Grisbrook v MGN Ltd & Ors [2009] EWHC 2520 (Ch)

[2009] EWHC 2520 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Venue Royal Courts of Justice, Strand, London, WC2A 2LL

Date 16 th October 2009

Before

LORD JUSTICE PATTEN

Case No CH 1998 G No. 3299

Between

Alan GrisbrookClaimant

MGN LIMITEDDefendants

SCOTTISH DAILY RECORD AND SUNDAY MAIL LIMITEDDefendant

SYNDICATION INTERNATIONAL LIMITEDDefendant

Case No: CH 1999-03659

Between

Alan GrisbrookClaimant

MGN LIMITEDDefendants

SYNDICATION INTERNATIONAL LIMITEDDefendant

Alastair Wilson QC (instructed by Edwin Coe LLP) for Claimant

Simon Barker QC and Gregory Banner (instructed by Kerman & Co LLP) for First Defendant

Hearing Hearing dates: 26 th and 27 th November 2008; 8 th, 9 th and 10 th July 2009

Judgment

Lord Justice Patten :

Introduction

[1]This is an application by the claimant, Mr Alan Grisbrook, to commit the officers of the first defendant, MGN Limited (“MGN”), or for orders of sequestration against the assets of MGN, on the grounds that the company has committed breaches of an undertaking to the court not to infringe the claimant’s copyright in various photographs which he took and supplied to MGN between 1981 and the early part of 1997.

[2]The dispute between the parties which led to the consent order of 9th December 2002 containing the relevant undertaking and ultimately to this application can be summarised relatively shortly. MGN is and was at all material times the publisher of the Daily Mirror; the Sunday Mirror; and the Sunday People. Mr Grisbrook has been a freelance photographer since 1974. Most if not all of his photographs are of celebrities or other well-known individuals whose activities seem to feature regularly in the press. Many of the photographs were taken late at night showing the person concerned emerging from a restaurant or nightclub. Others were taken at more public events.

[3]In 1981 he was invited by Mr Dick Barton of MGN to provide photographs for the Diary page of the Daily Mirror. From then until 1997 he supplied MGN with many hundreds of photographs which appeared in the titles which they published. It is, I think, common ground that Mr Grisbrook was a successful photographer and many of his pictures appeared on the front pages of those newspapers.

[4]A major issue in these proceedings concerns the terms of the contractual licence which Mr Grisbrook granted to MGN for the use of his material. I will come to the detail of that later in this judgment. But, for the purposes of outlining the issues between the parties, it is enough to record that there was no written contract which governed the legal relationship between them and MGN’s right to make use of Mr Grisbrook’s work. On occasions he was asked by the picture editor to take photographs of a particular person which they wished to use in connection with a story. But on most occasions Mr Grisbrook would bring photographs he had taken to the editor who would select the pictures which he wanted.

[5]Mr Michael Ives, who was the night picture editor of the Daily Mirror from 1976 until 1997, said that he would brief photographers to cover particular stories that required pictures. These would include so-called “showbiz” events. Once on duty he had to deal with the influx of a large number of pictures either from assignments he had set up or from agencies and freelance photographers who submitted their material unsolicited to the paper. He would choose which of these might be suitable for publication in the next edition; those which could be set aside for use in the next few days; and some which might prove useful in the future and were therefore put into the MGN picture library.

[6]Photographers were not told for certain that their pictures were to be used. Ultimately that would be a decision for the editor and the other production staff who would choose which stories and features to run. The standard procedure therefore was for photographers who had submitted material to check the published editions of the newspapers and then contact the picture editor to agree a price. Mr Ives said that the photographers knew what the going rate was for their pictures and that agreement on price was never really a problem. This is confirmed by the evidence of Mr Kenneth Lennox, a freelance photographer who was between 1995 and 2000 the executive picture editor of The Sun and the News of the World.

[7]It was the practice at MGN and most other newspaper publishers for both published and unpublished photographs to go into the newspaper’s picture library. In the case of MGN, this consisted of a hard copy picture library (which was moved to Watford in 1993/4) which contains over 30 million photographs and a large quantity of transparencies and negatives. At the same time MGN also established a digital picture library called FastFoto in order to provide electronic access to the MGN picture library for editorial staff at its new premises in Canary Wharf. This now contains over a million images.

[8]Photographs from the picture libraries are available for use in MGN newspapers but may be syndicated or licensed to other publications. Mr Ives says in his witness statement that the subsequent use of a previously published photograph in a different edition of the newspaper would entitle the photographer to a further fee; something which Mr Lennox described as a “subsequent-use” fee. But both he and Mr Ives drew a distinction between the use of a photograph in this way to accompany a new story and what is known in the business as a “rag out”: i.e. the reproduction in the paper of a copy of a page or part of a page from a previously published edition to accompany a story in the new edition. If the rag out included a photograph it was, they said, unknown for the photographer to demand or be paid a further fee for its inclusion in the rag out.

[9]Mr Grisbrook broadly accepts the account given by Mr Ives of the method of dealing between MGN and the freelance photographers whose pictures it used. He accepts that the fee was agreed after the use of the picture and that a further fee was payable for the photograph’s subsequent use in another edition of the paper. He has points to make about the scale of such fees but that is not relevant to this application. He does, however, dispute the contention that no fee was payable for the appearance of the photographs as part of a rag out. Although he gives no evidence in his witness statement of any particular occasion when he was paid such a fee, he says that a further fee would be payable for such use.

[10]Subject to one important qualification which was raised by MGN in argument, it is common ground that Mr Grisbrook retained copyright in his photographs both up to and following their acceptance and use by MGN. This is implicit in his entitlement to a further fee for the subsequent use and reproduction of a photograph in a separate and subsequent edition of the newspaper and in the fact that the 2002 consent order contained an undertaking by MGN not to infringe his copyright in the photographs which he had taken.

