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Recent developments

Legal developments

Have there been any notable recent legal developments regarding copyright in your jurisdiction, including any regulatory changes and recent case law?

The draft EU Directive on Copyright in the Digital Single Market is likely to have a significant impact on the rights of copyright holders across the European Union (including, as things stand, the United Kingdom). The directive seeks to introduce a new right in favour of press publishers, as well as controversially creating an obligation on internet service providers (ISPs) that store and give access to large amounts of work and other subject matter uploaded by their users, to take appropriate and proportionate measures to ensure that these materials do not contain other rights holders’ works (ie, a positive monitoring obligation).

As of April 1 2018 the EU Portability Regulation applies in all EU member states. The regulation enables consumers to access their portable online content services (eg, Netflix and Google Music) when they travel in the European Union in the same way as when they access them at home.

Recent case law has continued to focus principally on the ‘communication to the public’ right, mainly within the context of hyperlinks (C-160/15 - GS Media), streaming (Case C‑527/15 – Filmspeler) and file sharing (Case C‑610/15 – Ziggo). In the United Kingdom, recent high-profile copyright decisions have been made within the context of the unlawful streaming of Premier League football matches. In The Football Association Premier League Ltd v British Telecommunications plc ([2017] EWHC 480 (Ch)) the High Court granted a blocking order pursuant to Section 97A of the Copyright, Designs and Patents Act 1988, which targeted the streaming servers that made available the infringing material.

Technological developments

Have there been any notable technological advances or developments to assist copyright owners in protecting and enforcing their rights?

Pursuant to Section 97A of the Copyright, Designs and Patents Act 1988, copyright holders can seek an injunction against a service provider, where that service provider has actual knowledge of another person using its service to infringe copyright. In The Football Association Premier League Ltd v British Telecommunications plc the High Court granted a blocking order under Section 97A. However, rather than targeting specific websites, the order was directed at target servers. Further, in the interest of proportionality, the order took effect only when the live Premier League footage was being broadcast. Similarly, the list of target servers was reset each week, thereby ensuring that servers which were no longer the source of infringing footage were not blocked unduly. An order of this nature was made possible only by advances in technology – particularly the Premier League’s ability to identify the infringing streams accurately and the operation of ISP blocking systems, which can now autonomously block specific IP addresses while a match is in progress.

Legal framework

Domestic law

What is the primary legislation governing copyright in your jurisdiction?

The framework for UK copyright law is governed by the Copyright, Designs and Patents Act 1988, although the provisions of the act are themselves influenced heavily by both EU directives and international treaties.

International law

Is your jurisdiction a party to any international agreements relating to copyright?

The United Kingdom is a party to the Berne Convention for the Protection of Literary and Artistic Works, which was first adopted in 1886. In addition to stipulating minimum standards of protection for copyright owners from member states, it also introduced the concept of national treatment under which a member state should not discriminate between its own nationals and those of other member states. The Berne Convention also states that the enjoyment and exercise of copyright in works under the convention should not be subject to any formality.

Similarly, the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations provides that national treatment must be provided:

  • for performances that:
    • take place in a contracting state;
    • are embodied on protected sound recordings; or
    • carried by protected broadcast;
  • for sound recordings that are:
    • produced by nationals of a contracting state;
    • fixed in a contracting state; or
    • first published in a contracting state; and
  • to broadcasters where the broadcasting organisation is situated in a contracting state or the broadcast is transmitted from a contracting state.

Other relevant agreements include the Trade-Related Aspects of Intellectual Property Rights Agreement 1994 and the World Intellectual Property Organisation Copyright Treaty (which sought to extend protection in light of technological advancements).

Online and digital regulation

Are there any legal provisions specifically covering digital and online content?

Aside from the mooted introduction of the draft EU Directive on Copyright in the Digital Single Market, which seeks to oblige internet service providers (ISPs) to monitor user-uploaded content stored on their servers to ensure that these materials do not contain other rights holders’ works, the EU Portability Regulation (in force from April 1 2018) also affects digital content. In essence, the EU Portability Regulation seeks to ensure that subscribers to online content services (eg, Netflix) will still be able to access those services in the same way across EU borders.

Pursuant to Section 97A of the Copyright, Designs and Patents Act 1988, copyright holders are entitled to 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.

