This article is intended as a discussion piece to stir debate, and to help photographers avoid pitfalls in the period before they go to see their lawyer. It should not be relied upon as legal advice, and is no substitute for obtaining independent legal advice on the specific merits and conduct of your own claim.
• Remember, this document is Copyright material. You may download and print it for personal use. You may quote short extracts with attribution to “EPUK/Simon Crofts” and a link to the original article at http://www.epuk.org/Opinion/994/stolen-photographs-what-to-do. Full moral rights are asserted. You may not alter it or sell it. The sample letters at the end of the article may be freely adapted and used by copyright holders for the purposes of copyright enforcement. Copyright in the article remains with the respective authors, but please address inquiries to email@example.com.
Recently, there has been a ray of hope for photographers in the form of effective image recognition capabilities in the Google image search engine. Picscout and Tineye also offer ways to find where a specific image is being published on the internet. But this tool has limited value for photographers unless they are able to claim reasonable levels of damages for the image thefts that it reveals.
Use it or lose it
Copyright protection for photographs in the UK has historically been feeble, at least compared to the US where photographers have heavy legal weapons available to them, including eye-watering levels of statutory damages for registered photos. The US, with the economic importance of Silicon Valley and Hollywood, has always taken IP seriously, while in the UK intellectual property has traditionally been a poor third cousin. Damages for photographers in the UK for breach of copyright have become so low that photographers often believe that breaches are scarcely worth pursuing (often they are right), and copyright abuse has become systematic and rampant. In this situation, photographers should not be ashamed to use whatever rights they do have to protect their property wherever possible.
One of the reasons for the extremely low value of damages typically recovered by photographers is a popular belief, not only among infringers but even among photographers themselves, that the amount that infringers have to pay if caught will only be the same as if they’d asked permission to publish in the first place. Publishers may not see any incentive to seek permission in advance. The chances are (though this is changing with tools like Google image recognition) they won’t be caught and damages would be minimal anyway, so why bother?
A good IP lawyer will be able to advise about your options, but the great majority of claims will have no professional help and it is therefore very important that the photographer has some idea of what their rights are in order to assess how much to claim for an infringement and whether it is worth going to court or speaking to a lawyer.
UK copyright law is not in fact quite as emasculated as it may seem. But there is a danger that legal rights become atrophied through lack of use. The courts become unused to awarding substantial damages for breach of copyright, and this becomes the market norm.
As a photographer the first contact that you have with an infringer is very important – it sets the expectations for the amount of the claim, and if done badly it can severely limit your options before you have had a chance to get any legal advice. The second part of this article makes some suggestions about that all-important initial correspondence.
Playing conkers with that old chestnut – the starting point for damages
First, turning to that idea that photographers are only entitled to claim what they would have charged if they had been asked to issue a licence in the first place. There is an element of truth in it, it is indeed the starting point for calculating damages – but it is only a starting point. The first purpose of damages is, so far as possible, to put the photographer as closely as possible in the position as if the breach had not happened. Of course that is not possible. The breach did happen, so the law instead first of all tries to evaluate the amount of financial loss suffered, and compensates accordingly, putting the photographer financially in the same position as if the breach had not happened. The usual way to do this is to work out how much you would have charged for such a licence. But the law often goes beyond this purely compensatory approach, and awards additional, or even punitive, damages.
When establishing the basic level of damages don’t feel that you have to accept the infringer’s declared ‘standard payments’; your own reasonable charges ought to be a better guide. Because the publisher has infringed copyright, and didn’t give you the chance to offer terms, they are in a weak position to argue with your pricing. But it is essential to have objective evidence that your own pricing is genuine. This does not have to be generic ‘stock’ pricing. The question is how much would you have charged this particular person for the specific use of that particular image.
Gather all the information you can; what you have charged in the past, what large stock agencies charge in their pricing calculators, look at NUJ rates and recommended rates of other organisations, evidence of what other photographers have charged in similar cases, what makes this particular image valuable and unique, and so on. Not all images are equal so none of these sources is likely to be definitive, but the more evidence that you can draw to show that your claimed price is genuine and reasonable, the better. Since the other party is the infringer, courts are likely to be sympathetic to your valuation provided you can reasonably justify it.
It may be that you would not have wanted to issue a licence at all to that particular infringer (such as an organisation whose aims you strongly disagree with) or for a particular kind of use, and that would be an argument to increase the level of compensation.
Once you have worked out the cost of a licence you should be looking at whether to claim additional damages. For most business infringements at least, for reasons I talk about below, you should normally claim these as a matter of course, unless there are genuine mitigating circumstances. Even if you prefer to settle quickly for a lower sum without going to a solicitor or going to court, making the infringer aware of the potential consequences of taking matters further can encourage them to come to terms.
