CASE COMMENT
Case in point: EWPCC 1, Temple Island Collection Limited v (1) New English
Teas Limited (2) Nicholas John Houghton, HHJ Birss QC, 12 January 2012
Spot the difference
Two red buses on a bridge shed light on the
current state of photographic copyright, as
Sharon Daboul of MW Trade Marks reports
I
n this case, Temple Island Collection
(“TIC”), a souvenir manufacturer,
took action to protect an image of a red
bus in a case of copyright infringement
concerning photographs. In its second
action against New English Teas
(“NET”), tea suppliers, TIC claimed
copyright subsisted in its photograph
of a Routemaster bus on Westminster
Bridge (see photo below, top).
The co-Defendant, Nicholas John
Houghton, had tried to produce a
non-infringing image (below, bottom)
by combining and manipulating four
photographs of the same view. NET
denied infringement, arguing that
copyright law should not allow
TIC a monopoly in its black and
white photograph of the Houses
of Parliament with a red bus.
Infringement
Copyright is infringed by reproducing
the whole or part of an earlier work.
Whether NET had infringed was a
question of degree, based on the selection
of the substantial elements of TIC’s image.
The key visual elements, including
the red bus and white sky, and the basic
composition of the photograph, had
been duplicated.These elements formed
a substantial part of the photograph
because it was these aspects that made
it eye-catching and aesthetic.The result
was that NET had created an image that
was strikingly similar to the first.The
photographs did not need to be identical.
A decisive factor was that before
creating his own image, Houghton had
Copyright in photographs
Copyright subsists in original artistic
works and may exist in a photograph if
it is the author’s own intellectual creation.
HHJ Birss QC stated that copyright
extends to photographs to the extent
that there is room for originality in the
work.This can be expressed through
the composition of the photograph, and
may include recreating a scene that had
already been photographed if it involved
sufficient skill and labour.
HHJ Birss QC found that TIC’s
image was original. It was an intellectual
creation that resulted from choices
made when the photograph was taken,
and in its subsequent manipulation.
It had taken approximately 80 hours
to produce the image.
It did not matter that the place in
which the photographer stood was
popular for tourists and that standard
software had been used post-production.
The important point was that the
photographer had used his own aesthetic
sense to create the visual effect.
HHJ Birss QC noted the composition
of the photograph and the contrast of
the bright red bus against a black and
white background.
seen TIC’s photograph, as it had formed
part of the earlier proceedings. NET
had intended to produce an image
that resembled TIC’s work but did not
infringe. This point was not challenged.
Given the similarities between
the photographs and the case history,
HHJ Birss QC concluded that
NET’s work was not an independent
creation. The Judge found there was
infringement because the elements
in both works were causally related.
ABOUT THE
AUTHOR
Sharon Daboul
is a Trade Mark Attorney
at MW Trade Marks
[email protected]
Sharon deals with trade mark,
copyright and design matters,
and has experience in dealing
with UK, Community Trade
Mark and International
Trade Mark portfolios.
NET produced several examples
of similar photographs to show that
TIC’s photographic effect was not
unique. However, this did not alter the
finding, and was actually a hindrance
because it highlighted how the same
idea can generate various expressions.
HHJ Birss QC also found that a
cropped version of the photograph
would infringe if it reproduced the
key elements of the earlier work.
On finding that a substantial part of
the earlier mark had been reproduced,
HHJ Birss QC admitted that it had
not been an easy conclusion. However,
this decision represents a worrying
development in copyright law. The
second photograph is not a faithful
reproduction of the first. Previous cases
have held that where two photographs
are taken of the same scene, each
photographer has copyright in their
own work. It may now be the case that
a photographer who reproduces the
effect of another photographer’s image
may infringe. The decision comes very
close to protecting copyright in an
idea, rather than an expression.
The case informs us that a
photographer can protect a photograph
of a scene where specific manipulations
have been made. HHJ Birss QC stated
that copyright existed in both works.
What may differentiate this
case are the facts. NET set out to
create an image that was similar to
TIC’s image but would not infringe
its copyright. Without this previous
history between the parties, it may
have been difficult to establish an
intent to copy.
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