Damages Awards in the IPEC Small Claims Track

Photo Michael Reeve
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Jane Lambert

On 16 June 2020 the Intellectual Property Office updated its Guidance on IP crime and enforcement for business.  Most of the Guidance in three attachments:
"IPEC SCT" stands for "Intellectual Property Enterprise Court Small Claims Track. This is a tribunal for IP claims under £10,000 other than those involving patents, registered and registered Community designs, plant varieties and semiconductor topographies.   I have discussed this jurisdiction in Small IP Claims and the articles linked to that page.

The IP crime and enforcement for businesses attachment contains two videos.  One is entitled IP Rights Infringement Overview and the other is How do I avoid infringing IP rights at work?   There are summaries of the law on copyright, patent, design and trade mark infringement, advice on what to do if accused of IP infringement, options for resolving IP disputes, risks for business and how to report IP crime.  The guidance links to the IPEC and the Small Claims Track Guides.

In respect of the IPEC Small Claims Track, the guidance states that there is no need for parties to be legally represented.  That is not my experience.  The substantive laws that apply to the Small Claims Track are exactly the same as in the Multitrack although the procedure is simpler.  There are some cases that can be prosecuted or defended successfully by non-lawyers of reasonable intelligence and education in the Multitrack as well as the Small Claims Track but there are other cases in the Small Claims Track that cannot be so prosecuted or defended.  The determining factors are the complexity of the facts and law rather than the track to which the case is allocated.  

The most interesting part of the IP crime and enforcement guidance is the following paragraph:

"A table has been provided by the IPEC (Small Claims Track) and shows the damages awarded at final hearings over a period of time. It provides an indication of the types of infringement claim that come before the court and the range of damages awarded. The table does not include those cases which are settled by agreement or where the claim is unsuccessful"

The table referred to above is the third attachment.   It summarizes 13 judgments of the Small Claims Track between 1 April 2018 and 31 March 2019.  All but 2 of those judgments were for copyright infringement.  The remaining 2 were for trade mark infringement and passing off and passing off respectively.  If there were any judgments for unregistered design right, unregistered Community design, trade secrets or other infringements during that year, they were excluded from the survey.

Of the 11 judgments for copyright infringement, 9 were for reproducing a photograph on the worldwide web, one was for infringing some other artistic copyright and the other was for infringing literary copyright in an article. Some 5 of those judgments were judgments in default. There was a hearing in which the claimant was wholly or partially successful in the case of the other judgments.

The maximum damages awarded for copyright infringement was £1,735 where 20 images had appeared on the web for about 2 months. This award was made after a final hearing at which the claimant was partially successful.  Additional damages were not awarded on that occasion. The second highest award for reproducing a photograph was £1,500 where 2 images had remained on the web for 4 years.  Interest was awarded in that case but no additional damages.  The minimum award was £45 where 20 images had remained on the web. In a claim for damages for infringing an artistic copyright other than a photograph, the court awarded damages of £1,110 though that award appears to have been for breach of contract.  In the claim for infringement of literary copyright, £885 was awarded from the infringement and interest of £370.50 was added.  It appears that the award included additional damages.

The highest award was £2,000 for EU trade mark infringement and passing off.  In the other passing off case, damages of £1,572 were awarded.  Both were default judgments.

No information has been provided of unsuccessful claims or of any actions that were settled.  It is therefore difficult to assess the use that has been made of the Small Claims Track by British industry.   The table suggests that the main beneficiaries have been owners of copyright in photographs,  It is impossible to say whether these claimants are photographers or owners of phot libraries who would never have brought claims in then multitrack.

Anyone wishing to discuss this article or actions in the Small Claims Track generally should call my clerk Stephen Somerville on +44(0)7986 948267 or send me a message through my contact page while this emergency continues, I shall gladly respond by phone, Zoom or email.

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