Copyright Aid

Hi everyone,

Looking for some reassurance. I entered a contract with a retail business to supply art for their shop. It was a 5 year deal to supply a new set of art each year, replacing the old ones with the new. In the first year, everything went to plan. The art was supplied and went into their store where they used them as an attraction to draw customers (commercial use). In year 2, the excuses started to roll out and it was nearly 2 years before the second set of art went into their store. The store had effectively used the first set of art for an extra 12 months without paying. When it came to time for the next replacement, more excuses and it was clear they were going to keep fobbing me off so it was years behind. I told them they had breached the agreement and since they used the art for longer than agreed without paying, I was entitled to invoice for use of the art. It was made clear to them from the outset that any use of the art not agreed to would be subject to fees. I duly invoiced them and the store are saying they are not due ay money and won't pay.

Was I within my rights to invoice them for the use of the art? They definitely used it to attract customers to their business - i.e the marketed the art as a reason to visit their store.

Thanks

Hi sb and welcome to the forum,

As you may probably appreciate there is no copyright issue involved in your question. If the store was displaying your original artwork with your permission then that does not infringe any of your rights as a copyright owner. See section 175 (4)(b)(i) of the Copyright Designs and Patents Act 1988.

The problem you have outlined relates to the licence agreement with the shop and that is a matter of contract law. From the details you have supplied it sounds as if raising an invoice was justified, and since they still continue to fob you off, it should be possible to bring a claim in the county court using the small money claim system. You can read about that here: Small Money Claims

However if you think, based on your dealings with them so far, that the shop are likely to dispute the terms of the contract, before starting down that route you should get some legal advice, which we can't give here. For instance the shop could claim that there were no specific terms in the licence which limited its duration. This would then become an action for breach of contract which, generally speaking, would fall outside the sort of claim which can be heard under the small money claim system.The likelihood of success in a breach of contract action hinges on the nature of the original agreement: was it verbal or put into writing? If it was verbal, is there any paperwork (eg exchange of emails etc) which support your version of the agreement?

Suing for breach of contract could get expensive so you need to consider if the amount of money you are seeking in compensation justifies the cost. Also you are strongly urged to consider mediation (sometimes referred to as Alternative Dispute Resolution or ADR) as a much less expensive route, assuming that the other party agrees to be bound by the adjudicated outcome.

I hope this helps.

Hi Andyj

Thankyou for the great reply. Really appreciated.

The contract was drawn up by solicitors and the terms are fairly clear. The art was for a one year period. The store marketed this in its online pages that it was an annual thing and they emailed people on their list to say that they were replacing the art on a set date, so they knew it was for one year. I think it would be pretty hard for them to dispute the terms. My t&cs are published online that any use of work outwith or unauthorised use of would be subject to additional fees - this was made clear to them at the outset. ADR is mentioned in the contract and it was offered to them but they're just not responding.

The art was not to be altered in any way but I discovered only recently that they created composite displays and placed their logos over images. I had no idea they had done this and didn't sign off on it. Am I right in thinking this this aspect is infringement?

Hi sb,

A written contract with precise t&cs sounds excellent.

Yes, if they have made an adaptation of your work, by editing any of it and applying their logo without permission, then that would be infringement of your copyright. Unfortunately. although there is a straightforward restriction on making adaptations without authority in the Copyright Designs and Patents Act (section 21) this does not apply to artistic works. Therefore you would need to use a different path to frame a case for infringement by unauthorised copying contrary to section 17 since clearly the work must have been copyed in order to introduce the changes such as the logo etc.This would be the case even if you had not explicitly included a term in the contract to say that they may not alter your work. Furthermore, putting their logo on the artwork may well constitute possessing and dealing in a work bearing a false attribution contrary to section 84(5)(b) and section 84(6)(b) CDPA. This is slightly less straightforward since the main thrust of section 84 is to protect individuals from having work falsely attributed to them which is not the case here. However the subsections concerning possessing (s. 84(5)(b) and dealing in (s. 84(6)(b)) an artistic work which has been falsely attributed, are not expressly restricted to that type of false attribution described in subsection (1) and it is arguable that the mere fact that a false attribution exists in relation to the work may be sufficient to prove the claim. However if your work already contains an attribution to you, either within the image itself or immediately adjacent to it, then it may be hard to prove that the logo amounts to false attribution and it is not just an unauthorised alteration in the same way as cropping the image. The legal arguments involving false attribution may be beyond what a litigant in person might be able to put before the court.

Since they have not taken up your offer of mediation, you can apply straightforwardly to the county court for payment of your invoice as a money small claim. Alternatively you could pursue this as an infringement claim through the Intellectual Property Enterprise Court (IPEC) small claims track (see details here about to do this). These are two separate, mutually exclusive, ways of going forward. The first is arguably more simple in that you would just be claiming the amount owed due to the unpaid invoice. The second route via the IPEC would involve proving the infringement which you could probably do fairly easily as a litigant in person to save money as it is, leaving aside the false attribution issue, relatively straightforward. By going to the IPEC small claims court you could seek damages (the amount in the invoice) and additional damages due to their unreasonable behaviour and, if you decide it is worth it, flagrancy due to the breach of your moral rights per section 84(5) and (6). In effect this might double the damages payable. Using the IPEC route, in addition to claiming damages, you could also obtain an injunction to stop them using your work in the future. This would cost you more upfront as two fees are payable to the court. However if you use a solicitor to help you draft your claim and this includes asking the court to order an injunction, you can claim up to £270 for this legal work. To be honest you won't get much legal advice for £270. However, apart from this special case, any other legal costs will not be recoverable from the other party even if you win. That last point applies to both the county court and the IPEC small claims routes. That said, you almost certainly wouldn't need a solicitor with the money small claim.

Hopefully the threat of legal action will make them see sense and agree to settle without the need for litigation. Just to give you some encouragement, here is a link to an article about a photographer who successfully represented himself in the then newly created IPEC small claims track over the unauthorised removal of his logos, in addition to copying of his work.

Thanks Andy,

This is super helpful and a lot to get my head around.