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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Getty Images (US) Inc & Ors v Stability AI Ltd [2025] EWHC 38 (Ch) (14 January 2025) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2025/38.html Cite as: [2025] EWHC 38 (Ch) |
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BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTDUAL PROPERTY (ChD)
Rolls Building Fetter Lane, London, EC4A 1NL |
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B e f o r e :
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(1) ![]() ![]() (2) ![]() ![]() (3) ![]() ![]() (4) ![]() ![]() (5) ISTOCKPHOTO LP (6) THOMAS M BARWICK INC |
Claimants |
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Defendant |
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Mr Nicholas Saunders KC, Mr Henry Edwards and Mr Edward Cronan (instructed by Bird & Bird LLP) for the Defendant
Hearing dates: 14, 15 and 26 November 2024
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Crown Copyright ©
Mrs Justice Joanna Smith:
Background to the Application
a. first, a claim of copyright infringement arising from the Claimants' allegation that during the development and training of Stable Diffusion, the Content including the Claimants' Copyright Works, was downloaded on servers and/or computers in the United Kingdom ("the Training and Development Claim");
b. second, a claim of secondary infringement of copyright said by the Claimants to arise by reason of the importation of an "article", namely the pre-trained Stable Diffusion software, into the UK ("the Secondary Infringement Claim"); and
c. third, a claim that the output of Stable Diffusion in the form of synthetic images (accessed by users in the United Kingdom) is also itself infringing in that it reproduces a substantial part of the Copyright Works ("the Output Claim"[1]).
"…the class of persons represented by the Sixth Claimant are those who are owners of the copyright subsisting in artistic works and film works that have been licensed on an exclusive basis to the First Claimant, the copyright in which has been infringed by the Defendant. The persons that fall within such class can be identified on the basis that (i) they have entered into an exclusive licence with the First Claimant in respect of artistic works and/or film works; and (ii) the exclusively licensed works include works which were used to train Stable Diffusion, as alleged in paragraph 34 of the Particulars of Claim".
"…all those remedies relating to copyright claimed in the prayer for relief of the Particulars of Claim, including an inquiry as to damages, on the basis of the Defendant's acts of copyright infringement in respect of works in which the Represented Parties own the copyright and have licensed the same on an exclusive basis to the First Claimant".
Procedural Developments
The Hearing of the Application
Relevant Legal Principles
"Rights and remedies of exclusive licensee.
(1) An exclusive licensee has, except against the copyright owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.
(2) His rights and remedies are concurrent with those of the copyright owner; and references in the relevant provisions of this Part to the copyright owner shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the copyright owner."
"A licence in writing signed by or on behalf of the copyright owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner."
"Exercise of concurrent rights
(1) Where an action for infringement of copyright brought by the copyright owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the copyright owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.
(2) A copyright owner or exclusive licensee who is added as a defendant in pursuance of subsection (1) is not liable for any costs in the action unless he takes part in the proceedings."
"(1) All persons jointly entitled to the remedy claimed by a claimant must be parties unless the court orders otherwise.
(2) If any person does not agree to be a claimant, he must be made a defendant, unless the court orders otherwise."
"(1) Where more than one person has the same interest in a claim –
(a) the claim may be begun; or
(b) the court may order that the claim be continued, by or against one or more of the persons who have the same interest as representatives of any other persons who have that interest.
(2) The court may direct that a person may not act as a representative.
(3) Any party may apply to the court for an order under paragraph (2).
(4) Unless the court otherwise directs any judgment or order given in a claim in which a party is acting as a representative under this rule –
(a) is binding on all persons represented in the claim; but
(b) may only be enforced by or against a person who is not a party to the claim with the permission of the court".
a. The rule was devised in recognition of the fact that it is not always practically convenient to join all interested persons as parties to an action, particularly if they are numerous. Instead of abandoning theaim
of settling the rights of all interested persons in a single proceeding, the rule allows one or more claimants or defendants to represent all others who have the same interest as them. All persons represented in this way are bound by the court's decision. (See Lloyd v Google at [34] and Commission Recovery at [27]).
b. The development of digital technologies has added to the potential for mass harm for which legal redress may be sought. In such cases
"it is necessary to reconcile, on the one hand, the inconvenience or complete impracticality of litigating multiple individual claims with, on the other hand, the inconvenience or complete impracticality of making every prospective claimant (or defendant) a party to a single claim. The only practical way to 'come at justice' is to combine the claims in a single proceeding and allow one or more persons to represent all others who share the same interest in the outcome. When trying all the individual claims is not feasible, the adages of Lord Eldon quoted by Lord Macnaghten in Duke of Bedford v Ellis [1901] AC 1 remain as pertinent as ever: that it is better to go as far as possible towards justice than to deny it altogether and that, if you cannot realistically make everybody interested a party, you should ensure that those who are parties will 'fairly and honestly try the right'". (Lloyd v Google at [67]).
c. Thus the representative rule should be treated as "a flexible tool of convenience in the administration of justice" and "applied to the exigencies of modern life as occasion requires" (Lloyd v Google at [68]).
