Gabrin v Universal Music Operations Ltd & Anor

Under the Copyright Act 1956, reimbursement of expenses for a photographic shoot does not necessarily constitute payment for the photographs under section 4(3). The court must identify what the parties agreed to purchase. An agreement that the photographer retains copyright, while granting a limited licence for publicity or advertising, excludes the statutory commissioning rule under section 4(5). Copyright in a screen-print belongs to its author unless the work was commissioned or assigned. Permission to use an image for advertising does not extend to use on a CD booklet or record sleeve without agreement. Estoppel by acquiescence requires circumstances making it unconscionable to assert strict legal rights; mere silence about unrelated promotional uses is insufficient.

The claimant, a photographer, sought relief for Universal’s use of a photograph of Elvis Costello in a CD booklet and on related promotional material. The photograph had been taken in 1977 for Stiff Records. A screen-print based on it had also been created by Barney Bubbles. The claimant asserted copyright in the photograph and joint ownership of the screen-print, relying on a later assignment from Bubbles’s sister.

Universal disputed title, contending that the works had been commissioned for payment and that the claimant was estopped by acquiescence. The issues included ownership of the photograph, ownership and assignment of the screen-print copyright, the scope of any licence, and the availability of estoppel.

1. Photograph. The photographic shoot was governed by an informal but contractual arrangement. Stiff Records obtained a licence to use selected photographs for publicity and advertising, while copyright remained with the claimant unless a particular photograph was purchased for use on a record sleeve.
2. Section 4(3) of the Copyright Act 1956 did not transfer copyright. The payment was reimbursement for time and expenses, not payment for the photographs as such. The selection process and additional payments for record-sleeve use supported that conclusion. Alternatively, the parties had agreed under section 4(5) to exclude the operation of section 4(3).
3. Screen-print. The screen-print was not an “engraving” within section 4(3). Screen-printing did not involve the cutting or incision characteristic of the processes included in section 48. In any event, the evidence showed no commission by Stiff Records and no agreement for joint ownership between the claimant and Bubbles. Bubbles acquired copyright as author, subject to a licence permitting advertising and promotional use.
4. The assignment by Bubbles’s sister did not establish the claimant’s title. The claimant failed to prove that she had obtained a grant of letters of administration. The absence of any Registry record, together with the lack of satisfactory primary or secondary evidence, meant that the assignment was ineffective.
5. The licence did not extend to use of the screen-print in a CD booklet or on a record sleeve. Nor did the claimant grant any express or implied licence authorising Universal’s use of the photograph in that manner.
6. Universal’s estoppel and acquiescence defence failed. Applying the broad unconscionability approach in Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd [1982] 1QB 133, the claimant’s failure to object to advertising and promotional uses did not induce or materially affect the later uses. The relevant decisions were based on the alleged original licence, not on reliance upon the claimant’s silence.
7. The unauthorised use of the photograph infringed the claimant’s copyright. The claimant was entitled to relief. Assessment of damages and the appropriateness of an injunction were left for further submissions.