In a recent case, the Court of Appeal considered whether a newspaper’s archive website could operate to infringe copyright in a freelancer’s photographs.

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 understood 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 and MGN undertook not to infringe Mr. Grisbrook’s copyright and to delete Mr. Grisbrook’s material from any electronic storage system. In 2008, Mr. Grisbrook argued that MGN had breached its undertaking not to infringe in various ways.

Specifically, MGN had set a number of other websites: one being an archive of all the front pages of the Daily Mirror from 1903 to the present day; and another being an online research source, holding archives of the newspaper from 1903; photographs were therefore visible on these websites, as they appeared in the newspapers.

It was 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 websites, either individually or as part of the newspaper as a whole.

During the appeal, MGN argued that, MGN was entitled to the copyright in each of the newspapers which were reproduced on each website and 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.

On the other hand, Mr. Grisbrook argued 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.

During the Appeal it was held that:

• any implied copyright licence would only extend to the use contemplated by the parties at the time of the engagement;
• the licence does not extend to enable the licensee to take advantage of a new unexpected profitable opportunity.

It was therefore decided that copyright in the compilation does not affect the rights of the owner of copyright in its parts, unless he licences it further. The existence of such overlapping copyrights demonstrates the need for the compiler to obtain sufficient licences from his contributor and whenever possible, users of copyright material should seek to provide explicitly for a wide ambit of use in licence terms.