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BEECHAM GROUP PLC v BIOTECH LABORATORIES (PTY) LTD

TRANSVAAL PROVINCIAL DIVISION

SWART J

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JUDGMENT

The first applicant is Beecham Group plc Liability Company incorporated in accordance with the Companies Law of the United Kingdom, having its principal place of business at 4 Dew Horizons Court, Harlequin Avenue, Brentwood, Middlesex, England. The second applicant is Smith-Kline Beecham Pharmaceuticals (Pty) Ltd, a company duly incorporated in terms of the Company Laws of the Republic of South Africa, having its principal place of business at Inyanga Close Sunninghill Extension 81, Sandton, Gauteng. The respondent is Biotech Laboratories (Pty) Ltd, a company duly incorporated in terms of the Company Laws of the Republic of South Africa, having its principal place of business at 10 Melrose Street, Melrose, Johannesburg Gauteng.

I found for the applicants on 7 June 2000 on the question of urgency and ordered that the matter be heard by me during the vacation recess. I heard argument on 29 June 2000. Counsel have referred me to a host of detail and authorities which, no doubt, warrant a sophisticated and comprehensive judgment which I do not intend delivering. The judgment will have to be confined to essentials. If a comprehensive reference to the facts and authorities is found necessary, such will be obtained from the various heads of argument put before me by counsel.

I was told by Mr Puckrin that at this stage only relief based on copyright infringement is being pursued and that is what a full day’s argument was devoted to. Somewhat surprisingly I received further written submissions on behalf of the applicants on the following day, claiming that the respondent has conceded that its use of the applicant’s information in the package insert, Absorption and Excretion is wrongful and has acceded to the claim to have it deleted from the package insert and that the respondent has therefore acceded to prayer 8 of the notice of motion. This drew a vehement written reaction from respondent later on the same day, denying any concession as to unlawful competition and emphasising that the matter was argued on one and only one issue, that of copyright. The tactics of the applicants are redolent of the tang of gunpowder in an attempted ambush, but that is all it is. The submission is rejected.

I revert to the question of copyright. It is not in dispute that respondent has blatantly and widely copied the package insert of the applicants even to the extent of exactly duplicating applicant’s clinical absorption and excretion tests, a feat which applicants themselves would not have been able to accomplish in subsequent tests.

Respondent, however, denies liabi1ity on the following bases:

Mr Joubert submits that irrespective of the fatalities of the case of the applicants inherent in respondent’s other defences, applicants on their own showing have not proved their copyright in the 1994 package insert. Mr Joubert’s heads of argument read in part:

'The respondent submits that the applicants’ claim that copyright subsists in the package insert, has not been proved by them. It has in particular not been established that the entire work is a compilation created by Kritzinger or people working under him, employed by the second applicant. The applicants have not shown which portions of the work relied upon by them, are original, nor have they established the reasons why the work is original.'

In order to show that copyright subsists in a particular work it is necessary to prove the following: The work relied upon is eligible for copyright (section 2 of the Act). In order to be eligible for copyright the work relied upon by applicants must be shown to be a literary work as defined in the Act—original and reduced to material form. The work must qualify for conferral of copyright (sections 3 and 5 of the Act). Copyright is conferred by the Act on a work which is eligible for copyright and in respect of which the author (as defined in the Act) or the joint authors was/were at the time when the work or a substantial part thereof was made, a qualified person, namely a natural person who is a South African citizen or domiciled or resident in the Republic or a juristic person, being a body incorporated under the laws of the Republic. In terms of section 37 of the Act the Minister has extended the Act to persons who are citizens of or who are domiciled or resident in a scheduled country in the same way as it applies to persons who are citizens of or domiciled or resident in South Africa. The United Kingdom is such a scheduled country. Regarding originality where there are pre-existing works Mr Joubert’s heads of argument read:

'Only that which is original in a work can be the subject of copyright protection. An applicant should identify those parts of a work for which originality is claimed. In Pyromet (Pty) Ltd v Bateman Project Holdings Ltd 699 JOC (W) at 702-703, Goldstein J found that the claim as to originality of the drawings was not established as it was impossible to establish which portions of the drains were original and which were not.
In Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd 1998 (2) SA 965 (A) Schutz JA stated the following at 969D-F: "... the existence of prior material tends also to limit the scope for originality and to require more exacting proof of its existence than is the case with truly original works."

At 9741-J he said as regards Jacana’s claim to originality "Jacana failed to demonstrate what exactly it did, something peculiarly within its own knowledge".

In Klep Valves (Pty) Ltd v Saunders Valve Co Ltd 1987 (2) SA 1 (A) , the appeal court held that "originality" refers to "original skill and labour in execution", and that the work in respect of which copyright is claimed, should emanate from the author itself and not be copied. The original skill and labour employed by the draughtsman in Klep Valves to “modify an existing design” and to achieve the “substantial differences’ between the drawing there in issue and the earlier versions, bestowed upon that work a quality of individuality sufficient to distinguish the new work from the previous. The time and effort of the draughtsman in Klep Valves produced something original and not of doubtful substance. The changes effected were not insignificant; but were “meritoriously distinctive” and "principled".

In International Credit Control Ltd v Axelton 1974 1 NZLR 695 (Supreme Court) at 701, citing Copinger and Skone James on Copyright 11th edition, para 1/6 page 55, with approval, where the author says the following:

"Use of existing subject matter. As has been seen here where the author has produced the result without reference to any pre- existing subject matter, it is immaterial that the result is not novel, or that anyone else could have produced the same result, or that the idea or scheme from which the result has been produced is open to the public. But where the author has made use of existing subject matter more difficulty arises and it has to be determined whether he has done sufficient independent labour to justify copyright protection for his result."

In Universal Press (Pty) Ltd v Provest Ltd 87 ALR 497 (Federal Court of Australia) at 500, line 36: "It is beyond dispute that as each initial base map was prepared, copyright existed in that base map as an original artistic or perhaps (1 literary work. Where an original work is subsequently altered there will be a question of fact involved in determining whether the map as altered, has become a new original work or whether it remained the old work. As the Privy Council pointed out in Inteleco AG v Tyco Industries Inc [1989] 1 AC 217 at 262/3 mere copying of a work will not produce an original artistic or literary work. 'Skill, labour or judgment mere in the process of copying, cannot confer originality... there must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work.'"

As far as compilations are concerned, these have been said to be based essentially upon a plaintiff being able to establish the required degree of skill and labour in making the compilation as distinct from that of ascertaining that information, and that “it is the product of the labour, skill and capital of one man which must not be appropriated by another.” (Copinger and Skone James on Copyright supra at para 7-52, page 421.’

Mr Joubert’s argument on the facts against this background is summarised by me as follows:

(a) Mr Joubert submitted for a number of reasons that no copyright has been proved to exist in the hands of the first applicant. ( I shall accept without deciding the point that this submission is correct. It is, however, irrelevant because the facts do not indicate that the application for registration of Augmenten in South Africa and the compilation as submission of the original inserts which culminated in the approval of the 1994 insert, was done by first applicant. It was done by second applicant.)

(b) Mr Joubert also submitted that it has not been proved that copyright exists in the hands of the second applicant for the following reasons:

(i)  There is no proof that the entire work is a compilation, that Kritzinger is the author of the entire work or that the work is original.

(ii)  It was incumbent on the second applicant to show that the package insert was an original work with reference to the original work from which it allegedly originated. ‘This it had not done. The pre-existing material is not before court and it is impossible to judge whether Kritzinger has added ‘some element of material alteration or embellishment which suffices to make the totality of the work an original work.’ The question mark surrounding the issue of originality is underscored by the inherently contradictory

(iii)

(iv) nature of his evidence, as well as the fact that it is contradicted by other evidence.’

Kritzinger’s evidence about the manner in which he would have created the package insert is contradictory as far as the sequence of summaries and synopses are concerned.

The above evidence is problematic in two respects. In paragraph 12 of his affidavit Kritzinger states that the summaries ‘from which the synopses were derived’ were summaries ‘compiled by persons in the employ of Beecham Group’. In other words, employees of the first applicant. If this is so, it is not clear why he also found it necessary to, or did indeed make summaries of the data. Furthermore, Kritzinger claims in paragraph 6.3 that the package insert is ‘a synopsis of various summaries’. If this be so it is not clear why he submitted the first drafts of the package insert before he made the synopsis.

(v) Kritzinger’s claim that in most cases the language in the insert ‘would have been his own’ is a bald speculative statement which is insufficient for the purpose of proving copyright. He ought to have attached those portions from the registration application from which he allegedly made the synopsis to enable the court to ascertain whether he did create an original work. The fact that the language might have been his own is not sufficient to establish originality in the work.

(vi) The impression sought to be created that the package insert is in totality a compilation made by Kritzinger, is not supported by facts. He states in paragraph 6.3 that he would have to use his judgment in selecting in synoptic form that which he considers relevant for the purposes of the package insert.

(vii) Portions of the package insert were taken from the insert leaf submitted to the Ministry of Health in the united Kingdom by the first applicant. Kritzinger will not have created anything original in copying or including in ‘similar wording’ such portions in the package insert. There are remarkable similarities between the UK data sheet and insert leaflet number 2. These are not explained by Kritzinger who does not refer to this input in his evidence. The second applicant aimed to remain in line with its ‘worldwide package insert’. In these circumstances it is not clear why it would go to all the trouble of rewriting a package insert when it already had one available to it and

(viii)

(ix)

would presumably insofar as the MCC would allow it, to 'remain in line with it'.
It is clear from the documentation discovered by the respondent that Beecham Research International in England was closely involved with the drafting of the package insert. Third parties made comments and it was expected that these be incorporated in following drafts. This fact Kritzinger did not disclose in his founding affidavit. Significantly, the filed label ‘Augmentan 375 (package insert S3)’ was emptied, except for the documents referred to below. These documents are the affidavit of Mr Jacobsberg at pages 665 to 671.

It is submitted that Wimpy’s comments do not take the matter further. The letter attached to his affidavit supports the close connection between input from the English parent company and the second applicant. Kritzinger made no mention of this as well as the facts that changes were made to the insert, following such input. If, as Kritzinger claims, he based the insert on information in the registration package, it is difficult to explain the anomalies between the information contained therein and that in the proposed insert leaflet submitted to the parent company. To the extent that Wimpy seeks to interpret the documents attached in the respondent’s supplementary affidavit by Jacobsberg his evidence should, with respect, be ignored as irrelevant.

(x) To the extent that any copyright exists in wording written down by the MCC, such copyright vests in the MCC.

(xi) In a letter dated 8 March 1982 Kritzinger mentions that ‘we are asking Deo Botha’s paragraph to be included’. This paragraph is not identified; nor is any evidence provided about the capacity of Deo Botha, but what is apparent is that paragraphs written by third parties were included in the insert. In addition, the copy of the letter from the MCC with changes to be made to the insert referred to in that letter, is not attached. It is accordingly not possible changes were made by the MCC in this instance.

(xii)  Kritzinger’s claim that changes made by the MCC were in all instances ‘miniscule’ is not supported by the correspondence emanating from the MCC. The documentation provided in respect of the MCC is in any event incomplete and a complete record about its changes

(xiii)

is absent. Mr Joubert then in his heads refers to various letters from the Department of Health and Welfare and from the MCC.
Kritzinger’s statement that Annexure NAK11 is not ‘in any way a verbatim reproduction of’ the master sheet furnished to him, is not supported by the facts. Paragraphs in the master sheet appeared to have been copied verbatim in Annexure NAK11. The significance of this is underscored when regard be had to the insert package attached as NAK16. The paragraphs which appear to have been copied in Annexure NAK11 appear for the first time in Annexure NAK16, which was issued a few months after the master sheet was made available to the second applicant during January 1994. It is submitted that no irregularity attaches to the mere copying of paragraphs of Annexure NAK13.

With all due respect to Mr Joubert’s thorough and cleverly constructed argument I am in disagreement with this line of reasoning. It is somewhat ironic that a party guilty of blatant copying should so assiduously deny (when caught with fingers in the till) the originality and validity of what was previously considered worthwhile copying. The argument is reminiscent of selective sharp-shooting. It loses sight of the fact that respondent has supplied no evidence in contradiction of Dr Kritzinger’ s (to which I shall revert as tar as may be necessary), loses sight of the context and perspective of Dr Kritzinger’s evidence and loses sight of the fact that he is testifying concerning matters which were commenced some 20 years ago. I would be surprised if he would remember everything and if all documents were still available. I think the argument also negates the probabilities established by Dr Kritzinger’s evidence. The papers in this matter are voluminous. I shudder to think what they would have looked like had Dr Kritzinger attached all his pre-existing material. This would have been completely impractical. Instead, when sought, such documentation as the applicants still have, was made available promptly and on reasonable terms to respondent on 15 June 2000. Not only did respondent request sight of these documents only on 23 June 2000, but very little has been put forward by respondent as a result of such inspection. I bear in mind, of course, that the respondent was subject to a measure of time constraint. What has been put forward (or remarked upon) does not in my view detract from the veracity of Dr Kritzinger or demonstrate that the applicant’s case is materially incomplete or lacks sufficient input from Dr Kritzinger to constitute originality. The alleged contradictions referred to above require no comment. The emphasising thereof smacks of desperate measures. A number of the criticisms raised in argument were, moreover, not raised in the papers. The reason why Dr Kritzinger made his own summaries when UK summaries were available, is apparent. The first applicant made the material available to the second applicant for purposes of a South African registration by it. Dr Kritzinger was responsible for the registration and everything involved in it. There is no indication that it was feasible or in line with relevant local legislation and regulations to simply dump the UK material on the Medicines Control Council (‘MCC’). The respondent, as a matter of fact, is at pains to demonstrate that the South African medicines control is amongst the strictest in the world and the fact that a medicine is registered in the UK or the USA is no passport to South Africa as such. I do not think Kritzinger’s claim that in most cases the language in the insert ‘would have been his own’ is unnecessarily bald or speculative The man cannot be expected to remember every word. He did recount what he does distinctly remember and makes inferences as to what he cannot remember. He is the best person to draw those inferences. In any event, whether he penned every word or whether some of it was done by other employees of second applicant under his supervision and control is immaterial. Dr Kritzinger was in overall charge and was responsible for the negotiations with the MCC which led to final approval. I think the evidence does support (conclusively) the impression that the insert is a compilation made in its totality by Kritzinger. Whether he wrote every word in the compilation is for that very reason immaterial.

Heavy emphasis has been placed on similarities between the insert (or one of its earlier versions at page 206) and the UK data sheet at page 210 and NAK13 at page 263 and NAK11 at page 236. I do not find all the similarities Mr Joubert relied on, certainly not in the literal sense of the word. Similar topics are in a number of cases differently worded. In any event, similarities are only relevant as a gauge of copying and the extent thereof: copying as such is not always a sin. A comparison of these documents even without reference to the evidence of Dr Kritzinger, does not detract from the inserts as original compilations.

The reference to the phrase ‘that Beecham Research International in England was closely involved with the drafting of the package insert’ is not clear. Whatever the innuendo, it has been satisfactorily explained. See paragraphs 11 to 13 and Annexure BAW1 at pages 682 to 686 and 689 of Mr Wimpy’s affidavit. I fail to see how consultation and submission to a parent company for approval detract from the originality of a compilation. Even a technical subject such as copyright must have some regard to reality.

The argument related to ‘Deo Botha’s paragraph to be included’ as proof that third parties were co-authors and that in addition no evidence was provided concerning Deo Botha’s capacity is not correct. Dr Kritzinger states in paragraph 11 at page 188 that the late Prof Deo Botha was then vice-chairman of the MCC. This was part of the approval process.

The argument seemed to proceed on the lines that the MCC provided a major input to the insert and that this would constitute a bar to copyright. As a matter of law I think this is wrong, except insofar as the input is relevant to the defence which will subsequently be discussed. The parties are, of course (such is human nature when embroiled in litigation) more or less at two extremes in evaluating the extent and the quality of the input of the MCC. For this part of the dispute it is sufficient to state that the MCC played a significant role in the approval of the final insert but that both quantitatively and qualitatively the making of the insert.