To a very large extent the court has discretion as to which of these additional sums, if any, it might award, so it is important to be seen to be behaving reasonably, to show that you are a victim rather than an aggressor, in order to keep the sympathy of the court. You are extremely unlikely to be awarded ALL of the following amounts, especially where they overlap or where you have already taken them into account in calculating the licence fee element, and you are probably just going to annoy the court for being unreasonable if you try, but very often a court should be awarding one or more – or several – of them, so identify which are most appropriate to your case and concentrate on those. That does not mean that you shouldn’t claim sums that you are entitled to, but evaluate your claim objectively and behave – and be seen to behave – reasonably. You should also bear in mind the possible amount of additional damages if you are thinking of making an early settlement offer. In any case, take care to draw attention to facts that make the infringement particularly reprehensible:-
- Flagrancy – This is one of the most important. The courts can award such additional damages as they think “the justice of the case requires” if the breach was “flagrant”1 . Your correspondence should from the start draw attention to any circumstances that make the breach a particularly bad one. There is a good argument that most uses by a business will automatically be ‘flagrant’, unless there are special mitigating circumstances. See the next bullet point for why.
- Flagrancy and criminality – If the image was used by a business, where the infringer knew or ought to have known that the image was protected by copyright2, then they have committed a criminal offence3 punishable by up to two years in prison and/or a fine4. This is the criminal offence commonly known as “copyright theft”. It is distinct from the criminal offence known as “piracy”, which involves dealing in physical articles such as pirated DVD’s. Copyright theft is also a separate crime from, and should not be confused with, ‘theft’ within the meaning of the Theft Act 1968.
While photographers are not in the business of locking people up, and trying to prove a criminal offence is inherently unrewarding for a private individual, it should be hard for the infringer to argue that a copyright breach that would be a criminal offence is not flagrant. So, with a business infringer you should normally be claiming additional damages for flagrancy as a matter of course, and it is worth pointing out the criminal offence provisions to the court should the case get that far.
- Benefit to the infringer. Have a look at what the infringer got out of use of the image. If you can show that there was a particular benefit to them from using the image, then the court has power to award additional damages5. If there have been actual substantial profits arising from using the image then see the next point.
- Accounting for profit. The law entitles the photographer to make an election between making a claim based on the notional licence fee as I have described above, or one based on profits that the infringer made out of use of the image (an “account for profits”). You have the right during court proceedings to require the infringer to make an “Island v Tring disclosure“6 which involves a process of providing all the records and accounts associated with the use of your photos to allow you to establish how much the profit was and whether you would like to elect for the account for profits procedure.
Of course, this is getting into serious legal fees territory, and if you are trying to keep the claim simple and within the small claims track a claim for profits would certainly push the case outside that system. But even the thought of having to go through this procedure and the potential claim it may lead to could make a profitable infringer quail, and in some cases it might greatly increase the amount of damages that you are entitled to. It does no harm to remind the infringer that you may have the right to make this election, especially if the image was used in a highly commercial way that brought quantifiable profits to the publisher. If you’re feeling adventurous it might even be worth thinking of doing this in the case of, say, an especially profitable newspaper or magazine – in theory at least it may be possible to claim a proportion of profits for that issue. This is probably not going to be relevant to most infringements, but for any use that seems particularly profitable for the infringer it may be worth at least thinking about it. Ask your lawyer!
- Picture credit – Where the infringer hasn’t given a picture credit, you may be entitled to additional damages, for ‘breach of statutory duty’7. Apart from anything else, use of the image without a credit makes it more likely that the image will be orphaned or taken by other infringers, particularly if accompanied by metadata stripping (see below). Failure to provide a credit is also evidence of flagrancy.
However, in the UK moral rights, such as the right to a picture credit, need to be asserted. To avoid any argument it is best to ensure that when images are distributed a suitable statement is made either alongside the image or in metadata, or both, asserting moral rights. Even if you haven’t asserted you might be able to claim if you can argue that you were given no opportunity to assert your moral rights by the infringer.
One way to avoid such discussions and to quantify the amount payable is to argue that the fee that you would have charged for use of your image without a credit would be higher than you would charge if there had been a credit, and to adjust your fee accordingly. It may even be the case that you would not allow use of your image at all without a picture credit, in which case your damages could take account of that. As always, you would need to support such an assertion with evidence.
