Grisbrook v MGN Ltd & Ors

A broadly worded undertaking not to infringe copyright is not confined to infringements contemplated when it was given. Unless expressly limited, it applies to later forms of infringement arising under subsequent amendments to the Copyright Designs and Patents Act 1988.

An implied copyright licence extends only so far as necessary to give effect to the parties’ common intention. It permitted electronic archiving of previously published newspapers, but did not permit commercial public access to an electronic back-numbers service. Copyright in a compilation does not provide a defence to infringement of copyright in material incorporated into it. Where infringement is disputed in good faith, committal proceedings are ordinarily inappropriate; a declaration may adequately protect the copyright owner.

The claimant was a freelance photographer who had supplied photographs for publication by the defendants’ newspapers. Earlier proceedings concerning unpaid licence fees and unauthorised online use were compromised by a consent order under which the defendants undertook not to infringe his copyright.

The claimant later sought committal or sequestration orders, alleging that photographs remained reproduced on websites offering archived copies of newspaper editions. The defendants accepted that isolated images had infringed copyright but disputed that reproducing complete published editions, including the photographs, breached the undertaking. The issues concerned the construction of the undertaking, the scope of the implied licence, the effect of compilation copyright, public interest, and the appropriateness of committal proceedings.

1. The application for committal or sequestration was refused. The defendants’ undertaking was expressed in general terms and covered future infringements of copyright, including conduct falling within s.20 of the Copyright Designs and Patents Act 1988 after the undertaking was given. It was not appropriate to imply a limitation excluding reproduction of previously published editions.

2. The licence inferred from the parties’ course of dealing permitted the defendants to retain electronic copies of published editions for archival purposes. That was necessary to give practical effect to the publishing relationship and reflected established newspaper practice. The licence did not extend to making an electronic back-numbers database commercially available to the public. Following the minimalist approach described in Robin Ray v Classic FM PLC [1998] FSR 622, an implied licence could not be extended to an unexpected profitable opportunity which was not necessary or within the parties’ contemplation.

3. The operation of the back-numbers websites involved copying and communication to the public within ss.16, 17 and 20 of the 1988 Act. The defendants’ copyright in the newspaper compilation did not defeat the claimant’s separate copyright in his photographs. The Canadian decision in Robertson v The Thomson Corporation [2006] SCC 43 was inconsistent with English law and did not assist the defendants.

4. The defendants could not rely on public interest or Article 10 of the Convention. Parliament had already balanced copyright protection and public access through the statutory provisions concerning prescribed libraries and archives. The defendants were not a prescribed library and could not use that framework to justify a commercial database.

5. The isolated reproduction of 13 photographs was an intentional act in the relevant sense only if the defendants had knowledge of the facts constituting the breach. Knowledge that conduct was legally a breach was unnecessary. The breach was technical, inadvertent and remedied before the application. The back-numbers issue was a substantial and arguable question of law, pursued in good faith. Committal proceedings were therefore inappropriate; a declaration that the websites infringed copyright was sufficient protection. Costs were left for further argument.