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Trademark Lawyer Sydney – Full Federal Court Appeal – Copyright in real estate photographs and floor plans

Hardingham v RP Data Pty Limited [2021] FCAFC 148 (18 August 2021)

Successful appeal on the issue of copyright infringement.

Background

Hardingham initially made certain demands in April 2014, but did not commence proceedings until July 2018.

Hardingham was a professional photographer and the sole director of Real Estate Marketing Australia Pty Ltd which had been commissioned by various real estate agencies to produce and supply photographs and floors plans (in editable digital form) for use in the sale or lease of properties which were published on the websites of those agencies and on real estate marketing platforms including the realestate.com.au (REA) platform.

The terms of listing on the REA platform included a provision under which the real estate agencies granted an irrevocable, perpetual, world-wide, royalty free licence to REA to publish, copy, licence to other persons, use and adapt for any purpose related to its business any content provided to it.

RP Data obtained various photographs and floor plans produced by Hardingham and reproduced them on its Corelogic website. They were sourced from the REA platform under a licence arrangement.

Hardingham was aware his photographs would be published on the REA platform, but contended that only a limited implied licence was granted for the purpose of marketing properties for sale or lease and this did not extend to ongoing use of the images once the sale or lease of the applicable premises was completed. Use of the photographs by RP Data was not for this limited purpose and was not authorised.

Generally, the author is the owner of copyright works, but this is subject to any agreement between the parties and courts are prepared to imply a condition into commissioning arrangements. The question is what the client expressly or impliedly agreed to pay for; the client may have agreed to pay for copyright in the commissioned work or for some form of licence or for no interest relating to the copyright. In the case of an express or implied licence, the copyright owner bears the onus of establishing the absence of such a licence.

Primary judge

Thawley J concluded that Hardingham “authorised, consented to or permitted (that is licensed) the agencies to sub-licence the copyright works to REA on terms which permitted the agencies to grant the licence contained in REA’s usual terms and conditions, which included authorising REA to grant a sub-licence. REA granted a sub-licence to RP Data which was not contended to go relevantly beyond what was permitted by the sub-licence granted to REA by the agencies. Nor was it submitted that RP Data acted beyond the scope of the sub-licence granted by REA.”

It followed that s15 of the Copyright Act was engaged. The actions of RP Data are “deemed to have been done with the licence of the owner of … copyright” because RP Data’s acts were authorised by the licence granted by the agencies to REA, being a licence which bound the owner of the copyright.

It is also worth noting that his Honour found that the real estate agencies were not the equitable owners of copyright in the floor plans and photographs. The respondent was not able to identify any interest or right on the part of the agencies which would be insufficiently recognised by a licence as opposed to an assignment of copyright.

Appeal

Greenwood and Rares JJ upheld the appeal, with Jackson J dissenting.

Greenwood J considered there was an oral informal agreement between the appellants and the real estate agencies which expressly conferred permission or consent to use the relevant copyright in the artistic works for the purposes of the marketing campaign. This was in the nature of a licence and the issue for consideration was the scope of this licence, namely its content and terms.

RP Data contended that it had a sub-licence (derived from the arrangements between the appellants and the real estate agencies which permitted the agencies to sub-licence the works to REA which, in turn, granted a sub-licence to RP Data) to reproduce and communicate the relevant artistic works. Since Hardingham’s evidence that no such licence existed was not challenged, RP Data carried the onus of establishing an evidential foundation for the contended licence. RP Data needed to establish a basis upon which the contended terms formed part of the oral agreement between the appellants and the real estate agencies as either an inferred or implied term.

His Honour noted there is some degree of overlap between the principles governing inferred and implied terms, but there are important differences. The most notable is that in considering whether a term is to be inferred, the enquiry is: “What, if any, are the terms which can properly be inferred from all the circumstances as having been included in the contract as a matter of actual intention of the parties?” In the case of implied terms, the Court seeks to identify a term as a matter of presumed or imputed intention or the expression of the “latent unexpressed intentions of the parties”. 

Greenwood J concluded: An inferential finding that the appellants “must have known” that REA prescribed from time to time terms and conditions upon which subscribers would be entitled to upload works to its platform is not a sufficient state of knowledge to establish an actual inferential intention to contract with the agencies on terms authorising any and all usual terms and conditions at any time howsoever formulated by REA and subject to unilateral change at any time by REA.His Honour was not satisfied that a term reflecting the elements of the REA Terms and Conditions can be said to fall within an inferred or implied term of the contract defining the scope of the actual authority conferred on the agencies so as to authorise the grant of a licence to RP Data to exercise any and all of the rights REA purported to have acquired from the agencies. 

Rares J agreed with Greenwood J and provided some additional comments.

Jackson J provided a dissenting judgement and would have dismissed the appeal.

His Honour noted that where there is no formal agreement, the actual terms of the contract must be inferred before any question of implication can arise:  That is because it is necessary to arrive at some conclusion as to the actual intention of the parties before considering any presumed or imputed intention.  Actual intention refers to the parties’ intention, determined objectively, and not necessarily to their subjective states of mind.

Jackson J considered the appellants’ case was based on a misconception as to the conclusions of the primary judge. The appellants proceeded on the basis that the primary judge found the existence of an inferred or implied term in the same terms as the Disputed Term (being a particular term under which subscribers granted to REA a licence to use and reproduce ‘Contributions’ and which was different to the REA Licence term; although the differences did not affect the overall result). That is, that he found that the words of the Disputed Term, mutatis mutandis, comprise an inferred or implied term of the agreement between the appellants and the agencies.  However, that is not what the primary judge found.

The primary judge found that the appellants and the agencies conducted themselves on the basis that the agencies had the right to upload the artistic works to realestate.com.au in accordance with terms and conditions between REA and the agencies. The only finding the primary judge made as to what the agencies (and the appellants) knew about the contents of those terms and conditions was that they were terms which they either knew or must have assumed contemplated that REA was permitted to make the artistic works available after marketing campaigns had ended and after completion of relevant sale and lease transactions and which permitted the works to be provided by REA to RP Data. The primary judge did not find that a licence in terms equivalent to the Disputed Term or the REA Licence was inferred or implied. Rather, the description of the content of the inferred or implied term did not depend on the agencies having actual knowledge of REA’s standard conditions. Once that is appreciated, the challenges the appellants make to the primary judge’s inferences from his findings of fact fall away. They were all made on the basis that the primary judge found or implicitly assumed that the agencies knew the wording of REA’s standard conditions, but he did not.

It necessarily followed from the primary judge’s findings that, if the agreements between the appellants and the agencies had not authorised the agencies to provide the images to REA on its standard conditions, then the agencies would not have been able to use the images for one of the principal purposes for which they were provided, namely putting them on REA’s website and app platform. That is sufficient to infer that, objectively, the appellants and the agencies intended that the agencies could upload the images in accordance with REA’s standard conditions.

Jackson J would also have found that the relevant licence should have been implied. If that term is not implied, then the oral agreements would be one to supply artistic works which, viewed objectively, the recipient could not use for one of the main purposes of the supply. The agencies had to provide the works to REA in accordance with REA’s standard conditions, so it follows that to be commercially effective, the agreements must have authorised them to do that.

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