Background
Section 4(1) of the Copyright, Designs and Patents Act 1988 (CDPA) provides that an artistic work includes a graphic work, photograph, sculpture or collage, irrespective of artistic quality. A photograph is defined as meaning “a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film” (section 4(2)).

Facts
Temple Island Collections Ltd, the claimant, argued that it was the owner of copyright in a photograph of a red London “Routemaster” bus travelling across Westminster Bridge. The image was largely in black and white, with the Houses of Parliament and the bridge shown in grey. The sky was white, with no visible clouds or anything else.

The image was created by the claimant’s managing director, Justin Fielder, who had taken a photograph in 2005 from a particular viewpoint. He had subsequently manipulated it on his computer using Photoshop, a standard piece of software. For example, he had strengthened the red colour of the bus, removed the sky completely and had stretched the image. In February 2006, the image was published and was used by the claimant on many souvenir products. The claimant also licensed the image to other organisations, including Historic Royal Palaces.

New English Teas Ltd (NET), the first defendant, was a tea producer. Its best selling packs of tea included tins and cartons bearing images of London. It had settled an earlier action concerning one of its images, which the claimant had alleged infringed its copyright in the photograph. However, it wished to produce another image using a red bus in front of the Houses of Parliament in black and white. Its managing director, Mr Houghton, the second defendant, took four photographs and commissioned Sphere Design to produce an image. They combined and manipulated Mr Houghton’s photographs, together with an iStockphoto image of a “Routemaster” bus.

Temple Island brought proceedings against NET and Mr Houghton for copyright infringement. The defendants argued that the claimant could not use copyright law in effect to give them a monopoly in a black and white image of the Houses of Parliament with a red bus in it.

Decision
HHJ Colin Birss QC held that the defendants’ image infringed the claimant’s copyright in its photograph. The following is a summary of his reasoning.

Subsistence of copyright
In considering the subsistence of copyright in photographs, the judge referred to the commentary in Laddie Prescott and Vitoria on the Modern Law of Copyright and Designs (LexisNexis, 4th ed, 2011) that copyright in a photograph resided in the aspects for which there was room for originality, namely:

Specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on.

The creation of the scene to be photographed.

Being in the right place at the right time.

The judge said that in this case the relevant point was that the composition of a photograph was capable of being a source of originality. The composition would derive from a combination of factors including the angle of shot, field of view, elements which the photographer might have created and those which arose from being at the right place at the right time. However, ultimately the composition could be the product of the skill and labour (or intellectual creation) of a photographer that could give rise to copyright.

The judge said that this case illustrated what could be a fourth category to the three set out by Laddie Prescott & Vitoria: the manipulation of the image using photographic imaging software.

Other similar works
The defendants relied on various other images to illustrate that the collocation of a red Routemaster bus with Big Ben and the Houses of Parliament was a conventional image. The judge said that they showed that the idea of putting together such iconic images was a common one and that the technique of highlighting an iconic object like a bus against a black and white image was not unique to Mr Fielder. It was not clear whether anyone had produced a black and white image of Big Ben and the Houses of Parliament with a red bus in it before Mr Fielder.

As Mr Fielder had not seen them, the judge said they could not be said to have influenced his work. (The judge made further reference to these other works later in his judgment.)

Originality
The judge held that the claimant’s copyright work was original. It was the result of Mr Fielder’s own intellectual creation, both in terms of his choices relating to the basic photograph itself (the precise motif, angle of shot, light and shade, illumination, and exposure), and also in terms of his work after the photograph was taken to manipulate the image to satisfy his own visual aesthetic sense. The fact that it was a picture combining some iconic symbols of London did not mean the work was not an original work in which copyright subsisted.

The judge said the following elements of the image were noteworthy:

Its composition: not just Big Ben but a substantial frontage of the Houses of Parliament and the arches of Westminster Bridge. The bus was on the central left side near a lamp post and was framed by the building behind it. There were people in the picture, but they were not prominent.

The visual contrasts: one between the bright red bus and the monochrome background, and the other between the blank white sky and the rest of the photograph.These elements were the expression of the skill and labour exercised by Mr Fielder, or his “intellectual creation” applying the ECJ’s decision in Infopaq International A/S v Danske Dagblades Forening, Case C‑5/08 (see Legal update, ECJ considers whether reproduction of extracts from newspaper articles infringed copyright (www.practicallaw.com/3-386-7049)).

The judge commented that although comparison with the other similar works was irrelevant as a matter of law in terms of originality, they did illustrate how different choices made by different photographers led to different visual effects.

Infringement
Copying
The judge found that the common elements between NET’s work and Temple Island’s work were causally related. The onus was on NET in view of the obvious similarities between the works. Although there were differences between them, such as the absence of the river in NET’s image, they did not negate copying.

Mr Houghton did not suggest that he had seen any of the other similar works relied on above before seeing Mr Fielder’s image. The judge said that the inference he drew from this was that Mr Houghton sought out this other material after he had decided to produce an image similar to that of Temple Island; that did not avoid a causal link.

Substantial part
The judge said that he did not find substantiality an easy question, but concluded that NET’s work did reproduce a substantial part of the claimant’s artistic work. He rejected NET’s argument that the reproduction had to be nothing less than facsimile copying. The judge said that in the end it turned on a qualitative assessment of the reproduced elements. Those elements were a substantial part of the claimant’s work because, despite the absence of some important compositional elements, they still included the key combination of the visual contrast features with the basic composition of the scene itself. It was that combination that made the image visually interesting; it was not just another photograph of clichéd London icons.

The judge added that although the techniques used by Mr Fielder to achieve the effect he did may have been simple, the result had an aesthetic quality about it, which was the product of his own work.

The judge explained that two factors had influenced his decision on substantiality:

• The nature of Mr Fielder’s image. The judge said it was not a “mere photograph”, meaning an image which was nothing more than the result of happening to click his camera in the right place at the right time. He said that Mr Fielder’s image could perhaps best be called a “photographic work”, meaning that its appearance was the product of deliberate choices and deliberate manipulations by the author. This included choosing where to stand and when to click, but also included changes made after the basic image had been recorded.
• The collection of other similar works relied on by NET.  The judge said that these had worked against the defendants because the collection had served to emphasise how different ostensibly independent expressions of the same idea actually looked.

Comment
This judgment helpfully explores a number of issues surrounding copyright in photographs, which the judge comments is a “tricky” area of law. It looks in particular at the scope of protection for images that have been manipulated by the author using photographic imaging software, an increasingly common phenomenon, to produce what the judge refers to as a “photographic work”. As such it does not deal with the scope of protection of a “mere photograph”, namely an image resulting from clicking the camera.

The judgment also illustrates how the substantiality test applies in practice to infringement of copyright in photographs. One of the relevant factors here was the collection of other similar images that the defendants had gone to great length to find, but which ultimately worked against them, as the judge found that they just emphasised how different the expressions of the same idea looked.

Case
Temple Island Collections Ltd v New English Teas Ltd and another [2012] EWPCC 1, 12 January 2012. (HHJ Birss QC; Michael Edenborough QC and Gareth Tilley (instructed by McDaniel & Co) for the claimant; Richard Davis (instructed by Wright Hassall) for the defendants.)  

PLC IPIT & Communications: 18.01.2012