Copyright infringement

Copyright infringement

Contents

Primary infringement

Primary infringement occurs if a person does any of the following acts in the UK with respect to the whole or a substantial part of a copyright work, either directly or indirectly, without the consent or licence of the copyright owner:

  • copy it;
  • issue copies of it to the public;
  • rent or lend it to the public;
  • perform, show or play it in public;
  • communicate it to the public;
  • make an adaptation of it; or
  • do any of the above in relation to an adaptation of it.

It is also an infringement of copyright to authorise another to do any of these acts.

Copying

Copying in relation to:

  • literary, dramatic, musical or artistic work means reproducing the work in any material form, including storing it in any medium by electronic means;
  • artistic work includes the making of a copy in 3D of a 2D work and the making of a copy in 2D of a 3D work;
  • a film or broadcast includes making a photograph of the whole or any substantial part of any image forming part of the film or broadcast;
  • the typographical arrangement of a published edition means making a facsimile copy of the arrangement, which includes a copy on a reduced or enlarged scale;
  • any description of work includes the making of copies which are transient or are incidental to some other use of the work. An exception applies here - see 'Making of temporary copies', below.

When considering whether a substantial part of a copyright work has been copied, the question is whether the part of the copyright work which has been copied is a substantial part of the copyright work. The test of substantiality is qualitative not quantitative. In other words, substance is a question of the quality (in the sense of the quality of originality) of the extracted part rather than the quantity.

Therefore, if the element which is copied is very small but critical to the original work there may well be copyright infringement on the basis that it is a substantial part, judged qualitatively, of the original work.

The relevant inquiry is as to the level of the author's skill and labour appropriated by the copier. The proper question is whether the copied part is sufficient to infringe the author's intellectual creation in the original work.

Issuing copies to the public

Issuing copies of a work to the public is the act of putting into circulation in the UK copies not previously put into circulation in the European Economic Area by or with the consent of the copyright owner.

References to the issue of copies of a work include the issue of the original.

References to the issue to the public of copies of a work do not include any subsequent distribution, sale, hiring or loan of copies previously put into circulation.

An offer for sale of a copyright work can amount to infringement of the distribution right even where no formal sale has been concluded.

The distribution right can also be infringed where a shop stores goods bearing a copyright-protected motif, having already unlawfully offered for sale other such goods, provided the stored goods were actually intended for sale in the territory of the member state in which that motif was protected.

A seller makes a distribution to the public in an EU member state if it directs its advertising at members of the public in that state and creates or make available to them a specific delivery arrangement and method of payment (or it allows others to do so) that enables them to purchase copies of works protected by copyright in that state (resulting in a delivery in that state).

The sale of goods to a person in the UK via a non-EEA website, which is aimed at UK customers amounts to issuing goods to persons in the UK.

Providing a copy of a work to a single person will amount to putting copies of the work into circulation.

Renting or lending the work to the public

The rental or lending of copies of the work (including the original) to the public is an act restricted by copyright in:

  • literary, dramatic or musical works;
  • artistic works, except for works of architecture or a work of applied art (i.e. articles to which an artistic work has been applied, such as cars or memorabilia featuring an artistic work); or
  • a film or a sound recording.

The rental or lending right does not cover broadcasts or typographical arrangements.

Rental is making a copy of the work available for use, on terms that it will or may be returned, for direct or indirect economic or commercial advantage.

Lending is making a copy of the work available for use on terms that it will or may be returned, otherwise than for direct or indirect economic or commercial advantage, through an establishment which is accessible to the public (e.g. public libraries).

It does not constitute rental or lending to make available copies of a work for:

  • the purpose of public performance, playing or showing in public or communication to the public;
  • exhibition in public; or
  • on-the-spot reference use.

Performing, showing or playing the work in public

The following acts are restricted by copyright:

  • performance of a literary, dramatic or musical work in public; and
  • playing or showing a sound recording, film or broadcast in public.

Performance includes:

  • delivery, in the case of lectures, addresses, speeches and sermons; and
  • any mode of visual or acoustic presentation of the relevant works, including presentation by means of a sound recording, film or broadcast of the work.

The public is given a wide meaning; essentially, only domestic or family circles will not be deemed to constitute the public for the purpose of these performance or playing/showing rights.

These rights are of considerable practical and commercial importance. Their effect is that performers will usually need licences to perform an existing literary, dramatic or musical work, while businesses such as public houses, restaurants or shops will generally need licences from more than one collecting society to play films or recorded music.

Communicating the work to the public

The communication to the public of the work is an act restricted by the copyright in a literary, dramatic, musical or artistic work, a sound recording or film or a broadcast.

Communication to the public means a communication to the public by electronic transmission, and includes:

  • broadcasting the work in question; and
  • making the relevant work available to the public via 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.

The concept of communication to the public has to be interpreted broadly.

It refers to any transmission of the protected works, irrespective of the technical means or process used.

The term public refers to an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons. The cumulative effect of making the works available to potential recipients should be taken into account.

