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 web site 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.
Background
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, 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 web site, 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 web sites. One of these web sites enabled users to access the front page of the Daily Mirror from 1903 to the present day. Similarly, another of the web sites was an online research source holding archives of the newspaper from 1903. Mr Grisbrook’s photographs were therefore visible on these web sites 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 web sites either individually or as part of the newspaper as a whole.
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 web site. 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 web sites.
Mr Grisbrook submitted that the exploitation of the photographs by inclusion in a web site, 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 web site 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 web sites. 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.
Susan Barty is Partner in the Technology and Litigation team at CMS Cameron McKenna LLP based in London. Tom Scourfield is a Senior Associate there, specialising in IP. Tom Reid is a Junior Associate in the same team, who works closely with Susan and Tom.
