INNOCENCE IS NO DEFENCE: HOFFMAN v DRUG ABUSE RESISTANCE EDUCATION (UK) LTD

Date: 26.01.2012

The Patents County Court issued a much needed judgment last week on the subject of websites infringing copyright in photographs.

The defendant, a charity, used 19 of professional photographer David Hoffman’s photographs on its websites without permission. The defendant had been told by its design company that the photographs were Crown copyright and could be used, but this turned out not to be the case. The defendant refused to pay Hoffman arguing that it “had not intentionally or knowingly infringed his copyright” and “the Department of Health and their misleading web site were the cause of any infringement and not ourselves.”

As the judge (His Honour Judge Birss QC) explained, “The fact that the defendant may have thought that it had permission to use the images is not a defence to infringement ... the policy of the law is that if there was in fact no permission, an infringement has occurred even if the person genuinely thought they had permission.”

In simple terms, innocence is no defence to this type of copyright infringement claim.

Nor did the fact that the websites were designed for the defendant by someone else let the defendant off the hook: “Since the websites in issue in this case were the defendant’s own websites, and in the absence of any other evidence to the contrary, I find that it is the defendant who has committed the acts restricted by [Section 20] in relation to the works on its websites.” (The judge had no hesitation in finding that the photographs had been communicated to the public via the website, in the terms of Section 20 of the Copyright, Designs & Patents Act 1988.)

The fact that the defendant may have thought it had permission to use the images didn’t give it a defence under another frequently misunderstood section either. Section 97 relieves a defendant of paying damages if it did not know and had no reason to believe that copyright subsisted in a work. In this case the defendant understood it had permission to use the photographs, which is quite different from (and inconsistent with) arguing that the defendant had no reason to believe copyright subsisted at all. Section 97 applies in rare situations where, for example, a work appears to be out of copyright because of its age.

Having established that Hoffman was entitled to damages, the judge explained that “The right sum by way of damages is the sum which a willing photographer in Mr Hoffman’s position and a willing user in the defendant’s position would have agreed upon as a charge for using the photographs on the websites.”

Hoffman claimed £28,500 (ie £250 per photograph based on NUJ minimum rates x 19 photographs x 4 years = £19,000 plus a 50% uplift for the use of the photographs as thumbnails). The judge shrunk this down to a damages award that felt right to him, £10,000, in the following way:

• There would have been a substantial discount for the licensing of 19 photographs.
• A 4 year licence would not have scaled linearly with the number of years.
• The judge believed that thumbnail use in this case would not have commanded additional fees.
• Not all 19 photographs were displayed on the websites for the whole period of 4 years.
  

The judge also awarded interest of £2,444.57 on top of this, applying a rate of 4%.

Photographers and image libraries are increasingly active in policing infringements of their work on the internet. Many infringements are deliberate, many are genuinely innocent (with website owners often blaming their designers). The Hoffman judgment will be welcomed by copyright owners who are confronted day in day out by the same old arguments. The judgment helpfully disposes of several of these in one document.

Charles Swan
Photography & Visual Arts / Intellectual Property / Digital Media / Advertising & Marketing

See Also:

SIMILAR PHOTOGRAPHS AND COPYRIGHT INFRINGEMENT: TEMPLE ISLAND COLLECTIONS v NEW ENGLISH TEAS

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