Temple Island Collections Ltd v New English Teas Ltd

JurisdictionEngland & Wales
JudgeHIS HONOUR JUDGE BIRSS QC,His Honour Judge Birss Qc
Judgment Date12 January 2012
Neutral Citation[2012] EWPCC 1
Docket NumberCase No: 1CL 70031
CourtPatents County Court
Date12 January 2012

[2012] EWPCC 1


Rolls Building

7 Rolls Buildings

London EC4A 1NL


His Honour Judge Birss Qc

Case No: 1CL 70031

Temple Island Collections Limited
(1) New English Teas Limited
(2) Nicholas John Houghton

Michael Edenborough QC and Gareth Tilley (instructed by McDaniel & Co) for the Claimant

Richard Davis (instructed by Wright Hassall) for the Defendants

Hearing date: 28th November 2011

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.


This is an action for copyright infringement. The claimant claims to be the owner of copyright which subsists in a black and white photograph of a red bus travelling across Westminster Bridge. A copy is at Annex 1. The image is largely in black and white, with the Houses of Parliament and the bridge shown in grey. The sky is white, with no visible clouds or anything else. A bright red London Routemaster bus stands out on the bridge. The claimant's image is used on souvenirs of London.


The defendants produce tea. They created an image which was alleged to infringe the claimant's copyright. That action settled on the basis that the defendants agreed to withdraw the image, subject to some disputes which I resolved on paper ( [2011] EWPCC 21). Nevertheless the defendants wished to produce an image using these iconic London landmarks and with the same general form: grey scale Houses of Parliament and a red bus on the bridge. They believed the claimant's copyright did not prevent them from doing so. An image was produced. That second image is the subject of this action. It is at Annex 2.


The claimant contends Annex 2 infringes its copyright in Annex 1. The defendants deny infringement. This superficially simple question involves a tricky area of law: i.e. copyright in photographs; and, in the end, turns on a disputed qualitative judgment.

The basic facts


The basic facts are not in dispute. The claimant's managing director Mr Fielder created the work by taking a photograph in August 2005. He wanted to create a single, modern and iconic scene of London. Having taken images of the river and the Houses of Parliament for many years Mr Fielder knew where to stand. In fact the place he stood is where many tourists also stand with their cameras. He knew he would be able to capture the bus heading to the south side of the river and thus show the front of the vehicle. He could ensure that other landmarks, i.e. Parliament, Westminster Bridge, and the river, were included and he would have a strong skyline.


Once the photograph was taken Mr Fielder manipulated it on his computer using a well know standard piece of software called Photoshop. He had the idea of making the red bus stand against a black and white background from the film Schindler's List. That film includes striking use of the technique in a different context.


In summary the manipulations Mr Fielder undertook were: 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; some people present in the foreground of original photograph were removed (there was a small group on the stairs and a person at the top under the lamppost); and the whole original image was stretched somewhat to change the perspective so that the verticals in the buildings were truly vertical. Mr Fielder spent about 80 hours on this including the photography trips.


The image was published in February 2006 and has been used by the claimant on souvenirs ever since. Many products are sold bearing the image including mugs, stationery, key fobs and the like. The image has become famous in the claimant's industry. A number of other organisations have licensed the image from the claimant. Historic Royal Palaces, the organisation which operates the Tower of London, approached the claimant to expand the range of products on to t-shirts. Although the Tower is not in the photograph, this remains their best selling range 4 years later. The National Gallery took on the claimant's range in their shop. It was the only range of products of that style they stocked at the time.


