How to prove a copyright claim

9 May 2010

How to threaten a copyright claim

By Michael Coyle

If you are a copyright owner you have the right to sue a party where you believe that your work has been infringed. The Copyright Designs and Patents Act 1988(CDPA) defines those areas of work where copyright subsists. These will include a literary work i.e. a book or software (i.e. the code) or a photograph or drawings in a book.

You will need to identify and assert whether the work is copied in whole or indeed if a substantial part of your work has been copied directly or indirectly. Any copying must be done without your consent and it needs to be reproduced in any form. There are two forms of copyright infringement; primary and secondary. The latter occurs when someone copies your work and he knows or has reason to believe the work is an infringing copy. This includes the importation of the work. The former is more concerned with direct infringement. Often if the works are licensed to third parties, the CDPA allows for both you and your licensee to sue (section 96 and 101 of the CDPA).

So what is the first step?

When you have identified the copied works you will need to write a letter of claim. But ask yourself the following questions before the letter is sent:-

Are you satisfied that the work is original? Check that the work satisfies the originality threshold and that you qualify as a person entitled to bring a claim for copyright. The originality threshold is quite low it must of course not have been copied from another work and the work must have been created through your own skill, judgment and individual effort.

Secondly check that you qualify. This means that you need to satisfy two key criteria under the CDPA namely:

(1) As an author you must be a British citizen or a company incorporated in the UK; or

(2) The work was first published in the UK.

(3) Any letter of claim ought to comply with the pre action protocols and while there is no specific copyright protocol there is a draft protocol in existence and you need to be aware of these protocols.

Often clients instruct me to issue a claim at once seeking injunctive relief but unless there is an immediate threat to your business i.e. 10,000 counterfeit CDs being imported it is often wise to issue a letter of claim setting out your case in full and allowing the potential defendant a period of time to respond.

In dealing with the question of copying, there should be borne in mind the well established principle that there is no copyright in mere ideas, concepts, schemes, systems or methods. The letter needs to make use of a schedule or annexe and ensure that your works are identified clearly and at the same time highlight the copied works. A key part of this task is presentation. If the copied work is text, then highlight your text and the copied text and if necessary comment on the similarity in the main body of the letter.

For example: "We may say in our letter" Schedule 1 page 1 refers to our client's chapter two "Billy and Samson" where the opening text reads: - Billy wanted blood. He wanted to be able to see his mate's blood and wanted it now. Samson the dog was by his side and looked up at Billy with big plate like eyes those eyes wishing to know what Billy wasn't thinking".

Now compare this to Schedule 2 page 1 has a reference to your chapter one "Samson and Billy" which refers to "Samson wanted blood. He wanted to be able to see his mate's blood and wanted it now. Billy the dog was by his side and looked up at Samson with big plate like eyes, eyes wishing to know what Samson was thinking."

Quite clearly you have copied our client's work and merely changed the parties. This is a flagrant act of copyright infringement and our client demands redress." In this instance there can only really be four explanations:- 1. The work was copied from your work 2. You copied it 3. Both from a common source 4. Complete fluke.

In relation to copyright law only in the first case can it be said that an infringement has occurred. The overwhelming principle under UK law is there is no infringement unless use has been made, directly or indirectly, of the copyright work. Unlike a patent or registered design copyright is not a monopoly right and if the author of the above work can show that he created the text independently then there can be no infringement.

However in our experience most cases of infringement occur where the it is accepted that the 'copier' has never seen the original work but the dispute concerns the published work and the similarities contained in the work much will then depend on the quality of the copying and whether or not we can prove beyond reasonable doubt that 1 above is a 'shoe in'. Most cases never get to court - over 99.9% settle. The complainant receives his legal fees and we are left to argue over a sum in damages.

It is always wise to include a form of undertakings to the letter of claim, which requires the recipient of the letter to sign agreeing to pay you damages and or destroying the material in question.

Michael Coyle is a Solicitor Advocate and can be contacted at michael.coyle@lawdit.co.uk. Lawdit Solicitor (http://www.lawdit.co.uk started out life as a copyright and IP practice. It is now a commercial law firm with offices in London Southampton and associate offices in Malaga and Rome.)