Mr Joubert finally presented the following conclusion in his heads of argument:

'It is submitted that, in the light of the above, Kritzinger clearly did not furnish a complete picture in his founding affidavit about the creation of the package insert. In the circumstances it is impossible to ascertain whether the work is a compilation made by him and, if it is, which portions were compiled by him and which were written by overseas companies, the MCC and third parties. It is for the applicants to identify those portions of the work in which they claim copyright. Where they have not done so, they cannot succeed.'

For the reasons stated I disagree. With more to come, this judgment will eventually be totally unwieldy should I attempt to quote from the evidence of Dr Kritzinger or discuss it in greater detail. I am satisfied, however, that the general tenor as well as the detail of his affidavit, support my conclusion.
2. The second defence is that, to the extent that any copyright exists in the applicants’ package insert, it vests in the state and not in the second applicant by virtue of sections 5(2) and 21(2) of the Copyright Act 1978. Section 5(2) reads as follows:

'Copyright shall be conferred by this section on every work which is eligible for copyright and which is made by or under the direction or control of the state or such international organisation as may be prescribed.'

Section 21(2) reads as follows:
'Ownership of any copyright conferred by section 5 initially vests in the state or the international organisation concerned and not in the author.'

The Afrikaans text of the Act was, acccording to Mr Joubert, signed by the State President. Section 5(2) of that text reads as follows:

'Outeursreg word deur hierdie artikel verleen aan elke werk wat vir outeursreg in aanmerking kom en wat vervaardig word deur of onderhewig aan die voorskrif of beheer van die staat of die internasionale organisasies wat voorgeskryf word.'

Section 21(2) of that text reads:
'Eiendomsreg op outeursreg by artikel 5 verleen, vestig aanvanklik in die staat ... en nie in die outeur nie.'
The package insert in this case can in my view best be described as a compilation and as such, literary work which would be eligible for copyright in terms of section 2 along the usual lines of material form, sufficient substance and originality. In terms of section 3 of the Act copyright is conferred on every work eligible for copyright of which the author at the time the work or a substantial part thereof is made, is in the case of an individual, a South African citizen or is domiciled or is resident in the Republic or, in the case of a juristic person, a body incorporated under the laws of the Republic. The term ‘author’ in relation to a literary work, is the person who first makes or creates the work. Subject to the other provisions of section 21, the ownership conferred by section 3 of any work shall vest in the author or, where the work is made in the course of the author’s employment by another person, in such other person. Dean Handbook of South African Copyright Law states at 1-1 para 1.2 concerning the philosophy of copyright law the following:

'Article 1, clause 8 of the Constitution of the United States of America, empowers Congress “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”. This simple clause sums up in a few words the philosophy and underlying principles of copyright law. Copyright law, like other branches of intellectual property law (ie the laws of patents, trade marks and designs) seeks to create a system whereby the creator of an original work is afforded a qualified monopoly in the use or exploitation of the work in order, firstly to compensate and reward him for the effort, creativity and talent expended and utilized in the creation of his work and, secondly, to act as an incentive for him to use his talents and efforts to create more and better works or intellectual products in the future.'

The learned writer at 1-22 para 4.1 states this concerning the author:

'The author or maker of a work is the corner stone of copyright law. The Copyright Act uses the terminology of “author” to designate the maker of any type of work which can be the subject of copyright. Thus the Act refers to the “author” of an artistic work, the “author” of a musical work etc. As explained above, the underlying philosophy or principle of copyright law is to reward or compensate the author of a work for the utilization or expenditure of his talents, time and effort in creating works of intellectual property. Copyright is intended to provide and establish the incentive for the author to create more and better works. Copyright law serves to look after the interests of the author and to define and regulate the scope and operation of his qualified monopoly in relation to his work.'

The learned writer in paragraph 5.1 at 1-28 distinguishes the author from the owner of the copyright. In paragraph 5.2 he states that as a general proposition the author is the initial owner of the copyright in the case of all the various types of works covered by the Act, but goes on to state that this rule is subject to several exceptions. One of those exceptions is the case where the work is made by the author during the course of his employment by another. At 1-25, paragraph 4.6 the same writer opines (without the issue having been judicially decided) that a juristic person cannot be the author of a literary work. If that is correct, the author or possibly authors in this case would have been Kritzinger and/or the other South African employees of second applicant. The second applicant, however, would have been the owner of the copyright. Another possible exception would be the case envisaged in section 5(2) read with section 21(2). (See Dean supra para 5-3 at 1-29). The question is whether the exception applies on the facts of this case.

Mr Joubert contends for an unqualified approach to interpretation on the basis of the ordinary grammatical meaning of the words used in the relevant provisions, to wit, ‘direction or control’. (It is not contended on behalf of respondent that the package insert was made by the state (my emphasis) and it has not been contended for the applicants that the MCC is not an organ of state.) Mr Joubert has referred me to a host of dictionary definitions of the words ‘direction’, ‘voorskrif’, ‘control’ and ‘beheer’ and decided cases in which those terms have been discussed, to indicate, inter alia, that ‘control’ is a word ‘of wide and ambiguous import’, and is a word to which ‘it is difficult to give a clear and exact meaning’. I am not going to repeat all Mr Joubert’s material but will refer to certain examples.

The Oxford English Dictionary 2nd edition, defines 'direction' as '(a) the action or function of directing; or (b) putting of keeping in the right way or course, guidance, conduct; (c) of instructing how to proceed or act, a right, authoritative guidance, instruction; (d) of keeping in right order, management, administration.' See page 7 of Mr Joubert’s heads of argument.

The Oxford Dictionary 2nd edition, defines 'control' as '(1) the fact of controlling or of checking and directing action, the function or power of directing and regulating domination, command, sway; (2) restraint, check; (3) a method or means of restraint, a check, to exercise restraint or direction upon the free action of, to hold say over, exercise power or authority over, to dominate, command'. See page 8 of the said heads of argument.

The word 'voorskrif' in the Afrikaans text of the Act is defined in the Verklarende Afrikaanse Woordeboek 6th edition, as 'wat voorgeskryf is, reels wat mens moet volg, moet nakom, resep, formule, gebruiksaanwysing'.

The word ‘beheer’ has been defined, with reference to the Groot Woordeboek as follows:

‘(I) S (1) bestuur en toesig, administratiewe kontrole; (2) (jur) bevoegdheid om in sy besit te hou en meer of minder vry te beskik oor die boedel van ’n ander, bevoegdheid om die bestuur te voer oor die een of ander onderneming of instelling; (3) vermoë om in bedwang of onder kontrole te hou; (II) W, bestuur, administreer.’

I also quote paragraph 16 of Mr Joubert’s heads of argument at page 13 to 14:

‘It was pointed out in Van Rooy v Law Society (OFS) supra, at 586E-F that “control” implies “restraint exercised upon an independent activity” In contrast, the word “conduct” stresses the idea of immediate supervision or personal leadership. At 586F-G of the judgment, Horwitz J quoted with approval from R v Croydon and Norwood Tramways & Co 18 Q.B.D. 39 where Lord Esher, M.R. at p 42 said: “I cannot help thinking that to give or refuse assent to a certain proposed act is, and must be, exercising control at all events.” Lindley L.J. expressed himself as follows in the same case: “If I prohibit a man from doing a thing, I control him to that extent”. So, too, one of the meanings assigned to “control” in the Oxford Dictionary is “to exercise restraint upon the free action of”. I venture to think that our case law clearly indicates that a power to control confers authority to impose neither restrictions and prohibitions although it may not authorise a general prohibition. The authorities moreover indicate that a power to control authorises the licensing of the activity to be controlled.’

Mr Joubert argues that the facts clearly indicate that from the outset the writing of a package insert is restrained by statute, regulations and the requirements of the MCC. Applications for registration shall be submitted on a prescribed form, with prescribed particulars. Regulation 10 contains particulars relating to a medicine which must appear in the package insert. See, for instance, Annexure 1 which calls for the following information: Schedule status, proprietary name and dosage for, composition, pharmacological classification, pharmacological action, indications, contra-indications, warnings, dosage and directions for use, side effects and special precautions, known symptoms of overdosage and particulars of its treatment conditions of registration, identification, presentation, storage instructions, registration number or reference number, applicant and date of application. All this is, according to Mr Joubert, carefully checked by the MCC which has the right to call for changes (the extent of such intervention is in dispute). Mr Joubert submits that the MCC is the final authority on the nature of the content of the insert and its directions as to the content are peremptory. Failure to comply with its directions will result in applicant not being able to distribute the drug legally. (The insert is certainly subject to the approval of the MCC, but this argument goes too far. The requirements for a package insert are set out in the regulations by way of reference to certain parameters within which the applicant must set forth the details of his own medicine. The regulations do not confront the applicant with a full blown verbatim version of an insert. Naturally, in fulfilling its functions in terms of the Act, the MCC will strive to make certain that the insert conforms to the regulations and serves the aims of safety, efficacy and so forth. However, I can visualise cases where in so doing bureaucratic over-exuberance will be curbed in a free and democratic society on review.)

Mr Joubert submits that the facts demonstrate that in relation to second applicant’s package insert the MCC did exercise direction and control in numerous respects from the time the original insert was submitted up to the stage when the final revised version was approved, including certain words or phrases in exact form to be taken up in the insert. Mr Joubert’s conclusion is stated thus in paragraph 49 of his heads of argument:

‘The state directs the initial making of the package insert through the requirements set out in the Medicines Control Act, its regulations and the requirements set by the MCC itself. Through these measures, the state instructs and guides an applicant in the making of its package insert. Once the insert is submitted to the MCC for approval, the MCC checks and verifies the content thereof and exercises restraint and direction upon the final version of the insert prior and subsequent to its publication.’

The spokesmen for the MCC policy have come out in support of this conclusion. The official line seems to be that allegedly cheaper generic medicines are to be promoted The standards for registration are much less stringent. Allegations have been made of Lek’s own extensive tests for registration purposes. Nothing of this is in evidence before court save for one reference to an input by the MCC regarding the package insert of respondent. There is, surprisingly, a lot of talk concerning policy and practice, but no evidence of how the package insert of respondent came to be approved. Spokesmen for the MCC will moreover have nothing to do with claims of copyright in package inserts. Reference is made to an approved insert being ‘in the public domain’ and being a ‘final contract’ and being a ‘legal document’. These terms may be criticised as inappropriate and imprecise, but Dr Rees makes no bones about it. She states in paragraph 7 at page 480:

‘The MCC has no interest in producing package inserts for the same chemical compound which have differently worded package inserts purely to satisfy the whims of copyright. On the contrary, the MCC would prefer to use consistency in the content and layout of package inserts for drugs which have the same active ingredients.’

This seems to underlie an alleged policy that the package insert for a generic medicine must be in accordance with the most recently approved insert for the identical or a similar product. It has also apparently led to the MCC countenancing copying, for instance, in respondent’s claims, for absorption and excretion tables exactly similar to those of second applicant. This could simply never have been established by way of subsequent clinical tests and should never have been in the respondent’s insert. Even if originally allowed for sake of conformity, it is not clear why the MCC has now allowed respondent to remove that information from its insert. Moreover, the claim for conformity and the necessity of copying which has been stated as a policy, is inexplicably not supported by the objective evidence. See the Trimed case and paragraph 6 at page 693-694 with annexures of Zwemstra’s affidavit.

The authority on the interpretation of provisions referring to state copyright are extremely sparse. Mr Puckrin referred to the 14th edition of Copinger and Skone-James on The Law of Copyright where the learned authors say the following insofar as the question of works made under the direction or control of the Crown are concerned at paragraph 10.2, page 581:

‘It was probably intended to confer protection beyond work made under a contract of service to works commissioned by the Crown from independent contractors.’
Mr Puckrin referred to British Broadcasting Co v Wylis Lee Gazette

Publishing C 1936 CHD 433 where it was held that programme published by the broadcaster carried copyright, although the broadcaster operated under general licence. It takes the matter no further because apart from a veto, the Postmaster-General had no authority or control over the formulation of the programmes. He also referred to Monoty in his article, The Nature and Basis of Crown Copyright in official publications 1992, 9 EIPR. According to Mr Puckrin’s heads of argument the article (which has not been put at my disposal) dealt with copyright in bills and judgments. Mr Puckrin quotes from the article as follows at page 40 of his heads of argument:

‘The meaning attached to “direction” is of particular relevance to the issue of Crown Copyright in judgments. The idea of judges being under either direction or control of the Crown is an anathema to the concept of the independence of the judiciary, if those terms are interpreted in the sense in which they apply to employment contracts Clearly, judges are not under control of the Crown. But as direction alone will result in Commonwealth or state ownership of copyright, the meaning of this term needs to be examined more closely. In the shorter Oxford English Dictionary “direction” is defined as follows: “the action or function of directing, aiming, guiding, instructing or administering; conduct, instruction, management, administration. And instruction how to proceed.” Judges of the High Court of Australia are appointed by the Governor-General by commission. Before taking office, the person must take an oath or make affirmation to serve the Queen. As servants of the Crown, all judges are directed to dispense justice in the cases which come before them. Arguably, the definition of “direction” should be read widely to encompass the relationship between the Crown and its judges, both Commonwealth and State, to bring within the scope of Crown Copyright. Otherwise, unless judgments come within the scope of prerogative works, copyright in judgments would be owned by the judge as author. On the other hand, a broad interpretation of “direction” has undesirable consequences. Not only would the Crown have ownership of copyright in judgments, but it will probably also own copyright in all the works requested by the Commonwealth or a State, whether or not they are produced in the course of employment.’

The Modern Law of Copyright by Hew Laddy, Peter Priscott and Mary Vittoria, second edition, states the following in paragraph 22.10 concerning ‘by or under the direction and control of the Crown’. ‘There is no definition in the 1956 Act of what is meant by under the direction or control of Her Majesty or a government department. Clearly, works made by Crown servants in the course of their duties, are made under the control of the Crown, but the ambit of “made under the direction of” is clearly wider and probably extends to works prepared by independent contractors. It is not clear, however, whether this provision is wide enough to give the Crown the copyright in works which have merely been commissioned by it. For example, the Whitford Committee pointed out in its consideration of s39 that while its own Report was prepared at the request of and for a government department, that department did not seek to direct or control the procedures of the Committee or its conclusions, or the form in which the report was written. The committee asked rhetorically: Can it be said to have been written under the direction or control of the department (of Trade) merely because they asked for it? It can be argued that the answer would be negative. If s39 had been intended to give the Crown copyright in commissioned works it could have done so by using similar phraseology to s4(3) which gave the copyright in certain types of commissioned works to the commissioner. Probably, however, most works commissioned by the Crown would have been first published by the Crown and so the Crown will acquire Crown copyright anyway by virtue of first publication.’
It is remarkable that not only is there no authority in support of the

case advanced by respondent, but none of the authors, although dealing tentatively with the subject, have come near to recognising state copyright on facts such as in this case. I accept that the actions of the MCC in this case represent direction and control in the broad meaning of those words. Once again, however, with due regard to the ostensibly persuasive argument of Mr Joubert, I do not accept that it was direction or control of the making of the work as intended in the relevant provisions. My reasons are the following:

Section 5(2) read with section 21(2) constitutes an exception, moreover broadly and imprecisely worded to the time-honoured, general approach governing ownership of copyright. As such it warrants a narrow interpretation. See as well by way of analogy Steyn, Die Uitleg van Wette 3rd edition, page 24.

‘Donellis verduidelik dat die bedoeling op tweërlei wyse kan verskil van die woorde, óf omdat dit enger is óf omdat dit wyer is. Dit is enger wanneer die wet meer voorgeskryf het en minder gewil het.

(cum lex olus scriosit minus voluit) en dit gebeur wanneer die woorde algemeen is en dinge van een óf ander genus omvat, terwyl die wil en bedoeling nie op bepaalde species van daardie genus slaan nie. In so ’n geval moet die woorde, hoewel algemeen van strekking, só beperk word dat die besondere gevalle wat nie beoog word nie, daarbuite val, want woorde vermag nie meer as die wil van diegene wat hul uitspreek nie. Die wil behoort nie die woorde te dien nie, maar die woorde die wil. By die sake, gevalle, tye en persone wat nie deur die bedoeling van die wet gedek word nie, hou die wet ook op, en daar en tot die mate maak die woorde geen reg uit nie, hoe seer ook die algemene woorde hul almal omvat.’