- Moral prejudice – This is a new one that originated from EU law. When awarding damages, the court can take account of any “moral prejudice” caused to the photographer, even if there is no economic loss associated with it8. This is potentially a very flexible concept. But perhaps one example might be if an infringer has taken an image that you only intended for use for private, or artistic, purposes, and has used it commercially.
- Consequential losses – If the infringer’s unauthorised use has opened up the image to theft by other users – for example has put the image on the internet without any data identifying you as the author, exposing the image to further theft and the potential ‘orphaning’ of the work – then there is at least a possibility that you may be able to claim such consequential losses from the infringer. This might be especially useful where the third parties are difficult to pursue directly, eg they are abroad, or are fly-by-nights, or are multiple blogs not worth pursuing individually. The infringer may argue that the secondary infringers’ intervening act in stealing the image a second time has ‘broken the chain of causation’, in other words that they are not responsible for the acts of third parties. But depending on the circumstances, there may be arguments against this.
A more straightforward way to deal with this is to argue that the increased risk of theft by third parties should be taken into account in the fee that you would charge for use of the image in the first place. Alternatively you may argue that if the infringer has opened you up to greater risk of theft from third parties, that this aggravates the seriousness of their breach and should be taken into account, for example in calculating damages for flagrancy or for moral prejudice.
- Metadata – If you become aware that someone has stripped metadata from your image you are entitled to act as if the stripping of metadata was a breach of copyright and claim damages accordingly.9 If the infringer has also used your image without permission this may not increase your damages further since you can’t claim for the same loss twice (“double dipping”), but it is worth bearing in mind where a user who does have a licence strips metadata, that they may be liable for the consequences of metadata stripping (eg. orphaning of the image). In addition, metadata stripping may help to establish or increase damages for flagrancy (see the first bullet point above).
- Derogatory treatment – If the work has been subject to ‘derogatory treatment’ then you may be entitled to additional damages for that based on damage to your goodwill and reputation.
- Devaluing the image – Certain kinds of uses may decrease the value of the image for use by other clients, and your claim for damages may reflect this if you can show it. For example, it may mean that the image can no longer be offered to clients for exclusive use, or it may conflict with use by a potential client and lead to lost sales. If you have evidence that this may be the case, then that may be used to increase the damages award. For example, in a 2010 case Experience Hendrix vs The Times Newspapers the Chancery Division awarded $5.8 million damages when The Times issued a cover CD distributed with their paper that damaged the plaintiff’s market for release of their CD. The same logic can apply to your photograph if the infringer’s use has damaged the market for it. Note however that the economics of this may be taken account of in calculating the notional fee that you would have charged, and you can’t ‘double dip’. This is effectively an alternative way of calculating damages to the licence fee approach.
- The internet – If the infringer argues that market rates for web use are low you might argue back that web use gives extremely wide access to the image, increasing the risk of image theft and orphaning and so should attract higher fees. It might be the case that you simply wouldn’t allow publication of the image on the web at the low rates currently offered and that your rates for web use, if they had asked permission in the first place, would have been high. Since the infringer didn’t ask permission they have deprived you of the opportunity to refuse.
- Costs – Of course, if you are forced to go to court you can add the costs of doing so (lawyer’s fees, court fees etc.) to your claim, and your first letter should make that clear as a powerful incentive to settle quickly. It is a double edged sword – if you do go to court and either lose the case, or at least lose the sympathy of the court, you may end up paying the other side’s costs. So it is in everyone’s interests to avoid that and settle before things go too far. Often the costs will quickly become much greater than the claim itself. Make sure that the infringer fully understands the potential downside for them of dragging out the dispute. You should keep records of all expenses that you incur chasing the debt.
- Delivering up – You may have rights to confiscate infringing copies, though this is unlikely to apply where your image is part of a wider publication.
- Contractual damages – If you have an arrangement with the infringer, for example, they are a client who has used your images in an unauthorised way, you may also be able to claim damages on a contractual basis. Your standard contractual terms, if well written, might for example impose liability for consequential losses such as third party usage resulting from orphaning of an image. The breach of contract is also likely to be simultaneously a breach of copyright, so many of the heads of damages discussed above will also be relevant.
Even if you don’t intend to demand the full sums you are entitled to, or you want to maintain a good relationship with the infringer (eg if they are also a client), or you are happy to agree a quick and low settlement to save time and trouble, it doesn’t hurt to protect your position and look professional by making the other person aware that you might be entitled to claim substantially more than in a settlement offer. Emphasise that you are being helpful and reasonable by allowing settlement for a lesser sum. The initial correspondence is extremely important in establishing the potential downside to the infringer.
