This week, we turn to remedies for copyright infringement – and how to act quickly without over-escalating.

Copyright subsistence and ownership

Copyright is a well-trodden area of law that enjoys a degree of international harmonisation. In the UK, it is an unregistered right and arises automatically upon the creation of a particular work. In the case of literary, dramatic and musical works, the right arises once the work is recorded in writing or otherwise. For other works such as artistic works, sound recordings and films, there is no specific fixation requirement as this is inherent in the creation of the work itself.

There are various requirements that need to be met before copyright in a work can be established. These include the following:

• Closed list of works: is the work within the closed list of works under Section 1(1) of the Copyright, Designs and Patents Act 1988? This includes literary works, artistic works and the like.
• For authorial works: is the work original? The standard is the ‘author’s own intellectual creation’ test, adopted from EU jurisprudence.
• For literary, dramatic and musical works: has the work been recorded in writing or otherwise? This is discussed above.
• Authorship: who is the author of the work? Are there joint authors? In the case of ‘computer-generated’ works, who made the arrangements necessary for the creation of the work?
• Qualification: does the work qualify for UK copyright protection? This is typically determined by reference to the location of the author or country of first publication of the work.
• Duration: is the work within the duration of protection for copyright?
• Ownership: who owns the work? This may be the author. However, if the work was created in the course of the author’s employment (but, importantly, not by a consultant or contractor) then it could be the employer. In addition, with copyright there can be a complicated chain of title and it is therefore important to bottom this out before issuing legal proceedings.

Once copyright subsistence and ownership have been established, we can then turn to options for enforcement. These are considered below.

1. Pre-action correspondence

A useful first step is often to send a cease a desist letter to an infringer, putting them on notice of your rights and demanding that they cease their infringing activities.

In the UK, this is effectively a prerequisite before issuing legal proceedings. The Practice Direction – Pre-Action Conduct and Protocols requires a claimant to first write to the defendant with enough information to understand its position and give them a chance to settle without issuing legal proceedings. Failure to do so can result in the claimant being significantly penalised in costs.

Undertakings typically accompany a cease and desist letter. These may include the following:

• Cease and desist from the infringing activity.
• Destroy/deliver up any infringing articles.
• Provide a witness statement with a signed statement of truth confirming compliance with the undertakings and providing details of all infringing sales.
• Pay damages/profits and costs.
• Confidentiality provisions.

Undertakings can be a very useful settlement tool as there is complete freedom on the parties to agree terms of settlement. This means that a global settlement requiring an infringer to stop their infringing activity in all jurisdictions can in principle be achieved, when a court injunction is typically limited to the territory in which proceedings have been issued. In addition, whilst pre-action legal costs are not strictly recoverable in UK proceedings, the parties are again free to negotiate payment of this as part of any settlement.

Resolving a matter at this stage is efficient and, importantly, cost-effective. However, a breach of any agreed undertakings ultimately gives rise to a claim for breach of contract, which could necessitate court intervention. The added value of an injunction in legal proceedings is that they often come with a penal notice. Breach of this can lead to contempt of court, with consequences as severe as committal to prison.

2. Online enforcement

This can be utilised alongside or instead of pre-action correspondence. There are many options for online enforcement, and in the context of copyright infringement can include the following:

• Notice and Takedown Procedures: the E-Commerce Directive established the "safe harbour" principle. Platform providers/hosts are not liable for user generated content unless they have "actual knowledge" of illegality and fail to act. This was implemented into UK law via the EC Regulations 2002 and therefore is still binding post-Brexit.
  This means that if you alert a platform provider or host of an infringement and they fail to take action, they could end up being personally liable for the infringement. Many providers will have specific copyright complaint procedures. This can often be a ‘DMCA’ complaints procedure, i.e. complaints under the U.S. Digital Millennium Copyright Act.
• Brand Protection Tools: there are also various brand protection tools that utilise AI and can help to expedite the process. This can include sweeping the internet/platforms for infringements and a streamlined system for filing takedowns.

Online enforcement can be utilised as a ‘quick and dirty’ method to have an infringing product or material removed and can sometimes be a very quick fix. It can also on occasion result in an entire website being taken down. However, results can vary. There is usually an option for infringers to file counter-notices, and this can result in infringing material being put back online. Alternatively, platforms/hosts may decide to keep the material offline (or allow it to remain online) and let the parties hash things out themselves, requiring a resolution or court order to take action.

In addition, with this method of enforcement there is no compensation, nor a contract or court order preventing the infringement from reoccurring. For that reason, it is sometimes best utilised in tandem with a cease and desist letter. However, if an infringer is hard to identify or locate then online enforcement can be a useful alternative.

3. Litigation

Litigation is expensive, time-consuming and is typically a last resort. In England, copyright infringement proceedings can be issued in one of two courts, which offer different benefits:

• Intellectual Property Enterprise Court: offers a streamlined process where disclosure, witness evidence, expert evidence and trial length (generally 2 days maximum) are severely restricted. There is also a limit of £500k for an award of damages/profits, and a limit on legal costs recovery of £60k for a determination on liability and £30k for a determination on quantum.
• Chancery Division of the High Court: no restriction on the litigation process and no restriction on an award of damages/profits or legal costs recovery. Claims will typically take significantly longer (often 18 months or more) and exposure is much greater as the losing party typically has to pay the winning party’s legal costs. There is also the option of a ‘Shorter Trial Scheme’ which can expedite the process.

Remedies in litigation are comprehensive and can include an injunction to restrain infringing activities, delivery up/destruction of infringing articles/materials, an inquiry as to and an award of damages/profits, an order for publication and dissemination of the judgment at the defendant’s cost, legal costs and interest. However, compensation is limited to infringing activities undertaken in the UK and the scope of the injunction only covers UK activities. Therefore, if a global settlement is sought, this will need to be done out of court – and of course parties to litigation are still free to settle out of court at any stage during proceedings.

Ultimately, whilst there are risks involved with litigation, the threat of or issuing of proceedings can be an extremely effective measure where an infringer has failed to engage with pre-action correspondence or cease their infringing activities.

Points to consider for enforcement

1. Who is the infringer and where are they based? Are you able to identify the infringer and their location, in order to enforce a judgment against them?
2. What remedies are you seeking? Are you happy if the result is simply that an infringing product/material is removed from a website or do you want compensation as well?
3. If you are seeking compensation, how much is the claim worth? This can determine whether it is worthwhile issuing legal proceedings and the appropriate court in which to issue a claim.
4. Is the infringement egregious or deliberate? If so, you may want a publication and dissemination order depending on the infringer, as this can be particularly embarrassing.

For information on how we can help with the protection and enforcement of your intellectual property rights, please reach out to Nicholas Buckland (Nicholas.buckland@lewissilkin.com) and Alexander Fewtrell (alex.fewtrell@lewissilkin.com).