England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		Rolls Building, London EC4A1NL
		19/07/2012

Mr Justice Floyd :

Introduction

1. Tyson Sadlo is a professional photographer. In July 2010 he was engaged by a company called Oxygen 10 Limited to conduct a photo-shoot of the well-known business woman Karren Brady. The photographs were intended for publication in Oxygen 10's publication, Today's Business Woman. Mr Sadlo subsequently granted syndication rights to Celebrity Pictures Limited. In this action, Celebrity Pictures and Mr Sadlo allege infringement of copyright by B Hannah Limited, a company in the same group as Oxygen 10 which trades by reference to the brand Boston Hannah International, by authorising publication of the photographs in the BUPA Health Magazine and on the Celebrity Angels website.
2. At the time of the photo-shoot, Oxygen 10 was operated as a separate company from B Hannah at a separate trading address. Shortly after the shoot, the lease of the premises from which Oxygen 10 operated came to an end and thereafter the operations of Oxygen 10 and B Hannah were all conducted from the same premises in Camden, London. At about the same time, Oxygen 10 ceased trading. Oxygen 10 was dissolved due to a failure to file accounts in the course of 2012.
3. B Hannah contends that it, and not either Mr Sadlo or Celebrity Pictures, owns the copyright in the photographs or alternatively that it is a joint owner thereof. The claim to ownership arises out of a written document ("the contract") alleged to have been sent to Mr Sadlo before the photo-shoot took place. The contract explained that by accepting the assignment the photographer agreed to worldwide exclusivity in favour of Oxygen 10. It had a further term that "the image rights belong solely to Oxygen 10". There is no dispute that, if this document was received by Mr Sadlo, its terms are sufficient to defeat the present claim to infringement of copyright. I therefore need not consider further the precise mechanism by which that result is achieved. The receipt or otherwise by Mr Sadlo of the contract is therefore the principal issue in the action. It is also said by B Hannah that there is an implied term to the same effect as the express term.

Joint authorship

4. Before I turn to the factual dispute, I should deal with a separate issue, raised for the first time at the trial, concerning authorship of the photographs. Section 9(1) of the Copyright Designs and Patents Act 1988 provides that the author of a photograph is the person who creates it. In Creation Records Limited v News Group Newspapers Limited [1997] EMLR at 444 450-451, Lloyd J explained that:

"There may be cases where one person sets up the scene to be photographed (the position and angle of the camera and all necessary settings) and directs a second person to press the shutter at a moment chosen by the first, in which case it would be the first, not the second, who creates the photograph. There may also be cases of collaboration between the person behind the camera and one or more others in which the actual photographer has greater input, although no complete control of the creation of the photograph, in which case it may be a work of joint creation and joint authorship (see section 10(1))."

5. In Creation Records, the person who had set up the scene to be photographed (Mr Gallagher) had done so for the purposes of another (official) photographer, and not for the photograph in issue. Lloyd J observed that:

"Mr Gallagher set up the scene and may well have chosen or approved the angle and other details of all or some of the official photographs … in which case Mr Gallagher is the creator, or one of the creators, of the official photographs… But Mr Gallagher had nothing to do with the [photograph in issue] except to bring the subject matter into existence and of course form part of it himself. That does not make him its creator."

6. I think that it is important to bear in mind that it is the creativity involved in creating the photograph which is the subject of the copyright. Hence the emphasis in Lloyd J's judgment on the camera angles and settings and the control of the scene at the instant at which the photograph is taken.
7. In the present case there were two employees of Oxygen 10 at the photo-shoot, Fiona Shields and Fiona Forman ("the Fionas"). Mr Sadlo accepted, there was a sense in which the photo-shoot was a team effort. The brief to Mr Sadlo contained the following instructions:

Cover shot - a smart and professional portrait shot of Karren in a business-like but approachable pose. Please allow plenty of space around her for cover lines and the masthead.

Inside pages - mostly portrait shots ranging from one more serious business pose as a link to her judging role in The Apprentice (perhaps similar to your Paris Hilton shot) through to more relaxed shots, such as looking off camera laughing. Perhaps we could also try Karren sitting on the sofa with a laptop or cup of tea, or marking up a business contract."

8. I do not think these general instructions to the photographer as to the type of photographs, or the very general acceptance that there was a team effort involved in the photo-shoot as a whole, are sufficient to make anyone other than Mr Sadlo the author of the photographs. There is no evidence to suggest that the Fionas were in control of any aspect of the taking of the photograph. I accept Mr Sadlo's evidence, and hold, that the photographs were exclusively Mr Sadlo's creation. Accordingly, Mr Sadlo was the first owner of the copyright.

