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SHERIFFDOM OF LOTHIAN AND BORDERS AT LIVINGSTON

 

[2017] SC LIV 11

SA92/16

NOTE BY SHERIFF DOUGLAS A KINLOCH, Advocate

 

In the cause

 

ALAN MACKIE

 

Pursuer

 

Against

 

MAXI CONSTRUCTION LTD

 

Defender

 

 

Livingston, 28 February 2017

[1]        The pursuer is a freelance photographer.  He avers that in April 2008 he took an aerial photograph of a building called the Harbour Arts Centre in Ayr, and that he subsequently discovered in 2015 that the defenders, who are a construction company which was involved in refurbishing the Arts Centre, had been using this photograph in an advertising leaflet on their website.  The defenders deny this.  The pursuer seeks damages from them for breach of copyright. 

[2]        The proof in this small claims action proceeded before me at Livingston Sheriff Court over a period of three days. The pursuer represented himself, and the defenders were represented by Mr Gordon Young, Solicitor, Messrs Peterkin & Kidd, Solicitors, Linlithgow.

 

Did the pursuer take the photograph  
[3]        Although the defenders do not formally admit in their pleadings that the pursuer took the photograph in question, there was in fact no real dispute over this matter.  The pursuer spoke to production 5 of his inventory of productions which shows the “meta data” regarding the photograph, and this is sufficient proof that the pursuer took the photograph and had it on his own website from 2008.  It being his photograph, the copyright in the document therefore lies with him. 

 

Was the photograph used by the defenders

[4]        Nor was there any real dispute that this same photograph was incorporated in a document which was created by the defenders, and in any event the evidence easily satisfies me of that. The defenders accepted that they created the advertising leaflet in question. The pursuer has printed out a copy of this document, which is produced with the small claims summons.  It is also lodged by him as production 6.  A comparison of the photograph taken by the pursuer with the photograph in the defenders’ document makes it absolutely clear that the photograph taken by the pursuer and the photograph used by the defenders in their PDF document are one and the same.

 

Did the defenders put the photograph on their website

[5]        The defenders’ defence, as set out in their written defences, is in essence a denial that the photograph was ever on their website.  The issue of whether the photograph was on their website is not so easily resolved.

 

Pursuer’s position

[6]        The Pursuer asserts that the results of searches carried out by him on the internet prove that the document was on the defenders’ website for a period of at least five years. He carried out these searches by means of well-known search engines, and produces printouts of the results.  The searches on which he relies are to be found as productions 9, 10, 11 and 13 - 22 in his inventory of productions.

[7]        Much of the evidence in this case was technical and somewhat difficult to follow, but my understanding of it is as follows.

[8]        As I understood the pursuer’s evidence, production 9 shows information which is available on the internet regarding the PDF document in question.  It shows that the document goes by the description “Harbour_Arts_Centre_Irvine.pdf”, and was created on 20 November 2008 at 10:57 AM by someone called Claire Mackenzie, who was, and is, the defender’s marketing manager. The size of the document is recorded as being 72,681 bytes. Production 10 is from the web cache on the pursuer’s computer and, as I understand it, shows that the defenders uploaded a PDF document described as “Harbour_Arts_Centre_Irvine.pdf” on the same date that it was created, that is 20 November 2008. It was uploaded into a “docs” folder. It was uploaded at 1:17 PM, about 2 ½ hours after it was created. The size of the document is given in production 10 as 72,681 bytes, an identical figure to the document in production 9, which is clear evidence that the document shown in production 9 was the document uploaded by the pursuers on the same day.

[9]        Productions 13, 14, and 15 show the results of three separate searches carried out by the pursuer on three separate search engines on the same date, namely 27 November 2015.  He maintains that they show the same PDF document being linked to the defenders some seven years after it was uploaded.

[10]      Production 17 is a production which shows information from a website called “archive.org”. That is a website which aims, apparently, to achieve the monumental task of storing information about most websites in existence, and to do this for the purposes of posterity. This website shows that there was a link from the defenders to the PDF document which is first recorded in 2009 and continues until 2013. The pursuer maintains that this is evidence that the document was on the defenders’ website from 2008 until at least 2013, and that thereafter if not on their website was held on their server and was accordingly still linked to the defenders.  Productions 18 – 22 are also archive documents showing a link with the defenders.

