Summary

By making copies of newspaper back-issues available to the public on a website a newspaper publisher had infringed the copyright of a photographer whose images had been printed in some of those newspapers as such exploitation by electronic means was different in kind from the exploitation of existing hard copies that had originally been contemplated by the parties.

Facts

The appellant newspaper publisher (M) appealed against a decision ((2009) EWHC 2520 (Ch)) that a licence granted by the respondent freelance photographer (G) for M to use his photographs had not extended to making them available to the public through three websites that it subsequently established. G had for many years submitted photographs to M and received payment when they were used. It was agreed that a separate contract by conduct was formed in relation to each photograph, which contained an implied licence for use for the purposes contemplated by the parties at the time, namely reproduction in M's newspapers and storage, separately and as part of a published paper, to M's archive and picture store. M later used the photographs on a website selling photographs from its newspapers. G revoked the licence and claimed infringement of copyright. The action was compromised and M agreed not to further infringe G's copyright. M later created three further website that allowed the public to view and buy part or the whole of back copies of M's newspapers, some of which included G's photographs. G claimed that this amounted to further infringement. The judge found that it would have been an implied term of their contract that storage of newspaper back copies, whether on microfiche or electronically, was permitted, but that the exploitation of the photographs in the three new websites was a different kind of operation not contemplated by the parties when the licence was granted and not necessary to regulate their rights at that time. The issues were (i) whether the judge had been correct to apply the principle that the extent of the licence granted was to be that contemplated by the parties at the time the licence was granted and what was necessary to regulate their rights at the time; (ii) if so, whether the judge had applied that principle correctly to the facts. M argued that no contributor or combination of contributors to each newspaper, each of whom would be entitled to copyright in his own contribution, was entitled to control the exploitation of M's copyright in the newspaper as a whole.

Held

(1) The judge had correctly identified the test by which to ascertain the ambit of the licence granted by G as formulated in Beck v Montana Constructions (1964-5) NSWR 229 and applied in Robin Ray v Classic FM (1998) FSR 622, Beck and Robin Ray applied (see para.35 of judgment). (2) The operation of the websites could be regarded as further delivery of the original licensed newspaper, but was not limited to that. A website operated over a global area, its coverage was greatly in excess of anything M could have reached with hard copy newspapers. The extent of the market and the costs incurred in reaching it were quite different to those of hard copy newspapers. To incorporate the photographs into the websites was to provide a permanent and marketable record easily available world-wide which could well reduce the value of the further use by G of the photographs over which he possessed copyright. Exploitation by electronic means was different in kind from exploitation of existing hard copies; it was not just a question of degree. No intention could be imputed to M and G from their conduct that M should be entitled without further charge to exploit G's photographs by inclusion on its websites (para.38). (3) The existence of overlapping copyrights of G in the photographs and M in the compilation of the newspaper demonstrated the need for the compiler to obtain sufficient licences from his contributors (para.39).

Appeal dismissed