IL-2023-000007 - [2025] EWHC 2863 (Ch)

COPYRIGHT SUBSISTENCE AND OWNERSHIP

Notwithstanding that my decision that Stable Diffusion is not an infringing copy for the purposes of the CDPA means that the claim of secondary infringement falls to be dismissed, I must nevertheless address the outstanding issues which might ultimately prove important if I am wrong in my interpretation of the statute. First, I must consider the limited Ownership Issues that remain. Issues of subsistence and ownership for the purposes of the Secondary Infringement Claim are to be decided on the basis of a sample, namely the SOCI Works and Sample Works A-K.

By the end of trial:

Although this was sufficient for the purposes of Getty Images’ Secondary Infringement Claim, Ms Bowhill invited me nevertheless to make findings in relation to the limited number of remaining works that remained in issue between the parties, essentially to facilitate submissions that Getty Images may wish to make in relation to relief in due course. Although Stability rejects any suggestion that the SOCI Works and the Sample Works A-K form a genuine “sample” or that there is any basis in the directions of the Court or the statements of case for any extrapolation to be made from the works in issue, I did not understand it to object to my making findings on the remaining works. As they have been fully argued, it makes good sense for the court to determine the factual position in relation to each.

The sample works in respect of which title remains in issue are SOCI Works A3, A4 and A9-11. Getty Images allege that they own the copyright in each of these works.

The relevant law was uncontroversial and I gratefully adopt a summary of the law used by Getty Images in its opening skeleton argument.

Section 1(1)(a) of the CDPA provides, so far as material, as follows:

“(1)

Copyright is a property right which subsists in accordance with this Part in the following descriptions of work—

(a)

original literary, dramatic, musical or artistic works…

(b)

sound recordings, films or broadcasts…”

Artistic works are defined in section 4(1)(a) of the CDPA as follows:

“(1)

In this Part “artistic work” means—

(a)

a graphic work, photograph, sculpture or collage, irrespective of artistic quality,

(b)

a work of architecture being a building or a model for a building, or

(c)

a work of artistic craftsmanship.”

Films are defined in section 5B(1) as “a recording on any medium from which a moving image may by any means be produced”.

Authorship is dealt with in section 9 of the CDPA, which provides in sub section (1) that “author” in relation to a work means “the person who creates it”.

In the context of photographs, there is generally no difficulty in identifying the author. On the facts of the present case there is no dispute that it will be the “photographer”.

Section 11 of the CDPA provides for first ownership of copyright as follows:

“(2)

The author of a work is the first owner of any copyright in it, subject to the following provisions.

(3)

Where a literary, dramatic, musical or artistic work or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.”

The terms “employee”, “employer” and “employment” are defined in s 178 of the CDPA as referring to “employment under a contract of service or of apprenticeship”.

The concepts of an employee and a contract of service have the same meanings in the CDPA as they do elsewhere: Ultraframe (UK) Ltd v Fielding [2003] EWCA Civ 1805, [2004] ECDR 34 at [19].

The three conditions necessary for a contract of service or contract of employment to exist were confirmed by the Supreme Court in Autoclenz Ltd v Belcher [2011] UKSC 41, [2011] ICR 1157 at [18]-[19] (Footnote: ¹¹) (citing Ready Mixed Concrete (South East) Ltd v Minister of Pensions and National Insurance [1968] 2 QB 497):

“18 …A contract of service exists if these three conditions are fulfilled. (i) The servant agrees that, in consideration of a wage or other remuneration, he will provide his own work and skill in the performance of some service for his master. (ii) He agrees, expressly or impliedly, that in the performance of that service he will be subject to the other’s control in a sufficient degree to make that other master. (iii) The other provisions of the contract are consistent with its being a contract of service . . . Freedom to do a job either by one’s own hands or by another’s is inconsistent with a contract of service, though a limited or occasional power of delegation may not be…

