Mis-selling originality

“A recent judgement (sic) on copyright in the Court of Appeal (20 November) heralds the end of UK museums charging fees to reproduce historic artworks. In fact, it suggests museums have been mis-selling “image licences” for over a decade.” - Bendor Grosvenor

At the end of 2023, I noted a comment in the Art Newspaper by art historian/dealer and television personality Bendor Grosvenor.  The piece was in response to a decision by the Court of Appeal in THJ Systems Limited v Sheridan [2023] EWHC 927 (Ch); a case concerning originality in copyright works.  The case is not about museums/galleries and image licensing.  Mr Grosvenor’s comment was. 

I read the judgment when it was handed down.  It confirmed that the courts in England and Wales continue, at the time of writing and despite the Retained EU Law (Revocation and Reform) Act, (yes, that really is the name of the legislation and not an early 2000s garage act) to follow the jurisprudence of the European Court of Justice (“CJEU”) in this area of law.  Actually, Lord Justice Arnold has restated that this is the preferred route in more recent explorative case law relating to trade marks.   

It was, however, interesting that in Sheridan Arnold LJ, a well-respected and extremely knowledgeable intellectual property specialist concluded that the judge who heard the case at first instance had applied the incorrect test for originality and sought to clarify matters.

Testing.  Please explain. 

For copyright to ‘subsist’ in a work it needs, amongst other elements, to be ‘original’.  What the law considers to be ‘original’ is objective and does not investigate the ‘quality’ or artistic nature of the work. 

There was a time under English law, when a court would explore whether the author had applied ‘skill or labour’ in creating the work for it to be ‘original’.  This test was modified essentially as a result of the well-known 2009 EU copyright case Infopaq; an important starting point in the EU’s ongoing tussle with whether to-harmonise-or-not-to-harmonise copyright law.  (Interestingly, the EUIPO’s new Director noted his preference for an EU unified copyright title in October last year.)

Now, the English courts look at whether a work is the expression of the ‘author’s own intellectual creation’ for it to be ‘original’. 

So what?

There has been discussion as to whether post-Brexit the English courts would revert to the old standard but Sheridan seems to indicate not.  It confirms that the expression of the ‘author’s own intellectual creation’ remains the correct test.    

This is a slightly higher hurdle to jump than the earlier English test.  The relevance to museums/galleries arises (in the context of the aforementioned comment piece) because it could mean that a mere photograph of an artwork would fail to meet the threshold for originality.  It would not be protected by copyright and therefore, cannot be licensed as such. 

Thus, a photograph of an (out of copyright) artwork doesn’t have enough of the photographer’s ‘own intellectual creation’ to afford copyright protection in such a photograph.  Ouch.

To add to the complexity, it’s worth clarifying that if the original artwork being photographed is still in copyright which lasts the life of the artist plus 70 years for visual works, then we are talking about something different.  In this instance, the artwork itself is protected by copyright and we are not looking to establish copyright in the secondary photograph, per se.    

Mr Grosvenor’s observation turned on the surprise that the test had changed many years ago and that as it is more onerous than the earlier English version, museums/galleries should not charge a fee for digital image reproductions of works of art in their collections which are out of copyright (Rembrandt, Canaletto &c.). 

It seems that this conclusion relies on a presumption that museums/galleries had been charging as if the law rested on the lower standard.  The other implication from Mr Grosvenor’s comment could be the slightly more loaded allegation that they knew the law had changed but continued to charge anyway, which would be surprising. 

Naturally, most specialists could quite happily have a debate about EU/UK originality and its development, despite the Sheridan judgment.  Arnold LJ noted of the post-Infopaq CJEU jurisprudence, originality looks to whether an author was “able to express their creative abilities in the production of the work by making free and creative choices so as to stamp the work created with their personal touch”.  While this is still not about artistic quality, there is much to hang your coat on if discussing this area and still assessed on a case-by-case basis.  It is also interesting that aside from case law, the codified version of ‘originality’ in the UK sits under the 1997 amendment to the Copyright Designs and Patents Act 1988: ‘Databases’, s.3A(2).

