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Legal developments that help photographers

22 January 2015 - Alex Wilson and Alex Borthwick

The application of copyright law to photographs has been clarified by recent judgments in the UK, Europe and Australia say Alex Wilson and Alex Borthwick of the London-based intellectual property law firm, Powell Gilbert LLP, who provide analysis of these cases along with other general litigation advice for photographers.

Introduction

The traditional challenge posed by copying in print media has, with online infringement in the internet age, exploded into one of the biggest challenges facing photographers today. In this article, we discuss a number of issues that may assist photographers in obtaining a favourable outcome in disputes concerning the unauthorised copying of their work.

We address the following topics:

• the ‘originality’ requirement for subsistence of copyright. We review two cases that may allow photographers to counter an argument that their images are not protected by copyright;
• damages for copyright infringement, including additional damages and damages for time spent dealing with an infringement;
• moral rights, the assertion of which may increase the level of compensation payable to a photographer;
• an introduction to the small claims track of the Intellectual Property Enterprise Court, which in many cases will be the preferred court for photographers seeking to resolve disputes over unauthorised use of their work; and
• the grounds for objecting to confidentiality clauses in settlement agreements.

I. Originality

In order to bring an action for copyright infringement, a claimant must show that copyright subsists in the work in question. A photograph may qualify as a copyright work under the Copyright, Designs and Patents Act 1988 (the “CDPA”) on the basis that it is an “artistic” work. One requirement is that the work is “original”. This means the work is the “author’s own intellectual creation”.1

Often, originality of a photograph will not be disputed by a defendant, but Painer v Standard Verlags and Temple v New English Teas, discussed below, may assist where subsistence of copyright is a live issue.

Painer v Standard Verlags: are portrait photographs different?

Eva-Maria Painer v Standard Verlags GmbH & Others concerned a portrait photograph of Natascha Kampusch, who was kidnapped and held in captivity in Austria for eight years. Ms Painer had photographed Ms Kampusch prior to her abduction and her photographs had been used without permission by the press.2 Some newspapers had also used the photographs to create a ‘photo-fit’ of Ms Kampusch’s expected appearance. One of the questions for the Court of Justice of the European Union (the “CJEU”) was whether the copyright in a portrait photograph provides the copyright owner with a narrower scope of protection than other photographs, on the basis that, in a portrait photograph, the photographer may be said to have less creative freedom. This issue was relevant to whether the photo-fit infringed copyright in the portrait photographs.

The CJEU explained that a work is the intellectual creation of its author if it “reflects the author’s personality”. The Court then considered ways in which a portrait photographer could express his or her creative abilities by making free and creative choices: “In the preparation phase, the photographer can choose the background, the subject’s pose and the lighting. When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software.”

The CJEU concluded that the protection afforded to portrait photographs was not inferior to other photographs. In recognising that a portrait photograph required creativity, the CJEU’s decision assisted Ms Painer’s case that her photographs were original works.

Temple v New English Teas: manipulated images

Temple Island Collections Ltd v New English Teas Ltd & Anor3 was heard in the Patents County Court (since renamed as the Intellectual Property Enterprise Court) in the UK. The claimant’s photograph consisted of the Houses of Parliament, Westminster Bridge and a Routemaster bus manipulated using Photoshop software such that the entire photograph was in monochrome except for the bus (which was coloured red). The defendants’ image featured the Houses of Parliament in monochrome with a red Routemaster bus in the foreground. The two images are reproduced in the judgment, which is available here.

Like Painer, the decision sheds further light on the factors to consider when assessing the originality of a photograph. The judge considered that originality may be derived from:

“i) […] specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on;

ii) […] the creation of the scene to be photographed;

iii) […] being in the right place at the right time”; and

iv) manipulation of the image (e.g. altering the colour of some of the photograph and the composition of the image by removing individuals from the foreground).

The judge found that the composition and visual contrasts of the photograph were elements of the author’s intellectual creation and therefore copyright subsisted in the claimant’s photograph.

In order to infringe copyright in a work, it is necessary for the defendant to have copied a substantial part of the work. The judge noted the aspects of the composition and visual contrasts that had been taken from the claimant’s photograph. Although some important compositional elements had not been taken, the defendants had reproduced the key combination of the visual contrast features with the basis composition of the scene, which, according to the judge, was what made the claimant’s photograph interesting. Temple Island won its case.

