How To Defend A Claim For Copyright Infringement

Lisa Patten April 11, 2024

Receiving a letter alleging that you have infringed a third party’s copyright can be overwhelming and stressful. When sent by specialist intellectual property solicitors, the correspondence is sometimes filled with legal jargon and includes threats that Court action will be taken against you unless you adhere to the demands set out.

Whilst copyright infringement is a serious matter, not all infringement allegations stand up to scrutiny. Here, we take a look at the intricacies of copyright law. We explain the types of acts that can constitute infringement and how allegations of copyright infringement can be defended. Finally, we describe the steps you can take to avoid infringing copyright.

What is copyright?

To understand how copyright might be infringed, it is essential to understand what copyright is and what it aims to protect.

Copyright is part of a parcel of rights known as intellectual property rights or “IPRs” for short. Simply put, copyright does precisely as its name suggests – it gives its owner the right to prevent others from copying their work.

Unlike other types of intellectual property, such as trade marks and patents, that need to be registered, copyright arises automatically upon creation, so it’s free to own. In the UK (unlike the US), registration is not required in order to bring a copyright infringement claim.

What does copyright protect?

Copyright protects original literary, dramatic, musical or artistic works. It relates to the expression of an idea in material form but not to the idea itself. If you tell someone about a good idea you have had and they subsequently copy your idea, you have no recourse against them unless you have taken steps to record it.

The work in question must be original, usually meaning that it derived from the author’s own skill, labour and judgment and was not merely copied from something else. This is not a particularly onerous test. A work does not need to be novel or inventive to qualify for copyright protection, nor does it need artistic merit.

Examples of the types of works that might be protected by copyright include the following:

Novels, poems and song lyrics;
Films and videogames;
Photographs, prints and paintings;
Sculptures and drawings (artistic and technical e.g., diagrams, maps, architectural drawings);
Databases, computer programs and websites;
Plays and dance;
Logos;
Broadcasts and cable programmes;
Manuals, magazines and periodicals; and
Commercial documents, marketing copy, leaflets, brochures, newsletters, blogs and articles.

What constitutes copyright infringement?

A copyright owner has the exclusive right to deal with the work in any way, including to copy, adapt, display and distribute it. If a third party undertakes any acts reserved exclusively for the owner, they may be liable for copyright infringement.

Examples of the types of acts that may constitute copyright infringement include the following:

Selling products incorporating a third party’s photograph, artwork or poetry;
Copying a third party’s website or software source code;
Producing and selling ‘fan art’, such as items incorporating art taken from album covers or celebrity photographs;
Playing music protected by copyright on your business premises without the requisite licence;
Copying a competitor’s branding;
Using a third-party’s photograph to sell items either on a website or other online means or in hard copy advertising; and
Sampling a third party’s song without their permission.

Crucially, the test for infringement relates to both the whole and a ‘substantial part’ of a work. The question of whether or not your use relates to a ‘substantial part’ and so constitutes infringement is not an easy one. It is a qualitative rather than a quantitative test, so no hard and fast rules can be applied regarding the proportion of the work that can be copied before infringement arises. Instead, each case must be looked at on its own facts. In some cases, someone using a large percentage of a copyright work might escape infringement, while in others, using a relatively small percentage may be deemed an infringement.

What are the legal consequences of copyright infringement?

If a copyright owner considers that you are infringing their rights, they can issue Court proceedings against you. If successful, they are likely to be granted the following relief:

An injunction forcing you to cease and desist from your infringing activities. Injunctions are powerful remedies. If you breach an injunction, you may be held in contempt of Court and at risk of imprisonment.
Damages or an account of profits. Damages are intended to compensate the copyright owner for any financial loss your infringement caused, whereas an account of profits is based on the profit attributable to your infringing activities. The copyright owner can choose whichever basis of calculation is most favourable to them. A court may also award additional damages where the infringement is flagrant (for instance, where it is deliberate and calculated or reckless) or to take account of the benefit the infringer had gained as a result of the infringement.
Destruction or delivery up of all offending material.
Their legal costs. The usual rule in litigation is that costs follow the event, meaning that the unsuccessful party must pay the successful party’s costs. This is rarely, if ever, the total amount they have incurred but can nonetheless be a considerable sum.

The uncertainty surrounding intellectual property litigation is such that most copyright infringement claims are settled before trial. Often, the parties enter into settlement discussions early on in the process and come to an agreement through negotiations or alternative dispute resolution methods, such as mediation.

How can you defend a claim for copyright infringement?

If you have received a letter alleging that you are liable for copyright infringement, don’t panic. Whilst, at first blush, the claims may appear valid, it is important to scrutinise them carefully and assess their merit before taking any action, save for seeking legal advice. Copyright law is highly complex and technical. It is essential to enlist the help of expert intellectual property solicitors with experience of copyright infringement claims to ensure you are best placed to address the allegations.

