How to defend digital copyright claims (what claimants and defendants can learn)?
The author is a UK qualified and fully licensed current practicing solicitor specialising in intellectual property cases and digital technology. His book A Business Guide to Business Law and the Internet published in 2002 has a whole chapter dedicated to Internet related copyright
There is no difference between a permitted act and a defence. If one was to be attempted a permitted act is where the defendants’ actions were authorised by the copyright owner. A defence applies whether there was an authorisation or not by the copyright owner. Either way, whether a permitted act or a defence, the result is that, if successfully pleaded, the defendant would be exonerated and entitled to costs of defending the infringement claims, and/or, if applicable, damages for its counterclaim (Part 20 claim).
Although there are numerous exceptions to copyright infringement mostly set out in Chapter III of Part 1 of the Copyright Designs and Patents Act (CDPA 1988) the defendant must know when and how these so called “permitted acts” apply in practice to be able to successfully neutralise and/or push back against allegation(s) of copyright infringement in a real-world context.
Slightly tongue in cheek, a legal claim for copyright infringement is akin to an office suite of applications it often comes with numerous apps all bundled into one software i.e. it often does include different claims that perform different functions.
To reiterate there are several permitted acts and this article will focus on giving a practical overview of the main permitted acts that may be carried out in relation to copyright works in a digital technology related context. In addition to the permitted acts in the CDPA 1988 many common law defences that a defendant may rely upon when sued for copyright infringement have evolved from the operating software system of UK copyright law.
Slightly tongue in cheek, a legal claim for copyright infringement is akin to an office suite of applications it often comes with numerous apps all bundled into one software i.e. it often does include different claims that perform different functions. Copyright infringement claims we have brought on behalf of the claimants against competitors, former employees and partners that set up rival businesses using the claimants’ trade secrets; photographs; database; software code have included – copyright infringement of code, photographs, text, design notes; design rights infringement; database rights infringement; and breach of confidence. Incidentally a trade secret is just information that is valuable because its kept secret. Innovative companies need to keep their product releases secret to stop other companies stealing their ideas and getting to market before them. The economic creation cost of the second person stealing the idea is essentially zero which is one of the main reasons it happens so often.
Permitted acts apply to the copyright and database rights claims but not to the breach of confidence claim (defences for breach of confidence are: consent or authorisation; public interest; freedom of expression; and miscellaneous immunities). Worth mentioning is the Trade Secrets (Enforcement, etc.) Regulations 2018 which may be applicable in a breach of confidence claim. Permitted acts apply to both civil and criminal proceedings.
The rationale behind permitted acts is article 9 of The Berne Convention for the Protection of Literary and Artistic Works (the Berne Convention) an international agreement the original effective date of which is 5 December 1887 which applies to reproduction of works. Article 9 contains the Berne three-step test:
(step 1), It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases;
(step 2) provided that such reproduction does not conflict with a normal exploitation of the work; and
(step 3) does not unreasonably prejudice the legitimate interests of the author.
The 3 step rationale has been widely applied in subsequent international agreements to rights other than reproduction. Additionally, some permitted acts only apply to specific works whilst others apply to all works.
Without further ado here are some of the more common defences we see in digital technology related cases.
1. Authorisation and/or Implied Licenses
This is the most common defence we see in the digital technology related world to copyright infringement claims. It is a complete defence to an allegation of copyright infringement if the defendant can show that the claimant authorised or consented to the allegedly infringing act. Consent may be express or implied. It is possible for oral consent to be provided for use of the copyright work. But a copyright assignment must be in writing and signed by the assignor. When running an authorisation or implied license defence it is not unusual for the defendant to also run a counterclaim (Part 20 claim). It is common for businesses to hire non-employee independent contractors to create an essential piece of their technology related business infrastructure such as their website (hiring photographers, web developers, web designers); mobile apps; and/or some other technical CRM or SCM platform. There is always some aspect of the dispute that centres around who are the owners of the works carried out by the expertise for hire. The questions usually are: who owns the works? Is there an implied license for the claimants to use the works? Do the developers, photographers, designers, PR and marketing contractors have the legal right to use copies of the works including selling them to competitors? Are the claimant’s rights to use the work limited by the contractor’s rights?
The recent case of Tumber v Independent Television News Ltd (ITN)  EWHC 3093 (IPEC) shows just how complicated implied license cases can get. It also shows how tactical running cases in IPEC can be. It is worth reading the full case report for Tumber as it is really a very interesting case. Fortunately, the Judges in the IPEC court are highly intelligent managers of such disputes and see through mere litigious tactics to get to the substantive law.
2. Linking between websites and framing
The legality of hypertext linking to content on a third-party website was dealt with in the case of Svensson and others v Retriever Sverige AB C-466/12  All ER (D) 123 (Feb).
The question was whether hyperlinking to content on a third-party website amounts to a communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC.
The answer is in 2 parts: 1. providing hyperlinks to copyright protected works can be described as “making available” and therefore does constitute an act of communication; 2. however the communication must be directed to a ‘new public’ not a public already given free access to the information. In other words, if the content is subject to a paywall elsewhere the protection of the InfoSoc Directive, art 3(1) will apply.
Links provided to works which are already publicly available to all Internet users are to the same public not a ‘new public’ and are therefore not infringing.
Retriever Sverige AB operated website did not constitute a new public because the content linked to was freely available elsewhere. It does not matter that users think the content originates from the linked site.
If the third-party site was subject to a paywall and the link went behind the wall to give user access to the content that that would constitute a communication.
