Portrait Photographs, Photofits and Missing Person Apeals: Painer v Standard Verlags gmbh

Slovenian Advocate General Trstenjak gave her Opinion last week in a copyright case currently before the European Court of Justice (ECJ) which has been asked to rule on a number of questions by the Vienna Commercial Court. Advocate General Opinions are advisory only and may or may not be followed when the ECJ gives its judgment in due course.

1.   Facts of the case

Eva-Maria Painer is an Austrian freelance photographer who photographs children in nurseries and day homes. Ms Painer took some portrait photographs of a girl called Natascha Kampusch who was subsequently abducted at the age of 10 and held in captivity until her escape in 2006 at the age of 18.

After the escape, but before Kampusch gave her first public television interview, five newspaper publishers in Austria and Germany published Ms Painer’s photographs. In some cases they also published photofit images which had been produced by manipulating one of Ms Painer’s photographs to show how an older Kampusch might look.

The newspapers didn’t get a licence from Ms Painer, didn’t credit her and in some cases wrongly credited someone else. Ms Painer sued all five publishers for copyright infringement in the Austrian court.

2.   Are portrait photographs subject to weaker protection than other works?

The Austrian Supreme Court had taken the surprising view in initial injunction proceedings that a portrait photographer enjoys only a small degree of individual creative freedom and copyright protection for portrait photographs is therefore weaker than for other photographs. The Advocate General rejected this clearly mistaken notion of portrait photography.

Article 6 of the Copyright Term Directive (2006/116/EC) requires member states to give copyright protection to “photographs which are original in the sense that they are the author’s own intellectual creation.” Article 6 goes on to state that “no other criteria shall be applied to determine their eligibility for protection.”

As explained by the Advocate General, what this means is that the photographer must exercise some degree of creativity (“utilise available formative freedom”) but artistic quality or novelty are not necessary. The fact that a photograph is a commissioned portrait is also irrelevant. In a nutshell, the photographer must “leave his mark” on a photo: “Even though the essential object of such a photo is already established in the person of the figure portrayed, a photographer still enjoys sufficient formative freedom. The photographer can determine, among other things, the angle, the position and the facial expression of the person portrayed, the background, the sharpness, and the light/lighting. To put it vividly, the crucial factor is that a photographer ‘leaves his mark’ on a photo.”

3.   Photofit infringements

If a photofit is produced by first scanning a portrait photo and then manipulating it, that act of scanning will itself be a reproduction of the portrait. Will publication of the manipulated photofit version also reproduce the original photograph?

Yes if, as the Advocate General explained, “the personal intellectual creation which justifies the copyright protection of the photographic template is still embodied in the photo-fit.” This will not always be the case. “If, for example, the portrait photo is only used to record a person’s biometric characteristics, and if a photo-fit is then produced on the basis of those characteristics, the publication of that photo-fit does not constitute a reproduction.” Whether the photofit itself has any creative content and whether the photofit is protected by copyright in its own right is irrelevant. “Nevertheless, the further removed from the template the photo-fit is, the more readily it can be accepted that the elements comprising the personal intellectual creation of the template are repressed in the photo-fit to an extent that they are no longer significant and are thus no longer worthy of consideration.”

4.   Copyright exceptions for missing person appeals

Member states are allowed under the Copyright Directive (2001/29/EC) to provide for an optional exception to copyright in the case of “use for the purposes of public security.” The question arose in the Painer case whether the media could rely directly on the public security exception in the Directive in order to justify publishing a work without the author’s permission. The Advocate General answered this question in the negative.

The UK does not have this public security exception to copyright. The courts recognise a more general defence of public interest which is preserved in Section 171(3) of the UK Copyright Act. This might allow the police to publish photos of missing persons, but it seems unlikely, particularly if the Advocate General’s Opinion is followed by the ECJ, that it would allow the press to publish such photos of their own volition.

5.   Copyright exceptions for criticism and review

The Copyright Directive allows member states to provide for exceptions to copyright in the case of “quotations for purposes such as criticism or review.” Most countries, including the UK, allow for this. The Advocate General’s Opinion contains some interesting points. For example:

  1. The UK Copyright Act is consistent with her opinion that publishers must take all reasonable steps to identify the author of a photograph in order to give the credit required under the Directive. What is less clear is whether our national law is consistent with her view that “there must be a material reference back to the quoted work in the form of a description, commentary or analysis.” Section 30 of the UK Copyright Act allows fair dealing with a work for the purpose of criticism or review “of that or another work”.
  2. Fairly obviously, the purpose of the publication of a photo without permission must be criticism or review. “In particular where … photos were merely intended to be used as a ‘teaser’ to arouse the interest of readers without discussing those photos in the accompanying text, it cannot be assumed that there were quotation purposes.” The photo must be “a basis for discussion.”
  3. Textual quotations normally only involve using partial extracts from the work quoted. Not so with photos: “In the case of this type of work, a complete reproduction may be necessary in order to create the necessary material reference back to the work. If only parts of photos could be published under Article 5(3)(d) of the directive, this would significantly restrict the application of that provision to photos.” The Advocate General thought this meant that particular importance should be attached to the other relevant factors such as the fairness of the use.

6.   Jurisdiction: when can you sue multiple foreign infringers in one court?

If your copyright is being infringed in other countries it is clearly helpful if you can sue all the infringers in one court (preferably in your own country) rather than bringing multiple actions in all the different countries where the infringements are taking place. When can you do this?

The Brussels Regulation (44/2001/EC) sets out the general rule that you have to sue persons domiciled (ie permanently resident) in a member state (whatever their nationality) in that member state.

What if there is more than one defendant and their domiciles are different? Article 6(1) allows you to sue in the courts where any one of the defendants is domiciled, “provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.”

In this case, the photographer took action against all five publishers in Vienna. Only one defendant, which published a daily newspaper in Austria, was based in Austria. The other four defendants were all based in Germany. One of these published a newspaper which only appeared in Germany, another published in both Austria and Germany, and the other two published in Austria.

The question referred by the Austrian court to the ECJ was whether Article 6(1) allows joint legal proceedings where actions brought against several defendants for copyright infringements, identical in substance, are based on different national legal grounds, the essential elements of which are also identical in substance.

To cut a long story short, the Advocate General said that a previous ECJ decision in a patent case (Roche, Case C-539/03) was wrong. It didn’t matter that copyright law is not fully harmonised. “The notion of ‘close connection’ under Article 6(1) … is to be interpreted as requiring a single factual situation and a sufficient legal connection between the claim against the defendant who is domiciled in the place where the court is based (anchor claim) and the other claim. In a case such as the present, a single factual situation cannot be taken to exist where the contested conduct of the anchor defendant and of the other defendant appears to be unconcerted parallel conduct. A sufficient legal connection may exist even where different national law which is not fully harmonised is applicable to the two claims.”

In other words, it doesn’t matter that copyright laws in different EU states are not always identical, but one cannot rely on Article 6(1) and sue infringers from different countries in the same court if their conduct “occurs independently and without knowledge of one another.”


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