#1685 - Copyright Remedies - Intellectual Property Law

6. Remedies

Statute of Limitation: There is a six year time limit that the action must be brought within.

Pre-Trial Remedies - CDPA s.100

• Interlocutory injunctions – Order refrains infringing acts. Can be decisive and avoid trial.

• American Cyanamid v. Ethicon [1975];

Principle: Concerned a patent for surgical sutures. One must ask for interim relief if: a prima facie case has been established, if a serious question is to be tried and whether it would be just to grant relief in the case at hand. One should then follow the following considerations:

1. Compare possible effects. According to Lord Diplock one must question whether financial relief would be sufficient.

2. Balanced test of convenience

3. Look to merits of case if still undecided (rare).

Criticisms of this approach:

• This is inflexible even if the case is strong.

• It is unrealistic to expect a judge not to consider the merits of a case.

• This favours an established business (who may have the ability to pay).

• This removes the benefits that many litigants got from mini-trials that used to be preliminarily heard – it would indicate the outcome of a case and allow out of court settlements.

• Series 5 Software v. Philip Clarke [1996]; leading authority. When do you get one? Laddie J said rules are not inflexible – court will look at all facts and will rarely try to resolve problems of disputed fact. Will bear in mind whether damages will be an adequate remedy, if D will pay, convenience, maintenance of the status quo and court judgments on strength of the case.

• Nude Brands Limited v. Stella McCartney [2009]; It was not appropriate to grant an interim injunction to restrain a fashion company from using the sign STELLANUDE on perfume products even though it was arguable that the company's use of the sign infringed a cosmetics company's Community Trade Mark of the word NUDE, as the likely damage to the fashion company in terms of financial cost, goodwill and reputation by delaying the imminent launch of the perfume product in question outweighed any damage to the cosmetics company in allowing the launch to proceed.

Is there a serious question to be tried?

• Cream Holdings v. Banerjee; A disgruntled employee sent corruption information about the company to the press. Was an injunction to be granted here? Lord Nicholls tried to add flexibility to the test by suggesting that ‘damage being likely’ does not mean more likely than not; just will there be grave adverse effects.

  • Search orders (formerly Anton Piller orders) – aims to preserve evidence. Can make applicants ex parte (without the claimant’s knowledge):

• Anton Piller v. Manufacturing Processes [1976]; Cs sought an ex parte order permitting him to enter Ds premises to remove evidence from safekeeping – Court was prepared to grant order to permit access with D’s permission. Although D can say no, that will amount to contempt of court. Must show a strong prima facie case and a real danger D will dispose of infringing material and risk of damage. Safeguards: D’s solicitor must be present, must be specific terms.

• Taylor Made Golf Company Inc. v. Rata & Rata [1996]; used here. D was selling fake golf clubs, were caught, provided an affidavit listing details of sales which was false. Lead to an Anton Piller order. Detailed info was discovered so was clear D had no complied. Laddie said breach was serious and fined 75,000 and narrowly avoided imprisonment. Innocent people should co-operate with the court.

Remedies at trial -

• Microsoft Corp. v. Electro-Wide Ltd [1997]; C complained D was selling laptops with unlicensed software. D said C did not own the proprietary software. Just because D provided evidence does not mean the court cannot order investigations.

  • Damages – S.97(1): MUST show that the breach of copyright CAUSED the damage – compensatory damages, put C in position had been in had infringement not been committed. Hard to assess what lost from sales/how many. Usual is to impose a general licensing fee.

• Work Model Enterprises v. Ecosystem [1996]; C sold office partitions. D sold cheaper competing range, compatible with C’s ‘Avanti’. Brochure breached copyright. C claimed damages for lost sales, price depression and damages for the unfair springboard they had got into the market. D fined 1million.

• London General Holdings Ltd v. USP PLC [2006]; Claim not attributable to any breach of copyright. If the copyright is a written doc and the text is used.

• Claydon Architectural Metalwork v. Higgins & Sons [1997]; ordinary rules on remoteness apply. Secondary causes intervened. Losses must be reasonably foreseeable.