It is also necessary for the work broadcast to be transmitted to a new public, i.e. a public not taken into account by the authors of the protected works when they authorised their use by the communication to the original public.

Broadcasting a work means electronically transmitting visual images, sounds or other information:

  • for simultaneous reception by members of the public and capable of being lawfully received by them; or
  • at a time determined solely by the person making the transmission for presentation to members of the public.

Broadcasting does not include transmissions via the internet unless they are analogous to traditional broadcasting.

The making available right is intended to cover on-demand or other interactive services, which are accessed at a time and place chosen by members of the public. Accordingly, it will cover internet transmissions of a non-broadcast kind, wireless and cable broadcasts, and on-demand transmissions by electronic means.

Making an adaptation

The following acts are restricted by copyright:

  • making an adaptation of a literary, dramatic or musical work. For this purpose, an adaptation is made when it is recorded in writing or otherwise
  • doing any of the acts restricted by copyright in relation to an adaptation of a literary, dramatic or musical work, or making an adaptation of such an adaptation. The effect of this is that adaptations of literary, dramatic or musical works are also themselves afforded protection. In this case, it does not matter whether the adaptation has been recorded, in writing or otherwise, at the time the act is done.

In relation to a dramatic work, a literary work other than a computer program or database, an adaptation means:

  • a translation of the work;
  • a version of a dramatic work in which it is converted into a non-dramatic work;
  • a version of a non-dramatic work in which it is converted into a dramatic work; or
  • a version of the work in which the story or action is conveyed wholly or mainly by means of pictures in a form suitable for reproduction in a book or in a newspaper, magazine or similar periodical.

An adaptation of a database means an arrangement, altered version or translation of the database.

An adaptation of a musical work means an arrangement or transcription of the work.

Authorisation

It is also an act of infringement to authorise another to do any of the restricted acts set out above without the licence of the copyright owner.

Authorising means the grant or purported grant, express or implied, of the right to do the act complained of. Enabling another to infringe copyright does not suffice.

An act of unlawful authorisation must involve some element of control over the ultimate infringing acts.

Secondary infringement

Secondary infringement occurs when, in relation to an article which is, or which they know or have reason to believe is an infringing copy of the work, a person without the licence of the copyright owner:

  • Imports it into the UK other than for their private and domestic use
  • Possesses it in the course of business
  • Sells or hires it or offers or exposes it for sale or hire
  • Distributes or exhibits it in public in the course of business
  • Distributes it (other than in the course of business) to an extent which prejudicially affects the copyright owner

Secondary infringement also occurs if a person:

  • Makes, imports, possesses in the course of a business or sells or hires, or offers or exposes for sale or hire, an article specially designed or adapted to make copies of a copyright work knowing or having reason to believe that it is to be used to make infringing copies
  • Transmits a copy of the work by means of a telecommunication system (other than by communication to the public), knowing or having reason to believe that infringing copies of the work will be made as a result of the reception of the transmission in the UK or elsewhere
  • Permits the use of a place of public entertainment for a performance which has infringed copyright in a literary, dramatic or musical work, unless when that person gave permission they believed on reasonable grounds that the performance would not infringe copyright
  • Supplies apparatus for playing sound recordings, showing films or receiving visual images or sounds conveyed by electronic means, or a substantial part of such apparatus, which has been used to perform, play or show a copyright work in public so as to infringe copyright, if they knew or had reason to believe such apparatus was likely to be used to infringe the copyright or, where the normal use of the apparatus would involve a public performance, playing or showing, lack of belief on reasonable grounds that it would not be used to infringe copyright
  • As occupier of premises, permits such apparatus, or a substantial part of such apparatus, which has been used to perform, play or show a copyright work in public so as to infringe copyright, to be brought on premises knowing or having reason to believe that the apparatus was likely to be used to infringe copyright
  • Supplies a copy of a sound recording or film which has been used, with such apparatus, to perform, play or show a copyright work in public so as to infringe copyright knowing or having reason to believe that the copy of the sound recording or film, or a copy made from it, would be used to infringe copyright

An article will be an infringing copy if:

  • Its making constituted an act of primary infringement of copyright in the relevant work; or
  • It has been imported into the UK, or its importation into the UK is proposed, and its making in the UK would have infringed copyright in the work or breached an exclusive licence relating to the work

Permitted acts

Various acts can be carried out in relation to copyright works notwithstanding the subsistence of copyright. The following is not a complete list.