As technology improves there are bound to be more sophisticated type of web linking and content and we await with keen interest the results of the referrals to the CJEU of BestWater International GmbH v Michael Mebes and C More Entertainment AB v Linus Sandberg.
3. Fair Dealing
If the defendant technically is in breach of copyright but can show that the use of the works is ‘fair’ then that would exempt the defendant from infringement for fair dealing with copyright works for certain purposes. Although fair dealing is a popular defence it’s not that easy to establish. First the test for what is ‘fair’ is an objective one. It’s not what the defendant thinks is fair but whether a fair-minded and honest person would have used the works in the way the defendant did. The onus of proving fairness is on the defendant.
In Hubbard v Vosper,  2 Q.B. 84 fairness was represented as a ‘matter of impression’. Lord Denning referred to ‘a question of degree’. The guiding principles to ascertain fairness are (i) consideration of the extent of the reproduction; (ii) prejudice to the author (i.e. the impact the use has on the negative impact on the market of potential market for the copyright work; and (iii) purpose – would give an overall impression of fairness or lack thereof. The purpose of the copying is very important.
If the purpose were to be for critical review or educational purposes then that could be said to be fair, however if it’s being copied by a competitive rival for commercial gain then it would be very unlikely deemed as fair.
As a rule of thumb, the defendant should assume that any use of a copyright work is legally reserved to the copyright owner. It is often very difficult to try to ascertain the degree of use that would be ‘fair’. So, if for example the defendant only used some of the underlying code of the copyright holder without permission it may still be a proportion of the code enough to constitute infringement.
The permitted act of fair dealing extends to the following acts:
1. Research and private study;
2. Research—text and data mining are permitted but restricted to fair dealing;
3. Criticism and review;
4. Quotation the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 came in to force on 1 October 2014. Implementation of the InfoSoc Directive—Article 5(3)(d) of Directive 2001/29/EC, broadened the provisions in CDPA 1988, s 30 to permit quotation from a work not only for criticism or review, but for any purpose, if it is ‘fair dealing’;
5. Reporting current events – this is often referred to as the news reporting fair dealing defence and can be used with all works except photographs;
6. Caricature, parody or pastiche – this only came into play in the UK since 1 October 2014 with the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 and is subject to ‘fair dealing’.
7. Education and libraries so called Educational copying – The Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014 came into force on 1 June 2014. These Regulations make provision for the implementation of Member State options in relation to exceptions relating to copyright and performers’ rights which are permitted by the InfoSoc Directive—Article 5(3)(a) of Directive 2001/29/EC in relation to illustration for teaching and scientific research. The new provisions reflect the need for teachers to be able to use digital technology. Regulation 4 substituted new CDPA 1988, ss 32, 35 and 36 relating to education.
Other permitted acts used in a defence we have come across are:
– Personal copying for private use: note that in 2015 the Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014 were quashed in their entirety with prospective effect, including analogous exceptions for performing rights in CDPA 1988, Sch 2, para 1B. The regulations were quashed by order of the High Court issued in R (on the application of British Academy of Songwriters Composers and Authors) on 17 July 2015. The amendments made by these regulations to CDPA 1988, including the entirety of CDPA 1988, s 28B, have no effect.
– Temporary copies and incidental inclusion
Temporary copies exception
CDPA 1988, s 28A gives effect to Article 5 of the InfoSoc Directive. Under s 28A, copyright in a literary work (other than a computer program or a database), in a dramatic musical or artistic work, the typographical arrangement of a published edition, a sound recording, or a film is not infringed by making a temporary copy.
The Meltwater case (Public Relations Consultants Association Ltd (PRCA) v The Newspaper Licensing Agency Limited and Others (NLA)) established that browsing and caching is permitted under the temporary copies exception. Meltwater is a software services company that develops and markets media monitoring and business intelligence software. Meltwater provided an online media monitoring service called Meltwater News. Subscribers to the service were sent third party copyright content including links and short extracts of articles. The NLA claimed that a licence was required by end-users of the service because cached copies of the works would be made on end-user’s computers when accessing and browsing news websites.
The Supreme Court rejected the idea that Article 5(1) of Directive 2001/29/EC did not apply to temporary copies generated by an end user of the Internet. In June 2014, the CJEU held that Article 5 of Directive 2001/29/EC conditions were satisfied.
Copyright is not infringed by incidental inclusion in an artistic work, sound recording, film or broadcast. An online video made on location in Barcelona, would not infringe copyright in the La Sagrada Familia or Chopin’s Piano Sonata No.2 in B flat minor, Op.35 just because they were caught in the background of the video. If the work is included in the video deliberately then the defendant cannot rely on the defence of incidental inclusion.
What is ‘incidental’ depends on the facts of the case. The point is why has this work been included in the video? If for example the content is obviously synched to the background music, then the defendant could not rely on the incidental inclusion.
There are more copyright infringement defences than the ones set out above. The defences outlined in this article should give a good idea of the types of defences used most often in digital technology related copyright disputes. It also provides the up-to-date law on the defences. Notwithstanding, the information and any commentary on the law contained on this web site is provided free of charge for information purposes only. Every reasonable effort is made to make the information and commentary accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL Solicitors. The information and commentary does not, and is not intended to, amount to legal advice to any person on a specific case or matter. You are strongly advised to obtain specific, personal advice from a lawyer about your case or matter and not to rely on the information or comments on this site. No responsibility is accepted for the content or accuracy of linked sites.