WARNING
This is the first draft of a work in progress aimed at helping photographers to take their own infringement cases through the small claims track in the Intellectual Property and Enterprise Court (IPEC).
It is likely to contain mistakes, misunderstandings of the law, omissions and procedures that might better be done in other ways.
It was written by people with no legal training or qualifications and has not been checked by any qualified persons. It is published in the hope that it will prove helpful but should be read and used with a critical eye. Important aspects should be double checked with an authoritative source. You should also consult IPEC's own guide.
You use this article at your own risk.
The article is long and would better broken up into sub units with a table of contents and an index. If anyone can help with this task or if you have suggestions, corrections or other ways to improve it please email us or leave a comment at the end.
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Once again - we present this with no promise of accuracy and take no responsibility for anything resulting from your use of this article.
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Before you start:
Can you identify the infringer with complete certainty in court? An email address and a website domain name with its Whois data is not enough. You need the name of the person or legal entity responsible and their address in England or Wales. You need solid evidence linking those names to that use.
Is there any money to collect? Is the infringement serious enough to be worth your time? And does the infringer have recoverable assets?
Do you have the resources, time, energy and above all the will to see it through with all the complications and annoyances?
If you don't have a full set of yeses then stop right here. Go for a walk, take someone to lunch. Don't even start. Give it to a recovery service or just walk away.
Before making contact collect all the evidence you will need because as soon as you contact the infringer it is likely that he will attempt to remove the evidence. Save the web page, screenshot the webpage. Don't forget to screenshot the image URL separately. Check the Wayback Machine (Internet Archive) entry and screenshot and save anything there. Note that the URL of the Wayback Machine page contains the precise date and time that the snapshot was taken. The Google Cache can be useful for anything recently deleted (search Google for cache:[URL]).
Where there is one infringement, there may be others. Take a good look around the infringing website and any that it appears associated to. It may be worth looking to see if there is a designer credit and then checking out other sites they have designed.
For small websites programs such as “Web reaper” can very useful. It downloads an entire website allowing one to quickly search the image directories. Any extra infringements found can then be typed into the URL and brought up in a browser for screenshots and saving directly from the live website. Use it responsibly and don’t download large websites. For large websites, Google image search can be very useful if you make a broad image search of the site such as “jpg site:www.xxxx.xxx” which will bring up all, or at least a large number of, the jpg format images on the site. Don’t forget “png site:www.xxxx.xxx” and “gif site:www.xxxx.xxx” as well.
If an image has been recently deleted a search of the cache held by most search engines may bring up the page as it was before the deletion.
If you can find the time length of infringement it can be helpful. You can do this with Wayback Machine and/or the last modified date shown in Firefox. To find a last modified date in Firefox,
open the infringing web page
select view image to bring up just the photo in the browser
right click or control-click on your image and select “view image information“
click 'general' and you will see a last modified date. Screenshot and or print this out. This is the date the image was last changed on the server. It could be the date it was uploaded or it could be the date when some site admin was last done but it does show that the image has been online since at least this date. Unfortunately, many web pages are now created at the time of viewing and so will show today's date which is not helpful and so you must look for dating info in the Wayback machine or for dates on the web page itself.
Right clicking and viewing the image itself will allow you to drag the image to the desktop and examine its embedded data. This can be revealing as it will tell you if your own metadata has been stripped out (an offence in itself) or, as is sometimes the case, left in giving further evidence that it is your image. You may also be able to see the image EXIF stored at the site. Firefox is a good browser for this and there's an EXIF viewer add-on available from https://addons.mozilla.org/en-us/firefox/addon/exif-viewer/.
Alternative EXIF viewers are also available, one is Jeffrey's Exif Viewer which produces a comprehensive layout of EXIF and IPTC info.
When saving an image from an infringer’s website, the last modified date becomes the date you saved it but when saved with web reaper it often retains a previous last modified date. Its nice to have multiple sources of how long the image has been used. Obviously before a court, its going to be better evidence if you show a screenshot of their website with Firefox showing the last modified date, rather than a complicated explanation of how you downloaded the whole website.
Remember Last Modified date is just that and the actual infringement may have started earlier.
Don’t initially tell the infringer about the last modified date but ask them for their first publication date in your letters. This is useful as sometimes they will tell you the real date when the image was first used and that may be longer than the last mod date. The great thing about asking length of time an infringer has infringed is when asked, 90 % will lie and say the use is dramatically shorter than it really was. One recent infringer wrote that he had only used an image for "a couple of days" yet the last mod date was over a year ago so we know he has had it on his server at least a year. Written lies to reduce the amount owed will not look good in court and may even be a criminal offence to go with the copyright offence they have already committed..
Decide on how much you want for damages. Make sure the figure is reasonable but also make sure your not offering a discount as you may later need to negotiate a lower amount. Some photographers charge 2x the normal fee for a typical infringement but it can be much more in exceptional cases. See the EPUK Stolen Photographs article for more information on estimating damages.
Having gathered and saved every bit of evidence you will need to send 1 or 2, maybe 3 normal infringement / demand letters. See EPUK's Stolen Photographs article.
My letter 1 is short and very polite just asking if they have a licence and if not please remove infringing images and contact me for payment.
It's better not to head letters “without prejudice” or “without prejudice save as to costs” unless you are making a lower offer than the amount you may later claim in court. Typically one works out a fixed amount and sticks to it. The problem with using “without prejudice” too early is that the infringer will then usually put it in their replies, replies which you may well want to quote later in court.
