Copyright Aid

Hi

I hope someone can help me here.

in 2019, I was contacted by a German solicitor about a copyright infringement. (i live in the UK) The solicitor is legit.

I had used an image 5 years ago that was, and still is in the public domain, At the time I checked all the information (exif) to check to make sure that it was legit. There was no data, and when I did a search via Tineye it came back with the same image on thousands of sites, mostly downloads for wallpapers.. and still even now the same image on thousand of wall paper sites to download. I even gave them the link to the public domain site where I got it from, and despite this, it is still on there. The DMCA copyright is directly under the image, but not been removed after 2 years of informing them of this. If this were a legit claim, then surely, the image should have been removed by now??

I get that anyone can upload images that is not public domain to these sites, but the fact that the image has not been removed via the DMCA link is a bit suspicious? I believe that this image is a bait for people to use.. also now they have insisted I sign a cease and desist stating that I can not download this image onto my computer, yet it is freely available to download everywhere!?

so the story is, after 2 years of emails back and forth, I (my solicitor) have made an offer to end this, but the whole thing stinks and wondering if anyone can help me here, as I feel strongly that if this is bait, then it is going to keep happening to other victims?

thanks in advance

hi Smartenough,

As you have already consulted a solicitor it's unlikely we can suggest anything new to help out. Much will depend on whether you (or your solicitor) in offering to settle the matter, has implicitly accepted liability for infringement. I would hope no solicitor would do such a thing, so I will assume that you could still walk away from the settlement negotiations even at this late stage.

You don't mention how much this German claimant is seeking in damages, but as it will now be more difficult to bring a claim in the (post Brexit) UK courts than it would have been in 2019, it may no longer be economic for them to keep pursuing you. By 'them' I mean the supposed copyright owner, not the German solicitor who will happily go on racking up fees until his client pulls the plug. Furthermore even if they bring a claim in the German courts, it is no longer as cheap and simple to get a judgment of an EU court enforced in the UK. You also don't mention if the claimant has produced sufficiently convincing evidence that a) he is the author of the image, and b) that it is being made available for licence via a bona fide website. Without such evidence you can basically ignore their demands.

Copyright infringement is a matter of strict liabilty and so if this is a genuine claim the mere fact that you thought the image was being made available for free doesn't absolve you from liability. However, the fact that other instances of infringement, such as the one you mention with the DMCA takedown notice, are being ignored may allow you to use the defence of laches. This means that where the copyright owner has failed to take timely action to protect his rights in other instances of infringement, he has forfeited them in your case. It's not a sure-fire defence, but if you can produce enough evidence to support your version of events, I think a UK court would be sympathetic to the laches argument.

And even if you lost on the liability issue, under UK law, you would only be liable for damages which equated to the normal fee that a licence would have cost you, and applying the IPEC small claims rules, the claimant would not be entitled to have his legal fees awarded against you. Obviously if the image was only ever being made available for free, it is difficult for you to determine the genuine fee (as opposed to the amount being claimed by the German solicitor) for that particular image, and instead it might be necessary to use the fee structure for a similar image found on a stock agency site as a comparator.

I'm sure your solicitor will have already explained all this to you and so this probably doesn't take you much further forward.

Unfortunately and image being freely available on the internet does not mean it is free to use. There may be thousands of people all publishing the same image but copyright still belongs to the creator unless he or she has assigned it to somebody else in writing. Copyright in a photograph lasts for 70 years until after the death of the photographer so almost all colour photographs you see on the internet are copyright protected. To argue that because many people are infringing you can too is like saying one is entitled to steal a TV during a riot because many other people are also stealing TVs at the same time.

There are many wallpaper and similar websites in the internet who simply trawl the web unlawfully copying photographs and then offer them as a "free" download. Unless they have been authorized by the copyright holder ( which is extremely unlikely ) then their offers of free do not trump the creators copyright. Furthermore most of these wall paper websites carry no name and address and are frequently registered in exotic places like Panama , china or Russia. Most reasonable people would know that these sites are not legitimate and a claimant would likely argue that you were extremely reckless in using such a site to source your photograph.

I don't think a defence of laches has an reasonable prospect of success. I know of no case before the IPEC where this has been successful , nor indeed any European case. It is the nature of the internet that as soon as a work such as a photograph is published on the web, it is immediately copied all over the web, especially amongst these wallpaper type websites. It would be unreasonable to expect a copyright holder to find and contact all of these and it might well be the case that he has sought to contact them but they have ignored his take down demands.

With regards to Brexit, this may well be very interesting. How it works out is yet to be seen. As Andy has said it is likely to be expensive and complex, however that cuts both ways. Maybe the claimant will give up, but if he does not and he successfully brings a case within the EU to be enforced in the UK then you could end up with a massive judgement debt. There are many creators who have seen their livelihoods decimated by infringement who have the motivation to bring cross border cases and naturlly the legal profession will be especially keen to bring them.

Andy above raises the issue of proving the purported copyright holder is indeed the copyright holder. This is actually very easy for the claimant to do. If the image is published anywhere with the authors name on or adjacent then he is deemed to be the copyright holder unless you can prove to the contrary. The relevant legislation is section 104 (1)(2) of the Copyright, Designs and Patents Act 1988 , Article 5 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and also Article 15 of the Berne Convention for the Protection of Literary and Artistic Works. In most cases the claimant will simply point to the photograph displayed on his or her own website or that of a photo agent. You might find a wallpaper website in an exotic location which also claims to own the copyright but such claims would not stand up to any examination. the original photographer will be in Possession of high resolution or RAW file versions of the image, plus he or she will have similar images taken at the same time and never published. Your wallpaper site is unlikley to even talk to you let alone produce any evidence they own the copyright, in fact most such sites state explicitly they do not own the copyright.

