In 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 web site. A firm commissioned by the charity to create its web site had taken the photographs from a government web site. 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 s 97(1) of the Copyright, Designs and Patents Act 1988 and found against the defendant for an infringement of the claimant’s copyright under s 16(1)(d), awarding damages of £10,000 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 web.
Background
The defendant in this case, Drug Abuse Resistance Education (UK) Limited (‘DARE’), is a charity the aim of which 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 web sites, these web sites featured 19 photographs depicting various drugs. The web developers sourced the photographs from a government sponsored web site and the defendant took the view that they were Crown copyright and that therefore they had the required permission to use the photographs.
Under s 4 of the CDPA, a photograph is clearly protected as an artistic work. It is an infringement of copyright, without the consent of the copyright owner, to copy a copyright work (s 16(1)(a)) or to communicate the work to the public (s 16(1)(d)). Section 20(2)(b) is expressed to include making a word 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 web site 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 word, accordingly all that remained was to consider the defendant’s s97(1) defence and the question of damages.
Innocent Infringer
Section 97(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 s 97(1) was bound to fail. It followed 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 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. However HHJ Birss QC was of the opinion that this sum was too high. In his view, ‘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 web site.’
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] 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, HHJ Birss QC ended up at a figure of damages in the sum of £10,000.
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 he 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 s 97(1) innocent infringer defence as well as casting some light on the quantum of damages for the unauthorised use of photographs on web sites. It also goes some way to dispel the myth that the courts will always go softly on a charity.
A s 97(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.
Jill Bainbridge, Partner, heads the Blake Lapthorn Intellectual Property team and specialises in intellectual property and information technology disputes. She is a former committee member of the SCL IT Disputes Group: jill.bainbridge@bllaw.co.uk
Ben Evans, Solicitor, trained and practised with a niche IP firm before joining Blake Lapthorn in 2012.
