Many thanks again, and you are correct in that there was no profit derived from using the image.
The image with Getty is Rights Managed and I actually telephoned Getty (without disclosing the details) and they tell me that Stockfoods authorised them to use the image, as people tend to look there.
They could not comment on the Stockfood claim for exclusivity.
Copyright infringement - are we liable and what should we do
Just to be clear, it appears that Stockfood are perfectly entitled to seek reasonable recompense for this alleged infringement, and what they are engaged in is not the sort of speculative invoicing which is rife in the USA at present, but following some fairly adverse court decisions here, far less so in the UK. If you have the time, take a look at this court judgment from a couple of years ago in which the judge was highly critical of the complainant's letter before action. I suggest that you read the first six paragraphs to set the scene, then jump to para 17, as the bit in between concerns how the complainant obtained the defendant's details, which doesn't apply here.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Update - Have now received the full claim from Stock Food (am I able to attach this anywhere here?). Am waiting to hear back from Solicitor.
There is one paragraph that seems at odds with a previous reply
Their letter states "Infringement detection and Collection fees are contractual obligations to service providers and cannot be waived or discounted. These are contractual charges which have been upheld when claimed by StockFood in the Intellectual Property Enterprise Court. All contracts are confidential in nature, but available to a court for review should StockFood be forced to escalate the matter"
Are they correct or just trying to 'put the frighteners on'?
There is one paragraph that seems at odds with a previous reply
Their letter states "Infringement detection and Collection fees are contractual obligations to service providers and cannot be waived or discounted. These are contractual charges which have been upheld when claimed by StockFood in the Intellectual Property Enterprise Court. All contracts are confidential in nature, but available to a court for review should StockFood be forced to escalate the matter"
Are they correct or just trying to 'put the frighteners on'?
Hi Gprit,
They may well have incurred costs in detecting your use of this image, but that would not be a legitimate cost which they can include in damages if the matter went before a court. Obviuosly if the matter is settled outside court then they will no doubt insist on this cost being included, but it is not automatic that you need to accept their proposal. Ultimately if negotiatiuons to settle break down and the matter goes to court, I think it highly unlikely that the court would entertain an award in respect of enforcement costs, simply because they are something the company chose to contract out, and they would have had to pay the fees to the search company irrespective of whether your use had been detected or not. It's rather like them claiming you owe them money towards their business rates because they have to pay them.
They may well have incurred costs in detecting your use of this image, but that would not be a legitimate cost which they can include in damages if the matter went before a court. Obviuosly if the matter is settled outside court then they will no doubt insist on this cost being included, but it is not automatic that you need to accept their proposal. Ultimately if negotiatiuons to settle break down and the matter goes to court, I think it highly unlikely that the court would entertain an award in respect of enforcement costs, simply because they are something the company chose to contract out, and they would have had to pay the fees to the search company irrespective of whether your use had been detected or not. It's rather like them claiming you owe them money towards their business rates because they have to pay them.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Update
Solicitors all want fees to look at the case(!) but have forwarded to Government Interllectual Property Office and am awaiting reply.
Two things:
1) I requested sight of proof that they had a contract with the photographer owner - they refused to send as I am not a solicitor!!
To me - no proof = no payment whatsover.
2) I noticed that their website (where the image is displayed) is actually based in the USA, so am not sure whether this is governed by the Copyright rules there or in the UK?
Solicitors all want fees to look at the case(!) but have forwarded to Government Interllectual Property Office and am awaiting reply.
Two things:
1) I requested sight of proof that they had a contract with the photographer owner - they refused to send as I am not a solicitor!!
To me - no proof = no payment whatsover.
2) I noticed that their website (where the image is displayed) is actually based in the USA, so am not sure whether this is governed by the Copyright rules there or in the UK?
Hi gprit
The stock company are not bound to send you proof that they are authorised to act on behalf of the photographer, but they will look pretty silly if the matter does go to court and they can't provide proof. That was the essence of why the Media CAT case fell apart and led, in part, to the solicitor Andrew Crossley being suspended by the SRA for two years, declared bankrupt and his company ACS Law being wound up.
