UNIVERSITY OF THE WEST INDIES

MONA CAMPUS

FACULTY OF LAW

INTELLECTUAL PROPERTY
LAW3760

WORKSHEET 3
2022-2023

INFRINGEMENT, DEFENCES
AND REMEDIES

1. INFRINGEMENT

(a) Definition: “Infringement”

Under CAJ section 31 (1) “The copyright in a work is infringed by any person who, without the
licence of the copyright owner, does, in relation to that work, any of the acts which the copyright
owner has the exclusive right to do pursuant to section 9”. Recall that the author has two
categories of exclusive rights: rights of exploitation or economic rights (CAJ section 9) and
moral rights (CAJ sections 14-17). Therefore, if the copyright owner, A, has not given an
assignment or a licence to B, and the use made by B of A’s protected work tramples on the
exclusive rights of A, such use not being a permitted act under statute or a specific exception, B
will be held liable for infringement of A’s copyright.

Make the distinction between primary infringement and secondary infringement:

 Primary infringement refers to direct unauthorized acts in relation to the rights of

reproduction, distribution, public performance, communication to the public, and
adaptation; per CAJ section 31(1). See Turner v. Performing Rights Society [1943] 1 All
ER 413(public performance); Shetland Times v. Johnathan Wills [1997] FSR 604 (broad
casts); Sillitoe v. McGraw-Hill [1983] FSR 545(adaptation).

 Secondary infringement refers to unauthorized acts in relation to dealing with infringing

copies, providing the means of making infringing copies and permitting or enabling
public performance. Thus, this only arises when some other infringing act has occurred or
is assumed to have occurred and the defendant’s liability is dependent on establishing
some degree of guilty knowledge on his part; per CAJ section 31 (2) – (8). See LA Gear
v. Hi-Tech Sports [1992] FSR 121.

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Note that “copyright is infringed not only where an act restricted by the copyright in the work is
done without consent, but also where a person authorizes the doing of such an act (CAJ section
30)….where a person is liable for having authorized an infringement he will also often be liable
as a joint tortfeasor or for having procured the infringing act. Also, of course, he may be
vicariously liable for the acts of his servants or agents done with his authority. “Authorisation” is
a separate act of infringement from the act which is itself unauthorized.” – Copinger and Skone
James on Copyright at page 449, para 7-130. See CBS Songs Ltd v. Amstrad plc [1988]AC 1013
AT 1057, HL; ABKCO Music v. Music Collection International Ltd [1995] RPC 657; Moorhouse
v. University of NSW [1976] RPC 151; Pensher Security v. Sunderland City Council [2000] RPC
249; Sony Corp v Universal City Studios Inc 464 US 417; A & M v Napster US Sup Ct 1984

For infringement of moral rights see CAJ sections 36-40 and for infringement of photographs
section 41. Note also section 9 (3) – these rights are exercisable by the author, irrespective of
who owns the copyright, subject to waiver. See Alan Clark v. Associated Newspapers Ltd [1998]
RPC 1

(b) Proof of infringement

The burden of proof is on the plaintiff to show that he owns the copyright, and:
 That the defendant did an act, which was the exclusive right of the copyright owner in
relation to the work or a “substantial part” of it; AND
 That the defendant did not have the plaintiff’s express or implied permission to do the
act. See the Bahamian case Gold Rock Limited v Nylund Hylton [2015] UKPC 17

(i) An unauthorized act in relation to the whole work

See Antiquesportfolio.com v. Rodney Fitch & Co Ltd [2001] ECDR 51 (UK High Court).

(ii) An unauthorized act in relation to a “Substantial” part of the work

CAJ section 9 (2) (a) underscores it is immaterial whether the infringement occurs in relation
to the whole work or a substantial part of the work. Substantiality is both a quantitative and a
qualitative test. It is a matter of degree in each case and the court has to take all the
circumstances into consideration. See Schweppes Ltd v. Wellingtons Ltd [1984] FSR 210; A
v. B [2000] EMLR 1007; Hawkes & Son (London) Ltd v. Paramount Film Service Ltd [1934]
Ch 593; Spelling Goldberg Productions Inc v. BPC Publishing Ltd [1981] RPC 283;
Ravenscroft v. Herbert [1980] RPC 193.

The quality or importance of what has been taken is much more important than the quantity.
See Designers Guild Ltd v. Russell Williams (Textiles) Ltd (2000) 1 W.L.R 2416; Ladbroke
(Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR 273.

