UK Update: Copyright infringement: dispelling the myths and rumours – Part 4

In this fourth part of the series, we discuss more common misconceptions in relation to copyright infringement in the UK.

I am in the photo – can I still be sued for copyright infringement if I use it?

Unfair as it may seem, a person who is the subject of a photograph does not necessarily have the rights to use it or prevent others from using it.

Image rights are not a feature of UK IP law which means that if you don’t have an agreement with the copyright owner / exclusive licensee, you will have no right to use the image despite being in it.

Celebrities such as Dua Lipa, Gigi Hadid and the Jonas brothers have recently all had claims brought against them due to their unauthorised use of photos in which they feature.

How can I prevent the use of images that I am in?

The Court of Appeal decision in Robyn Rihanna Fenty and others v Arcadia Group Brands Ltd and another [2013] EWCA Civ 3, made clear that it is possible for celebrities to bring passing off actions in order to prevent the unauthorised use of images which they are in, in very limited circumstances (i.e. if the court deems that it is likely that consumers would believe that that celebrity had endorsed the use of the image).

In this case, Topshop used an image of Rihanna on t-shirts which were then available to purchase.  The Court of Appeal found that there was passing off as Rihanna had worked with Topshop and other high street retailers in the past, she was a style icon and the image used was similar to the images used for her album at that time.

However, the Court of Appeal did make clear that use of a celebrity’s image on an item of clothing / garment did not automatically amount to passing off and that a celebrity does not generally have the rights to control the use of images of them in the UK because image rights are not a feature of the law.

In addition, there has been an argument that the right to privacy could be used as a means of preventing use of an image of a person. This was discussed in Douglas and others v Hello! Ltd and others [2005] EWCA Civ 595 but when the case reached the House of Lords, the judgment made clear that the decision being made did not affect the law on image rights.

Lord Hoffman stated that there was “no question of creating an ‘image right’ or any other unorthodox form of intellectual property”. Therefore, an action in relation to privacy in order to control the use of your image is likely to be of limited success.

Consequently, unless you are a celebrity who meets the very restrictive criteria of a passing off claim, you will be unlikely to have any right to prevent the use of your image in the UK – and if you do use an image of yourself you will need to seek permission from the copyright owner to do so in advance.

If I purchase a licence to use an image, am I still liable if I used the image in the past without obtaining a licence?

This depends on the licence terms that have been agreed with the copyright owner or exclusive licensee.

These should be given close consideration.

If we assume that the licence is only for future use of the image then you will still be liable to pay damages (in addition to the licence fee going forward) for any period of past unauthorised use.

This is because if you have communicated an image to the public through, say, a website without the appropriate licence to do so, then copyright infringement has occurred in terms of Section 20(1)(a) of the Copyright, Designs and Patents Act 1988.

Equally, payment of the damages amount for past unauthorised use of the copyright protected image does not usually mean that you are entitled to use the image in the future without paying the necessary licence in addition.

I could have purchased a licence for a similar / cheaper image elsewhere, surely that means the damages sought should be the same as the cost to the cheaper image?

Generally, if the owner or exclusive licensee of the copyright in the image has a standard licensing practice for the copyright work, they can claim damages amounting to the total that would have been paid if a licence had been obtained prior to the unauthorised use of the copyright work (plus potentially more if the conduct of the infringer is flagrant or a breach of moral rights occurred).

Therefore, in instances where there is a standard licensing practice, regardless of whether a similar image can be purchased for less elsewhere, the copyright holder / exclusive licensee is entitled to the amount that they have lost when the image(s) was used without payment of the required licence.

Whether or not the infringer is aware of the copyright owner / exclusive licensee’s licensing practice is irrelevant to determining liability for copyright infringement or the amount of damages that can be claimed.

If you would like more information on any of the issues covered in this article or any other aspects of intellectual property law please let us know.

The first three parts of this series can be accessed here:

• Part 1   
• Part 2
• Part 3

By Burness Paull LLP, Scotland, a Transatlantic Law International Affiliated Firm.  

For further information or for any assistance please contact ukscotland@transatlanticlaw.com

Disclaimer: Transatlantic Law International Limited is a UK registered limited liability company providing international business and legal solutions through its own resources and the expertise of over 105 affiliated independent law firms in over 95 countries worldwide. This article is for background information only and provided in the context of the applicable law when published and does not constitute legal advice and cannot be relied on as such for any matter. Legal advice may be provided subject to the retention of Transatlantic Law International Limited’s services and its governing terms and conditions of service. Transatlantic Law International Limited, based at 42 Brook Street, London W1K 5DB, United Kingdom, is registered with Companies House, Reg Nr. 361484, with its registered address at 83 Cambridge Street, London SW1V 4PS, United Kingdom.