Summary

An application to commit a newspaper publisher for breach of an undertaking to the court not to infringe a freelance photographer's copyright was refused as, although the publisher's actions had infringed copyright, the issue between the parties was not one which had featured in the actions leading to the consent order and committal proceedings were inappropriate.

Facts

The claimant freelance photographer (G) applied to commit the first defendant newspaper publisher (M) for breach of an undertaking contained in a consent order. Alternatively, he applied for orders of sequestration against M's assets. G had provided photographs for M for a number of years, without a written contract, and was paid when his photographs were used. It was M's practice to archive photographs and any subsequent use would entitle the photographer to a further fee. It was accepted that G had granted M a licence to reproduce his photographs for a monthly fee and that he retained copyright in his photographs after their use by M, though there was dispute regarding whether the licence extended to the reproduction of photographs in already published newspapers. Following a dispute between the parties in relation to unpaid licence fees a consent order was made. The order terminated the licence, entitled G to the return of his copyright material held by M and contained an undertaking by M not to infringe G's copyright. G undertook an agreed search of M's archive to locate his material and on conclusion served a further copy of the consent order, endorsed with a penal notice, on M. He continued to carry out random searches of M's websites and discovered a that large number of his photographs were still being used. Although M removed his photographs from some of its websites, it refused to compromise in respect of images contained on websites which offered complete back issues of its publications. G contended that any reproduction of already-published material constituted an infringement of his copyright and was therefore a breach of the undertaking. M argued that the consent order was not intended to cover the reproduction of photographs as part of already-published newspapers and should be construed so as not to include that use of G's material if it would otherwise amount to an infringement of copyright. M further argued that even if the undertaking was unlimited and included such infringements, no infringement had taken place or could take place as the licence granted by G had to be treated as extending to the subsequent reproduction or use of published material.

Held

The real issue between the parties was whether the operation of the back-issues websites amounted to an infringement of G's copyright in the photographs contained in those issues. The starting point had to be consideration of whether the licence granted to M extended to the storage of and access to G's work provided by the websites. Any licence represented a derogation from or relaxation of the copyright owner's statutory rights and it therefore had to be for a defendant to justify, in the absence of express agreement, the basis for extending the licence to cover what would otherwise be separate acts of infringement, Ray v Classic FM Plc (1998) ECC 488 Ch D applied. Although that test was satisfied in the instant case in respect of compilation of the database and its use for archive purposes, its exploitation through the back-issues websites seemed to be a different kind of operation which was not contemplated at the time the licence was granted and could not be said to have been necessary to regulate the rights of the parties at that time. M's operation of the back-issues websites did therefore constitute an infringement of G's copyright. However, it was an important and by no means straightforward point of law on which M was entitled to take a different view, and disputes of the instant kind should not be resolved through committal proceedings. The dangers inherent in generally-worded injunctions or undertakings not to infringe a patent or copyright had long been recognised and could often lead to a further round of litigation in order to determine whether an infringement had occurred. The point taken by G was not one which featured in the actions which led to the consent order and should have been resolved in ordinary proceedings to determine whether the operation of the websites involved an infringement, Multiform Displays v Whitmarley Displays (formerly Reay & Davis) (No2) (1957) RPC 260 HL applied. A respondent who maintained in good faith that the conduct complained of did not amount to an infringement should not ordinarily be penalised by a fine or sequestration in the event of failure merely because an applicant had chosen to use committal proceedings rather than an ordinary claim to resolve the issue. Although the operation of the back-numbers websites did infringe G's copyright in his photographs, those rights could be adequately protected by a declaration to that effect. There had been no deliberate or conscious non-compliance with the consent order and no further action would be taken in respect of the breach of the undertaking it contained.

Application refused