solicitors in breach of copyright

by Roderick Ramage, solicitor, www.law-office.demon.co.uk

first published in New Law Journal (newlaw.journal@butterworths.co.uk) on 21 February1996


DISCLAIMER

This article is not advice to any person and may not be taken as a definitive statement of the law in general or in any particular case. The author does not accept any responsibility for anything that any person does or does not do as a result of reading it.


 

A note "Lawyers in copying agreement" in the Law Society Gazette 30 May 1996  states: "The deal - struck between the Copyright Licensing Agency (CLA) and the Law Society last week - means that law firms who have the past turned a blind eye to the legal photocopying will now be able to obtain protection by licence."  The deal is that a standard form licence has been negotiated which enables solicitors to obtain, at a cost of £12 per professional member of staff (partners and employees, solicitors, legal executives etc) a license to make an unrestricted number of copies of material covered by it, ie books, journals and periodicals published in the UK and other mandated territories1.  The CLA claims to be mandated by over 1,500 publishers covering 90% of material shown by its surveys to be used by solicitors.  It supplies with the licence agreement a list of excluded material.

I was asked by my partners to look into this and think that the findings might be useful to other solicitors, who too may be asking themselves whether they should enter into such an agreement.

Therefore in this article I look briefly at the use of infringement of copyright by solicitors in the course of their normal work.  I am not reviewing the copyright law or advising clients about copyright problems.  The most common uses of copyright of others involved making copies from:

-        text books;

-        statutes and statutory instruments;

-        law reports;

-        precedent books;

-        newspapers, magazines and journals;

-        others, eg company reports, sales brochures etc; and

-        precedents and other material prepared by other solicitors.

In most cases these are still in the form of printed works on paper.  They can also be supplied in electronic form and copyright can exist in a computer programme which a solicitor uses.  A solicitor creates copyright when he creates a document.  This article is concerned only with the use of copyright by others.

Copyright material may not be used unless a licence or if the use is permitted by statute.  If copyright material is used without permission and its use if not a permitted act, the usual remedies to which the holder of the copyright is entitled are injunction, damages and an account of profits.  The infringer can be required to surrender or return copyright of material and to give undertakings against further infringement.

Although the Copyright, Designs and Patterns Act 1988 contains (according to Copinger and Skone and James - I have not counted) 49 sections "Devoted to the permitting of various acts which would otherwise amount to infringements of copyright", the only permitted use which is likely to be relevant in a solicitors practice is copying for research under section 29 (research and private study): 29 (1) states:

"Fair dealing with a ... work for the purposes of research ... does not infringe any copyright in the work ... .  Subsection (3) states: "Copying by a person other than the research ... himself is not fair copying if - (b) he person doing the copying knows or has reason to believe that it will result in copies of substantially the same material being provided to more than one person at substantially the same time and for substantially the same time and for substantially the same purpose."  Thus copying relevant pages of paragraphs of a work as part of a solicitor's research would be permitted, the distribution of those copies to clients, other business associates and probably other colleagues would not be fair dealing.

A licence is implied in the sale of the precedent book that the material in it may be copies by the user for his professional purposes, but that licence would not extend to copying it to create another precedent corporate.

Acts of Parliament are Crown copyright which can be infringed by unauthorised copying and to which the permitted us by fair dealing for research applies.

There is no infringement of Copyright where its inclusion in a material is incidental.  S31 (1) states: Copyright in a work is not infringed by its incidental inclusion in an artistic work ...".

Although some day to day use of copyright material by solicitors is clearly free from copyright claims, much, in come cases more than may be initially supposed, infringes copyright, for instance general copying of magazine and journal articles.  These cases are probably not permitting uses and therefore the solicitors use of them is in breach of the owners' rights.  The alternative courses of action open to solicitors are:

1        check that what you are doing is within the law and if so do nothing2;

2        alter your use of copyright material to avoid copying which is not permitted;

3        obtain express permission in each case; or

4        obtain a blanket licence by agreement with The Copyright Licensing Agency Ltd.

The CLA licence covers virtually all material in items 1 to 5 in the list at the start of this article, except for newspapers, which are covered by the Newspaper Licensing Agency.  Licensing is probably necessary for most firms of solicitors.  items 6 and 7 in that list is of course outside the CLA limit, and solicitors will probably continue to treat this material as hitherto regardless of the copyright legislation.

 

Notes

1     The mandated territories are Australia, Canada, France, Germany, Iceland, Ireland, New Zealand, Quebec, Spain, South Africa, Sweden and the UK.

2     As to item 1, do not write an internal memo which says: "continue as at present and hope that no-one notices."  The memo will be discoverable and the comment will be more helpful to the plaintiff holder of copyright than to the defendant solicitor.

 

copyright Roderick Ramage

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