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Many businesses rely on third parties to contribute creative material. This material may be integrated into products, or it may be supplied for incidental purposes, eg for use in marketing material. But to what use, exactly, can the commissioning party put the material?
The Copyright, Designs and Patents Act 1988 (CDPA) provides that the author of the work is the owner of the copyright in it, meaning he has the exclusive right to copy it and communicate it to the public. The CDPA also provides that the party commissioning the work has an implied licence to use the work but how far does that licence extend?
A recent case involving the Daily Mirror has highlighted some of the limitations of an implied licence. It was already established that the extent of a licence should be that contemplated at the time the licence was granted and what was necessary to regulate the rights of the parties at that time. In MGN Limited and Others v Grisbrook the Court of Appeal examined this principle in relation to photographs. A freelance photographer, Mr Grisbrook, had between 1982 and 1997 provided photographs for publication in the Daily Mirror. However in 2006 and 2007 MGN launched various archive websites containing back copies of the Daily Mirror which contained Mr Grisbrook's photographs. The Court of Appeal was satisfied that the implied licence did not extend to cover use of the photographs on the archive websites because online exploitation was not in the contemplation of the parties at the time they entered into contract.
The case might be a rather extreme example - it will not be often that a completely different method for using creative material (such as online exploitation) will arise. But it does highlight the fact that licences do have their limitations, especially if they are implied/informal.
Where possible, we always recommend that a client commissioning creative material investigates the possibility of taking an assignment of it, so that it has outright ownership and is free to use the material however it chooses. If this is not possible, a formal licence drafted in terms which are wide enough to cover all possible future uses should be the fall-back position. If you would like us to review the arrangements relating to creative material used by your business to see if they give adequate protection, or if you have any questions generally about copyright, please contact us.