Copyright and Moral rights: New legislation (part 3)

What remedies are available for Copyright Infringements?

Last month’s column continued our three-part examination of the new Copyright Designs and Patents Act 1988, shortly coming into force (the precise date will be given next month) dealing with PART 2 – COPYRIGHT INFRINGEMENTS which looked at What Acts Infringe Copyright Works? and What Acts are Permitted in Relation to Copyright Works? leaving outstanding the following: What Remedies Are available for Copyright Infringements?

A copyright owner whose legal rights are infringed, before or after the change in law, may have a choice of remedies; civil proceedings in the County Court or High Court; or criminal prosecution in a Magistrate’s Court. However, significant changes will be introduced making criminal prosecutions easier and penalties stiffer – changes which prepare the UK for further European (EC) moves on economic harmonisation of laws (1992 and all that) which could very well see copyright infringements becoming increasingly the province of the criminal courts, rather than the civil courts (as is the case today).

Civil remedies before the change in law
First, second or subsequent copyright owners and their exclusive licencees can sue in civil courts for:

  • an injunction to stop further or anticipated infringements;
  • and an account of profits made by the infringer and paid to the copyright owner, and delivery up of infringing articles and equipment used by the infringer, to the copyright owner;
  • and conversion damages paid by the infringer to the copyright owner as compensation for ‘stealing’ (i.e. converting) the copyright image for infringing uses;
  • and exemplary damages paid by the infringer to the copyright owner as a penalty for flagrant, substantial infringements.

The copyright owner does not have to prove the infringer knew, believed or had reason to believe, the work was protected by copyright, or that there was an intention to infringe the copyright; the act of infringement alone is enough. However, if infringers can satisfy the court they were innocently ignorant and had no reasonable grounds to suspect that copyright protected the work, they may avoid orders for damages being made against them – but not orders for delivery up or account of profits, nor for injunctions, and certainly not for the copyright owner’s legal costs of bringing civil proceedings. For all these reasons, most civil proceedings threatened or launched to stop and compensate for copyright infringements, never see the inside of a courtroom; most infringers pay the copyright owner pretty quickly and hand over infringing articles, after taking legal advice about their strict liability, the effectiveness of remedies against them, and the likelihood of being ordered to pay the copyright owner’s costs – as well as their own – if they try to fight through the civil courts.

Civil remedies after the change in law
Who can sue, and the remedies, remain pretty much the same. However, conversion damages will be abolished; delivery up of equipment will be restricted to infringers in possession or control knowing or having reason to believe infringing copies were to be made with such equipment. In relation to infringers in possession of infringing copies or equipment, copyright owners will henceforth be restricted to a time limit of six years in which to make their applications. In addition, copyright owners will be able to ask the court to order infringing copies to be destroyed, rather than delivered up to them or their own use. New and clearer powers will also be given to enable civil courts to authorise seizure of infringing copies and equipment, so long as force is not used, the local police station is notified, and a notice is left on the premises – not, however, in relation to business premises.

Criminal remedies before the change in law
Unlike civil suits for infringement which can only be bought by the copyright owner (their heir) or exclusive licensee, anyone who has sufficient evidence of an infringing act of a criminal nature is entitled to prosecute a suspected infringer. Infringing acts which are also crimes are as follows:
In relation to any article the infringer knows is an infringing copy of a copyright work,

  1. making for sale or hire; or
  2. selling or letting for hire; or
  3. exhibiting in public by way of trade; or
  4. importing into the UK for trading purposes; or
  5. distributing by way of trade.
    In relation to any appliance the infringer knows is to be used for making infringing copies of a copyright work,
  6. making or possessing any such appliance.

Each of these six infringing acts renders the convicted infringer liable to be sentenced to pay a fine of up to £400 or serve up to two months in custody for each transaction; and be ordered to pay up to £2,000 compensation to the victim (copyright owner, licensee or artist) for each infringing offence; and be ordered to forfeit infringing copies or equipment which can then be ordered to be destroyed or delivered up to the victim; plus, be ordered to pay all or part of the costs of the prosecution – victim/prosecutors being entitled to all their legal costs from central government funds, whether or not the convicted infringer pays all or part of those costs.

Quite separately, even if the prosecuted infringer is not found guilty, the Magistrates’ Court may nevertheless order infringing copies or equipment to be destroyed or delivered up to the victim – but only articles still in the infringer’s possession at the date of the court hearing. In other words, even ‘innocent’ infringers – ‘I didn’t know’ – may still forfeit the infringing articles. Prosecutions may be brought at any Magistrates’ Court in the locality where the criminal infringement is alleged to have occurred or is occurring. Unfortunately, Magistrates’ Courts cannot help victims to find and seize any evidence, since they are not empowered to grant warrants to enter and search premises, and seize infringing articles to be used to prove offences in relation to ‘artistic works’; not, that is, as the law stands today. For these reasons, while the criminal law offers tremendous scope today for swift and effective remedying of criminal infringements (and at no cost to the victim) hardly any copyright owner/artists bring prosecutions – if only to recover infringing articles and stop the illegal enterprise, which the court can so easily olden without convicting the infringer.

Criminal remedies after the change in law
Anyone who has sufficient evidence of an infringing act of a criminal nature continues to be able to prosecute a suspected infringer. However, infringing acts which are also crimes will be radically changed and improved, to be the following:

In relation to any article the infringer knows or has reason to believe is an infringing copy of a copyright work,

  1. making for sale or hire; or
  2. importing into the UK for commercial purposes; or
  3. possessing for commercial purposes; or
  4. selling or letting for hire commercially; or
  5. offering or exhibiting for sale or hire commercially; or
  6. exhibiting commercially; or
  7. distributing commercially; or
  8. distributing non-commercially so as to cause economic damage to the copyright owner.
    And, in relation to any article the infringer knows or has reason to believe is to be used to make infringing copies for sale or hire, or for use in the course of business,
  9. making an article specifically designed or adapted for making copies of a particular work; or
  10. possessing such an article specifically designed or adapted for making copies of a particular work.