The relevance of paragraph 1 is underscored by the fact that paragraph 5(2) of the Act relates in the first instance to a work which is made by (my emphasis) the State. The further words, ‘by or under the direction or control' cannot be seen independently or substantively and require in, my view an eiusdem generis approach. It clearly entails a case where the work is not made by employees of the state acting as such, but where undertaking of the making of the work is as a whole, subject to the direction and control of the state.

Dr Kritzinger testified that a lot of time, money and endeavour went into the compiling of the insert tendered to the MCC. Despite the input of the MCC by way of direction and control the major part of that ultimately remained intact. The latter was moreover not the work of the MCC only, but due to a process of negotiation and further input by Kritzinger as well. As such it cannot realistically be said that the insert was made under the direction or control of the MCC. The MCC played a role in scrutinising and approving the insert. The legislature could never have had this set of facts in mind as warranting state copyright in negation of the general rule regarding copyright as belonging to the author. One wonders, in addition, which circumstances would have to prevail for an ‘international organisation’ to prevail over the author. If what the respondent contends for was envisaged by the legislature it would have been stated much more emphatically.

The aforegoing becomes even more apparent if it is recalled that section 21(2) provides that ownership of copyright shall initially vest in the State and not in the author. Section 21(1)(d) however, already provides that in the circumstances envisaged therein, the employer shall be the owner of the copyright. The author does not even come into the picture as owner. How do section 5, 2 and 21(2) operate in the light of the ownership of the employer?

Clause 18 of the British Copyright Act 1911 which, as far as I can gather, had some application locally by virture of our 1916 Act, reads as follows:
‘Without prejudice to any rights or privileges of the Crown, where any work has, whether before or after the commencement of this Act, been prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty, and in such case shall continue for a period of 50 years from the date of the first publication of the work.’
I pause to interpose that it is noticeable that since 1911 no British court, as far as I am aware, has come to the conclusion that on the basis of section 18 Crown copyright subsists in circumstances similar to those now before me.

Section 39 of the Copyright Act 63 of 1965 provides in part as follows:

‘1. Copyright shall subsist in any original literary, dramatic, musical or artistic work made by or under the direction or control of the Government, in which, but for the provisions of this section, such copyright would not subsist and shall be vested in the State.

2. The state shall, subject to the provisions of this chapter, be entitled:

(a)  to the copyright in every original literary, dramatic or musical work first published in the Republic, if so published by or under the direction or control of the state;

(b)  to the copyright in every original artistic work first published in the Republic, if so published, by or under such direction or control.’

See in addition subclause (5) which reads as follows:

‘Copyright shall subsist in any sound recording or cinematograph film made by or under the direction or control of he State in which but for the provisions of this section such copyright would not subsist and shall be vested in the state, and the period of subsistence of such copyright shall be the same period as if it were copyright subsisting by virtue of and owned in accordance with the provisions of sections 13 or 14, whichever is applicable.’
Section 5(2), read with section 21(2) of the present Act is more streamlined and less elaborate than the 1965 provisions and more in line with section 18 of the British Act. No reasons of policy or otherwise are apparent to me, to indicate that the change in format in the presently attributable Act was due to an intention to extend state copyright to something like a package insert. It is clear from the 1965 Act that nothing of the kind was then contemplated but rather something undertaken by the state, even though not made by itself. Whatever the extent of control or the effect of the requirement of approval may be, the insert or even the application for registration is not something undertaken by the State; it is undertaken by the applicant and the statutory intervention of the MCC does not make it the maker of the insert. To decide otherwise would lead to startling results, inter alia (whatever the merits of the new relaxed approach to generics may be) negating as far as second applicant’s insert is concerned, the very philosophy behind copyright law and leading to a situation where the copyright of the State, as far as future applications or inserts are concerned, is made dependent on policy considerations which may not be consistently applied and which may change for better or worse. Surely the law of copyright cannot be thus approached.

3. The third defence is a jump from State copyright in contrast to that claimed by the applicants to no copyright at all and is based on the provisions of section 12(8)(a) of the Act which reads as follows:

‘No copyright shall subsist in official texts of a legislative, administrative or legal nature, or in official translations of such texts, or in speeches of a political nature or in speeches delivered in the course of legal proceedings, or in news of the day that are mere items. of press information.’

The Afrikaans text reads, as far as it is relevant:
‘Outeursreg bestaan nie in amptelike stukke van ’n wetgewende, administratiewe of wetlike aard ... nie.’
Mr Joubert’s conclusion stated in paragraph 59 of his heads of argument at page 32, reads as follows:

‘It is submitted that the package insert is a text, sanctioned by the government and more particularly the Department of Health and the MCC. It is furthermore, a text which pertains to and deals with the conduct and management of state affairs, namely the regulation of the supply and sale of medicines to the public. It is also a text of which the particulars and format are prescribed by law. It is accordingly, an “official” text of a “legal”, or at least, an “administrative” nature.’
There is no merit in this contention.
It is common cause that if the second applicant is to succeed it is to be by way of a final interdict and not an interim interdict. In my view the applicants have established copyright, the defences gainsaying that are rejected and a breach of copyright has not been disputed. The requirements for a final interdict are well-known, but, if necessary, reference may be had to Joubert Law of South Africa Volume 11, paragraph 316. I find that those requirements have been established, and

I make the following orders:

1. An order in terms of prayer 6 of the notice ,dated 7 June 2000, with the deletion of the words ‘first and/or second applicants’ and substituting in its place the words ‘second applicants’ .

2. The balance of the application is postponed sine die

3. The respondent pays the costs attendant on obtaining the relief set out in paragraph 1 hereof, including the costs of employment of two counsel, but excluding the costs of the last submission regarding unlawful practice and the response thereto.

Neutral Citation Number: [2005] EWHC 472 (Ch)

Case No: HC04C02812

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Date: 23/03/2005

Before

JUSTICE MANN

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Between :

Fraser-Woodward Limited Claimant

- and -

(1) British Broadcasting Corporation

(2) Brighter Pictures Limited Defendants

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Miss C. Michalos (instructed by Messrs. Charles Russell) for the Claimant.

Miss C. May (instructed by BBC Litigation Department and Messrs. Bristows)

for the Defendants.

Hearing dates: 22nd, 23rd, 24th and 25th February 2005

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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.

............................

Mr Justice Mann :

Introduction

This is an action for infringement of copyright in photographs, the copyright in which is vested in the claimant (“Fraser Woodward”). They are all photographs of various members of the well-known Beckham family. Mr David Beckham is a very well-known footballer, and his wife Victoria is a well-known pop singer who was formally a member of a group called the Spice Girls, in which context she was known as Posh Spice. Together and individually they have acquired celebrity status, and their private and public lives are apparently of great interest to many people. At the time of the TV programme which is at the heart of this case they had two small children, Brooklyn and Romeo (they have since had a third). The photographs in question were originally published in various tabloid newspapers. That publication was by licence. The second defendant (“Brighter”) is a television production company. It used images of the newspaper pages on which the photographs were published in a programme which it made for, and which was broadcast by, the first defendant (“the BBC”). It is that use which is complained of as being an infringement of copyright. Additional damages for flagrancy are sought, partly on the grounds of the flagrancy of the alleged breaches. The principal defences of the defendants are fair dealing within section 30(1) of the Copyright, Designs and Patents Act 1988 (“the Act”), and incidental inclusion within the meaning of section 31(1) of that Act.

The Facts

The fact of the use of the photographs, the existence of copyright and its being vested in the claimant are not in dispute. I will therefore be able to deal with them relatively shortly. There is, however, a dispute as to the level of editorial control exerted by Victoria Beckham, and the state of mind of Brighter when it made the programme (going to flagrancy of breach and additional damages, and going to the fairness of dealing).

There are 14 photographs in issue in this case. At the trial they were given the names Beckham 1 to 14, and I shall continue to identify them in that way. Beckhams 1-13 were taken by Mr Jason Fraser, a well-known photographer who has a reputation for taking photographs of celebrities for the purposes of being sold, and ultimately reproduced, in various publications. The claimant company is a company of which he is a shareholder, and it owns the rights in various photographs, which it exploits from time to time. Beckham 14 was taken by Michele Crosera, an Italian photographer with a commercial relationship with both the claimant and Mr Fraser. He originally had the copyright in this last photograph (“Beckham 14”); he has assigned it to the claimant. All the photographs except Beckham 14 are photographs of two or more members of the Beckham family taken in apparently off-guard moments when their subjects were conducting their day-to-day activities in public. They are not formal photographs in the sense that their subjects formally sat for them; on their face they might be thought to be photographs taken on occasions not intended for photography and in circumstances in which their subjects were not intended to be photographed (though whether that is right or not is one of the points made in the television programme which reproduced them). Beckham 14 is of Mrs Beckham by herself.

At the end of 2002 Brighter embarked on the production of the television programme in question, which was ultimately broadcast under the title “Tabloid Tales”. The pleaded purpose of the programme (which was one of six in a series) was that it “intended to and did criticise and/or review tabloid journalism and the methods employed by the tabloid press and/or the celebrities featured to build and exploit a story to their advantage” (to quote the Defence in this case). The Beckham programme was broadcast on 29 April 2003 at 10.40 p.m. It was narrated by Mr Piers Morgan, a well-known former Fleet Street tabloid editor. He opens the programme by saying:

“Tonight Tabloid Tales exposes Victoria Beckham’s relationship with the press, revealing the truth, the rumours and the lies behind the headlines.”

A little later on he says:

“The big question is whether she is really just a canny little minx cleverly manipulating the media for her own gain, or whether the press are a bunch of tabloid vultures, preying on Victoria to sell newspapers.”

The programme (which runs for a little under 40 minutes) then contains a sort of survey of press coverage of the Beckhams, and in particular Victoria Beckham, starting with her career as a member of the Spice Girls pop group and showing, or claiming to show, a developing relationship with the press. This is achieved by linking narration of Mr Morgan, clips of interviews with various journalists and media personnel, some short contributions from Mr Fraser himself, rather longer extracts from an interview of Victoria Beckham and her mother by Mr Morgan, and a mixture of film clips, clips from pop videos and (most importantly for the purposes of this case) images of newspaper headlines, articles and photographs. The 14 photographs which are the subject of this action featured in this last context. Apart from one which was on screen for about 4 seconds, they were shown for no more than 2 or 3 seconds each, and some of them less than that. On occasions they were shown as part of a brief still image; on others the camera panned quickly across them or zoomed in relation to them.

I now need to go back and set out one or two brief details of how the programme came to be made and how the makers of the programme went about dealing with intellectual property rights. The history is relevant to two issues – the fairness of the dealing for the purposes of the fair dealing provision, and whether any breach was flagrant or would otherwise attract additional damages under section 97(2) of the Act. The series of which the programme formed part had an original working title of “Set the Record Straight”. At some point the title was changed to “Tabloid Tales”. The claimant sought to suggest that the original title betokened the real purpose of the programme, which was to give the main subject (Victoria Beckham in the subject programme) the opportunity to use the programme as a public relations opportunity, and “put the record straight” in that sense. At the end of the day there was no evidence to support an explicit intention on the part of Brighter that this should be the thrust of the programme, and I find that there was no real significance (for the purposes of the points I have to decide) in the original choice of name (or in its change). Brighter pitched for the series to the BBC, and was commissioned to make it. The budget was about £845,000. 6 programmes were broadcast; the Beckham programme was the first. Miss Jacquelene Williamson was the production manager for the series and she gave evidence before me. One of her concerns was the proper rights clearance for the various images used in the course of the programme (and the other programmes). In addition to the images which are the subject of this action, other still images were used. She consulted a BBC in-house lawyer about this (Mr Alistair Bonnington), and I shall come to that in due course. However, it is clear from her evidence that she considered that the fair dealing provisions were capable of applying, and as a result of her consultation with Mr Bonnington she claims that her view was reinforced. In the circumstances there was no need to seek the permission of any of the owners of the copyright of the photographs with one exception – there was one photograph for which a licence fee of £125 was paid. She produced a document called a Residuals Schedule, which is said to demonstrate that all the photographs except that one were used on the “fair dealing” basis. This is a document that was prepared at the end of the series for the benefit of the BBC so that the BBC could see the basis on which material was used. It is intended to cover all the material used, and shows such things as the basis on which copyright material was used, a summary of any licences obtained and the amounts paid. At the end of the schedule is a page referring to “Headlines” from various newspapers. All have the word “Fair” in the relevant columns relating to licences, indicating (as I was told, and which I accept) that the fair dealing provision was considered to apply to them. These entries do not expressly refer to photographs appearing in newspapers (such as those which are the subject of this action), but I am told that there is no other entry in the Residuals Schedule which is capable of referring to them, and it was intended that this part of the schedule should deal with them thus. I accept that evidence.

In those circumstances it is the defendants’ case that it was not necessary to seek Mr Fraser’s consent to the use made of the Beckham photographs, and no such consent was sought. Mr. Fraser’s evidence as to consent was different.He says that some time before 27th February 2003 (he cannot put a date on it) he was told by his personal assistant Cathy Carroll that a researcher from Brighter had telephoned her to request a licence to use photographs of the Beckhams in the programme. He says that he instructed her to tell Brighter that he would not grant such a licence. In saying No he was acting in accordance with what he said his general (though not invariable) practice was in relation to the use of his photographs on television. These particular photographs had of course already been published, and the newspapers had paid a price of well over £30,000 in aggregate for the right to publish immediately after they were taken, and over the course of time these figures have apparently yielded an unspecified sum which exceeds six figures, but he generally regarded the use of his photographs on television as being very damaging to the residual value of his photographs; hence his general practice, and hence what he says his reaction was on this occasion. Miss Carroll gave evidence. She could not recall receiving and relaying such a request (and refusal), but what Mr Fraser described as happening would have been in accordance with her practice had she received such a request.

The making of such a request, if it occurred, formed a material part of the claimant’s case on fair dealing. As will be apparent later on in this judgment, I do not think that it affects the point one way or another, but in case that conclusion is wrong and in case this case should be taken further I need to make a finding about it. Having heard the evidence I am not satisfied that this particular request was made (and refused). Miss Carroll’s inability to recollect any such request does not point one way or the other – in my view it certainly does not mean that the request was not made, because it is quite conceivable that the request was of a routine nature that would not necessarily be remembered in a busy office. It is unsatisfactory that the researcher on the programme (a Ruth Johnson) has not given evidence – Miss May, who appeared for the defendants, told me she could not be contacted, though Miss Michalos, who appeared for the claimant, told me her solicitors believed they had found her. However, I am satisfied that neither Miss Williamson nor anyone else in a supervisory capacity would have required that it be made. There is no evidence that Miss Williamson was intending to rely on anything other than fair dealing in relation to these (and other) photographs, and no reason emerged why she (or anyone else) would have instructed the researcher to make the call alleged by Mr Fraser. She had an early meeting with Mr Bonnington, before the programmes were shot, at which such things were discussed, and I think it is likely that fair dealing was in her mind from then on. That makes it very unlikely that she would have instructed anyone to seek a licence from Mr Fraser. Of course, it is possible that the researcher might have taken it upon herself to make the request anyway, but if she had then I think it inevitable that any refusal would have been reported back to Miss Williamson, and Miss Williamson told me, and again I accept, that she could not remember receiving any such report and would be likely to have remembered if she had. It is fair to say that a lot of the detail of the making of this programme had obviously passed out of her recollection, but I think that it is likely that that would have stood out in her mind, especially in the context of later discussions about fair dealing to which I will come shortly. So far as Mr Fraser’s recollection is concerned, I am quite satisfied that at all times he was a truthful witness who was not deliberately making anything up, but I think it likely that he has confused another occasion with this particular occasion (his evidence was that he had received many requests for the use of his photographs in TV programmes – 3 or 4 per week was his estimate). He clearly felt strongly about the use of his photographs, and there were other requests for the use of photographs later on, when he was giving an interview for the programme, and it may be that this has all come together in his mind to give him a false recollection, but whatever the explanation is I think that he was mistaken.

