Real issues in failing to capture a licence in writing: the risks in relying on an informal licence for real estate photography

What you need to know

• RP Data, operator of a real estate data website, was found not to have infringed copyright in photographs and floorplans created by a photographer because it used those materials under sub-licence from realestate.com.au. Realestate.com.au was permitted to use the materials by the real estate agencies who were granted an implied licence by the photographer.
• Because the photographer knew that the real estate agencies were using the photographs and floorplans to upload them onto realestate.com.au and that this platform then sub-licensed these to RP Data, the Court held that the terms of the licence between the photographer and real estate agencies permitted this conduct.

What you need to do

• If you want to impose restrictions on a licensee's use of your copyright works, make sure they are in writing and agreed with the other party. Don't assume that you and the licensee are in agreement as to how they will use your copyright works.
• If you're unhappy with the way a licensee is using your copyright works, raise this with them immediately because it may be implied that you consent to their continued use if you do not do so.

Background

James Hardingham is a professional photographer who operates Real Estate Marketing Australia Pty Ltd (REMA). REMA is engaged by real estate agencies to produce photographs and floorplans for use in marketing campaigns for the sale and lease of properties.

Mr Hardingham and REMA (the Applicants) brought proceedings against RP Data Pty Ltd (RP Data), operator of the Core Logic subscription website that provides historical data (including images) on the sale and lease of properties, for copyright infringement for using the Applicants' photographs and floorplans without a licence.

However, RP Data claimed that it used the materials under licence from realestate.com.au Pty Ltd (REA), which was permitted to publish the materials on its platform under licence from the real estate agencies who engaged the Applicants. The copyright licensing chain is set out in the diagram below.

What was the scope of the licence granted to the real estate agencies?

In the absence of a formal written agreement between the Applicants and the real estate agencies, the Court needed to determine what the terms of the licence were to establish if RP Data's use of the photographs and floorplans was permitted.

It was not in dispute that the Applicants had granted a licence (which permitted sub-licensing) to the real estate agencies. However, the Applicants argued that the licence was for marketing purposes only and ended on completion of the relevant sale or lease transaction, whereas RP Data and REA continued to use the photographs and floorplans after this time. In contrast, RP Data and REA argued that the licence was equivalent to the express licence the agencies granted to REA, which was perpetual and irrevocable.

The context of the licence

Without a written agreement the Court stated that it needed to "understand the context in which the parties dealt with each other in order to form a view as to both: (a) what the terms of the contract were, including any terms inferred from conduct… and (b) what terms might be implied into that contract".

Considering the context in which the parties dealt with each other, it was established that one of the principal purposes of real estate agencies commissioning photographs and floorplans from the Applicants was to upload them onto realestate.com.au, and it was also established that the Applicants and those agencies knew that those works were not removed from the platform on completion of the sale or lease. The Court also established that the Applicants continued to work with the agencies and provide photographs and floorplans for use on the realestate.com.au platform despite knowing from as early as 2014 that RP Data was receiving the materials under licence from REA, and that REA was doing so because it received a licence from the agencies under its online terms and conditions, which agencies must agree to in order to use the platform.

Despite the fact that there was no evidence that the Applicants or the agencies had read REA's terms and conditions, the Court found that the Applicants "must have known that the works… had been and were being uploaded in accordance with terms and conditions imposed by REA. These were freely available on the realestate.com.au website". Furthermore, the Court held that the Applicants would have known that the agencies realistically could not negotiate out of the REA terms and conditions, and equally that the Applicants would have known that they would not have been engaged by the agencies if they asked them not to use the materials on the realestate.com.au platform.

The Court's findings

The Court held that it could either:

• be inferred from the conduct of the Applicants and agencies (as set out above); or

• be implied into the agreements between the Applicants and agencies in order to give business efficacy to those agreements,

that the Applicants authorised the real estate agencies to use the photographs and floorplans on the terms required by REA in its online terms and conditions, which included the right to grant a sub-licence. As there was no evidence that RP Data dealt with the materials outside the scope of the terms of the sub-licence, it was concluded that RP Data did not infringe the copyright of the Applicants.

Authors: Hannah Rumble, Lawyer and Lisa Ritson, Partner.