HomeInsightsIntellectual Property Enterprise Court rejects appeal to increase damages in copyright infringement claim relating to photograph of Dylan Thomas

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In 1936, Dylan Thomas was introduced to Caitlin Macnamara by a mutual friend in a pub in Fitzrovia, London.  Mr Thomas is said to have drunkenly proposed to Miss Macnamara there and then.  The couple married on 11 July 1937 in Penzance.  Shortly after their wedding a photograph of them was taken by Vernon Watkins.

Ownership of copyright in the photograph passed from Mr Watkins to his widow, Gwendoline, on his death in 1967.  It was then assigned (in writing) by Mrs Watkins to Pablo Star Ltd.

In 2013 Haydn Price, in his capacity as director of Pablo Star, applied to have the company struck off the Register of Companies.  The company was subsequently dissolved.  In May 2014 there was a purported assignment of the copyright in the photograph from Pablo Star to the claimant in this case, Pablo Star Media Ltd.  Mr Price was the director and sole shareholder of Pablo Star Media.

The copyright in the photograph had expired at the end of 1987 but for the purposes of this case was assumed to have been revived on 1 January 1996 pursuant to the Duration of Copyright and Rights in Performances Regulations 1995 (enacted pursuant to the Copyright Term Directive 93/98/EEC).

In August 2016 Pablo Star Media issued proceedings against the defendant, Richard Bowen, for infringement of the copyright in the photograph after he had used part of the photograph on a website to advertise holiday cottages in Wales.   Mr Bowen had copied the photograph from the website VisitWales.com, but on this occasion he had forgotten to ask permission to use it.

Pablo Star Media obtained judgment in default and the District Judge awarded it £250 in damages with £3 interest, applying the “user principle”, i.e. considering what the parties might have agreed by way of payment for use of the photograph in a hypothetical negotiation immediately before infringement.  The Judge declined to award additional damages pursuant to s 97(2)(b) of the Copyright, Designs and Patents Act 1988.  He also declined to award Pablo Star Media any costs.  In fact, he took the view that Mr Price’s conduct on behalf of Pablo Star Media had been in breach of the overriding objective and so ordered it to pay £164.10 towards Mr Bowen’s travelling expenses.  Pablo Star Media appealed the District Judge’s decision.

His Honour Judge Hacon found that the District Judge had not erred in his calculation of damages on the “user principle” by considering alternative comparable rates for photographs of Dylan Thomas, adjusted by reference to the 17-day period for which the photograph had actually been used by Mr Bowen.   The District Judge had also been right to decline to award additional damages.  Further, although Mr Bowen conceded that he knew he could not use the photograph without permission, HHJ Hacon held that, taking into account the limited duration of the infringing use and the fact that Mr Bowen had gained practically no benefit from it, additional damages were not appropriate.  HHJ Hacon also refused to interfere with the District Judge’s order, made in light of the overriding objective pursuant to the CPR, that Pablo Star Media must contribute to Mr Bowen’s costs on account of his conduct in pressurising Mr Bowen by suing or threatening to sue him in other jurisdictions.  (Pablo Star Media Ltd v Richard Bowen [2017] EWHC 2541 (IPEC) (13 October 2017) — to read the judgment in full, click here).