Reformation Publishing Company Ltd v Cruiseco Ltd & Anor

Copyright infringement by making a work available online continues only while the work is made available to the public. Sending a link to a limited, determinate group does not itself satisfy that requirement, and an invitation to disseminate the work is insufficient without evidence of further dissemination to the public.

Where damages are assessed by a reasonable licence fee, the hypothetical licence must correspond to the infringement that actually occurred. Its duration is the period of infringement, although the fee need not be calculated by simple pro-rating. Additional damages may be awarded where an agent’s reckless conduct is attributable to the principal.

Reformation owned copyright in the musical works of two songs used in a promotional video for a music-themed cruise operated by Cruiseco Ltd and its Australian parent. The defendants accepted infringement. The video was posted on the defendants’ websites and a link was sent to travel agents, with encouragement to disseminate it. The defendants removed the video from their websites after five days but failed to deactivate the filesharing link for approximately one year.

The court had to determine the duration of the infringement, the duration and value of the reasonable licence, and whether additional damages were justified by the conduct of the defendants’ promotional agent.

1. The claim succeeded. Damages were assessed at £38,750 under section 96(2) of the Copyright, Designs and Patents Act 1988, together with £25,000 additional damages under section 97(2), making £63,750.

2. Under section 20(2)(b), the critical question was whether the video had been made available to the public. Leaving it on a filesharing site did not itself make it available to anyone where access required the link. Sending the link made the content available to the recipients while the link remained active. However, the 257 travel-agent representatives were a determinate group and did not themselves constitute the public. The evidence did not establish that the link had been forwarded to members of the public. An encouragement to disseminate the video was insufficient. The infringement therefore lasted five days, from 22 to 26 June 2017.

3. The reasonable licence fee was a form of user damages. The hypothetical licence was a tool for valuing the infringement that had actually occurred. Following Eaton Mansions (Westminster) Ltd v Stinger Compania de Inversion SA [2013] EWCA Civ 1308, its duration was limited to the actual five-day infringement, not the longer period for which the defendants might have negotiated had they sought permission. The licence covered both songs, internet and point-of-sale use, and internet use generally, although primarily directed at the UK and Australian markets.

4. Having regard to comparator licences and the value of the songs, the court assessed a one-year fee for both songs at £155,000. It assessed the five-day licence at 25 per cent of that sum, namely £38,750. The fee was not mechanically pro-rated because the initial promotional use and association with the songs had substantial value.

5. ANA was acting as Cruiseco’s agent in producing a promotional video ready for use, which implicitly required it to obtain the necessary licences. On the evidence, Mr Els’s failure to clear the publishing rights, despite his experience in the music industry, amounted at least to recklessness in the sense of an attitude of indifference to the risk. Under ordinary agency principles, that state of mind was attributable to Cruiseco for the purpose of section 97(2), although Cruiseco itself had not acted flagrantly.

6. The court considered the additional damages of £25,000 sufficient to mark the seriousness of the infringement.