The major change is from ‘knows’ to ‘has reason to believe’. This will mean, for example, that any ‘artistic work’ which bears the signature of the original maker – especially, but not necessarily, with the © byline as well – should in future be sufficient warning to would-be infringers that they may be about to commit a criminal infringement. In other words, they must ask themselves or their commissioning clients whether the copyright owner has authorised the act they are contemplating doing; if the original maker has not personally authorised the act, then anyone else purporting to do so should be able to produce – on enquiry – written authority signed by the true copyright owner/maker. For, as discussed in Part I (AM 124), copyright ownership normally originates with the maker (with a few notable exceptions, as the law stands today) and can only move under written authority signed by that maker (as is the law today and after the change). For these reasons, it should in future be far easier to prosecute makers/dealers/exhibitors trading in infringing copies.

Moreover, the penalties are to be much stiffer: in relation to infringing copies, making/importing/distributing (1,2,7 & 8 above) will be criminal offences which will render the convicted infringer liable to be sentenced to pay an unlimited fine or serve up to two years in custody for each infringing offence (after trial by Judge and Jury in a Crown Court): or to pay a fine of up to £2,000 and Serve up to six months in custody (after trial by a Magistrates’ Court).

Prosecutions for each of these offences can be brought at any Magistrates’ Court (not, as now, only at the court in the locality where the offence is alleged) convenient to the victim/prosecutor; once before the court, the suspected infringer has a legal right to choose trial by a Judge and Jury in the Crown Court, instead of the Magistrates’ Court In relation to all other infringing acts of a criminal nature possessing/selling/offering/exhibiting and the two appliances offences) a convicted infringer is rendered liable to be sentenced to pay a fine of up to £2,000 and serve up to six months in custody for each infringing offence. But there is no legal right to trial by a Judge and Jury in the Crown Court, so prosecutions have to be brought at the Magistrates’ Court in the locality where the criminal infringement is alleged. In addition, the Crown Court Judge, or Magistrates’ Court may order, as now, payment of compensation by the convicted infringer to the victim, forfeiture and delivery up to the victim of infringing articles (or their destruction), plus payment of all or part of the costs of the prosecution – victim/prosecutors continuing to be entitled to all their legal costs from central government funds, in any event. Quite separately, and as is the case today, even if the prosecuted infringer is not found guilty, the Judge (in the Crown Court) or Magistrates’ court may nevertheless order infringing copies or equipment to be destroyed or delivered up to the victim. However, the new provisions do not, as is the case today, simply deal with the infringer who still has possession of infringing articles at the date of the court hearing; after the change in law, such articles in an infringer’s possession or control at the time of arrest or service of a summons may be the subject of forfeiture-thus enabling victims to pounce on suspected infringers before they have time to dispose of the articles, and to chase them through a court order even if they have disappeared.

While strengthening the victim’s remedies in this way, the new law has at the same time made it slightly more difficult to succeed in other ways: possession of infringing copies , albeit when arrested or summonsed, will henceforth attract a forfeiture order only if held in the course of business; and possession of infringing appliances will henceforth attract a forfeiture order only if held knowing or having reason to believe they had been or were to be used to make infringing copies; moreover a time limit of six years will henceforth operate within which period victim/prosecutors must make their forfeiture (delivery up) applications.

Despite these latter difficulties which will be introduced, the new provisions generally improve the victim’s chances of success – particularly the new power to forfeit copies or appliances possessed by the infringer when arrested or summonsed; and in any event the changes still enable the ‘innocent’ infringer’s ‘I didn’t know’ claim to be brushed aside by the court when considering making a forfeiture order in relation to possession of infringing copies. Finally, and perhaps more significant than almost any other change, will be the new power of magistrates (in Scotland, Sheriffs or justices of the peace) to issue warrants to police officers to enter (by force if necessary) premises to search for and seize evidence of certain offences which have been or are about to be committed (not necessarily at those premises). This unprecedented new provision, in relation to artistic works, will henceforth be available whenever a police officer is given reasonable grounds to believe that any one of the offences relating to infringing copies (making/importing/distributing; 1,2,7 & 8, described above) has been or is about to be committed, and that evidence is in the premises suspected. Clearly police officers will have to be convinced by the would-be victim’s report – including knowledge and understanding of copyright law – before they will be prepared to apply to a magistrate for such a warrant.

HERE COMES EVERYBODY? *
All these changes, vastly improving all remedies for artist/copyright owners, should eventually cause lawyers to appreciate that the criminal courts will shortly be able to offer all the remedies currently and imminently available in the civil courts – and much more swiftly, at no cost to the artist/copyright owner/victim. Will we, I wonder, see the legal profession react in such a positive fashion to what has undoubtedly been a radical legal reform intended to make what is currently a prohibitively expensive, protracted and rather erudite area of law more accessible to the people who most need to use it and who, to date, have been the least able to do so?

*Well-read readers will know that this is a quote from James Joyce’s Finnegans Wake. We didn’t. Eds.

© Henry Lydiate 1989

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This article is from the Artlaw Archive of Henry Lydiate's columns published in Art Monthly since 1976, and may contain out of date material. The article is for information only, and not for the purpose of providing legal advice. Readers should consult a solicitor for legal advice on specific matters. Artists can get free online legal information from Artquest.