However, there came a time when he was, as I find, asked whether his photographs could be used in a different way, and in respect of which he did refuse consent. In early 2003 he was contacted on a number of occasions by representatives of Brighter and asked if he would give an interview. He declined, until eventually he was persuaded to do so personally by Mr Piers Morgan. He told me that he agreed once it had been made clear that the programme would not be a “hatchet job” on Victoria Beckham. Four proposed appointments were cancelled before the interview was finally filmed on 27th February 2003. In the context of that filmed interview Mr Fraser was asked if he would allow his photographs to appear during the interview, spread out on the table. Mr Fraser told me that he refused that, and I accept his evidence. I also accept his evidence that he declined a request made by the producer conducting the interview for sending copies of photographs of the Beckhams for inclusion in the programme. I think that this was probably a casual request, but I accept that what he described about this occasion actually happened. As a result no photographs were shown as part of Mr Fraser’s interview.

Production of the programme had started at about the end of November 2002 – Miss Williamson could not quite remember more precisely when, but it was about then. In the first month of production Miss Williamson had a meeting with Mr Bonnington to discuss the use of material, and it is likely that fair dealing was discussed. The idea assumed more importance in her mind as production progressed, and on 11th February 2003 she emailed Gloria Wood, who was the series producer, to pass on a request to Mrs May Mitchinson (the executive producer at the BBC) asking, amongst other things, the following:

“ I am slightly nervous of the fair dealing photo rule with Posh because the photographs of her are worth money – the vultures could be knocking at her door after the programme goes out. I would really like to talk to Alistair about this and get something in writing… and with regard to fair dealing photos in general. Any chance of asking May if I can talk to Alistair as I need to get my head fully round this or I could be calling her every day.”

She was obviously given permission because later that day she emailed him asking if he could spare some time to see her because:

“I need to be very clear so I can be very clear with the Producers exactly how they show photos of Ms Beckham in newspapers and magazines”

They had a meeting the next day, but no note of what was said survives. However, Mr Bonnington wrote an email on 13th February in which he confirmed his advice:

“I confirm that our approach to the use of newspaper ‘tear-outs’, which contain both newspaper copy and newspaper photographs is that the fair dealing provisions of the Copyright Designs and Patents Act will give us legal protection. That is because there is an exemption for criticism and review. It is our view that the programmes we are making here are both criticism and review of the way in which tabloid newspapers report matters which they regard as being of significance.

“As you know, I was concerned when we met yesterday about the possible use of a photograph of Victoria Beckham from Hello! Magazine without the permission of the owners of the copyright in that photograph. I am not saying it is impossible that we could successfully plead the same defence in court proceedings, should they be raised against us by Hello! Magazine. However, Hello! are a litigious organisation and in their case photographs are very much their stock-in-trade. In the case of Victoria Beckham I think substantial sums have been paid over to her before the “photo shoot” took place.

“What concerns me is the possibility of an interim injunction/interdict being granted…

“Of course, if it was the case that the Hello! pictures are regarded as absolutely vital to the programme, it might be we took the view that we should revisit the question of risk here. My impression from our discussions yesterday was that, although it would be desirable to use the Hello! pictures, they were by no means essential for the telling of the story in this case”.

This email featured quite largely in Miss Williamson’s cross-examination by Miss Michalos. It was put to her that it said, and she should have understood, that the advice was that the fair dealing exception could apply only if the photographs and some text appeared in the same shot – photographs without text would not bring the use within the exception. This point is said to go to flagrancy – it was said that when, in due course, the programme showed

pictures without showing text at the same time Brighter was acting contrary to its own legal advice. I can deal with that point now. The point is, I find, a bad one. The email is not a formally written opinion, but looking at it realistically and placing it in context it is clear that the writer was not being that sophisticated. The attempt to read it in the manner suggested by Miss Michalos was one that obviously puzzled Miss Williamson in the witness box, and I am not surprised. The reasonably obvious sense would be conveyed if the letter had contained the words “either or both of” instead of “both”, but that would be a level of formality of expression which (as a matter of every day experience) one seldom finds in emails. That this was intended is borne out by other things. First, the subject line of the email reads: “Subject: Tabloid Tales: Use of Newspaper Photographs and Copy from Newspapers”. That suggests that photographs and text were being treated separately. Second is the puzzlement of Miss Williamson. She had talked to Mr Bonnington, and her puzzlement indicated that the refinement suggested by Miss Michalos had not been referred to in their conversations. Third is the fact that the final form of the programme was subsequently seen by lawyers, and Miss Williamson thought that Mr Bonnington had seen it. The programme shows some photographs which are sometimes, albeit briefly, unaccompanied by text, yet there was no indication that Mr Bonnington (or any other lawyer) sounded any warning about that. Last, but by no means least, the advice as construed by Miss Michalos does not make much sense – fair dealing is, as a matter of principle, applicable to photographs whether they are with or without text (and to be fair to her, Miss Michalos did not contend otherwise – all her submissions on this point were on what the email said, not whether it was right or not) and it is hard to justify the effects of Miss Michalos’s construction as a matter of common sense, let alone law. In circumstances such as these I see no merit in construing a document such as this in a manner which does not coincide with common or legal sense if there is a perfectly good alternative construction which makes better sense. This email, and any subsequent display of photos without text, is therefore neither departing from any legal advice, nor is it any basis for any claim that any infringement of copyright was flagrant.

The programme was broadcast in the late evening of 29^th April 2003. Earlier that day Mr Fraser had found out that the programme was to include some of his photographs and he telephoned to object and to demand their withdrawal. This was refused, and a similar request later that same day, made by his solicitors, met with the same fate. The programme went out with Mr Fraser’s photographs in it, and in due course he commenced this action.

Fair dealing and incidental use – the nature of the parties’ respective cases

Before turning to the details of the use of the photographs in question it will be useful to indicate what the respective cases of the parties are on the point.

Section 30(1) is in the following terms:

“30 (1). Fair dealing with a work for the purpose of criticism or review, of that or another work or of a performance of a work, does not infringe any copyright in the work provided that it is accompanied by a sufficient acknowledgement”

The criticism or review on which the defendants rely for these purposes is twofold. First, there is said to be criticism and review of the photographs themselves (or at least some of them). Second, their use was said to have taken place in the context of criticism or review of another work (or more appropriately, works), namely the tabloid press’s coverage of celebrities. It is said that the use of the photographs was fair for the purposes of the concept of “fair dealing” – their use on screen was not over-long, and the use in the context of criticism and review was not a contrivance to justify a use whose purpose was in substance not that of criticism and review. For the claimant it was said that criticism or review, at least in the present context, had to be criticism or review of the photographs themselves, and that criticism or review had to be with some degree of particularity – a passing and unargued observation (for example, and by way of illustration, “this photograph is a bad photograph”) was not sufficient to bring the act within the section. In the context of fairness of dealing, the use should not conflict with the normal exploitation of the work, or unreasonably prejudice the legitimate interests of the author. The true purpose must be genuine criticism or review, and the use must not be something else dressed up in criticism’s clothing. The extent to which the work is reproduced is also said to be relevant to fair dealing – in the case of photographs, the longer the display, and the more completely the photograph is displayed, the less likely it is that the use is fair, particularly if the criticism is slight. In addition, there was insufficient acknowledgment.

I shall elaborate on those arguments later, but that indication is sufficient for the purposes of enabling me to set out a description of the programme, its contents and the use of the photographs in it. I have, of course, had the opportunity of seeing it, and counsel have been able to take me through relevant parts of it.

The alleged infringements of copyright in their context – the appearance of the photographs in the programme.

The programme starts with a shot of Mrs Beckham reflecting on fame. Then it has the first of the two extracts from Mr Morgan referred to above. Various contributors then make observations (by way of clips from previously filmed interviews), including one from a Mr Neil Wallace who says:

“There are few people better in this country at workingthe press [than Victoria Beckham]”

After 25 seconds there is an observation from Mr Morgan:

“…today [Posh Spice] is Britain’s most written about, talked about and photographed A List celebrity and the readers still can’t get enough”

After a short break he then makes the second of the two observations referred to above, which I will repeat here in its context:

“I have worked in Fleet Street for more than 15 years and I have rarely encountered anybody more adept in handling the tabloids than Victoria Beckham. Big question is whether she is really just a cunning little minx cleverly manipulating the media for her own gain or whether the press are a bunch of tabloid vultures preying on Victoria to sell newspapers. Fleet Street has always had a two-way relationship with celebrities. One day you are cock of the walk and the next you are a feather duster. In Posh Spice’s case you learn the hard way after a rather brutal apprenticeship with the Spice Girls.”

There is then a cut to the previously filmed interview with Mrs Beckham in which the following exchange takes place:

“Piers Morgan: ‘So you are using the media and all you want is that front cover, I mean that is true, isn’t it?’

Victoria Beckham: ‘Yeh, I can’t say anything but yeh, I mean its very true, we had a message to put out there, you know, we loved our music and of course to get that message to people you have to use the media because that’s the easiest way’.”

The next section of the programme refers briefly to the wedding of the Beckhams and a short reference to their first son (Brooklyn). A Mr Mark Jagasia is then seen saying:

“There was a sense in the press that we are going to milk this one [i.e. the birth of Brooklyn] as long as we can because in a sense it is good for everyone, it sells newspapers, people enjoy reading about them, they clearly enjoy the spotlight to an extent so it was a kind of a win win situation.”

The programme then returns to the Beckham wedding and various contributors refer to the desire of the media to have pictures of the wedding, in circumstances in which that desire was frustrated by control by the Beckhams. Mr Morgan observes (at 5 mins 33 secs into the broadcast):

“To maintain absolute control over how the wedding was reported, Victoria gagged everyone working on it with strict confidentiality agreements.”

And a little later on, having described how a magazine (OK Magazine) had bought the sole right to take and show photographs, Mr Morgan observes:

“When OK hit the stands on Friday it sold more than 1.7 million copies, three times its normal circulation, and Victoria by almost controlling the story had successfully re-launched herself as the new people’s princess.”

Two contributors then observed how strange, or even “ludicrous” according to one contributor, it was to think of two people on their wedding day going through the proofs of photographs to decide which should be published, which is clearly an implicit reference to the degree of control exerted by the Beckhams over their own publicity as well as being a reflection on it. The control is recognised in the next contribution from Mrs Beckham, when she says:

“The fans wanted to see our wedding and there were going to be pictures anyway, so I wanted there to be pictures that we had a certain amount of control over.”

Another contributor, a Mr Geoffrey Wansell, observes:

“It’s not just about the million pounds, that’s incidental in a way, it is controlling the pictures that emerge, so what Posh is really doing is saying I am only going to present myself in a way in which I want to be seen, my image is more significant than anything else.”

Thus far, therefore, the programme has been referring to the content of the newspapers by reference to control over the input, and therefore the output, of material. This is said by the defendants to be criticism of other works.

The programme then turns to the theme of new haircuts acquired by the Beckhams in the context of which the first of the subject photographs were shown. Having averted to the fact that the “Posh and Becks Plc… brand” was now a big one, Mr Morgan observed:

“… Victoria was learning that you must keep reinventing your product if you are going to keep the press and the public interested. Nine months after the wedding in a prime example of Fleet Street’s rather warped news agenda, the new Beckham hairstyle smashed war and famine off the front pages.”

Another contributor (a Ms Blackburn) observed that that:

“was just another example of their unerring sense of what would get them on the front pages.”

Mr Sean O’Brien was heard to say:

“and Posh also had gone completely blonde, absolutely white blonde, she looked like Billy Idol walking down the street.”

As he spoke the words “she looked like Billy Idol” the scene cuts to a picture of most of the page in the newspaper which contained the first photograph. At the top of the page, slightly cut off, one can see two or three other photographs which are not material. Below that occupying the right hand half of the page and the bottom two thirds of the page was a picture of the Beckhams with their new haircuts, both being shown full length with Mr Beckham pushing a pushchair with young Brooklyn in it. On the left hand side of the page next to the photograph, there is visible a headline and the story, described as a “picture exclusive”. The camera then pans slightly down the photograph and at the same time zooms into the bottom of it to show, prominently and obviously, at the bottom of the article and just to the left of the bottom of the image, the words “Pictures: JASON FRASER”. This is accompanied by Mr Morgan (off screen) saying:

“The exclusive pictures of the change of image were taken by Jason Fraser.”

The claimant accepts that this is a sufficient acknowledgment of authorship in relation to this appearance of this photograph because, I think, of the written attribution, not because of the oral attribution.

Immediately after that Mr Fraser appeared on screen referring to an occasion which he managed to get a shot of the Beckhams with new haircuts. He describes how, on the occasion that he is referring to:

“I had a tip and I went out and I took photographs and I got them together.”

The Defendants sought to say that that was an express reference to Beckham 1, and that may well be so, but the context of the remark in the interview has to be taken into account in reaching that conclusion, and the defendants had successfully resisted disclosure of the unedited interview at an earlier stage in these proceedings. In those circumstances, and in the absence of an admission by Mr Fraser that that is indeed what he was referring to (or at least a sufficiently clear admission) it would be unfair to him to make that finding. However, nothing in this action is going to turn on that.

Immediately following that Mr Morgan is heard saying the following over fuzzy images of what are obviously Beckham stand-ins apparently carrying out the mundane activity of assembling a pushchair in a car park. As they do that Mr Morgan says:

“Throughout Victoria’s career Jason Fraser always mysteriously seems to be the photographer in the right place at the right time, which has raised a few questions about exactly where he gets his information from.”

In order to make sense of this remark, and what follows, it is necessary to understand the nature of the Beckham photographs which are the subject of this action. With one possible exception (Beckham 14) they are not photographs for which the subject has apparently deliberately sat or posed. They are all photographs in which the subject was apparently going about his or her everyday activities, ostensibly irrespective of the presence of a photographer, and they are apparently just “snapped” as they walked along or sat. The next voice to be heard was that of Mr Geoffrey Wansell, who observed that:

“Gradually she began to realise that certain photographers and certain places could be manipulated to her advantage.”

This followed by a contribution from Mr Andrew Morton, who was seen and heard to say:

“So for example on the day in question when David’s about to get his hair cut and she is about to go blonde, they evade the photographers waiting outside their home…”

and at this point four more photographs of the Beckhams (Beckhams 2-5) are shown by showing the newspaper pages on which they appeared, accompanied by Mr Morton continuing:

“And they have a pre-arranged assignment with another photographer, effectively their court photographer, a chap called Jason Fraser. It looks as though they’re snatched pictures, that they’re taken off guard, off duty, when all along those pictures were rehearsed and prearranged.”

The pictures are shown until the words “snatched pictures” at which point the camera returns to show Mr Morton speaking. Beckham 2 is shown for just over 2 seconds. It is apparently on the front page of The Sun, and one can see what is probably the top half of it. From what one can see it looks as though it was probably taken on the same occasion as Beckham 1 (and Mr Fraser confirmed that in the witness box), but one cannot see the pushchair; the remaining three photographs (Beckham 3, 4 and 5) are similar photographs, showing half-shots of the Beckhams with their new haircuts, and apparently displayed in a row across a newspaper page. Each is displayed for about 1.5 seconds. Then before the next interview contribution (Mr Fraser again) Beckhams 3-5 are shown again briefly, this time for less than 1 second each, flashed on the screen and accompanied by the sound of a camera shutter.

Mr Fraser was then seen and heard making observations on how one might get tips in order to get the photographs, and Victoria Beckham then says, as part of her interview, that on occasions she might make an arrangement with a photographer to repeat an exit from a building for photography purposes after she had exited for the first time, having (for example) put her children in the car first so that they were safe and out of shot. Mr Morgan then observes, partly to camera and partly by other images:

“Victoria may favour certain photographers, but she also knows she is likely to be snatched at any time and any place, whether she has helped arrange the picture or not. When you are riding high in the press, there is a huge industry out there making vast amounts of money from your photograph. ”

Another contributor (Mr Joe Sene) makes observations about getting tip-offs of what Victoria Beckham is doing, and then that is contrasted by Mr Morgan with photographers who stalk their victims more patiently.