To the extent that liability can arise against ISPs in connection with such acts, the EU E-Commerce Directive, which is directly effective in the United Kingdom, serves to provide a safe harbour for ISPs in relation to certain acts, such as caching, hosting and acting as a ‘mere conduit’. The directive also makes clear that there is no general obligation on ISPs to monitor the information which they transmit or store.

Government authorities

Are any government authorities charged with regulating and enforcing copyright law?

Her Majesty's Revenue and Customs has jurisdiction to seize and destroy infringing materials (eg, pirated films and CDs) entering the United Kingdom from a third-party country located outside the European Union. Similarly, to the extent that infringement of copyright constitutes a criminal offence, the police and trading standards may also investigate and bring enforcement action against infringers.

Protection and ownership

Copyrightable works

What works are eligible for copyright protection in your jurisdiction?

The Copyright, Designs and Patents Act 1988 provides for the subsistence of copyright in a prescribed category of works – namely:

  • original literary, dramatic, musical or artistic works;
  • sound recordings, films or broadcasts; and
  • typographical arrangements of published editions.

Aside from books and written materials, ‘literary works’ are defined to include:

  • computer programs;
  • preparatory design materials for computer programs;
  • tables and compilations; and
  • databases.

‘Artistic works’ are also defined broadly to include:

  • graphic works (eg, paintings, drawings, diagrams and maps);
  • photographs;
  • sculptures and collages (irrespective of artistic quality);
  • works of architecture; and
  • works of artistic craftsmanship.

In order for copyright to subsist in a literary, dramatic, musical or artistic work, the work must be original. Under English law, originality has classically been conceived as the exercise of sufficient skill, labour or judgement in the creation of a particular work.

Are there any special provisions for the protection of non-artistic works (eg, software and databases)?

‘Literary works’ are defined to include computer programs. Although the program must be recorded in writing or otherwise, this is defined to include writing in code – not necessarily by hand – and will therefore include source code and object code.

The definition of ‘database’ is specified in Section 3A of the Copyright, Designs and Patents Act 1988 as a collection of independent works, data or other materials which:

  • are arranged in a systematic or methodical way; and
  • are individually accessible by electronic or other means.

A work consisting of a database is original if, and only if, by reason of the selection or arrangement of the contents of the database, the database constitutes the author’s own intellectual creation.

The EU Database Directive also provides for a so-called ‘sui generis’ database right which, rather than attracting the standard term of copyright protection, subsists for 15 years. The sui generis right covers databases meeting the same definition outlined in Section 3A of the Copyright, Designs and Patents Act, although the qualifying originality criteria is different. Protection will arise if qualitatively or quantitatively a substantial investment is made in the obtaining, verification or presentation of the contents of the database.

Are any works explicitly excluded from copyright protection?

The English courts have dismissed protection for works where the labour invested is trivial or insignificant. Similarly, the courts have confirmed that single words would be unlikely to benefit from copyright protection. Mere gibberish will also be excluded, on the grounds that it will not be capable of conveying an intelligible meaning.

Related IP rights

Can copyrightable works be protected by other IP rights (eg, trademarks and designs)?

Some works will inevitably fall within one of the recognised categories of copyright work, as well as within the design regime. For example, works of artistic craftsmanship, a category of artistic work, could potentially cover original furniture designs, and graphic works may cover clothing patterns which are also protected under design law. The legislature originally attempted to address the copyright/design interface by limiting the duration of protection afforded to artistic works which have been industrially manufactured. Section 52 of the Copyright, Designs and Patents Act limited copyright protection for these types of artistic work – when more than 50 copies were made – to 25 years. However, after a period of consultation, the government elected to repeal this provision, meaning that in some instances the copyright in expired works has been revived.

Logos with artistic elements will potentially be protected as artistic copyright works, but may, subject to being sufficiently distinctive, also be registrable as trademarks.

Establishment of rights, registration and deposit

Establishment of rights

How is copyright established in your jurisdiction? Is registration, deposit or any other formality required?

Copyright does not subsist in a literary, dramatic or musical work unless or until it is recorded in material form (Section 3(2) of the Copyright, Designs and Patents Act). There is no requirement for the act of recording itself to be undertaken by the copyright owner.

Subject to satisfying the fixation requirement, copyright will arise automatically without any requirement for registration or the payment of fees. Unlike in the United States, there is no register of copyright interests in the United Kingdom.