 

Evidence for defenders

[11]      I heard evidence from the defenders’ chairman, Mr Gerald Atkinson (72). He seemed to me to be a respectable and honest gentleman. He accepted that the marketing manager in his company had created the PDF document, and he thought that she may have been given the photograph by the architect for the Harbour Arts project, but said that his understanding was that the document may never have been put on their website. He said that his company carried out certain investigations after the pursuer intimated his claim for damages to them, and came to the conclusion that there was no evidence that they had ever had the photograph in a document on their website. He said that it was possible, for example, that the document could have been used for internal purposes only.   

[12]      I also heard evidence from a Mr Ash Arshed, who said he was a design team manager. He works for a company called Fatbuzz Ltd.  He had been in the Internet industry for about 15 years. He appeared to have good technical knowledge of the workings of the World Wide Web.  He now looked after all the defenders’ web projects. He had been asked to look into matters in October or November 2015 when the pursuer had first raised the question of possible copyright infringement.

[13]      His evidence was that when the results of the searches carried out by the pursuer were looked at carefully, the nomenclature of the search results showed that for the period founded on by the pursuer the document had never been published on the World Wide Web.  He accepted that the searches carried out by the pursuer had indeed identified the PDF document, and that it was linked to the defenders, but they did not show, he said, that it had been published on the Internet. Rather, the search results showed that it had been held in a “docs” folder, which showed that it was not on a live website. When all of the search results were looked at, he said that it could be seen that none of them contained the word HTML, and therefore although the search showed that the document was linked to the defenders, it also showed conclusively that it was not linked to a live website.  While the document existed as a PDF document, had the document been on a live website then the word “HTML” would have appeared in the results of the search. He accepted that the document must have been held on the defenders’ server, but that did not mean that it had been on a website.  His evidence was that the pursuer had not shown that the image was “live”.

 

Decision on question of whether photograph on website

[14]      The evidence which I have summarised is fairly conclusive evidence that Claire Mackenzie created the PDF document in question on 20 November 2008, and uploaded it into a “docs” file on the same date.

[15]      In my view the evidence produced by the pursuer also clearly shows, and I think this was accepted by the defenders, that the photograph in question was at the very least held on their server. 

[16]      Although I found the evidence of the defenders’ chairman to be reliable, he himself admitted, as I understood it, that he had no real personal knowledge of whether the photograph had ever been on the company’s website, and that was partly because he left these technical matters to others in the company.  Although he had spoken to those other people, I do not think that Mr Atkinson’s limited knowledge of these matters is sufficient for me to conclude that his belief that the photograph was not on the website was correct.

[17]      With regard to the evidence of the defender’s second witness, it initially seemed convincing in that I have no reason to doubt that he is correct when he said that the absence of the nomenclature “HTML” on the search results for the photograph is an indication that the photograph has never been directly on a live website. However, having read my notes of his evidence several times, he commenced his evidence by stating that when he was asked to look into the matter he found that the PDF document had been on an old copy of the website. His later insistence that the nomenclature showed that the PDF document was not on a live website was difficult to reconcile with his earlier evidence.

[18]      Having given the defenders’ second witness’s evidence some thought, I can only think that what he meant was that although all the searches carried out by the pursuer do not give rise to the HTML nomenclature, and although this means that the photograph was not on a live website, it was nevertheless accessible to people using the old website by clicking on one or more links. 

[19]      Thus, production 18 for the pursuer shows that on 13 October 2008 there was a page on the defenders’ website called “Community Projects”. It had a link to the Harbour Arts Centre project. Production 19 shows that by 7 April 2009 that link had a PDF document associated with it, and it seems to be abundantly clear that the PDF document was the document in question. So although the document was stored in a docs folder, it was accessible through the defenders’ website by clicking on a link. Indeed the defender’s second witness confirmed that clicking on a link on the defenders’ old website would have taken you to what he called a “Landing Page”, which was another HTML page, which would then take you to another page where you would find the PDF document. 

[20]      Looking at the whole of the evidence, I therefore find it established that the defenders uploaded the relevant document to a documents folder in 2008.  Thereafter although the document was never actually directly on their website, the evidence persuades me that it was available by following one or more links on the website.   

 

Was the document communicated to the public?

