Copyright in Photographs - Pablo Star Media Ltd v Bowen
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Jane Lambert
Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017)
The above photograph is of a pub in Tenby where Dylan Thomas left the manuscript of Under Milk Wood on a stool. Under Milk Wood is a radio play about the residents of a fictional village called Llareggub. I am told by those proficient in the language that Llareggub means nothing at all in Welsh but the letters do mean something in English if the spelling is reversed.
"Llareggub" less the first 3 letters spelt backwoods with the addition of the particle "-ation"
I thought of Llareggub when I read Judge Hacon's judgment in the appeal from Deputy District Judge Vary's decision in Pablo Star Media Ltd v Bowen [2017] EWHC 2541 (IPEC) (13 Oct 2017) where the learned Enterprise Judge dismissed a copyright owner's appeal against Deputy District Judge Vary's award of £250 damages plus £3 interest for infringing the copyright in the photo of Dylan Thomas and his bride less £164.10 costs making a net award of £88.90 to the copyright owner. Two days earlier I had delivered a talk in Liverpool entitled When is it OK to reuse other people's photos or other content? (see Copyright in Photographs: Presentation and Photographers' Resources 13 Oct 2013 IP Northwest). On slide 17 of that presentation, I wrote: "Damages can be heavy" and I referred to the decisions of His Honour Judge Birss QC (as he then was) in Hoffman v Drug Abuse Resistance Education (UK) Ltd [2012] EWPCC 2 (19 Jan 2012) and His Honour Judge Hacon in Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd and Another [2015] EWHC 2608 (IPEC) (14 Sep 2015). On the very day that I posted my presentation to IP Northwest, a transcript of Judge Hacon's decision in the Pablo Star appeal appeared on BAILII. Now there's Llareggub (less the first 4 letters spelt backwoods with the addition of the particle "-ation") for you indeed to goodness look you!
The Infringement
The infringement that was the subject of the appeal was the lifting of a fragment of a photo of the great man's wedding photo in 1937 from the VisitWales.com website and its reuse on a website that advertises holiday cottages in Wales. Liability was not contested so the hearing before Deputy District Judge Vary was an assessment of damages only. According to paragraph [7] of Judge Hacon's judgment, the learned deputy district judge awarded £250 on the user principle and declined to award additional damages under s.97 (2) of the Copyright, Designs and Patents Act 1988 ("the CDPA"). He ordered the copyright owner to pay the infringer's travelling expenses on the ground that the claimant had failed in its obligation under CPR 1.3 to help the court further the overriding objective by bringing proceedings in the Irish Republic for infringement of the corresponding Irish copyright and threatening similar proceedings in the USA to maximize cost and pressure on the defendant to settle.
The Appeal
The copyright owner appealed against the award on the following grounds which were summarized by Judge Hacon at paragraph [9] of his judgment:
(1) The approach to damages on the 'user principle' was unreasonable and failed to take into account the multiple acts of infringement by Mr Bowen.
Flagrancy
(2) The conclusion that the infringement was not flagrant was contrary to the authorities on this aspect of the law.
(3) The award was not dissuasive, as required by art. 3(2) of Directive 2004/48/EC ("the Enforcement Directive").
Costs
(4) Bringing proceedings in other jurisdictions was Media's right, particularly under EU law, and should have had no bearing on costs. The overriding objective was therefore wrongly applied to the order on costs.
(5) The District Judge wrongly took into account an offer of settlement of £250 by Mr Bowen.
(6) The District Judge asked the parties about Part 36 Offers and without prejudice offers before giving his judgment."
Approach to Appeal
Referring to the Court of Appeal's decisions in Re REEF Trade Mark, Bessant and Others v South Cone Incorporated [2000] EWCA Civ 763; [2003] RPC 5 and Re Bud and Budweiser Budbräu Trade Marks, Podnik v Anheuser-Busch Inc [2003] RPC 25, [2002] EWCA Civ 1534, His Honour directed himself as follows as to the correct approach of an appellate tribunal at paragraph [13]:
"(1) An appellate court must decide whether the court or tribunal below has made a distinct and material error of principle. If so, the decision will be overturned and the relevant point of dispute between the parties reconsidered.
