The Photographer of the Westminster Omnibus

Now and again an intellectual property case will result in a decision that causes considerable head scratching within the IP profession. Perhaps more commonly these days such a decision will cause wider confusion and outrage in the online community, especially those parts of it which espouse a sceptical attitude towards IP. In Temple Island Collections v New English Teas [2012] EWPCC 1 HHJ Birss of the Patents County Court seems to have achieved the impressive feat of delivering a judgment that does both.

The case concerned a photograph showing a red double-decker London bus against a monochrome background of the Houses of Parliament. Skimming slightly over earlier litigation, the defendant had declined to licence the claimant's image and instead had sought to arrange a version taken independently. The claimant then asserted that the second version of the image infringed its copyright in the original. HHJ Birss held that it did, even though the second image was a recreation rather than a copy as such of the first.

To say that this decision has caused consternation would be putting it mildly. Reports on the case at sites such as Amateur Photographer and Boing Boing have seized upon the idea that somehow this judgment will stop photographers from taking pictures that replicate any prior similar image and it has been characterised as a precedent that will result in a monumental rights–grab by the owners of large photographic portfolios. Within the profession the response has been somewhat more muted but nonetheless respected commentators have expressed some concern and surprise at the decision. In particular, as Jane Lambert explains in an excellent post at NIPClaw, it seems at first sight hard to reconcile the decision in this case with that of Mr Justice Floyd in Creation Records v News Group Newspapers [1997] EWHC Ch 370. A measure of the interest that this case has given rise to is seen by the way that the 1709 Blog has organised a seminar on the case within weeks of judgement being handed down and to be addressed by leading Counsel for the claimant.

To take the more alarmed views first, it would perhaps have helped if some of the commentators on the case had taken the trouble to read the judgment. HHJ Birss goes to considerable effort to explain how narrow his decision actually it is. To begin with, there is no suggestion that if two people standing next to one another take the same photograph the one who pressed the shutter momentarily later will somehow be infringing the copyright in the photograph taken earlier. Copyright infringement requires copying, and although such copying maybe indirect or even unconscious it is still necessary to show a causal link between the original work and the allegedly infringing copy.

But what about the suggestion that this decision means that any photograph of a bus on Westminster Bridge with the Houses of Parliament in the background infringes the copyright in Temple Islands' image? After all, there are plenty of earlier such photographs. This issue was addressed by HHJ Birss at paragraphs 17 to 29 of his judgment. To somewhat paraphrase the judge’s argument, where a picture is taken of a commonly-photographed scene then, although that picture will no doubt enjoy copyright, the only aspects of that picture whose copyright might be infringed by another, similar image are those where the photographer has achieved originality.

As he explains at paragraph 22 such originality may arise from technical skill in photography (e.g. composition), the staging of a particular scene or from the simple fact of being in the right place at the right time. In other words, although a commonplace photograph will be protected by copyright against simple copying, if there is nothing distinctive about it in comparison with other, similar photographs then there is no copyright in anything distinctive and original that will be infringed by someone taking yet another similar photograph. But if the photograph shows original elements then those elements will be protected by copyright against specific imitation.

As such, neither casually snapping tourists nor enthusiastic photographers need worry about being sued for copyright infringement if they happen to take a photograph of a bus in front of Parliament. HHJ Birss found here that the claimants had a photograph with identifiable specific original features; as he explains at paragraphs 51 to 54 there are particular elements of composition and visual processing that he found to be original in that image. On that basis, given that it was clear from the facts that the defendant had set out to recreate the claimant's image there was a clear causal link between the two and the original elements of the first image had been reproduced in the second. The defendant's image thus infringed copyright in the claimant's.

Put that way the decision seems less unreasonable and the more dramatic claims of what it might prevent clearly have no basis in fact or law. But nonetheless the decision does still give rise to concerns, some legal and some practical. In particular, how does one reconcile it with Creation Records?

