Orvec v Linfoots, Intellectual Property Enterprise Court
Orvec supplied blankets and pillows to airlines. It used Linfoots, an advertising agency, to create advertising material. Linfoots took photos of Orvec’s products (which included those products of Orvec’s supplier, Intex). Under Linfoots’ terms and conditions, the copyright in the photos belonged to Linfoots. The parties discussed Linfoots supplying the images from the photos for Orvec’s internal use and to supply to Orvec’s customers. The parties then ended their business relationship. Orvec was annoyed to find that Linfoots had supplied the photos to Intex for its advertising. Orvec argued that there was an implied term in its contract with Linfoots that Orvec should have a perpetual and exclusive licence, and Linfoots had breached that implied term.
The parties agreed that there must have been an implied licence for Orvec to use the photos, but the dispute was around the extent of that licence. The Intellectual Property Enterprise Court said that when a designer created something such as a logo for a client, it must have been implied between the parties that no one else would have a legitimate reason to copy the work and the client should be able to stop others from doing so. A term implied by the reasonable person in that situation would have been for the copyright in the logo to be transferred to the client; there was actually a case to that effect in 2005.
The judge said such a strong implied term would not apply where the work was a photo, even if there was one that featured a logo. Where alternative implied terms are possible, the choice must favour the least that is necessary in the circumstances. Therefore, here, it was that there was a non-exclusive, perpetual licence to use the photos. And only if Orvec’s trade mark appeared in the photo could it be argued that the licence may be exclusive. But there may also be circumstances in which a photo containing a trade mark could be legitimately copied.
Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP, commented; “This case came to light because there needed to be an implied term as to how Orvec could use the copyright in the photo, as this had not been expressly agreed. It is always best to create certainty and have a contract that makes it clear. Where it is not clear, this case shows that courts will imply the most restricted term, and this would usually mean a non-exclusive licence, unless there were unusual reasons to mean that an exclusive licence or even an assignment would be intended.”