(2) The appellate court should not treat a judgment or decision as containing an error of principle simply because it could have been better expressed.
(3) The judgment or decision below must have identified and recorded those matters which were critical to its conclusion. By implication a failure to do this can amount to an error of principle.
(4) Absent an error of principle, there is no single standard to be applied in assessing whether the appellate court should interfere with the decision below. It is a multi-factorial assessment with the following being of particular relevance: (i) the nature of the evaluation required, (ii) the standing and experience of the fact-finding judge or tribunal and (iii) the extent to which the judge or tribunal had to assess oral evidence.
(5) In making this assessment the appellate court should not interfere solely because it finds that a conclusion reached below is surprising or is one which the appellate court would not have reached. Neither such finding necessarily means that the court or tribunal below has made a material error of principle.
(6) In the case of an appeal from a decision given by specialised hearing officer following a hearing without oral evidence, the appellate court should show a real reluctance, but not the very highest degree of reluctance, to interfere with the decision (absent an error of principle)."
"(1) An appellate court must decide whether the court or tribunal below has made a distinct and material error of principle. If so, the decision will be overturned and the relevant point of dispute between the parties reconsidered.
(2) The appellate court should not treat a judgment or decision as containing an error of principle simply because it could have been better expressed.
(3) The judgment or decision below must have identified and recorded those matters which were critical to its conclusion. By implication a failure to do this can amount to an error of principle.
(4) Absent an error of principle, there is no single standard to be applied in assessing whether the appellate court should interfere with the decision below. It is a multi-factorial assessment with the following being of particular relevance: (i) the nature of the evaluation required, (ii) the standing and experience of the fact-finding judge or tribunal and (iii) the extent to which the judge or tribunal had to assess oral evidence.
(5) In making this assessment the appellate court should not interfere solely because it finds that a conclusion reached below is surprising or is one which the appellate court would not have reached. Neither such finding necessarily means that the court or tribunal below has made a material error of principle.
(6) In the case of an appeal from a decision given by specialised hearing officer following a hearing without oral evidence, the appellate court should show a real reluctance, but not the very highest degree of reluctance, to interfere with the decision (absent an error of principle)."
Compensatory Damages
The copyright owner complained that "the District Judge had failed to take into account the different acts of infringement committed by Mr Bowen, each of which should have given rise to compensation. He referred to copying by downloading, storing, cropping the Photograph, uploading and displaying it to the public." Judge Hacon rejected that criticism at paragraph [14]:
"While it is true to say that there were several acts of infringement, these did not require separate calculations of damage, to be totalled the end. The question at issue was the damage suffered by Media from all the acts of infringement taken together with a substantial overlap in damage on the present facts."
The deputy district judge awarded damages on the "user principle", that is to say, "what the parties would have agreed by way of payment for the use made of the copyright work in issue in a hypothetical negotiation immediately before infringement" on the assumption that the claimant would have been a willing and reasonable licensor and the defendant a willing and reasonable licensee bargaining at arm's length. The judge had before him several comparables and he chose the closest allowing a discount for the fact that the defendant removed the offending image as soon as he had been notified of the infringement which meant that it had appeared on the site for no more than 17 days.
The Enterprise Judge could find no error in the deputy district judge's approach.
"While it is true to say that there were several acts of infringement, these did not require separate calculations of damage, to be totalled the end. The question at issue was the damage suffered by Media from all the acts of infringement taken together with a substantial overlap in damage on the present facts."
The deputy district judge awarded damages on the "user principle", that is to say, "what the parties would have agreed by way of payment for the use made of the copyright work in issue in a hypothetical negotiation immediately before infringement" on the assumption that the claimant would have been a willing and reasonable licensor and the defendant a willing and reasonable licensee bargaining at arm's length. The judge had before him several comparables and he chose the closest allowing a discount for the fact that the defendant removed the offending image as soon as he had been notified of the infringement which meant that it had appeared on the site for no more than 17 days.
The Enterprise Judge could find no error in the deputy district judge's approach.
