Copyright infringement claim
- Himanshu Dasare
- Updated: Fri, 25th Nov 2016
Our client, “the Author”, successfully claimed copyright infringement at the Intellectual Property Enterprise Count, IPEC. The case concerned a series of illustrations. The court also dismissed a counterclaim challenging the Author’s IP rights.
Events leading up to the court case
The Author created illustrations and was the first owner of the illustrations. The Author also owned a publishing company, called “Publishing Ltd”. A marketing company, called “Marketing Co” promoted Publishing Ltd, under a development agreement.
Publishing Ltd, under an IP assignment agreement, transferred the illustrations’ IP ownership to the Author. The Author’s clothing business, upon assuming ownership, sold T-shirts featuring his illustrations.
A company called “Infringing Co” exploited, without authority, the illustrations and their copyright. Infringing Co compiled a catalogue of custom printed T-shirts. Infringing Co also produced and sold t-shirts featuring the Author’s illustrations.
The Authors’ case
The Author claimed Infringing Co infringed its copyright by:
- Issuing copies of articles with the Author’s illustrations to the public;
- Communicating to the public.
Infringing Company’s case
Infringing Co accepted it committed the infringing acts. However, Infringing Co claimed it was only liable if the Author proved copyright ownership, i.e. the Author had the legal capability to bring the copyright infringement claim against Infringing Co.
Infringing Co stated at the outset, the illustrations’ copyright ownership vested in Marketing Co, not Publishing Ltd. Infringing Co argued that Marketing Co developed the business, and there was never a question of Publishing Ltd assigning the ownership rights.
Accordingly, the Author had not acquired ownership rights through the IP assignment agreement with Publishing Ltd. Therefore the Author was not entitled to bring the claim against Infringing Co.
Issues before the court
Firstly, the court determined if the Author was entitled to bring the claim. If the Author was not entitled, the infringement claim would be struck off. Infringing Co’s counterclaim would succeed.
Our IP ownership evidence
We investigated and analysed the background documents. We established the Author was the illustrations’ creator, author, and copyright owner. We provide the judge with an insight into Publishing Ltd’s and Marketing Co’s business relationship. We demonstrated Publishing Ltd created the illustrations, and had the right to enter an agreement with the Author.
The Author was the first owner of the illustrations. The IP assignment agreement between Publishing Ltd and the Author was valid.
The court’s decision
The court decided that despite Marketing Co’s day to day marketing conduct, there was no reason to accept the illustrations’ transfer of copyright ownership. The court concluded that Publishing Ltd:
- Was the original copyright owner;
- Had assigned its rights to the Author, who:
- Was entitled to the IP ownership, and
- Exploit the illustrations.
The Author’s claim succeeded, as he had legitimate interests to bring the copyright infringement claim.
Intellectual property rights are intricate. Establish ownership from the outset. Then you’ve protected your business and created an exploitable asset.
If the intellectual property right is not registrable, eg copyright, then properly document your ownership.
If you enter an agreement with another party, we ensure the agreement states who owns all current and future IP.
Copyright infringement can be complex to claim or defend. We have the expertise, the case tactics, and are commercial and proportionate. Why not call or email me now to arrange an informal discussion.....