Owners of registered intellectual property rights in the United Kingdom can call in aid many weapons that can be fired against the actual, putative or potential infringer -- interim and permanent injunctive relief, damages, an account of profits, delivery up and declarations. The defendant in turn can seek a declaration of invalidity or the cancellation/revocation of the registered right and may in an appropriate situation bring an action for unwarranted threats to bring infringement proceedings against him.
In the case of copyright the defendant's position appears more vulnerable. Damages which he may be required to pay explicitly include additional ('exemplary' or 'punitive' damages) -- though the effect of the EU's IP Enforcement Directive 2004/48 may be that such damages should be available in respect of all IP rights -- and there is no opportunity to challenge the validity of a registration. He also faces the risk that the copyright owner will opt for self-help relief where the statutory conditions are satisfied and simply seize goods believed to infringe and then walk off with them. More worryingly, in light of recent heavy-handed attempts to discourage or punish file-sharing and unlawful downloading, is the fact that there is no unwarranted threats action which an innocent but threatened party can bring.
Does any reader know quite why an action for unwarranted threats has not been made available in the case of a threat to bring copyright infringement proceedings? It can't be because the right in question is an unregistered right, because an action for unwarranted threats exists in respect of UK unregistered designs right under section 253 of the Copyright, Designs and Patents Act 1988, and a comparable provision exists for unregistered Community design right.
According Cornish & Llewelyn Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights 6th Edn paras 2.93 and 17.56, the reasoning seems to be: because the detrimental effects to trade and goodwill etc of an unfounded threat are more severe where the term of protection is shorter (eg 10/15 years for UDR or 20 years for a patent), the legal protection from unwarranted threats of proceedings needs to be more robust and tailored to the specific subject. This does not wholly account for why trade marks also benefit from this special provision.
As the authors point out, for all other situations there is the tort of malicious falsehood.
A quick follow-up. Helen Norman in Intellectual Propoerty Law - Directions 1st Edn 2011 para 2.5.1 makes much the same point as Cornish & Llewelyn but makes the distinction that the provision applies to 'industrial property' before going on to question why therefore it does not also apply to database right or plant breeders rights.
Thanks AndyJ. I feel that these were, and are, pretty weak distinctions though.
While the detrimental effects of a patent or trade mark might be more powerful in theory, the two ECJ cases that deal with essential facility doctrine are both copyright cases: Magill and IMS. There's also an arbitrary element: if someone else is using a TM logo or figurative mark, I can threaten copyright infringement with impunity but not TN infringement.
With respect to Bill, David and Helen, I think they are making a valiant attempt to rationalise something which is arbitrary and random (though I'll be happy to be proved wrong).
While the cynical politician side of me wants to just say "lobbists" and leave it at that, my more considered guess is that copyright infringement cases have historically tended not to be used as unwarranted threats, and defendants haven't really needed this way of fighting back until now.
In the recent past, you needed a lot of expensive equipment (printing press, room full of video recorders, etc.) to appear on the radar of people who might use copyright law against you. Therefore the cases were generally commercial, and either fairly simple (did the defendant make 10,000 unlicenced books or not?) or hung on a question that would reasonably require a legal opinion (is this hit song too similar to that one?).
I've long held the opinion that copyright law isn't fit for purpose because it's historically been used in business to business situations, and is being stretched to breaking point now it's being applied to private individuals - the parent post being a good example of the problems of doing so.
My opinion is that private not for profit copying should be legalised. Copyright is one of those things that should be regulated when businesses do it for profit, but unregulated when private individuals do it for no commercial gain. In the same way that I can make you a cup of tea without falling under the complex and unwieldy structure of business and health and safety law that would apply were I to set up a tea shop, or I can offer you a lift in my car without falling under the complexities of taxi licencing and commercial vehicle regulations, wouldn't it make sense for me to be able to give you a copy of something without falling under the complexities of commercial copyright law?
While such a change to the law might be a while away, in the shorter term perhaps I can hope that the lasting legacy of ACS Law is a more effective way of dealing with the next company to try that technique?
There is however the potential for claim in malicious falsehood if the allegations of copyright infringement are false and otherwise meet the requirements for such a cause of action.
Malicious falsehood? The post appears to be addressing a scenario where an innocent individual has been falsely threatened with copyright infringement action by a business and not business-to-business threats which may well warrant a cause of action for malicious falsehood.
There appears to be no remedy or fightback for an innocent party in copyright, which is a shame. The DEA was meant to incorporate this provision but it is no where to be seen.
Andrew Robinson's proposed exemption for 'private not-for-profit copying' would presumably not extend to someone who makes copies available on a P2P network, or uploads to a pirate downloading site? Because that is effectively copying it to the entire world.
"My opinion is that private not for profit copying should be legalised. Copyright is one of those things that should be regulated when businesses do it for profit, but unregulated when private individuals do it for no commercial gain."
Actually, it is legalised in some jurisdictions. For instance, in Poland there's the so-called "allowed/permitted personal use" exemption to copyright monopoly. The interpretation of this provision let the scholars to extend the "allowed/permitted" use to downloading (and only downloading) copyrighted materials from the Internet (except computer software and databases). This interpretation is widely used and accepted, which makes the prosecution of "piracy" more harder for the Police/copyright holders from one hand, and gives a lot of joy to those who support the idea of free dissemination of knowledge and human cultural activity.
When the DEA was going through committee the Open Rights Group submitted an amendment (Amendment 129) which aimed to rectify this omission with the specific intent of giving a remedy to those on the receiving end of vexatious actions for copyright infringement. (I know; I drafted it.)
It didn't get anywhere - few Opposition amendments do - but at least it got the issue canvassed in the House of Lords.
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