Andy J makes a further point that the claimant must show "that it is being made available for licence via a bona fide website". Unusually I am going to completely disagree with Andy J on this point. There is no requirement under English or European law that an image must be offered for sale from a website, bona fide or otherwise, for it to be protected by copyright law. If it is so offered it will help establish a value but even amateur photographs that are not offered for sale are protected by copyright ( see Absolute Lofts South West London Ltd vs Artisan Home Improvements Ltd & Darren Mark Ludbrook [2015] EWHC 2608 (IPEC) where £6300 was awarded for the unlawful website publication of amateur photographs )

At the end of the day, you have used somebody else's property and not paid for it. I think the best solution both legally and morally , is to try to negotiate a reasonable out of court settlement.

In both Germany and the UK, the photographer is entitled to his fee. Very many German photographers use a fee published by the Mittelstandsgemeinschaft Foto-Marketing (mfm) . Its a sort of industry average price based on a survey of photographers and photography agents asking what they charge. Its widely accepted by the German courts and you can purchase a copy here https://bvpa.org/shop/?v=df404b8bca6a or no doubt your claimant's solicitor will tell you the relevant amount.

There is an interesting difference between German and English law. Under German law the copyright holder can only claim his normal fee plus legal costs , whereas in England the claimant may also claim "additional damages " which often amount to several times the normal fee for the work.

The unusual thing about German law is the claimant is also entitled to a signed contract from you under which you declare all infringements and promise not to infringe again. Its called an "Unterlassungserklärung " and if its not agreed and signed then the claimant can take further legal steps in court ( Unterlassungsklage ) which may make for a very large legal bill. Its usually best to agree not to further infringe, however if you are not sure then seek advice from a German lawyer specialising in intellectual property law. Google " Rechtsanwalt für Urheberrecht " ( lawyer for copyright ) in google.de. I would imagine most if not all speak excellent English.

Fatty wrote: Thu May 20, 2021 3:09 pm Andy J makes a further point that the claimant must show "that it is being made available for licence via a bona fide website". Unusually I am going to completely disagree with Andy J on this point.

Hi Fatty,

I think that if I had actually said that, I would disagree with me too. I didn't say or mean that the claimant 'must' show that a licence was being made available for it to be protected by copyright. What I meant but did not say clearly is that, since the OP couldn't find the image on the copyright owner's site when he did the reverse image search, the onus was on the claimant to show how the value of the claim had been arrived at.

The bit about the image being available under a licence is to establish the market rate for it. As I am sure you are aware once claims management companies like Pixsy and KodakOne etc become involved in claims they vastly inflate the amount being demanded, way over the market rate for the same image, which is what standard damages would be based on. Even where liability for infringement is accepted, there is no moral reason to give in to such unreasonable demands, through ignorance of the law. Since the OP doesn't tell us, I have no idea whether what was being demanded in this case was unreasonable or not.

All your other points are entirely valid. Where we differ it is that I took the OP's explanation of where the image came from at face value since he had already consulted a solicitor and was still sticking to his story, whereas you have assumed that he must have obtained an infringing copy. I have no idea which of us is right, but at least the OP now has been given both sides of the issue to assist him when deciding where to go from here.

Incidentally an Unterlassungserklärung would be unenforcible in the UK.

And J "the onus was on the claimant to show how the value of the claim had been arrived at"
Ah we are back in harmony now, yes indeed the burden of proof is on the claimant to prove the value of the work and the easiest way to establish that is to see where he or she is selling it. If the copyright holder cannot be found selling the images then one would have to ask whether they are a genuine professional or a hobby photographer. Both are protected by copyright law but damages would be higher for the professional being deprived of his livelihood.

> "companies like Pixsy and KodakOne etc become involved in claims they vastly inflate the amount being demanded"

OK , we are not quite in 100% harmony. If I was saying something like that I would insert the word sometimes.

Most of these recovery companies are based in Germany and stick to the German MFM price list. The MFM is derived from a survey of professional photographers and agents, thus it is a reasonable representation of what a time served professional creator would charge. Where it goes wrong is where the MFM price list is applied to new or hobby photographers who have never charged MFM in their life. If the copyright holder normally sells on Alamy for 40 GBP then a claim for 1000 GBP would to me seem unreasonable unless the claimant can show exceptionally flagrant circumstances.

Photography is sold at a wide range of prices, some photographers are happy to licence free of charge and others want a 4 figure sum. The cheaper end of the scale is easy to see because cheap price is the unique selling point of the microstock agencies and are widely publicised. Top photographers are not likely to shout about their prices because they are not exactly a selling point, however they still need to prove to the court the value of their work and they are still entitled to claim for their high prices even if the defendant would never have considered such high priced work.

Image values are discussed in Jason Sheldon v Daybrook House Promotions Ltd [2013] EWPCC 26 https://www.bailii.org/ew/cases/EWPCC/2013/26.html . in this case the court valued the use at £5,682.37 which I understand is rather more than recovery companies ask for.

In the UK the courts do award additional damages, so the amount for illegal use will usually be well above the normal licencing price. Unfortunately IPEC small claims track cases are not routinely published but from those that come to light it seems 2x to 6x normal the normal value of the work is the norm. ( total of principle and additonal damages ) The 20x in absolute Lofts was unusual because the defendant had made a lot of money from the infringement.

>Unterlassungserklärung would be unenforcible in the UK - indeed however the risk is the claimant running up legal costs in Germany and then being able to recover those costs in the UK. While the UK does not have an Unterlassungserklärung, claimants in the UK can have the court order full disclosure of infringements and if defendants do not remove infringements, or worse repeat them, then they may well face very significant additional damages. I guess a case of different legislation doing the same thing.