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Trademark Lawyer – Federal Circuit Court – Briner v Happy Herb – Copyright

Briner v The Happy Herb Company & Ors [2017] FCCA 1854 (11 September 2017)

This is another case about a business using a copyright image on its website and involved similar issues to the Tylor v Sevin case reported here . Businesses do need to be aware of, and take responsibility for, copyright considerations when using photographic images on their websites. An article on managing website content can be found here .

Mr Briner is a professional photographer and owner of the copyright in a photograph taken by him in 2001 and first published in the USA in 2004.

Happy Herb, without obtaining Briner’s authorisation or giving him any attribution, reproduced the photographic image and communicated it to the public on its website from at least 21 April 2013 until shortly after 15 October 2015 when it received a demand from Briner for payment of a licence fee in the amount of US$1,180.

The evidence disclosed Briner had previously charged another party US$200 as a licence fee. He argued a comparable image from Getty Images would cost AU$1,115, but that is for a corporate and promotional site. The amount reduces to AU$485 if the image is used for a commercial blog. Judge Driver found the photograph was only incidentally related to the business of Happy Herb to illustrate general information about the camomile herb and considered compensatory damages of AU$500 to be appropriate.

Judge Driver accepted that the image was obtained from the internet by an unknown employee or contractor of Happy Herb but, at that time, Happy Herb did not know the image was subject to copyright, let alone who owned the copyright. Furthermore, the infringing image was removed from the website immediately after Happy Herb was notified of Briner’s copyright. There was no real doubt that, if a licence fee had been negotiated, Happy Herb would have been willing to attribute Briner as author. As a result, Judge Driver did not award any damages for breach of moral rights.

On the issue of additional damages, Judge Driver awarded a modest amount of AU$1,000. His Honour was not critical of Happy Herb’s conduct in the proceedings and commented: “It is a pity that it has taken a contested hearing in order to provide Mr Briner with appropriate compensation for the use of the Work. Persons downloading photographs from the internet should recognise that there may be a risk of copyright infringement and, once notified of an infringement, they should act promptly and reasonably in order to arrive at an appropriate fee as compensation for the use of the Work.“

There was no award for pre-judgment interest and a costs order will be separately determined. Judge Driver did comment that “both the respondents and the applicant could have shown more flexibility in order to resolve the dispute without the need for litigation“.