LAW REPORT 24 June 1997 : Publication without licence infringement of copyright

Banier v News Group Newspapers Ltd; Banier v Times Newspapers Ltd; Chancery Division (Mr Justice Lightman) 19 June 1997

The practice by which a newspaper published a copyright photograph after a licence to publish had been granted to another newspaper, but without itself applying for a licence, was unjustified and unlawful.

Mr Justice Lightman granted summary judgment to the plaintiff in his action for infringement of copyright against News Group Newspapers Ltd.

The plaintiff was a photographer of international repute. Princess Caroline of Monaco, who was reported to have suffered from alopecia, had allowed him to take a photograph of her head and shoulders in which she wore neither a hat nor scarf. The photograph was included in a collection of the plaintiff's photographs.

Times Newspapers ("TN") applied to the plaintiff's agent for a licence to publish the photograph in the Times. There was an issue in the action against them whether such a licence was granted: TN contended that the agent had granted a licence on terms that no fee need be paid but that TN should acknowledge the plaintiff as the photographer and refer to the collection.

News Group Newspapers ("NGN") wished to publish the photograph in the Sun. They tried to obtain the necessary licence from the agent, but could not contact him in time. NGN went ahead and published the photograph, with an article headed "The courage of Caroline - royal bald for photos", in which the plaintiff was acknowledged as the photographer and his collection was mentioned.

The plaintiff claimed, in both actions, infringement of his copyright in the photograph. TN and NGN applied for consolidation of the two actions and their transfer to the county court. The plaintiff applied for summary judgment against NGN.

Nicholas Gardner, Solicitor Advocate (Herbert Smith) for the plaintiff; Denise McFarland (Legal Adviser, News Group Newspapers Ltd and Solicitor, Times Newspapers Ltd) for the defendants.

Mr Justice Lightman, dealing with the application for summary judgment first, said that there was clearly no real issue on the question of the subsistence of copyright in the photograph nor of the plaintiff's ownership of it, nor was there any arguable case that NGN had been granted a licence to publish it.

NGN had contended, generally, that it was common press practice after one newspaper had published a copy-right photograph for other newspapers to publish it without waiting for the grant of a licence by the copyright owner. They would, where appropriate, expect to pay a licence fee retrospectively.

That might be common newspaper practice and one which newspapers normally got away with. The risk of infringement proceedings might from a business and circulation point of view be worth taking: it might be economic to "publish and be damned". It was, however, plainly unjustified and unlawful, and the sooner that was recognised the better for all concerned. The adoption of the practice was not a passport to infringe copyright.

Section 30(1) of the Copyright Designs and Patents Act 1988 provided that fair dealing with a work for the purpose of criticism or review did not infringe any copyright in the work or another work provided that it was accompanied by a sufficient acknowledgement. That defence was available in the case where the copyright work was a photograph.

What amounted to fair dealing must depend on the facts of the particular case and must to a degree be a matter of impression. What was of prime importance was to consider the real objective of the party using the copyright work. It was totally unreal to suggest in the present case that the objective in publishing the photograph in the Sun was to illustrate any review or criticism of any copyright work. The article was a news story, and the photograph had a prominent place to make the story come to life. It was true that reference was made to Princess Caroline's stunning pose, but that was merely an aspect of the news story.

NGN had also contended that the grant of the licence to TN free of charge on terms that reference was made to the plaintiff had led them to believe that the plaintiff did not or would not object to publication of the photograph by NGN. That contention was imaginative but totally lacking in any other quality.

There was accordingly no conceivable defence to the action. The plaintiff was prima facie entitled to a declaration of his ownership of the copyright in the photograph, an injunction to restrain infringment and an inquiry as to damages. In the light of that decision, the summons for consolidation fell away, and the parties had agreed that the action against TN should continue in the High Court.