There is nothing to stop a US company from suing in the UK courts, using the UK law. The standard rule is that the jurisdiction where the harm occurred is the correct one for hearing the case (the so-called forum conveniens). The UK courts are bound by various treaties (such as the Berne Convention) to protect the copyright of citizens of other signatories in the same manner as that of UK citizens provided that this does not result in a longer term of protection than would be available in the country of origin. This means that they can also conduct negotiations short of actual litigation with a UK defendant, but clearly this must be done within the terms of the UK law. If you gain the impression that they are using the US law as the basis of their claim (due to any terminology or references to the statutes) then you are at liberty to point out their error and ask them to identify the basis in UK law for their claim. Regrettably this won't provide you with any chance that they will just go away!
The stock company are not bound to send you proof that they are authorised to act on behalf of the photographer, but they will look pretty silly if the matter does go to court and they can't provide proof. That was the essence of why the Media CAT case fell apart and led, in part, to the solicitor Andrew Crossley being suspended by the SRA for two years, declared bankrupt and his company ACS Law being wound up.
There is nothing to stop a US company from suing in the UK courts, using the UK law. The standard rule is that the jurisdiction where the harm occurred is the correct one for hearing the case (the so-called forum conveniens). The UK courts are bound by various treaties (such as the Berne Convention) to protect the copyright of citizens of other signatories in the same manner as that of UK citizens provided that this does not result in a longer term of protection than would be available in the country of origin. This means that they can also conduct negotiations short of actual litigation with a UK defendant, but clearly this must be done within the terms of the UK law. If you gain the impression that they are using the US law as the basis of their claim (due to any terminology or references to the statutes) then you are at liberty to point out their error and ask them to identify the basis in UK law for their claim. Regrettably this won't provide you with any chance that they will just go away!
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
The second bit about USA servers I can understand, but surely in any action the defendant has the right to see proof of ownership of eg of a photograph?
eg I/anyone could easily set up a website....watermark some images and then send claim letters demanding payment for breach of copyright to other sites that use the image?!!
eg I/anyone could easily set up a website....watermark some images and then send claim letters demanding payment for breach of copyright to other sites that use the image?!!
Hi gprit,
Yes, once things become formal litigation then you might be entitled to see proof of copyright ownership, but at this stage it's more like a game of poker where each side is trying to gauge the strength of the other's hand. That's why I suspect they have said they will only release such proof to a solicitor, because taking on a solicitor indicates a degree of resolution to defend the claim. The pre-action protocols which the courts expect parties to follow before litigation, require parties to provide sufficient information to allow the other side to make sensible decisions about their conduct, and not following these protocols can affect a complainant's chances of gaining full damages if successful at trial.
On your second point, there are many cases, not just involving copyright but also patents, where the claims made by the complaining party are entirely spurious. Indeed for a while, some criminals were sending out bogus claims purporting to come from Getty, which netted them quite a bit of money. It would have been hard to spot these as a scam, because Getty itself has been accused of operating a form of extortion in the past, somewhat similar to what you are experiencing with stockfood, which suggests this has become the industry standard.
Yes, once things become formal litigation then you might be entitled to see proof of copyright ownership, but at this stage it's more like a game of poker where each side is trying to gauge the strength of the other's hand. That's why I suspect they have said they will only release such proof to a solicitor, because taking on a solicitor indicates a degree of resolution to defend the claim. The pre-action protocols which the courts expect parties to follow before litigation, require parties to provide sufficient information to allow the other side to make sensible decisions about their conduct, and not following these protocols can affect a complainant's chances of gaining full damages if successful at trial.
On your second point, there are many cases, not just involving copyright but also patents, where the claims made by the complaining party are entirely spurious. Indeed for a while, some criminals were sending out bogus claims purporting to come from Getty, which netted them quite a bit of money. It would have been hard to spot these as a scam, because Getty itself has been accused of operating a form of extortion in the past, somewhat similar to what you are experiencing with stockfood, which suggests this has become the industry standard.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Ongoing......
After a gap of two months my client has again received a demand for £2400 in respect of this image. They have not yet provided proof that they manage the rights and from what date. Further research shows it all over the place, including The Times in 2011.