The express terms

9. I turn therefore to the evidence about the contract. The evidence can scarcely be described as satisfactory on either side. The arrangements were handled on the Oxygen 10 and B Hannah side by the Fionas, but neither was called to give evidence. Instead the evidence came from the director of both companies, Mr Harrington, who could only speak in general terms about the practice of engaging photographers. He was not in a position to say whether the contract in the present case was sent out, although he said they would have regarded it as important to agree terms with a photographer such as Mr Sadlo with whom they had not dealt before. The most he could say is that it should have been.
10. Mr Sadlo gave the most emphatic evidence, both in his witness statement and at trial, that he had never received the contract, and would never have conducted the shoot if he had seen a contract with those terms. However, in cross-examination he said he had not seen the contract until that very day. That raised the question of how he could have come to give detailed evidence about the document without even looking at it. I think that Mr Sadlo must have forgotten that he was shown the document at the time he made his witness statement. However that does not leave me with any confidence that his recollection of not having received the document can be relied upon.
11. As is often the case with conflicting evidence from two people as to what they believe happened, or did not happen, the contemporaneous documentary record may throw light on what occurred.
12. Tyson Sadlo was recommended to Oxygen 10 by Karren Brady for the shoot. Negotiations between Fiona Forman and Mr Sadlo took place by email, commencing with an email from Fiona Forman on 15^th June. By 17^th June at 09.52 Mr Sadlo had agreed to do the shoot at a particular rate and do post- production on 6 images for £250, subject to additional charges for lighting if not included in studio hire. In that email Mr Sadlo said that once he had received a "full brief" he could work out the lighting and correct his estimate. Shortly after, at 10.05, Ms Forman accepted these terms and confirmed that a full brief would be sent once the editor (Fiona Shields) had sorted it out. At 10.14 Mr Sadlo asks for a copy of the magazine, Today's Business Woman, and offers to show Ms Forman some pictures from his portfolio. At 10.18 Ms Forman replies that she will send the magazine and asks for Mr Sadlo's address. She also confirms that she would like to see his portfolio. Mr Sadlo provided the address (11.16), and by 16.18 on the same day Daniel Braybrook of Celebrity Pictures had sent some material from Mr Sadlo's portfolio to Ms Forman. An email at that time suggests arrangements for a meeting. There was no further email communication between 17^th June and 28^th June when the suggestion of a meeting was followed up.
13. Meanwhile it appears that someone at Oxygen 10 had created a Word document containing the contract at 12.48 on 16^th June and modified it at 9.04 on 17^th June. Mr Harrington confirmed that the normal method of communicating with photographers at the time was by email, as the email correspondence in the present case shows clearly. The hard copy of the contract in the papers in the present case contains some manuscript additions, but there was no evidence as to who made these additions. One says "SENT 17-6". I cannot place any weight on these markings, as B Hannah invite me to do. Mr Harrington suggested that the contract would have been sent with the copy of the magazine, by ordinary post, and contrary to the usual practice of communicating by email. He seized on the mention of the "full brief" in the email earlier in the day, saying that this was the contract. However Mr Sadlo's evidence was that he received a detailed brief in the form of a call sheet on 13^th July 2010. I find that this is the brief referred to in the email communication. There is accordingly no reference whatsoever in the email correspondence to any contract.
14. Counsel for the claimants submits that it is implausible that the contract would have been sent without any mention of it in any of the email correspondence. Given the importance which Mr Harrington attached to dealing with a new photographer, she submits that Oxygen 10 would have been particularly careful to use a form of communication which could easily provide evidence of receipt. She points to the absence of any covering letter accompanying a physical document, and the absence of any direct evidence from either Fiona as to whether the document was sent.
15. Counsel for B Hannah submits that the evidence of a practice of sending contracts to photographers in similar form, coupled with the obvious need for an agreement regulating the use of copyright in the present situation make it more likely that the contract was sent. He pointed to the terms of the agreement between Boston Hannah International Limited ("BHI", a BVI company) and Ms Brady which contains terms requiring BHI to retain the IP rights of all photographs which it commissions and to ensure that the publication and its contents respect the good reputation of Ms Brady.
16. In my judgment the evidence does not show, on the balance of probabilities, that the contract was sent to Mr Sadlo. I accept the points made by counsel for the claimants. Whilst there is logical force in the points made by counsel for B Hannah, none of them begins to explain why, in the course of the continuous email correspondence, there is no reference to the existence of the contract or its terms and conditions. The most likely explanation is that, having prepared the contract, it remained on the server used by Oxygen 10. That is where it was found many months into this litigation, long after its production had been requested, and after specific disclosure had taken place. I am quite unable to accept that it reached Mr Sadlo by any means.