The exact nature of your defence will depend on the allegations against you and the circumstances of the case. However, it is helpful to turn your mind to the following issues when considering your position:

Does copyright subsist in the work?

As we have explained, a work must satisfy a series of legal criteria to qualify for copyright protection. Whilst all allegations of copyright infringement will invariably include assertions to this effect, it is important to test those assertions before accepting them as accurate.

Depending on the extent of information and documentation provided, you should raise a series of questions to put the complainant to proof of their position. The types of questions that may be pertinent include the following:

How did the complainant create the work?
When did they allegedly create it?
Can they provide proof of their alleged creation, such as time-stamped design drawings? If not, why not?
Did they use any third-party work as inspiration for their own?

In addition, it is sensible to search for similar designs that were created before the work you are alleged to have infringed, to identify any that may defeat the complainant’s originality claims.

If a work does not benefit from copyright protection, the allegations against you fail at the first hurdle.

Has copyright protection expired?

In most cases, given the considerable long term of protection (typically 70 years from the death of the author or 50 years if the work was computer generated), the answer will be “no”.

However, it is always worth asking, as the duration of copyright protection depends on the nature of the protected work itself. For instance, copyright in typographical arrangements has the shortest duration, lasting for 25 years from the end of the year in which the edition was first published.

Does the complainant own the copyright?

Only the copyright owner or their exclusive licensee can bring infringement proceedings. If the complainant is neither, they are not at liberty to proceed against you as threatened.

As a general rule, the ‘author’ of the work is deemed by law to be the owner. If, for example, the complainant commissioned a supplier or freelancer to create the work, then unless they have put the necessary agreements in place to transfer ownership, they do not own the copyright and their claim cannot proceed.

Can you prove that you created your work independently of the complainant’s work?

Copyright is not a monopolistic right. To prove infringement, the copyright owner must show that you copied their work. So, if you can prove that you created your work independently of theirs, the claim will fail.

The types of evidence that may assist you in proving that you did not copy include the following:

Dated design drawings or any other recording of the work including any preparatory stage work, sketches, etc. Clearly, if your drawings prove that you designed your work before the complainant designed theirs, their claims that you copied will not bear scrutiny.

If your work was created later than theirs, but before theirs was made available to the public, they may face an uphill struggle to prove that you copied, unless circumstances exist that mean you had access to their work before it was put on the market.

Correspondence regarding the design process of your work. Any internal emails, or emails with manufacturers or suppliers that show your design process and prove it did not include reference to the complainant’s work can assist in establishing you did not copy it.

Can you show that your work is different to the complainant’s?

As we have seen, you must have copied the whole or a ‘substantial part’ of the original work to have infringed it. If the two works are not sufficiently similar, the infringement claim will fail.

When considering the extent of the similarities between the original and the allegedly infringing works, anything that is commonplace can be disregarded. Accordingly, if your work resembles the complainant’s only insofar as commonplace elements go, you may not be liable for infringement.

Can you rely on any other defence?

Even if you have copied the complainant’s work, you may escape liability for infringement if you can show that one of the recognised defences to copyright infringement applies to your case.

The defences you may be able to rely on include the following so-called “fair-dealing” defences:

Your use was non-commercial and for the purposes of research or private study;
You reproduced the work for the purposes of criticism or review, or as use for a quotation;
You used the work to report news or current events (this defence does not apply to photographs); or
You used the work to create a parody, caricature or pastiche.

How to avoid infringing copyright

Whilst experienced intellectual property solicitors have an array of tools in their armoury to defend a claim for copyright infringement on your behalf where the circumstances allow, such claims can be hard-fought, lengthy and expensive. Prevention is, therefore, always better than cure, and avoiding liability for copyright infringement in the first place is far preferable to addressing such allegations later.

There are several proactive steps you can take to minimise your risk of infringing a third party’s copyright. They include the following:

Create original work

Since liability for copyright infringement requires that you have copied the complainant’s work, the easiest way to avoid infringing copyright is to ensure that all of your work is your own creation, and original. You should keep detailed notes and records of your design process so that, if any infringement allegations arise, you can prove that any similarities result from coincidence as opposed to copying.

Obtain permission before you use someone else’s work

Your business model may rely on using third-party intellectual property. You might, for example, produce band or character merchandise such as posters, t-shirts or calendars or use photographic images on your website. Crucially, despite its prevalence on sites such as Etsy and eBay or on the Internet generally, unlicenced ‘fan art’ or the use of third-party photographic images without the copyright owner’s prior permission often constitutes copyright infringement.