[11]The 2002 order resulted from the compromise of two actions commenced by Mr Grisbrook in 1998 (1998 G. No. 3299) and 1999 (CH 1999-03659). The 1998 action was essentially a claim for unpaid licence fees. In the particulars of claim Mr Grisbrook asserts that from 1981 MGN selected a number of his photographs for use either as live photographs in the next edition of one of their newspapers or as stock photographs for storage in their picture library for future use. As part of these arrangements, he granted to MGN a non-exclusive licence to reproduce both types of photograph in any of their publications in return for the payment of a licence fee. MGN was required to account for licence fees on a monthly basis. The licence granted was revocable at will on notice.

[12]Mr Grisbrook alleged (and it is now accepted) that MGN failed accurately to account for the licence fees payable in respect of photographs published between 1982 and October 1997. The particulars supplied by Mr Grisbrook of unpaid fees totalled some £161,238.20.

[13]He also relied on a letter written by his solicitors dated 13th October 1997 which terminated MGN’s licence to reproduce stock photographs. As a result of this, the claim included one for infringement of copyright in respect of photographs published after that date.

[14]The focus of the 1998 action was therefore on the publication of Mr Grisbrook’s photographs in one of MGN’s titles either with or without the benefit of his licence. The schedules attached to the particulars of claim list the publications with the dates on which they appeared, the subject matter of the photograph and the fee which is alleged to have been payable. However, in the 1999 action damages and an injunction were sought for the unauthorised reproduction of the claimant’s works on MGN’s mirrorpix.com website.

[15]mirrorpix.com was launched in 1998 as a means of marketing online MGN’s FastFoto picture library. Originally the content of mirrorpix.com was restricted to about 30,000 images in which MGN are said to have owned the copyright. They were specifically selected for this purpose and uploaded on to the website from FastFoto. But, soon afterwards, the content of the website was expanded to include all MGN copyright material on FastFoto. The evidence is that these images would have been identified from material on the FastFoto database which identified MGN as the copyright owner. As a result, the content of the website was increased by September 1998 to include about 350,000 images.

[16]At the outset of these proceedings and until Mr Grisbrook gave his evidence, everybody seems to have assumed that the content of mirrorpix.com was limited to digital versions of photographs. But Mr Grisbrook said, and it is now accepted, that it also included full copies of various front pages. This is because front pages had begun to be downloaded on to the FastFoto database where they appeared as MGN copyright material. They were therefore uploaded by default on to the mirrorpix.com website even though this was to be used to market the reproduction of single photographs rather than front pages. It is, however, common ground that at the time of the 2002 order the website included this material. In 2005 the format of the website was redesigned so as to include only images of historic importance. As a consequence, only a very limited number of front pages remain on the website. On FastFoto there are still about 350 front pages but, since April 2006, the front pages of MGN’s English publications have ceased to be added, although there has been at least one unexplained addition since then. The only newspaper which continues regularly to add its front and back pages to FastFoto is the Scottish Daily Record which is published by the Scottish Daily Record and Sunday Mail Limited, a company within the Mirror Group.

[17]The inclusion of scans of front pages on mirrorpix.com is primarily relevant to the construction of the terms of and particularly the undertaking contained in the 2002 consent order. Mr Grisbrook’s evidence in cross-examination was that in 2000 he had complained, through his solicitors, about eight photographs found on the mirrorpix.com website. They were listed in a “Seventh schedule of AG’s photographs found on the mirrorpix.com website” which was served under cover of a solicitor’s letter dated 6th June 2000. Each of the items has the name of the person in the photograph, the URN number of the image and, in the case of six of the items, a reference in brackets to it being a front page of the relevant publication.

[18]The 1999 action began with a letter before action dated 8th July 1999 in which Mr Grisbrook’s solicitors complained in general terms about the inclusion of 191 of his images being offered for sale on the website in breach of copyright and asking for “our client’s photographs” to be removed. MGN’s solicitors responded on 16th July saying that the 191 images had been deleted but on 23rd July Mr Grisbrook’s solicitors complained about a further 82 images being offered for sale. In August 1999 the second action was commenced.

[19]Mr Collier-Wright (MGN’s Group Legal Manager) says in his evidence that by mid-September 1999 MGN believed that it had deleted from the mirrorpix.com website all of the images listed in the schedule attached to the letters of 8th and 23rd July as well as those listed in a third schedule served on 1st September. On 27th September Mr Grisbrook’s solicitors served a fourth schedule containing a further eight items and this was followed on 19th October with a fifth schedule containing another eight items. A sixth schedule followed on 18th November listing four further items. The letter also referred to a larger number of photographs contained in the first, fourth and fifth schedules which Mr Grisbrook had discovered were still available on the website.

[20]On 23rd February 2000 MGN’s solicitors confirmed that there had been no sale of the pictures listed in schedules 1 to 6 and that all of the 304 images had been deleted from the website. But on 6th June Mr Grisbrook’s solicitors served the seventh schedule referred to above. These front pages were removed by MGN from the website in 2003 after the making of the consent order but Mr Collier-Wright says that he and MGN’s advisers understood Mr Grisbrook to be concerned about the inclusion on them of photographs he had taken and did not concentrate on the broader issue of whether the reproduction of complete pages from past editions in an electronic form constituted an infringement of the photographer’s copyright in the photographs which they contained. I shall return later in this judgment to whether that is or ever was a meaningful distinction.

[21]The two actions were compromised under the terms of the consent order dated 9th December 2002. Prior to that, MGN had provided evidence on affidavit verifying the steps taken to remove Mr Grisbrook’s photographs from the mirrorpix.com website and from other databases including FastFoto. In the negotiations leading up to the settlement he maintained that he needed to be given personal access to the hard copy library at Watford and to FastFoto in order to ensure that all the relevant images had been removed. As a consequence, the parties agreed to a stay of the two actions in Tomlin form. In the order itself MGN gave an undertaking:

“… that they will not infringe the Claimant’s copyright in photographs taken by the Claimant (whether by their servants or agents or any of them or otherwise howsoever), including without prejudice to the generality thereof: a) the photographs set out in the Schedules attached to the Statement of Claim herein; b) the photographs referred to in the Defendants’ Remittance Advices issued to the Claimant for the period 1982 to 1998; and c) the copies of photographs provided by the Claimant to the Defendant following the completion of his searches of the photographs in the Defendants’ possession referred to in paragraph 4 to Schedule 1 hereto; save that any Defendants shall not be in breach of this undertaking if they establish that they have taken all reasonable steps and used their best endeavours not to infringe the said copyright.”

