23 November 2017 by Paul Harris
A dispute over a Dylan Thomas photograph shows the perils of accessible litigation
Dylan Thomas might well have appreciated the irony of a cropped version of his wedding photograph in 1947 being used to advertise Welsh holiday cottages. ‘Wales: The land of my fathers,’ the poet once said. ‘My fathers can have it!’
The use of said photo was the subject matter of an action in the Intellectual Property Enterprise Court (IPEC). The copyright case, Pablo Star Media Ltd v Bowen  EWHC 2451, resulted in defeat for the claimant but was then appealed.
It is not, however, the specific issues that are of interest here, but rather the question about everyone having their say in court – and the cost to the public purse in them doing so.
There seems to be a lot of anger in the way that the claimant, represented by Pablo Star director and sole shareholder, Haydn Price, handled this case. Most would regard the matter as resolved, given the infringing acts ceased within 17 days of the letter before action being sent.
It might have been better if Richard Bowen, the respondent, had offered proper undertakings, but most IP lawyers would have advised claimants 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, Price brought proceedings in IPEC seeking damages.
A key issue was whether it was reasonable for Bowen to have assumed that copyright in the photograph had expired.
Bowen had taken the photograph from VisitWales.com. 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 through the entire EU, including the UK.
“Most IP lawyers would have advised claimants not to pursue this any further, not least because the amount of damage was minimal”
Following a trial and judgment, Price was awarded £250 (with £3 of interest) on the ‘user principle’ – 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 thought that Price’s behaviour made it appropriate to award Bowen his costs, essentially for travel to attend trial and represent himself.
This arose because Price had also brought proceedings in Ireland against Bowen and threatened to do so in the US, pointing out that Bowen was at risk for $150,000 of damages in that territory. All this was due to the same photograph on the same website being accessible in those countries.
Price did not consider that justice had been done and appealed the decision, which came before judge Richard Hacon, the IPEC’s main judge, sitting in the High Court.
Price’s argument broke into several basic parts. First, 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, storage and use.
Second, the breaches were flagrant and this was not properly taken into consideration. Third, costs should have been awarded to Price, not to Bowen. Lastly, taking into account his other actions in other jurisdictions was inappropriate.
As an appeals court, judge Hacon focused 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.
Hacon then reiterated the principles to be followed, which reduce 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, such as the IPEC, the appeals court is even more reluctant to interfere.
The judge considered the issue of compensatory damages and the user principle, and particularly whether the acts of infringement merited anything different. He 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 reasonable for Bowen to have assumed copyright had expired given the date the photograph was taken.
However, in the appeal Bowen advanced a different argument, without any supporting documentation, acknowledging that he knew copyright subsisted as the VisitWales website used a copyright notice stating that it owned copyright – although that would have been for the entire website.
“As the judge also pointed out, costs are always in the discretion of the judge hearing the case”
Bowen 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 website. Hacon was doubtful of this, but 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 judgment.
Taking account of the threatened US proceedings, and that there were numerous pieces of litigation in Ireland and the US (involving Welsh ministers who were the legal entities behind VisitWales, as well as a number of newspapers), the judge concluded that 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 Price’s favour. As the judge also pointed out, costs are always in the discretion of the judge hearing the case.
The judge described Price as an ‘enthusiastic litigator’, citing the claimant’s willingness to bring litigation against Bowen in the US ‘absent a deal on terms satisfactory’ to him.
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 Price needed to persuade a High Court judge to allow him to put a company he dissolved back on to the register to assign the photograph to himself.
He had not done so before the company dissolved, so the assets become the government’s under the ‘bona vacantia’ or ownerless goods rule.
This also was after proceedings against Bowen had commenced. I doubt the companies judge would have so readily agreed to do so if he had been aware of how Price behaved.
This case highlights litigating is no longer only for the rich and companies that can afford it, despite the hike in court fees.
In itself this is a good thing. However, it seems that the IPEC has become the playground of the determined litigant in person (which 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 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: small and medium businesses who could not otherwise afford to litigate in the High Court.