Publications
European IP Bulletin, Issue 5, October -
Copyright
Copyright
The Copyright Licensing Authority (CLA) and the United Kingdom Media Monitoring Association (UKMMA) (a trade body representing the interests of press cuttings agencies) have developed terms of a generic licence that will facilitate the delivery of press cuttings by cutting agencies to their clients, while respecting the interests of copyright owners.
The Press Cutting Agencies Licence allows such agencies to digitise copyright material or to use specific technology to search for keywords that can be used to create cuttings. These products can then be distributed to clients in a number of ways; by password‑protected web services, e-mail, fax, or hard copy.
The generic licence will act in tandem with the new CLA business licence. The new business licence provides for internal electronic distribution rights for scanned material received from a cutting agency with a CLA Licence. While the work to date only concerns UK publications, it is expected that material from other territories will soon be available to use and licence in this manner.
This development can be viewed as an interesting response to the difficulties inherent in the commercial activities of information providers when undertaken on-line.
The collaboration between the CLA and the UKMMA ensures that the chain of individuals involved in the press cutting industry will be acting in a manner that respects copyright owners at every level. The cutting agencies themselves will be fully licensed and able to benefit from the increased efficiency available with on‑line content delivery. Similarly, the agencies’ clients will benefit from the service as their use of material covered by the generic licence will also be compliant in their internal dealings, due to the CLA Business Licence. Finally, the copyright owner will be assured of the proper payments flowing from use of the copyrighted work.
Gabrin v Universal Music Operations and another [2003] EWHC 1335 (Ch)
This dispute concerned the use of a silk-screen print that contained a separately owned photographic image. Universal Music used the print within an album booklet, without authorisation from the copyright owner of the photograph. Defences of acquiescence and estoppel were raised. The Court held that while separate copyrights existed for the photograph and the print, there was no licence to justify the use by Universal Music of the photograph as part of the print; nor was there any agreement to use the print for anything other than advertising or promotion.
The claimant had taken the photograph in 1977, as part of a photo shoot for Stiff Records. The photograph was of Elvis Costello. Arrangements between Stiff Records and photographers at that time were that Stiff Records paid photographers a basic fee of up to £50 to cover their expenses and pay for their time during a shoot. If any photographs were used on a record sleeve, the photographer was paid an additional fee and copyright vested in Stiff Records. The photograph in question was not used on a record sleeve at the time or selected for promotional publicity.
Subsequently, a silk screen print based on the photograph in question was designed and produced by the late Colin Fulcher. The second defendant in this case was the sister and sole beneficiary of his estate.
In August 1999, Universal Music released an album entitled the Best of Elvis Costello. On the front page of the booklet accompanying the album was part of the image of the artist shown in the silk‑screen print. This was effectively a reproduction of the photograph. The screen print and, therefore, the photograph were also reproduced on billboard advertising.
Prior to the infringement action, the beneficiary of Colin Fulcher’s estate entered into an agreement with the claimant purporting to assign to the claimant and herself all rights and interests, including the copyright, relating to the silk-screen. Universal Music, however, argued that the photographs in question were commissioned, as defined under s.4(3) of the Copyright Act 1956 with no agreement countering the effect of that provision. Universal Music further claimed that the late Colin Fulcher was the recipient of a licence from the claimant, to use the photograph for the purposes of the silk screen and to licence its use as part of the print for all purposes. In addition, Universal Music suggested that since the photograph in question was used to promote record sales and concerts of Elvis Costello on several occasions without the claimants consent, the claimant had no copyright in the photograph. These circumstances supported Universal Music’s alternative defence of acquiescence and of estoppel.
The Court held that the claimant had been the owner of the copyright in the photograph at all material times, and that the photo shoot did not amount to a commission. Regarding the print, the Court held that Colin Fulcher had acquired copyright in the print as author. However, there was neither any agreement regarding joint ownership of copyright in the print, nor was there any licence granted by the claimant to any of the parties that could justify the use of the photograph as part of the print by Universal Music.
The Court concluded that while separate copyrights existed for the photograph and the print, there was no licence to justify the use by Universal of the photograph as part of the print. In addition there was no agreement within the licence granted to Stiff Record to use the print for anything other than advertising or promotion. Applying Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd (1982) 1 QB 133 the Court considered that the defence of estoppel and that of acquiescence failed. Most of the incidents of alleged acquiescence relied on by Universal Music were incidents where publicity shots were used in advertisements. The Court considered that it could not be considered unconscionable for the claimant in this instance to assert his rights against Universal Music as he had not known that the print had been used on the compact disc. He was therefore entitled to a remedy in relation to the unauthorised use of his photograph.
Scottish Universal Newspaper v Mack [2003] ScotCS 167
The Scottish Outer House Court of Session has confirmed the well established principle that, if a substantial part of a copyright work is copied, it is irrelevant whether a new work in which copyright subsists has been created.
The Respondent, Paul Mack, was the subject of an interdict granted on 19 March 1999 restraining him from infringing the copyright in the masthead of the Paisley Daily Express published by the petitioner. The masthead is represented as follows:
Mack had, while the injunction was in force, produced and distributed two publications, the first a single news-sheet and the second on the internet. The contents were political and, as alleged by the petitioner, scurrilous. The publications bore the Paisley Daily Express logo in substantially the same fashion as the original. However, superimposed on the logo the words "Absolutely" and "Not" appeared in bold black script inspired by a satirical television programme popular in the 1970s.
The principal argument advanced by the Respondent was that the inclusion of the additional elements made the representation an original copyright work which could not therefore infringe copyright in the original. The creation or otherwise of a new copyright work was held to be irrelevant to the issue of infringement, which is dependent on the copying of a substantial part of the original.
Lord Eassie noted that no defence of fair dealing on the basis of parody or satire was made by the Respondent, despite the fact that it was raised at the hearing. In the circumstances, it was held that the interdict had been breached.
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