Creation Records involved the unauthorised photography of a temporary arrangement of items set up for the cover of a new album by Oasis. The allegedly infringing image was taken by a photographer who had inveigled himself into the main photo session and it was taken alongside the “original" image. As explained at paragraph 3 of Mr Justice Floyd's judgement the unauthorised photographer was standing some 15 to 20 feet to the left of the official one and they were both taking photos at the same time. The question of whether the unofficial photograph infringed the official one was dealt with by the judge very quickly at paragraph 15:

“Next, Mr Merriman contended that Mr Seeburg's photograph was itself a copy of the official photograph taken by Mr Jones, regardless of the order in which the two were taken. I do not see how that can be argued. If the subject matter is not itself copyright, in principle two different photographers can take separate photographs of the same subject without either copying the other. 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.”

The judge’s reference to Bauman v Fussell relates to a case where a painter painted a picture inspired by a photograph, in which it was held that the painting – not a direct copy – did not infringe the copyright in the original photograph. What is more of note is that Mr Justice Floyd specifically addresses the situation where a photograph is restaged and retaken and holds that this is equivalent to direct copying.

It is therefore clear that the situation in Creation Records is rather different to that in Temple Island. This was not the re-enactment or restaging of a photograph but rather an example of simultaneous taking of pictures. Indeed, if one goes on to read the full judgement in Creation Records the bulk of the legal argument was taken up either by attempts to establish that the staged scene being photographed somehow enjoyed its own copyright (unsuccessful) or that there was a duty of confidentiality breached by the unofficial photographer (successful). Although superficially similar in that they both involve one photograph alleged to be a copy of the other, the manner in which the second photograph came about is quite different in the two cases and there is in fact little in Creation Records relevant to Temple Island beyond dicta that actually supports HHJ Birss’ decision in the latter. Indeed, it may be that this was such common ground between the parties and so obvious to the judge that neither he nor counsel thought it necessary to refer to Creation Records, hence explaining its apparently surprising omission from the judgement.

HHJ Birss’ decision thus appears to be legally sound, or at the very least not in conflict with well-established law in the area. But that doesn't mean that it's not problematic. Even on the relatively narrow application that I have outlined above it is still possible to see how a photographer could find himself or herself facing threats of legal action over a seemingly commonplace image.

I am a moderately keen photographer myself and I own a number of books on the subject. Many photographic books and courses clearly aim to teach techniques that involve some level of imitation of the styles and methods of established photographers. For that matter, if as an aspiring photographer you see a particularly striking image it is natural to want to work out how it was taken and to seek to replicate it, or at least some of the more interesting and novel aspects of it.

I can provide a personal example of this. Consider the photograph below, of the Forth Rail Bridge. I consider it to be one of my better photographs and indeed it is by far and away the most heavily viewed picture on my Flickr account; it is also the only picture that anybody else has ever asked to use.



I was inspired to take the picture after I saw similar images in photographic shops in and around Edinburgh. The bridge was shown at or near sunset and the sea had an unusual, almost misty effect that I recognised as being achieved through a long exposure. I thought it would be interesting to try to replicate these elements of the images so I went down to South Queensferry, set up my tripod near the south end of the bridge, and using a graduated neutral density filter I took a number of photographs. After some effort with Photoshop to clean the pictures up and correct the colour I achieve the results above. I don't think that it is perfect; it is not quite as sharp as I would like and would not stand much enlargement, and given the date at which I took it the bridge itself is festooned with scaffolding. But I could not deny that there was a causal link between it and the earlier photographs that had inspired me. Were there a single, specific image with these qualities that it could be shown I had set out to replicate, then on the basis of Temple Island I would be held to have infringed its copyright.

