Monday 30 July 2012

Photographs, celebrity and the PCC

Is this the face that launched a copyright case?
Answer: yes
Photography cases are becoming increasingly common in the Patents County Court of England and Wales (PCC). We have had ‘infringement’ of red routemaster buses, the damages caused by unlicensed photos of pharmaceuticals and now the subject matter has moved, somewhat inevitably, on to celebrities. Karren Brady is a very successful business woman who is, perhaps, best known for being the new Margaret in the UK version of The Apprentice. She was literally the subject of a photographic case - Celebrity Pictures & Tyson Sadlo v B Hannah Limited.

So, what happened?
Tyson Sadlo was engaged in July 2010 by company (Oxygen 10) to photograph Karren Brady for Today's Business Woman. Syndication rights were subsequently granted to Celebrity Pictures Limited which, together with Tyson Sadlo sued B Hannah Limited (a member of Oxygen 10’s corporate group) for copyright infringement. This was on the basis that B Hannah had authorised publication of the photos of Ms Brady in BUPA Health Magazine and on a celebrity website.

Why sue B Hannah and not Oxygen 10?
At the time of the shoot, Oxygen 10 was operated as a separate company from B Hannah. However, shortly afterwards the operations of Oxygen 10 and B Hannah were amalgamated and Oxygen 10 ceased trading. Oxygen 10 was dissolved earlier in 2012.

Who owned the copyright in the photos?
Unsurprisingly, the situation was far from straightforward. B Hannah claimed that either it owned all the copyright in the photographs or that it is a joint owner of the copyright. The uncertainty surrounding ownership of the rights was due to a written document ("the contract") which B Hannah claimed to have sent to Mr Sadlo before the photo-shoot. The contract explained that by accepting the assignment Mr Sadlo agreed to worldwide exclusivity in favour of Oxygen 10. As the judgment put it, ‘there is no dispute that, if this document was received by Mr Sadlo, its terms are sufficient to defeat the present claim to infringement of copyright’. However, this would most likely be by means of licence rather than assignment – the contract referred to ‘worldwide exclusivity’. Thus, regardless of whether the contract was sent to Mr Sadlo he would most likely retain ownership of the copyright.

Can you become a joint owner of copyright by setting up a photographic scene?
Maybe. Creation Records is a great case about an Oasis album cover which was snapped by the paparazzi before the official photographer took any pictures. As there was no copying of the ‘official’ photograph there were many debates about potential alternative copyright in the mise en scene. Whilst these arguments were ultimately unsuccessful the case did raise the proposition that "There may be cases where one person sets up the scene to be photographed (the position and angle of the camera and all necessary settings) and directs a second person to press the shutter at a moment chosen by the first, in which case it would be the first, not the second, who creates the photograph. There may also be cases of collaboration between the person behind the camera and one or more others in which the actual photographer has greater input, although no complete control of the creation of the photograph, in which case it may be a work of joint creation and joint authorship." Cue argument that Mr Sadlo was in fact a joint owner of copyright together with the staff from Oxygen 10 who helped set up the scene. Although Mr Sadlo was given a brief and received some assistance on the shoot, this argument the judge found that “I do not think these general instructions to the photographer as to the type of photographs, or the very general acceptance that there was a team effort involved in the photo-shoot as a whole, are sufficient to make anyone other than Mr Sadlo the author of the photographs.”

Was there a contract?
Whether or not the contract was received was the key issue in the case although B Hannah also claimed that there was an implied claim as to transfer of exclusive rights. The receipt or otherwise by Mr Sadlo of the contract is therefore the principal issue in the action. Whilst, as the judge put it, “the evidence can scarcely be described as satisfactory on either side”, he ultimately decided in favour of Mr Sadlo. One of the key determining factors was that there was quite a lot of email correspondence between the parties but no mention in any of this correspondence of the contract – which was allegedly sent by post.

Implied assignment?
B Hannah tried to claim that there should be an implied assignment. However, after examination of the relatively limited evidence, Mr Justice Floyd held that “it is not necessary to imply into the agreement any wider term than that accepted by the claimants, namely an agreement to use the results of the photo-shoot for publication in Today's Business Woman.”

The claimants won and the licence of the photos from B Hannah to Bupa and the celebrity website was an infringement. Although B Hannah tried to argue that Oxygen 10 and not B Hannah was responsible that argument failed (amongst other things, it had paid Mr Sadlo’s fee). The judge did not decide costs or damages. If these cannot be agreed between the parties, there will be a further hearing before Floyd J after 1 October. Whilst it is to be hoped that the parties can reach a reasonable compromise, it is always interesting to get judicial guidance in this area.

Lessons learned
• Make sure your contract is clear – are rights being assigned or licensed? If so, what rights and in what jurisdictions? Is the licence limited to a particular publication or a form of media? Is it exclusive, limited in time etc?
• Get things in writing and sent by email or fax as well as post (ie a method where you get a delivery receipt and there can be no question regarding service).
• If you are using assistants to set up your shoot, be aware that in some circumstances thy can be a joint owner of copyright in the photograph.
• Implied terms will be made to the minimum extent possible. Ie it is very unlikely that a court will find it necessary to imply an assignment.

Finally, it is not often that you see a photographic copyright case and even rarer that one merits a QC and a High Court judge (albeit sitting in the PCC). It is to be hoped that the recent judicial focus given to photography will enable greater clarity in terms of the courts likely approach and enable more matters to be settled without recourse to legal proceedings... (you never know!)

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