[22]The schedules attached to the statement of claim referred to in subparagraph (a) were the schedules of usage compiled by Mr Grisbrook to particularise his claim for unpaid licence fees in the 1998 action. The schedules of images found on the mirrorpix.com website (including, in particular, the seventh schedule which contained the scans of front pages) did not become scheduled to the pleadings in either action and are not therefore specifically identified in the undertaking.

[23]The schedule to the order (referred to in subparagraph (c) of the undertaking as Schedule 1) contains the machinery for the delivery up to Mr Grisbrook of all physical copies of his photographs and for their deletion from the FastFoto system and any other form of electronic storage. It also gave him access to the hard copy picture library at Watford and to FastFoto in order to facilitate the retrieval and removal of his material.

[24]The relevant provisions of Schedule 1 are in these terms:

“2. The Defendants do deliver up to the Claimant forthwith all the Claimant’s prints negatives and transparencies including duplicates of the same (“the Claimant’s material”) in their possession; 3. The Defendants do forthwith delete from the First Defendants Fast Photo System or any other form of electronic storage/imaging system in the possession custody or control of the Defendants all photographs belonging to the Claimant. 4. For the purpose of assisting the Defendants to identify the Claimants material referred to in paragraphs 2 and 3 above the Claimant has and will continue to be given reasonable access to the First Defendant’s offices in Watford on at least 3 working days per week to search for and identify his material. The search shall include all hard copy photographs negatives and transparencies in the possession custody or control of the Defendants and supervised access to the First Defendants Fast Photo System. The searches shall be limited to those subject matters referred to in the list attached herewith and marked as List A. 5. It is agreed that the Defendants do not have permission to use any of the Claimant’s material and the Defendants agree that in the event of further photographs negatives or transparencies being discovered in their possession, custody or control they will forthwith deliver up the same to the Claimant. 6. The terms of settlement of these proceedings do not prejudice the Claimant’s rights in respect of any future infringements of the Claimant’s copyright by use of his material by the Defendants and in this respect all the Claimant’s rights are reserved.”

[25]It was originally estimated by Mr Grisbrook that he would need about four weeks to complete the searches of the picture library at Watford. The process in fact lasted until July 2004. He spent about three days a week at Watford going through boxes of photographs. He says in his witness statement that he identified over 6,000 original photographs together with numerous negatives and transparencies. He also discovered about 2,000 of his images stored on the FastFoto system. On completion of this exercise his solicitors wrote to the defendants’ solicitors on 1st July 2004 enclosing lists of the photographs identified on the FastFoto system. In October 2007 they also provided MGN’s solicitors with five CDs containing copies of all the material which Mr Grisbrook had retrieved together with copies of photographs not located during the search but which had been published by MGN in its publications or on websites. This was intended, he says, to provide a composite list of all his material to assist the defendants in identifying what belonged to him and so to avoid further infringements of his copyright.

[26]During Mr Grisbrook’s searches at Watford his photographs were deleted from FastFoto in accordance with paragraph 3 of Schedule 1 to the consent order. It appears that these deletions may have included one of the front pages (containing an image of Koo Stark). Mr Collier-Wright’s evidence is that there were no intentional deletions of front pages from FastFoto during this period but that scans of front pages containing Mr Grisbrook’s pictures were removed from the mirrorpix.com website to accommodate the claimant. He has not been able to explain the deletion of the front page from FastFoto which he says would have been contrary to MGN’s practice at the time of retaining images of the front pages on FastFoto. The other front pages listed in the seventh schedule remain on that database.

[27]In July 2004 at the conclusion of the search process at Watford Mr Grisbrook’s solicitors took the step of serving a copy of the consent order endorsed with a penal notice. In 2005, as mentioned earlier, the link between FastFoto and mirrorpix.com was severed and the content of that website was reduced. Mr Grisbrook continued, however, to carry out random searches of the defendants’ publicly accessible websites to check whether they contained any of his photographs. It is this process which has led to the present application.

[28]In its amended form the application notice alleges breaches of the undertaking by MGN in respect of four websites which it operates. They are mirrorpix.com; mydailymirror.com; mirrorarchive.co.uk; and arcitext.com. The complaint about the inclusion of copyright material in the mirrorpix.com website was added by amendment in July 2008. In each case the alleged infringement comprises either the reproduction of the claimant’s photographs by their storage on the relevant database or their communication to the public through access on the website contrary to what is now s.20 of the Copyright Designs and Patents Act 1988 (“the 1988 Act”). This section came into force in October 2003.

[29]The claimant’s specific complaints can be summarised as follows. (i). mirrorpix.com

[30]In September 2005 Mr Grisbrook located 13 photographs on the website. His solicitors requested their removal by letter dated 13th September. They then pressed for confirmation that this had been done. As of January 2006 they had received no reply but the photographs remained on the website. Action was threatened but on 2nd February MGN’s solicitors said that the images had now been removed. There is evidence from Mr John Mead, the library manager of MGN, that the 13 images had previously been deleted but had found their way back on to the mirrorpix.com website by being re-populated from the Glasgow database used by the Scottish Daily Record. Because MGN failed to ensure that the images were deleted from the Glasgow database they re-appeared on mirrorpix.com by being automatically up-loaded from the Glasgow system. It is not clear from Mr Mead’s evidence why effective steps were not taken to remove the images from the Glasgow database and so avoid this problem but what happened was clearly unintentional and perhaps explains the delay in responding to the September request for their removal from mirrorpix.com.