The decisions in Painer and Temple provide valuable guidance as to whether copyright subsists in a photograph. The decisions indicate that the skill and creativity in manipulating an image using software is to be taken into account. Although Painer was concerned with a portrait photograph, similar arguments may be made in relation to other photographs to support a claim that a photograph is an original copyright work. In referring to the creativity that a photographer must exercise, Painer may be said to suggest that there is a higher threshold of originality than that traditionally understood to apply to photographs under English law. It is also to be noted that in Temple the judge commented that he need not address the scope of copyright protection afforded to a photographer arising from “the result of happening to click his camera in the right place at the right time”.

The infringement aspect of the Temple decision is helpful to photographers in that the judge was prepared to find the defendants’ work infringed in part due to the similar manipulation of the two images.

Hence, photographers may have a case for copyright infringement even where the defendant’s image is not identical but has been manipulated in the same striking way.

II. Damages

In the event a copyright owner succeeds in establishing the defendant is liable for copyright infringement, he or she may seek a number of remedies, one of which is damages. For instance, in Banier v News Group Newspapers Limited4, the judge held that the claimant was entitled to damages due to the unauthorised use by the Sun newspaper of the claimant’s photograph of Princess Caroline of Monaco. The decision is well known to photographers as the judge commented that the practice of publishing a photograph first then seeking a licence after publication was “plainly unjustified and unlawful and the sooner this is recognised the better for all concerned”.

The principle behind an award of damages is to put the claimant in the position in which it would have been had the infringing act not occurred. General Tire and Rubber Co v Firestone5 (a patent case but subsequently held to apply to copyright cases) considered the recovery of damages in three typical scenarios:

a) The claimant exploits the right by making products. Infringements divest sales from the claimant to the defendant. The measure of damages is usually the profit that the claimant would have realised had the sales been made by him.

b) The claimant exploits the right by granting licences in return for royalties. The measure of damages is generally the amount the defendant would have had to pay by way of royalty. The amount of such a royalty will depend on the evidence that the claimant can adduce (for instance, licence agreements concerning previous uses of the work).

c) The claimant does not make products or grant licences. In determining damages, the court will assume that the parties are willing parties to a licence and attempt to ascertain a “reasonable royalty”. It will consider, for instance, practice in the relevant trade and expert opinions as to a reasonable royalty.

Categories b) and c) above will be most relevant to unauthorised use of a photograph. Irvine v TalkSport6 provides guidance as to how damages may be calculated in cases falling under category c). TalkSport was found to have misrepresented that the racing driver Eddie Irvine had endorsed its radio channel. The question arose as to the level of damages. The Court of Appeal held that “the fact that at the material time Mr Irvine only entered into large endorsement deals for large fees is, in my judgment, plainly relevant for present purposes, not only because it is consistent with Mr Irvine’s evidence as to the minimum fee he would have charged, but also because it supports Mr Irvine’s evidence that he would not have been interested in the type of deal which [TalkSport] had to offer”. The Court of Appeal increased the damages award made by the judge (from £2,000) to £25,000.

Sheldon v Daybrook House Promotions Ltd7 also concerned the assessment of damages under the “reasonable royalty” basis (i.e. category © above). The claimant, a professional photographer, took a photograph of pop musicians LMFAO and Kesha lying together on a sofa. The defendant used the photograph without permission in relation to its nightclub. In determining quantum, the judge noted the celebrity status of the subjects of the photograph and the fact that the claimant was granted exclusivity of access to the backstage area in order to take the photograph. He was also persuaded by the claimant’s evidence consisting of bespoke quotations obtained using fotoQuote. Damages of nearly £6,000 were ordered.

These cases indicate that credible evidence as to previous licence fees and/or bespoke quotations are likely to prove useful support for a damages claim where a work was used without authorisation. Further, Sheldon suggests that the circumstances in which a photograph is taken (in that case, in an exclusive backstage area), may be a relevant consideration when assessing quantum.

Additional damages

The court has a discretionary power to grant additional damages. Section 97(2) of the CDPA reads:

“(2) The court may in an action for infringement of copyright having regard to all the circumstances, and in particular to -

(a) the flagrancy of the infringement, and

(b) any benefit accruing to the defendant by reason of the infringement,
award such additional damages as the justice of the case may require.”