Mr Houghton's company supplies tea to a wide variety of customers throughout the world. The company's best selling packs of tea include tins and cartons bearing images of English landscapes, Icons of England. They include images of London. Mr Houghton had participated in the creation of the so called "First Allegedly Infringing Work" along with a company called Sphere Design. As I mentioned above, that dispute was settled. To produce the second work, the one with which this case is concerned, Mr Houghton took four photographs. Three were of different aspects of the Houses of Parliament and the fourth was a picture of a red Routemaster bus while it was stationary on the Strand. Of the three, one photograph showed the facade of the Houses of Parliament, one showed Big Ben and one showed part of Big Ben with Portcullis House across the road. Mr Houghton explained how the defendants' work had been produced by Sphere Design. They combined and manipulated Mr Houghton's images as well as an iStockphoto image of a Routemaster bus. The bus was resized to fit and the road marks were changed to be consistent. The stock image was used for parts of the bus. Annex 2 was the result.

The rival arguments


The claimant contends the work at Annex 2 infringes its copyright in the work at Annex 1, it reproduces a substantial part of the claimant's work. The defendants deny infringement. They say one must be careful to identify precisely what it is in which claimant has rights (i.e. by asking: in what does the claimant's originality lie?). For there to be infringement a substantial part of that (i.e. the things in which the claimant has rights) must have been reproduced by the defendants. Putting the matter another way, the defendants contend that the key consideration is the assessment of the relevant skill and labour which went into the expression of the copyright work and whether that skill and labour has been reproduced in the alleged infringement.


It is quite obvious that in no sense has any photocopying style reproduction taken place. The defendants' work was created from photographs Mr Houghton took himself. It is also quite obvious that the point of the exercise was to avoid infringing. Mr Houghton was clearly trying to avoid infringing. His and his company's case is that the claimant cannot use copyright law in effect to give them a monopoly in a black and white image of the Houses of Parliament with a red bus in it. He clearly knew about the claimant's work when the second image was produced because the whole point of the exercise was to produce a non-infringing image given the complaint about the first image the defendants had used.


The claimant contends it is a clear case of infringement. At the crudest level the two images in question simply look strikingly similar. There are a myriad of ways in which a bus could be portrayed in front of the Houses of Parliament that would not have been inappropriately based upon the claimant's work yet the defendants have done so in a way which is very similar indeed to the claimant's work.


There is no dispute that if infringement is found, Mr Houghton and his company, the first defendant, would be liable as joint tortfeasors.

The trial


At the trial Michael Edenborough QC and Gareth Tilley instructed by McDaniel & Co. represented the claimant and Richard Davis instructed by Wright Hassall represented the defendants.


The claimant's only witness was Justin Fielder. He took the photograph in which the claimant claims copyright and made the manipulations of it which led to the image in its final form. He was cross-examined by Mr Davis. The point being made in the cross-examination served to emphasise that the place at which Mr Fielder stood to take the photograph was a standard spot, where many tourists will take photographs of the Houses of Parliament every day. He was asked if he had seen various images relied on by the defendants. He had not seen them before.


The defendants' only witness was the second defendant Mr Houghton. He is the sole director of the first defendant. His evidence addressed the publicly available images of red buses and the Houses of Parliament as well as the production of the defendants' work. The cross-examination focussed on how the defendants' work had been produced.


Neither witness was criticised by counsel. They both gave their evidence fairly and honestly.

The Law

Subsistence of copyright


Copyright subsists in original artistic works (s1(1)(a) of the Copyright Designs and Patents Act 1988). "Artistic work" means "a graphic work, photograph, sculpture or collage irrespective of artistic quality" (s4(1)(a)). "Photograph" means a "recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film" (s4(2) of the 1988 Act).


At trial it was common ground that the impact of European Union law meant that the judgment of the CJEU in the Infopaq case (C-5/08 [2010] FSR 20) was such that copyright may subsist in a photograph if it is the author's own "intellectual creation". After trial it was also common ground that the recent judgment of the CJEU in the Painer case (C-145/10, 1 st December 2011) was to the same effect and did not necessitate further submissions from the parties.


Mr Edenborough also referred me to and relied on O (Peter) v F KG ([2006] ECDR 9) decided on 16 th...

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