[31]It is, however, accepted that they were effectively removed by early 2006 and Mr Grisbrook’s position in evidence is that he would not have brought the committal application had that been the only apparent breach of the undertaking. Indeed it is clear that when the application was first issued in April 2008 it was not thought appropriate to include it. (ii). mydailymirror.com

[32]This site was launched in June 2006. It enabled users to access the front pages of editions of the Daily Mirror from 1903 to the present day. The only search facility was by date of publication. A user could select the front page for a particular day and then purchase a reproduction of it either in poster form or with it printed on T-shirts or greetings cards. Most of the front pages pre-date on-line publication and were therefore scanned into the database from microfiche or from hard copies of the papers. There is therefore some loss of quality in the images but they are sufficient for the purposes of the reproductions available.

[33]On 12th October 2006 Mr Grisbrook’s solicitors complained about the inclusion on the website of front pages containing 111 of his photographs and required them to be removed within three working days. On 1st December 2006 they informed MGN that a further 26 of the claimant’s photographs had been found on the site and were being offered for sale as part of the front pages in question. A further five were identified as still available as of 9th April 2008.

[34]The original complaint of 12th October led to discussions between the parties as to how to deal with the problem. Mr Grisbrook was unwilling to accept a fee for the inclusion of his photographs on the front pages offered for sale so that the choice for MGN appeared to lie between blanking out the relevant photographs or simply deleting from the site the front pages in which they appeared. Ultimately, after committal proceedings were threatened, MGN decided to delete the front pages in issue. They wrote on 29th November 2006 confirming that the original 111 images had been deleted. On 11th December 2006 their solicitors also confirmed that the further 26 images identified had been removed. The evidence in these proceedings is that the five further images identified in Mr Neoclous’s affidavit of 10th April 2008 were removed on 8th May 2008.

[35]Mr Collier-Wright’s evidence was that, although MGN was reluctant to remove pages from the website, it decided to do so as a proportionate measure designed to appease the claimant. The website was not set up as a complete historical archive but simply offered replicas of Daily Mirror front pages as birthday presents and the like. It was decided that the removal of the relevant pages was unlikely to have more than a modest impact on the website’s activities as a whole and that this was a prudent step to take in order to avoid the possibility of committal proceedings. (iii). arcitext.com; mirrorarchive.co.uk

[36]arcitext.com was launched in February 2006. It is described in the evidence as an online research source which allows users to search for and to obtain access to articles and stories from the archives of the Daily Mirror from 1903 onwards. The articles are presented in pdf format which therefore reproduces the relevant part of the newspaper in the same format in which it was printed.

[37]arcitext.com is operated by Digitorial Limited under a contract with MGN. The database remains the property of MGN. To use the website it is necessary to register with it. The target market is said to be academic and library users belonging to an institution which is a subscriber to the service. It is, however, possible for individuals to become subscribers and registered users. Once registered a user can download a pdf file of a page of the Daily Mirror to their personal computer and to print it, although the quality is variable. No greater rights of reproduction are, however, granted to users by virtue of their registration. Non-subscribers who access the site are unable to view anything other than thumbnail images of an entire page.

[38]mirrorarchive.co.uk is owned by MGN and was set up as a beta test site in April 2007. It is not fully operational and has been open only to a small number of selected users in order to test its functionality. When fully operational it is intended to be the commercial equivalent of arcitext.com. Subscribers will be able to access and download the whole or selected pages of all Daily Mirror newspapers published since 1903. The database therefore stores electronically in pdf format complete copies of all such papers. It is not limited to front pages. There is a dispute as to how profitable the site will be but that is largely irrelevant to this application. It is intended to be a commercial operation.

[39]On 10th March 2008 Mr Grisbrook’s solicitors complained that 455 of his photographs were included on the arcitext.com website and 405 on mirrorarchive.co.uk. This is, of course, the inevitable consequence of the database including complete copies of all published editions of the Daily Mirror. Although MGN was willing to compromise in the way I have described in relation to front pages contained on the mirrorpix.com and mydailymirror.com websites, it has taken a stand in relation to arcitext.com and mirrorarchive.co.uk and is unwilling either to blank out the relevant photographs or to remove the relevant pages from the database. It wishes to preserve and make available to users a complete electronic archive of its back editions. Mr Grisbrook contends that this constitutes a breach of the undertaking contained in the 2002 consent order.

The Issues

[40]It is convenient at this stage to identify what are the principal areas of dispute. Mr Grisbrook accepts that in submitting his photographs to MGN for inclusion in one of their publications he granted them a licence to reproduce the photographs on payment of a fee. He also accepts that MGN was entitled to retain the original negative or other form of the image for use in further editions, again subject to payment of an appropriate fee.

[41]It is common ground that ownership of the copyright in these photographs did not pass to MGN as part of these arrangements and that Mr Grisbrook was entitled to revoke the licence to make further use of the photographs. It is also accepted that paragraph 5 of Schedule 1 to the consent order was effective to terminate that licence if and so far as that had not already been done in the earlier correspondence between the solicitors. With the termination of the licence Mr Grisbrook was entitled to delivery up of his copyright material and this was expressly provided for in paragraphs 2 and 5 of Schedule 1.

[42]MGN do not therefore contest Mr Grisbrook’s right to prevent any further use of his photographs as such and they accept that the inclusion of the 13 single images on the mirrorpix.com website was a breach of the undertaking. Their response to the application in respect of that complaint is simply that it was inadvertent and that the breach was remedied over two years before the committal application was issued.

[43]But they take a different stand in respect of the other three websites which contain copies of published newspapers in which Mr Grisbrook’s photographs appear. Although (as explained earlier) they accept that they have deleted front pages containing the claimant’s photographs from the mirrorpix.com and mydailymirror.com websites on what are said to be purely pragmatic grounds, they contest 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.

