MGN Ltd & Ors v Grisbrook

An implied copyright licence arising from a contract formed by conduct permits use of copyright material only in the manner and for the purpose contemplated when the engagement was made. It may cover archival storage, including migration to later technology, where that preserves the contemplated archival function. It does not ordinarily authorise a new commercial method of exploiting the material. Making historic newspapers containing photographs available through public websites, with viewing, downloading or reproduction, was a different kind of exploitation from delivery of ephemeral hard-copy editions. Copyright in the newspaper compilation did not displace the photographer’s separate copyright. The appeal was therefore dismissed.

Between 1981 and 1997, Alan Grisbrook supplied photographs to MGN for publication in its newspapers under contracts formed by conduct. He retained copyright and was paid for publication. After the parties entered into a Tomlin Order in 2002, MGN created or operated websites containing historic newspaper pages and front pages incorporating his photographs.

Patten LJ made declarations that the relevant online publication infringed Mr Grisbrook’s copyright, but made no committal order. MGN appealed on the question whether its licence extended to making the historic newspapers available through the websites, either individually or as part of the newspapers as a whole.

1. Appeal dismissed. The Chancellor delivered the principal judgment, with Leveson LJ and Etherton LJ agreeing.
2. Where a person is engaged for reward to produce copyright material, a contract formed by conduct ordinarily implies a licence to use it in the manner and for the purpose contemplated by the parties when the engagement was made. The ambit of that licence is determined by the parties’ contemplation at the date of engagement. The Court applied the principle in Beck v Montana Constructions Pty [1964-5] NSWR 229, as approved and applied in Blair v Osborne & Tomkins [1971] 2 QB 78, Robin Ray v Classic FM plc [1998] FSR 622 and Griggs v Evans [2005] EWCA Civ 11.
3. The licence covered reproduction and retention of the photographs in MGN’s archive, including storage first by hard copy or microfiche and later electronically. Revocation of the licence operated prospectively and did not make earlier authorised publications infringing.
4. The licence did not extend to commercial exploitation through the back-number websites. Their global reach, permanence, marketability, and capacity for public downloading and reproduction made the operation a new kind of exploitation, rather than merely further delivery of the original newspapers. Section 20 of the Copyright, Designs and Patents Act 1988 recognised that electronic exploitation could be different in kind from exploitation of existing hard copies. MGN’s copyright in the newspaper compilation did not remove the need for sufficient licences from contributors holding copyright in individual photographs.
5. The Chancellor added that contempt proceedings without pleadings, discovery, or evidence directed to the implied licence were ill-suited to resolving these issues. It would have been preferable for them to be determined in an ordinary action, although the appeal was decided on its merits.

1. Court of Appeal (Civil Division): MGN appealed with permission from the declarations made by Patten LJ. The appeal was dismissed.
2. Chancery Division: Patten LJ made no order for committal but declared that making the relevant photographs available through the specified websites infringed Mr Grisbrook’s copyright.