What remedies are available in a claim for copyright infringement?

There are a number of remedies available for copyright infringement and this article looks at them.

Injunction

An injunction is a Court order requiring a person to do an act or prohibiting them from doing an act. Normally in a copyright infringement claim the copyright owner will seek an injunction restraining any further copyright infringement.

Normally the obtaining of an injunction in a copyright infringement case is a 2 stage process, which begins with the “Claimant” (the person bringing the claim) applying for an interim injunction. An interim injunction prohibits the “Defendant” (the person against whom the claim is brought) from carrying out any further copyright infringement pending the trial of the matter.

In order to obtain an interim injunction the Claimant will need to satisfy the Court that there is a serious issue to be tried and that damages would be an inadequate remedy. An interim injunction will not normally be granted where a Defendant has pleaded a Defence of fair dealing, where the Claimant has delayed in applying for the interim injunction, where an injunction would not be in the public interest, where the Claimant has acquiesced in the infringement, where the application has been made prematurely, or where there is substantial doubt as to whether the Claimant will succeed in its claim for copyright infringement.

In cases of urgency or where there is a likelihood that the Defendant will hide or destroy evidence of the copyright infringement the Court may grant an interim injunction without the Defendant having notice of the application.

If an interim injunction is granted the Court will give directions for the case to proceed to trial. At the trial the Court will consider whether the interim injunction should have been granted in the first place and whether the interim injunction needs to be extended. If the Court is satisfied that the interim injunction should be extended it will make a final injunction.

If the Court takes the view that the interim injunction should not have been made the Claimant will normally be liable to pay the Defendant damages for any losses suffered as a consequence of the interim injunction having been made.

The Courts will not grant an injunction to restrain an infringement of copyright in a foreign country unless EC Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters applies.

Declaration

Where there is no likelihood of a repetition of copyright infringement, the Court may grant a declaration that there has been a copyright infringement instead of an injunction.

Damages

Normally a Claimant in a copyright infringement case will seek “damages” (compensation) from the Defendant, perhaps in addition to an injunction.

Where a Claimant seeks damages for copyright infringement they do not have to show that they have actually suffered any loss. However, where a Claimant cannot show that they have suffered actual loss the Court will normally only award them nominal damages.

When deciding how much to award a Claimant by way of damages in a copyright infringement case the Court will normally consider by how much the copyright has been depreciated as a consequence of the infringement. Any sales which have been lost by the Claimant as a result of the infringement will be taken into account as will any damage to the Claimant’s trade resulting from, for example a Defendant selling the Claimant’s work at a cheaper price. In some cases the Court may consider what royalty the Claimant should have received or how much the Defendant would have had to pay for a licence to reproduce the Claimant’s work. The Court may also take into account the flagrancy of the copyright infringement. If the copyright infringement is shown to have been innocent, however, the Court may not award any damages.

It is open to a Claimant to elect to receive the profits made by a Defendant as a result of the copyright infringement instead of damages.

Delivery up

Often a Claimant in a copyright infringement case will seek an Order for “delivery up” of the infringing material. Where an Order for delivery up is made the Defendant is ordered to return the material to the Claimant or to another person.

Where an Order for delivery up is made the Court will normally order that the infringing material be destroyed.

Normally an Order for delivery up will not be made if the infringing material was made more than 6 years before the application was made.

Seizure

Where infringing material is being sold or hired out the copyright owner has the right to seize the infringing material or authorise another person to seize it on his behalf if the following conditions are met:

notice of the time and place of the proposed seizure must be given to a local police station;

at the time when anything is seized there must be left at the place where it was seized a notice in the prescribed form setting out details of the person by whom or on whose authority the seizure is made and the grounds on which it is made.

The right to seize infringing material includes right to enter premises to which the public has access but anything in the possession, custody or control of a person at a permanent or regular place of business of his cannot be seized and there is no right to use any force.

Disposal

Where infringing material has been delivered up in accordance with an Order for delivery up or seized the copyright owner can apply to the Court for an Order that such material be forfeited to the copyright owner, destroyed or sold.

When considering such an application the Court will consider whether any other remedies would adequately compensate and protect the interests of the copyright owner.

Forfeiture

If infringing material has come into the possession of a person during the investigation or prosecution of one of the following criminal offences:

sections 107(1), (2) , or (2A) of the Copyright, Designs and Patents Act 1988;

section 114A(2) of the Copyright, Designs and Patents Act 1988;

the Trade Descriptions Act 1968;

the Business Protection from Misleading Marketing Regulations 2008;

the Consumer Protection from Unfair Trading Regulations 2008;

that person can apply to the Court for an Order for the forfeiture of the infringing material.

If the Court is satisfied that an offence has been committed under one of the provisions set out above it will order the forfeiture of the infringing material.

Where such an Order is made the infringing material must be destroyed in accordance with any directions the Court may give or forfeited to the copyright owner.

Prevention of importation

If a copyright owner of published literary, dramatic or musical work is concerned that infringing copies may be imported into the UK from abroad he can give notice in writing to the Commissioners for HM Revenue and Customs that he is the copyright owner and that he requests the Commissioners to treat as prohibited goods printed copies of the work for a period specified in the notice (the period cannot exceed 5 years or beyond the period for which copyright is to subsist).

The copyright owner of a sound recording or film can give notice in writing to the Commissioners for HM Revenue and Customs that he is the copyright owner and that infringing copies of the work are expected to arrive in the UK at a time and a place specified in the notice and that he requests the Commissioners to treat such copies as prohibited goods.

The Commissioners can only, however, treat as prohibited goods infringing copies which are imported into the UK from outside the European Economic Area or which have been imported from the European Economic Area where they are not in free circulation.

Where notice has been given to the Commissioners for HM Revenue and Customs importation is prohibited unless such importation is for private and domestic use and the infringing material can be forfeited.

Undertaking to take licence of right

It is open to a Defendant in a claim for copyright infringement to undertake to take a licence to allow them to reproduce the work. If a licence is agreed or granted then an injunction against or order for delivery up by the Defendant cannot be made. In such circumstances any damages or account of profits awarded to the Claimant are limited to double the amount which would have been payable by the Defendant had such a licence been granted before the earliest infringement.