[44]This is put on four grounds: (i) the construction of the consent

[45]There is no doubt that much of the focus in both actions was on the use by MGN of Mr Grisbrook’s photographs in its various publications and not on whether he should be able to control the exploitation by MGN of its own copyright in the published editions. As mentioned earlier, the 1998 action was principally a claim to recover unpaid licence fees and the second action was concerned only with the use of Mr Grisbrook’s photographs on the mirrorpix.com website. Although (as became apparent during the hearing) that did contain some scans of front pages, that fact was largely ignored by Mr Grisbrook’s advisers in formulating his case in these proceedings. Complaint was, of course, made in June 2000 about eight images on the website, six of which were identified as front pages. But no distinction was drawn on either side between those items and the other photographs listed in the various schedules supplied by Mr Grisbrook’s solicitors prior to the making of the consent order.

[46]Mr Grisbrook attaches some importance to the fact that his solicitors flagged up the existence of the front pages in their seventh schedule and that MGN decided to remove them from the mirrorpix.com website. But I do not regard this as of any real significance either way. The idea of marketing complete copies of published newspapers in the arcitext.com andmirrorarchive.co.uk format was still some way ahead and I accept that Mr Collier-Wright and MGN’s other advisers took what they regarded as a pragmatic decision in removing the front pages from mirrorpix.com and subsequently from mydailymirror.com. It is not possible on the evidence to regard this conduct as constituting either an admission of Mr Grisbrook’s case in these proceedings or a specific consideration which they took into account when agreeing to the terms of the consent order.

[47]But it would, I think, be equally unrealistic to treat the absence of any consideration of the problem inherent in the inclusion of Mr Grisbrook’s photographs in already published editions as the basis for an unduly restrictive construction of the order. Mr Evans of Kerman & Co (MGN’s solicitors) has made a witness statement in which he confirms Mr Collier-Wright’s explanation of what were regarded as the principal issues to resolve in the litigation. There was, he says, no suggestion that archived copies of previously published newspapers should be edited so as to exclude Mr Grisbrook’s photographs.

[48]I accept that the particular issue which has become central to this application with the advent of arcitext.com and mirrorarchive.co.uk was not under consideration at the time of the order but that is not sufficient to justify a construction of the undertaking which excludes the use which MGN wishes to make of Mr Grisbrook’s material from the ambit of the order. It simply explains why no specific provision was made to cater for it.

[49]The schedule to the order sets out the steps which were to be taken to identify and delete Mr Grisbrook’s photographs from MGN’s picture libraries. What the background to the order does demonstrate is that the reference to photographs in paragraph 3 of Schedule 1 was not intended to cover photographs contained in archived copies of previously published editions. 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. What he objects to is its attempt to make commercial use of the database. Mr Wilson QC therefore accepted that the licence granted to MGN to publish the photographs on payment of a fee must, by implication, extend to the retention of copies for record purposes. This explains why paragraphs 2 and 3 of Schedule 1 refer to the removal of hard copies of photographs, negatives and transparencies and the deletion of their equivalent from FastFoto or any other electronic storage system. Paragraph 5 has to be given a consistent meaning and therefore terminates MGN’s original licence to continue to use the photographs in subsequent editions. Again it does not extend to what Mr Evans described as the mutilation of stored copies of published editions containing the same photographs.

[50]But paragraph 6 of Schedule 1 and the undertaking itself are not so limited. They appear to have been drafted in deliberately general terms to cover possible further infringements of the claimant’s copyright and I can see no basis for giving the undertaking a more restrictive meaning than paragraph 6. On its face, it covers any future infringement of the claimant’s copyright in any of his photographs. MGN’s case is that I should construe this so as to exclude an infringement involving the reproduction of previously published editions containing such photographs. As a matter of language, that would only be possible by implying an additional proviso to that effect. But, given that neither side and certainly MGN had this problem in mind in 2002, it seems difficult to me to justify the inclusion of such a term into what is otherwise a clear and unfettered obligation. Similarly, I reject the suggestion that the parties intended the content of the undertaking to be fixed by reference to the law as it stood in December 2002. That also seems to me unrealistic. Undertakings in this general form are commonly given to resolve disputes about copyright. Absent express words, the parties must, I think, be taken to have their conduct governed by whatever changes in the 1988 Act are subsequently made. In the present case this means that the undertaking includes conduct which would be an infringement of copyright by virtue of the provisions of s.20 of the 1988 Act. The real issue therefore between the parties is whether the operation of arcitext.com and mirrorarchive.co.uk amounts to an infringement of Mr Grisbrook’s copyright in the photographs which the newspapers contain. This is something to be determined as a question of principle unaffected by the steps previously taken in relation to the front pages on the other two websites complained of.

Infringement

[51]The principal allegations of infringement made in respect of mydailymirror.com; arcitext.com; and mirrorarchive.co.uk are the copying of Mr Grisbrook’s photographs on to the database of each website and the communication of the work to the public. Section 16 of the 1988 Act provides that: “16The acts restricted by copyright in a work(1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom— (a) to copy the work (see section 17); (b) to issue copies of the work to the public (see section 18); (ba) to rent or lend the work to the public (see section 18A); (c) to perform, show or play the work in public (see section 19); (d) to communicate the work to the public (see section 20); (e) to make an adaptation of the work or do any of the above in relation to an adaptation (see section 21); and those acts are referred to in this Part as the “acts restricted by the copyright”.

(2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright. ….” (a) to copy the work (see section 17); (b) to issue copies of the work to the public (see section 18); (ba) to rent or lend the work to the public (see section 18A); (c) to perform, show or play the work in public (see section 19); (d) to communicate the work to the public (see section 20); (e) to make an adaptation of the work or do any of the above in relation to an adaptation (see section 21); and those acts are referred to in this Part as the “acts restricted by the copyright”.

[52]Copying includes the storage of the work in any medium by electronic means: see s.17(2). Section 20 of the 1988 Act makes the communication to the public of the work an act restricted by the copyright. Communication of the work to the public includes making it available by electronic transmission in such a way that members of the public may access it from a place and at a time individually chosen by them: see s.20(2).