When the images are subsequently removed it shows the recipient is in control of the website so screenshot again just after they have been removed. Also because the first letter is relatively informal and non confrontational you are likely to get a response which can contain useful admissions. Typically one gets a letter or email saying 'very sorry, it was my webmaster's or designer's fault and I have removed the images'. This is a useful admission of infringement.
After the normal letters you need to send a formal Final Letter before claim
You must read this word for word and comply with the stuff in it:
http://www.justice.gov.uk/downloads/courts/patents-court/patents-court-small-claims.pdf
and this
http://www.justice.gov.uk/courts/procedure-rules/civil/rules/pd_pre-action_conduct
You need to read it all, there is no shortcut.
Always include the company number with important correspondence. Company names change, One company swapped names with another company at the same address in the middle of a case. Fortunately the use of the company number identified which was which.
Below is a letter before claim which you can use as a starting point if you want but we aren't lawyers and nothing is guaranteed. Every case is different, you need to fit the letter to your facts. Whatever you write, re-reading it 24 hours later is almost always worthwhile. Infringing sites often rename the image to avoid detection in search engines. That can add to evidence of flagrancy. Put in anything that makes your case particularly flagrant. EG In a claim against a media or law firm you might point out that in their profession they will have been fully aware of copyright law and so their infringement is clearly flagrant. Be aware, the interest claimed here is higher than that recently awarded so you will need to justify it. List all the parts of the CDPA you think the infringer has broken. The letter should be long and detailed to make it clear to the infringer that all bases are covered, the claim is utterly watertight and they haven’t a chance of defending it. Some infringers will pay once they have read the Letter before Claim. Time spent on the letter is not wasted as most of it can be copy and pasted into the later claim form.
Before writing the letter, check at the Companies House site that the company has not recently changed its name.
NB If the defendant has written to you or spoken to you and included the phrase “without prejudice”, you must not mention the contents of that letter or conversation before the court. Bad things can happen if you accidentally refer to something said without prejudice when you write your Letter before Claim or particulars of claim or anything else to go before the court, so don't do it!
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This is a typical Letter Before Claim as an example for you to edit into one appropriate for your claim. Take care to double check everything and include nothing that you cannot prove to be the case - no matter how 'obvious' it might be.
__________________________________________________________________
Your address
your reference
Letter Before Claim
FAO The Company Secretary
xxxxxxx LIMITED
xxx
Company No. xxxxx
Dear Sir or Madam ,
I have yet to receive payment for my image unlawfully used on the www.yxxxxxxxxxxx.com website as per my previous letters of 22nd May 2014 and 3rd June 2014.
If payment of £792.93 is not received within 14 days of the date of this letter I will commence legal action and you may face additional costs and penalties.
Details of the claim are as follows:
(1) Litigants:
Defendant:
xxxxxxxxxxxxxx
xxxxxxxxxxxx
xxxxxxxxx
Company No. xxxxxxxx
Claimant:
xxxxxxxxxxxx
xxxxxxxxxxxxxxxx
xxxxxxxxxxxxxx
(2)The basis on which the claim is made ;
The claimant is one of the UK's leading professional xxxxx photographers and earns his living by taking xxxxx photographs and charging a licence fee for the use of his photographs. The photograph in question was taken by the claimant personally on 6th June 2008 and is an artistic work as defined by the Copyright Designs and Patents Act 1988 section 1 (a), section 4(1)(a) and section 4(2)(b). The copyright in the work is entirely owned by the claimant.
Xxxx Ltd has been promoting its commercial activities by using a modified version of the photograph for which the claimant holds the copyright, without permission or payment. This use is in contravention of the Copyright, Designs and Patents Act 1988 Section 16, section 20 and is a criminal offence under section 107 as follows:
Section 16 The acts restricted by copyright in a work.
(1)The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom—
(a) to copy the work (see section 17);
(b) to issue copies of the work to the public (see section 18);
[F1(ba) to rent or lend the work to the public (see section 18A);]
(c) to perform, show or play the work in public (see section 19);
[F2(d) to communicate the work to the public (see section 20);]
(e) to make an adaptation of the work or do any of the above in relation to an adaptation (see section 21);and those acts are referred to in this Part as the “acts restricted by the copyright”.
(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.
(3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it—
(a) in relation to the work as a whole or any substantial part of it, and
(b) either directly or indirectly;and it is immaterial whether any intervening acts themselves infringe copyright.
(4) This Chapter has effect subject to—
(a) the provisions of Chapter III (acts permitted in relation to copyright works), and
(b) the provisions of Chapter VII (provisions with respect to copyright licensing).
Section 20 Infringement by communication to the public
(1) The communication to the public of the work is an act restricted by the copyright in—
(a) a literary, dramatic, musical or artistic work,
(b) a sound recording or film, or
(c) a broadcast.
(2) References in this Part to communication to the public are to communication to the public by electronic transmission, and in relation to a work include—
(a) the broadcasting of the work;
(b) the making available to the public of the work by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them.]
Section 107 Criminal liability for making or dealing with infringing articles, &c.
(1)A person commits an offence who, without the licence of the copyright owner—
(a) makes for sale or hire, or
(b) imports into the United Kingdom otherwise than for his private and domestic use, or
(c) possesses in the course of a business with a view to committing any act infringing the copyright, or
(d) in the course of a business —
(i) sells or lets for hire, or
(ii) offers or exposes for sale or hire, or
(iii) exhibits in public, or
(iv) distributes, or
(e) distributes otherwise than in the course of a business to such an extent as to affect prejudicially the owner of the copyright,an article which is, and which he knows or has reason to believe is, an infringing copy of a copyright work.
