15 January 2012

Copyright in Photographs: Temple Island Collections and Creation Records

In our very first NIPC newsletter which we published in June 1997 I wrote a case note on Mr. Justice Lloyd's decision in Creation Records Ltd. and Others v News Group Newspapers Ltd [1997] EMLR 444, [1997] EWHC Ch 370, (1997) 16 Tr LR 544. In that case Mr. Noel Gallagher of Oasis and others applied for an interlocutory injunction to restrain The Sun from offering for sale and selling a poster of Oasis that featured a photo of an elaborate set that included a white Rolls Royce in a country club swimming pool. The Sun's photograph was very similar to the photograph that appeared on an Oasis album cover. The similarity arose because The Sun's photographer shot the same scene at roughly the same time and from the same angle as Mr. Gallagher's photographer but he did not reproduce any part of Oasis's print or negative. The learned judge held that the plaintiffs had no arguable case for infringement of copyright though he accepted that they had an arguable case for breach of confidence.

Nearly 15 years later a tea wholesaler commissioned a graphic design company to arrange a number of photographs that its director had taken or acquired into a packaging design that showed a London bus crossing the Thames at Westminster bridge with the Palace of Westminster in the background.

That design was intended to be very similar to, but not actually copy, a photograph of a very similar scene that had been made by the founder and 
managing director of a company that made and sold gifts and souvenirs in August 2005 (a copy of which appears to the right).   The defendant company had previously entered a licence agreement with the claimant to reproduce that photograph.  That had led to a dispute over the amount actually due from the tea merchant to the gift and souvenir company which was resolved on paper by His Honour Judge Birss QC in Temple Island Collection Ltd v New English Teas Ltd. and Another (No. 1) [2011] EWPCC 21 (29 July 2011). It was common ground that "no photocopying style reproduction" had taken place, that the defendants' work was created from photographs that the second defendant had taken himself and that the whole point of the exercise was to avoid infringing.   Yet the claimant sued the defendants for copyright infringement in Temple Island Collections Ltd v New English Teas Ltd and Another (No. 2) [2012] EWPCC 1 (12 January 2012) and won despite Mr. Justice Lloyd's robust judgment in the Oasis case 15 years earlier. Why was this?

Judge Birss QC's judgment in Temple Island makes no reference to Creation Records which could be because neither counsel cited it and he didn't think of it or because neither he nor the parties believed it to be relevant. If it was for the second reason I should be surprised because the facts and arguments seem very similar, at least to me.

Mr. Gallagher's effort in constructing his set in Creation Records seems to have involved far more thought and work than that of the claimant's managing director in Temple Island.   Mr. Justice Lloyd described his arrangement at paragraph [2] of his judgment in Creation:
"Mr Noel Gallagher, who it seems has control of the artwork, supervised the placing of various objects around the pool, which by then had been partly refilled with water, until he was satisfied with the scene including the positioning of the members of the group. Photographs were then taken of the scene by Mr Michael Spencer Jones over a period of time from mid-afternoon to late at night so that the group would have a choice of images in different lights and from different angles and heights. Mr Gallagher exhibits to his affidavit a photograph which, he says, he envisaged as being used for the front sleeve of the album. This has the swimming pool in the foreground with the Rolls Royce seemingly emerging from the water towards the camera. The hotel is beyond and to the right. In the far distance is a wooded area with a partly clouded sky above. The five members of the group are posed round the pool, one on a scooter, one climbing out of the pool and others with or near other objects seemingly unrelated to each other. The various objects were ordered two days before from a warehouse in London; none of them was made for the purpose."
Similarly, Judge Birss QC related how the claimant's photograph came into existence between paragraphs [4] and [6] of his judgment in Temple Island:
"4. ................. The claimant's managing director Mr Fielder created the work by taking a photograph in August 2005. He wanted to create a single, modern and iconic scene of London. Having taken images of the river and the Houses of Parliament for many years Mr Fielder knew where to stand. In fact the place he stood is where many tourists also stand with their cameras. He knew he would be able to capture the bus heading to the south side of the river and thus show the front of the vehicle. He could ensure that other landmarks, i.e. Parliament, Westminster Bridge, and the river, were included and he would have a strong skyline.
5. Once the photograph was taken Mr Fielder manipulated it on his computer using a well know standard piece of software called Photoshop. He had the idea of making the red bus stand against a black and white background from the film Schindler's List. That film includes striking use of the technique in a different context.
6. In summary the manipulations Mr Fielder undertook were: the red colour of the bus was strengthened; the sky was removed completely by (electronically) cutting around the skyline of the buildings; the rest of the image was turned to monochrome save for the bus; some people present in the foreground of original photograph were removed (there was a small group on the stairs and a person at the top under the lamppost); and the whole original image was stretched somewhat to change the perspective so that the verticals in the buildings were truly vertical. Mr Fielder spent about 80 hours on this including the photography trips."
The judge continued at [7] that the claimant's image became famous in its industry and was used not just for its mugs, key fobs and stationery which were distributed by the National Gallery among others but was also licensed to Historic Royal Palaces. However, the release of an album of a well known group of musicians was not without commercial significance.

