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COMMERCIAL USE OF PHOTOGRAPHS ON ARCHIVE WEBSITE INFRINGES PHOTOGRAPHER’S COPYRIGHT: GRISBROOK v MGN LTD arrow Date: 22.10.2009

In a judgment issued on 16 October which has potentially important ramifications for the photography industry, the High Court held that MGN Limited, the publishers of the Daily Mirror and other titles, had infringed copyright in photographs included in back copies of newspapers it was making available online to paid subscribers.

Background

The claimant, celebrity photographer Alan Grisbrook, had worked with MGN for a number of years on a freelance basis during which time MGN had published a large number of his images, including on several front covers of the Daily Mirror. There had never been a written agreement between Mr Grisbrook and MGN.

In 1998, not long after he had ceased working with them, Mr Grisbrook sued MGN for unpaid licence fees. That dispute was subsequently settled in 2002 under terms of a Consent Order whereby MGN undertook, amongst other things, to return all physical copies of the images and to delete all electronic copies from their systems. In the 2002 Consent Order, Mr Grisbrook expressly reserved his rights to take legal action against MGN in respect of any future infringements of his copyright.

In 2008, it came to Mr Grisbrook’s attention that MGN were making available back copies of their titles, including the Daily Mirror, to paying customers through various archive websites and that these back copies contained his images or some of them. Mr Grisbrook alleged that, by storing the images electronically and by communicating them to the public in this way, MGN were infringing his copyright and were breaching the 2002 Consent Order.

Mr Grisbrook then took the somewhat unusual step of applying to Court for sequestration of MGN’s assets – a remedy available when a party is found to have acted in contempt by deliberately breaching undertakings given to the court.

The issues relating to sequestration, contempt of court and the terms of the 2002 Consent Order are beyond the scope of this e-bulletin which focuses instead on the more practical and important issue of whether, absent any written agreement, MGN were entitled to publish the images as it did.

The Decision

What the court was required to do in this case was to decide on the scope and the terms of the unwritten contractual licence.

Mr Grisbrook accepted that, by providing MGN with the images, he had granted it a licence to reproduce the Images subject to payment of a fee and that MGN had the right to use the images in subsequent editions (on payment of a further fee). Mr Grisbrook also accepted that MGN were, even many years later, entitled to sell hard copies of newspapers containing the images, eg from unsold surplus stock.

He complained, however, that he had never consented to the inclusion of the images in MGN’s back numbers database and on their websites maintaining that the licence he had granted was limited to only two specific purposes: the production of current newspapers and the occasional future use of material stored in MGN’s picture library (which in time came to include a digital library) in new publications for further payments.

Aside from arguments relating to the construction of the 2002 Consent Order, MGN defended the claim on the grounds that:

1. Mr Grisbrook’s licence extended to any subsequent reproduction or use of the images including use within back copy editions archived electronically and made available to paying subscribers; and

2. MGN’s use of the images was in the public interest.

The judge found as fact that there were very few express terms in the licence agreement and that MGN’s defence turned on whether it could prove that the licence covered not only the publication of the Images in the newspapers in which they had originally appeared but also any form of reproduction of those published newspapers.

The judge referred to the leading authorities on implied licence terms which confirm that when a court is called upon to interpret a licence agreement regarding copyright material, it must adopt a minimalist approach, ie it should only imply into the licence terms which are necessary in the circumstances and no more. Absent written agreement, the licence granted will be only what was necessary to achieve what was in the joint contemplation of the parties at the date it was entered into and it cannot be extended by the court to allow parties to take advantage of new unexpected opportunities.

The court found that on the facts the licence granted by Mr Grisbrook did not allow MGN to publish the images on the websites because this form of commercial exploitation had simply not been in the contemplation of the parties at the time the licence was granted and because this term was not otherwise necessary. MGN had therefore infringed Mr Grisbrook’s copyright in the images.

The judge gave short shrift to MGN’s public interest defence. He found that even if MGN could avail itself of this defence, which he doubted, it would fail because it was difficult to see how MGN’s wish to make its back catalogue available for a fee could override Mr Grisbrook’s legitimate interest in protecting his copyright in the images He then pointed out that Parliament has made extensive provision for ensuring that copyright material of the kind published by MGN (ie newspapers) is widely available to researchers and private users (eg the British Library, prescribed libraries and other legal deposit libraries).

Conclusion

Whilst this judgment is in line with previous authorities, it is a reminder of a number of important issues relevant to the use and exploitation of copyright material and especially photographs:

1. All parties, but especially licensees, should confirm in writing the terms of the licence they obtain to avoid the risk of subsequent disappointment at the court’s narrow interpretation of the licence. Basically if, as a licensee, you want more rights than the bare minimum, confirm it in a written agreement signed by the parties or risk being sued for copyright infringement.

2. Photographers, image libraries and other owners of copyright material should regularly check the uses to which their licensees are putting their material. If your licensees are using your material in ways which were not contemplated by the parties at the time the licence was entered into and in ways which are not covered by any written or other agreement, then you may well have a claim in copyright infringement.

3. Any photographer (or image library) who has licensed images to a newspaper which, like MGN, now appears to be making back copies of their editions available online to paid subscribers, may well, following this case, have a claim in copyright infringement if their licence agreement did not clearly allow such use.

Dust off your licence agreements and review your position.

Tom Cowling
Photography & Visual Arts / Digital Media / Intellectual Property

e-bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.

 

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