Infringement by Use on Website

MGN publishes the Daily Mirror and other newspapers.  Mr Grisbrook is a freelance photographer.  Between 1981 and 1997 he supplied MGN with a large number of photographs for publication by MGN in their daily newspapers and storage by them. He retained the copyright.  He was paid for each publication.  In 1997 he terminated MGN’s licence to use the photographs.  MGN later created three websites that allowed the public to view and buy part or whole of back copies of their newspapers.  Some of these include Mr Grisbrook’s photographs. He claimed that this infringed his copyright.   In MGN v Grisbrook [2010] EWCA Civ 1399 the Court of Appeal agreed.   The dispute related to the commercial exploitation of the MGN database by means of the three websites.  It was not suggested that such exploitation was within the contemplation of the parties at the various times between 1981 and 1997 when the relevant photographs were submitted by Mr Grisbrook to MGN.  Nor was it suggested that any second publication of one of Mr Grisbrook’s photographs would not generate a liability to Mr Grisbrook for a further fee.  What was suggested was that the website is an alternative means of delivery of the original newspaper: because there was no limit on the numbers which might have been published originally the operation of the website should be regarded as only further delivery of the original, licensed, paper.  The Court of Appeal agreed that the operation of the website could be regarded as further delivery of the original, but not that it could only be so regarded.  A website operates over a global area, its coverage is greatly in excess of anything MGN could have reached with hard copy newspapers.  It enables a member of the public to read it before deciding whether he wants a hard copy and the production of hard copies by the public far in excess of anything MGN could have produced.  The extent of the market and the costs incurred in reaching it are quite different to those of the hard copy newspapers of the past.  The suggestion that an intention might be imputed to Mr Grisbrook and MGN from their conduct in relation to Mr Grisbrook’s photographs in the period 1981 to 1997 that MGN should be entitled without further charge to exploit the copyright of Mr Grisbrook in his photographs by inclusion on their websites was unacceptable.  Newspapers are essentially ephemeral and, save for the enthusiastic collector, retain no long lasting status: the parties will have intended that they would be treated as daily papers are generally treated, that is to say, read and replaced with the following day’s edition.  To incorporate the pictures into the website was to provide a permanent and marketable record easily available world-wide which could well reduce the value of the further use by Mr Grisbrook of the photographs over which it was common ground he possessed the copyright.  This is why this was not just a question of degree but of kind.   Copyright in the compilation does not affect the rights of the owner of copyright in its parts unless he licenses its further publication.  The existence of such overlapping copyrights demonstrates the need for the compiler to obtain sufficient licences from his contributors.

James Goudie QC