(2) A person commits an offence who—
(a) makes an article specifically designed or adapted for making copies of a particular copyright work, or
(b) has such an article in his possession,knowing or having reason to believe that it is to be used to make infringing copies for sale or hire or for use in the course of a business.
[F1(2A) 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.]
(3) Where copyright is infringed (otherwise than by reception of a [F2communication to the public])—
(a) by the public performance of a literary, dramatic or musical work, or
(b) by the playing or showing in public of a sound recording or film,any person who caused the work to be so performed, played or shown is guilty of an offence if he knew or had reason to believe that copyright would be infringed.
(4) A person guilty of an offence under subsection (1)(a), (b), (d)(iv) or (e) is liable—
(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding [F3£50,000], or both;
(b) on conviction on indictment to a fine or imprisonment for a term not exceeding [F4ten] years, or both.
[F5(4A)A person guilty of an offence under subsection (2A) is liable—
(a) on summary conviction to imprisonment for a term not exceeding three months or a fine not exceeding [F3£50,000], or both;
(b) on conviction on indictment to a fine or imprisonment for a term not exceeding two years, or both.]
(5) A person guilty of any other offence under this section is liable on summary conviction to imprisonment for a term not exceeding [F6three] months or a fine not exceeding level 5 on the standard scale, or both.
(6) Sections 104 to 106 (presumptions as to various matters connected with copyright) do not apply to proceedings for an offence under this section; but without prejudice to their application in proceedings for an order under section 108 below.
(3) summary of the facts on which the claim is based;
The defendant has been found using a night photograph of xxxx, image number xxxx for which the claimant holds the copyright on the defendants commercial websites at the following locations:-
http://www.xxxxxx.com/
With the image being located at
http://www.xxxxxx.com/images/slides/image6.jpg
The image being used for commercial promotion of guest-house accommodation provided by the defendant.
The image as it appeared on the defendants website has had the claimants trading name and copyright symbol removed or obscured.
(4)what the claimant wants from the defendant;
£792.93 in damages and that the defendant cease and desist from all unlawful use of the claimants intellectual property.
(5) how the amount has been calculated;
a) £360 for the fee that would have been charged had the defendant licensed the image in the normal way. The claimants fees are fixed non negotiable sums for all sales as stated clearly on the claimants website and indeed can even be seen in the shopping cart system. The claimants fixed fee covers almost all uses by a customer and the claimant does not normally engage in price negotiations with customers. A fixed fee of £360 is the minimum fee at which the claimant will licence his images for uncredited reproduction, whether in relation to the defendant or any other customer.
b) £360 for flagrancy, in view of the flagrant nature of the breach of copyright.
When a lawful customer purchases an image through the claimant's website, the claimant receives a payment or ordering email and then emails back the purchased image and receipt/invoice, a process which takes less than 10 minutes. Unauthorised use of the claimant's images generates a vast amount of additional work and expense. Evidence has had to be collected and saved, infringer identified and all past image licenses have had to be checked as well as numerous letters written to the defendant. In common with many other businesses, the claimant charges a higher fee reflecting the additional work involved for unauthorised use of his images. Furthermore the defendant has been for some significant time deriving benefit from the claimants image by their use in their marketing, without payment to the claimant.
The claimant's claim of 100% uplift for flagrancy is in accordance with the Copyright, Designs and Patents Act 1988 section 97 (2) - 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, and
(b) any benefit accruing to the defendant by reason of the infringement,
award such additional damages as the justice of the case may require.
[more from CDPA needed here]
[MAYBE REMOVE TO NEXT BRACKET This copyright infringement is especially flagrant as it is a criminal offence. ]The defendant knew or should have known, who the copyright holder was and could easily have licensed the image from the claimant but instead chose to use it illegally and flagrantly having removed or obscured identifying copyright information in the hope of evading detection.
The defendant's use of the claimant's image with copyright information removed encourages others to make illegal use of the claimants copyright work. Modified versions of the image were displayed without the copyright information and were freely available and distributed through google and other search engines.
The claim for an uplift for flagrancy is also consistent with or less than amounts recently awarded by the Intellectual Property Enterprise Court :-
Nottinghamshire Health Care National Health Service Trust v News Group Newspapers Ltd where £10,000 awarded for an image use valued at £450.
PRS Ltd v Alexander Burns and Williams Burn where £9,000, three times the standard damages, was awarded due to flagrancy.
Cavalcade Records Ltd v HHO Multi-Media Ltd [2013] EWHC (Ch) ( 27/03/13) where Judge Birss QC awarded an additional £3,500 damages over and above the £3,500 value of the infringement because “although the defendant had not received a significant benefit in licensing a music track, it was a flagrant and deliberate infringement and it had demonstrated a reckless attitude”.
Absolute Lofts v Artisan Home Improvements where additional damages of £6,000 were awarded on top of notional licence fee damages of £300
Jonathan C.K.Webb vs VA Events Ltd, Mr Vicker & Mr Austin where the court awarded total damages of £2716.00 for an image valued at £300 which included a 500% uplift over the value of the image plus expenses.
d) £32.93 Interest.
The claimant has evidence that the defendant has been using the image since at least September 2013 and therefore interest has been calculated from that date. From September 2013 to October 2014 is 13 months at 4% pa.