d. There is no limit under the rule to the number of people who may be represented. The only jurisdictional requirement is that the representative "has the same interest" in the claim as the person(s) represented (Lloyd v Google at [69] and Commission Recovery at [29]).
e. The 'same interest' requirement must be interpreted purposively in light of the overriding objective and the rationale for the representative procedure (Lloyd v Google at [71]). In practice this means that it is enough that there is a common issue (or issues) such that the representative can be relied on to conduct the litigation in a way that will effectively promote and protect the interests of all members of the represented class. That is not possible where there is a conflict of interest between class members, i.e. where an argument which would advance the cause of some members would prejudice the position of others; but it is no impediment if the class members merely have divergent interests, i.e. where an issue may affect only some class members but advancing their case will not prejudice the position of others in the class (Lloyd v Google at [71-72] and Commission Recovery at [29]).
f. It is no impediment that the members of the class all technically have separate causes of action: "[t]he requirement is that they have the same interest in a claim in the sense of a common interest in one or more issues, not in the sense of a joint claim" (Commission Recovery at [30]). However, the claims of all members of the represented class must "stand or fall on the determination of the claims of the representatives". The alternative is the risk of "a form of 'rolling' representative action, where (at least potentially) no represented party was bound by the court's determination of anyone else's claim" (Jalla at [60]-[61]).
g. It is a general principle that membership of the class "should not depend on the outcome of the litigation" (see Emerald Supplies Ltd v BritishAirways
Plc [2011] Ch 345 per Mummery LJ at [62]-[63] and [65] and Lloyd v Google at [56] and [78]). However, it does not matter that the number and identities of the represented parties are difficult or impossible to ascertain, or that the class is a fluctuating one (see Duke of Bedford v Ellis [1901] AC 1 per Lord Macnaghten at page 11 and Lloyd v Google at [78]).
h. Where the same interest requirement is satisfied, the court has a discretion whether to allow a claim to proceed as a representative action. In exercising its discretion, the court must give effect to the overriding objective of dealing with cases justly and at proportionate cost (see CPR r.1.1(2)). Many of the considerations specifically included in that objective "are likely to militate in favour of allowing a claim, where practicable, to be continued as a representative action rather than leaving members of the class to pursue claims individually" (Lloyd v Google at [75]).
i. Relevant to the exercise of the court's discretion is the adequacy of the definition of the class of persons represented (Lloyd v Google at [78]).
j. It is primarily a matter for the claimant who wishes to act as a representative to identify the class which he wishes to represent (see Commission Recovery at [41]).
k. There is no requirement for consent, only community of interest. Thus "there is ordinarily no need for a member of the represented class to take any positive step, or even to be aware of the existence of the action, in order to be bound by the result" (Lloyd v Google at [77]).
l. The representative action finds its simplest application in claims for declaratory relief. All that is needed is for the declaration to be worded so that it applies not just to the representative claimant but to all those represented (Commission Recovery at [31]).
m. The fact that the relief sought is monetary is "not a bar" to a representative claim but what limits the scope for claiming damages in such an action is that the assessment of damages will ordinarily depend on the position of each individual claimant, which is something that usually necessitates an individualised assessment raising no common issue and requires participation of the individuals concerned. A representative action is not a suitable vehicle for such an exercise. (See Lloyd v Google at [80] and Commission Recovery at [32]).
n. In cases where damages would require individual assessment, there may nevertheless be advantages in terms of justice and efficiency in adopting a bifurcated process – as was done in Prudential Assurance Co Ltd v Newman Industries Ltd [1981] Ch 229 – whereby common issues of law or fact are decided through a representative claim, leaving any issues which require individual determination (whether they relate to liability or the amount of damages) to be dealt with at a subsequent stage of the proceedings. (See Lloyd v Google at [47]-[48] and [81]). At [84] Lord Leggatt observes that he could see no legitimate objection to a bifurcated process in Lloyd v Google itself.
o. Although claims for damages normally require an individualised assessment, and hence a bifurcated process, there may be cases in which that is not necessary – for example where the entitlement to damages can be calculated on a basis that is common to all the members of the class (see Lloyd v Google at [82] and Commission Recovery at [36]).
a. Whether the Defendant has committed acts of secondary infringement of copyright by importing Stable Diffusion into the UK, otherwise than for private and domestic use, and/or possessing Stable Diffusion in the course of its business, or selling or letting it for hire, or offering or exposing it for sale or hire, in circumstances where artistic and/or film works were downloaded, stored or copied during the training and development of Stable Diffusion;
b. Whether the Defendant has committed acts of primary infringement of copyright by downloading, storing or copying artistic and/or film works in the UK during the training and development of Stable Diffusion; and
c. Whether the Defendant has committed acts of primary infringement of copyright by authorising the reproduction and/or communication to the public of a substantial part of artistic and/or film works by users of the image-to-image feature of Stable Diffusion in the UK.
Application of the principles to this case
Do the claims of the members of the class raise a common issue or issues?