12 minutes in, the programme returns to the interview with Victoria Beckham, and she observes that every time she comes out of her house she is aware that there could be a photographer ready to capture the moment or whatever she looks like. While she is saying this Beckhams 6-10 are displayed. They are shown as they appeared in a sort of montage in one of the tabloids. They (or parts of them) were all taken when Mr and Mrs Beckham and Brooklyn visited a wildlife park. Beckham 6 is a photograph of Mrs Beckham carrying Brooklyn; as published in the newspaper it is heavily cropped to exclude a number of other people who would otherwise appear in it. In the left hand one-third of the page, appearing one above the other, are Beckhams 7, 9 and 10 (in that order) which show pictures of Brooklyn, sometimes with one or other of his parents. Two of them are again heavily cropped in order to focus on Brooklyn. On the right hand side of the page is a large blown up extract of Brooklyn taken from Beckham 8; he is apparently in the course of doing messy battle with an ice cream. In order to show these photographs the camera pans down the page over the course of about 4 seconds, ending up by zooming in on Mr Fraser’s name predominantly displayed in a red box at the foot of the photographs. Mr Fraser is then heard and seen to observe that it is hard to take a bad picture of Victoria Beckham.

The theme of the programme then moves on to less favourable newspaper coverage of Mrs Beckham, and Mr Morgan observes:

“The debate [about an eating disorder] refused to go away, raging out of Victoria’s control, especially after her appearance in London Fashion Week.”

This is said in relation to press coverage of her eating disorder in one or more newspapers, and Mr Morgan contrasts the coverage of two rival publications. Mrs Beckham and her mother are seen and heard to comment on that sort of coverage, and then there is an extensive part of the interview with Mrs Beckham at which comments on other parts of her appearance are referred to. Then Mr Morgan turns to the occasion when:

“In the summer of 2000 the press were still having huge fun knocking great lumps out of Posh’s pedestal, which did not bode very well for the start of her new solo singing career. In an attempt to gain some street cred … and in spite of a cynical press, Victoria used every trick in the book to grab headlines with the tabloids rubbing their hands in glee.”

There are then several minutes relating to less than flattering coverage of Victoria Beckham and a reference to a point of time at which Victoria Beckham was thought to have acquired a lip ring but it turned out that the ring was false, although not before the Daily Mail was said by Mr Morgan to have “vent[ed] its high moral spleen” about it. This incident was presented as her deliberately seeking media attention.

From time to time in the remainder of the programme contributors returned to the question of Mrs Beckham’s attempts to control the publicity she received in the media, and to turn it to her advantage, and the need of the media to show her activities from time to time:

“With normal artists the manager PR or manager press relationship is reasonably simple to control, it’s entirely different with the Beckhams, she is one of those faces that sells magazines, so if you haven’t got a real story for them, they will make it up.” (per Mr John Glover).

Half an hour into the programme it sought to draw attention to the fact that on the day that Mrs Beckham was dropped by her record label she announced that she was having her second child:

“Fantastic news but obviously buries the fact that her solo career had completely died and she was now on skid row as far as her career was concerned.” (per Clare Morrisoe).

Mr John Glover attributed the timing of the announcement to the fact that the Beckhams did not want to announce it publicly until Mrs Beckham had had her three month test. This was all presented as part of the debate as to who was controlling whom in terms of publicity. Mr Morgan observed:

“Once it was known that Victoria was pregnant again the tabloids turned off the knocking copy and turned on the charm, Posh was back in favour. The press know that its readers adore little famous babies and with the Beckhams speculative stories about what sex, what name, what date could be strung out for months.”

In other words, he was observing that the media would exploit pregnancies involving famous babies.

The birth of the second child (Romeo) was then the context for showing most of the remaining photographs which are the subject of this action. After 32 minutes of the programme Mr Geoffrey Wansell observes:

“After the birth of Romeo, the second child, she didn’t go out, she quite deliberately kept herself back until she was prepared to make a formal appearance, because she knows that that is what keeps her brand going.”

Piers Morgan:

“When Victoria was eventually seen in public for the first time with little Romeo, she looked amazingly glamorous and slim, and surprise surprise there is her old friend Jason Fraser to capture the happy moment, splattered across the tabloids, blasted across the magazines of the world, Jason Fraser calmly, and rather easily, helped himself to another six figure sum.”

As he speaks the words “and surprise surprise” to the words “happy moment”, Beckham 11 is shown. It is a photograph of Mrs Beckham apparently leaving a house with Brooklyn by her side, and holding the new baby in her arms. Like the other photographs, it is apparently an unstaged, casually snapped photograph; she appears full-length in it. What is reproduced is, again, the relevant page from the relevant newspaper, with the headline and the story printed in the top right hand quadrant of the page. During the course of 4 seconds, the camera pans down from the top of the photograph and, at the end of the shot, it zooms in on the words “Pictures: JASON FRASER” in fairly large type just below the bottom of the photograph. As Mr Morgan utters the words “splattered across the tabloids, blasted across the magazines of the world”, Beckham 12 is shown. This is similar to Beckham 11, though it is either taken rather closer to its subject or the photographer has zoomed in or enlarged it. Again, what is produced is a picture of the newspaper page on which the photograph appeared; it seems to have occupied roughly the top half of the newspaper page. The original photograph shows Mrs Beckham almost full length, carrying Romeo and with Brooklyn at her side. As it appears in the newspaper it is approximately half length shot, still showing Romeo but Brooklyn has been cropped out. To the left of the image of Mrs Beckham is the headline “Romeo takes a bow” and below that, in smaller type, the words “a five week old superstar sleeps through his debut”. This time the shot zooms out from just showing Romeo to showing the rest of the photograph; it takes about four seconds to do that. Unlike previous occasions, there is no identification on screen of Jason Fraser as the author of the photograph.

In this context I should add something about the matter in which Mr Morgan delivers the last 13 words of his piece. The commas after the words “calmly” and “easily” were stressed by significant pauses, and the words “and rather easily” were themselves given some stress. The overall effect is to make it clear that the words were used ironically.

The next contributor is Mr Fraser again. He is shown uttering the words:

“A style fashion icon, a cute baby with a pretty quaint name as well, you know, how can you go wrong? It’s a great shot.”

As he utters the words “you know, how can you go wrong?” Beckham 13 appears. This again shows Mrs Beckham holding Romeo, taken from a slightly different angle from Beckhams 11 and 12, but otherwise very similar and, judging from Mrs Beckham’s appearance and the way she is holding the baby, from the same series. It is on screen for almost 5 seconds; it remains on screen until just after the end of his short piece. This time one can see the text below the photograph, and if one looks very carefully at the text (with an opportunity to stop the tape) one can see his name appearing as the author of the photograph, but that cannot be taken as any real attempt to identify him, in text, as the author since that would not realistically be seen by anybody viewing the television programme as a programme.

Immediately after that contribution from Mr Fraser, Mr Morgan’s voice is heard again. He says:

“With the help of these photographs, Victoria was the subject of glowing headlines once again.”

As he says that the picture shows Beckhams 11 and 12 again, this time appearing on the same page of a different newspaper. Beckham 11 is shown at roughly twice the size of Beckham 12 – they are shown side by side on the same page, and on the left hand page there is the headline “Lets See Daddio, Romeo”, and some copy below that. As that finishes, Clare Morrisoe says:

“I think now she’s Mum Spice isn’t she? She is embracing the role as perfect wife and perfect mother.”

The suggestion behind the content and the delivery is that she was deliberately projecting herself in that way; in other words, that the photographs were deliberately contrived by her notwithstanding their appearance of noncontrivance. As she says this a video is shown of Mrs Beckham in a kitchen with Mrs Beckham apparently tidying up. Then Mr Roy Greenslade (media commentator for the Guardian) says:

“Let’s do this scenario. She has two children, she appears in public with two children, the press take a picture and then days later, columnists as they like to call themselves, suddenly start saying, oh, you see she’s re-branding herself, she is now wanting to appear as mother.”

As he utters the words “the press take a picture” the camera shot switches to a picture of most of the front page of the Daily Mirror, the right hand one third of which is occupied by a slightly cropped version of Beckham 13 (its second appearance). Mrs Beckham is shown from just below the waist upwards, and over the course of 3 seconds the shot zooms in and away from the photograph and up to the headline at the top of the page (“Romeo’s debut – the new Beckham takes centre stage”), so that after those 3 seconds all one can see is a small part of the top of Mrs Beckham’s head.

The theme of the programme then moves onto an occasion featured in the newspapers when it was reported that there was a plot to kidnap Mrs Beckham and her family. To the accompaniment of words taken from a TV news item, the programme then showed Beckham 14. This is quite hard to spot. What is actually shown on screen, for just over 4 seconds, is a headline appearing at the bottom right hand part of what I assume is the front page of a newspaper. In very bold type is the headline:

“£5m PLOT TO

KIDNAP

POSH AND KIDS”

laid out in that manner. To the right of the headline is a small square of text – the beginning of the account of the story. Tucked in the gap bounded by the words “PLOT TO”, “KIDNAP” and “KIDS” on three sides, and the text on the fourth, is a small photograph of Mrs Beckham. I would judge that the photograph in the newspaper is a little bigger than a passport photograph. The full picture (which was not shown on the programme, because the programme merely reproduced newspaper photographs) was a three-quarter length shot of Mrs Beckham taken out of doors somewhere, which looks as though it might have been a little more posed than the other photographs, but nothing turns on that. Although the shot is just a shot of her head, and the rest of the photograph has been cropped, no point was taken by the defendants that they had not reproduced a substantial part of the original. After that appearance Mr Morgan comments on the story and says:

“The gang was arrested in London for the theft of antiques but it was their alleged kidnap plot that set the media into meltdown. The words Beckham and kidnap were tabloid gold dust, which left some to question whether the story may have been hyped up to create a bigger scoop.”

As he speaks the words “May have been hyped up to create a bigger scoop” the picture shows two thirds of a newspaper page with Beckham 12 to the top right. To the left of the photograph is a headline “£5m kidnap plot…or just a tabloid sting?” Below that is a picture of a house and some unreadable text. Over the course of 3 seconds the camera zoomed into the headline so that all that can be seen of Beckham 12 is Romeo in the arms of his mother. As this happens Mr Roy Greenslade comments on the apparent farfetched nature of the kidnap story.

There are then some contributions in which comment is made on legal steps that the Beckhams were prepared to take in order to stop false rumours and in his last piece to camera, Mr Morgan observes:

“So has Victoria used and abused the press, or has the press used and abused Victoria? There is no doubt that between us we have created a sort of unofficial royal family, but the big question for Victoria is whether she can now reinvent herself again to be something more than just the wife of David Beckham, and the big question for the tabloids is whether they will ever let her.”

The programme then closes with remarks which are not germane to this action.

I have sought to describe the programme in some detail, and have set out extensive extracts from the soundtrack, because the context of the photographs is essential to the defences of the defendants. What I have not done hitherto is to indicate the nature of some of the other accompanying material. That can be described generally, but it is, in its own way, equally important. As the programme progresses, in addition to the short extracts from a number of interviews with contributors, the programme shows a considerable number of other press stories about the Beckhams. It does so by showing dramatic headlines, invariably accompanied by other pictures of the Beckhams. There are a considerable number of these. It also contains film footage of the Beckhams appearing in public (on catwalks, signing autographs, going on holiday and in other contexts) all of which have obviously been taken from film archives of some sort. How the Beckhams have been treated in the press is obviously a key part of the programme.

The Defences

Having set out that material, I can now turn to the Defences, and I shall take fair dealing first.

Criticism and review

The first question which arises under this head is whether the use made of the photographs was for the purposes of criticism and review of the work (ie the photographs) or of another work. This raises two separate points – was there criticism or review, and if so what was the work being criticised or reviewed? In what follows, for ease of exposition I shall use the expression “other work” as if it were the expression appearing in the statute (which refers to “another work”) – they do not differ materially.

The defendants’ case was that the concept of criticism or review had to be interpreted liberally. Here there was criticism or review of both the photographs and of another work or works, namely the coverage of the Beckhams (and in particular Mrs Beckham) in the tabloid press. The criticism and/or review was thus of two things – there was criticism and review of the photographs themselves (or some of them at least) and the philosophy or ideas behind them, and there was criticism and review of another work (or works) namely the tabloid press. One had to look at the programme as a whole, and not dissect it too readily into unrealistic parts, and one had to look at the programme as it would strike the reasonable viewer.

The claimant had a number of answers to this. First, so far as it was alleged that there was criticism or review of the photographs themselves, it had to be more than mere passing comment or passing reference, and in the present case there was no such thing. One pointer as to whether there is genuine criticism or review is whether the same point can be made without displaying the copyright material. Second, so far as criticism or review of another work was concerned, then that other work had to be a copyright work within the meaning of the Act, that is to say a work falling within section 1 of the Act, and that other work must be identified (which it was not in the present case). Miss Michalos disputed that the other work could be general media attitude, or that references to underlying philosophy and ideas appearing in the authorities should be taken as being a reference to any such concepts other than those appearing in the actual specific work itself.

The meaning of “criticism” and “review” were considered in the Australian case of De Garis v Nevill Jeffress Pidler Pty Ltd (1990) 18 IPR 292, relied on by Miss Michalos. Beaumont J proceeded from dictionary definitions in the MacQuarie Dictionary as follows:

“Criticism - 1. “The act or art of analysing and judging the quality of a literary or artistic work, etc: literary criticism; 2 the act of passing judgment as to the merits of something … 4. a critical comment, article or essay; a critique.”

Review – “1. a critical article or report, as in a periodical, on some literary work, commonly some work of recent appearance; a critique …”

In that case the subject of the action was press clippings, so it is not surprising that the extracted definitions tend to focus on literary criticism or review. Miss May, for the defendants, chose to counter that with the Shorter Oxford English Dictionary definitions:

“Criticism: …2a the work of a critic. B – an article, essay etc expressing or containing an analytical evaluation of something.”

“Review: 1. a general survey or assessment of a subject or thing …”

These definitions are of some assistance, so far as they go, but it is important to have in mind what Robert Walker LJ said in Pro Sieben Media AG v Carlton UK TV Ltd [1999] FSR 160 at p 620:

“’Criticism or review’ and ‘reporting current events’ are expressions of wide and indefinite scope. Any attempt to plot their precise boundaries is doomed to failure. They should be interpreted liberally …”

Miss May drew my attention to the fact that in Ashdown v Telegraph Group Ltd [[2002] Ch 149 the fair dealing provision was an instance of the right of freedom of expression displacing copyright protection (see para 33), but I do not think that that idea assists in determining the nature of “criticism or review” which falls within the section. It may be that that can be said to be the basis for adopting a liberal interpretation, as required to by Walker LJ in Pro Seiben, but beyond that it does not assist. I therefore approach the question with the assistance of the concepts behind the definitions but not rigidly bound by them, and bearing in mind what Robert Walker LJ said.

This impossibility of plotting boundaries makes it impossible to accept Miss Michalos’s submission that there must be something beyond a bare comment. It is not helpful to try to introduce such limitations into the debate; at worst it is misleading, and at best is unhelpful because it will merely shift the debate to the question of whether, in its own context, the relevant remark is merely a “bare comment” or goes further and is criticism. The context is likely to be all-important.

The next point is to what I apply those concepts – what is capable of being the subject of criticism or review for the purposes of the section? The photographs, as subjects, are easy enough as a concept. However, there is more difficulty (in the present case) about criticisms of what Miss May called the philosophy and ideas underlying a work, and what (if any) other works were the subject of any criticism of review in this case.

Miss May said that, in addition to relying on criticism of the photographs themselves, she was entitled to rely on criticism or review of the philosophy or ideas underlying them. By the end of the case I do not think that there was any difference in principle between her and Miss Michalos on this. That it is correct appears from Hubbard v Vosper [1972] 2 QB 84, in which the copyright works were various works about Scientology, extracts of which appeared in the defendant’s book which was critical of the cult. It was submitted that the fair dealing section applied only to criticism of the work, not of the doctrine or philosophy underlying it. Lord Denning disagreed with this submission:

“I do not think that this proviso is confined as narrowly as Mr Pain submits. A literary work consists, not only of the literary style, but also of the thoughts underlying it, as expressed in the words. Under the defence of “fair dealing” both can be criticised. Mr Vosper is entitled to criticise not only the literary style, but also the doctrine or philosophy of Mr Hubbard as expounded in the books.” (at page 94).