In Creation Records it was argued that that the scene itself (the arrangement or composition of the members of the group, the various objects and the site) was a copyright work as a sculpture or collage within the meaning of s.4 (1) (a) of the Copyright, Designs and Patents Act 1988 or as a work of artistic craftsmanship within the meaning of s,4 (1) (c). Mr. Justice Lloyd did not see how that could be so. It was also argued faintly that the scene was a dramatic work. Since the scene was inherently static, having no movement, story or action, the judge could not accept that argument either. As he put it at paragraph [8]:
"I do not regard this as seriously arguable. I do not see how the process of assembling these disparate objects together with the members of the group can be regarded as having anything in common with sculpture or with artistic craftsmanship. No element in the composition has been carved, modelled or made in any of the other ways in which sculpture is made (see Breville (Europe) Pic v Thorn EMI Domestic Appliances Limited [1995] FSR 77 at 94). Nor does it seem to me to be the subject or result of the exercise of any craftsmanship (see George Hensher Limited v. Restawile Upholstery (Lanes) Ltd. [1976] A.C 64, especially Lord Simon at 91)."
The judge considered Martin Mann QC's decision in Shelley Films Limited v. Rex Features Ltd. [1994] E.M.L.R 134 where the learned deputy judge held that it was at least seriously arguable that a film set prepared for the film to be called "Mary Shelley's Frankenstein" was a work of artistic craftsmanship so that an unauthorised photograph taken of an actor on the set was a breach of copyright in the set as well, for different reasons, as of other elements in the photograph. He distinguished that case on the basis that a photographer's arrangement was an ephemeral composition for the purpose of a photograph with no independent existence of its own:
"Mr Gallagher's composition from all of those examples as being put together solely to be the subject matter of a number of photographs and disassembled as soon as those were taken. This composition was intrinsically ephemeral, or indeed less than ephemeral, in the original sense of that word of living only for one day. This existed for a few hours on the ground. Its continued existence was to be in the form of a photographic image."
The second argument in Creation Records was that The Sun's photo was a copy of the official Oasis photograph regardless of the order in which they were taken.  His lordship could not see how that could be so. He observed at paragraph [1]:
"Of course copyright subsists in the official photograph and if it were the only source of the scene it would be an infringement to copy that, either by a direct copying process or by the scene being recreated and a fresh photograph taken of that recreation. But it is a basic proposition of copyright law that two works created from a common source do not by reason of that fact involve copying one of the other, however similar they are. Nothing in Bauman v. Fussell [1978] R.P.C. 485 is inconsistent with this."
It was finally argued that Mr Gallagher was the author of any photograph because he had set the scene and arranged the angle and lighting of the shot. The judge dismissed that argument on the ground that it is the person who takes the photo (that is to say, presses the shutter button) who can ordinarily claim to be the author of the work.