If the decision in Temple Island was such as to deter photographers like me from carrying out such exercises for fear of liability for copyright infringement then I would be concerned at the effect upon the hobby. Photography is in large part a skill that you learn through practice and imitation and I would not want to think that photographers seeking to develop their skills might be deterred from doing so. As a lawyer I am aware that in practice it is commercial exploitation that is likely to attract legal attention but the forthcoming reforms to IP litigation procedure following the Hargreaves Report will substantially lower the barrier to this. Although I am generally very much in favour of the forthcoming Small Claims track for copyright disputes – I know several photographers who until now have had little recourse against blatant copying and commercial reuse of their images – I would be worried if it led to a spate of threats of proceedings in respect of what one might term innocently imitative images.

Cloud, Copyright, Hosting and Jurisdiction

Computerworld UK has published a short piece by me on the jurisdictional issues of copyright and database infringement in the Cloud. I discuss the recent ruling on this point in Football Dataco v Sportradar and suggest an alternative model for determining where material is 'made available'.

Francis Davey on E-Books and DRM

One of the things I like about volunteering for the Open Rights Group is that you get to meet smart and interesting people like Francis Davey. A query on one of ORG's mailing lists has prompted Francis to write a review of the law surrounding DRM and e-books, likely to be of interest to anyone thinking of buying an e-book or e-reader.

Machinima and the Law Podcast

Machinima is the use of real-time 3D rendering software - typically that used by computer games - to make cheap but high-quality CGI movies. I recently had the pleasure of being interviewed by Hugh Hancock, leading light in the Machinima community and indeed the originator of the term, regarding the legal issues arising from it. The interview is available as a podcast from Hugh's blog (one hour, 82 MB MP3) - my thanks to him for the opportunity for a fascinating discussion!

(Despite this blog's name, the interview contains no whistling. It does contain one four-letter word, but I am repeating a quotation given by Geoffrey Robertson QC in his text Media Law, so that's all right then.)

Opening Up the Telecoms Package for the Open Rights Group

My posting record has continued to be a bit thin of late thanks to the pressures of the Bar Vocational Course. (And if you're reading this in the UK, BBC 2's new series 'The Barristers' starts tonight, featuring the joys of the BVC). However, part of my work of late has been a pro bono project that came my way from the Open Rights Group, via Prof Lilian Edwards (aka Pangloss).

Detailed accounts of the background are given by ORG here and Prof Edwards here, but in a nutshell I was asked to review the latest batch of amendments to the core group of Directives governing EU telecoms law. In particular, my remit was to see what had happened to measures inserted by MEPs to ensure that disconnection sanctions - the so-called 'Three Strikes' measures - could only be implemented via due process of law. I was very helpfully assisted by Monica Horten of IpTegrity.com, whilst Judith Rauhofer at UCLAN provided useful advice and of course Prof Edwards oversaw the whole effort; I'm especially grateful to her for comments on the text as it developed and for putting together a very clear and forceful summary for our final report.

Our findings? Yes, there are elements of the Telecoms Package as it stands that raise serious concerns. In particular, some of the measures explicitly inserted by MEPs to ensure due process have disappeared, although it does seem that there are efforts being made to keep at least one in place. Also, some of the definitions of the sort of content or threat that would give grounds for communications providers to read traffic (with associated privacy concerns) are potentially very broad.

I feel I should make my own position clear. As an aspiring IP lawyer I think that copyright protection is a good thing - so long as it is properly regulated, clear in scope and applied under the aegis of the courts. To take an analogy with land law, the law of 'real' property, we regulate land ownership under a system that protects land-owners whilst at the same time recognising rights-of-way, providing for boundary disputes and setting legal constraints on how we deal with land-owners. I don't agree with those who scoff at the whole idea of IP, any more than I'd go along with ideas to allow anyone to do what they wanted on anyone else's land. But equally, nor would I support a proposal to allow large land-owners to take over all responsibility for controlling access to their estates, including the power to decide for themselves if a right-of-way or easement existed and to eject with extreme force anyone they considered might be trespassing. The proposed measures could well lead to providers flagging legitimate peer-to-peer filesharing or fair-dealing use of copyright material as being illicit, whilst denying those affected recourse to the courts to prove their legal rights.