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 (iii) Indirect Copying

“Ignorance is no defence to an infringement claim. If, Therefore, the defendant’s work has
been copied from the claimant’s, either directly or indirectly, the fact that the defendant was
unaware that the work he was copying in this way existed, or was the claimant’s or was the
subject of copyright, or whether he thought he had a licence, provides no defence to a claim
for primary infringement… Nor would a blind person, or someone who was illiterate or who
simply chose not to look at the thing he is copying, have a defence.” - Copinger and Skone
James on Copyright at page 379, para 7- 22. Consider the distinction made between
conscious copying, unconscious copying and coincidence by Diplock LJ in Francis Day &
Hunter Ltd v. Bron [1963] Ch. 587. Contrast the American approach in Bright Tunes Music
Corp v. Harrisongs Music Ltd 420 F.Supp.177 (US District Court, NY, 1976). See also King
Features v. Kleeman [1941] AC 417; Sony Music Entertainment (UK) Ltd v.
Easyinternetcafe Ltd [2003]FSR 48.

(iv) Copying and the Internet

The better view is that electronic communications has done little to alter the basic principle
that unauthorised copying will result in infringement. It is important to note that transient
copies may constitute an infringement. See CDPA section 17(6) and CAA s.19/ CAJ s.83A .
This is different from small fragments of the work copied during transmission which may be
viewed as incidental copying, and accordingly would not amount to an infringement. See
CAAs.14/ CAJ 55. The internet service provider will not normally be held liable unless it can
be shown that he enabled the onward transmission of the copyright work to third parties or
authorized his servants do so. See CAA s.28 / CAJ s.134A. In the UK and USA, a system of
“notice and take down” has developed which allows the copyright owner to give the internet
service provider notice that the reproduction of the work is unauthorized. Failure on the part
of the internet service provider to take down the infringing copy after receipt of the notice
would result in liability on his part. Consequently, the person who uploaded the copyright
work to the internet site controlled by the service provider, without authorization from the
copyright owner, would be strictly liable for the primary act of infringement. The internet
service provider may be liable for secondary infringement in respect of the onward
transmission. However, the better view is that “a purely passive service provider would not
be liable for the act of copying.” - Copinger and Skone James on Copyright at page 379, para
7- 21. See Sony Music Entertainment (UK) Ltd v. Easyinternetcafe Ltd [2003]FSR 48. Note
that persons who download files containing copyrighted works also violate the copyright
owner’s reproduction right. See A & M Records Inc. v. Napster Inc 239 F 3d 1004 (2001).

Note that the provisions of the CDPA have been influenced by EU Directives on E-
Commerce and The Information Society, and the WIPO Internet Treaties. Recall that the
CAA now implements the WIPO Internet Treaties, so the UK position, which reflects the
WIPO Internet Treaties, is highly persuasive, though not binding on Jamaican Courts.

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 See Article 8 of the WCT - Right of Communication to the Public: “Authors of literary
and artistic works shall enjoy the exclusive right of authorizing any communication to the
public of their works, by wire or wireless means, including the making available to the public
of their works in such a way that members of the public may access these works from a place
and at a time individually chosen by them.” This provision thus covers the uploading of
copyright works to the internet.

(v) No infringement of Public Performance right if performance is private

Note section 2 of CAJ which defines “performance”, and section 9 (1) (c) which gives
copyright owners the exclusive right to perform or authorize the public performance of their
work. This would include live performances, playing the radio or television or playing the
work on a computer. The better view is that the word “public” restricts this right so that
whatever takes places in a person’s private domain would not amount to an infringement. “It
makes no difference if the actual performers are paid…The nature of the place where the
entertainment is given is immaterial. A private entertainment may be given in a public room.
A public entertainment may be given in a private room. The question whether an
entertainment is given in public or in private depends, in my opinion, solely upon the
character of the audience.” - See Romer J in Jennings v. Stephens [1936] Ch. 460;
Performing Right Society Ltd v. Harlequin Record Shops Ltd [1979] 1 WLR 851. Consider
whether a public performance may occur even if the public is present in different places at the
same time. See Canadian Cable Television Association v. Canada (Copyright Board) [1993]
2 FC 138 (Canada); Rank Film Ltd v. Dodds (1983) 76 FLR 351 (Australia); Columbia
Pictures Industries Inc v. Professional Real Estate Investors Inc 866 F. 2d 278 [1989] (USA).