Should museums and galleries charge for digital images of out of copyright artworks?

If you need an image of an artwork displayed in, for example, the National Gallery (“NG”) and you are fortunate to be able to walk in and take a photograph of an out-of-copyright work, you can.  You can use that photograph as you please: on your website, in your book &c.  You can also download a free low-resolution image from the NG website (enough to use on Instagram for example).  For something not on display, things are slightly trickier but not insurmountable.

(Having recently been to an excellent exhibition at Raven Row of mostly in copyright works, it’s standard practice in most galleries/museums in London for you to be able to take photographs of these too.  There is no problem so long as you don’t reproduce or distribute them for commercial purposes.)

Alternatively, you could download a high-resolution image from the NG’s website which is denoted as ‘licensing’ and requires you to pay a fee.  This is the tricky bit.  In line with the law as it currently stands, if the photographed work is not in copyright, then there is no ‘licensing’ fee due.  Mr Grosvenor’s comment is correct.

I get the impression there’s a ‘but’ coming?

Even if technically no copyright subsists, a high-res image presumably has had the benefit of a specialist photographer having taken the image with the relevant lighting and required editing time.  It’s worth noting, even if, arguably, the law currently would not consider this adequate to meet the ‘originality’ test, and it seems pertinent especially as we are now in the age of data-set AI generated ‘photographs’.  EU jurisprudence and English law, basically hinges on case law from 2009 albeit with clarifying dicta along the way.   

I made contact with one of the National Gallery’s in-house photographers earlier in the year.  As in the large auction houses, specialist photographers are still sought after as experts in shooting high quality imagery of works of art, jewellery and the like.  Some of these roles are even full-time rather than freelance.  Occasionally, that influencer lighting from Amazon just doesn’t quite cut it.     

The majority of those who click through to the download section of the museums/galleries online photo libraries are unlikely to be aware of the copyright relevance of the dual image type offering (low/high res).  There is an argument, however, that this is not disingenuous or a misrepresentation; but it could be commercial.  Mr Grosvenor alleged that after a freedom of interest request, he learned that the National Gallery Image Library is loss-making. 

Other commentators have added that instead of image licensing, the institutions will revert to contract law to gain fees for the high-res images.  It becomes clearer that what we are discussing is the freedom to access digital images of the nation’s collections.  It’s worth comparing how easy it is to access photographs of out of copyright works in other state European collections: the Louvre gives free access to low-res images, just like the NG.       

One might argue that a state institution such as the National Gallery is not supposed to be commercial, until you buy a Van Gogh tea towel in the gift shop.  You might, however, also consider that the National Gallery does not charge a hefty general admission fee, unlike the museums and galleries in most of Europe.  Contrast that with the Tate special exhibitions currently being over £20 per full paying adult.  Finally, you might think about the funding landscape for arts institutions in England and Wales over the last 10-15 years.  You might also conclude that image licensing in this context might not be the weighty legal issue it is framed by the comment piece to be.  This is before we even get to the complex topic of AI command generated ‘photography’ and the data-scraping of image libraries currently being litigated in the EU and US.    

Sheridan is an interesting case for those of us with a curiosity in the development of EU/UK intellectual property law.  Its relevance to state museums and galleries is prima facie about copyright and the ‘control’ of images but in fact offers a convenient point to start thinking about the state of funding in the UK’s cultural sector.  Why would a museum/gallery need to look to the grounds on which it can charge ‘image licensing fees’, be it under copyright or contract, if it wasn’t seeking to, deep breath, diversify its income even by exploring an area which is ‘loss-making’.  This deserves greater contemplation.

Author: Philippa Malas, 9 May 2024

Nb. I took that photograph in the V&A’s cast galleries in South Kensignton. Those casts are all reproductions of ‘originals’ located across the globe.