hardingham v rp data case summary
overview

Mr Hardingham, is a professional photographer and his company Real Estate Marketing Australia Pty Ltd (“REMA”), was commissioned to take photographs of properties and draw up floor plans by real estate agents.   These agents then uploaded them onto the cross-respondent’s, realestate.com.au Pty Ltd (“REA”), website realestate.com.au.  These real estate agents in making their accounts on this website were bound by clauses that:

1. granted a worldwide royalty free license to copy any material that was uploaded;
2. that any uploaded material does not infringe intellectual property rights of third parties
3. indemnifies REA for intellectual property infringement

REA then provided copies of the photographs to RP Data Pty Ltd (operates <www.corelogic.com.au>) (“RP Data”) via an agreement.

REMA became aware of the use of the photos on RP Data’s website and wrote to RP Data.  After receiving RP Data’s letter back denying any infringement, REMA took no further action until nearly 4 years later when it wrote to RP Data again, received a further letter and then started proceedings.

decision

An implied sublicense was held to exist and there was no copyright infringement due to:

1. The realestate.com.au website being heavily used by essentially all real estate agents, and REMA knowing of this use;
2. REMA didn’t make any attempt to impose any conditions or act to prevent its customers (real estate agents) from sublicensing to REA (i.e. preventing use of the pictures on the realestate.com.au website);
3. In the absence of an express action, it was commercially unrealistic to imply that such a limitation existed (largely due to the practical reality that if the customers couldn’t use the realestate.com.au website they probably wouldn’t have used REMA’s services;
4. The burden being is on the copyright owner to prove there wasn’t an express or implied license.  This stems from the fact that the copyright owner bears the burden to prove any infringement has occurred.

key takeaways

• Equitable rights can be created against copyright owners out of contractual terms express and/or implied which consider all the facts and circumstances in the case.
• In implying terms for business efficacy the court must only imply the minimum terms necessary, as such a license is preferred over a full assignment of the copyright. (Copyright Agency Ltd v NSW (2008) 233 CLR 279 at [92]; Acohs Pty Ltd v Ucorp Pty Ltd (2012) 201 FCR 173 .at [145]).

Failure for a copyright owner to take action to enforce their rights can mean these rights are eroded by a license or even a full assignment being implied by the courts.