An award of additional damages does not require that the defendant knows his acts constitute copyright infringement.

A striking example of a case in which additional damages were awarded is Nottinghamshire Health Care NHS Trust v Newsgroup Newspapers8. The Sun newspaper published an article about a visit to a McDonald’s restaurant by a convicted killer, Laith Alani, a patient at Rampton Hospital. The article was accompanied by a photograph of Mr Alani, the copyright in which was owned by Nottinghamshire Healthcare NHS Trust, who had not authorised its use. Mr Justice Pumfrey held that “careless infringement sufficiently serious to amount to an attitude of ‘couldn’t care less’ is in my judgment capable of aggravating infringement and of founding an award of damages under section 97(2).” He awarded damages of £450 based on the amount he considered a willing copyright owner would be paid for the photograph, and additional damages of £10,000.

A further example of a significant award under section 97(2) of the CDPA is Peninsular Business Services Ltd v Citation Plc9. The court held that copying of the claimant’s business manuals had been deliberate and extensive, undertaken in face of a warning and then concealed by a disingenuous reply. The court awarded a mark up of the damages for copyright infringement of 100% in light of the defendant’s flagrancy. For the same reason, interest was awarded at 8% on the whole sum from the date on which the manuals had been copied.

Traditionally, however, damages awarded under this provision have been relatively modest. The position for copyright owners has potentially been strengthened recently by the Enforcement Directive 2004/48/EC (the “Enforcement Directive”), which has been incorporated into UK law. Article 13 of the Enforcement Directive reads as follows:

“1. Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement. When the judicial authorities set the damages:

a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement; or

b) as an alternative to a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.”

To date, there are few reported UK cases in which the Enforcement Directive has been applied. In particular, it is not entirely clear in which circumstances it is “appropriate” to set damages according to the royalties that would have been due (i.e. under Article 13(1)(b) above, as opposed to under (a)). Laddie, Prescott and Vitoria: The Modern Law of Copyright and Designs (4th Edition) suggests that “[Article 13(1)(b)] is plainly intended as a fall-back when the matters specified in [Article 13(1)(a)] would not exceed the royalty payable. It is not, it is submitted, intended to give the court a discretion to award damages on the basis of a royalty instead of a (larger) sum to represent lost profits, unfair profits and non-economic factors”. If this approach is adopted by the courts, damages awards should exceed royalty fees, which in turn may be expected to prove a disincentive to third parties who use third party photographs without prior permission.

A UK case in which the Enforcement Directive was considered is Xena Systems Ltd v Cantideck10. In this case, the claimant sought damages for “moral prejudice” based on misleading letters sent by the defendant in response to the claimant’s letter before action. The judge refused to award damages for moral prejudice but his reasoning was that the correspondence in question had been written three years after the defendant’s infringing acts and had nothing to do with the damage actually caused to Xena. However, in Pendle Metalwares Limited v Walter Page Limited & Another11, the judge considered the impact of the Enforcement Directive, along with a provision equivalent to section 97(2) of the CDPA that applies to unregistered designs. He held that the defendants’ copying of the claimant’s design was “a cynical exploitation of the claimant’s design rights, [and was] buttressed by a false defence in which the invented claim of joint design was made, and other lies were told, which meant that the claimant had to take the case through to trial […]. It seems to me that those are matters which the justice of the case requires should be reflected in an award of additional damages.” He awarded an uplift of £13,000 (which represented approximately 25% of the compensatory damages award in respect of the claimant’s lost profits). Given the uplift in damages, this case may lend weight to the argument that the Enforcement Directive has improved the prospects of recovering significant additional damages. Further, the reference to “elements other than economic factors” in the Enforcement Directive may allow photographers to claim damages where they have a basis for arguing damage to their reputation and/or feelings has resulted from the unlicensed use of their copyright works.

Damages for lost time

The following cases may provide a basis for arguing that damages in respect of time spent dealing with an infringement may be recoverable. In Aerospace Publishing Ltd & Anor v Thames Water Utilities Ltd12, the court held that the claimants could recover damages arising from payments paid to staff for salvage work done in relation to flooding of the claimants’ premises, which was caused by the defendant. The court held that the flood constituted a “significant disruption” to the claimants’ businesses, and it was reasonable to infer that, had their time not been diverted, the staff would have spent time on activities which would have generated revenue.

