A recent decision of the English Patents Court involved a claim for copyright infringement relating to photographs used by the parties on the packaging of their respective products.
The plaintiff sells souvenirs of London. A number of products sold by the plaintiff bear its photograph including mugs, stationery, key fobs and the like. The image has become famous in the souvenir industry. In addition, a number of other organizations have been licensed to use the image by the plaintiff including Historic Royal Palaces, the organization which operates the Tower of London, and the National Gallery. Click here to view the copy of the plaintiff’s photograph.
The defendants produce and sell tea to a wide variety of customers throughout the world. The defendants’ best selling teas come in tins and cartons bearing images of English landscapes, icons of England and images of London.
The defendants’ tea tins and boxes were frequently sold side by side with souvenirs bearing the plaintiff’s photograph.
The Plaintiff’s Photograph
The plaintiff’s managing director created the image by taking a photograph in August 2005. He wanted to create a single, modern and iconic scene of London. He had taken previous photographs of the river and the Houses of Parliament and knew where to stand. In fact, the place where he stood is used by many tourists as a vantage point to take photographs.
The image was manipulated using the standard computer software of Photoshop. The red colour of the bus was strengthened, the sky was removed completely by (electronically) cutting around the skyline of the buildings, the rest of the image was turned to monochrome save for the bus, the individuals present in the foreground were removed and the whole image was stretched to change the perspective so that the verticals in the buildings were truly vertical. The idea of making the red bus stand out against a black and white background came from the film Schindler's List. The film includes striking use of the technique in a different context.
The Defendants’ Photograph
The defendants wished to produce an image using iconic London landmarks with the same general format as that used by the plaintiff; greyscale Houses of Parliament and a red bus on the bridge. They believed that the plaintiff’s copyright did not prevent them from doing this.
An employee of the defendants took four photographs of different aspects of the Houses of Parliament and a red Routemaster bus while it was stationary on the Strand. These photographs and their elements were combined and manipulated as well as a stock image of a Routemaster bus that was resized to fit the defendants’ image. Click here to view the defendants’ photograph.
The Copyright Claim
When the plaintiff became aware of the defendants’ activities, it brought an action in which it claimed breach of its copyright in its photograph. Copyright is infringed by reproducing the whole or a substantial part of a work in a material form without the copyright owner’s consent.
Under the English legislation, copyright subsists in a photograph if it is the author’s intellectual creation resulting from the expression of skill and labour. However, the mechanical process of taking a photograph by merely pressing a button involves no skill at all. A photograph of an object found in nature can be protected by copyright if sufficient skill and labour is directed to the arrangement of the photograph including motif, visual angle, elimination, etc.
The judge said that skill and labour can arise in the following aspects of a photograph:
- the 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; and
- being in the right place at the right time.
The trial judge found that the plaintiff’s image was the photographer’s own intellectual creation both in terms of choices relating to the basic photograph itself; precise motif, angle shot, light and shade, illumination and exposure as well as the subsequent manipulation of the image to satisfy his own visual aesthetic sense.
In determining what is a substantial part of a work, the courts consider the quality of what is taken, not quantity.
The trial judge found that the common elements of the respective works were casually related, or in other words, had been copied. The evidential onus was on the defendants to show they had not copied it given the obvious similarities between the respective works and the fact that the defendants had access to the plaintiff’s work. It was not a coincidence that both images showed Big Ben and the Houses of Parliament in black and white with a bright red bus driving from right to left and a blank white sky.
The trial judge then found that the defendants’ photograph reproduced a substantial part of the plaintiff’s work. The elements that had been reproduced were a substantial part of plaintiff’s work because, despite the absence of some important compositional elements, they included the key combination of the visual contrast features with the basic composition of the scene itself. This is the combination that made the plaintiff’s work visually interesting and not just a photograph of clichéd London icons.
While the case is close to the line, the application of principles and the conclusion seem to be correct. The test applied by Canadian courts to determine when copyright arises is somewhat different, “skill and judgement” as opposed to “skill and labour”, but the result if the case was tried in Canada would not likely be different.
Brand owners need to be aware of how copyright applies to product packaging.