The interest rate chosen is 4% p.a. Simple interest which is the amount awarded by the Intellectual Property Enterprise Court in recent cases.
£40 admin fee:
Administration costs represent a fair and reasonable amount to cover the extra administrative costs of an infringement over and above what would be incurred with a normal business transaction. Some of these costs are easy to quantify such as the cost of 'signed for' postage, but others are an estimate, for example a full set of HP 363 Ink cartridges used for printing the evidence in this case cost £44.90 from Amazon and the defendants procrastination in not responding to this claim has resulted in the claimant having to print evidence and send numerous signed for letters. Rather than submit an estimated cost of each letter the claimant provides here a an estimate of the total cost of all letters and evidence printing of £40.
Should this £40 not be accepted the claimant would alternatively be willing to produce evidence regarding each letter and calculate an exact administration cost.
6) Documents to go before the court:
Documents relating to the claim:
Screen shot showing the claimants copyright work on the defendants website
Screen shot showing the claimant's copyright work on the defendant's website (image direct URL)
screen-shot showing the defendant illegally distributing the claimants copyright work via google search engine.
Print of the claimants original work reproduced from the claimants own archive.
Screenshot of the claimants price list on his website.
7) Alternative Dispute Resolution:
The claimant is keen to avoid litigation if at all possible and is willing to consider alternative dispute resolution options. Given the relatively simple nature of the claim and small sum involved the claimant would be prefer the defendant to make direct contact by phone, email or letter either personally or through a representative to discuss the options. The claimant is open to any reasonable proposals for alternative dispute resolution. The claimant can be contacted directly as follows:
By Phone 0xxxx : available most days 9am until 9pm 7 days a week.
By post: xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
By email: xxxxx@xxx.xxx Email can be unreliable due to to the level of junk mail and it can only be assumed the email has been received if you receive a reply. The chances of the email being seen are greatly increased if you include the words “xxxxx photograph” in the subject line.
8) Response time :
The claimant expects a response within 14 days. If no response is received in that time, legal proceedings will commence without further notice. If the defendant has reasonable grounds to require longer to issue a full response the defendant must provide an acknowledgment of receipt of this Letter before Claim and inform the claimant of those reasons within 14 days of receipt and also inform the claimant of the length of time required to prepare a full response.
9) Documents required by the claimant from the defendant:
The claimant requires copies of all internal and external correspondence including emails and records of telephone conversations relating to the defendants unlawful use of the image. The claimant asks who acquired the image, how and when it was acquired., who manipulated the image removing identifying information, who incorporated it into the the defendant's website, who uploaded / published it to the internet and when this was done.
The defendant is reminded that the unauthorized use of the claimants image on the defendants commercial website is a criminal offence in contravention of s107 of the Copyright, Designs and Patents Act 1988. The defendant may read the act on the government website at:
http://www.legislation.gov.uk/ukpga/1988/48/contents. The UK government also publishes a plain English guide to copyright at : https://www.gov.uk/using-somebody-elses-intellectual-property
10) Practice Direction
The defendant's attention is drawn to the practice direction for pre-action conduct which the defendant can view online at HM Court Services website at:
http://www.justice.gov.uk/courts/procedure-rules/civil/rules/pd_pre-action_conduct
The defendant's attention is in particular drawn to paragraph 4 concerning the court's powers to impose sanctions for failure to comply with the Practice Direction.
11) Warning : do not ignore this letter.
If no satisfactory response is received within 14 days of receipt of this letter, the claimant will commence legal proceedings without further notice and ignoring this letter may increase the defendant's liability for costs.
Statement of Truth : -
I believe that the facts stated in this Letter before Claim are true.
[signature]
[print name]
[date]
Add other facts as and when required. Often there is a paragraph about metadata stripping and you may need to add section 80 derogatory treatment all of which come under the flagrancy section.
If no response is received in a “reasonable time” the next step is to start a claim at the Intellectual Property and Enterprise Court (IPEC).
A reasonable time is defined in pre- action protocol as:-
“the defendant should give a full written response within a reasonable period, preceded, if appropriate, by a written acknowledgement of the letter before claim.
7.2 A ‘reasonable period of time’ will vary depending on the matter. As a general guide –
(1) the defendant should send a letter of acknowledgement within 14 days of receipt of the letter before claim (if a full response has not been sent within that period);
(2) where the matter is straightforward, for example an undisputed debt, then a full response should normally be provided within 14 days;
(3) where a matter requires the involvement of an insurer or other third party or where there are issues about evidence, then a full response should normally be provided within 30 days;
(4) where the matter is particularly complex, for example requiring specialist advice, then a period of longer than 30 days may be appropriate;
(5) a period of longer than 90 days in which to provide a full response will only be considered reasonable in exceptional circumstances.”
It's reasonable to give 14 days for a single defendant and 30 for multiple defendants or complex cases, naturally with a few days extra in each case. It does no harm to give everybody 40 days unless there are particular reasons to move more quickly.
Before issuing claim form, check that your signed for or special delivery was actually delivered and not lost in the post. Be aware that the Royal Mail online tracking site often shows an item as still in the system even after it has been delivered.
Also before issuing the claim check again at Companies House that the company has not just changed its name or is attempting to dissolve itself.
It has been known for companies to dissolve themself upon receipt of a Letter Before Claim in which case this would be further evidence of flagrancy and further reason to issue proceedings against the directors personally as jointly and severally liable alongside their Ltd company.
