Small claims of IP infringement

As a member of the UK-based Society of Legal Scholars, IP Draughts receives a copy, every few months, of the society’s journal, Legal Studies.

When he receives his copy, he skims the contents page looking for an article that focuses on practice-based issues in the field of IP or commercial law. Often he finds nothing of interest. Many of the articles seem to be academics talking to one another, and citing one another, in a closed loop.

The latest edition – volume 39 No 1 March 2019 – is different. It includes an article reporting on empirical research about the use of the small claims track (SCT) of the Intellectual Property Enterprise Court. It seems that this track or court is favoured by professional photographers to claim royalties for use of their photos without permission.

The correct citation for the article is: Cooper E, Burrow S (2019) Photographic copyright and the Intellectual Property Enterprise Court in historical perspective. Legal Studies 39, 143-165. IP Draughts doesn’t know whether the article is available to non-members, but with the trend to open-access scholarship he hopes it will become generally available soon.
The authors are from the School of Law of Glasgow University. The article is stated to be partly based on Sheona Burrow’s unpublished 2017 PhD thesis, Access to Justice in the Small Claims Track of the Intellectual Property Enterprise Court (IPEC): An Empirical Enquiry into Use by Creative SMEs.

The article is topped and tailed with a suitably academic focus on the theoretical framework for ‘property rules’ and ‘liability rules’, and with a discussion of certain historical developments on the subject of newspapers paying photographers for use of their photos. For IP Draughts, who is not part of the academic world, these discussions are of only passing interest, though he notes that the former topic is reminiscent of the Manchester Manifesto, mentioned briefly in an early article on this blog.

Where the article comes to life for IP Draughts is in its analysis of the cases brought in the SCT between October 2012 and 31 December 2015. Such cases do not usually make it on to BAILII, his usual source for reported case law, presumably because they are considered of low importance. And yet, anyone advising a client on an IP infringement matter in England and Wales needs to understand what the SCT is for, how it works, and how it is different from larger cases brought in the fast track and multi-track of IPEC, or even larger cases brought in the Chancery Division (including the Patents Court).

Here are a few points, in no particular order, that jumped out from a lengthy and thoughtful article:

1. During the period studied, 261 claims were dealt with by SCT, of which 79% concerned copyright infringement. Of these, a majority (144) concerned the infringement of photgraphic copyright, of which 133 were about unauthorised use of a photo on a website. 122 of the claims (46% of the total of 261) were by freelance professional photographers or their agents.
2. The SCT is the forum of choice for such photographers. It replaced an earlier route that they tended to choose, which was to issue an invoice for unpaid royalties and then bring a money claim in the County Court.
3. In the vast majority of cases, the photographers were successful in their claims. They tended to seek damages rather than an injunction.
4. These actions often involve claims of breach of moral rights as well as copyright. For example, it has been held in SCT cases that the right of attribution is breached when metadata is stripped out from the online image.
5. Damages are often calculated by reference to a “going rate”. In some cases there is an uplift for flagrant breach, often by way of a 100% uplift on damages.

IP Draughts would be interested to read Dr Burrow’s PhD thesis. He idly wonders why there isn’t a branch of high-quality scholarship that avoids all the baggage of the “academy” and just focuses on research that affects practical issues.