Committal for contempt not fit for 'grey area' disputes

Lord Hoffmann started the mini-trend of dropping down a court, and now Lord Justice Patten has been at it too. The case in question (cases, actually) is (i) Alan Grisbrook v MGN Ltd, Scottish Daily Record & Sunday Mail Ltd and Syndication International Ltd; (ii) Alan Grisbrook v MGN Ltd and Syndication International Ltd [2009] EWHC 2520 (Ch), a 16 October decision of Lord Justice Patten sitting as a Chancery Division judge.

Right: back-issues such as this one have been saved and made accessible for future use through newspapers' archival sites -- but in many cases the rights of individual copyright owner have been overlooked.

This was an application by Grisbrook, a freelance photographer, to commit newspaper publisher MGN for contempt of court following the alleged breach of an undertaking contained in a consent order, with an alternative claim for sequestration of MGN's assets.

The background is that Grisbrook had provided photographs for MGN for a number of years, without a written contract, being paid when his photographs were used. MGN archived the photographs it used; any subsequent use by MGN entitled the photographer to a further fee. It was conceded that Grisbrook licensed MGN to use his photos in this way while retaining copyright in them, though there was some dispute as to how far this licence extended.

Following a dispute over unpaid licence fees, a consent order was made which (i) terminated the licence, (ii) entitled Grisbrook to the return of materials held by MGN and in which he retained the copyright and (iii) an undertaking by MGN not to infringe Grisbrook's copyright. Grisbrook conducted an agreed search of MGN's archive to locate his material and, at its conclusion, served a further copy of the consent order on MGN. Subsequently Grisbrook carried out random searches of MGN's websites, including such staples as mirrorpix.com and mydailymirror.com and discovered that a large number of his photographs were still being used. Although MGN removed his photographs from some of its websites, it refused to compromise in respect of images contained on websites which offered complete back issues of its publications.

Grisbrook was not best pleased with this and went to court, arguing that any reproduction of already-published material constituted an infringement of his copyright and was therefore a breach of the undertaking. No, said MGN: the consent order was not intended to cover the reproduction of photographs which were contained in already-published newspapers and should be construed accordingly. MGN further argued that, even if the undertaking was unlimited and included such infringements, no infringement had taken place or could take place as the licence granted by Grisbrook had to be treated as extending to the subsequent reproduction or use of published material.

Patten LJ refused the application. In his view

* The real issue between the parties was whether the operation of the back issues websites amounted to an infringement of Grisbrook's copyright in the photographs contained in those issues: did MGN's licence impliedly extend to the storage of and access to Grisbrook's photos as they appeared in the back issues?

* Since such an implied licence derogated from or relaxed the copyright owner's statutory rights, it was for MGN to justify the basis for extending the licence to cover what would otherwise be separate acts of infringement.

* The compilation of a database and its use for archival purposes might be so justified, but the exploitation of Grisbrook's photos through the back issues websites seemed to be a different kind of operation, one that was not contemplated at the time the licence was granted and could not be said to have been necessary to regulate the rights of the parties at that time. MGN's operation of the back issues websites accordingly infringed Grisbrook's copyright.

* MGN was entitled to take a different view on this difficult question, and disputes of this sort should not be resolved through committal proceedings. The dangers inherent in generally worded injunctions or undertakings not to infringe a patent or copyright had long been recognised and could often lead to a further round of litigation in order to determine whether an infringement had occurred. Nor was the infringement point which Grisbrook was arguing a point that featured in the actions which led to the consent order. A party who argues in good faith that his conduct did not amount to an infringement should not ordinarily be penalised by a fine or sequestration in the event of failure merely because an applicant had chosen to use committal proceedings rather than an ordinary claim to resolve the issue.

* Although the operation of the back numbers websites did infringe Grisbrook's copyright in his photographs, those rights could be adequately protected by a declaration to that effect.

The IPKat is greatly relieved at the court's finding on implied licences, since he give the same unwelcome advice to a periodical publisher that was planning to do much the same thing some 15 years ago, who responded that "it must be lawful because other publishers are doing it too". He also agrees that, where infringement is a 'grey area' in which plausible arguments can be raised by each party, contempt proceedings should not be used as a weapon. Merpel says, is it my imagination or are the courts consistently soft on infringing defendants in IP committal proceedings?