Freelancer's copyright infringed by sales of digital back issues, rules High Court

Alan Grisbrook was a freelance celebrity photographer for the Mirror for 16 years. After he stopped supplying the paper he engaged in a number of copyright disputes with it about the use of his pictures and their presence in the Mirror's photo archives.

The Mirror agreed to stop using his pictures and to remove them from its physical and digital archives.

Grisbrook recently claimed that the sale to researchers of digital replicas of newspaper pages that featured his photographs was a further breach of his copyright. The High Court agreed.

The newspaper conceded that Grisbrook retained copyright in all the pictures he supplied to the paper and that he had every right to withdraw the licence for their use.

The Court heard that it was common practice to submit, as Grisbrook did, photographs 'on spec' and to be paid for those that were used. It was also common practice for pictures to be kept in an archive and for photographers to be paid for any future use when it happened.

Though there was no written licence agreement between Grisbrook and the paper the Court found that permission for this use and the storing in the paper's own archive were implied in their oral contract.

Grisbrook objected, though, to the creation of archives which were designed to attract fees from users. This, he said, was a new use and infringed his copyright. The sites involved were called arcitext.com and mirrorarchive.co.uk.

"Mr Grisbrook says in his evidence that he has no wish to prevent MGN from archiving full copies of newspapers either in hard copy or in electronic form," said the High Court's ruling. "What he objects to is its attempt to make commercial use of the database."

He said that it breached the agreement he came to with the Mirror Group Newspapers (MGN) in 2002 that it would not use his work.

The Mirror said that it had every right to reproduce its own pages, even if they contained Grisbrook's images.

"[MGN contests] Mr Grisbrook's claim that any further reproduction of already published material would constitute a infringement of his copyright in the photographs and therefore a breach of the undertaking," said the ruling.

Grisbrook conceded that the long-conducted practice of selling back issues was permissible and was different to the digital archive sales.

"He, of course, accepts that the sale of hard copies from print overruns, even many years later, is covered by the original licence which he gave for the inclusion of his photographs in that edition," said the ruling. "It is said that he was not asked for and therefore did not give any consent for the inclusion of his material in the back numbers database and that MGN is infringing his copyright by making the material available in that form. He licensed his photographs for two specific purposes; the production of current newspapers and the occasional future use of material stored in the picture library in new publications."

Lord Justice Patten, giving his ruling, said that the storage of Grisbrook's images, even after the agreement with MGN that it had no permission to reproduce his pictures, was permitted. "It would … have been an implied term of the dealings with the paper that storage, whether on microfiche or in electronic form, was permitted. The only real issue as I see it is whether the licence also extended to making the back numbers database more widely available to members of the public," he said.

The websites involved were designed as an online research resource which, for a fee, allows
users to see an image of stories as they actually appeared on the newspaper page.

Lord Justice Patten said that though permission to store pictures for possible future use or for archiving could be an 'implied term' of the oral contract, the same cannot be said for the presentation of the archived material to the public for a fee.

"[The] exploitation through the back numbers websites seems to me to be a different kind of operation which was not contemplated at the time when the licence was granted and cannot be said to have been necessary to regulate the rights of the parties at that time," he said. "For these reasons, I take the view that Mr Grisbrook's copyright in his photographs has been or would be infringed by the operation of the back number websites."