[53]The starting point must therefore be to consider whether the licence which Mr Grisbrook undoubtedly gave to MGN to use his photographs in their newspapers extended to the storage of and access to his work provided by arcitext.com and mirrorarchive.co.uk websites. The same issue arises in respect of mydailymirror.com although, as mentioned earlier, all the offending front pages were removed from the website following complaints by Mr Grisbrook’s solicitors.

[54]For convenience, I will refer to the three websites collectively as the back numbers websites. As indicated earlier, Mr Grisbrook does not dispute that MGN was granted and has retained a licence to store full copies of back numbers of the Daily Mirror in electronic form. There has been no real examination on this application of the extent to which the three websites share a common database. The evidence of Mr Fergus McKenna, the marketing manager of the Licensing and Syndication Division of MGN, is that MGN has for many years stored archived hard copies of its newspapers and microfiched copies of complete editions for each day of publication since 1903. This material has always been available to journalists with MGN and access is also granted to professional researchers for a fee.

[55]Print overruns are delivered to a commercial organisation (Historic Newspapers) and are available for purchase by the general public. MGN also deposits copies of its publications with the British Library under the Legal Deposit Libraries Act 2003. The British Library archive is stored at Colindale and public access is free.

[56]Mr Grisbrook’s case is that at the time when he was supplying photographs to MGN no-one had in mind the possibility of the Daily Mirror being able to market back editions through a website. 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. 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.

[57]It is not possible on the evidence to distinguish between the copying and retention of copies of back numbers on a database for archive purposes and the use of the same process as a preparatory step towards the operation of the back numbers database. Mr Grisbrook’s acceptance that MGN had a licence to create such a database for archive purposes really disposes of the issue of copying in relation to this application. But even had no concession been made, I would have reached the same conclusion. Mr Grisbrook and other freelance photographers were obviously aware that MGN, like any other newspaper publisher, would retain an archive of published editions. At the time he supplied his photographs this was done in the form of hard copies and microfiche. No photographer could have intended to retain a veto on the newspaper’s ability to store back editions in a safe and effective way and this licence would, in my judgment, have extended to any forms of new technology available from time to time for that purpose. It would therefore 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.

[58]Mr Grisbrook’s evidence is that there were very few express terms of the oral contract between him and MGN. As described earlier, Mr Grisbrook never sat down and spelt out to MGN the terms upon which he was prepared to allow them to use his photographs. The terms of the licence have therefore to be determined as a process of implication from the course of dealing between the parties. From that it is clear that he gave MGN a licence to publish any of his photographs submitted to them on payment of a fee. As further fee was payable in the event of any further publication of the photograph in a later edition. In the meantime, MGN had his consent to retain and store the photographs in their picture library which, in time, came to include a digital library.

[59]The licence to make use of the photographs in future publications was clearly terminable and, as indicated, it is common ground that this licence has been effectively terminated by the agreement scheduled to the consent order. But MGN’s case about the licence to make further use of already published editions containing Mr Grisbrook’s work proceeds upon the more fundamental assumption that the original licence covered not only the publication of the photographs in the edition in which they appeared but also any form of reproduction of those published editions. If this is right and the licence and fee paid under it granted an omnibus right of this kind then it was not terminable unilaterally by Mr Grisbrook. He has, on MGN’s case, already been paid for any use of the photograph as part of the published edition and cannot now prevent such use.

[60]The fact that nothing was expressly agreed about the future publication of back numbers containing Mr Grisbrook’s photographs has led the parties to adopt different approaches to the determination of the scope of the licence. Mr Wilson contends that silence has to be equated with the absence of any consent for what is now proposed. Mr Barker, on the other hand, relies on the fact that no precise limits were set to what use could be made of back numbers as support for the view that the licence was not limited to the inclusion of the photographs in the edition when printed but would include any future publication of the same edition.

[61]When approaching the question of the terms of the licence it is, I think, useful to bear in mind what rights Mr Grisbrook as the owner of the copyright in the photographs had. Even before the introduction of what is now s.20, he had (and still has) the exclusive right to copy his work (see s.16(1)(a)) and to issue copies of it to the public (s.18). MGN therefore needed his consent not merely to the publication of his work in the edition in which it appeared but to its inclusion in any further reproduction of that edition. The licence would clearly have covered any further print run of the relevant edition but Mr Grisbrook disputes any suggestion that it went further than that. On this point he is at odds with Mr Ives and Mr Lennox, both of whom have expressed the view that standard industry practice was for photographers not to ask for further fees in respect of rag outs.

[62]Mr Wilson relied on the decision of Lightman J in Robin Ray v Classic FM PLC

[1998] FSR 622

which concerned the right of Classic FM to licence the use of the music database which had been created with the assistance of the claimant. He claimed copyright in five documents and a catalogue which were reproduced in the database. His consultancy agreement with Classic FM dealt only with the use of the database in the UK. The defendant then copied and licensed the use of the database to various foreign radio stations claiming, inter alia, an implied licence to do so.

The Judge approached this issue on what he described as a minimalist basis:

[63]“(4) the law governing the implication of terms in a contract has been firmly established (if not earlier) by the decision of the House of Lords in Liverpool City Council v. Irwin

