What are the remedies for copyright infringement?

A claimant can apply for an injunction from the court, prohibiting the infringing party from further copyright infringement. To obtain an injunction, the claimant (the person bringing the claim) applies for an interim injunction which prohibits the defendant (the alleged copyright infringer) from any further copyright infringement pending trial of the case.

To obtain an interim injunction, the claimant must satisfy the court that there is a serious issue to be tried, and that damages would be an inadequate remedy. An interim injunction will not normally be granted where:

• a defendant has pleaded a defence of ‘fair dealing’;
• where the claimant has delayed in applying for the interim injunction;
• where an injunction would not be in the public interest;
• where the claimant has acquiesced in the infringement;
• where the application has been made prematurely; or
• where there is substantial doubt as to whether the claimant will succeed in their claim.

In urgent cases, or cases where the defendant is likely to hide or destroy evidence of the copyright infringement, an interim injunction could be granted without the defendant having notice of the application.

If an interim injunction is granted, the court will give directions for the case to proceed to trial. At trial, if the court is satisfied that the interim injunction should be extended – it will make a final injunction. However, if it takes the view that the interim injunction should not have been made – the claimant will normally be ordered to pay damages to the defendant for any losses suffered in consequence of the interim injunction.

The courts will not grant an injunction to prohibit copyright infringement in a foreign country unless EC Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters applies. Specialist legal advice should be obtained.

In a copyright infringement case, the claimant will usually seek damages from the defendant, in addition to, for instance, an injunction. Currently, the courts are applying the ‘user principle’ in assessing damages. This means damages are calculated based on the amount a willing licensee would pay a willing licensor in a hypothetical negotiation over the copyright in question.

An alternative method is to assess damages by considering economic factors such as:

• any depreciation of the copyright as a consequence of the infringement;
• any sales lost by the claimant as a result of the infringement;
• any damage to the claimant’s trade resulting from the infringement;
• what royalty the claimant should have received;
• how much the defendant would have had to pay for a licence to reproduce the claimant’s work;
• the flagrancy of the copyright infringement.

The method that results in the higher figure is the figure likely to be awarded in damages. The claimant could choose to receive the profits made by a defendant because of their copyright infringement, instead of damages.

A claimant may seek an order for ‘delivery up’ (ie. giving up) of the infringing material. This means the defendant will be ordered to return the infringing material to the claimant, and normally its destruction will be ordered.

Normally, an order for delivery up will not be made if the infringing material was made more than 6 years before the application was made.

Where infringing material is being sold or hired out, the copyright owner has the right to seize the infringing material or authorise another person to seize it on their behalf. However, there are restrictions and conditions that must be complied with, including giving notice to the police. Specialist legal advice must therefore be taken before taking any steps.

A court order can be obtained for the forfeiture of the infringing material if it has come into someone’s possession during the investigation or prosecution of the following criminal offences:

• sections 107(1), (2) , or (2A) of the Copyright, Designs and Patents Act 1988;
• section 114A(2) of the Copyright, Designs and Patents Act 1988;
• the Trade Descriptions Act 1968;
• the Business Protection from Misleading Marketing Regulations 2008;
• the Consumer Protection from Unfair Trading Regulations 2008.

The court must be satisfied that an offence has been committed before ordering forfeiture of the infringing material. Once an order is made, the material must be destroyed in accordance with the order.

If a copyright owner of published literary, dramatic or musical work suspects that infringing copies may be imported into the UK, they can give written notice to the Commissioners for HM Revenue and Customs that they are the copyright owner – requesting that the prohibited goods are treated as printed copies of the work for a period specified in that notice. This period cannot exceed 5 years (or longer than the period for which copyright is to subsist).

Similar provisions are available for copyright owners of a sound recording or film.

However, the Commissioners can only treat as prohibited goods infringing copies which are imported into the UK from outside the European Economic Area (EEA), or from the EEA where they are not in free circulation.

A defendant can undertake to take a licence allowing them to reproduce the work – in which case, an injunction or order for delivery up cannot be made. In these circumstances, any damages or account of profits awarded to the claimant will be limited to double the amount which would have been payable had a licence been granted before the earliest infringement.