Fill in a claim form and print it at least 3 times ( more if more than one
defendant ) Warning - the document cannot be saved or completed in a browser. Save it to your own computer and then fill it in with software that allows the filled in version to be saved.
Save all the fields in a separate word document so if you need to fill it in again you can copy and paste.
Filling in the claim form:
In the top right where it says “In the “ put the following:-
"High Court, Chancery Division, IP&E Court, Small
Claims Track."
Include your phone number with your details.
Most is straightforward. There are two detail sections – examples below:
Brief details of claim
The defendant operates a commercial website www.xxxxx.co.uk which has been
displaying the claimant's copyright professional photograph. The claimant
is a professional photographer who normally earns his living from the
licensing of photographs for uses such as this. The defendant has neither had
permission from the claimant, nor has the defendant paid the
claimant for the use of this photograph. The claimant therefore seeks
damages for this unlawful use.
Preferred court:-
Intellectual Property Enterprise Court Small Claims Track
Particulars of claim : This is generally a longer and fuller version of the LBC
It should at least include all the key points and evidence you are going to make in court.
Include all key screen-shots with the particulars of claim. It is probably best to just send everything you need in court with the particulars of claim although extra evidence can be submitted later if required.
On the form you must state that you want it heard in the small claims track
and you must say that you have complied with the pre trial conduct procedures. These
two points are very important and the main thing to watch out for when you
fill in the form. For example:
Particulars of claim are attached on separate sheets
The claimant has complied with paragraph 7.1(1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct)
The Claimant requests that the claim be heard in the small claims track of The Intellectual Property Enterprise Court.
If appropriate, the following should be added to save everyone's time:
“The Claimant believes this is a case suitable to be heard on papers, however the claimant is willing to attend court if the court or defendant wishes.”
As well as the above you must read the guide:
Include a “statement of truth” on your particulars of claim: "I believe that the facts stated in the particulars of claim are true." signed and dated.
Don't forget to include the cheque or it will all come straight back!
Guidance as to the correct fee is online or you can call the court and ask.
At the time of writing the fees were:
up to £300 £35
£300.01 – £500 £50
£500.01 – £1,000 £70
£1,000.01 – £1,500 £80
£1,500.01 – £3,000 £115
£3,000.01 – £5,000 £205
£5,000.01 – £10,000 £455
The amount of your claim is the amount before any court fees.
cheque (payable to ‘HM Courts & Tribunals Service’).
Staple the cheque to a covering letter or it will get lost and the whole lot will come back to you!
Send all copies of the form to:
The Chief Clerk
Chancery Chambers
The Rolls Building
7 Rolls Building,
Fetter Lane
London
EC4A 1NL
NB IPEC has other addresses including Thomas Moor building but do not send the claim form there. The above address is the one we are requested to use for submitting the claim form as of 10.12.14
You will receive back all bar one copies of the claim form , stamped by the
court. Check the received forms are correctly filled in and stamped. EPUK members have had papers back with the wrong case number or with no court seals which had to be returned .
For problems or missing forms the number is 0207 947 7783/7754.
The claimant must serve a "sealed copy" of the claim form on the defendant in accordance with CPR part 6 and also a response pack. You keep a copy yourself and then post one copy to each defendant. Serving just means posting it but get it signed for.
Including a defence pack just means printing off some blank forms and including them with the claim form. The forms to include are:
The response pack "may" include
Part 7 ( Specified)
N9A Admission
There are other forms for an unspecified amount. You will probably be claiming a fixed amount and will not need these, but if you do here are the links-
Part 7 ( Unspecified)
N9C Admission
N9B Defence and counter claim
_____________________________________________________
Some claimants have also been asked to serve a copy of the guidance notes. We have not found a copy on the court site but an EPUK member has a copy here and here:
It is probably wise to send these leaflets too:_
"A court claim has been made against me – what should I do?”
For your own records or in case of disputes it is good practice once all is printed to take a photograph of the envelope and contents before packing it and posting it. Mobile phones are great for this.
After serving your claim on the defendant you need to file with the court a "Certificate of Service" within 21 days of serving the documents.
The certificate of service must list all of the documents required to be served, ie claim and all the individual elements of the response pack as follows:-
Claim Form
Particulars of claim
Defence Pack consisting of:
N1C Notes for defendant
N9 Acknowledgement of Service
N9A Admission
N9B Defence
IPEC "Guidance Notes to defendant(s)"
leaflets ex303 & ex306
And for good measure include a certificate for the Letter Before Claim too.
Date of service for claim form is the date of posting and for other documents it is the second day after it was posted
The date of service rules in more detail according to CPR:-
Certificate of service
6.29 Where a rule, practice direction or court order requires a certificate of service, the certificate must state the details required by the following table –
|
Method of Service |
Details to be certified |
|
1. Personal service |
Date and time of personal service. |
|
2. First class post, document exchange or other service which provides for delivery on the next business day |
Date of posting, or leaving with, delivering to or collection by the relevant service provider. |
|
3. Delivery of document to or leaving it at a permitted place |
Date and time of when the document was delivered to or left at the permitted place. |
|
4. Fax |
Date and time of completion of the transmission. |
|
5. Other electronic method |
Date and time of sending the e-mail or other electronic transmission. |
|
6. Alternative method or place permitted by the court |
As required by the court. |
Deemed Service
6.26 A document, other than a claim form, served within the United Kingdom in accordance with these Rules or any relevant practice direction is deemed to be served on the day shown in the following table –
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Method of service |
Deemed date of service |
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1. First class post (or other service which provides for delivery on the next business day) |
The second day after it was posted, left with, delivered to or collected by the relevant service provider provided that day is a business day; or |
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2. Document exchange |
The second day after it was left with, delivered to or collected by the relevant service provider provided that day is a business day; or |
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3. Delivering the document to or leaving it at a permitted address |
If it is delivered to or left at the permitted address on a business day before 4.30p.m., on that day; or |
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4. Fax |
If the transmission of the fax is completed on a business day before 4.30p.m., on that day; or |
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5. Other electronic method |
If the e-mail or other electronic transmission is sent on a business day before 4.30p.m., on that day; or |
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6. Personal service |
If the document is served personally before 4.30p.m. on a business day, on that day; or |
If the defendant files an acknowledgement or a defence within the 21 days then you do not need to do this, however on the assumption that you will not hear anything within 21 days it's best to file a Certificate of Service after about a week.