The same view was expressed in Time Warner Entertainments LP v Channel Four Television Corporation plc [1994] EMLR 1 at pp 13 and 15, and confirmed in Pro Sieben (at p 621). I agree with Miss Michalos that on analysis this is because criticising the philosophy is criticising the work. It must follow that if the review or criticism is of another work (ie a work other than the one in respect of which fair dealing is claimed) then that review or criticism can extend to, or even be confined to, the ideas and philosophy underlying that other work. Furthermore, it is not appropriate to confine the notion to “ideas and philosophy” – that is merely one formulation of the extent to which criticism may extent. Walker LJ expressed himself thus in Pro Sieben at p 621:

“Criticism of a work need not be limited to criticism of style. It may also extend to the ideas to be found in a work and its social or moral implications.”

I was not shown any authority dealing with the nature of the “other work” for the purposes of section 30(1). Miss Michalos submitted in her written submissions in reply that it had to be a copyright work. That seems to me to be wrong so far as it requires the other work to be in copyright – why should the fair dealing defence in relation to a current copyright work depend on whether the other work, which is the subject of criticism, is itself in copyright. However, there is more in her submission if one removes the requirement of subsisting copyright from another work. Since the same word (“work”) is used to describe both the copyright item whose infringement is in issue, and the other item or items which can be the subject of the criticism or review, it is likely that it has the same meaning in both instances. Since copyright can only exist in a work of the kind described in section 1 of the Act (as elaborated in the following sections), it seems to me to follow that what must be the subject of criticism is something which is a “work” in the same sense.

This point was not dealt with as such in Pro Sieben, though my conclusion is consistent with it. In that case the defendant was accused of infringing copyright in a TV programme (called the TAFF report) relating to the pregnancy of a woman with eight foetuses. The defendant relied on fair dealing, but that defence was rejected by the trial judge. That rejection was reversed by the Court of Appeal. At p 621 Robert Walker LJ refers to the defendant’s pleaded case which was that the works being criticised were:

“The Plaintiff’s Film and/or the Plaintiff’s Broadcast and/or other media exploitation” (my emphasis)

He then observes that the judge did not comment on the words that I have emphasised and says (all emphases being mine):

“It may be said that those words are very vague … Nevertheless the judge should in my view have taken as his starting point that the appellants’ pleaded case was that the Carlton Programme was criticising various works representing the fruits of chequebook journalism, of which the TAFF report was one. The other (which might have been more particularised if Pro Sieben had pressed) were daily or weekly newspapers mentioned as having run stories on Ms Allwood or her partner or one or more of the other “ordinary people” to whom “something extraordinary happens in their lives”. Four newspapers – the News of the World, the Sun, the Daily Mirror and the Daily Mail – were mentioned frequently in the Carlton programme, with shots of mastheads, headlines and parts of articles in those papers. Other newspapers (and one British television programme) received passing references.”

Then he goes on to criticise the trial judge because

“He did not consider the possibility that [the programme’s use] might have been for the purpose of criticism or review of the TAFF report and the newspaper material mentioned above, taken collectively as a genre of the fruits of chequebook journalism”

thereby clearly indicating that such use, thus described, was capable of falling within the section. At p 623 he then concludes:

“The Carlton programme as a whole was in my judgment made for the purpose of criticism of works of chequebook journalism in general, and in particular the (then very recent) treatment by the media of the story of Ms Allwood’s multiple pregnancy.”

In my view it is quite clear from those extracts that the other works which Robert Walker LJ had in mind for these purposes (that is to say, the works other than the TAFF report itself in respect of which criticism was being made) were newspapers and broadcasts of a particular type. Certain newspapers are actually identified in those extracts. All those works are, collectively and individually, the “fruits of chequebook journalism”, and “works of chequebook journalism”. Newspapers and broadcasts are “works” within the meaning of section 1. The decision is therefore consistent with my view of the proper interpretation of section 30.

The decision also assists on two other points. First, it demonstrates that the ideas or philosophy underlying a certain style of journalism, as manifested in the works themselves, can be the subject of criticism which falls within section 30. That, as will become apparent, is important in the present case. Second, it demonstrates the fallacy of a submission that at one point Miss Michalos seemed to be making (though at the end it was not clear that she was putting the matter in this way) namely that the other work or works must be specifically identified. I can see no reason in principle why that should be so and the reasoning and decision in Pro Sieben clearly indicates that it is not. It was no part of Robert Walker LJ’s reasoning that specific editions of specific newspapers, or specific broadcasts, were identified. Four newspapers were specifically identified, but others (and broadcasts) were identified only in general terms, by type, as falling within the genre. That was sufficient in that case, and is therefore sufficient (so far as relevant) in the present one.

With those points established and in mind, I can now turn to the assertion of the defendants that the programme contained relevant criticism. They say that it contained criticism both of the photographs themselves (except Beckham 14) and of a certain style of tabloid journalism which amounted to criticism of the newspapers themselves and the ideas behind their reporting of celebrities. If that is a proper description of the nature of criticism then there is criticism (or review) within the meaning of section 30 in precisely the same way as there was such criticism in the Pro Sieben case.

Having viewed a recording of the programme, I have come to the clear conclusion that the deployment of the first 13 photographs is for the purpose of criticism or review within the meaning of section 30. I have sought to set out the shape of, and the most significant points in, the programme in the extracts referred to above. Like the programme in Pro Sieben (as that programme is described in the law report), Tabloid Tales contains frequent shots of newspapers, their mastheads and their stories, and in addition their pictures. It also contains various film clips demonstrating the public presentation of, or public appearances of, the Beckhams. They are all there to demonstrate a certain style of journalism – the coverage of celebrity – and to comment on (in the form of criticism) that style as manifested in the relevant publications (tabloid newspapers and, to a certain extent, magazines). Various points are made in the course of the programme, including important reflections on the fact that certain items are covered at all (for example, the haircuts), the extent of the coverage, the extent to which rival newspapers cover or disdain to cover matters such as Victoria Beckham’s alleged eating disorder (which she denies in her interview), and the extent to which the newsworthiness of the everyday lives of these particular celebrities is capable of pushing other matters which might be thought to be more important (“war and famine”) off the front page. So far as the dictionary definitions are concerned, it falls fairly and squarely within the definitions of “criticism” when applied to the ideas underlying the reporting, and to some extent to the reports themselves, though those reports are not actually cited save insofar as headlines are sometimes briefly in shot.

All the photographs apart from Beckham 14 are used in that context. Beckham 1-5 are used 9 minutes into the programme after the scene of the programme has been set by remarks reflecting on the interest of the public in the lives of celebrities and the fact that the Beckhams sought (with some success) to manipulate that to their own advantage. That is clearly criticism within the meaning of the section. These particular photographs then appear having been foreshadowed by Mr Morgan’s reflection as to how the change in the Beckhams’ hairstyles achieved media prominence in “a prime example of

Fleet Street’s rather warped news agenda” (again, something clearly in the nature of criticism in the context of this programme). Ms Blackburn is seen and heard to describe this as something that would get them on to the front pages, and almost immediately afterwards these pictures appear as an example of that. That is clearly use in the context of criticism of the newspapers and their reporting ethos. They are also shown as an arguable example of manipulation of that ethos by being arguably staged, and that also seems to me to be criticism of the “other works”. I shall return to that when considering the case made by the defendants that there is also criticism of the photographs themselves. When Beckhams 3-5 are shown for a second time accompanied by shutter sounds the context and purpose is still essentially the same.

Beckhams 6-10 are shown in a similar critical context. These are the shots of the family in the wildlife park. They are shown when Mrs Beckham is musing on the fact that photographers are apparently ready to capture any moment – a criticism of journalistic style and content – and the photographs are apparently shown as examples of that. There is little fundamentally interesting about someone else’s family having a day out with some animals; but nevertheless here is a photographer who has snapped the event, and here is a newspaper which has published it because it believes its readers are interested. That is what the programme is apparently saying. This is all part of the overall critical or reviewing theme. They are genuine illustrations of what the programme is saying – “Section 30 is designed to protect a critic or reviewer who may bona fide wish to use copyright material to illustrate his review or criticism.” (Banier v News Group Newspapers Ltd [1997] FSR 812 at 815) (emphasis supplied).

The first showing of Beckhams 11, 12 and 13 occurred in the context of that part of the programme which dealt with the question of who was controlling whom – was Mrs Beckham controlling the media in order to divert attention to good news when she wanted. These photographs are shown in order to demonstrate the effects of that – the timing of her first appearance after childbirth is held back until she is ready (in terms of personal appearance and, on one suggestion in the programme, in terms of diverting attention from less welcome news about her record label), and the photographs are the coverage that she got. The content of the media has been contrived by the subject of the story – that is the suggestion. The same applies to the second showing of each of those photographs. They accompany, illustrate, elaborate and to a certain extent make good what the programme is saying about the content of the tabloids, which it portrays as putting forward Victoria Beckham in a new role

or new light. There is then one more occurrence of Beckham 12, which appears in the context of a recital of the kidnap story. This part of the programme critiques the coverage of that story and the extent to which it was, or may have been, hyped, and how it fitted into the media coverage of the affairs of the Beckhams. The newspaper used a certain headline, and with that headline a picture of Mrs Beckham appeared, holding a baby. That is part of the dramatic treatment of the story, and it is the coverage that is being criticised, or reviewed. Accordingly, it is a further use of the photograph in the context of a criticism of the “other works”.

I do not think that this applies to Beckham 14, however. That is the small photograph appearing tucked into the sensational headline about the Beckham kidnap plot. The point of the shot in question is to show the headline. The small photograph happens to be there. While the photograph appears in the context of criticism or review of the other works, it does not appear “for the purpose” of criticism or review. Its proper place appears below when I consider it again in the context of incidental use.

Accordingly all of Beckhams 1 to 13 are deployed in the context of, and for the purpose of, criticism or review of the other works, that is to say the tabloid press and magazines, and I so find. In addition, it is clear to me that in relation to most of the photographs there is also criticism of the photographs themselves. Beckham 1 first appears when the programme turns to the Beckham haircut. As it is shown there is an oral attribution of the photograph to Mr Fraser by Mr Morgan. After Mr Fraser’s contribution Mr Morgan makes his remark about how mysterious it is that Mr Fraser manages to be in the right place at the right time, and questions where he gets his information from. The question is answered almost immediately by Mr Wansell’s saying that Mrs Beckham can manipulate “certain photographers” and by Mr Morton’s explicit allegation that the photographs are pre-arranged and

“It looks as though they’re snatched pictures, that they’re taken off guard, off duty, when all along those pictures were rehearsed and pre-arranged.”

This is accompanied by Beckhams 2 to 5 being shown simultaneously, and Beckhams 3-5 appearing again almost immediately afterwards. It is clear that Mr Morton is speaking about the Jason Fraser photographs. That is a clear criticism of the photographs – it is said that the photographs are not in fact as they appear, or as the subject and photographer would wish them to appear. That is a clear act of criticism of the photographs themselves, and the context in which all 5 are shown indicates that it applies to all 5. Similar remarks do not accompany the showing of Beckham 6 to 10, but in my view the criticism can and should be taken as extending to them. The photographs are shown in a section of the programme which deals with unstaged or non-pre-arranged photographs, but there is a clear shot of the Jason Fraser name, and I think that the programme is implicitly inviting the reader to consider whether these apparently unarranged photographs are nevertheless as pre-arranged as the others because they are by the same person (Mr Morton’s “court photographer)”. With Beckhams 11 and 12 the link becomes stronger again, because of the ironic tone and content of the accompanying words from Mr Morgan (“surprise surprise, there’s her old friend Jason Fraser” and “Jason Fraser calmly, and rather easily, helped himself to another six figure sum”), which is a return to the theme that these apparently casual and opportunistic snaps are not so casual and opportunistic as would appear. This clearly carries over to Beckham 13, and the repetition of Beckhams 11 and 12. They are shown within 30 seconds of the first showing of Beckham 11, while the theme is still being advanced or is fresh in the mind, and the second showings of Beckhams 11 and 12 are accompanied by Mr Morgan’s remarks about the “help of these photographs”, which is again tinged with a little irony – the suggestion is that the help is not wholly accidental because the photographs are not wholly accidental. The criticism is still operating when Beckham 13 is shown for a second time. It is, however, not implicitly operating when Beckham 12 is shown for the third time (in the context of the kidnap story). The theme of the programme has moved on here, and the photograph itself is not being criticised or reviewed at this point. There is no suggestion of criticism of Beckham 14, either.

For those reasons, therefore, each of the publications of the photographs, save for the third showing of Beckham 12 and the only showing of Beckham 14 are in the context of criticism of the photographs themselves within the meaning of section 30(1).

For the sake of completeness I should deal with a couple of submissions of Miss Michalos on this point, each of which I reject.

First, she said that something could not be criticism or review unless there is specific reference to the content of that which is being criticised. Since there is no sufficiently specific reference to the photographs then there is no criticism (or review). All there is, she says, is criticism of Victoria Beckham. She claims to derive support for her submission as to what is required from Ashdown v Telegraph Group Ltd. In that case the Court of Appeal rejected a fair dealing defence in relation to a copy of a minute of a meeting, in the course of which they quoted with approval from the judgment of Sir Andrew Morritt V-C at first instance:

“But what is required is that the copying shall take place as part of and for the purpose of criticising and reviewing the work. The work is the minute. But the articles are not criticising or reviewing the minute: they are criticising or reviewing the actions of the Prime Minister and the claimant in October 1997”

I do not think that that citation supports a submission that there must be some form of specific reference to the work in question. That citation demonstrates clearly that it is not sufficient to criticise something (anything) in order to invoke the section; there has to be a criticism Uof the workU; and one has to add the rider “or another work”, a point which was not germane to that particular case. When judging whether what has happened is a sufficient criticism or review there is no requirement of any particular degree of specificity. There has to be sufficient content to amount to criticism of whatever is being criticised (the copyright work or another work). In the present case there is sufficient content in the programme to amount to a criticism of other works (the tabloid newspapers and magazines), and in most cases the photographs themselves.

She also submitted that a helpful indication as to whether what was taking place was criticism or review was whether the “criticism” could be done without using the copyright work. If it could then that was a strong pointer against its being criticism (though it was not determinative). I reject this submission too. It has no foundation in the statute. What the statute permits is “fair dealing” for the purposes of criticism or review. There is no requirement of necessity of use in section 30(1); there is merely a requirement of fair dealing.

Fair dealing

If use of copyright material is to fall within section 30(1) then that use must amount to “fair dealing”. In considering whether the use in the present case amounted to fair dealing (and the claimant says it was not) the following guidelines are relevant:

i) It is relevant to have regard to the motives of the user (contrast the question of criticism and review where the focus is more on the actual use without, or without so much, reference to the motive – see Pro Sieben at page 620).

ii) Whether there is fair dealing is a matter of impression.

“What amounts to fair dealing must depend on the facts of the particular case and must to a degree be a matter of impression. What is of prime importance is to consider the real objective of the party using the copyright work. Section 30 is designed to protect a critic or reviewer who may bona fide wish to use the copyright material to illustrate his review or criticism.” (Banier v News Group Newspapers Ltd [1997] FSR 812 at 815.

iii) If some degree of use would be fair dealing, excessive use can render the use unfair – Hyde Park Residence Ltd v Yelland [2001] Ch 143 at para 40.

iv) In assessing whether the dealing is fair the court can have regard to the actual purpose of the work, and will be live to any pretence in the purported purpose of the work:

“… it is necessary to have regard to the true purpose of the work. Is it a genuine piece of criticism or review, or is it something else, such as an attempt to dress up the infringement of another’s copyright in the guise of criticism, and so profit unfairly from another’s work?” (Time Warner, supra, at p 14).

v) In the same vein, the amount of the work used can be relevant:

“I may add, however, that the substantiality of the part reproduced is, in my view, an element which the Court will take into consideration in arriving at a conclusion whether what has been done is a fair dealing or not. To take an example, if a defendant published long and important extracts from a plaintiff’s work and added to those extracts some brief criticisms upon them, I think that the Court would be very ready to arrive at the conclusion that that was not fair dealing within the section (Morton J in Johnstone v Bernard Jones Publications Ltd [1938 2 Ch 599 at 603-4).

vi) However, this must be carefully applied in relation to photographs. It makes more sense in relation to extended literary or musical works. If one is critiquing a photograph, or using it for the purpose of criticising another work, then the nature of the medium means that any reference is likely to be by means of an inclusion of most of the work because otherwise the reference will not make much sense. This degree of care is particularly appropriate in the context of a television programme where the exposure is not as (for example) continuous or permanent as publication in printed form would be.

vii) Reproduction should not unreasonably prejudice the legitimate interests of the author or conflict with the author’s normal exploitation of the work – see the Berne Copyright Convention Article 9(2).