Implied term

17. B Hannah contend that in the absence of the express term in the contract, it was an implied term of the engagement of Mr Sadlo that he would agree to an assignment of the copyright in favour of Oxygen 10.
18. The principles on which the court should approach the implication of terms in these circumstances are no different from any other situation in which the court is asked to imply terms into contracts. The criterion is that of "necessity": see the summary of the law in Robin Ray v Classic FM PLC [1998] FSR 622, Lightman J. If a court does imply a term, it should make no greater incursion into the rights of the copyright owner than is necessary to meet the case: the minimalist approach.
19. The circumstances in the present case are in my view insufficient to compel a finding that it is necessary to give effect to the contract that Oxygen 10 should receive an assignment of the copyright. The parties had in contemplation the publication of the material in Oxygen 10's printed publication Today's Business Woman. It was not established that the parties had any wider use in mind at the time when the agreement was concluded by the series of emails I have referred to.
20. In my judgment it is not necessary to imply into the agreement any wider term than that accepted by the claimants, namely an agreement to use the results of the photo-shoot for publication in Today's Business Woman. It is not necessary to resolve whether that licence is limited to the six images in fact produced.

Express agreement for web use?

21. Mr Sadlo said that he agreed orally with one of the Fionas at the photo-shoot that there could be use in an on-line version of the magazine. This does not go far enough for B Hannah's purposes, as the use in fact made is different.

Infringement

22. There is no dispute that the images which appeared in the BUPA Health Magazine and on the Celebrity Angels website were reproductions of the photographs. The question which remains is whether B Hannah are liable as primary infringers. B Hannah suggest that the only party bearing any responsibility is the dissolved company Oxygen 10. A case that B Hannah are liable for acts of Oxygen 10 as joint tortfeasors was abandoned in the light of the evidence.
23. The relevant acts all occurred in 2011, after Oxygen 10 had ceased trading. Much effort was spent on seeking to establish that this was "an Oxygen 10 matter", and so it was so far as arranging for the photo-shoot was concerned. However, even in September 2010 when arrangements were being made to pay Mr Sadlo's invoice which was originally directed to Oxygen 10, he was requested to redirect it to B Hannah, as by then "they changed all the payment over to one account as Boston Hannah". It is clear in my judgment that by 2011 everything was under the control of B Hannah.
24. The media company responsible for the BUPA magazine was John Brown Media. Negotiations were carried out with Kerry Spencer who described herself as Editor Boston Hannah International, but who Mr Harrington confirmed had a role at B Hannah. It was B Hannah who invoiced John Brown Media in August 2011. This was said by Mr Harrington to be an error, and a fresh invoice from Oxygen 10 was apparently issued on 17^th October. However, by this date B Hannah had been notified of the claim of infringement against it. Given that all payments were now being directed through one account, and that the original invoice to B Hannah had already been paid on 6^th October, the reissue of the invoice from Oxygen 10 appears to me to be artificial.
25. The true position, as it seems to me, is that the publication in BUPA Health was authorised by B Hannah. It could not have been authorised by Oxygen 10, as it had ceased trading. B Hannah have therefore infringed the copyright in the photographs in that respect.
26. Mr Harrington said that the Celebrity Angels website was operated by BHI, the BVI company and subcontracted to the Chicago operation, Boston Hannah Chicago LLC, who had expertise in web technology. However, the only way in which the images can have been provided to BHI or Boston Hannah International is via one of the English companies, as B Hannah assumed control of the images once Oxygen 10 ceased trading. I conclude that B Hannah has authorised the inclusion of these images on the Celebrity Angels website.

Conclusion

27. It follows that the action succeeds. As I indicated at the trial, I would hope that the parties can now agree all outstanding issues including costs and damages. It will not be necessary for the parties to attend the handing down of this judgment. The parties should attempt to resolve all the outstanding issues in the 14 days following judgment so as to avoid further costs being incurred by any further hearings or protracted negotiations. If they can do so they should submit an agreed minute of order which I will approve. If not the matter will have to be re-listed before me after October 1 2012 for further argument.