The Court of Appeal last week upheld the High Court decision in 2009 that MGN Ltd, the publishers of the Daily Mirror, had infringed copyright in photographs included in back copies of newspapers it was making available online to paid subscribers.
Photographer Alan Grisbrook had worked with MGN for a number of years on a freelance basis during which time MGN had published many of his photographs, including on several front covers of the Daily Mirror. There had never been any written agreement between Mr Grisbrook and MGN covering these uses.
In 1998, not long after he had ceased working with them, Mr Grisbrook sued MGN for unpaid licence fees. That dispute was settled in 2002 under a Consent Order in which MGN undertook to return all physical copies of the images and to delete all electronic copies from their systems. The Consent Order expressly reserved Mr Grisbrook’s right to take legal action against MGN over any future infringements of his copyright.
In 2008, it came to Mr Grisbrook’s attention that MGN was making available back copies of the Daily Mirror through various archive websites and that these back copies contained his photographs. Mr Grisbrook alleged that, by storing the photographs electronically and by communicating them to the public in this way, MGN was infringing his copyright.
The High Court judge referred to the leading authorities on implied licence terms which confirm that when a court is asked to interpret a licence of copyright material, it must adopt a minimalist approach, i.e. it should only imply into the licence terms which are necessary in the circumstances and no more. 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 High Court found that the implied licence granted by Mr Grisbrook did not allow MGN to publish the photographs 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 entered into and because this term was not necessary. MGN had therefore infringed Mr Grisbrook’s copyright.
The Court of Appeal agreed. The reproduction of old newspapers on a website is not merely further delivery of the original, licensed, paper. “A website operates over a global area, its coverage is greatly in excess of anything MGN could have reached with hard copy newspapers. It enables a member of the public to read it before deciding whether he wants a hard copy and the production of hard copies by the public far in excess of anything MGN could have produced. The extent of the market and the costs incurred in reaching it are quite different to those of the hard copy newspapers of the past. …To incorporate the pictures into the website is to provide a permanent and marketable record easily available world-wide which could well reduce the value of the further use by Mr Grisbrook of the photographs over which it is common ground that he possesses the copyright. That is why, to my mind, this is not just a question of degree but of kind.”