02 May 2012

Art and cultural assets news - spring: copyright in photographic works

Kenneth Mullen
Partner | UK

The judge in a recent case before the UK Patents County Court considered whether a photographic image reproduced a substantial part of another, earlier photographic image, thereby potentially infringing the copyright in the earlier photographic image. Commentators have criticised the judgment for stretching copyright protection to ideas when the essence of copyright is to protect the expression of ideas, not the ideas themselves.

The case involved a photograph taken by Justin Fielder, the managing director of the souvenir company Temple Island Collections, of a London Routemaster bus crossing Westminster Bridge with Big Ben and the Houses of Parliament in the background. The image (Image 1) is largely black and white, with the Houses of Parliament and Westminster bridge shown in grey. The sky is white, with no visible clouds or anything else. A bright red London Routemaster bus stands out on the bridge. Fielder digitally manipulated the original photograph to achieve the desired contrasting effect of the deep red bus in a de-saturated black and white environment.

The infringing image (Image 2), a compilation of four photographs taken by Nicholas Houghton of the defendant company New English Teas, depicts a similar scene and has a similar look and feel. However, the image is different in a number of respects including: the scene is shown from a different angle; the Routemaster is in the foreground and larger in size than the Routemaster in Fielder's image; the arches of Westminster Bridge are not visible, nor is the water; the steps that feature in the foreground of Fielder's image and the bridge's lamppost do not feature in Houghton's image.

Fielder claimed that Image 2 infringed the claimant's copyright in Image 1 because Image 2 reproduced a substantial part of Image 1. Houghton denied infringement. The defendants (New English Teas and Mr Houghton) had not reproduced in Image 2 a substantial part of Image 1, he argued. Fielder had no monopoly in images of Westminster Bridge with a red bus travelling on it and Big Ben and the Houses of Parliament in the background. Nor did he have a monopoly in the idea of making an image showing a red bus against a black and white London landmark.

In English law, copyright subsists in original artistic works. A photograph qualifies as ‘artistic work'. The originality threshold is traditionally low. The judge accepted that Image 1 qualified for copyright protection.

The judge confirmed the position under English copyright law, that for an infringement of copyright to have occurred, a substantial part of the claimant's photographic image must have been copied by the defendants. In this case, the judge considered the similarities between the two images, and the differences. He noted that the defendants were familiar with the claimant's image. The defendants had in the past created an image which the claimant had claimed infringed Image 1, and the defendants had withdrawn it. The judge noted that ‘the whole point of the exercise [i.e. the making of Image 2] was to produce a non-infringing image given the complaint about the first image the defendants had used'.

The judge found that the common elements between the two images had been copied by the defendants. That, on its own, did not necessarily mean that Image 2 infringed the copyright in Image 1. Infringement depended on whether the elements that were copied in Image 2 represented a substantial part of Image 1. The judge considered which features of Image 1 were copied by Houghton, both in terms of composition and visual contrast. He also considered which features had not been copied. He concluded that on balance, the defendants' image reproduced a substantial part of the claimant's image. He was influenced, he said, by the nature of Fielder's image: it was not simply a photograph. The judge called it ‘a photographic work'. This meant that its appearance was the product of deliberate choices and manipulations by Fielder. He was also influenced by the fact that the defendants had produced at trial a collection of similar images. The defendants had used these images to try and persuade the judge that Image 1 was rather commonplace. The judge found that, in fact, these other images emphasised how different ostensibly independent expressions of the same idea actually look. These factors led the judge to conclude that there had been a significant amount of copying by the defendants who were found in breach of the claimant's copyright.

This decision is relevant to artists who create works that are inspired by other artists' works. Inspiration and copying are two different things, yet an artwork that is closely inspired by another can amount to copyright infringement, if too many elements have been ‘borrowed' by an artist from another artist's work. The difficulty with this area of the law is that the dividing line between ‘inspiration' and ‘copying' is highly subjective. Judges can be influenced by a myriad of factors, not just by the visual impact of the two artworks. This makes it very difficulty indeed to predict the outcome of these types of cases.

The decision has been appealed.

Category: Article