Registration and deposit – procedure and effects

What is the procedure for copyright registration and deposit (whether mandatory or voluntary)?

N/A.

If voluntary, what are the benefits of registration/deposit?

N/A.

Ownership

Eligibility

Who may own copyright in a work?

Under Section 9 of the Copyright, Designs and Patents Act 1988, the author of a work will be adjudged to be the person who creates it (ie, the person who expended the relevant skill, labour and judgement necessary to give rise to the work). This will include:

  • in the case of a sound recording, the producer;
  • in the case of a film, the producer and principal director;
  • in the case of sounds and television broadcasts, the person who made the broadcast;
  • in the case of a typographical arrangement of a published edition, the publisher; and
  • in the case of a literary, dramatic, musical or artistic work which is computer generated, the person by whom the arrangements necessary for the creation of the work were undertaken.

Subject to any agreement to the contrary (ie, a contract or assignment), the author will be the first owner of the copyright in the work in question.

Joint and collective ownership

What rules and restrictions govern the joint or collective ownership of a copyright work?

Section 10 of the Copyright, Designs and Patents Act 1988 outlines the position in relation to joint authors of a work: “A work of joint authorship means a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors.”

Each author must demonstrate that he or she has made a significant and original contribution to the copyright work in question, although that contribution needs only to be intellectual, “not an exercise in penmanship” (Heptulla v Orient Longman, [1989] FSR 598). The collaboration itself must demonstrate some form of cooperation or common design; however, the parties need not be working in close proximity or intend to create a joint work. Finally, the contributions of each party must not be separate and distinct, but must come together to form an integrated whole (Beckingham v Hodgens, [2003] EWCA Civ 143).

Employee and commissioned work

What rules and restrictions govern the ownership of copyright in a work created in the course of employment (including works by employees and commissioned works by independent contractors)?

Subject to any agreement to the contrary, the copyright subsisting in a literary, dramatic, musical or artistic work, or a film, made by an employee in the course of employment will vest in the employer (Section 11(2) of the Copyright, Designs and Patents Act 1988). The courts will seek to look behind the contract of employment to ascertain the true context in which the work was created. For example, in Noah v Shuba ([1991] FSR 14 Ch D), although the work was published by the employer at its expense, the employee had written it in his spare time and not at the instigation or on the direction of his employer.

In the absence of any formal agreement, the copyright in commissioned works will vest in the commissionee. Depending on the circumstances, a court may imply a limited licence in favour of the party that commissioned the work.

Exercise of rights

Owners’ rights

What rights are afforded to copyright owners (including rights to use and limit the use of the copyrighted work)?

The owner of the copyright in a work has the exclusive right to:

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

Are there any limits or restrictions on the rights holder’s exercise of its rights, including any fair use allowances and parody exceptions?

It is permissible to deal with a copyright work where such use constitutes fair dealing for the purposes of:

  • criticism or review;
  • research or private study;
  • reporting current events;
  • parody, pastiche or caricature; and
  • quotation.

In each case, it must be demonstrated that the dealing is fair; therefore, a wholesale appropriation of the work would not satisfy the definition.

Ancillary rights

What ancillary or neighbouring rights arise in relation to copyright (if any)? Are there any rules or restrictions on their exercise?

Complementing the copyright regime are moral rights, which provide:

  • the author of an original literary, dramatic, musical or artistic work and the director of a film with the right to be identified as the author or director of the work (paternity right);
  • persons wrongly named as the authors of literary, dramatic, musical or artist works or as the directors of films to object to the wrongful attribution;
  • the author of a literary, dramatic, musical or artistic work or the director of a film with the right to object to the derogatory treatment of his or her work; and
  • the person who commissions a photo or film for private or domestic purposes with the right to object to the issuing of copies of that work to the public, or the public exhibition, showing or broadcasting of that work.

The paternity right must be asserted in order to be enforced (Section 78(1) of the Copyright, Designs and Patents Act 1988). The paternity right will have been asserted if the artist is identified on the original, copy, frame, mount or other attachment when the artist or the first owner of copyright parts with possession of the original (Section 78(3)(a)).

The paternity right may also be asserted by the inclusion of a specific statement to that effect in a licence that permits copies of the work to be made (Section 78(2)-(3)).

In order to object to the derogatory treatment of one’s work, the author must show that there has been an addition to, deletion from, alteration to or adaptation of the work, which will either amount to a distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author.