Warning, when you print or save the form text you have entered and ticks in boxes may not be included. This seems to vary between different systems.
Response to a defence
If you receive a defence which raises matters that you have not covered you can write to the defendant(s) and the court rebutting them. This is just a plain letter headed “Response to defence” and with a statement of truth at the end. You can do this when you receive an an allocation questionnaire but these are not always sent out so you may need to send it on its own.
Check with the court before the case comes to trial that they have this document and the particulars. Many documents to the court go missing so it is worth phoning or emailing to check important documents have arrived but give at least 2 weeks before phoning.
One EPUK member whose case went to court mediation describes it as “just a telephone appointment with a court employee who phoned me and the infringer one after the other and we haggled a price in the middle.” If there is a mediation attempt then you do need to make yourself available for the mediation appointment.
Most infringers pay up when they when they receive the court claim form. After they've paid there is still a little bit of paperwork to clear up. The claimant cannot end a claim, that must be done by the judge. A plain letter to the court saying a settlement has been reached is often sufficient. On occasion the court has asked that either the defendant also write a letter or alternatively you both sign a consent order. As claimant you can't force the defendant to do either but if the defendant does not cooperate you can unilaterally file a Notice of Discontinuation.
There is a warning before sending that. You must agree in writing with your opponent that your settlement agreement concludes all claims and counter claims including costs from both parties. If you just agree that it settles the claimants (your!) claim then you could theoretically later receive a demand for the defendant's costs.
The court needs reassurance that there was a fair and just outcome so with the form you may send a covering letter explaining that you have mutually agreed a settlement which covers all costs. You might also include a screenshot of your bank statement showing the payment.
The court may ask you to apply for a Case Management Conference and send a proposed order for directions.
The Case Management Conference is straight forward, just a hearing to see if both sides are ready for combat.
The form is online here:
http://hmctsformfinder.justice.gov.uk/courtfinder/forms/n244-eng.pdf
It's fairly straightforward and you can request the case management hearing to be by telephone.
The proposed order for directions is generally quite simple. If there are complexities then they, and the way to deal with them, should should become apparent in the course of the conference. Here's an example of an order for directions submitted by an EPUK member:
Proposed order for directions
Case no IP13S04xxx
Claimant: [name]
[address]
Defendants:
[name]
[company number if applicable]
[address]
2.xxy
address xxxx
1) The Claim is allocated to the Small Claims Track
2) Each party must file and serve copies of all documents on which that party intends to rely at the hearing, no later than fourteen days before the hearing.
The original documents must be brought to the hearing
Statement of Truth
"I believe that the facts stated in this response are true."
[signature], claimant
[date]
A few weeks after a claim is filed a fat envelope of paper will arrive.
There are a number of things to watch for:-
A mediation appointment must be made within 7 days of receipt of receiving this.
Hearing fee must be paid within 14 days of receiving the paperwork. (In one case a payment was requested and in another no payment was requested.)
A long list of information needs to be provided and questions answered before the hearing
Our member wrote back with a plain letter as below. There may be other matters in your own case and often there are a more recent screenshots as evidence so copy it all to the defendant:-
As ordered by the court order of [date], here is a list of issues to be resolved:-
Has the defendant infringed the claimant's copyright.
Was any infringement flagrant.
Is the defendant liable for damages and costs
The amount of those damages and costs to be paid by the defendant
As the claimant has received no communication from the defendant, this list is compiled only by the claimant.
Item 4 of the court order requires the claimant to provide copies of all documents on which he intends to rely. The claimant intends to rely on the arguments and evidence already provided in the particulars of claim which has already been served on the defendant and provided to the court. Another copy is provided herewith for the court. A number of additional supporting pieces of evidence are also included herewith as set out in the answers below.
Item 4a of the order requires the claimant to provide copies of the work or material which is the subject of this claim. The claimant has already provided this as part of the evidence provided with the particulars of claim. These are evidence numbers 1, 2, 3, 4, 5, 6, 11 & 12 ) with evidence number 1 being the original work and the others being copies of the infringing use of that work.
Item 4b of the order requires that the claimant submit all documents required for the case together with the letter making the claim and any reply along with a copy of each of the letters sent to the defendant (including the “Letter before claim”). Where no reply has been received by the claimant from the defendant you may state that the only knowledge of a defence is that which the defendant has provided directly to the court.
Item 4c requires signed statements setting out the evidence of all witnesses.
If there are no witnesses then a simple statement such as the following is enough.
“The claimant is intending to rely only on his own evidence as set out in the particulars of claim which is signed by the claimant. The claimant is willing to attend court, however the claimant would have no objection if the court prefers to hear the case on the papers without either party being present.
