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The importance of express terms
19 May 2015

As with any contractual terms, it’s far safer to put them in writing. Terms governing the use of copyrighted photos are no different - they should be incorporated as express terms into an agreement. A recent case illustrates the dangers of not doing so and relying on implied terms to define the extent of each parties’ rights and obligations.

In Orvec International Limited v Linfoots Limited (2014), Orvec took exception to its former advertising agency, Linfoots, using photos of Orvec products in its commercial arrangements with other manufacturers once its agreement with Orvec had ceased. When Orvec and Linfoot’s relationship came to an end, Linfoots began working with Intex, both a competitor and at times commercial partner of Orvec, and supplied it with the same photos it had previously produced for Orvec.

Copyright in the Orvec photos belonged to Linfoots, as per its terms & conditions and no express licences terms had been concluded. Orvec attempted to argue that there was an implied term in which it had been granted an exclusive, worldwide and perpetual licence to exploit those photos.

Orvec brought proceedings against Linfoots for, among other things, breach of contract and the implied exclusive licence in the photos. Orvec based its exclusivity argument on the fact that some of the photos had either Orvec’s and/or its airline clients’ trademarks in them. It therefore argued that if Intex could not legitimately use the photos with Orvec’s and/or its airline clients’ trademarks in its marketing material then the same principle applied and Intex could not use any other Orvec photos produced by Linfoots either.

The court rejected Orvec’s sweeping implied exclusive licence argument, although it recognised that Orvec did have an implied non-exclusive licence to use the photos, in its contract with Linfoots. The licence was only exclusive to the extent that Orvec’s trademarks appeared in the photos and in any event Orvec had other remedies available to it to prevent unauthorised use of its trademark. The use of the client airline trademarks was a separate matter between Linfoot, Intex and those airlines and, did not underpin or support any claim from Orvec.

The case highlights that English courts will not go further than necessary and re-write the parties’ intentions. From the outset, Orvec should either have negotiated an assignment of the copyright in the photos that it had commissioned Linfoots to take or drafted an express term granting it an exclusive (and perpetual) licence in the work undertaken on its behalf. As ever, hindsight is a wonderful thing.

If you would like to discuss this further or find out more about how the Commercial & Technology team can help your business please contact Sarah Williamson on 0118 952 7247 or email [email protected].

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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