Fair dealing

'Fair dealing' with copyright work is permitted for the purposes of:

  • Research for a non-commercial purpose, provided it is accompanied by a sufficient acknowledgement, unless this is impossible for reasons of practicality or otherwise;
  • Private study;
  • Any copyright work for the purpose of criticism or review of that or another work or of a performance of a work, provided the work has been made available to the public, and provided it is accompanied by a sufficient acknowledgement. A work has been made available to the public for the purpose of the criticism or review defence if, not taking into account any unauthorised acts, it has been made available by any means, including by issuing copies to the public, renting or lending copies to the public, making copies available via an electronic retrieval system, performing, exhibiting, playing or showing the work in public or communicating it to the public;
  • Any copyright work, other than a photograph, for the purpose of reporting current events, provided it is accompanied by a sufficient acknowledgement. An acknowledgement is not required in relation to the reporting of current events by means of a sound recording, film or broadcast where this would be impossible for reasons of practicality or otherwise;
  • Quotation from a work which has been made available to the public is permitted, where the use of the quotation is fair dealing; the extent of the quotation is not more than required by the specific purpose for which it is used; and the quotation is accompanied by sufficient acknowledgement (unless this would be impossible for reasons of practicality or otherwise); or
  • Parody, caricature, pastiche. The essential characteristics of a parody are that it evokes an existing work while being noticeably different from it, and constitutes an expression of humour or mockery.

What is fair dealing?

Fair dealing is a question of degree, or of fact and impression.

The following are the main factors relevant to fair dealing:

  • Whether the alleged fair dealing commercially competed with the exploitation of the copyright work (by far the most important factor). If it does, a fair dealing defence is very unlikely to succeed.
  • Whether the work has already been published. If it has not, especially where it has been obtained by breach of confidence, the courts will be reluctant to say the dealing is fair.
  • The amount and importance of the work taken. In some cases, the taking of an excessive amount, or taking a small amount on a regular basis, would render the dealing unfair.

The court will have regard to whether a fair-minded and honest person would have dealt with the copyright work as the defendant did and the extent to which the use made of the copyright material was necessary for the relevant purpose.

What is sufficient acknowledgement?

Sufficient acknowledgement means an acknowledgement identifying the copyright work, by its title or other description, and the author, unless the work is:

  • A published work which was published anonymously; or
  • An unpublished work in respect of which it is not possible to ascertain the identity of the author by reasonable inquiry.

Making of temporary copies

It does not infringe copyright in a literary work, other than a computer program or a database, or in a dramatic, musical or artistic work, the typographical arrangement of a published edition, a sound recording or a film, to make a temporary copy which is transient or incidental and which:

  • Is an integral and essential part of a technological process;
  • Has the sole purpose of enabling: a transmission of the work in a network between third parties by an intermediary; or a lawful use of the work; and
  • Has no independent economic significance.

This covers, e.g., browsing material on the internet.

Remedies

Remedies for infringement of copyright include the following:

  • Interlocutory relief
  • Order for delivery up
  • Seizure of infringing copies and other articles
  • Forfeiture
  • Final injunction (or, in Scotland, interdict)
  • Damages or an account of profits

Interlocutory relief

Examples:

  • An order for the disclosure of the identity of a wrongdoer against anyone who, albeit innocently, becomes involved in the wrongful act of another; e.g. where a copyright owner has evidence that particular users of an ISP's service have infringed copyright but is unable to find out the users' identity and address.
  • A search order providing for the preservation of the subject matter of an action, or of documents and articles relating to the action.
  • A freezing order in order to preserve property before any judgment can be obtained or satisfied.
  • An interim injunction (an injunction granted before the final hearing); e.g. to prevent further copyright infringement before the final hearing of the matter takes place.

Order for delivery up

A copyright owner may apply to the court seeking an order for delivery up (to the owner or another person, such as their solicitor) of:

  • Infringing copies of the relevant copyright work which a person has in their possession, custody or control in the course of a business; or
  • Articles specifically designed or adapted for making copies of a particular copyright work, which a person has in their possession, custody or control knowing or having reason to believe that it has been or is to be used to make infringing copies.

Seizure

A copyright owner (or person authorised by them) has the right to seize infringing copies of a work found being offered for sale or hire, in respect of which the copyright owner would be entitled to apply for an order for delivery up, provided that before anything is seized, notice of the time and place of the proposed seizure is given to a local police station and a notice is left at the place from which goods are seized containing certain prescribed particulars.

Forfeiture

An order may be sought that infringing copies or articles seized are destroyed or forfeited to the copyright owner.

Final injunction (interdict in Scotland)

A court order prohibiting further copyright infringement where a person succeeds in establishing copyright infringement at a full trial.

Damages or account of profits

A person (claimant) who succeeds in establishing copyright infringement can elect for either an account of profits or an inquiry into damages. Damages are intended to put the claimant in the position it would have been in if the infringing act had not occurred, while an account of profits is intended to make the infringer (defendant) disgorge the profits made as a result of the infringing act. Before making this choice, the claimant is entitled to seek certain outline commercial information.

Where the claimant elects for damages, the court also has discretion to award such additional damages as it considers the justice of the case requires, having regard to all the circumstances, in particular:

  • The flagrancy of the infringement; and
  • Any benefit accruing to the defendant by reason of the infringement.

The purpose of an account of profits is to take from the infringer the profits made as a result of the infringing act and give them to the wronged party. The account is, broadly, of the net profits made by the defendant as a result of the infringement.

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