Item 4d requests any relevant document such as a licence agreement or contract. If there is none then a statement along the lines of “The claimant has no such documents and knows of no contract or other agreement with the defendant. The claimant's letters to the defendant are herewith provided.”
Item 4e requests the claimant provide a statement to say whether he is prepared to enter a licence agreement. The claimant hereby states that he is indeed willing to enter a licence agreement provided payment is made as set out in the particulars of claim and any costs arising from the claim are settled.
Item 4f requests the claimant provide details of what loss has been suffered and how this has been calculated.
Here is an example of a response from a recent case:
This information is set out in the particulars of claim section 4 and evidence has been provided as evidence number 8. Herewith supplied are evidence numbers 13,14,15,16, & 18 which are copies of routine sales correspondence showing the claimant normally licensing his images at 360.00 GBP per image as stated in the particulars of claim.
Evidence numbers 13 & 14 are screen shots of shopping cart transactions where customers have freely purchased the claimants photographs at 360.00 GBP each.
Evidence numbers 15, 16 & 17 are copies of invoices to customers who have willingly purchased images from the claimant at 360.00GBP each by payment means other than the shopping cart.
NB In compliance with the data protection act, personal information such as names, addresses and phone numbers have been redacted from the evidence supplied. Original, clean and un-redacted copies will be brought to court and are available for inspection at the defendants home address by arrangement.
The claimant also provides herewith evidence number 20 which proves the minimum duration of the infringing use which was used to calculate the interest as per the particulars of claim. This evidence number 20 is a screenshot of the infringing image taken while it was still hosted on the defendants website with the image properties being displayed by the “Mozilla Firefox” web browser program. This screenshot shows that the file was last modified on the 21st of May 2013 at 19:18pm. This means that the image has been present on the defendants server since at least this date. This proves the inaccuracy of defendants statement in his defence submitted to the court where he claimed the image was only used for “three to four months up to December 2013”. Clearly the image had been in use for at east 6 months prior to December 2013.
Item 4g. Any other documentation.
This is generally “none” but include copies if there is any.
5. All original documents are available for inspection by arrangement at [address]
6. Claimant does not need to display evidence in electronic form, however the evidence is available in digital form if the court requires it.
7. The claimant is not intending to use an expert witness.
8. The claimant does not intend to submit a skeleton argument as the basis of the claim is already simply and adequately outlined in the particulars of claim, The claimant is happy for the Particulars of claim to be used in place of a skeleton argument.
Appendix
a. Information to identify the work has been provided as evidence No 1 submitted with the particulars of claim.
The copyright work is an artistic work ( photograph ) as defined by the Copyright Designs and Patents Act 1988 section 1(a), section 4(1)(a) and section 4(2)(b)
b. Date work was first created :- [creation date]
c. How the work was created:-
The photograph was taken by the claimant working in his capacity of self employed photographer. The claimant chartered a commercially registered aircraft specifically for the purpose of taking aerial photographs of Staffordshire. The claimant employed a professional commercial pilot who flew the aircraft to the claimant's directions including special manoeuvres to position the aircraft in exactly the right position and configuration to obtain a beautiful panoramic view of [location].
The Author:-
The claimant, xxxxxxxxxxx Trading as xxxxxxxx
How Moral Rights are asserted:-
Moral rights are asserted by various statements throughout the claimant's numerous websites.
The claimant offers his work for sale at two different prices , one with moral rights asserted at xxxx GBP per image and with moral rights waived at xxxxGBP per image. This two price system is shown in the evidence submitted with the particulars of claim as follows:-
Evidence Number 9 the claimant's price list from the claimant's website showing the two prices for moral rights asserted and moral rights waived.
Evidence No 10, the claimants shopping cart from the claimant's main website showing the two prices for moral rights asserted and moral rights waived.
Evidence number 19, herewith enclosed is also a copy of the claimant's copyright page ( http://www.xxxxxxxxxxx ) from his main website which clearly asserts his moral rights.
The claimant runs numerous aerial photography websites, all of which assert moral rights including the following statements:-
“© copyright: All images, text and other content of this website are copyright of xxxx and may not be reproduced, copied, saved or printed without the written agreement of xxxx. All moral rights are asserted. *Unauthorised users of xxxx's images will face additional costs and penalties.”
Source: the claimant's website at http://www.xxxxxxxxxxxxxx
d. Details of the claimant's ownership.
The photograph was taken by the claimant personally. No other parties were involved with the operation of the camera nor the choice of composition. The claimant is a self employed photographer and had no employment or employment contract at the time the photograph was taken or any time since. The image was taken for the claimant's own stock portfolio with a view to resale via the claimant's website.
e. There are no other parties with an interest in the photograph which is the subject of this claim.
f. The actions the defendant has taken which infringe the claimants copyright :-
Unauthorised use of the photograph within the defendant's commercial website www.xxx.xxx with the image being hosted at http://www.xxxxx.xxx.jpg and the image being used on most or all of the defendant's web pages as the main header to each page.
g. Information to identify the infringing work has been provided to the defendant multiple times in correspondence and is set out in the particulars of claim. The image in question is a panoramic photograph of Stoke on Trent as seen in evidence number 1. This has been used on the defendant's commercial website www.xxxxxxxxxxx with the image being used on most or all of the defendant's web pages as the main header to each page, for example:-
http://www.xxxxxxxxxxxxx
Screenshots of this unauthorised use have been provided in the particulars of claim as evidence numbers 2,3,4,5,6,11 & 12.
h. The infringing work belonging to the claimant is the wide angle aerial photograph of Stoke on Trent. It is the only aerial photograph on evidence numbers 2, 3, 4, 5, 6, 11 & 12.
i. The infringing copy of the claimant's photograph is cropped from the centre of the original published version of the photograph (evidence number 1 )
j. The defendant has failed to disclose from where the defendant copied the claimant's work. Any of the following may have been possible:-
i) copied from the public section of one of the claimants websites
ii) copied from the private customer download section of the claimants websites.
