Having spent the last few days immersed in the Olympics (see my Olympic related Tweets @Very_IP) it is refreshing to actually sit down and read some cases. In particular, the Patents County Court case of (1) Celebrity Pictures Limited and (2) Tyson Sadlo v B Hannah Limited.
This case revolved around photos of businesswoman Karren Brady (for the football fans amongst you she is the vice-chairman of West Ham Utd and former managing director of BirminghamCity).
Back in July 2010 the publisher Oxygen 10 Limited commissioned the photographer Tyson Sadlo to conduct a photo-shoot of Brady for its publication: Today’s Business Woman. Sadlo subsequently granted syndication rights to Celebrity Pictures Limited (hence its inclusion into this claim).
All is well so far…. but……
B Hannah Limited authorised the publication of certain photos in the BUPA Health Magazine and on the Celebrity Angels website. Sadlo found out about this and issued a claim for copyright infringement. B Hannah’s defence to this is that either:
- It owns the photographs; or
- It is a joint owner of the photographs.
These were based on the relationship between B Hannah and Oxygen 10, both of which traded from the same address and when Oxygen 10 was dissolved (earlier this year) B Hannah took over its business. In considering the above points Hon Mr Justice Floyd provided some useful, if not groundbreaking, insights:
Oxygen 10 Limited provided Sadlo with a brief setting out briefly (pun only slightly intended) what photos they were after. However, this is as far as their input extended. Whilst Oxygen 10 did have employees present, their input did not amount to such as is required under the test in Creation Records Limited v News Group Newspapers Limited  EMLR in so far as whilst they may have been involved in setting up the studio they were not involved in choosing: the camera angles and settings and the control of the scene at the instant at which the photograph is taken.” As a result, Oxygen 10 were not joint owners of the photographs. It therefore follows that B Hannah were also not joint owners of the photographs.
B Hannah attempted to rely on a contract that Oxygen 10 purported to have sent to Sadlo. Within this contract were terms to the effect that Oxygen 10 owned the photographs and that by accepting the assignment Sadlo agreed to worldwide exclusivity in favour of Oxygen 10. Sadlo however claimed not to have received such a contract and that had he received the contract then he would not have conducted the shoot. What followed was an evidential argument. Basically, Oxygen 10 could not show that the contract had been sent. Their usual procedure was to send by email, however, in this instance they had failed to do so and claim that they sent the contract by post, albeit they have no evidence of this. Floyd was not keen on Oxygen 10’s position because:
- There was no explanation as to why this letter was not sent by email as per all other correspondence.
- Sadlo had repeatedly requested a copy of the contract prior to the trial but Oxygen 10 / B Hannah had failed to provide it.
Accordingly, and on the balance of probabilities, Floyd determined that the evidence failed to show that the contract was sent to Floyd and thus there was no express term assigning B Hannah the copyright.
In the alternative B Hannah argued that in the absence of the express term in the contract, it was an implied term of the engagement of Sadlo that he would agree to assign the copyright to Oxygen 10. However, in applying the usual principles related to implied terms Floyd found no reason to imply the agreement any further than that definitely agreed with the claimant i.e. that the photos can be published in Today’s Business Woman.
Oxygen 10 had ceased trading prior to the allegedly infringing use and Floyd ruled that the B Hannah were liable for these infringements. This was helped by the evidence provided by Sedlo to the effect that Sadlo had been requested to redirect his invoice to B Hannah as they had “changed all the payment[s] over to one account as Boston Hannah”.
I’m a photographer, what should I do?
Nothing in this case is remotely ground-breaking however it is a timely reminder of something that I say so often to clients that I may as well make it part of my email signature and that is GET A CONTRACT. If the parties had negotiated an acceptable contract at the outset then this case wouldn’t have even got off the ground, or in the case that Sadlo had negotiated a contract as he saw fit then the claim would have been very simple and the, no doubt substantial, costs saved. It is amazing that in this day and age people are still happy to work without ensuring their contractual position is set from the outset. If you do not wish to go down the route of full terms, then at least cover the main terms in bullet form (even if as part of an email) i.e. what you are to photograph, how much you are to be paid, what use they can make of the photos, who owns the photos etc.