1 S.97(2) Copyright Designs and Patents Act 1988 (the ‘Copyright Act’) “The court may in an action for infringement of copyright having regard to all the circumstances, and in particular to —
(a) the flagrancy of the infringement…
… award such additional damages as the justice of the case may require”
2 Many infringers will no doubt plead that they did not know the identity of the owner of the copyright or could not find the copyright owner. But that is no defence. There is only a defence if they had reason to believe that there was no copyright over the work eg. that more than 70 years had passed since the death of the author, or that the author had renounced copyright.
3 S.107(2A) Copyright Act: “A person who infringes copyright in a work by communicating the work to the public
(a) in the course of a business, or
(b) otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright, commits an offence if he knows or has reason to believe that, by doing so, he is infringing copyright in that work”
4 S.107(4A) Copyright Act
5 S.97(2) Copyright Act “The court may in an action for infringement of copyright having regard to all the circumstances, and in particular to — …
(b) any benefit accruing to the defendant by reason of the infringement,
award such additional damages as the justice of the case may require”
Also, see S.3(2)(a)(i), The Intellectual Property (Enforcement, etc.) Regulations 2006: “When awarding such damages—(a) all appropriate aspects shall be taken into account, including in particular—(i) the negative economic consequences, including any lost profits, which the claimant has suffered, and any unfair profits made by the defendant”.
6Island Records Limited v Tring International PLC(1995) EWHC 8 (Ch)
7 S.103, Copyright Act
8 S.3(2)(a)(ii), The Intellectual Property (Enforcement, etc.) Regulations 2006:
“When awarding such damages—
(a) all appropriate aspects shall be taken into account, including in particular—
(ii)elements other than economic factors, including the moral prejudice caused to the claimant by the infringement”
9 S.296ZG(4), Copyright Act
Corresponding with an infringer
The problem for photographers often begins with that first letter of demand, most likely written without the help of a lawyer. It sets the tone for what is to follow. Since the photographer may often suspect that the infringement may not be worth pursuing beyond this, the temptation is to ask for very little in the hope that the infringer will cough up quickly and they can move on. The infringer, thinking that the claim will be a small one not worth the photographer pursuing, typically comes back with an even more derisory offer, and the photographer either settles for that or makes a half-hearted attempt to push a compromise. The chances are that the infringer will end up paying less than if they’d asked for a licence in the first place.
Even if the photographer does have the stamina to go to a lawyer, the lawyer may have his hands tied by the valuation put on the infringement in that first letter of demand. Unless you have marked that letter “without prejudice” the infringer may use your offer as evidence against you as to the amount you believe your damages to be. It may severely limit the possibility of claiming the kind of additional damages I discussed in the first part of this article.
By this stage the exchange of correspondence may have shown the infringer to be more culpable than first thought, or more difficult to deal with. The photographer might even regret having been too generous or conciliatory in the first offer. Or, on the contrary, it may have shown that the infringer had a reasonable excuse.
Photographers are often in a stronger position than they think. I have argued in the first part of this article that photographers should often be claiming additional damages unless there are particular reasons not to. Even if there is no real desire to go to court it is important to make infringers aware that you have the right to do so.
I would suggest not firing all your cannons in the first letter. This letter should point out the infringement and try to elicit further information from the infringer. It should be firm but not confrontational. Their response to the first letter might range from contrition accompanied by full cooperation and offer of payment, or a valid explanation of how they obtained and used the image (eg. your agent licensed it to them), to blank denial and abuse. The amount you want to claim, and how aggressive – or conciliatory – your follow up is, will depend on their response.
You should keep your end of the correspondence professional and polite at all times while emphasising the strengths of your case. And to prevent anything you say being used against you, always mark all correspondence “Without Prejudice Save as to Costs” especially if it contains a settlement offer.
Once you have more information, or the infringer has failed to reply, then you have the choice of building your claim with the next letter, possibly making a “without prejudice” offer of settlement, or going to see a lawyer. You must make the infringer aware not only that they may be paying considerably more if you have to take it further, but also that you are serious and that you know what you are doing.
The following examples are not intended to be used literally, they are more of a checklist of the kinds of things that you might include in that first correspondence to establish your position. They will need modifying to your own situation. With the possible exception of the first letter however, I would suggest always including at the top of the letter the magic words “Without prejudice save as to costs”, particularly if you are making a settlement offer. If the first letter includes any kind of suggested pricing or settlement offer, however, the words should go at the top of that letter too.
It has come to my attention that you have used my image [describe image and the usage]. I do not have any record of having issued you with a licence to use this image. I would be grateful if you would provide me with any evidence that you have been issued with a licence by myself [or my agent] for such use.
