Lord Hoffmann started the mini-trend of dropping down a court, and now Lord Justice Patten has been at it too. The case in question (cases, actually) is (i) Alan Grisbrook v MGN Ltd, Scottish Daily Record & Sunday Mail Ltd and Syndication International Ltd; (ii) Alan Grisbrook v MGN Ltd and Syndication International Ltd  EWHC 2520 (Ch), a 16 October decision of Lord Justice Patten sitting as a Chancery Division judge.
* The real issue between the parties was whether the operation of the back issues websites amounted to an infringement of Grisbrook's copyright in the photographs contained in those issues: did MGN's licence impliedly extend to the storage of and access to Grisbrook's photos as they appeared in the back issues?
* Since such an implied licence derogated from or relaxed the copyright owner's statutory rights, it was for MGN to justify the basis for extending the licence to cover what would otherwise be separate acts of infringement.
* The compilation of a database and its use for archival purposes might be so justified, but the exploitation of Grisbrook's photos through the back issues websites seemed to be a different kind of operation, one that was not contemplated at the time the licence was granted and could not be said to have been necessary to regulate the rights of the parties at that time. MGN's operation of the back issues websites accordingly infringed Grisbrook's copyright.
* MGN was entitled to take a different view on this difficult question, and disputes of this sort should not be resolved through committal proceedings. The dangers inherent in generally worded injunctions or undertakings not to infringe a patent or copyright had long been recognised and could often lead to a further round of litigation in order to determine whether an infringement had occurred. Nor was the infringement point which Grisbrook was arguing a point that featured in the actions which led to the consent order. A party who argues in good faith that his conduct did not amount to an infringement should not ordinarily be penalised by a fine or sequestration in the event of failure merely because an applicant had chosen to use committal proceedings rather than an ordinary claim to resolve the issue.
* Although the operation of the back numbers websites did infringe Grisbrook's copyright in his photographs, those rights could be adequately protected by a declaration to that effect.The IPKat is greatly relieved at the court's finding on implied licences, since he give the same unwelcome advice to a periodical publisher that was planning to do much the same thing some 15 years ago, who responded that "it must be lawful because other publishers are doing it too". He also agrees that, where infringement is a 'grey area' in which plausible arguments can be raised by each party, contempt proceedings should not be used as a weapon. Merpel says, is it my imagination or are the courts consistently soft on infringing defendants in IP committal proceedings?