Not always, according to a recent judgment in the Intellectual Property Enterprise Court (IPEC). His Honour Judge Hacon found that product shots of airline accessories commissioned by the client advertiser (Orvec) for its website and print advertising could lawfully be supplied to a competitor of the client by the advertising agency which created the photographs (Linfoots). (The relationship between the advertising agency and the photographer(s) who actually shot the photographs isn’t considered in the judgment.) 

No usage terms had been expressly agreed between the client and its advertising agency. Linfoots’ terms and conditions merely stated that “Copyright remains the property of the company [Linfoots] unless otherwise assigned.” It was common ground that Orvec had an implied licence to use the photographs supplied by Linfoots. The issue was whether the terms of the implied licence went any further than that. 

Orvec claimed two alternative implied terms:

  1. Linfoots had granted Orvec a worldwide, perpetual, non-terminable and exclusive licence to use the images in the photographs; or
  2. Orvec could use the images for all marketing purposes, without limitation, and the images would not be supplied to a third party without the permission of Orvec.

Orvec pinned its case on the fact that some of the photographs Linfoots created for it included Orvec’s trade marks and/or the livery, trade marks and logos of Orvec’s clients. Orvec argued that Linfoots could have had no legitimate use for those photographs and so the licence in relation to these must have been exclusive and perpetual. By extension, they argued, the same applied to all the other photographs.

The judge disagreed, finding that there was no implication of exclusivity. His view was as follows:

  1. If a designer creates a logo for a client, it is likely the copyright will impliedly pass to the client (see our bulletin on the Griggs case). But a photograph which includes the client’s logo or other trade mark is different. Yes, no one other than the client may have any legitimate reason to copy the work, but the logo can be edited out of the photo. Also, the client would not invariably be expected to be in a position to prevent reproduction of the photograph, even where the trade mark has been removed.
  2. If the commissioned photograph contains a third party’s trade mark, there is no reason for exclusive rights to be implied. The rights to reproduce the trade mark will depend on the user’s relationship with the third party trade mark owner. 
  3. If more than a non-exclusive perpetual licence could be implied, at most the licence was exclusive only where Orvec’s trade mark appeared in the photograph.

Orvec’s claim for breach of contract therefore failed. A separate “reverse” passing off claim also failed, partly because of problems with the claimant’s evidence which appears to have been inadequate.

Does this case establish a general legal principle that clients who commission advertising photography won’t get any exclusivity unless expressly agreed? No. Advertisers or agencies who commission photographers would normally expect some degree of exclusivity (whether or not the commissioned shots include logos or trade marks). They would not, for example, expect to find the images in their advertising simultaneously appearing in a competitor’s (or anyone else’s) advertising. Photographers’ terms and conditions often provide for exclusivity during the licence period. The AOP’s recommended Terms and Conditions say this:

“The Agency and Advertiser will be authorised to publish the Photographs to the exclusion of all other persons including the Photographer. However, the Photographer retains the right in all cases to use the Photographs in any manner at any time and in any part of the world for the purposes of advertising or otherwise promoting his/her work. After the exclusivity period indicated in the Licence to Use the Photographer shall be entitled to use the Photographs for any purposes.”

Disputes about implied terms always turn on their background. The court’s approach is “minimalist” and in this case the judge didn’t see any need to imply exclusivity. The moral is clear: make sure the exclusivity terms are agreed (in writing), or you may find they aren’t what you expect.