19 Three further propositions are not I think contentious: (i) …There must . . . be an irreducible minimum of obligation on each side to create a contract of service.   (ii) If a genuine right of substitution exists, this negates an obligation to perform work personally and is inconsistent with employee status… (iii) If a contractual right, as for example a right to substitute, exists, it does not matter that it is not used. It does not follow from the fact that a term is not enforced that such a term is not part of the agreement…”

Finally, where a copyright work is created by a director of a company who is not employed under a contract of service, it may result in the director holding the copyright work on trust for the company such that the copyright must be assigned to the company if the director is called upon to do so: see Copinger at [4-214]. As cited by Mr David Stone in Mei Fields Designs Ltd v Saffron Cards and Gifts Ltd [2018] EWHC 1332 (IPEC), [2018] FSR 33 at [65] (referring to the judgment of Richard Arnold QC (as he then was) in Vitof Ltd v Altoft [2006] EWHC 1678 (Ch) at [144]):

“There is, however, no rule that works created by a director for his company are always held on trust: it will depend on what, if anything has been agreed. In particular, it is always open to the shareholders of a company to agree that a director should retain property he has created or to relieve him of any liability for any breach of duty, provided that to do so is not ultra vires the company or a fraud on its creditors.”

I now turn to deal with each of the disputed works in turn.

These works (both images of storm clouds gathering at sunset at the Gabba cricket ground), referred to earlier as the Gabba Images, were created by Mr Kolbe on 7 November 2015. Getty Images contend that, at the time the Gabba Images were taken, Mr Kolbe was an employee of Getty Images Sales Australia Pty Ltd (“Getty Sales Australia”), which was therefore the first copyright owner. They say that copyright was then assigned to the Second Claimant pursuant to an Imagery Development and Marketing Services Agreement (“the IDMSA”) dated January 2016 (in respect of which there was a Confirmatory Assignment between Getty Sales Australia and the Second Claimant on 17 September 2024) and that by a Merger Agreement dated 24 June 2016 (“the Merger Agreement”) copyright in the Gabba Images was assigned by the Second Claimant to the First Claimant.

I need not go into the detail of these transactions because the only issue between the parties is whether Mr Kolbe (who was not called to give evidence) was in fact employed by Getty Sales Australia at the time the Gabba Images were created. Stability contends that the documents show that he was not, and I agree.

The only available contract of employment (dated 17 June 2002) is between Mr Kolbe and a company called Getty Images Pty Limited (“GIPL”). The contract confirms that from November 1998, Mr Kolbe was employed as a picture editor for the company working from its offices. It also confirms that any intellectual property created by Mr Kolbe in the course of his employment “is assigned to [GIPL]”. Mr Kolbe signed this contract on 5 August 2002.

The evidence confirms that GIPL and Getty Sales Australia have different company numbers and different parent companies. Getty Sales Australia was not incorporated until 7 June 2006, eight years after the commencement of Mr Kolbe’s employment with GIPL. There is no contract or other contemporaneous documentation evidencing Mr Kolbe’s employment, at any time, by Getty Sales Australia.

Despite the absence of any contract between Mr Kolbe and Getty Sales Australia, Ms Cameron gave evidence in her statement that in December 2024 a Human Resources Coordinator at Getty Images had accessed a repository called Workday, i.e. a human resources information system. She said that he had confirmed that Workday recorded that Mr Kolbe had been hired on 2 November 1998, that his employer was Getty Sales Australia and that his “Termination Date” was 31 May 2024. This same information was set out in an “Employment Confirmation” letter by Briar Hawkins of Getty Sales Australia: “This letter confirms the employment of Mark Kolbe…at Getty Images Sales Australia Pty Ltd, between 2 November 1998 and 31 May 2024…”.

The difficulty with this evidence is that the Workday records suggest, and the Employment Confirmation Letter says in terms, that Mr Kolbe was employed continuously from November 1998 to May 2024 by Getty Sales Australia. This cannot possibly be the case owing to the date of incorporation of that company. Ms Cameron explained in her oral evidence that Getty Sales Australia was Mr Kolbe’s employer on the Termination Date and that “it is possible that there were entities which changed over time”.