"…the class of persons represented by the Sixth Claimant are those who are owners of the copyright subsisting in artistic works and film works that have been licensed on an exclusive basis to the First Claimant, the copyright in which has been infringed by the Defendant. The persons that fall within such class can be identified on the basis that (i) they have entered into an exclusive licence with the First Claimant in respect of artistic works and/or film works; and (ii) the exclusively licensed works include works which were used to train Stable Diffusion…".
78. Indeed Bond 6 makes clear that the Defendant's admissions "do not extend to admissions that one or more of the works of each of the 50,000 (of unknown identity) authors that have licensed content to the First Claimant has been used to train Stable Diffusion". Mr Bond goes on to explain that different filters were applied to produce each of the LAION-Subsets created during the training of Stable Diffusion. Thus, he says that "whether or not a given work was actually used to train Stable Diffusion would be wholly dependent on its own facts". This is consistent with the Amended Defence which pleads (at paragraph 64.5) that "[t]he particular images used will depend on the starting dataset and the filters applied to it for each training run". Mr Bond says that, in the circumstances "[t]he Claimants would need to establish that one or more works of each author were in fact (i) downloaded; (ii) by the Defendant; and (iii) in the UK". He observes that "[t]his is not something which can be established for a whole class of licensors and a myriad of works by considering the works of just one allegedly representative…licensor".
80. As Mr Rose also points out, however, the subset of Copyright Works used to train Stable Diffusion is a matter within the Defendant's own knowledge and, to date, it has failed to identify how many images from the Getty
Images Websites were in fact used to train Stable Diffusion and which images those were. This state of affairs has led to the Claimants raising the following proposed disclosure issues in the DRD, namely: "8. How was Stable Diffusion trained, including…How many Visual Assets and Copyright Works were used in the training of Stable Diffusion 1.0 [and Stable Diffusion 2.0 and Stable Diffusion XL]". This issue (which maps on to the Claimants' proposed issues for trial and is disputed) was on the list of matters also to be dealt with, time permitting, at the hearing of the Application. As drafted, it does not, of course, address the question of which Copyright Works were in fact used to train Stable Diffusion. However, in their skeleton argument for the Resumed Hearing, the Claimants asserted that if the court were to accept the Defendant's complaint that it is not possible to identify people whose exclusively licensed Copyright Works were used to train Stable Diffusion, then "the Claimants would need disclosure not only of how many works were used in training, but which ones" (emphasis added).
86. As things stand I certainly cannot be satisfied that the representative claim will remove the need for an expensive and time consuming individualised assessment of numerous issues of liability and quantum relating to the proposed Represented Parties, or that this will not also create a very significant case management burden for the court. In this context I note that during her submissions Ms Lane said this: "following the trial on liability you would have to work out potentially the membership of the class, the question of ownership and then would proceed to determine the question of relief and have the damages inquiry and so on" – an observation which rather makes my point. Of course, one way of addressing this issue might be by way of an appropriate sampling regime, together with cooperation between the parties over how any such regime could be extrapolated across the universe of potential claimants (or an appropriate order from the court). Indeed, Ms Lane immediately went on to say that even though "there would be more going on after the trial…you would still expect that that would happen by way of sample". However, there are of course no concrete proposals as to this at present and thus no means of knowing whether extrapolation across a particular class is likely to be viable.
CPR 19.3
The Terms of the Order
Conclusion
122. It is not for the court to tell the Claimants how they should proceed, but I merely observe that at the heart of this debate lies a very simple issue as to the apportionment of risk. If they are to convince the court to make a CPR r.19.3 order the Claimants will need to satisfy it that there is no risk to the Defendant of future claims. If, as they say, there really is no risk of future claims because the wording of the relevant clauses is clear, it is difficult to see what possible downside there could be to Getty
taking that risk by the provision of the proposed, or a similar, undertaking – even if it be purely by reference to an identified subset of agreements. I note Mr Saunders' indication that: "if their case is they can do the whole thing without recourse to these parties because they are not people entitled to the remedy in themselves, following the licence agreements they have executed, then…we do not care. Off we go with
Getty". Accordingly it would appear that, subject to appropriate comfort being provided, the Defendant would be inclined to consent to an order under CPR r.19.3.
Note 1 The Output Claim also involves a claim of database right infringement in relation to the Database (as defined in the APoC) by way of certain synthesised image outputs of Stable Diffusion. However, for present purposes the reference to the Output Claim is only to the Copyright Infringement Claim as identified here. [Back] Note 2 The representative claim has been included in the Particulars of Claim since 12 May 2023. [Back] Note 3 The Sample Works were unchanged in the RAPoC. [Back] Note 4 These were first said to be “representative” of a wider infringement, then they were said to be “examples” and now it is accepted that the 17 Copyright Works are the only works on which the Claimants intend to rely to prove the text prompts claim. [Back] Note 5 In their skeleton for the Resumed Hearing, the Claimants suggested that obtaining undertakings for the purposes of the Secondary Infringement Claim, the image prompts claim and the Training and Development Claim would be “entirely disproportionate” owing to the number of exclusive licensors involved. There was no similar submission in relation to the text prompts and the image plus text prompts claims. [Back]