In National Museums and Galleries on Merseyside (Trustees of) v AEW Architects and Designers Ltd13, a case concerning the liability of a firm of architects for the design of a museum, the judge considered Aerospace, and held, “In my judgment, an innocent claimant which has established its cause of action can recover its management time reasonably spent dealing with the consequences of the negligence or breach of duty in question.”

According to R+V Versicherung AG v Risk Insurance and Reinsurance Solutions SA14 time “spent on the investigation and/or mitigation of the tort [i.e. the wrongful act]” is recoverable.

These cases clearly show that damages may be claimed in respect of the time spent by employees of a business dealing with a defendant’s wrongful act where it has caused a significant disruption to the business. The cases do not address whether a self-employed individual can claim damages for his/her lost time, although in that instance the court may be prepared to accept a reasonable hourly rate should apply. Time spent on the matter should be carefully recorded to provide credible support for a claim.

III. Moral rights

In addition to a copyright infringement claim, it may be possible to include a claim that a photographer’s moral rights have been infringed. Two moral rights under the CDPA are considered here.

First, the author has the right to be identified as such when the work is published commercially or a copy is issued to the public. This is called the “paternity right”. The author must have asserted the paternity right through a signed document or through entering ‘Moral rights asserted’ in the copyright section of the IPTC of a digital photograph. Anyone with notice that the paternity right has been asserted is bound.

Second, the author has the right to object to derogatory treatment of work. This is called the “integrity right”. The integrity right allows the author to object to “derogatory treatment” of his/her photograph, which essentially means any addition to, deletion from, alteration to, or adaptation of the work where it amounts to distortion or mutilation or is otherwise prejudicial to the honour or reputation of the author.

The paternity and integrity rights in a photograph are not infringed if it is published in a newspaper, magazine or a reference work and was created for the purpose of such a publication or made available with the author’s consent for that purpose. Further, these rights do not apply in relation to any work made for the purpose of reporting current events.

Therefore, in appropriate circumstances, a photographer may bring a claim for infringement of the paternity right (in addition to a claim for copyright infringement if the photographer also owns the copyright), if his/her photograph is published without permission and the exceptions above do not apply. If the author is not identified, there may also be a claim for infringement of the integrity right. If infringement of these rights is proved, the photographer may seek damages.

In Delves-Broughton v House Of Harlot Ltd15, the claimant brought an action for infringement of copyright and the integrity right. The defendant was found to have infringed the claimant’s copyright by altering a photograph created by the claimant and using this photograph on its website for six months. The defendant had altered the image by inter alia removing aspects of the background. The court noted that the background was important to the photographer for artistic reasons and held that the changes amounted to distortion. In addition to awarding damages for copyright infringement, the court ordered damages for derogatory treatment that equalled around 7% of the copyright damages award.

In Perez & Ors v Fernandez16, a case before the Australian Supreme Court of New South Wales (but which may nevertheless be persuasive in UK proceedings), Perez (the artist better known as ‘Pitbull’) was awarded 10,000 AUD (around £5,000) in damages for infringement of the integrity right, a sum that was four times that awarded for copyright infringement. The defendant had altered a song by Perez and streamed it from his website for around one month.

The infringement of the photographer’s moral rights may therefore allow further damages to be claimed.

IV. Small claims track

The small claims track of the Intellectual Property Enterprise Court (the “IPEC”) came into effect on 1 October 2012. It is intended for relatively straightforward intellectual property claims with a financial value of not more that £10,000. The court has the power to order various remedies including an injunction and/or damages in favour of a successful claimant.

The case will be allocated to the small claims track if both the claimant and defendant agree (and the court does not disagree). If one party does not consent, the court will decide the issue. The significant advantage of the small claims track is that a party is protected from having to pay the costs of his adversary if the court finds in the adversary’s favour.

In this track, the general rule is that the court may not order a party to pay a sum to another party in respect of that other party’s costs, fees and expenses. There are a number of exceptions to this general rule, namely: a party may recover up to £260 for legal advice and assistance in a claim that includes an injunction, up to £90 per day for the loss of earnings from that party or a witness attending the hearing, any court fees paid, and/or costs where the other party has “behaved unreasonably”. Therefore, as long as the copyright owner acts reasonably in the conduct of his/her claim, the risk of a significant adverse costs award is low.