Subject to that, as it appears that you have breached my copyright I require you to provide me with information about where you sourced the image, the length of time that you have used the image, and any other usages that you may have made of that, or any other image that you may have reason to believe may be mine.
[Unless you have a licence from me/my agent for use of the image] I require you to remove the image immediately, and will be requiring payment for use of the image to date. [If you would like to make use of the image for the future, any such future use would only be permitted subject to negotiation with me of a separate additional licence and payment of a licence fee at my rates.]
Second letter – a grumpy one
Letter to be used for a flagrant breach, and includes a settlement offer, which you may or may not want to make. The letter is just a starting point and needs modifying for each particular case. If there are mitigating circumstances, it would be more appropriate to send a ‘softer’ letter.
Without Prejudice Save as to Costs
Further to your reply of [ ], I was extremely disappointed to see my image used in this way. This was a particularly flagrant breach of my copyright because [ ]. [list any factors that make the breach more flagrant eg. if they were warned not to use the image in this way, or if it would have been easy for them to find out who the copyright owner was, or if they’re using a private photo without model release in a commercial context].
[You ought to have known that the image would be protected by copyright, and use of my image in this way by you in the course of your business would be a criminal offence under S.107(2A) of the Copyright Act 1988, punishable by up to two years in prison and/or a fine. [Include this wording if the infringer used the image in the course of a business and ought to have known the image was protected by copyright.]]
[In addition, there was no attribution (picture credit) of my image to me. Unauthorised use of the image in this way devalues the value of the image for myself and my clients. Use on the internet, especially where unattributed, is especially damaging as it presents further opportunities to third parties to infringe my images, and increases the risk that the image may become ‘orphaned’.]
If I have to take this matter further, I may be entitled to claim damages not only for the direct losses caused by your infringement, such as my loss of license fee, but also for one or more of the following:
- I am entitled by law to additional damages where the breach is flagrant or where you have gained a benefit from using the image.
- I may elect to require an account of profits from your use of the image, and may require you to carry out disclosure of the full amount of profits derived from use of my image. This may include my claiming a share in the total profits from the sale of any edition in which my image appeared.
- I am entitled to further damages for failure to credit my image to me: for breach of statutory duty under S.103 of the Copyright, Designs and Patents Act.
[Describe any derogatory treatment of the work, which may entitle you to further damages.]
- I may be entitled to additional damages for ‘moral prejudice’ under S.3(2)(a)(ii), The Intellectual Property (Enforcement, etc) Regulations 2006.
- I may be entitled to claim from you any additional losses caused to me which results from your breach, for example if my image becomes ‘orphaned’ due to your actions.
- If I have to take this claim further, the costs of lawyers’ fees, court fees, and other expenses will also be added to the cost of the claim.
The foregoing list is not exhaustive, and I reserve my right to claim for additional heads of damage. I would strongly urge you to consult a solicitor in relation to this claim.
In the interests of resolving this matter quickly for both of us I am, at this stage, willing to make a without prejudice offer to waive my rights to damages from you with respect to your breach for a payment of £[ ], provided that you accept this offer in writing within the next  days and provided that such sum is received on my account within the next  days.
This offer applies with respect only to your breach of copyright and usage of my image as described in my letter to you of [refer to first letter], and does not in any way imply waiver or consent regarding any additional usage or use of any other image or any breach by any other person. This offer is made on condition that you have disclosed all material facts to me in relation to your breach of my copyright.
This offer applies to settlement of your breach of copyright for this image until the date of expiry of the offer, and assumes that you remove the offending copy of the image forthwith. No consent to future or continuing use of the image is implied in the foregoing offer. Should you wish to continue use of the image, then that would be subject to separate negotiation and agreement.
Should I not receive notification of acceptance of this offer within the period described above I shall pass the matter to be dealt with by my solicitors and/or debt collection agents, and additional costs will be incurred which I shall recover from you.
Further reading and resources
- Copyright in the 21st Century
- How Google Search by Image helps photographers catch copyright crooks
- How I made £27k from two evenings tracking down copyright infringements
- The ABCD of Copyright
- Copyright Action links to IP lawyers
- The 10 rules of US Copyright Registration
- Copyright, Designs and Patents Act 1988
- Copyright and Related Rights regulations 2003
- The Life and Business of an Independent Street Photographer
- How to Enforce Your Rights and Resolve Disputes – The Creatives
- How to Enforce Your Rights and Resolve Disputes – The Professionals
- PLUS: The Picture Licensing Universal System
- Photographers Who Keep Copyright Earn 33% More
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