A professional photographer has succeeded in a copyright breach case against Australia’s largest property data and analysis firm for its unauthorised use of marketing pics he supplied to real estate agents for property marketing campaigns.
James Hardingham, sole director of Real Estate Marketing Australia Pty Ltd (REMA) is in the business of providing pictures, graphics and floor plan images to real estate agents for use in marketing campaigns for the sale or lease of properties.
In accordance with oral instructions from an agent, Hardingham provided his photos and floor plans in an “editable digital form” and payment was made by the agencies on REMA’s invoices.
His clients used the images he supplied in their marketing campaigns for various properties and in course of those campaigns, the images were uploaded to realestate.com.au operated by Realestate.com.au Pty Ltd (REA).
To list a property on REA platform, agencies must enter into a “subscription agreement” and agree to Standards Terms and Conditions including the “grant of an irrevocable, perpetual, world‑wide, royalty free licence to publish, copy, licence to other persons, use and adapt for any purpose, any content provided to REA”.
Agencies were required to warrant that the content they uploaded to REA’s platform did not infringe the intellectual property rights of third parties.
REA in turn provides RP Data Pty Ltd (RPD) details of its property listings together with images, from its website. RPD operates its own website, www.corelogic.com.au on which it provides data it collects about all transactions affecting individual properties so its subscribers have access to such historical data and the images etc of property.
As the photos and floor plans he authored were original artistic works, copyright subsists in him under the Copyright Act.
Hardingham – who started his Sydney based business in 2009 – granted an exclusive licence of the copyright in all his works to REMA by way of a deed they entered into in April 2018.
On 28 January 2014, he sent a ‘demand letter’ to RPD alleging infringement of his copyright in reproducing his images and floor plans on its website and manipulating them by superimposing its logo.
RPD’s solicitors denied the allegation in a letter of April 2018 and the matter was left there for the time being with the photographer continuing to supply images to his clients in the same way as before.
In July 2018, Hardingham commenced proceedings against RPD that came before the Federal Court in Sydney in December 2019.
He contended that REMA supplied the images for the limited purpose of marketing the properties and such licence did not extend to the use of the images by RPD.
Justice Tom Thawley ordered a separate trial on the issue of liability confined to the photographs Hardingham had supplied to his client agencies in 20 such listings that appeared on the RPD website from January 2014.
He concluded that having been notified by RPD’s solicitors in April 2014 of the terms REA demanded from those uploading of content to its site – including its right to use them indefinitely for historical data purposes and to sub-licence the images for use by others – he & REMA had “agreed” as a matter of inference from their conduct and “course of dealings” to the REA terms.
Alternatively – he ruled – agreement to such broad usage rights “should be implied into the agreements between the applicants and the agencies in order to give business efficacy” to the arrangement.
Hardingham appealed.
The appeal judges found that the agencies and Hardingham intended the images be uploaded to REA’s website because that was – when viewed objectively – the only way that the agencies could make use of the supplied product.
They were however divided on whether such implied or inferred term allowed REA’s use of the supplied images “on its usual terms and conditions”.
Justice Greenwood took the view that REA’s standard terms were so wide that it enabled it in all practical terms to virtually “expropriate the ownership of the copyright”.
He and Justice Steven Rares concluded that the trial judge had erroneously concluded that Hardingham and REMA – in the absence of evidence that they and the agencies had knowledge of the precise scope of REA’s purported authority – “must” have consented to such broad terms in their client arrangements.
Rather, because it was by no means likely – had they turned their mind to it – the photographer and the agencies “would have agreed” to such a term, it could not as a matter of law or fact, be implied.
They found that while there was an implied or inferred right in each of the photographer’s agency clients to grant a sub-license to REA, such arrangement should be confined to what a copyright owner might reasonably and objectively have allowed. Such reasonable terms did not include a right in favour of REA to grant a further sub-license to RPD.
Thus RPD’s historical and current use of the images constitute a breach of the rights of the owner of the intellectual property in each image.
Hardingham v RP Data Pty Limited [2021] FCAFC 148 Greenwood, Rares And Jackson JJ, 18 August 2021
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