The US Court of Appeal has upheld a decision to permit a claim for copyright infringement against the Welsh Government (WG), which was unable to rely on sovereign immunity. Wayne Beynon, Trish D'Souza and Dafydd Park comment on this landmark case.
It is rare for a national government to be the subject of copyright proceedings abroad and yet, this is the position the WG finds itself in after publishing two photographs of the Welsh poet, Dylan Thomas, to promote and encourage tourism in Wales via the Visit Wales website, and a map and guide for the “Dylan Thomas Walking Tour of Greenwich Village, New York”.
Additionally, it was alleged that the WG had distributed the same images to various US media companies which in turn displayed them on their websites/printed publications, all without the authority of the owner of copyright in the images, Pablo Star Limited (“Pablo Star”).
Almost inevitably, Pablo Star sued the WG for copyright infringement in the US Courts. The WG tried to argue that the copyright claim should be dismissed on the basis of it being able to claim sovereign immunity under the Foreign Sovereign Immunities Act 1976 (“FSIA”).
The US Court of Appeal for the second circuit, upheld the earlier decision of the lower level – District Courts that although the WG had proved it was a sovereign state, a claim for copyright infringement could be pursued as a result of an exception, known as the commercial activity exception.
For this exception to apply, the Court had to consider whether:
By using the images in promotional materials, the WG had undertaken a commercial activity. This was despite the WG’s assertions that the images were not used for profit-making purposes, but to solely promote and encourage tourism within Wales. Crucially, the correct test to be used was whether the WG’s actions were the types of actions that could be undertaken by a private commercial entity. The US Courts deemed that, in this instance, the use and distribution of the images was a type of act that a private commercial entity could undertake and was therefore to be construed as a commercial activity.
Additionally, the US Courts found there was a sufficient nexus between the WG’s commercial activity and the US. This was due to the WG’s direct promotion of Wales to the American public. A further crucial factor was the WG’s involvement of private businesses based in New York in developing and distributing documents containing the copyright protected images.
As a result, WG’s claim for sovereign immunity was dismissed.
Sovereign Immunity in England and Wales
In England and Wales, sovereign immunity is governed under the State Immunity Act 1978 (“SIA”). Like the US position, the SIA provides exceptions to the applicability of state immunity. Under section 7(b) SIA, a state is not immune with respect to “an alleged infringement by the State in the United Kingdom of any patent, trade-mark, design, plant breeders’ rights or copyright”. This is considerably clearer than the position within the US, where immunity could apply unless the sovereign state is undertaking “commercial activities”.
This case just goes to show that whether you are a private individual, large commercial organisation or even a sovereign state, it is always advisable to consider the whether the materials you intend to use (including images/photographs, sound recordings, video footage, software code and written text) are protected by copyright and if so whether you require the copyright owner’s prior permission before using them.
If you are unsure whether a particular piece of work is protected by copyright (or any other kind of intellectual property right), it is always advisable to seek advice from an intellectual property specialist.