Existing alongside the copyright regime is a complementary set of performers' rights. Under the terms of the act, a person who gives a musical performance – whether that be a session musician, the headline artist or a specified guest artist – can claim equitable remuneration from the owner of copyright in a sound recording of a qualifying performance in instances where that sound recording is played in public or communicated to the public.

Duration

When does copyright protection begin and what is the duration of protection?

Subject to satisfying the relevant qualitative criteria, copyright protection will commence automatically on fixation of a work in material form (Section 3(2) of the Copyright, Designs and Patents Act 1988).

The copyright in a literary, dramatic, musical or artistic work or database will expire 70 years from the end of the calendar year in which the author dies. Where works have been created by joint authors, the copyright will expire 70 years from the end of the calendar year in which the last qualified author dies. In the case of a literary, dramatic, musical or artistic work which has been computer generated, the copyright will expire 50 years from the end of the year when the work was made.

In terms of literary, dramatic, musical or artistic works of unknown authorship, the copyright will expire 70 years from the year of creation, or, if during that period the work is subsequently made available to the public, 70 years from the year it was made available (Section 12(3) of the Copyright, Designs and Patents Act 1988).

Copyright in a film will expire 70 years from the year of the latest death among four categories of person:

  • the principal director;
  • the author of the screen play;
  • the author of the dialogue; or
  • the composer of music specially created for and used in the film.

Copyright in a sound recording that is not published or communicated to the public will expire 50 years from the date on which the recording was made. Following implementation of EU Directive 2011/77/EU, if a recording is published or communicated to the public within 50 years of when it was made, copyright in the sound recording will last for 70 years from the year in which it was first published or communicated to the public.

Transfer, assignment and licensing

Transfer and assignment

What rules, restrictions and procedures govern the transfer and assignment of copyright? Are any formalities required to secure the legal effect of the transfer or assignment?

Section 90 of the Copyright, Designs and Patents Act 1988 confirms that copyright is transferable by assignment, testamentary disposition or by operation of law, as personal or movable property. Copyright can be assigned in whole or part, but to be effective, any such assignment must be in writing and signed by or on behalf of the assignor.

Pursuant to Section 91(1), it is also possible to assign (whether partially or in whole) the rights to future copyright in a work.

Licensing

What rules, restrictions and procedures govern copyright licensing?

No formality requirements govern copyright licences. Therefore, a licence need not be in writing; it can be oral or implied into a contract.

Are there any special provisions governing sub-licensing?

Unlike trademarks and patents, there are no statutory provisions regarding a licensee’s right to sub-licence a work protected by copyright. However, following authority established in the context of patent licensing in Allen & Hanbury Ltd's (Salbutamol) Patent ([1987] RPC 327), it appears that in the absence of any provision to the contrary in the head licence, a licensee has no power to grant sub-licences.

What collective licensing bodies operate in your jurisdiction and how are their activities regulated?

The following collective licensing bodies operate in the United Kingdom:

  • PRS for Music and Phonographic Performance Limited;
  • EOS, the broadcasting rights agency;
  • the Copyright Licensing Agency;
  • the Publishers’ Licensing Services;
  • the Authors Licensing and Collecting Society;
  • NLA Media Access;
  • the British Equity Collecting Society;
  • the Design and Artists’ Copyright Society;
  • the Artists Collecting Society;
  • the Picture Industry Collecting Society for Effective Licensing;
  • the Educational Recording Agency;
  • the Motion Picture Licensing Corporation;
  • Filmbank Media;
  • Christian Copyright Licensing International;
  • Soundreef;
  • Independent Music Publishers’ E-Licensing;
  • the Mechanical Copyright Protection Society;
  • RadioPro; and
  • Printed Music Licensing Ltd.  

The conduct of UK collective management organisations are governed by the Collective Management of Copyright (EU Directive) Regulations 2016.

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.

Online/digital considerations

Protection and enforcement measures

What special measures and safeguards should rights holders consider in protecting their online/digital content?

Pursuant to Section 97A of the Copyright, Designs and Patents Act 1988, copyright holders are entitled to 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, filing uploading and streaming.  

Rights holders should also consider the possibility of sending notice and takedown requests to the hosts of websites containing infringing material. In most instances, infringing content will contravene the terms of the host’s user agreement, providing grounds for the website in question to be taken down.