When Birss meets Bus: a study in Red and Gray

This weblog has received a note from Andy Johnstone on a recent copyright decision in which he reflects the concern of a number of recent correspondents.  Andy explains as follows:

"The week before last in the Patents County Court for England and Wales, His Honour Judge Birss QC gave judgment in Temple Island Collections Ltd v New English Teas Ltd & another [2012] EWPCC 1 which, while it is not binding on the High Court, nevertheless appears to represent a new and perhaps worrying development in copyright law. 

The case involved two photographs of a Routemaster London bus on Westminster Bridge with the House of Parliament in the background. Or perhaps that should read pseudo-photographs-- as both images were the result of varying degrees of post-production manipulation. However, nothing turned on that as the judge found that, even if they were collages, each potentially attracted copyright.

Looking at the two images, one is clearly not a faithful reproduction of the other. Yet the image on the right (the defendant's) was held to infringe the complainant's (above). It can be seen that they share a lot of the same 'look and feel' in the way the subject has been rendered -- but it has long been felt (see Laddie, Prescott & Vitoria paras 4.60 and 4.61) that the taking of two photographs of the same scene, especially where that scene is somehow iconic or distinctive, does not lead to infringement because each is original by virtue of to the creative input of the two photographers. In other words the 'idea' element assumes a lesser importance because it is obvious, and emphasis shifts to the 'fixing' of the idea. In this regard each photographer is independent of the other and so each has an equal claim to copyright in his or her respective work. 

Where this latest decision is of concern is that it seems to draw too heavily on the sort of analysis one might use to determine similarity in a trade mark. Judge Birss was clear that he had dismissed any suggestion that this case might have had overtones of passing-off, given that the two images were often to be found side-by-side on products aimed at tourists. But despite that he seems to have been persuaded to examine the 'idea' much more extensively than the way in which it was fixed. 

One factor which weighed against the defendant was the fact that he knew of the existence of the claimant's image before he created his own image. Indeed, he could hardly deny this since he  had lost an earlier action involving exactly the same claimant's image and another of his (the defendant's) which was very much more similar than the image in this case. Taking that as the starting point, the judge decided the case on the degree to which the second image used substantial elements from the claimant's image -- not in any mechanical sense of copying, but in the selection and emphasis of them. This is a long way from the argument in the American decision in Bridgeman Art Library v Corel, which involved the photographic reproduction of a painting, where it was held no copyright existed in the photograph because of a lack of originality. In the action before him, Judge Birss acknowledged the defendant's creative input by saying that his was a derivative work capable of copyright protection, but for the infringement which had been brought about by not having the permission of the owner of copyright in the underlying work. 

Another slightly surprising factor in this action was that several other examples of what might be termed 'prior art' were offered to the court, clearly indicating that there was nothing particularly novel about either the claimant's composition or rendition of his image. However the submission of this evidence did not alter the finding that the defendant used a substantial part of the claimant's work as the source for his own image. 

Most professional photographers are likely to find this decision worrying because it undermines the prevailing view of copyright within the industry".

If the learned judge's analysis, based on (among other things) the view of the Court of Justice in Case C-5/08 Infopaq as to what constitutes the protectable subject matter of an author's work, is correct, the advice which I have given law students since I first taught copyright in the 1970s is no longer reliable, that the photographer who recreates the effect of another's photograph of a public scene or monument is now a copyright infringer, and that there may now be a notion of copyright in an idea, a lay-out or a scheme for such a photograph.

I am also intrigued at the submission of evidence of 'prior art' in the form of a series of London bus-related photographs from Getty Images here, here, here, here, here, here and here. It seems to me that Corelli v Gray [1913] 29 T.L.R. 116 establishes that, once the claimant company has established that copyright exists in its work, that it owns the copyright and that  the defendant's work is similar, 'prior art' will avail the defendant if he can show that both he and the claimant copied from the same work -- and, by the same reasoning, Corelli v Gray should assist him if he can show that he infringed one of the Getty Images rather than the claimant's one. But wouldn't that be a case of jumping out of the frying-pan and straight  into the fire?