These factors were not seriously in dispute between the parties. Miss May said that none of them pointed towards unfairness of use or dealing, and Miss Michalos said that they did, when one looked at the actual use and at the evidence of the parties. Despite the many points that Miss Michalos made in relation to fairness, my clear view is that there was nothing unfair about the use of the photographs in this case in relation to which I have found criticism or review to have occurred (Beckhams 1 to 13). It was the defendants’ case that the use of the photographs was genuinely for the purpose of criticism and review; that there was no hidden or ulterior motive; that manner of use was not unfair; and that the interests of the claimant were not unfairly prejudiced (if indeed they were prejudiced at all). The claimant alleged, for the reasons appearing below, that the use of the photographs was not fair in the circumstances, and put forward a number of reasons for saying this.

First, it was said that the use was not fair because the programme relied on comments by Mr Fraser when he had refused consent to use his photographs. It was unfair to obtain those comments from someone who gave them voluntarily believing that the defendants were not going to use his works. I have already held that I am not satisfied that one of the requests was made (and refused), so much of the point of Miss Michalos in this respect does not arise on the facts. So far as the actual refusal of consent which I have found is concerned, there is no link between that refusal and the use which would make the use unfair. That refusal would not reasonably give rise to any belief on the part of Mr Fraser that the photographs would not be used, since it says nothing about whether they would be used from another source. On the evidence and on the basis of my findings, therefore, there was no unfairness in this respect. However, even if I had found in favour of Mr Fraser’s case on the evidence (that is to say, even if I had found that he had been explicitly asked for consent by a researcher and had refused) I would still not have found that this made the use of his photographs in the programme unfair (within the section). The unfairness has to arise in relation to the dealing with photographs – it has to go beyond some aspect of unfairness as between the parties which is not related to the use of the photographs. It principally relates to the manner and purpose of use, though it can extend to the circumstances in which the copyright material was obtained (see eg Hyde Park Residence v Yelland, where the photographs in question had been dishonestly obtained). It might just be that if Mr Fraser’s evidence were that he participated on the basis of express assurance that none of his photographs would be used then the subsequent use of film of the newspaper photographs could become unfair dealing, but the evidence in this case stopped short of that even if Mr Fraser’s evidence about the request for use were accepted in full. On that hypothesis what would have happened would have been that a researcher asked for a consent that would not have been necessary (if there were no other bar to fair dealing), and the other programme makers, apparently unaware of that request and refusal, made a legitimate use and innocently asked Mr Fraser for some participation. That might entitle Mr Fraser to feel personally let down in relation to the circumstances of his interview, but it does not entitle him to say that it renders what would otherwise be fair dealing unfair in relation to the use of his photographs.

Next, it was said that there was excessive use of the photographs in the sense that they were substantially reproduced when that was not justified by the brief criticism of the photographs themselves. I do not consider that this criticism is justified. It is true that in every case what the programme showed was what the newspaper printed. It is also true that in many, though not all, cases what the newspaper reproduced was substantially the whole of the photograph (it was not true of Beckham 8 and Beckham 10, which were heavily cropped to reveal what the newspaper wished to use as the central subject). However, any legitimate use of a photograph for the purposes of criticism and review is likely to require display of a large part of the photograph in order to make the point that is being made. That is certainly true of the photographs in this case. Unless the photographs had been shown as printed the point made by the programme could not have been made, either in relation to the criticism of the tabloid press coverage or in relation to the particular photographs themselves. The length of display of the whole photograph has to be taken into account here too. It could not conceivably be treated as too lingering on the facts of this case. In no case was the display of any photograph longer than about 3 seconds, and many were shorter. And in the case of some of the longer periods the whole photograph was not shown for the entire period because the camera panned across it or zoomed into some limited part of it, thus preventing any potentially unjustifiable lingering. In some cases the exposure was so brief as to make it difficult to spot exactly which photograph was being shown – see the second uses of Beckhams 3 to 5, which are little more than flashes on the screen as a directorial nuance demonstrating “snapping” (perhaps with some irony). Overall I regard this criticism as unjustified. If there is such a thing as a limit defined by a criticism:exposure ratio, then this case fell easily on the “fair” side of the line.

The claimant then relied on the fact that this was a commercial use of the photographs which makes the use unfair. Miss Michalos did not go so far as to say that UanyU commercial use was unfair, and obviously she could not sensibly do so – there is no reason why a review done for commercial purposes (which most reviews will be, since they will appear in some commercial publication) should be deprived of the use of the reviewed material when a non-commercial review would not be. However, she said that a use which had a commercial purpose would or could be unfair, and should be put in the scales when weighing up matters in order to arrive at an overall impression. As an example she relied on Associated Newspapers Group plc v News Group Newspapers [1986] RPC 515 where one newspaper (the Sun) printed copyright letters passing between the late Duke and Duchess of Windsor, the exclusive rights to which had been obtained by another. At page 518 Walton J referred to a passage in Hubbard v Vosper in which it was said to be not fair for a rival “to take copyright material and use it to his own benefit”. Walton J said:

“That seems to be exactly what has happened in the present case. There is no blinking the fact that the Sun is trying to attract readers by means of printing these letters or extracts from letters.” (at page 518)

It is not clear to what extent there was any attempt at criticism or review in that case, but what I think Walton J was seeking to say is that it is not fair if what the user of the material is actually doing is seeking to deploy the copyright material so as to derive benefit Ufrom that deploymentU. That is basically a user which is coloured by the motive. The motive was not to use the letters so as to criticise them (see the examples of genuine criticism given earlier on the same page of Associated Newspapers), but “to attract readers”. There is absolutely no evidential basis on which that can be said in the present case. There was, for example, no suggestion that the programme was trailed by alerting viewers to the fact that it would contain these photographs, or even photographs of a similar nature which would have the viewers switching on to see them. Nor is it plausible that that was the motive when one looks at the programme itself. The photographs were deployed briefly at various points in the programme, amidst a lot of other visual material. There is no way in which it can sensibly be said that these photographs were somehow intended as a ratings booster, and no evidence which would begin to justify such an assertion (let alone a finding) to that effect.

The same point can be made in relation to the allied point that this was copyright infringement dressed up as criticism and review. The criticism and review were, on their face, genuine enough – I have so found above. It is not readily apparent that there was a disguise to be penetrated when one looked at the programme. Having heard about the making of the programme from Miss Williamson, there is no evidence that behind the scenes there was any attempt at dressing up either.

Next is the point that the use in the programme competes with the claimant’s own commercial use of the material in such a way, and to such an extent, as to tend to render the use unfair. Mr Fraser gave very firm evidence that he was generally reluctant to allow use of his photographs in television programmes because the more lucrative press market was “hugely diminished” by over exposure to large TV audiences, and for that reason he would never have considered allowing the use of his exclusive photographs of the Beckhams to be included in this programme. There were occasions when he would allow his photographs to be used, and he had even allowed a use of one of the subject photographs in a prior programme called Diet Another Day. In that programme there was a brief shot of the front page of a magazine, and one of the Beckham photographs (Beckham 11) appeared as part of that front page. He made a charge of £500 for the licence to use that photograph and countered a suggestion that that showed that the photograph had declined in value, and that it demonstrated that he was not as reluctant to allow TV exposure as he sought to make out, by saying that this was a brief appearance on a programme on a TV station which he clearly thought would not give it the same exposure as a BBC (or indeed an ITV) programme would give it, particularly a programme of the nature of the Tabloid Tales Beckham programme. I was urged to accept Mr Fraser’s evidence as to the devaluing effect of TV exposure since Mr Fraser knew the business generally, and knew his own business in particular, and that therefore the exposure of these photographs on this programme would indeed compete seriously with his own exploitation of the photographs in the future.

I do not doubt that Mr Fraser knows his own business, and is a master at exploiting his own photographs. It is also true that the defendants did not adduce much evidence of their own as to the effect of broadcasting on the residual value of photographs such as the Beckham photographs. All they adduced was a statement of Miss Williamson that she had never heard such an argument being advanced. Bearing in mind the nature of her experience in the industry I think that that is of more limited value when compared with Mr Fraser’s greater experience of dealing with his own photographs. However, despite the lack of countervailing evidence I think that some of Mr Fraser’s evidence has to be viewed with care. These are photographs whose principal benefit as photographs lies in the ability to view and consider their content at the viewer’s pace. Anyone really interested in their content would want to be able to study them for a period of many seconds, if not longer. The viewer of the programme would not have that opportunity. I have indicated the length of time for which they were on the screen. Anyone interested, for example, in the Beckham haircuts and hoping to see a good shot of them would have to be pretty quick and would ultimately be very disappointed at the length of time they were given to reflect on the subject matter. They would be better off getting hold of a back copy of the newspaper. It seems to me to be unrealistic to suppose that, so far as the interested tabloid reader is concerned, this exposure will lead to increased boredom with these pictures. I accept that that is not determinative of a devaluing effect, because it may be that despite that the photos would be devalued in the amounts that future users would pay no matter how blasé the average tabloid viewer had become, and I accept that that is possible. Mr Fraser sought to address that point. At one point he asserted that the value of these photographs was “crippled” by their use in the Tabloid Tales programme, but it immediately appeared that he did not mean that in the sense that no-one else wanted to use them afterwards. He was still asked for licences to use them afterwards, and gave no details about those requests which would have enabled me to judge the extent to which he was no longer able to ask the sums that he had asked hitherto. Over the course of his evidence he indicated the sort of things that he would take into account in deciding whether to license photographs for TV use. They included the nature of the programme, the broadcaster, the time of broadcast, the number of times the photograph was to be shown and the extent to which the programme might be repeated. At one point he said:

“My fear is always repeats. This is one of the reasons why I do not come to agreements very often because people will want to repeat a programme again and again and again.

Taken overall I think that his evidence does not show that the value of these photographs was inevitably and seriously damaged by their use in this programme. It was not inevitable that UanyU TV use would “cripple” a photograph, because otherwise he would never license them at all, and he admitted that he did. Alternatively, if there were always likely to be a serious damaging effect then he would charge a large fee, and the evidence was that when he licensed TV use he would charge a smaller fee. He said that this was

because TV companies were not able to pay the sort of sums that newspapers would pay, but that does not really meet the point. That explains why the would not pay large sums. It does not explain why he would agree to license at smaller sums. He also explained that such exposure would sometimes have the merit of maintaining his profile, but again to my mind that does not explain why he would tolerate an inevitably “crippling” effect. The fact that he would license at all at the smaller sums he referred to (usually a few hundred pounds, though he did refer to a more substantial TV deal) demonstrates that the damaging effect was not inevitable, or always significant. He even licensed what he obviously regarded as some of his most precious (and therefore controlled) photographs of Mr Dodi Fayed and Princess Diana kissing on a boat to a TV programme which was discussing iconic photographs (there was a debate as to which were the most famous pictures of all time) – apparently therefore a programme containing criticism or review – and to 2 or 3 other TV programmes, without apparently “crippling” their value. So the most I can get out of the evidence is that putting a photograph on TV is capable of adversely affecting the future value of the photograph, but it depends on the circumstances. Mr Fraser’s attitude to the use of a photograph in the “Diet Another Day” programme demonstrates this – he clearly thought that the use of the photograph in that television context did not risk the same damage as use in other television contexts would. It was indeed a very brief appearance, and I can quite see why he might take the view he did about it. If repeats are damaging, then that point would go to any repeats of the Tabloid Tales programme, which have not (so far as I know) taken place. I find that on the evidence presented to me it was not proved that the exposure of the photos in the Tabloid Tales programme had a diminishing effect on the value of the photos of any, or any significant, amount. I accept that Mr Fraser thought that it might, and that his fear was genuinely felt, but overall he has not made out more than his fear of the risk of damage. He has not made out any actual damage to his commercial interests, and he has not established any particular level of significant risk.

How, then, does that affect the assessment as to the fairness of the dealing? Risk to the commercial value of the copyright may go towards demonstrating or creating unfairness, but it does not follow that any damage or any risk makes any use of the material unfair. If it did then there could be no use of copyright material in criticism or review if it could be said that that use might damage the value of the material to the copyright owner. That would be inconsistent with the purpose of the section which is to balance the interests of the copyright owner and the critic. It is all a question of balance. In the present case I consider it to be clear that the level of risk of damage (whatever it may be) is not sufficiently great to mean that the use of the photographs was unfair. The exploitation of the photographs in the programme was not gratuitous or lingering, so if there was any risk of over-exposure it was kept to an acceptable minimum. So far as this factor is concerned the use of the photographs was well on the “fair” side of the fair/unfair borderline (wherever that may lie).

For the sake of completeness I would add that as part of her written reply Miss Michalos put before me a short summary report of a decision of Hart J delivered on 24th February 2005 in IPC Media Ltd v News Group Newspapers Ltd. The report was a very brief Lawtel report and a transcript is not yet available. Hart J seems to have found that on the facts the reproduction of the front page of a competitor’s magazine on the front page of the defendant’s magazine was not fair dealing because such criticism as there was could have been done without it, and in copying the work to advance its own competing purposes at the claimant’s expense the defendant was advancing its own work, and that did not amount to fair dealing. So far as one can tell, that is a decision on the facts where the balance on fair dealing went the other way. I can detect nothing in that case which would affect the decision which I have reached without it.

Last, as an aspect of “dressing up”, it was alleged that the programme was not genuine criticism or review because what the programme makers in fact set out to do was to produce a lightweight piece of entertainment which was in fact a public relations exercise for Mrs Beckham. It was even asserted that Mrs Beckham had editorial control over the programme. Having seen the programme, and considered the evidence, I am satisfied that there is nothing in this point. Objectively speaking the programme contains criticism; I have already dealt with that above. It may or may not amount to entertainment as well, but I do not think that entertainment is necessarily inconsistent with criticism or review. If “lightweight entertainment” is intended as some sort of antithesis to criticism and review, then this programme does not fall into that category, but in truth it does not seem to me that the question of whether use is fair dealing or not can be determined by deciding what other labels can be applied to it. The real question here is whether this is a trivial programme dressed up as criticism or review so as to provide an ostensible justification for showing copyright material under some pretence, or whether it is genuinely critical and reviewing. Objectively speaking it is the latter, as I have already found, and nothing in the evidence suggests that anyone behind the scenes had any other, more sinister, intention.

If it were established that Mrs Beckham had editorial control over the programme, then that might tend to indicate that it was not genuine criticism or review, though what would be more significant would be how she exercised it. However, it is quite clear on the evidence that she had no such thing. What was established was that she had managed to extract some concessions from Brighter in relation to the use of her recorded interview. Like other contributors, she signed a release form which governed the terms on which she permitted her taped interview to be broadcast, but hers contained additional terms. It provided:

“The Contributor shall be provided with an opportunity to view the transcript of her edited interview prior to the final edit of any Programme in which she features and she shall have twenty four (24) hours to notify the Company of any element of the edited interview which is legally sensitive and therefore unsuitable for transmission in which case the Company shall re-edit the Programme to remove the offending element to make the Programme suitable for transmission …”

This was negotiated in her case because she was thought to have some ongoing legal disputes as to which she was sensitive. Mrs Mitchinson, a BBC executive producer who was responsible for this programme, gave evidence that the BBC approved this wording in this particular case because of that sensitivity. She was aware of what she thought was a couple of disputes, (though it appears she was wrong about one of them because it had been previously settled, but nothing much turns on that). What is important is that the control was limited as to the basis of intervention by Mrs Beckham, and that in its terms it did not contravene BBC guidelines which prevented the ceding of editorial control to a contributor. The actual wording of the clause gives no foundation for saying that Mrs Beckham had editorial control. She had a limited right of objection in relation to her interview, and not in relation to the rest of the programme, and that remains the case even if (as may have been the case) there would have been question marks over whether the programme would have been broadcast without it.