To my mind this evidence does not begin to establish that Getty Sales Australia was, on balance, Mr Kolbe’s employer when the Gabba Images were taken. At best the information in the Employment Confirmation letter and the Workday records is incomplete; at worst, it is wrong. Ms Cameron’s evidence goes no further than possibilities.

Ms Bowhill drew my attention to the IDMSA of January 2016 which provides in recital E that Getty Sales Australia “has the operational structure, facilities, expertise and experience to perform…development and marketing activities” on behalf of the Second Claimant. Getty Images assert that “[i]t follows that, as at January 2016 Getty Sales Australia was the entity operating the business of developing images in Australia which must have included employing the relevant photographers who create those images” (emphasis added). They point out that Recital E to the IDMSA terminates an earlier IDMSA dated 1 August 2006 between the same entities and say that it follows from this that as at August 2006 Getty Sales Australia was operating the business of developing and marketing images in Australia “including employing the photographers who created those images”.

To my mind, however, these submissions are a step too far. There are no documents to support this theory and in my judgment there is no proper basis on which I could find that Mr Kolbe was, on balance, employed by Getty Sales Australia on the date he took the Gabba Images. The only contemporaneous evidence of his employment by a company in the Getty Images Group is to be found in the contract of employment dated June 2002. There is no evidence to establish if and when Mr Kolbe ever took up employment with a different entity and no evidence of any assignment by GIPL to one of the Claimants in these proceedings.

Accordingly I find that Getty Images are unable to make out title to the copyright in the Gabba Images, i.e. SOCI Works A3 and A4.

This work (an image of a CTM interview between Glen Campbell and Kim Woollen) was created by Mr Rick Diamond (who has not been called to give evidence) on 19 September 2011. Getty Images contend that, at the time, Mr Diamond was employed by the First Claimant and was based in Los Angeles. Stability challenges this contention having regard to the available documents.

The only document in evidence concerning Mr Diamond is a Confidentiality, Non-Disclosure and Assignment of Inventions Agreement (“the NDA”) dated 2 July 2007. The counterparty to this agreement, which is expressly said to be an employment “at-will” and not a contract of employment, is Getty Images, Inc, a Delaware Corporation. The available evidence indicates that Getty Images, Inc is the parent company of both the First and Second Claimant.

The Workday records referred to in Ms Cameron’s statement apparently record that Mr Diamond was hired on 26 April 2007 by the First Claimant and that his Termination Date was 3 January 2018, but there is no contemporaneous contract of employment with the First Claimant and Ms Cameron was not aware of any other employment relationship. It is not clear how or why Mr Diamond could have entered into the NDA in July 2007 if, at the same time, he was already an employee of the First Claimant as Ms Cameron’s evidence suggests, and no explanation has been provided by Getty Images.

However, screenshots from the Getty Images website record that Mr Diamond is a “Staff” creator of Work A9 and Ms Cameron explained in her evidence that Mr Diamond was associated with the Los Angeles office and that:

“I have knowledge in my work at Getty Images that photographers based in that office in Los Angeles were employed by [the First Claimant]. That is who sent them their pay cheque. I have knowledge of that from my work at Getty Images over many years”.

While the documentary evidence is inconclusive and while the circumstances surrounding the NDA are puzzling, I accept Ms Cameron’s oral evidence and I find in light of that evidence that, on balance, Mr Diamond was an employee of the First Claimant when Work A9 was produced. I did not understand Stability to raise any other argument by way of impediment to this conclusion.

Accordingly I find that Getty Images have established title to the copyright in SOCI Work A9.