From here on, it's over to the ORG to take this matter forward, and I return to the more mainstream BVC joys of the Civil Procedure Rules, sentencing policy and drafting Particulars of Claim. Oh, and with any luck maybe even posting some IP and technology law stories here - there have certainly been plenty of interest lately. But this has been a fascinating project to be involved with, as well as providing an at times alarming insight into the process by which EU law is made.

Lucasfilm v Ainsworth: The Copyright is *not* strong in this one...

A few months ago I found myself lucky enough to be able to attend several days of the argument in the copyright case of Lucasfilm v Ainsworth. Cases are often known colloquially by their subject matter (e.g. Jif Lemon); if that happens here, it will go down as the Stormtrooper Armour case. Today, Mr Justice Mann gave the long-awaited judgment, and I was again able to be in court to hear him give a very brief summary.

The full version is available here; I was lucky enough to pick up one of the copies printed out for media and the public (I got the last one) and it's about half an inch thick. In great detail, Mr Justice Mann goes into the question of whether prop-maker Mr Andrew Ainsworth infringed Lucasfilm's rights by making and selling copies of the Imperial Stormtrooper helmets and armour from Star Wars, items he had made for the original film production.

So who won? Think of the end of The Empire Strikes Back; neither side has exactly come out with what it wanted, and everything has been set up for a sequel. Lucasfilm will have been hoping either for a decision that it could sue for all of Mr Ainsworth's production as infringing their copyright under English law, or for the Court to hold that it could enforce the very punitive US judgment it obtained in Ainsworth's absence. It got neither, as Mann J held that Ainsworth's activities in the UK had not been infringing, and that Ainsworth did not have sufficient 'presence' in the US for a court there to have authority over his activities.

But Ainsworth hasn't got what he will have wanted either. To begin with, Mr Justice Mann had decided, as I'll explain below, that under English law there was simply no copyright in the costume designs at all. Whilst this got Ainsworth off the copyright infringement claim (you can't infringe copyright if it doesn't exist) it also meant that his claim to have rights in the costumes equally evaporated. But Mann J went on to note that even if copyright had existed, Ainsworth's legal obligations would have meant that such rights belonged to Lucasfilm, not him. Indeed, on the basis of the evidence presented, he felt that Ainsworth had very much exaggerated the scope of his creative input, and that relatively little of the design had been his. It has to be said that Mr Ainsworth does not come out of the judgment looking too good; although the judge did not see him as dishonest as such, he found that he was very prone to overstate his contribution to Star Wars, even to the point of trying to allege that plain evidence to the contrary had been faked.

Most importantly for Ainsworth though, Mann J decided that he could be held liable for copyright infringement under US law, specifically by making items that copied drawings (the design art) that were protected by US copyright. This might seem odd, and perhaps even alarming. But the judge gave long and carefully-argued reasons for why, in this particular instance, a US claimant could ask an English court to apply US law. As well as technical arguments relating to international recognition of copyright, there was also the point that Ainsworth had copied items and sold them into the US whilst refusing to submit himself to the jurisdiction of the US courts. Having decided that Ainsworth could not be forced to submit to that jurisdiction even though he traded with it, Mann J felt that he could not then reasonably object to its claim being heard in the English courts. And, US copyright law differing in some key respects from English copyright law, Ainsworth had infringed US copyright. This leaves him facing a further hearing to decide what remedy an English court can or should impose, and this is a subject I can only speculate on. Will damages be assessed on English principles, in proportion to the actual value of infringing goods, or much more punitive US ones? And will they be based on the total scale of infringement, or just Ainsworth's sales into the US? (For the record, I had earlier been under the impression that those were in the £100,000s; it turns out they were more like £8,000 to £25,000.) Thus Mr Ainsworth is still left with a large and undetermined liability hanging over him, not to mention the question of how to allocate the costs of what was in the end a seventeen-day trial in the High Court with leading counsel and numerous specialist witnesses. Extrapolating from other such trials, I would be very surprised if the costs came to less than £500,000 if not twice that, so even if it is held that both sides did equally well and bear their own costs, Mr Ainsworth will have a huge legal bill.

