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Enforcement

Jurisdiction

Which courts are empowered to hear copyright disputes?

For claims of damages up to £500,000, proceedings can be issued in the Intellectual Property Enterprise Court, a division of the High Court. The Intellectual Property Enterprise Court also operates a small claims arm, designed for cases where the amount sought is under £10,000. The county courts also have jurisdiction to hear and determine cases of copyright infringement. Alternatively, where the value of the claim is over £500,000, claimants may issue proceedings in the High Court, although in certain instances involving complex issues, or questions of public importance, it may nonetheless be appropriate to issue proceedings in the High Court even where the value of damages sought is below this figure.

Infringement

What acts constitute copyright infringement in your jurisdiction (including with regard to online and digital content)?

Copyright in a work is infringed by a person that, without the licence of the copyright owner, does or authorises another to do any of the following:

It is an infringement to commit any of the above acts in relation to the work as a whole or any substantial part of it (Section 16(3)(a)).

Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form, which includes storing the work in any medium by electronic means (Section 17(2)).

In relation to an artistic work, copying includes the making a 3D copy of a 2D work and the making of a 2D copy of a 3D work (Section 17(3)).

Copying in relation to 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 (Section 17(4)). As such, reshooting of a film sequence in which not a single frame of the copyright film had been included was held not to be a copy. Similarly, copyright in a sound recording will not be infringed where a person remakes or covers the same song or records the same song performed in a similar style; however, that act may infringe copyright in the works underlying the sound recording, such as the lyrics and music.

In recent years, there has been significant case law originating from the European Court of Justice, in which communication to the public by electronic transmission has been considered in the context of online acts such as linking and framing.

Is contributory infringement recognised in your jurisdiction (including liability for internet services providers and other online/digital actors)?

Contributory infringement is not recognised in the United Kingdom. The liability of accessories (eg, internet service providers (ISPs) for the infringements of their users) is a matter of national law and in the United Kingdom is premised on the principle of joint tortfeasorship.

There are two separate strands of accessory liability: procurement and common design. In order to be liable as an accessory, “the joint tortfeasor [must be] so involved in the commission of the tort as to make himself liable for the tort. Unless he has made the infringing act his own, he has not himself committed the tort” (Sabaf SpA v MFI Furniture Centres Ltd ([2002] EWCA Civ 976)). Mere “enablement, assistance or even encouragement” will not suffice (Twentieth Century Fox v Newzbin ([2010] EWHC 608 (Ch))). Accordingly, in the event that there is a common design, or a person procures the commission of an infringing act, those persons will have made the infringing act their own and will therefore be jointly liable for that infringement.

In any event, ISPs are given a limited safe harbour from monetary damages under Article 14 of the EU E-Commerce Directive where their services are used to host infringing content. The safe harbour applies if and to the extent that:

 "(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or (b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information."

Actions

What actions can be taken against copyright infringement (eg, civil, criminal or administrative), and what are the key features and requirements of each?

Rights holders can initiate either civil or (subject to evidencing intent) criminal proceedings. Whereas the burden of proof for civil proceedings is on the balance of probabilities, a criminal action for copyright infringement must be proved beyond all reasonable doubt.

Who can file a copyright infringement action?

Copyright infringement proceedings can be brought either by the owner of copyright in a work or, if applicable, an exclusive licensee (see Section 101 of the Copyright Designs and Patents Act 1988)

What is the statute of limitations for filing infringement actions?

The relevant period is six years from the date on which the cause of action accrued.

What is the usual timeframe for infringement actions?

Subject to extensions of time, proceedings at the Intellectual Property Enterprise Court are typically resolved within eight to 12 months. High Court proceedings can be drawn out over a longer period, with a typical case taking between 18 to 24 months from the issuing of proceedings to a decision.

What are the typical costs incurred in infringement actions?

For a case brought at the Intellectual Property Enterprise Court, legal costs over the course of proceedings could amount to within the region of £75,000 to £150,000, depending on the directions of the court. In High Court proceedings, costs are likely to amount to between £250,000 to £400,000.

How are attorneys’ fees handled? Can they be claimed in infringement actions?

As a rule, the losing party in litigation before the English Courts will be ordered to pay the costs of the winning party, as far as those costs are reasonable and proportionate. In practical terms, this amounts to approximately 60% to 70% recovery. In certain circumstances, it is also possible to ask the court to award indemnity costs (ie, on a pound-for-pound basis). Typically, indemnity costs are awarded only:

  • if one party’s conduct is adjudged to be particularly unreasonable; or
  • in instances relating to the rejection of settlement offers which the rejecting party then fails to beat at trial.  

In proceedings brought before the Intellectual Property Enterprise Court, there is a limit on recoverable costs of £75,000 (£50,000 on the final determination of a claim and £25,000 on an inquiry as to damages or account of profits).

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Injunctions may be sought at both an interim and final level. Applications for interim injunctions are common in actions for copyright infringement, as damages do not always amount to an adequate remedy for the claimant. A quia timet injunction may also be granted to combat the future risk of infringement arising.