However, the matter does not quite stop there. The actual operation of the clause went beyond its strict terms. First, Mrs Beckham was given the opportunity to see a tape of the interview, not just a transcript. There was some uncertainty as to whether she was sent a tape of the rushes (that is to say a rough version) of the whole programme or just of her interview. I think it likely, and find, that it was the latter. That gave Mrs Beckham an additional advantage over just seeing transcripts, but it does not betoken any greater degree of editorial control. However, she also put forward objections which for the most part clearly went beyond anything that would impact on apparent existing legal disputes. The first objection was as to the appearance of her skin tone. Then she raised a point about not wishing to have broadcast small parts dealing with the following: a question concerning whether she had taken money for setting up photographs with paparazzi; a bit about her husband’s personal life; a reflection on her own honesty and willingness to disclose; and a passage reflecting a certain haziness as to whether Essex has a coastline or not. All her requests were conceded, apart from the last where something that she wanted added in was not added (perhaps because the requested additional material did not in fact exist). Mr Morgan himself approved the relevant alterations. Only one (the reference to payment) was referred to by Brighter as apparently having reference to an ongoing legal dispute, and Brighter may have been under a misapprehension about that. The others were not ostensibly justified in that way, and they seem to have resulted from the personal preferences of Mrs Beckham. However, this does not mean that she had editorial control over the programme. She had some limited control over part of it for legal reasons; and she took the opportunity of making some requests, in relation to her interview, which were granted. To say that this amounted to, or betokened, some significant degree of editorial control so as to make the whole programme a piece of PR for her seems to me to be unarguable. Mrs Beckham’s participation in the programme might have been important, but there is absolutely no evidence that anyone thought it was so important that they would, in substance, be forced to cede editorial control over the programme. Since it appears the whole programme (even in rushes form) was not sent to her I do not see how she can have exercised it. Had she had that power, then (judging by the sensitivity demonstrated by her actual requests) I think it likely that other aspects of the programme would have been challenged as well. At the end of the day to say that this programme, with the slants that it adopts, is a PR piece for Mrs Beckham is seriously to mischaracterize it. The suggestion that she arranges her own publicity under the guise of chance photographs, and the less than flattering treatment of her solo singing career, are demonstrations of that. Last, no support is to be gleaned in this respect from the apparent change of name of the series from “Set The Record Straight” to “Tabloid Tales”. That does not disguise some hidden agenda in this respect.

In the circumstances I find that the use of the photographs amounted to fair dealing for the purposes of section 30(1) of the Act.

Sufficient acknowledgment

Under section 30(1), fair dealing is only a defence:

“…provided that it is accompanied by a sufficient acknowledgement”

It is accepted by the claimant that there was sufficient acknowledgment in relation to Beckhams 1, 6-10 and the first use of 11, but not in respect of the other use of photographs said to be covered by the fair dealing defence. I must therefore consider it in relation to those.

“Sufficient acknowledgment” is defined in section 178:

“ ‘sufficient acknowledgment’ means an acknowledgment identifying the work in question by its title or other description, and identifying the author unless-

(a) in the case of a published work it is published anonymously;

(b) [immaterial on the facts of this case]”

No question arises as to anonymous publication in this case, nor does any question arise in relation to an identification of the work in question. The questions that are said to arise do so in relation to the requirement to identify the author. Miss Michalos’s point was that the identification of the author had to be express, and it was not sufficient for it to be implied.

There is no authority in support of Miss Michalos’s submission, and it does not seem to me to accord with principle. The borderline between what is express and what is implied can get blurred anyway, and it is not a satisfactory distinction to introduce in this area of the law. What is important in principle is that there is something which can properly be seen as an identification of the author. Miss Michalos drew my attention to Sillitoe v McGraw-Hill Book Co [1983] FSR 545, where the absence of an express recognition of authorship meant that there was no sufficient acknowledgment, but on this point the case was simply a decision on the facts. Such identification as there was of the author of the material in that case was too far divorced from the appearance of the material to be associated with it, apparently, because the copyright works were treated as though they were non-copyright (see page 565). It is not an authority for the proposition that any identification must be express. All that is required is that it is an identification, though I think that I can accept that it probably has to be one that can be readily seen and not require some form of hunting around or detective work in order to ascertain it. It is probably not enough to say that the author can be identified if you look hard enough; the authorship must be more apparent than that. However, at the end of the day it is a question of fact whether there has been an identification.

I turn therefore to consider the dispute in relation to the photographs. The identification of the author of Beckham 1 is presumably conceded because the camera pans down to and zooms in on Mr Fraser’s name at the foot of the newspaper photograph. That does not occur in relation to Beckhams 2 to 5, but the voice over of Mr Morton (the text of which appears above) identifies him, and in that context I consider that he is sufficiently identified as the author. That is reinforced by the fact that not long before, Beckham 1 had been shown with Mr Fraser’s name, and anyone paying a moderate amount of attention would be able to identify the photographs as being from the same series (and therefore by the same photographer), particularly bearing in mind that Mr Morgan had identified “the exclusive pictures of the change of image” as being Mr Fraser’s. The whole context of the appearance of these photographs clearly links them with Mr Fraser, and there is sufficient identification of him to amount to a “sufficient acknowledgment”.

Next there is the second appearance of Beckham 11. The first appearance is accompanied by a shot of his name, so he is identified there, as well as by the oral statements of Mr Morgan which accompany it. The second appearance of the photograph is not so accompanied, but I consider that it is sufficiently clearly a repetition of the earlier photograph that the identification of the author can be said to be carried over – bearing in mind the emphasis given to the authorship in its first appearance (“surprise surprise”) this repetition will be even clearer than it otherwise would be. Accordingly this appearance sufficiently identifies the author.

Next there are all three appearances of Beckham 12. The first appearance is not accompanied by any clear separate visual identification of Mr Fraser as an author, but the accompanying words are the clearest attribution of authorship short of that. Mr Morgan all but says in terms “the author of this photograph was Jason Fraser” – his actual words appear above, and are in my view clearly sufficient to identify him as the author. The second appearance of Beckham 12 is sufficiently clearly linked with the first appearance to carry over the identification The third appearance is more distanced in time and when the programme has moved on. One cannot say that the identification is carried over in the same way. However, the photograph is sufficiently clearly a repetition of the earlier photograph for the identification to be carried over simply by virtue of its being the same photograph. I do not think that the concept of identification means that there has to be a precisely or virtually contemporaneous act of identification. Once the identification has been provided then it is capable of operating in relation to a later appearance of the copyright material, and I find that on the facts that is what has happened here. There is therefore sufficient identification of the author in all three appearances of Beckham 12.

The claimant then says there is no sufficient identification in relation to both appearances of Beckham 13. The first occurrence follows very shortly after Beckhams 11 and 12. Its appearance (the subject matter is very similar to 11 and 12), its positioning in the programme and the fact that its showing is accompanied by Mr Fraser speaking, makes it sufficiently plain that it has the same author. This is so whether or not Mr Fraser was, subjectively speaking, talking about this photograph during his interview. What matters for these purposes is how the material appears in the programme, and there is a sufficient link to make the identification. This is sufficiently clearly a repetition of the previous photograph for the identification to carry over for the purposes of the acknowledgment provision.

I therefore find that there was a sufficient acknowledgment in relation to all occurrences of Beckhams 1-13.

Conclusions on fair dealing

It follows from the above, and I find, that the defendants are entitled to the benefit of the fair dealing provisions of section 30(1) in relation to each of Beckhams 1 to 13.

Incidental inclusion

Section 31(1) provides:

“Copyright is not infringed by its incidental inclusion in an artistic work, sound recording or broadcast”.

The defendants rely on this provision as an additional or alternative defence in relation to the third appearance of Beckham 12, and the appearance of Beckham 14. Their case is that both photographs were included as an integral part of the headlines or coverage of the kidnap plot.

Guidance as to the law as to incidental inclusion can be found in Football Association Premier League Ltd v Panini UK Ltd [2004] FSR 1. In that case the defendants had published photographs of Premier League footballers in their club strip, which included Premier League or club logos; the League and clubs claimed copyright in their logos. The defendants relied on the defence of incidental inclusion, and it was rejected on the facts of the case. Chadwick LJ said that the question of whether there was incidental inclusion:

“is to be answered by considering the circumstances in which the relevant artistic work – the image of the player as it appears on the sticker or in the album – was created”

And whether or not the inclusion is incidental

“turns on the question: why – having regard to the circumstances in which the [allegedly infringing work] was created - has [the original copyright work] been included in [the former].” (at p 12)

He went on to hold that commercial, as well as aesthetic, considerations came into play in that consideration. Mummery LJ (at p 15) observed that

“incidental is an ordinary descriptive English word … The range of circumstances in which the word ‘incidental’ is commonly used to describe a state of affairs is sufficiently clear to enable the courts to apply it to the ascertainable objective context of the particular infringing act in question.”

Accordingly, my task is to review the use of the photograph in its context and consider whether it was incidental (which must mean incidental to some other purpose) in the ordinary sense of that word.

The programme contains many shots of newspaper pages containing photographs, headlines and text. In most cases the camera zooms in or occasionally out, or it pans across its subject matter. It may well be that very often an image of a still subject will move in order to make it more interesting – a series of static images appearing for seconds at a time in a TV programme will not be as visually interesting or stimulating as a moving image. However, I have come to the conclusion that in many if not most of the cases of movement there is a further purpose – to provide or demonstrate the context of part of the image. I certainly consider that there is a similar purpose in the treatment of the third occurrence of Beckham 12. I have described its appearance above. The camera starts by including most of the newspaper rendition of the photograph in its shot. A small part at the bottom is obscured

by some sort of shadow, to which I will return. It ends by concentrating on the headline, having zoomed in on it. The inclusion of the photograph in the newspaper was obviously deliberate – a picture of the potential victim of the kidnap plot holding her young baby. This was a programme about the newspaper treatment of celebrity stories about the Beckhams, including the kidnap story. The juxtaposition of photograph and headline (and copy) is part of that treatment. When that treatment is considered by the programme it is that combination that makes the display of the photograph something that occurs for the purpose of criticism and review. But that same factor means that the photograph cannot have been incidentally included. The producers of the programme were not interested in the headline alone. They were interested in the headline in the context of the Beckham celebrity treatment, which included the use of sympathetic photography. I am satisfied that the broad picture of the page, including the photograph, followed by the zooming in, was not merely a production technique in order to show the page in an interesting form or of producing a moving image which is more interesting than a still one; it was a deliberate way of placing the page in the context of the overall story and then focusing on the aspect then being considered (the kidnap plot). In that context the inclusion of Beckham 12 was not incidental.

I consider that this conclusion is strengthened by the shadow to which I have referred. At first sight it looks like a casual introduction, or even an accident, but in fact I think it is something else. It obscures the bottom part of the photograph, but leaves Romeo’s appearance intact, and it also obscures most of what is probably an advertisement in the box below. Its effect is to concentrate the eye on the upper three-quarters of the photograph, and on that part of the page which shows the newspaper story. There are three significant features of this shading. First, there is a similar darkening effect to the left of the newspaper page, suggesting a deliberate framing. Second, the framing effect of such shading is apparent on earlier portrayals of newspaper articles, where it is obviously used to frame a headline or photograph, or to obscure other non-Beckham material on the same page, or both. Third, those first two points indicate that the shading is deliberate, in order to focus attention. That being the case, it is significant that the shading was not applied to the whole of the photograph. If the real point was the headline, I would have expected the programme makers to have done that. But the photograph was left unshaded, and within the frame. That suggests that the photograph was significant in the eyes of the programme makers, which in turn suggests that its inclusion was not incidental.

I have reached a different conclusion in relation to Beckham 14. This is the small photograph appearing within a newspaper headline. The focus of the filmed shot in the programme is on the headline. It zooms in slightly during the 4 seconds it is shown, but that is obviously to create a little drama or visual interest. In the run up to this shot the story was introduced by Mr Morgan, and there were three separate shots of headlines appearing in the News of the World, followed by a brief clip from a BBC News broadcast of the item. Then the relevant headline and Beckham 14 appear. I am satisfied that the headline appears as an example of another sensational headline; that is why it is there. In that context the small photograph of Mrs Beckham is incidental – it is there because it happened to be there in the original. While it might have been there to lend interest to the original headline, its appearance in the programme shot was, in everyday terms, incidental. In Panini the publishers of the photographs would not have wanted to publish photographs without the relevant logos. The logos were important to the photographs. That is not true of Beckham 14. As far as I can judge, the headline was chosen as a headline, not because it also contained a photograph of Mrs Beckham. That conclusion is fortified by the fact that at least one of the reproductions of the News of World headlines is without any photographic accompaniment – it is there for the drama of the headline, and that is true of the headline accompanying the appearance of Beckham 14.

In the circumstances I find that there was no infringement in relation to the appearance of Beckham 14 because its inclusion in the programme was incidental.

Additional damages – flagrancy

I was asked to make findings in relation to additional damages within the meaning of section 97(2) of the Act. Since I have found no breach of copyright the question of damages does not arise, and strictly speaking it could be said I need not make any findings under this head. However, I heard evidence and argument on this point, and in case it should matter in the future I will express my conclusions on it briefly.

If my conclusions are wrong as to infringement, I do not think that there is any basis at all for seeking additional damages. Miss Michalos’s opening skeleton focused on the flagrancy of the alleged breaches, but her closing arguments were broader than that and focused on other factors. Dealing first with flagrancy, so far as Miss Williamson’s evidence bore on the point it contained no positive evidence pointing that way, and nothing implicit or unsaid could be taken to point that way either. There was evidence that she took advice on

fair dealing generally, which demonstrates conscientiousness, not a desire to try to evade in a manner which would make the breach flagrant. The matter was, on the evidence, considered carefully. The suggestion that she did not follow the advice of Mr Bonnington is in my view completely misplaced. Nor is there any material in the evidence of Mrs Mitchinson, or in the documents, which would support the allegation of flagrancy. This is not a case where it can be said that the breach was flagrant.

So far as other factors are concerned, I have not identified any which would give rise to a right to additional damages. Miss Michalos submitted to me that the defendants knew that they were running a risk, and it is right that if that risk eventuates then the breach should be considered to be sufficiently serious as to attract additional damages. In this context she relied on a passage from Sillitoe v McGraw-Hill Book Company (UK) Ltd at page 557, where HH Judge Mervyn Davies QC said:

“What the defendants have done here and knowing of the plaintiffs’ comments and the facts on which the complaints were based, was to take the risk of finding their legal advice wrong. If a person takes a deliberate risk as to whether what he is doing is wrong in law, I do not see that he can say later that he did not, at the time, know that what he was doing was wrong, if in the event his actions are held to be wrong.”

That passage concerned a different point, namely whether the defendant should be treated as having knowledge of an infringement for the purposes of the then importation provisions in section 5(3) of the Copyright Act 1956. That is not the same point that arises in relation to a claim for additional damages. It does not follow that knowing there was a risk automatically translates a breach into a more serious one for the purposes of additional damages. Miss Williamson strongly denied that they knew there was a serious risk in what they were doing and did, and I accept that evidence. I also find that no other relevant person thought there was a serious risk of infringement in broadcasting what was ultimately broadcast. The decision to use the material was taken as a result of an honest belief of entitlement to do so. Even if that belief was wrong, it was not so wrong, or so dishonest, or so reckless, or so calculating, or even so negligent (assuming that one or more of those factors is relevant to additional damages) as to attract a claim to additional damages. Miss Michalos also relied on the way Mr Fraser had been treated – his consent was asked for and refused, and then he was asked to appear (and did appear) in the programme. Since I have found that the initial request for use is not established this point is weakened on the facts. The other request or requests (for general display of his shots during his interview) and his subsequent participation is not such as lead to, or contribute to, a claim for additional damages. The defendants honestly thought they were entitled in law to make use of the material that they used in the manner in which they used it, and the fact that a contributor participated on a false assumption does not mean that if their belief was wrong then additional damages should follow. It does not materially increase the seriousness of the breach. I would have reached the same conclusion even if I had found for Mr Fraser in relation to the original request.

It follows that, had I been required to do so, I would have found against any claim for additional damages.

Conclusion

Accordingly I shall dismiss this claim.