[21]      The next issue is whether, as the pursuer puts it in his statement of claim, the photograph “was being used by the defenders in a document available on the world wide web”.    

[22]      The pursuer’s submission was that the evidence showed that the defenders had “published” his photograph on their website from 2008 onwards. He accepts that at the time he discovered in 2015 that his photograph was being used it was no longer available directly from any known page of the defenders’ website, but he argues that it was still indexed by various search engines, and so was publicly accessible. Even if the photograph was just held on the defenders’ server it was available to the public, and, he argued, that amounted to publishing the photograph. 

[23]      The defenders argue, as I understand it, that as the photograph was never directly on their website it was not communicated by them to the public.  They argue even more strongly that by 2015, when the photograph was simply held on their server, it was really just being held by the defenders for their own private purposes, and was not being communicated to the public. 

[24]      The pursuer provided me with a copy of section 16 of the Copyright, Designs and Patents Act 1988.  This section provides that “communicating the work to the public” is an act which is restricted by copyright.  He also provided me with a copy of section 20 of the Act.  This provides that communication to the public means: “… making a work available to the public by 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”. I think the pursuer’s claim is therefore to be properly seen as an infringement of his copyright by communication to the public.

[25]      In considering whether the defenders communicated the photograph to the public, I bear in mind that European case law has been to the effect that the objective of European directives which led to s20 was to establish a high level of protection and that this requires the concept of communication to the public to be broadly construed. It is said in Copinger and Skone James on Copyright, 17th Edition, (2016), at 7-204, that an example of such communication is “providing a clickable Internet link on a website that allows users of that website to link to a copyright work on another website”.   The comments in Copinger and Skone James provide strong support for the view that being able to access a photograph by clicking on a link on a website is to be seen as electronic transmission.

[26]      The conclusion I come to, having considered all of the above, is that the fact that the document was available to the public by going on the defenders’ website and following a few clicks has to be seen as communicating the document to the public.  However, the pursuer’s productions only establish a link to the defenders’ website (rather than to the web server) until 2013. That is a period of about five years. By the time the defender’s second witness investigated matters at the end of 2015 it was not available on their current website.  Although the document was held on the defenders’ server after the new website came into being, that did not amount, in my view, to communication of it to the public. The period during which the photograph was communicated to the public was accordingly 5 years.

[27]      In my view the pursuer has accordingly established that the defenders breached his copyright for a period of five years. 

 

Innocent use

[28]      The remedy which the pursuer seeks in respect of this breach of copyright is damages. He is not, however, entitled to damages if it is shown by the defender that, at the time of the infringement, the defender did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates (section 97 of the Act).  In other words, that their use of the photograph was innocent.

[29]      The defenders’ solicitor submitted that although the main defence was that the photograph had not been communicated to the public, the evidence of the defenders’ chairman was sufficient to establish also the lack of knowledge defence. In this connection, in his evidence Mr Atkinson said that he thought that the photograph may have been given to them by the architect for the Harbour Arts project, and in cross examination said to the pursuer that:  “We have not used your photograph knowingly”.   

[30]      Whether there has been innocent use, according to Copinger and Skone James, is a question for the courts to decide taking into account all the relevant circumstances, for example: the nature of the pursuer’s work, the fact that the claimant’s name was or was not printed on it, the fact that the work bore or did not bear a claim to copyright in it, any legal advice which the defender received, etc (see 21-96 of Copinger and Skone James).

[31]      The defenders’ solicitor did not argue the innocent use point strongly, accepting that it was “not the strongest of points”. I think he was correct in that view for two reasons. First, the onus is on the defenders to prove their lack of knowledge, and the defenders’ chairman had a very limited knowledge of how the photograph came into the hands, and what the marketing director knew of it. The defenders did not call their marketing director to elucidate on the position further, for example to confirm how the photograph came into her possession and what she knew of its provenance, and there is therefore very little evidence put before me to allow me to conclude that the defenders simply did not know that the photograph was, or might be, subject to copyright.  All of that makes it difficult for the innocent use defence to be established. Secondly, as I understand it, the innocent use defence is construed quite narrowly, and a perusal of the textbooks suggests that the view has often been taken in the courts that no person has a right to assume, without enquiry, that a photograph, or similar artistic work, given to them is without copyright protection.

