Summary

A photograph taken at a photo shoot had not been commissioned. The photographer owned the copyright in the photograph and was entitled to a remedy regarding the unauthorised use of that photograph by a record company.

Facts

Trial on the liability of the first defendant ('UM') for copyright infringement in relation to the use of a photograph of Elvis Costello taken by the claimant ('G') and a silk-screen print ('the print') based on that photograph. It was taken by G in 1977 as part of a photo shoot for Stiff Records ('SR') for publicity purposes prior to a live tour of SR artists. The second defendant ('J') was the sister of and sole beneficiary of the estate of the late Colin Fulcher ('F'), who had designed and produced the print based on G's photograph. G maintained that from 1977 onwards he retained copyright in both the photograph and the silk-screen print. SR paid photographers a basic fee of up to £50 to cover their expenses and pay for their time during a shoot. If any photographs were used on a record sleeve, the photographer was paid an additional fee and copyright vested in SR. However, the photograph in question was not used on a record sleeve at the time or selected for promotional publicity. In August 1999 UM released a "very best of" Elvis Costello album. On the front page of the booklet accompanying the album was part of the image of the artist shown in the silk-screen print. The screen-print and therefore the photograph were also reproduced on billboard advertising. In October 2001, prior to commencement of the infringement action J executed an agreement purporting to assign to G and herself as trustees all rights and interests relating to the print, including copyright in the work. UM argued that the shoot photographs were commissioned, within the meaning of s.4(3) Copyright Act 1956, and no agreement existed to counteract the effect of that provision. It claimed that G gave F a licence to use the photograph in question and to license its use as part of the print for all purposes. UM also challenged G's claim that he retained copyright in the photograph on the basis of several particular occasions when the photograph, the print or other photographs taken at the photo shoot in 1977 were used to promote Elvis Costello's record sales or concerts without G's apparent consent. Those circumstances also went to UM's alternative defences of acquiescence and estoppel.

Held

(1) G was owner of the copyright in the photograph at all material times. (2) The arrangements for the photo shoot did not amount to a commission within the meaning of s.4(3) of the Act. (3) F acquired copyright in the print as author of the work. (4) There was no agreement between G and F regarding joint ownership of copyright in the screen print at any time during their collaboration. The Probate Registry had no record of any grant of letters of administration in relation to F's estate. All grants made out of the registry were recorded. It had not, therefore, been established that that there was a grant of letters of administration in favour of J prior to making the purported assignment agreement in October 2001. G did not have joint ownership of the copyright in the print. (5) There was no licence or right granted by G to F or F to SR whereby UM could justify the use of the photograph as part of the print. There was no agreement that SR's licence to use the print for advertising and promotion allowed the print to be used on a record sleeve or a booklet accompanying a compact disc. (6) Applying Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd (1982) 1 QB 133 the defence of estoppel and acquiescence failed. Most of the incidents of alleged acquiescence relied on by UM were where publicity shots were used in advertisements. It could not be considered unconscionable for G to assert his rights against UM because he did not know the print was used on the interview compact disc. (7) G was entitled to a remedy in relation to the unauthorised use of his photograph.

Judgment accordingly.