couple of new links which may or may not be of use. The first concerns file-sharing and the type of letters I referred to in my last posting, but since the way the two schemes work (demanding disproportionately high fees to avoid litigation) is the same, there is some sound advice here: http://www.beingthreatened.com/resource ... ndbook.pdf. That's a pdf file by the way.
The second link is absolutely on the subject of Getty, so definitely worth a look. Also note that their link to the Federation of Small Businesses only works if you are registered on that site. However it does indicate that the FSB may be a source of further advice/support in your case. http://www.dynamicsmedia.co.uk/blog/pos ... -Scam.aspx
Andy