[32]      I have taken into account the evidence of Mr Atkinson which effectively was that there was innocent use, and the fact that the photograph itself did not have the word “copyright” on it at any place (that only appearing in small print on the pursuers website).  However, I think it is very difficult for the defenders as a commercial firm who themselves claim copyright in relation to photographs and other information appearing on their own website, to establish that they had no reason to believe that copyright subsisted in the photograph, and that their use was therefore innocent.  They have not shown that they carried out any enquiries into the provenance of the photograph, or gave sufficient thought to the question of whether it might be the subject of copyright.

[33]      For these reasons, the defence of innocent use is not made out.  The pursuer, therefore, is entitled to seek an award of damages.

 

Amount of damages

[34]      With regard to the quantum of damages, the pursuer provided me with a copy of the Intellectual Property (Enforcement, etc.) Regulations 2006.  As I understand it, these regulations, which were introduced to give effect to a European Directive, govern the assessment of damages in relation to an infringement of an intellectual property right. Regulation 3 is in the following terms: –

“3. – (1) Where in an action for infringement of an intellectual property right the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity, the damages awarded to the claimant shall be appropriate to the actual prejudice he suffered as a result of the infringement.

 

(2)        When awarding such damages –

(a)        all appropriate aspects shall be taken into account, including in particular –

(i)         the negative economic consequences, including any lost profits, which the claimant has suffered, and any unfair profits made by the defendant; and

(ii)        elements other than economic factors, including the moral prejudice caused to the claimant by the infringement; or

(b)        where appropriate, they may be awarded on the basis of the royalties of fees which would have been due had the defendant obtained a licence”

 

[35]      These regulations really seem to put in statutory form the pre-existing common law. For example, in the Stair Memorial Encyclopaedia, volume 18, paragraph 1088, which was published before the 2006 regulations came into force, it is said that the purpose of an award of damages for infringement of copyright “is to compensate the copyright owner for the loss he has suffered as a result of the infringement”.

 

The pursuer’s position on loss

[36]      The pursuer has raised a number of cases where he has sought damages for breach of copyright, and no doubt may bring further actions in the future.  He himself referred me to three actions which he had raised. I have to say that I found it difficult to tell whether his motivation for raising these actions was righteous indignation over the unlawful use of copyright, or other more cynical motives. 

[37]      The pursuer gave evidence to the effect that his pricing guide for the use by others of his photographs was as set out in production 35. He said that his prices had been unchanged for 10 years. It can be seen that he seeks to charge £450 per annum for the use of a photograph on a website.  He said that his prices were in line with those recommended by the National Union of Journalists.  The NUJ price guide is given in production 36. He said that their recommendation was £566 per annum for the use of a photograph online. He submitted that unauthorised use for seven years would give a figure for damages of £3,150, but he was prepared to restrict this to £3,000 to keep his claim within the small claims limit. He also gave evidence to the effect that he had actually obtained fees in line with his charges, and lodged a number of invoices confirming this which are to be found as production 37. He also sought additional damages in terms of section 97 of the Act contending that the use of the photograph by the defenders had been “flagrant”.  He founded also on a breach of his moral rights as reinforcing his claim for damages.

 

The defenders’ submissions on loss

[38]      The defender’s solicitor argued that the quantification of damages was ultimately one of judicial estimation. He submitted that it was clear that a portion of the defender’s income came from awards of damages made in a number of damages actions which he had pursued, and not from the sale of photographs. He reminded me of Mr Atkinson’s evidence to the effect that Mr Atkinson felt that the pursuer’s charges were “astronomical”, and that the defenders could have commissioned their own photograph for permanent use by them for about £600.  Mr Atkinson also suggested that another photographer well-known to him only charged £65 for the use of a photograph if it had already been taken.

 

Factors relevant to damages

[39]      In terms of regulation 3 the governing principle in the assessment of damages payable to the pursuer is “the actual prejudice he suffered as a result of the infringement”. 

[40]      On one view, the pursuer has suffered almost no prejudice in that there is no evidence to suggest that the incorporation by the defenders of his photograph in a PDF document available through their website has affected in the slightest the fee that the pursuer would be able to charge any future customer who wished to purchase the right to use the photograph in question. I am quite sure that the pursuer would still be able to charge the fee set out in his table of fees. This consideration also means that there has been little by way of “negative economic consequences” to the pursuer as a result of the infringement.  Nor is this a case where the defenders have made any “unfair profits”. These considerations might suggest that a nominal award of damages only would be justified, and I have seriously considered whether that ought to be the outcome of the case. 