(vi) Performers rights in their performances CAA s.24 / CAJ 108

A performer’s rights are infringed by a person, who without his consent, fixes a recording,
otherwise than for his private and domestic use; copies a recording; sells rents or distributes
to the public or otherwise transfers ownership of any such recording or copies thereof;
broadcasts live, or includes live in a cable programme or otherwise communicates to the
public the whole or any substantial part of a qualifying performance. Save that there is no
infringement if the copies of the recording of the qualifying performance were made for the
purpose of archiving, restoring or preserving the work.

Who can be sued?

Both the infringer and the person who authorized the infringement can be sued. Contrast the
UK position in CBS Songs Ltd v. Amstrad Consumer Electronics plc [1988] AC 1013 and the
US position in Sony Corp v. Universal City Studios, Inc 464 US 417 (1984) and A & M
Records Inc v. Napster Inc 239 F. 3d 1004 (2001).

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2. DEFENCE UNDER CONTRACT

There is no infringement if the acts done in relation to the copyright work were done in
pursuance of a valid contract. One of the following three types of contracts is usually entered
into: - An assignment
- An exclusive licence; or
- A non- exclusive licence

(i) Assignment of Economic Rights

To be valid, the assignment must be in writing and executed by the copyright owner; this
is done by way of a deed. The assignment may in relation to all the exclusive rights or
restricted to specified rights, and granted for the entire duration of the copyright term or
for a limited part thereof. See section 23(1) & (2) CAJ.

In practice the term “Assignment” is used to denote an agreement which has the effect of
changing copyright ownership; whereas, the term “Licence” is used to denote an
agreement that has the effect of granting consent, permission or clearance, to use the
copyright work on the terms specified by the copyright owner. A licence may be either
exclusive or non-exclusive. An exclusive license must be in writing to be valid. The
assignee and the exclusive licensee are entitled to sue for copyright infringement.
However, the exclusive licensee must usually make the copyright owner a party to the
proceedings. A non-exclusive licence need not be in writing and the non-exclusive
licensee cannot sue for infringement of copyright.

In the absence of a valid assignment or exclusive licence, the putative assignee/exclusive

licensee may claim an equitable interest. For example, if he has paid money to the
copyright owner or licensor, he may ask the court to compel the copyright owner or
licensor to sign a written document to perfect the agreement. He may also seek an interim
injunction against the copyright owner or licensor, but he cannot sue for a permanent
injunction or damages until the deed is executed. Contrast the USA position where, in
such a situation the agreement would be invalid as an assignment or exclusive licence but
it may take effect as a non-exclusive licence. See Effects Associates Inc v. Cohen 908
F.2d 555 (1990).

(ii) Assignment of Moral Rights

Under sections 27 & 28(4) of CAJ, Moral rights cannot be assigned but a consent or
waiver may be given.

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3. DEFENCE UNDER STATUTE

(a) Fair Dealing

Fair dealing is a two prong test. The defendant must show:

- Their dealing with the work fell within one of the three categories of exceptions; AND
- The dealing was fair

Three fair dealing exceptions are outlined in sections 52 & 53 of CAJ:

 Research or private study – Universities UK v. Copyright Licensing Agency Ltd [2002]

RPC 693; Sillitoe v. McGraw-Hill [1983] FSR 545;

 Criticism or review accompanied by sufficient acknowledgement – Pro Sieben Media v.

Carlton [1999] 1WLR 605; Beloff v. Pressdram [1973] FSR 33;

 Reporting current events – Associated Newspapers v. News Group Newspapers [1986]

RPC 515; AG v. Guardian Newspapers [1990] 1 AC 109; HRH Prince of Wales v.
Associated Newspapers Ltd [2008] Ch 57; Ashdown v. Telegraph Group Limited [2002]
RPC 5.

These provisions are similar to CDPA section 29 and CATT section 13, save that CAJ makes no
provision for Personal Use. See CATT section 9.

Section 54 of CAJ states that: “For the purposes of determining whether an act done in relation to
a work constitutes fair dealing, the court determining the question shall take account of all the
factors which appear to it to be relevant, including –
(a) The nature of the work in question; (Hyde Park Residence v. Yelland [2000] RPC 604)

(b) The extent and substantiality of that part of the work affected by the act in relation to the
whole of the work; (Hubbard v. Vosper [1972] 2 QB 84);

(c) The purpose and character of the use; (Newspaper Licensing Agency v. Marks & Spencer
plc [1999] EMLR 369); Newspaper Licensing Agency Association v Meltwater & PRCA
[2011] EWCA Civ 890

(d) The effect of the act upon the potential market for, or the commercial value of, the work.”
(IPC Media Ltd v. News Group Newspapers [2005] FSR 752)

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“The restricted approach adopted in the UK should be contrasted with American copyright law
(US Copyright Act 1976 section 107) which has a general defence of fair use such that if the
court is satisfied that the use is fair, then there will be no infringement” – Bently and Sherman at
page 202.