And it doesn't end here. Both sides will want to appeal; Lucasfilm against the decisions on copyright and enforceability of the US judgment, Ainsworth against the decision that he is liable under US copyright law. If permission to appeal is granted - and the legal issues are controversial enough that I would be astonished if it is not - then we are unlikely to see a hearing until the middle of 2009 or so. And the case might even go to the House of Lords, or the new UK Supreme Court as it will then be. Like the Star Wars franchise itself, we have more yet to come.

So what does this case do for copyright law in the UK? (It was an English High Court case, but generally the Scottish Court of Session follows the English courts in decisions on interpretation of UK-wide copyright and IP law.) Actually, it is quite interesting and helpful, and to see why we can look at why Mr Justice Mann found that Ainsworth had not infringed copyright in UK law.

The first issue was whether or not the key items, the Stormtrooper helmets, were subject to copyright. In UK law, there are four categories of copyright: literary, dramatic, musical and artistic. Artistic copyright is itself divided into various sub-categories, such as paintings, photographs and, more relevant here, sculptures and a catch-all class known as 'works of artistic craftsmanship' or WACs. For copyright to subsist in the helmets, they either had to be sculptures or WACs; this led Mann J to a lengthy assessment of the history of the relevant legislation and the not always helpful decisions in previous cases. Mindful perhaps that such prior cases had left later judges (not to mention law students such as me) scratching their heads to make sense of what a 'sculpture' is in the eyes of the law, he sought to give a comprehensive and hopefully definitive analysis. which occupies paras 94-123 of his judgment. His final test is given at para 118; to summarise it, the key factor is that visual appeal in its own right be a primary consideration of the creator. To quote a memorable example he gives,

"A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes. I appreciate that this example might be criticised for building in assumptions relating to what it seeks to demonstrate, and then extracting, or justifying, a test from that, but in the heavily subjective realms of definition in the artistic field one has to start somewhere."

He then applied this test to the helmets (be they the final props or the original clay models of them), and decided that whilst their design was doubtless intended to convey something about the Stormtroopers - menace and anonymity - that expression was utilitarian, for the purpose of being a costume prop, not for artistic ends in themselves. Furthermore, he held that the same applied to toy Stormtroopers produced by Lucasfilm, which he found to be primarily for the purposes of play, rather than artistic interpretation.

[Here I must diffidently and respectfully take issue with one of His Lordship's findings. He says, at para 123, "While their appearance is obviously highly important ... they are not made for the purposes of their visual appearance as such. While there is no accounting for taste, it is highly unlikely that they would be placed on display and periodically admired as such" Having wandered around the dealers' rooms of several science fiction conventions, and for that matter seen the very expensive Star Wars figurines on sale just up the road from the RCJ in the London branch of Forbidden Planet, I would suggest that there is quite a market in reproductions of Stormtroopers and many other such characters for the purpose of admiration by adult admirers. Indeed, one prominent law-blogger of my acquaintance comes readily to mind, having seen the inside of his office! I am rather surprised that Lucasfilm did not lead evidence of this market, as it might have made Mann J a little more wary in reaching this conclusion. Nonetheless, it does not affect the underlying test he derived.]

If not sculptures, were the helmets instead works of artistic craftsmanship? Here the legal guidance is even vaguer, with the leading case of Hensher v Restawile being infamous for having five Law Lords give five different explanations of what a WAC was. Mann J considered various later attempts to draw some common thread from that case, and settled on the test of Tipping J in the New Zealand case of Bonz Group v Cooke :

"for a work to be to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal."

