Outlaw reports that: “[JA Coles] has agreed to pay £1,953.31 in damages and interest over the use of the picture, plus Getty Images’ legal costs”.

COMMENT:  Getty Images are well know for enforcing their rights pro-actively. Most, if not all, copyright lawyers in this country will have had at least one client contact them with a letter before action from Getty Images complaining about alleged copyright infringement.

It appears that Getty uses technological automated methods to spot infringements, so the chances of instances of copyright infringements of their photographs coming to light is perhaps quite high.

Judging from certain blogs and bulletin boards, many people are shocked that Getty would pursue an alleged infringer for damages after it has removed the image from its website.  However, Getty will no doubt argue that the value of their business and future revenue streams very much depend on protecting their copyrights robustly.

One thing, however, is clear.  If you have copied an image owned or controlled by a company such as Getty (without permission) and reproduced this image in some material form, then this is likely, in many circumstances, to constitute an act of copyright infringement.  Normally, a company such as Getty would be entitled to damages or a notional licence fee (which I understand to be around the £2,000 mark for Getty’s business).  Innocence is no defence to such an act of copyright infringement and simply removing an image after an act of copyright infringement has taken place does not expunge the original act of copyright infringement.

Furthermore, copyright infringement cases, even small ones, do not go onto the small claims track in the Courts.  Instead, such cases are often issued in London’s High Court.  In the High Court, the winning party can often recover their legal fees from the losing party.  Companies such as Getty often retain very expensive lawyers.  Therefore, a company who ignores a warning letter about copyright infringement could be faced with a very expensive legal case on its hands, even if it just emanated from a “minor” infringement.

Lesson: if you happen to receive a copyright infringement warning letter, don’t ignore it, as that it usually a recipe for even more pain.  Seek professional advice.

In the UK, the main way in which a famous individual can control merchandise is to attempt to register their name and/or likeness as a registered trade mark.

However, there are a few hurdles which lie in the way of such trade mark applicants.  First, the trade mark application in question must be able to designate trade origin.  Some English judges have been sceptical whether customers really care whether merchandise (such as a t-shirt with Michael Jackson’s photograph on it)  is authorised by the celebrity or not.  As such, there is doubt as to whether such trade marks are acting to “designate trade origin”.  This was one of the objections when the estate of Elvis Presley tried to register various ELVIS trade marks in the UK: Elvis Presley Enterprises Inc. v Sid Shaw Elvisly Yours [1999] RPC 567.

Secondly, some celebrities have had trouble convincing the relevant trade mark registries that their names are distinctive enough to merit trade mark protection.  The band Linkin Park had trouble in this respect before the trade mark registry.

Alex Ferguson also had trouble registering his name as a trade mark in respect of goods which were mere “image carriers”.  Again questions of distinctiveness, in terms of trade mark law, were at issue.  Ferguson’s legal team made an intriguing argument that such a rejection amounted to a breach of Ferguson’s human rights, i.e. he had a human right to register his name as a trade mark.  Unfortunately, in terms of providing clarity for trade mark law, this argument never made it to the European Court of Justice for due consideration.

CONCLUSION:  Although trade mark registrations may be hard to obtain in certain respects for celebrities, that is not to say it is not worth trying.  If celebrities wish to try and exploit and control merchandising, and to prevent unauthorised merchandising (i.e. by way of threatening trade mark infringement proceedings) then obtaining registered trade mark rights of some description is likely to be very important.

The trick is making the right trade mark applications and at the right time. The ELVIS case showed that if a celebrity or their estate delays, then the chance of the relevant trade mark being non-distinctive through dilution may increase.  This may thwart crucial future trade mark applications.