Additional Damages
The deputy district judge had refused to award additional damages on the ground that the defendant could not be blamed for supposing that copyright had expired or did not subsist in the photo, that only 10 persons had visited the site and that there was no evidence of flagrancy. Judge Hacon took a different approach. S.97 (2) (b) of the CDPA required him to take into account all the circumstances, not just flagrancy (if there was any). The defendant only used the photo for 17 days, removed it from the website as soon as he received notice from the claimant, almost certainly gained no benefit from the infringement and there was no danger that he or anyone else needed to be dissuaded from infringing any of the claimant's copyrights in future. Though he had reached his decision by a different route, the Enterprise Judge had reached the right conclusion.
Costs
Judge Hacon reviewed CPR 27.14 and noted that although
the incidence and amount of costs in the small claims track remained within the discretion of the court pursuant to s.51 (1) of the Senior Courts Act 1981.
The deputy district judge had found that the copyright owner had acted oppressively in bringing proceedings in the Republic of Ireland and threatening proceedings in the USA where damages for willful infringement might amount to US$150,000. Judge Hacon was prepared to overlook the Irish proceedings but not the threat to sue in the USA. It also transpired that the claimant had brought about 10 sets of proceedings in relation to the photo on the VisitWales website in several jurisdictions including claims against the Welsh government and local newspapers. He concluded at [43]:
"Mr Price [the claimant's director, sole shareholder and representative in these proceedings] appears to be an enthusiastic litigator. I take the view that Mr Price not only indicated that Media could bring litigation in the United States absent a deal on terms satisfactory to Mr Price – he may well have made good on his indication but for the judgment from the District Judge and the present appeal. I think he did intend to put pressure on Mr Bowen [the defendant] and a reasonable person in Mr Bowen's shoes would have known it."
The deputy district judge had found that the copyright owner had acted oppressively in bringing proceedings in the Republic of Ireland and threatening proceedings in the USA where damages for willful infringement might amount to US$150,000. Judge Hacon was prepared to overlook the Irish proceedings but not the threat to sue in the USA. It also transpired that the claimant had brought about 10 sets of proceedings in relation to the photo on the VisitWales website in several jurisdictions including claims against the Welsh government and local newspapers. He concluded at [43]:
"Mr Price [the claimant's director, sole shareholder and representative in these proceedings] appears to be an enthusiastic litigator. I take the view that Mr Price not only indicated that Media could bring litigation in the United States absent a deal on terms satisfactory to Mr Price – he may well have made good on his indication but for the judgment from the District Judge and the present appeal. I think he did intend to put pressure on Mr Bowen [the defendant] and a reasonable person in Mr Bowen's shoes would have known it."
Even though the Irish proceedings may have been justified that finding of itself did not make a difference. The district judge had a very wide discretion and while Judge Hacon was not sure he would have made the same order as to the defendant's travelling expenses he did not see any grounds for interfering with it.
Conclusion
The amount in dispute in this appeal may have been small but it does not mean that the decision may be disregarded. The amount in dispute in Case 6/64 Costa v ENEL: [1964] EUECJ C-6/64, [1964] ECR 585 was just a few lire but it established the primacy of European Community law in the EEC member states. Judge Hacon's judgment is a useful authority on the approach of an appellate tribunal to the decision of the tribunal below, the assessment of both compensatory and additional damages for copyright infringement and the award of costs in the Small Claims Track. Hopefully, it will discourage IP owners from bringing and persisting in unreasonable claims and encourage the just and expeditious resolution of such disputes.
Further Information
Anyone wishing to discuss this case or copyright in photos generally should call me on 020 7404 5252 during regular office hours or send me a message through my contact form.
Further Information
Anyone wishing to discuss this case or copyright in photos generally should call me on 020 7404 5252 during regular office hours or send me a message through my contact form.
Date
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Author
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Title
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Publication
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11.10.2017
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Jane Lambert
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IP North West
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20.10.2013
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Jane Lambert
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IP Southeast
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15.91.2112
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Jane Lambert
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NIPC Law
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25.01.2012
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Jane Lambert
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NIPC Law
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22.09.2015
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Jane Lambert
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NIPC Law
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07.08.2014
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Jane Lambert
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NIPC Law
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27.05.2010
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Jane Lambert
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NIPC Law
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