Again, applying this, the helmets were not created as artistic works as such. Indeed, on close examination, they had many characteristics more typical of the props they were, such as apparently three-dimensional details being painted on. Since the helmets were neither sculptures nor WACs, they fell into no category of items in which copyright could subsist under the Copyright, Designs and Patents Act 1988 and so there was no copyright in them for Ainsworth to infringe. (Equally, as noted, this meant that his own claim for copyright in them fell at the start.)

But this was not the only legal point in Mr Ainsworth's favour. Mann J went on to consider the effect of sections 51 and 52 of CDPA 1988, which deal with the relationship between copyright and registered design. Section 51 in particular was introduced to deal with the problem that arose in the 1970s of car manufacturers seeking to stop the sale of third-party spares by claiming that such items infringed the copyright in the original design drawings. Now, it remains generally true that, as stated in the 1940s case of King Features Syndicate v Kleeman - the 'Popeye' case - you infringe the copyright in a drawing by turning it into a 3D object. But s.51 says that this is not so if the drawing you are working from is a design document rather than an artistic work in its own right. In other words, if a drawing is one that exists specifically to be made into an item, then nobody infringes its copyright by so making an item based on it. The item in question might be protected by design right, but such rights are both shorter and more constrained than copyright. S.51 also applies to preliminary models, and Mann J held that both the concept art and the original clay models of the helmets fell within its scope. As such, Ainsworth did not infringe any copyright in them (which, as already noted, did not subsist for the models anyway) by making final items based on them. 

Finally, Mann J turned to s.52, which seeks to avoid the anomaly whereby an industrial design would be protected for a maximum of 25 years by design right, but any element of it protected by copyright got the full life-of-creator-plus-70-years of protection. Here, the legal argument becomes extremely complicated, as the events in dispute took place over a period when the law changed substantially and various transitional measures were put into place. But the end result was that even if s.51 had not provided a defence, Ainsworth could rely on s.52 to say that because the helmet design had been mass-produced, it was protected by the shorter term of design right rather than the full term of copyright - and given the timing of events, such rights had expired. Interestingly, Mann J did not hold that the original bulk prop production constituted mass production, as it had clearly only been for internal, rather than commercial, purposes. Instead he held that Lucasfilm's extensive merchandising of Stormtrooper toys was mass production of the helmet and armour design, and that this had the effect of making the design one limited to the shorter (and thus expired) design right rather than copyright protection.

The judgment also goes into other legal issues, such as whether Ainsworth was contractually obliged in any case to assign copyright in anything he made to Lucasfilm (he was, but as seen nothing he made was protected by copyright anyway) or whether he was under an obligation of confidence not to market products based on his work for Lucasfilm (at the time, perhaps, but not now, according to the judge). He was also held not to have passed off his work as that of Lucasfilm, whilst a trade mark claim was dropped by mutual consent.

So, what do we get out of Lucasfilm v Ainsworth for IP law? A long-overdue attempt to provide a clear judicial test for the meaning of 'sculpture' and 'work of artistic craftsmanship' within CDPA 1988, which I expect to see being cited and making its way into IP texts before long. We also got a clear assessment of the application of s.51 to the creation of articles from such items as concept artwork for films; it seems to me that this gives a green light to costume hobbyists to turn to their Making Of... books and turn the design art therein into garments and props, as not only does s.51 legitimise doing so, but arguably Mr Justice Mann's decision on copyright means that it simply does not subsist in film props and costumes at all. Such activity may infringe design right in such items if done commercially, but as there is an exemption for acts done privately, making replica costumes for ones own use would not infringe any design right that did exist.

To summarise then: both Lucasfilm and Mr Ainsworth will be looking ahead to the next legal round, Ainsworth probably with a wary eye on his possible legal bill (which is of course fiddling small change to Lucasfilm), whilst Mr Justice Mann's judgment not only provides useful clarification of some famously vague areas of copyright law but on the face of it removes, in the UK at least, copyright protection from very many costumes and props depicted on film and TV, as well as provided exemption for their reproduction even where copyright may subsist. Meanwhile, we await Lucasfilm v Ainsworth, Part II: Return of Queen's Counsel.