In Temple Island Judge Birss was taken to a decision of the Austrian Supreme Court in O (Peter) v F KG ([2006] ECDR 9) from which he concluded at paragraph [19] of his judgment that:
"A photograph of an object found in nature or for that matter a building, which although not natural is something found by the creator and not created by him, can have the character of an artistic work in terms of copyright law if the task of taking the photograph leaves ample room for an individual arrangement. What is decisive are the arrangements (motif, visual angle, illumination, etc.) selected by the photographer himself or herself."
He also relied on the commentary in the text book Laddie Prescott & Vitoria (4th Ed.) in paragraphs 4.60 and 4.61 that copyright in a photo resides in the aspects for which there is room for originality, namely:
  • specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on;
  • the creation of the scene to be photographed; and
  • being in the right place at the right time.
Taking the second and third two aspects together, he concluded at paragraph [27]:
" The relevant point in this case seems to me to be that the composition of a photograph is capable of being a source of originality. The composition of an image will certainly derive from the "angle of shot" (which Laddie Prescott and Vitoria categorise in sub-paragraph (i)) but also from the field of view, from elements which the photographer may have created and from elements arising from being at the right place at the right time. The resulting composition is capable of being the aggregate result of all these factors which will differ by degrees in different cases. Ultimately however the composition of the image can be the product of the skill and labour (or intellectual creation) of a photographer and it seems to me that skill and labour/intellectual creation directed to that end can give rise to copyright."
Since Sir Hugh Laddie and other members of 8 New Square published the first edition of their bible, the digital camera and mobile phone have been invented and photographic editing software such as Photoshop have appeared.  That has given rise to what the judge rightly called a 4th aspect in which there is room for originality, namely the setting of the photo using such software. In my exceedingly humble and tremulous opinion that is the only possible point of difference between the situation in Temple Island and that in Creation Records.  In designing their packaging the defendants had the claimant's image as generated by the software in mind and it was that which they had copied. 

In reaching his decision Judge Birss found objective similarity between the two works and evidence of access:
"55. On the question of copying, I find that the common elements between the defendants' work and the claimant's work are causally related. In other words, they have been copied. There are two points. First the evidential onus to address a point like that is on the defendants here given the obvious similarities between the claimant's and defendants' work and the undoubted access of the defendants to the claimant's work. Mr Houghton did not refer to any particular element and assert that it came from a source independent of Mr Fielder. Sphere did not give evidence at all.
56  I have referred to the obvious similarities between the works. The defendants went to considerable lengths to point up the differences between the images. They analysed the overall composition which is said to be very different both vertically and horizontally. The balance of foreground, middle ground and far ground features were analysed and said to be different in key respects. The fact the river is absent from the defendants' work was pointed out. These differences all exist but it seems to me that on the question of copying they do not help. In this case it is not a coincidence that both images show Big Ben and the Houses of Parliament in black and white with a bright red bus driving from right to left and a blank white sky. The reason the defendants' image is like that is obviously because Mr Houghton saw the claimant's work. The differences do not negative copying, on the facts of this case they have a bearing on whether a substantial part is taken (but taking care to bear in mind Designer's Guild).
57. Second Mr Houghton did not suggest he had seen any of the other similar works relied on above before seeing Mr Fielder's image. The whole point of this case is that Mr Houghton and his company wish lawfully to produce an image which does bear some resemblance to the claimant's work. The inference that I draw is that Mr Houghton sought out this other material after he had decided to produce an image similar to the claimant's. He found examples of common elements in various different places. That does not avoid a causal link. If Mr Houghton had seen Mr Fielder's image, decided he wanted to use a similar one, found the Rodriguez or Getty photographs and put one of those on his boxes of tea, there would be no question of infringement. Those images are not causally related to Mr Fielder's, they are independent works. But that is not what happened. At best the defendants used these other images to show that certain individual elements in Mr Fielder's work can also be found elsewhere. That does not make those different sources the actual origin of an element in the defendants' image. I reject the submission that the other similar works acted as a relevant independent source for the defendants."
I have to say that although I follow the logic I feel very uneasy at Judge Birss's decision in Temple Island. It seems to come very close to protecting copyright in an idea as opposed to expression. That is something that art 9 (2) of TRIPS says cannot be.

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20 comments:

Anonymous said...

we ar ruled by idiots.. that´s the truth....

ashok pai said...

This is completely idiotic. what next ? family pictures on mugs being banned because someone else has done a similar template ? utterly stupid

Anonymous said...

Great article. Unfortunately the Judge seems unaware or did not put enough weight into the fact that the techniques he assumed were "copied" are commonly used throughout the world by people using Photoshop and other software for image manipulation. Had the manipulation been 'unique' then there may have been a case but anyone in the industry knows that the removal of sky and use of a singular colour or hue over a monochrome picture is nothing new. This decision opens up a can of worms, I hope it is appealed and overturned.

Boyd Annison said...

Thank you for taking the time to write this informative and insightful piece.