Works A10 (an image of Eric Dane) and A11 (an image of Christopher Nolan) were created by Mr Rentz on 21 May 2012 and 13 May 2018 respectively. At the relevant time, Getty Images allege that Mr Rentz was an employee of Getty Images Devco Deutschland GmbH (“Getty Devco Deutschland”), which was accordingly the first owner of the copyright in works A10 and A11. This copyright is alleged to have been assigned to the Second Claimant pursuant to the IDMSA dated January 2016 (and also pursuant to a Confirmatory Assignment dated 18 September 2024). Pursuant to the Merger Agreement, Getty Images contend that copyright was assigned from the Second Claimant to the First Claimant on 24 June 2016.

Once again I need not look at each of these transactions in detail, the issue between the parties appears to come down to the interpretation of the terms on which Mr Rentz assigned copyright to his employer.

Mr Rentz’s contract of employment dated 13 March 2005 is with a company called Getty Images Deutschland GmbH (“Getty Deutschland”) but a confirmation letter dated 29 June 2006 (i.e. long before the A10 and A11 images were taken) confirms the transfer of his employment to Getty Devco Deutschland. In his statement, Mr Rentz explains, and I accept, that he was given notice of this transfer on 25 May 2006 and that since 1 August 2006 his employer has been the First Claimant.

In its translated form, his contract provides at clause 9(1) that:

“Mr Rentz will put all his energy at the service of the company and will work exclusively for the Getty Images Group. The Company has the sole right to exploit, or have exploited, all work results (images) from the activity without any material, temporal or spatial restrictions”.

Stability contends that this is not an assignment of copyright but a licence. It submits that any other position would be inconsistent with the reference to “without any material, temporal or spatial restrictions” – if his employer was the owner of this copyright by assignment then “it would go without saying that its rights were “without any material, temporal or spatial restrictions””. Stability points out that a “sole licence” is a widely recognised type of intellectual property licence (see Lufthansa Technik AG v Astronics Advanced Electronic Systems [2025] EWHC 375 (Pat) at [636]-[637]) and that its case is supported by JHP Ltd v BBC Worldwide Ltd [2008] EWHC 757 (Ch), [2008] FSR 29 (“JHP Ltd”) in which a contract granting the “sole exclusive right” to publish a book was found to be an exclusive licence and not an assignment.

However, I agree with Getty Images that this is unsustainable. The employment contract does not need to assign any copyright to the entity employing Mr Rentz because as an employee any work created in the course of his employment vests in his employer in any event as a matter of law subject to any agreement to the contrary (see section 11 CDPA). That is the position under English law and Stability has not pleaded any principles of German law on which it seeks to rely to the contrary. Absent evidence of German law it is presumed to be the same as English law (see Brownlie v FS Cairo (Nile Plaza) LLC [2021] UKSC 45; [2022] AC 995 per Leggatt JSC at [115] and [143]-[149]). Neither of the authorities relied upon by Stability take matters any further. JHP Ltd was not in any event concerned with an employment relationship.

Further, on its true interpretation in context, I agree with Getty Images that clause 9(1) is neither the grant of a licence nor an assignment but is merely confirmation that Mr Rentz’s employer has the sole right to exploit all works arising out of his employment. It is not “an agreement to the contrary” for the purposes of section 11 CDPA. This is supported by the provisions of clause 11(1), which make clear that Mr Rentz does not own any images he creates, just as he is not licensing them to his employer:

“Upon termination of the employment relationship, Mr Rentz undertakes, for whatever reason, to hand over to the Company all business documents and documents in his possession as well as photographs (including transcripts and copies) and to confirm to the Company in writing that he has fully complied with this obligation. There is no right to retention of these documents”.

The only basis on which Mr Rentz could be required to hand over all of his work product upon termination is because it is owned by his employer. Mr Rentz himself appeared to me to confirm as much during his evidence (which I accept) when he confirmed that he had effectively “signed over” his rights to his employer. I reject Stability’s submissions in closing to the effect that clause 9(1) does no more than grant a perpetual licence.

I find that Getty Images has established its title to the copyright in SOCI Work A10 and A11.