In the recent case of Grisbrook v MGN Ltd and others [2010] EWCA Civ 1399, the Court of Appeal considered whether a newspaper's archive website could operate to infringe copyright in a freelancer's photographs. The court found that it was possible for such use of copyright works in an archive to be an infringing use even though the newspaper may own the copyright in the compilation featuring the photograph. In doing so, the court upheld the first instance decision of Patten LJ, finding that where an implied copyright licence is created, the extent of this licence should be limited to the uses in the contemplation of the parties at the time that the licence is created and that this should be construed narrowly.
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The case before the Court of Appeal concerned an action for
contempt of court constituted by breach of an undertaking given in
a settlement of an earlier action. In this earlier case, Mr
Grisbrook, a freelance photographer, brought an action for
copyright infringement against MGN Ltd ("MGN"), publisher
of the Daily Mirror. Mr Grisbrook had supplied photographs to MGN
between 1982 and 1997 for publication in the paper. There was no
written agreement in place between the two parties but it was
common ground that Mr Grisbrook would retain the copyright in the
photographs. The agreement was that MGN would pay for the use in
the edition in which the photograph was published, with any
subsequent use in a paper on a different day attracting a further
fee. MGN could retain the photos for future use in the MGN picture
library.
In October 1997, Mr Grisbrook wrote to MGN stating that he was
terminating any licence to use his photographs. MGN subsequently
made the photographs available on its website, mirrorpix.com. The
action was settled under a consent order and MGN undertook not to
infringe Mr Grisbrook's copyright and to delete Mr
Grisbrook's material from any electronic storage system.
Subsequently, in 2008, Mr Grisbrook sought sequestration of
MGN's assets for contempt of court constituted by the breach of
its undertaking. Since the date of the undertaking, MGN had set up
a number of other websites. One of these websites enabled users to
access the front page of the Daily Mirror from 1903 to the present
day. Similarly, another of the websites was an online research
source holding archives of the newspaper from 1903. Mr
Grisbrook's photographs were therefore visible on these
websites as they appeared in the newspapers.
Patten LJ held that MGN had infringed copyright by making available
to the public photographs the copyright in which vested in Mr
Grisbrook. Such copyright was infringed irrespective of whether the
photographs were incorporated alone or when forming part of a
reproduction of a printed page of a published newspaper.
MGN appealed this decision. The issue before the Court of Appeal
was whether the licence Mr Grisbrook granted to MGN when he handed
over the original photographs extended to making them available to
the public through the websites either individually or as part of
the newspaper as a whole.
The appeal
MGN submitted that Patten LJ had failed to recognise that MGN
was entitled to the copyright in each of the newspapers which were
reproduced on each website. MGN's stance was that no
contributor should be entitled to control the exploitation of the
copyright by MGN in the newspaper as a whole. Furthermore, MGN
argued that the licence extended to the commercial use of the
archives and, therefore, to the use of the pictures on MGN's
websites.
Mr Grisbrook submitted that the exploitation of the photographs by
inclusion in a website, from which copies could be downloaded and
printed at will, is a new method of exploitation which is wholly
outside anything the parties could have had in contemplation at the
time the photographs were first submitted to MGN.
In his leading judgment, the Chancellor, Sir Andrew Morritt, made
reference to Robin Ray v Classic FM plc [1998] FSR 622,
where it was held that any implied copyright licence would only
extend to the use contemplated by the parties at the time of the
engagement. Furthermore, the licence does not extend to enable the
licensee to take advantage of a new unexpected profitable
opportunity. Applying this principle gave rise to a licence to
publish the photographs in the newspaper and to reproduce Mr
Grisbrook's photograph and newspaper in a microfiche and,
later, in an electronic form as part of the MGN archive.
However, a website operates over a global area and its coverage is
therefore greatly in excess of anything MGN could have reached with
hard copy newspapers. Therefore, the Chancellor held that is was
unacceptable to impute an intention to Mr Grisbrook and MGN that
MGN should be entitled without further charge to exploit the
copyright in Mr Grisbrook's work by inclusion on MGN's
websites. The Chancellor also noted that exploitation by electronic
means is different in kind from exploitation of existing hard
copies and can constitute an infringement in the case of the former
even if it is not in the case of the latter.
The Chancellor also considered the argument that Patten LJ had
failed to take into account the fact that MGN owned the copyright
in the newspaper as a whole. However, he upheld Patten LJ's
conclusion that copyright in the compilation does not affect the
rights of the owner of copyright in its parts unless he licenses it
further. The existence of such overlapping copyrights demonstrates
the need for the compiler to obtain sufficient licences from his
contributors. The other judges agreed with the Chancellor's
reasoning and the appeal was therefore dismissed.
The judgment highlights how new uses for copyright material will
not necessarily be accommodated by the terms of the original
licence, especially where those terms must be implied. It is
difficult to foresee how technological advances may alter business
models so, where possible, users of copyright material should seek
to provide explicitly for a wide ambit of use in licence
terms.
The full text of the decision can be found here
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 16/12/2010.
