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

PROCEDURAL BACKGROUND

The claim in these proceedings was issued on 16 January 2023 (prior to the launch of SD XL) and the pleadings on both sides have since been the subject of numerous amendments (Footnote: ⁵), clarification by way of Further Information, and addition in the form of Statements of Case on various discrete issues.

On 22 April 2024, Master McQuail ordered a first trial to determine liability.

Owing to the many complex procedural issues arising (themselves often a function of the novelty of the factual and legal issues in this case), it proved necessary for the court to adopt almost unprecedented levels of case management involving frequent substantial hearings taking place in the 6 months preceding trial. Many of these hearings resulted in a reported judgment and it is therefore unnecessary for me to say much about the procedural history beyond making the following points which are relevant to an understanding of this judgment and the issues that arise for determination.

On 28 July 2023, before the filing of its Defence, Stability issued an application for strike out and/or reverse summary judgment (amongst other things) in respect of the Training and Development Claim and the Secondary Infringement Claim. I dismissed the application for summary judgment ([2023] EWHC 3090 (Ch)) but I observe that, as will already be apparent, the Training and Development Claim has not survived the evidence at trial.

Although I considered one of the (two) main legal arguments now arising on the Secondary Infringement Claim in my judgment (namely the true statutory interpretation of the word “article” in section 27 CDPA), I ultimately declined to decide the point. Instead I made it clear that the point of law raised by Stability must be decided at trial further to full and comprehensive argument from both sides and further to factual findings as to the nature of the acts said to give rise to the secondary infringement. In so far as I expressed views on the authorities relevant to this point of law in the judgment, I do not consider myself bound by what were essentially preliminary views expressed in the absence of full argument on the point.

Getty Images’ Particulars of Claim asserts the copying by Stable Diffusion of millions of Copyright Works of which the First Claimant is either the copyright owner or the exclusive licensee pursuant to exclusive licence agreements set out in Annex 3A thereto. In the interests of proportionality, Getty Images chose to rely at trial upon eleven “Sample Works” (identified as Works A-K) for the purposes of establishing subsistence and ownership of copyright. Sample Works A-D are each artistic works, the copyright in which is alleged to be owned outright by the First Claimant; Sample Works E-H are artistic works (namely photographs) created by Mr Barwick using his own intellectual creativity and Sample Works I-K are films of which Mr Barwick was the principal director and producer. Getty Images alleges that the artistic copyright in Works E-K is owned by the Sixth Claimant and exclusively licensed to the First Claimant.

On 6 September 2024, Getty Images filed and served their Statement of Case on Infringement (“SOCI”). In the SOCI, Getty Images identified seventeen Copyright Works A1-A17 (“the SOCI Works”) and then went on to provide particulars of subsistence and ownership in respect of those Copyright Works, providing the identity and employment status of the author of each work, the date of the work and (where the author of the work was an exclusive licensor of the work) the exclusive licence agreement relied upon by Getty Images to establish legal entitlement on the part of the First Claimant.

For the purposes of the copyright infringement claims originally pleaded, including the Secondary Infringement Claim, the parties agreed that certain specific issues should be determined by reference to identified Copyright Works. In the recitals to an Order of 17 January 2025 (“the January 2025 Order”), it was recorded that Stability had confirmed for the purposes of these proceedings that it would not seek to challenge the case advanced by Getty Images that Sample Works A1-A17 were used in the training of v1.4, v2.0 (and all its sub-versions) and SD XL (and all its sub-versions). In respect of the Secondary Infringement Claim, the January 2025 Order provided that the issues of subsistence and ownership of copyright “shall be decided on the basis of SOCI Works A1-A17 and Sample Works A-K”. I shall return to consider the outstanding issues of entitlement arising in respect of these works (the so-called “Ownership Issues”) when I address the Secondary Infringement Claim.

As I recorded in a judgment handed down on 14 January 2025 ([2025] EWHC 38 (Ch)), it is Getty Images’ case that there are likely to be in excess of 50,000 photographers and Content contributors who are owners of the relevant copyright subsisting in Content that has been licensed on an exclusive basis to the First Claimant over several decades. By reason of these exclusive licences, each of these copyright owners is alleged to have a concurrent right of action with the First Claimant under sections 101 and 102 CDPA to restrain Stability’s unlawful acts of copyright infringement and to seek relief in respect of such acts.

Against that background, the allegations of copyright infringement were originally brought by the Sixth Claimant in a representative capacity for all copyright owners who had granted Getty Images an exclusive licence in relation to the Copyright Works in issue in the proceedings. However, following a successful challenge by Stability to this representative claim ([2025] EWHC 38 (Ch)), Getty Images was instead permitted to proceed under CPR 19.3(1) and s.102(1) CDPA without joining any of the “Exclusive Licensors” (a term defined in the recitals to the January 2025 Order as meaning, in summary, any copyright owner jointly entitled to the remedies claimed by the First or Second Claimant in these proceedings as a result of being a party to any of the exclusive licence agreements set out in Schedule 1 to that Order). The January 2025 Order provided that this liability trial would “determine whether the Schedule 1 Agreements are exclusive licences within the meaning of s.92 CDPA (“the Licensing Issue”) by reference to a sample…”.

By a further Order of 27 February 2025 (“the February 2025 Order”), the Court gave various sampling directions for trial, including that:

The numbering of the Sample Licences set out in Schedule 1 to the February 2025 Order corresponds to numbered licence agreements set out in Annex 3A to the Particulars of Claim, which lists all of the licence agreements which are in issue in these proceedings and on which Getty Images rely. Those agreements also capture the relevant licence agreements for each of the exclusively licensed SOCI Works (i.e. A14-A16). For the purposes of this claim, Getty Images only relies upon licence agreements which contain a “right to control claims” clause.