An interim injunction is designed to safeguard the claimant’s interests pending the final outcome of an infringement action at trial. The general principles to be applied in determining whether to grant interim relief are set out in the famous case of American Cyanamid v Ethicon and include, among other things, the adequacy of damages as a remedy and the balance of convenience as between the parties. Generally, interim injunctions will be granted only where the claimant has provided a cross-undertaking in damages to compensate the defendant for any loss it sustains in the event that the injunction was later found not to have been justified.

In addition to interim relief, a claimant that succeeds at trial in establishing infringement of its copyright can typically request a permanent injunction in order to prevent future infringements.

Pursuant to Section 97A of the Copyright, Designs and Patents Act 1988, copyright holders can also seek an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright. This provision has been well-used by copyright holders over the past few years in connection with digital and online content, principally in connection with file sharing, file uploading and streaming.

Remedies

What remedies are available to owners of infringed copyrights?

In addition to seeking an injunction to prevent ongoing infringement, a claimant that has successfully made out a case for copyright infringement is entitled to an inquiry, in its election, as to damages or, alternatively, an account of profits. Whereas an account of profits is an equitable remedy that seeks to claw back the profits made unjustly by the infringer as a result of the infringement, a damages award is intended to compensate the claimant for the loss or damage it has suffered. The claimant must make an election once infringement is established. However, prior to so electing, the claimant will be entitled to disclosure from the defendant to ensure that an informed choice can be made. As an account of profits is an equitable remedy, the claimant’s failure to adhere to equitable principles such as clean hands will jeopardise its availability. An account of profits is likely to be awarded in cases involving intentional infringement. By contrast, where the infringement has been shown to be innocent, the court may refuse to grant an account.

The court may also consider it appropriate to award additional damages, having regard to the flagrancy of the infringement and any benefit accruing by the defendant due to the infringement (Section 97(2) of the Copyright, Designs and Patents Act).

The claimant can also seek delivery up or, at the claimant’s election:

  • the destruction on oath of all infringing articles;
  • the dissemination of any judgment in which the defendant is held liable;
  • interest on any amount awarded; and
  • a contribution towards its costs.

Customs enforcement

What customs enforcement measures are available to halt the import or export of pirated works?

Customs enforcement of IP rights at the external EU border is governed by the EU Customs Regulation (608/2013), which repealed Council Regulation (EC) 1383/2003. Underlying the provisions of the Customs Regulation is Council Regulation (EEC) No 2913/92 of October 12 1992 establishing the Community Customs Code (the Customs Code).

From May 1 2016 the Customs Code was recast and replaced by the EU Union Customs Code (952/2013). Implementation of the Union Customs Code does not affect the substantive effect of the Customs Code.

Where goods are subject to customs supervision or customs control, the relevant customs authority can carry out checks and take “proportionate identification measures” to ensure that goods entering the European Union from a third country do not infringe EU IP rights (Article 13(1) of the Customs Code; Article 2 of the Customs Regulation).

Accordingly, subject to an application being filed by an IP rights holder – whether pre-emptively or at the invitation of Her Majesty's Revenue and Customs (or another national EU customs authority) – which is submitted with respect to IP rights relating to that specific territory, goods originating from a third country “suspected of infringing an IPR” will be seized on entry at the EU border (Articles 17(1) and 18(1) of the Customs Regulation). The Customs Regulation clarifies that suspicion need only be based on “reasonable indications” (Article 2(7)) and that suspect goods may be detained by a customs authority on its own initiative, without an application in place (Recital 15).

Subsequently, goods which have been seized on the above basis can be destroyed by customs authorities without the need for a substantive hearing to determine whether an IP right has actually been infringed in the following circumstances:

  • the IP rights holder confirms in writing to the relevant customs authority within 10 working days of receiving notification of the seizure that “in his [or her] conviction” an IP right has been infringed;
  • within the same timeframe, the IP rights holder agreement to the destruction of the goods; and
  • the holder of the goods either provides confirmation in writing within 10 working days of receiving notification of detention of his or her agreement to their destruction, or alternatively fails to object, in which case confirmation is deemed to have been received.

Defence

What defences are available to infringers?

A broad array of defences are available under English law – for example:

  • fair dealing for the purposes of criticism and review, research or private study, reporting current events, parody, pastiche and caricature, and quotation;
  • the incidental inclusion of a copyright work in an artistic work, sound recording, film or broadcast;
  • the making of temporary copies, subject to certain qualifying criteria;
  • use of a copyright work for certain educational purposes or by libraries and archives;
  • exceptions relating to the creation of back-up copies, decompilation and studying of computer programs;
  • the creation of articles in 3D that are depicted in 2D form in a design drawing; and
  • disclosure in the public interest.

Appeal

What is the appeal procedure for infringement decisions?

On receipt of a negative decision, an appellant will have (subject to any stay sought) 21 days within which to file an appellant’s notice, with a further 14 days to file a skeleton argument. Appeals brought from a decision of the High Court will first require permission, either from the High Court or the appeal court itself, depending on whether the appeal in question is a first or second appeal. Permission to the appeal court is requested in the appellant’s notice. A decision on permission will typically be taken by the court on the papers, although in complex cases a hearing will be ordered. At this stage, the respondent will be encouraged to file a short statement arguing why permission should not be granted. In the event permission is granted, the respondent will be entitled to file a respondent’s notice, outlining the reasons why the original order should be upheld.

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