Infringements of IP Rights

An infringement avoidance strategy

A basic infringement avoidance strategy involves:

• Avoiding the use of any material which is sourced from another person without obtaining a specific permission. Permission is often referred to as a clearance in relation to IP rights. You should be vigilant in always asking about the source of any material which is provided to you and the clearance, if any, of rights in that material. Material which is easily available, for example on the internet, may be protected by IP rights;
• Maintaining documents which record any permissions or steps taken to try to confirm your ownership of the rights or your entitlement to use them may help you to prove that any infringement was innocent, rather than deliberate, and this could substantially reduce any liability if you have infringed. For example, under the Copyright Act 1968 although knowledge of an infringement is not necessary to prove infringement of copyright, knowledge does have a major impact on the damages a court will award. If a court finds that an infringer did not know and had no reason to believe that there would be an infringement, the court cannot order the infringer to pay damages. Instead, the infringer is ordered to pay to the owner of copyright the value of any profits obtained from the infringement. Conversely, if an infringer is found to have knowingly and deliberately infringed copyright, the court may award damages at an increased amount beyond the value of the copyright material which has been taken;
• If possible, you should immediately stop any conduct which is alleged to be infringing, without admissions, until you have obtained legal advice which confirms your rights to continue. By stopping the conduct you will remove the major impetus for the owner of the IP rights to commence legal action - to obtain an interim injunction. It will also prevent you from creating further infringements which could be the subject of a claim for damages; and
• Obtaining legal advice about any threat you receive. Many threats of infringement will not be able to succeed if they are examined closely. This could be because the IP rights do not exist, the rights are owned by a person other than the one making the threat against you or infringement cannot be proved. Unjustified or invalid claims of copyright infringement are prohibited under statutes such as the Copyright Act 1968 and may cause the person issuing the threat to be liable to compensate you for the consequences of making the threat.

If you receive a threat of infringement which cannot result in successful infringement action, you should respond by requiring undertakings from the person issuing the threat not to repeat the threat and to pay compensation to you for any loss you have suffered as a result.