The Licensing Issue, which requires consideration of New York Law in connection with the true interpretation of the Sample Licences, falls to be considered in the context of the Secondary Infringement Claim only.

On 23 December 2024, the parties exchanged their respective Notices of Experiments (“NoE”) and on 24 January 2025 they each served a Reply. On 5 March 2025, Stability served a Notice of Reply Experiments, to which Getty Images replied on 18 March 2025.

By the February 2025 Order, the Court permitted the parties to rely upon their experiments as set out in their respective NoEs (including Stability’s Notice of Reply Experiments) for the purposes of establishing by experimental proof the facts set out therein. In this judgment I shall refer to the section of Getty Images’ NoE that addresses the generation of images which may contain watermarks as “the Getty Watermark Experiments”. I shall refer to Stability’s NoE and its Notice of Reply Experiments as “the Stability Watermark Experiments”.

The eighth recital to an Order of 1 November 2023 records Getty Images’ confirmation that they do not rely upon synthetic outputs which are generated in response to users entering “prompts that contain signs corresponding to the Trade Marks of the Claimants” as acts of trade mark infringement or passing off.

The Trade Mark Infringement Claim is supported by two Annexes attached to the Particulars of Claim, namely Annex 8H and Annex 8I. Annex 8H contains examples of synthetic images bearing the Getty Images and/or ISTOCK watermark which were generated by the Getty Watermark Experiments. Annex 8I contains synthetic images bearing the Getty Images and/or ISTOCK watermark which were generated “in the wild” by third parties.

At the PTR on 22 May 2025 Getty Images were ordered to select four images, two from Annex 8H and two from Annex 8I (at least one for Getty Images and at least one for ISTOCK). These examples were to be used “for the purposes of the parties’ submissions as to the comparison between mark and sign for trade mark infringement”. This was not otherwise to restrict the scope of the parties’ submissions on the Trade Mark Infringement Claim. Stability declined the opportunity to be involved in the selection process of the images to be used for the purposes of the comparison.

By reason of an Order dated 9 July 2024 (amended by a Consent Order dated 7 February 2025), the issue of whether Stable Diffusion generates synthetic images that bear the Marks in the form of watermarks is to proceed on the basis of the following models and access mechanisms:

This was designed to obviate the need for Getty Images to conduct experiments and/or produce images for every sub-version of the Model using every access mechanism. The Getty Watermark Experiments used these access mechanisms for experiments on versions 1.2, 1.3, 1.4 and 2.1. For experiments on v1.6, Getty Images accessed the code in the United States via an API available at https://platform.stability.ai/ .

On 10 October 2023 Master McQuail made a Confidentiality Order establishing a confidentiality regime at the request of the parties for the purposes of protecting confidential information disclosed in these proceedings. The existence of this regime meant that (in some cases) evidence on which the parties relied at trial was designated Confidential or Highly Confidential and that it was necessary to sit in private for short periods during the cross examination of witnesses in order to protect this confidentiality. I made it clear to the parties, however, that as much of the trial as possible must be in public in order to secure the proper administration of justice.

During the course of the trial, it became clear that the net of confidentiality had in some instances been cast too wide and I required both parties to review their evidence and disclosure with a view to de-designating material that should not have been caught in the original net. Shortly after close of trial the parties provided me with a further bundle of witness statements and exhibits with updated confidentiality markings to reflect de-designations.

Upon this judgment being provided to the parties in draft, they considered whether continuing confidentiality in material that is referred to in the judgment is necessary, having regard to the provisions of CPR 39.2. With two very minor redactions requested by Stability (which I am satisfied are necessary in respect of information which is in the nature of a technical trade secret) this judgment is being published in full, consistent with the principles of open justice.

On the first day of trial, Stability sought clarification as to whether an allegation in the Particulars of Claim to the effect that Stable Diffusion “can be used to create images that contain pornography, violent imagery and propaganda” and that “[a]ny association with such content will tarnish the reputation of the Trade Marks” could properly be read as including reference to Child Sexual Abuse Materials (“CSAM”), something on which Getty Images had sought to rely in their Opening Skeleton. I determined that the existing pleading did not include reference to CSAM, a determination with which the Court of Appeal agreed ([2025] EWCA 749). On the third day of trial, Getty Images made an application on short notice to amend the Particulars of Claim so as expressly to include reference to CSAM. No attempt was made to appeal my decision to dismiss that application for reasons set out in my ex tempore judgment ([2025] EWHC 1450 (Ch)).

Going into the trial, the court was provided with a List of Issues running to 57 different issues. By the close of trial, the List of Issues had been very substantially narrowed, albeit that it remained a somewhat cumbersome document which (as the parties accepted) did not really assist in elucidating the real points in issue in the case. With this in mind, and at my suggestion, the parties provided me with Decision Trees for both the Trade Mark Infringement Claim and the Secondary Infringement Claim designed to provide a route map for the court through the key issues. These have been most helpful and I am grateful to the parties for their cooperation in producing these documents. Nevertheless, I have kept an eye on the List of Issues with the aim of ensuring that all outstanding issues between the parties have been addressed in this judgment, where appropriate.

Getty Images was represented at trial by Ms Lindsay Lane KC, Ms Jessie Bowhill and Mr Joshua Marshall, instructed by Fieldfisher LLP (“Fieldfisher”). Stability was represented by Mr Hugo Cuddigan KC, Mr Edward Cronan and Mr Henry Edwards, instructed by Bird & Bird LLP (“Bird & Bird”). I am extremely grateful to the teams on both sides for their helpful submissions and their cooperation throughout the trial in finding ways to assist the court in dealing with so many complex issues.