If you wish to use a third party’s work, you should always seek their permission before proceeding. Many brand owners operate licensing programmes allowing others to use their intellectual property in return for a fee.

You should also be aware that authors of literary, dramatic, musical or artistic works and films also own moral rights independent of (and in addition to ) their copyright in the relevant work. These rights allow the owner to:

Be identified as the author or director of the work;
Object to derogatory treatment of the work;
Not to suffer false attribution of the work; and
Privacy in respect of certain films and photographs.

Therefore, to avoid a further claim from the moral rights owner (who could be different from the copyright owner), it is advisable to ensure that the moral rights owner is consulted as to being identified as the author of the work in question and agrees to any proposed modification of their work prior to its use, as well as obtaining a licence to use the work from the copyright owner.

Carefully review licensing agreements

If you take a licence from the rights owner to use their copyright works, you must ensure the agreement covers all your proposed uses. You may require a licence for worldwide use for a website with global reach for an indefinite duration, which could be commercial or editorial. Licences for online use expose copyright owners to the risk of further copying, so will generally cost more than hard copy use. Many such agreements contain geographical restrictions or are limited to the goods expressly stated. If you use the work other than as agreed, you may be liable for both breach of contract and copyright infringement.

Put intellectual property policies in place

If you employ others, in this digital age where copying text and images can be done with such ease, it is crucial that you have an effective intellectual property policy in place so your employees are aware of and understand their obligations concerning intellectual property. Some businesses go further and hold regular in-house training on copyright and other intellectual property issues pertinent to the business.

By equipping your staff with the knowledge and understanding required to make informed choices regarding intellectual property and making it clear that any infringements will not be tolerated, you can significantly reduce the risk of your employees exposing the business to costly infringement proceedings.

The UK Copyright service offers a useful PDF Factsheet P-01 on UK Copyright Law which can be used as a guide for your staff who provide creative/design input.

Ensure your supplier agreements are watertight

Many businesses outsource elements of their business to third parties. Clothing retailers, for example, might use third-party suppliers to design items of clothing or prints on their behalf. Your agreements with them should include provisions obliging them to create original designs and to indemnify you for any losses incurred if it later transpires that they copied a third party, as well as an assignment of the relevant copyright to you and waiver of their moral rights (the latter is possible in the UK, but not in some overseas jurisdictions).

It is worth noting at this juncture that acts such as importing or distributing infringing items will constitute an infringement only insofar as you knew, or had reason to believe, that they were copied. Nevertheless, it is important to avoid such a situation arising in the first place, since you may have to recall stock once you are aware of the infringement and suffer the resultant loss.

Seek legal advice

Copyright is a complicated area of law and one that is ever-evolving to deal with new and novel situations. If you are unsure how best to safeguard your business against copyright infringement claims, you should seek expert legal advice.

Key takeaways

Copyright owners take any infringement of their copyright extremely seriously, and many will not hesitate to take legal action to protect this very valuable asset. However, not all copyright infringement claims have merit, and some can be successfully defended. If the complainant’s work does not benefit from copyright infringement, or if you can prove that you did not copy it, the claim will fail.

To assist your legal adviser in defending a copyright infringement claim on your behalf, you should keep detailed and dated records relating to your design processes and the development of your goods. By ensuring that all of your work is original and having evidence to prove originality, not only will you be best placed to defend an infringement claim, but you will also be well-equipped to enforce your own rights against anyone copying your work.

How can we help?

At the Jonathan Lea Network, we can:

Advise on the creation, protection and monetisation of your copyright works
Resolve copyright disputes, including ownership and infringement issues
Conduct trade mark clearance searches
File trade mark applications to register a brand name, trading name, logo or other trade mark and manage the process through to registration (in the UK and overseas)
Assist in opposing registration of someone else’s conflicting mark or defending you against such threatened opposition
Assist in post-registration matters, for instance, non-use cancellation, consents, limitation of the specification of goods and services
Take action to prevent the use of your trade mark or similar mark by third parties
Defend you if you are accused of using someone else’s trade mark
Advise you in choosing an appropriate trade mark – some trade marks are legally stronger than others
Assist in the exploitation of your trade mark, for instance, licensing, sale, mortgaging, franchising, etc
Assist with the renewal of your trade marks

For all new clients, we offer a no-cost and no-obligation call of up to 20 minutes to first discuss your matter and requirements before confirming a scope of work and quote. This can be arranged by sending your details together with an overview of your matter through our contact form.

This article is intended for general information only, applies to the law at the time of publication, is not specific to the facts of your case and is not intended to be a replacement for legal advice. It is recommended that specific professional advice is sought before relying on any of the information given. © Jonathan Lea Limited 2024.