[41]      On the other hand, assessing damages wholly on this basis, it seems to me, might be an encouragement to others to use copyrighted photographs, or other artistic works, illegally. It would be open to someone, for instance, to use a photograph without permission, and then to claim on this being discovered that the owner of the copyright in it had suffered no loss. This approach might, it seems to me, encourage theft of copyright works and substantially diminish the value of copyright protection.  I therefore think that this is a case where it is relevant for me to have regard, in terms of regulation 3(2)(b), to “the fees which would have been due had the defendant obtained a licence”.   Even prior to the regulations, this is the yardstick which the courts have often taken into account in assessing damages.

[42]      Having said that, the licence fee does not provide a simple solution to the question of damages, as I also have to have regard in terms of regulation 3 to “elements other than economic factors”. 

[43]      The first of these elements which to my mind is relevant is that the photograph was not in a prominent place on the defenders’ website, but was only accessible by following a number of links. It seems unlikely that many members of the public would have seen it.

[44]      Secondly, although I have held that the defenders have not established innocent use, they have persuaded me that this was not a deliberate “theft” of the pursuer’s photograph. On the evidence I heard it seems to me that as a commercial organisation with some knowledge of copyright law they should have given more consideration to the question of whether any copyright might exist in the photograph, rather than simply assuming that because it had been given to them they were free to use it without asking questions.  It seems to me that the defenders were probably guilty of lack of thought more than anything else.

[45]      Thirdly, had the defenders approached the pursuer when they created the document in order to agree a fee for using it, they would undoubtedly have sought to negotiate a discount for the fact that the licence would be payable over a number of years, and in my view would probably have achieved that. Indeed, the pursuers own pricing guide states that: “Longer terms may be subject to discounted rates”.

[46]      Fourthly, I take into account the evidence of Mr Atkinson that he felt that the defenders could have obtained a similar photograph at a fairly low cost.

[47]      Finally, I note that the pursuer’s email of 17 November 2015 to the defenders, which contained the initial intimation of his claim that they were infringing his copyright, was extremely aggressive in its terms. He categorised the defenders’ actions as “utterly inexcusable” and immediately sought payment of damages at his full licence rate for a period of seven years. The email did not allow in any real way for the possibility that the defender’s use of the photograph might have been innocent, thus preventing any claim for damages. The whole thrust of the letter was an aggressive claim for damages, combined with the threat of legal action. I consider that such an aggressive stance by the pursuer at a time when he could have no knowledge of whether the defenders had an innocent explanation for the use of the photograph was an unreasonable approach, and that it is a factor to which I am entitled to have regard in assessing damages.

 

Decision on damages

[48]      It is said in the Stair Memorial Encyclopaedia that: “The quantum of damage is often extremely difficult to assess, but the court must nevertheless endeavour to arrive at a fair amount.”, and in Copinger and Skone James that: “… the court may have to call into play ‘inference, conjecture and the like’, and apply ‘a sound imagination and the practice of the broad axe’” [section 21-292]. 

[49]      In arriving at an appropriate award of damages I have taken as a starting point one half of the pursuer’s normal licence rate, that is half of £450, namely £225.  I have taken one half of his normal fee on the basis that had a fee been negotiated it is unlikely that the pursuer would have received the whole of his normal fee, and also to reflect the defenders’ evidence that they felt the suggested fees were too high. If that figure is applied for the period during which the photograph was communicated to the public, that is, five years, then it gives a figure of £1,125.  However, I consider that this figure does not allow for the other factors I have summarised above.  When they are taken into account, I consider that a smaller figure ought to result.  I consider that in the whole circumstances the appropriate sum of damages is the sum of £750.   

[50]      There is no question, in my view, of any additional damages for “flagrant” use of the image.  The evidence persuades me that the defenders were guilty, at most, of lack of thought rather than deliberate deceit. Nor, for the same reason, is any separate award of damages justified on the basis of any breach of moral rights.

[51]      The pursuer, having succeeded with his claim, will be found entitled to decree for the sum of £750, together with expenses, which will be fixed at 10% of the award of damages, namely £75.