More information can be found in HM Courts & Tribunals Service’s “Guide to the Patents County Court Small Claims Track”, available here.

In addition, copyright owners considering bringing an action without legal representation may find helpful the judgment in the small claims case of Taylor v Maguire18, in which, due to the non-attendance of the defendant, the court took particular care to set out the law applying to copyright infringement of an artistic work.

V. Confidentiality clauses

A final issue for consideration is whether an alleged infringer may insist on the confidentiality of any settlement referred before the case is heard at trial. A copyright owner may wish to disclose a settlement agreement to third parties in subsequent disputes to support its claim for a certain level of compensation and also as evidence of the strength of its claim.

One of the remedies a claimant may seek from the court is dissemination of the judgment. Paragraph 24.2 of Practice Direction 63 of the Civil Procedure Rules (the “CPR”) reads: “Where the court finds that an intellectual property right has been infringed, the court may, at the request of the applicant, order appropriate measures for the dissemination and publication of the judgment to be taken at the expense of the infringer.”

The purpose behind this remedy is clear from Recital 27 of the Enforcement Directive, which states: “To act as a supplementary deterrent to future infringers and to contribute to the awareness of the public at large, it is useful to publicise decisions in intellectual property infringement cases.”

In 32Red PLC v WHG (International) Limited19, the judge considered orders for dissemination of judgments and held: “first, such orders ought to become standard practice; secondly, such an order would remind the defendant to be more careful about the nature of the products which it sold; thirdly, because the publication by the defendant of the result of the decision against it would be a deterrent to other infringers and counterfeiters; and, fourthly, whenever infringement is established there ought to be a policy of granting a full range of remedies, given the difficulties which owners of IP rights face in identifying and successfully pursuing infringers.”

Therefore, given that the court has recognised the importance of disseminating a judgment, this remedy may be a sufficiently good justification in relation to costs for a claimant to proceed with his action in the absence of an agreement as to the confidentiality of a proposed settlement. The claimant’s position as to costs is further strengthened if his case is allocated to the small claims track of the IPEC, which, as noted above, will be the most appropriate forum for many cases involving straightforward unauthorised use of photographs. Dissemination of a judgment is a remedy available on the small claims track20. As discussed, costs orders on the small claims track are highly restricted. The defendant would have to persuade the court that rejection of the proposed settlement constituted unreasonable behaviour before it had any impact on costs. Refusal of a settlement offer per se does not constitute unreasonable behaviour21. Therefore, in small claims cases in particular, it may be argued that refusal to settle a case on the sole basis that the defendant is insisting on a non-disclosure provision should not result in an adverse costs award against the claimant.

Alex Wilson is a partner and Alex Borthwick a senior associate at the specialist intellectual property law firm, Powell Gilbert LLP. Alex Wilson represented the French photographer Francois Marie Banier in the case referred to above: Banier v News Group Newspapers Limited.


Notes

[1] See the Court of Justice of the European Union’s decision in C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16

[2] C-145/10 Eva-Maria Painer v Standard Verlags GmbH and Others ECLI:EU:C:2011:798

[3] [2012] EWPCC 1 (12 January 2012)

[4] [1997] FRS 812

[5] [1976] RPC 197

[6] [2003] EWCA Civ 423

[7] EWPCC 26 908 May 20130

[8] [2002] EWHC 409 (ch)

[9] [2009] FRS 17

[10] [2013] EWPCC 1

[11] 2014 EWHC 1140 (Ch)

[12] [2007] EWCA Civ 3 (11 January 2007)

[13] [2013 EWHC 2403 (TCC) (01July 2013)

[14] [2006] EWHC 42 (Comm)

[15] [2012] EWPCC 29 (18 May 2012)

[16] [2012] FMCA 2

[17] NB, the IPEC was previously referred to as the Patents County Court

[18] [2013] EWHC 3804 (IPEC) (03 December 2013)


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Comments

In relation to Section V where:

“…..the court may, at the request of the applicant, order appropriate measures for the dissemination and publication of the judgment to be taken at the expense of the infringer.”

Can the applicant ask the court to have the defendant pay for the transcription of the judgement as in the IPEC Small Claims track there is a significant fee for this? This impediment and the failure of the IPEC to publish statistics on small claims flies in the face of Recital 27 of the Enforcement Directive.

Comment 1: Alan Gallery, 1 February 2015, 12:07 PM

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