Anyway, my question now is this:
They originally sent the demand and threatened court action and divulged all the details to steve@domain name. I pointed out to them on 24 August that he has NOTHING to do with the business - he is just the Chef. This latest demand (4 November) is again sent to him. The demand is also headed <restaurant_name> Mr Michael White.
Michael White has NOTHING to do with the current business. He was the owner in 2009 and left around 2012. Would the client be justified in just sending it back as unknown?
Now, if they do give proof of RM and the date, the licence fee of £155 + 20% admin will be paid, and if they go to court for the remainder of their exorbitant claim it will be resisted in court.
However - given that they have divulged confidential information to an employee (and despite previous warning they should not do so) then surely a counter claim for reputational damage could be lodged, as it undermined confidence in the business by the employees - and probably beyond?
Anyway, my question now is this:
They originally sent the demand and threatened court action and divulged all the details to steve@domain name. I pointed out to them on 24 August that he has NOTHING to do with the business - he is just the Chef. This latest demand (4 November) is again sent to him. The demand is also headed <restaurant_name> Mr Michael White.
Michael White has NOTHING to do with the current business. He was the owner in 2009 and left around 2012. Would the client be justified in just sending it back as unknown?
Now, if they do give proof of RM and the date, the licence fee of £155 + 20% admin will be paid, and if they go to court for the remainder of their exorbitant claim it will be resisted in court.
However - given that they have divulged confidential information to an employee (and despite previous warning they should not do so) then surely a counter claim for reputational damage could be lodged, as it undermined confidence in the business by the employees - and probably beyond?
Hi Gprit
Sorry about the delay in replying - I've been away for a couple of weeks.
Breach of confidence is tricky. It requires that the information concerned was imparted to the person in confidence and that they might reasonably be expected to have known that. A third party who gets to hear of the confidential information cannot be sued for breach of confidence for making the information available to anyone else. And I doubt if the Date Protection Act will be much help here because the facts at issue aren't really personal data.
Sorry about the delay in replying - I've been away for a couple of weeks.
Breach of confidence is tricky. It requires that the information concerned was imparted to the person in confidence and that they might reasonably be expected to have known that. A third party who gets to hear of the confidential information cannot be sued for breach of confidence for making the information available to anyone else. And I doubt if the Date Protection Act will be much help here because the facts at issue aren't really personal data.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Thanks Andy....."....in confidence and might reasonably be expected to have known that".
Surely just using the email address on the website to send threats of court action, without establishing who that person is (someone who is nothing to do with the ownership of the restaurant), causes damage to the owner's reputation? Certainly they would perceive the business (and their employee) in a different way. (No issue here of taking action against the employee if he has discussed with others).
Am just thinking here that if the license fee was paid and IF they threatened further action for their excessive other demands, my client could in turn threaten them with a counter claim for reputational damage.
Also, presumably IF any court documents were sent to <restaurant_name> Michael White, they could be returned 'unknown'? It is up to Stockfood to establish the owner.
Surely just using the email address on the website to send threats of court action, without establishing who that person is (someone who is nothing to do with the ownership of the restaurant), causes damage to the owner's reputation? Certainly they would perceive the business (and their employee) in a different way. (No issue here of taking action against the employee if he has discussed with others).
Am just thinking here that if the license fee was paid and IF they threatened further action for their excessive other demands, my client could in turn threaten them with a counter claim for reputational damage.
Also, presumably IF any court documents were sent to <restaurant_name> Michael White, they could be returned 'unknown'? It is up to Stockfood to establish the owner.
Hi Gprit
I agree that the way Stockfood are handling this is very amateur. However if they do resort to litigation and start sending complaint forms to a real, albeit uninvolved, person, then it would be foolish for that person to ignore the court documents. The outcome could be a default judgment against them.
I suggest that you get some proper legal advice, either from a solicitor or Citizens Advice, as this is now getting serious.
I agree that the way Stockfood are handling this is very amateur. However if they do resort to litigation and start sending complaint forms to a real, albeit uninvolved, person, then it would be foolish for that person to ignore the court documents. The outcome could be a default judgment against them.
I suggest that you get some proper legal advice, either from a solicitor or Citizens Advice, as this is now getting serious.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007