• *Ludlow Music v. Robbie Williams (No. 2) [2002]; ‘Jesus in a camper van’. Found for L – L asked for 50% of all royalties and additional damages on the ground of deliberate, cynical infringement. Got 25%, but no additional damages because D had expected an agreement would be reached. Said EMI acted reasonably by releasing the album so injunction was for future release of CDs.

  • Additional/exemplary damages – S.97(2) – D gets exceptional benefits, used for invasion of privacy and injured feelings.

• ZYX Music v. King & others FSR [1995]; C (assignee of copyright in a disco arrangement by ZYX for song ‘Please Don’t go). D refused licence to distribute in UK but did it anyway and it went to no.1. Held to be flagrant deliberate breach.

• *Cala Homes v. McAlpine Homes (No.2) [1996]; Extreme enough for court to exercise power to award additional damages. Commercial rip-off case.

• Nottinghamshire NHS Trust v. News Group Newspapers (2002);

Facts: Trust pursued sum for copyright infringement for a photo of A (convicted killer) at a medical hospital, published without A’s consent or the hospitals – was on medical files.

Decision: Flagrant infringement. Sun already had pics of A. 450 infringement damages – this was the fee that would have been negotiated between a willing copyright owner and The Sun. Court critical photo was stolen, Sun destroyed evidence and never apologised. Caused degree of turmoil in the hosp – total 10,000 damages.

• Peninsular Business Services Ltd v. Citation plc [2004]; P’s employee left and founded a rival co. (D). D copied large parts of P’s employment manuals. P said D would have no business without its manuals. P had to show causation, not just that it was used in competition. Got 9,000 for infringement and 9,000 exemplary damages as copying deliberate.

  • Account of profits – available as an alternative for damages – s.97(2)

Equitable remedy given instead of damages. Problems on how this should be calculated:

• Incremental approach: compare what party would have got without the infringement

• Apportionment approach: take total net profits

There is a limit placed at no more than double of what would have been for a licence.

• *Redrow Homes v. Bett Brothers (HL) [1998]; Disapproved Cala Homes. You cannot get account of profits and additional damages.

  • Injunctions – get a permanent injunction if you win, normally.

• Springboard injunction

• Dyson v. Hoover (No.2); An injunction was made restraining work for 12 months after the patent was put into circulation. This was to prevent them getting an unfair advantage in the market and re-launching quickly. This put the claimant back in the position as if his rights had been respected.

• Long Arm injunction, for foreign territories: S.60 PA 1977 (patent specific?)

• Kirin-Amgen (No.2); This case concerned a genetic engineering patent, where the claimants were trying to prevent injury by use outside of the UK of UK derived cells. Very exceptional circumstances are needed for this which were not present here.

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Moral Rights

‘Moral rights’: Protect the author’s non-pecuniary and non-economic interests. Concerned with accuracy of texts and attribution. This is NOT a closed list.

UK: Scope of protection varies depending on what type of work you have.

• Right of Paternity - CDPA ss. 77-79

• Right of Integrity - CDPA ss. 80-83 – ‘not to have his worked subjected to derogatory treatment’. (‘Treatment’ means any change or alteration, but not translation. Interferes with the internal structure of the work – arguably narrower than Berne requires, i.e. placing work in an embarrassing place may be covered under Berne).

• *Tidy v. The Trustees of the Natural History Museum & another (1998);

Facts: T wrote ‘Fodsyke’ saga cartoons. Natural History Museum’s book of dinosaurs – Tidy was commissioned to draw A4 cartoons for the dinosaur exhibitions. Without permission the Museum put them in the book. He objected: they were reduced from A4 size to small; said if you make a cartoon smaller you must redraw it and cartoonists would view him as lazy.

Decision: Action for summary judgement. Ratti was not satisfied that a smaller reproduction was distortion. Said he wanted evidence from the public and it was hard to decide without.

• Snow v. The Eaton Centre (1982) (Canada); S famous for natural sculptures. Flight of Canadian geese in roof of shopping centre. At Christmas the centre put red bows around the geese, which S argued was not natural!! Ontario high court ordered that the bows should be removed. [UK approach would be unhappy].

• Pasterfield v. Denham [1999]; Man commissioned to draw...