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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Grisbrook v MGN Ltd & Ors  EWHC 2520 (Ch) (16 October 2009)
Cite as:  EWHC 2520 (Ch)
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Strand, London, WC2A 2LL
B e f o r e :
| ALAN GRISBROOK
|- and -
SCOTTISH DAILY RECORD AND SUNDAY MAIL LIMITED
SYNDICATION INTERNATIONAL LIMITED
Simon Barker QC and Gregory Banner (instructed by Kerman & Co LLP) for the First Defendant
Hearing dates: 26th and 27th November 2008; 8th, 9th and 10th July 2009
Crown Copyright ©
Lord Justice Patten :
"… 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."
"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."
(iii) arcitext.com; mirrorarchive.co.uk
(i) the construction of the consent 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  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
"16 The 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.
"(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  AC 239 ("Liverpool"). In the words of Lord Bingham MR in Philips Electronique v. BSB  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."
The Canadian decision
"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."