30 September 2017

For the Love of Dylan Thomas: camping website photograph fought over in IPEC

There is perhaps something of an irony that Dylan Thomas would have appreciated given his quote: “Wales: The land of my fathers. My fathers can have it!” that a cropped version of his wedding photograph in 1947, was used to advertise holiday cottages in Wales.

This was however the subject matter of an action in the Intellectual Property Enterprise Court, the judgement of which was then appealed in the case of Pablo Star Media Ltd v Bowen [2017] EWHC 2451 (IPEC). It is not, however, the specific issues that are of interest (and indeed concern) here, but rather the question about everyone having their say in court and the cost to the public purse in them doing so.

Rage, rage against the dying of the light

There seems to be a lot of anger in the way that the Claimant, represented by the director and sole shareholder, Mr Haydn Price, handled this case. Most would regard the matter resolved when the letter before action elicited the positive response of the infringing acts ceasing within 17 days of it being sent. Possibly it would have been better if Mr Bowen the Defendant had offered proper undertakings, but most IP lawyers would have advised their clients not to pursue this any further, not least because the amount of damage was minimal. Instead of considering what he had achieved as a success in its own right and so moving on, Mr Price brought proceedings in IPEC seeking damages.

A key issue was whether it was reasonable for Mr Bowen to have assumed that copyright in the photograph had expired. Mr Bowen had taken the photograph from the (the ‘ViewWales’ website). The copyright had expired in the UK, but because the copyright in Spain was still subsisting in 1995 (a point requiring expert testimony) the EU Directive extending copyright protection meant that it was brought back to life throughout the entirety of the EU, including the UK.

Following a trial and judgement, Mr Price was awarded £250 (with £3 of interest) on the ‘user principle’ i.e. that this is the sum that a willing licensee and licensor would have agreed upon. However, this amount was reduced to £88.90 because the Deputy Judge who heard the case considered Mr Price’s behaviour was such that it was appropriate to award Mr Bowen his costs (essentially his travel costs to attend trial and represent himself). This arose because Mr Price had also brought proceedings in Ireland against Mr Bowen and threatened to do so in the US (pointing out that Mr Bowen was at risk for $150,000 of damages): all arising out of the same photograph on the same website but because the image was accessible also in those countries.

Mr Price did not consider that justice had been done and appealed the decision, which came before His Honour Judge Hacon, sitting as a judge in the High Court (he is also the main judge in IPEC).

Poetry in motion

Essentially, the grounds relied on by Mr Price were: the ‘user principle’ was not the appropriate test given the number of breaches that occurred during the relevant period (which would have included cropping the photo, storing, using etc.); the breaches were flagrant and this was not properly taken into consideration; costs should have been awarded to Mr Price, not the other way around, and taking into account his other actions in other jurisdictions was inappropriate (there were other aspects to this but these are effectively the points being made).

As an appellate court, HHJ Hacon focussed on the role such a court plays in reviewing the decisions of lower courts. He referred to a number of well-known decisions (the important one being the REEF Trade Mark Court of Appeal decision which specifically looked at how a High Court judge should approach an appeal from a lower tribunal – in that case the Trade Marks Registry). He then re-iterated the principles to be followed, which essentially boil down to the higher court not interfering with the lower court’s decision unless there is a manifest error in the approach or the law. Where the decision has been given by a specialised judge and in a specialised tribunal (i.e. IPEC) the appellate court is even more reluctant to interfere.

HHJ Hacon considered the issue of compensatory damages and the ‘user principle’, and particularly whether the acts of infringement merited anything different. The judge concluded not, since the aim was to consider the compensatory amount as a whole, and the user principle as applied by the Deputy Judge did just that.

Next, the judge considered the issue of additional damages for flagrancy of the infringing acts. As referred to above, it took an expert to assist the Deputy Judge to arrive at the conclusion that copyright was still subsisting in Spain (and so the UK). The Deputy Judge considered it was not unreasonable for Mr Bowen to have assumed that copyright had expired given the date the photograph was taken. However, in the appeal Mr Bowen advanced a different argument; one without any supporting documentation, namely that Mr Bowen acknowledged that he knew copyright subsisted as the VisitWales website used a copyright notice stating that they owned copyright (that would have been for the entire website, however). He stated he had frequently used material off this website for his own, and notified VisitWales when he had done so. This time he failed to notify the VisitWales website. The judge was doubtful as to the veracity of this, but even so did not consider the Deputy Judge had erred in not awarding additional damages.

Finally, there was the issue of costs. By all accounts, this took up some time at the appeal hearing, which manifested itself in the number of pages devoted to it in the appeal judgement. Taking account of the threatened US proceedings, that there were numerous pieces of litigation in Ireland and the US (involving Welsh MPs who were the legal entities behind VisitWales, as well as a number of newspapers), the judge concluded that Mr Price’s behaviour was unacceptable. In all the circumstances, there might have been the possibility of a breach of the overriding objective in respect of court proceedings if the Deputy Judge had awarded costs in Mr Price’s favour. As the judge also pointed out, costs are always in the discretion of the judge hearing the case.

Poetic justice

The judge described Mr Price as a ‘serial litigator’. A (copyright) ‘troll’ would be another description. A troll is someone who owns IP with some value, who then spends a lifetime chasing others squeezing all they can out their asset.

Should this case have been allowed to get even this far? No, particularly when the sum in issue has been found to be minimal when compared to the overall cost to the public purse to have two judges hear this matter. This becomes clearer when it is appreciated that Mr Price had need of persuading a High Court judge to allow him to put a company he dissolved back on to the register to effect an assignment of the photograph to himself. He had not done so before the company dissolved (so the assets become the Government’s under the bona vacantia rule). This also was after proceedings against Mr Bowen had commenced. I doubt the companies judge would have so readily agreed to do so if he had been aware of how Mr Price behaved.

This case highlights litigating is no longer solely for the rich and companies that can afford to (despite the hike in Court fees, which I consider are now disproportionately high). In itself this is a good thing. However, it seems that IPEC has now become the playground of the determined litigant in person (which Mr Price effectively was) taking up valuable court time and public resources for their own personal crusade. Giving the court more effective case management powers to bring such proceedings to a halt and at a relatively early stage in proceedings must surely now be considered to prevent cases like this getting out of hand. If not, the IPEC may well be shunned by those it was intended to help: SMEs who could not afford otherwise afford to litigate in the High Court.