Pete said...

A very well written and thoughtful piece. I think that some common sense should have been applied to this case (and others like it) as well.

Holgs said...

I'm having a hard time understanding why you're comparing this case to Creation Records. If anything it is consistent with the obiter in that case in that the copyrighted work here is an image, not a "set".

This case is all about re-creating an image, not the mere circumstance of there being the same elements in two images.

Jane Lambert said...

That was also the case with Creation Records. I think the distinction between the two cases lies in the use of photo editing technology.

Holgs said...

The primary contention in Creation Records was that the scene which was photographed was a creative expression. Look again at the first line of paragraph 7 that you omit from your quote: "It is said, first, that the scene itself (the arrangement or composition of the members of the group, the various objects and the site) is a copyright work."

The secondary contention was that the disputed photo was a copy of the official version. This argument was dismissed because they were taken at the same time.

Temple Island on the other hand is about whether the second image is an imitation of the first.

Holgs said...

The primary contention in Creation Records was that the scene which was photographed was a creative expression. Look again at the first line of paragraph 7 that you omit from your quote: "It is said, first, that the scene itself (the arrangement or composition of the members of the group, the various objects and the site) is a copyright work."

The secondary contention was that the disputed photo was a copy of the official version. This argument was dismissed because they were taken at the same time.

Temple Island on the other hand is about whether the second image is an imitation of the first.

RW Cumming said...

An enjoyable article.

This judgment may not sit comfortably with some nor with Creation Records, however, I am not sure it is incorrect. Perhaps Creation Records is a poor precedent.

Fundamentally, copyright should protect the expression of an idea and reward the creative skill, judgment and effort of the author; slavish copying ought to be discouraged. New English Teas contributed minimal creative skill, judgment or effort to the production of its image save to try and avoid copyright infringement. Judge Birss’ approach is refreshing and we shall see whether the decision will allow creativity to flourish in the UK.

Simon Bradshaw said...

I've set down my thoughts at

http://lawclanger.blogspot.com/2012/02/photographer-of-westminster-omnibus.html

- in short, the distinction from Creation Records is that the second image was created later than and as a copy of the first, rather than at the same time. (Most of the argument in CR was in an attempt to get around this point.)

mcwilliams said...

I may have missed some argument, but I feel the judges decision was correct. The original image and all it's attributes, including technique, belong to the original photographer. His expression of the scene is his idea, no one else's and cannot be copied. As you mentioned, the photo-editing technics do play a part. Had the bus in the copied image been blue, we would not be blogging about this.

Anonymous said...

McWilliaims I feel that your statement "His expression of the scene is his idea, no one else's and cannot be copied" is wrong. In the judgment it says "[the plaintive] had the idea of making the red bus stand against a black and white background from the film Schindler's List. That film includes striking use of the technique in a different context." So the expression is not his alone, in fact he admits to copying someone else's work and then using it in a different context. That's just what the defendant has done, copied the technique and used it in a different context.

photographer said...

Very good decision. The copy of artistic concept is evident here. This can be called pure plagiarism. This is the same like painting Mona Lisa for sale as a real picture, which we already know was painted by Da Vinci.

Matt Williams said...

This verdict was picked up on the Swedish Pirate Party website falkvinge.net and someone commented that this ruling will result in only one officially sanctioned blues song.

A Hall said...

Reminds me a little of the American photography case of Gross v Seligman - 212 F. 930 United States Court of Appeals, Second Circuit March 10, 1914.

I also think it is a bad decision;the buses are not in exactly the same 'pose', the use of red is not 'original' etc. The reasoning in Creation Records seems to me to be the correct interpretation of the law; i.e. that only breach of confidence (which would not apply here) should come to the rescue. Wouldn't a claim in 'passing off' have made more sense here?

Anonymous said...

New English Teas have now been given the right to appeal see www.newenglishteas.com

R Taylor said...

I arrived at this page via http://news.techeye.net/software/uk-copyright-law-wades-in-on-photoshopping which stated;

"Jane Lambert, a barrister specialising in intellectual property law, wrote in her bog (sic) that she feels uneasy at Judge Birss's decision as it comes close to protecting copyright in an idea as opposed to expression."

My mental image of this event rests on the definition of the word bog; whether it derives from the OED or from the vernacular slang.

Clarification is requested.

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