[1977] AC 239

("Liverpool"). In the words of Lord Bingham MR in Philips Electronique v. BSB [1995] EMLR 472 ("Philips") at 481, the essence of much learning on implied terms is distilled in the speech of Lord Simon of Glaisdale on behalf of the majority of the Judicial Committee of the Privy Council in BP Refinery (Westernport) Pty Ltd v. The President, Councillors and Ratepayers of the Shire of Hastings (1978) 52 ALJR 20 at 26: "Their Lordships do not think it necessary to review exhaustively the authorities on the implication of a term in a contract which the parties have not thought fit to express. In their view, for a term to be implied, the following conditions (which may overlap) must be satisfied: (1) it must be reasonable and equitable; (2) it must be necessary to give business efficacy to the contract, so that no term will be implied if the contract is effective without it; (3) it must be so obvious that ‘it goes without saying’; (4) it must be capable of clear expression; (5) it must not contradict any express term of the contract." Lord Bingham added an explanation and warning: "The courts’ usual role in contractual interpretation is, by resolving ambiguities or reconciling apparent inconsistencies, to attribute the true meaning to the language in which the parties themselves have expressed their contract. The implication of contract terms involves a different and altogether more ambitious undertaking: the interpolation of terms to deal with matters for which, ex hypothesi, the parties themselves have made no provision. It is because the implication of terms is so potentially intrusive that the law imposes strict constrains on the exercise of this extraordinary power.... The question of whether a term should be implied, and if so what, almost inevitably arises after a crisis has been reached in the performance of the contract. So the court comes to the task of implication with the benefit of hindsight, and it is tempting for the court then to fashion a term which will reflect the merits of the situation as they then appear. Tempting, but wrong." (5) where (as in the present case) it is necessary to imply the grant of some right to fill a lacuna in the contract and the question arises how this lacuna is to be filled, guidance is again to be found in Liverpool. The principle is clearly stated that in deciding which of various alternatives should constitute the contents of the term to be implied, the choice must be that which does not exceed what is necessary in the circumstances (see Lord Wilberforce at p.245 F-G). In short a minimalist approach is called for. An implication may only be made if this is necessary, and then only of what is necessary and no more; (6) accordingly if it is necessary to imply some grant of rights in respect of a copyright work, and the need could be satisfied by the grant of a licence or an assignment of the copyright, the implication will be of the grant of a licence only; … (8) if necessity requires only the grant of a licence, the ambit of the licence must be the minimum which is required to secure to the Client the entitlement which the parties to contract must have intended to confer upon him…. (9) the licence accordingly is to be limited to what is in the joint contemplation of the parties at the date of the contract, and does not extend to enable the Client to take advantage of a new unexpected profitable opportunity.” "Their Lordships do not think it necessary to review exhaustively the authorities on the implication of a term in a contract which the parties have not thought fit to express. In their view, for a term to be implied, the following conditions (which may overlap) must be satisfied: (1) it must be reasonable and equitable; (2) it must be necessary to give business efficacy to the contract, so that no term will be implied if the contract is effective without it; (3) it must be so obvious that ‘it goes without saying’; (4) it must be capable of clear expression; (5) it must not contradict any express term of the contract." "The courts’ usual role in contractual interpretation is, by resolving ambiguities or reconciling apparent inconsistencies, to attribute the true meaning to the language in which the parties themselves have expressed their contract. The implication of contract terms involves a different and altogether more ambitious undertaking: the interpolation of terms to deal with matters for which, ex hypothesi, the parties themselves have made no provision. It is because the implication of terms is so potentially intrusive that the law imposes strict constrains on the exercise of this extraordinary power.... The question of whether a term should be implied, and if so what, almost inevitably arises after a crisis has been reached in the performance of the contract. So the court comes to the task of implication with the benefit of hindsight, and it is tempting for the court then to fashion a term which will reflect the merits of the situation as they then appear. Tempting, but wrong."

[64]Although the law on implied terms has recently been considered by the Privy Council in Attorney General of Belize v Belize Telecom Limited

[2009] UKPC 10

, there is nothing, I think, in that judgment which undermines this statement of principle in a case where no relevant express terms have been agreed.

[65]It seems to me that the approach of Lightman J is consistent with the fact that any licence represents a derogation from or relaxation of the copyright owner’s statutory rights. It must therefore be for the defendant to justify (absent express agreement) the basis for extending the licence to cover what would otherwise be separate acts of infringement. Although that test is, in my judgment, satisfied in respect of the compilation of the database and its use for archive purposes, its 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. 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.

The Canadian decision

[66]I can deal with this point quite shortly. The issue in Robertson v The Thomson Corporation was whether the writer of a freelance article published in a newspaper could prevent its subsequent inclusion on a website and in some CD-ROMS. The Supreme Court of Canada was divided as to whether the website and the CD-ROMS constituted the reproduction of the defendant’s collective work (i.e. the newspaper) in which it had copyright. But all members of the court appear to have proceeded on the assumption that the publishers could market further copies of their original collective work free from any claims of infringement by the contributors. The only issue was whether they had done so.

[67]The concept of a “collective work” (as opposed to a compilation) is not a feature of the 1988 Act and there may be provisions in the Canadian Act which give such works a measure of special protection. But the decision is, I think, inconsistent with English law which, so far as I am aware, has never treated copyright in a compilation as providing a defence to a claim for infringement brought by someone whose own copyright material has been included without his consent. The rights of copyright owners are governed by the 1988 Act and there is nothing in the Act which limits the rights under s.16 of someone in the position of Mr Grisbrook in the event that his work is included in a newspaper or other compilation. He retains the exclusive right to copy the work save to the extent that he licenses the publishers to do so. MGN are not therefore assisted by the Canadian decision.

Public interest

[68]Chapter III of the 1988 Act contains a number of provisions which prevent certain activities from being an infringement of copyright. These exclusions include the exemption for fair dealing; educational use; and libraries and archives. Sections 38-43 contain detailed provisions governing copying by libraries for the benefit of persons carrying out research for a non-commercial purpose or for private study. These apply to what are referred to as prescribed libraries or archives which satisfy the criteria set out in regulation 3 of the Copyright (Libraries and Archivists) (Copying of Copyright Material) Regulations 1989 SI 1989 No. 1212.

[69]MGN accepts that it is not and does not run a prescribed library within the meaning of the 1988 Act and cannot therefore take advantage of these provisions which were introduced to give effect to EC Directive 2001/29. The existence of these provisions is, however, relevant to its contention that it should be entitled to rely on a public interest defence in answer to the claim that it has infringed Mr Grisbrook’s copyright.