(b) Incidental Inclusion - CAJ section 55

(c) Educational Purposes - CAJ sections 56-60
(d) Libraries - CAJ sections 61-65
(e) Public Administration - CAJ sections 66-67
(f) Designs - CAJ sections 68-69
(g) Works in Electronic Form - CAJ section 70
(h) Public Domain Works - CAJ section 71
(i) Recitation – CAJ sections 72-73
(j) Buildings – CAJ sections 74-75
(k) Subsequent Work by Same Artist – CAJ section 76
(l) Miscellaneous – CAJ section 77-78
(m)Non-Profit organisations – CAJ section 79
(n) Miscellaneous – CAJ section 80-83
(o) Recording for Purposes of Time Shifting – CAJ section 84
(p) Adaptations – CAJ section 85
(q) Prescribed Exceptions – CAJ section 86
(r) Parody - See Clark v. Associated Newspapers [1998] 1 WLR 1558; Williamson Music v.
Pearson Partnership [1987] FSR 97; Campbell v. Acuff Rose Music Inc 114 US Sup Ct.
1164 (1994).
(s) Persons who are disabled – CAA s.15 / CAJ s. 65A and 65B
(t) Incidental copying by ISPs – CAAs.19/ CAJ s.83A

4. REMEDIES

Copyright infringement is redressable by criminal and civil sanctions.

(a) Criminal Action ( CAJ section 46)

Criminal Offences are usually tried on summary conviction before a Resident Magistrate,
punishable by a fine not exceeding $100,000 and or a term of imprisonment of up to 2 years. If
convicted before a Circuit Court however, unlimited fine and up to a maximum of 5 years.
Criminal remedies include entry and search (49) and restricting importation of infringing goods
(50). Note also CAA s.12 / CAJ s.46 (3A) and (3B) which criminalises the manufacture and
importation of circumvention devices and the removal of rights management information.

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 (b) Civil Action (CAJ section 32)

Civil infringements are usually tried before the Supreme Court and the remedies available for
copyright infringement are damages, injunction, account of profits (32), delivery up and disposal
(33), and an order for publication of a correction (43). As with all civil suits, discovery, interim
injunctions (American Cyanamid v. Ethicon [1975] AC 396), and search orders (Anton Pillar v.
Manufacturing Processes Ltd (1976) Ch 55) would also be available.

Damages may be compensatory and exemplary. See Work Model Enterprises v. Ecosystem &
Clix Interiors [1996] FSR 356; Cala Homes v. McAlpine Homes [1995] FSR 818; ZYX Music v.
King & Ors [1997] EMLR 319; Rookes v. Barnard [1964] AC 1129.

The statutory requirement under section 32 CAJ that the award of damages should be made in the
same manner as other proprietary rights (at common law) , suggests that the plaintiff would not
be entitled to damages AND an account of profits. These remedies are usually awarded in the
alternative. See Redrow Homes v. Betts [1999] 1 AC 197. Note however, in the UK, Regulations
passed in 2006 make it possible for these remedies to be cumulative provided this does not result
in double recovery for the same loss.

READING

 GERVAIS, “Towards A New Core International Copyright Norm: The Reverse Three-
Step Test”, Marquette Intellectual Property Law Review [Vol. 9:1 2005]
 BURRELL, “Reining in Copyright Law: Is Fair Use the Answer?” [2001] IPQ 368
 BRENNCKE, M, “Is fair use an option for UK Copyright Legislation?” Research Gate
 LEMLEY and REESE, “Reducing Digital Copyright Infringement without Restricting
Innovation” Stanford Law Review, Vol. 56, No. 6 (May, 2004), pp. 1345-1434, [2004]
(Library Box)
 CAMMAERTS and MENG, “Creative Destruction and Copyright Protection - Regulatory
Responses to File-sharing, 2011, LSE Media Policy Project.
 GANLEY, p “Google Book Case – Fair use, Fair Dealing and a case for intermediary
copying”, 2006. SSRN
 OWEN, L, “Fair Dealing a Concept of UK Copyright Law”, 2015. Learned Publishing

WEBSITES

www.jipo.gov.jm

www.wipo.int

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