Iii) copied from a third party authorised user of the image such as a book, website or print.
iv) copied from a third party unauthorised user of the image.
Given that the defendant has removed both the top and bottom of the image the claimant believes it is most likely the defendant obtained the image from the claimant's website. The original version on the claimant's website (evidence number 1) had copyright information in the top left and bottom right of the image. Removing this copyright information would be a logical explanation for the cropping of the image in the version used by the defendant. The defendant has already admitted in his defence that they sourced images from the Google search engine which would again indicate the claimant's website as the most likely source.
k. The damages claimed are set out in the claimant's particulars of claim which sets out grounds for the flagrancy claim under 97(2) in detail.
Statement of Truth : -
I believe that the facts stated in this document are true.
[signature]
[printed name]
[date]
Note from EPUK member re recent cases:
"The next stage is the hearing. In future I will request most cases to be heard on paper so I don't need to go. In the case that I attended the defendant didn't turn up but the judge did consider their defences and reduced my figure for each part of the claim. I was asked for proof of travel costs, I gave a receipt for my train. One judge also gave me 90 GBP lost earnings. The other judge requested proof of my hourly income. As I don't charge an hourly rate and had nothing with me, she refused to award any lost earnings. In future take a price list which has a price for half a days work! The other area where I was knocked down was that all my prices included vat which one judge knocked off all my awards as damages “do not include vat”.
Out of court settlement
If you start proceedings and then reach an agreement before the case is heard then you need to end the claim. Only the court can end a claim.
Previously, on reaching an agreement members simply wrote to the court and explained that but more recently the court has directed that a simple letter is not sufficient and that the claimant must file either a consent order or a notice of discontinuation. The latter may be done with the form here:-
http://hmctsformfinder.justice.gov.uk/courtfinder/forms/n279-eng.pdf
There is a warning before sending that. You must agree in writing with your opponent that your settlement agreement concludes all claims and counter claims including costs from both parties. If you just agree that it settles the claimants (your!) claim then you could theoretically later receive a demand for the defendant's costs.
The End of the infringement pathway : how to enforce a judgment:-
Once you have the judgment, enforcing the it can be problematic. In the absence of settlement by the due date one option is to hand it all over to the sheriff's office:-
http://thesheriffsoffice.com/instruct-us
NB their guide is for county court judgements, you need to go to the 'instruct us' page and click and download the “enforce a high court judgment or order” pdf.
There's a form to fill in and a fee of about 60 GBP. They provide a guide on how to use their services and what charges are applicable.
This law firm link may also be of use which is the solicitor the sheriff uses:-
http://www.breezeandwyles.co.uk/
There are other options for enforcement. You should have already ensured that the defendant has the necessary resources to pay before you began the case. The defendant can be forced to attend a court hearing and disclose details of their income, savings and other assets. The money can be taken from their bank account or from the account of a person or business who owes them money by a third party charging order issued by the court. None of these are necessarily straightforward.
Some lessons learned during litigation:-
Do not refer to “without prejudice” correspondence in any material that will go before the court especially in the particulars of claim. If you do this before the case is allocated to the small claims track the defendant can apply to his local court to have the particulars struck out. You would have no defence and could have to pay for the costs of this hearing including the defendant's legal costs which are likely to be more than the value of the photo.
If you supply images to agents be aware that even if they become insolvent they may have distributed your images to multiple subagents. The legal position will depend on the contract that you had with your agent. Whatever the contract states those subagents may carry on selling your images until you trace them all individually and write to them all individually telling them to stop.
Best practice is to not allow sublicensing in any agreement with an agent.
Similarly unless your contract with your agent prevents it, if they cease trading they may transfer their business including your images to another party. Again you should prevent this by specifying the contract is non transferable and automatically terminates on bankruptcy, insolvency, administration or cessation of trading.
Where a contract with an agent comes to an end beware of vague terms such as “de-listing”. De-listing sounds like they are no longer selling your images but that may not be the case. Make sure any termination is clear.
Appendix:
1- Disclosure:-
Defendants are required to provide full disclosure and failing to do so may be a factor
in awarding damages. There is some (complex) information here:
http://www.justice.gov.uk/courts/procedure-rules/civil/rules/part31
A final word of warning.
2- False disclosure statements
CPR 31.23
(1) Proceedings for contempt of court may be brought against a person if he makes, or causes to be made, a false disclosure statement, without an honest belief in its truth.
(Section 6 of Part 81 contains provisions in relation to committal for making a false disclosure statement.)
Check and double check that everything you state is factually accurate and verifiable. Reasonable assumptions and 'obvious' inferences are hostages to fortune. It only takes one statement that turns out to be mistaken to wreck your case.
© 2015 Jonathan Webb, David Hoffman
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REVISIONS(only non trivial revisions noted) October 4, 2015Clarified section on viewing image information and EXIF.Added additional reference cases.Updated various links.