[70]I have some doubts as to whether this point is really open to MGN given that in 2002 it voluntarily offered an undertaking not to infringe the claimant’s copyright. But that aside, it is difficult to see how MGN’s desire to make the back numbers database publicly available for a fee can be said to override the legitimate interest of the claimant in protecting his own copyright.

[71]Recent decisions have emphasised that it is impossible to set precise bounds to the defence of public interest in this context: see Ashdown v Telegraph Group Limited

[2002] Ch 149

. But, in this case, MGN relies on the right to freedom of expression under

Article 10 of the Convention

as a justification for not enforcing the claimant’s rights. The difficulty about this is that Parliament (in order to implement the Directive) has already made extensive provision for ensuring copyright material of this kind is available to researchers and private users through the medium of a prescribed library. MGN could establish such a library if it wished to do so but could not operate it as a commercial enterprise. Back numbers of the papers are also available for inspection in the British Library and other legal deposit libraries. In these circumstances, Mr Grisbrook’s refusal to consent to the operation of the back numbers websites cannot in my view be treated as an infringement of any relevant Convention values. The balance between his rights and that of other copyright owners in the same position has been struck by Chapter III of the 1988 Act.

Contempt

[72]To be a contempt the defendant’s conduct must be intentional and the act complained of must be done with knowledge of all the facts which make it a breach of the order. It is not, however, necessary to prove that the defendant knows it is a breach of the order. In the case of the 13 photographs found on mirrorpix.com, that was, at most, a technical breach of the order which was remedied once the problem caused by the re-population issue had been recognised. Mr Wilson criticises MGN for their delay in tackling the problem but the breach had been remedied over two years before this application was issued and did not justify an application to commit. I propose therefore to take no further action in respect of that complaint.

[73]The position with respect to the three back number websites is more complicated. Although, as I have found, their operation does constitute an infringement of Mr Grisbrook’s copyright, this is an important and by no means straightforward point of law on which MGN, on advice, was entitled to take a different view. Although MGN was prepared to limit the scope of what was sold on mydailymirror.com in response to Mr Grisbrook’s complaints, it has taken a stand in respect of the other two sites. The fact that its motivation is in part commercial does not detract from the importance of what is in issue.

[74]I take the view that disputes of this kind should not be resolved through the medium of committal proceedings. This is not a point which featured in the two actions that led to the consent order and it should have been resolved in ordinary proceedings to determine whether an infringement was involved in the operation of the websites.

[75]The dangers inherent in generally worded injunctions or undertakings not to infringe a patent or copyright have long been recognised. They can often lead to a further round of litigation in order to determine whether an infringement has occurred. The resolution of this issue in the context of a committal application was described by Romer LJ in Multiform Displays v Whitmarley Displays

[1956] RPC 143

at page 158 as highly inconvenient. In the House of Lords (

[1957] RPC 260

) Viscount Simonds (at page 262) said this:

"Thus it is, my Lords, that upon what was a motion for sequestration and committal your Lordships are asked to try an action for infringement of a patent, and, inconvenient though such a procedure may be, it cannot be denied that there is ample precedent for it, nor that in certain cases it may be an expeditious way in which patentees can enforce their established rights. It may, nevertheless, well be doubted whether in the present case it would not have been a better course if advantage had been taken of the facilities offered by Sec. 66 of the Patents Act, 1949, to have the issue of infringement tried in proceedings unattended by threats of committal and sequestration."

[76]The corollary to this is that a respondent who on advice and in good faith maintains that the conduct complained of does not amount to an infringement should not ordinarily be penalised by a fine or sequestration in the event of failure merely because the applicant has chosen to use committal proceedings rather than to bring an ordinary claim in order to resolve the infringement issue.

[77]Although my decision is that the operation of the back numbers websites does infringe Mr Grisbrook’s copyright in his photographs, those rights can be adequately protected by a declaration to that effect. This is not a case where there has been any deliberate or conscious non-compliance with the consent order and I do not therefore propose to take any further action in respect of the breach of the undertaking which it contains. I will hear Counsel further on the question of costs and the form of the order.

order

it is said that the claims in both actions which were compromised under the terms of the order centred on the past and future use of Mr Grisbrook’s photographs and sought to prevent MGN from making further unauthorised use of any photographs which remained in their possession. It was not intended to deal with the reproduction of those photographs as part of already published newspapers which was something which largely post-dated the making of the order. The undertaking should therefore be construed so as not to include that use of the claimant’s material if it would otherwise amount to an infringement of his copyright; (ii) that even if the undertaking is unlimited and includes infringements of copyright as a result of subsequent amendments to the 1988 Act (i.e. s.20), no act of infringement has or can take place in this case in relation to the past or proposed use of the photographs as part of published material on the mydailymirror.com; arcitext.com and mirrorarchive.co.uk websites. This is because the licence granted by Mr Grisbrook to permit publication of his photographs in those editions of the newspaper must be treated as extending to any subsequent reproduction or use of the published material that would otherwise be an infringement of copyright. This includes not only the archiving of the material on an electronic database but also making it publicly available to paying subscribers. Consistently with this, the licence must be regarded as irrevocable; (iii) that, regardless of the contractual position between Mr Grisbrook and MGN in respect of the licence, the inclusion of his otherwise copyright material in the published newspaper had the effect of disentitling him from asserting his own copyright in a way that was inconsistent with the exploitation of the defendants’ own copyright in the collective work. Mr Barker QC submitted that MGN’s copyright was effective, as he put it, to trump that of Mr Grisbrook. He relied on the decision of the Supreme Court of Canada in Robertson v The Thomson Corporation [2006] SCC 43 where two freelance contributors to a Canadian newspaper failed to prevent their publication on a website containing already published material from past editions of the newspaper; and (iv) that even if the reproduction of the claimant’s photographs as part of previously published works would be an infringement of his copyright and a breach of the undertaking, MGN is entitled to rely on the defence of public interest preserved by s.171(3) of the 1988 Act. The construction of the order