The recent Australian case of Hardingham v. RP Data involved a professional photographer, some real estate agencies and an online platform for property listings. 

The photographer, James Hardingham, is the director of Real Estate Marketing Australia (REMA). The company creates floor plans and takes photos of properties for its clients for marketing purposes. The real estate firms that make up its clientele submit these photos and floor plans to realestate.com.au. Operated by realestate.com.au Pty Ltd (REA), the website is a popular property-listing platform in Australia. Hardingham is aware of this and allows this.  

The issue in this dispute is that REA submitted REMA’s content to RP Data Pty Ltd (RP Data), operator of an online real estate analysis and information provider. 

Hardingham and REMA claimed this was copyright infringement as they did not license RP Data to reproduce their content.  

RP Data argued that agreements between REMA and its clients included an implied term wherein copyright would be assigned to the agencies if required by them. Thus, the agencies could license REA and REA could sublicense RP Data. 

RP Data also mentioned realestate.com.au’s copyright provisions under its terms and conditions. These included REA’s right to sublicense.  

Hardingham and REMA reasoned that the content they produced was licensed to the real estate firms. Such licenses were limited only to usage of the materials for marketing for sale or lease. RP Data continued to feature the content in its website even after sale or lease was completed.  

However, the Federal Court of Australia said there was no copyright infringement. The court found that the real estate agencies were licensed to pass on REMA’s content to realestate.com.au in accordance with REA’s terms and conditions, which provided REA the right to grant a sublicense.  

“We agree that on the basis of the factual situation found by the Court to exist, no copyright infringement occurred,” says David Smith, a partner at Gadens in Melbourne. “REMA and Mr. Hardingham had a good understanding of the way the photos and floor plans were being disseminated and had, in effect, agreed to it.”  

Duncan Longstaff, a principal at Shelston IP in Sydney, agrees.  

“The judge was satisfied there was no copyright infringement because the accused conduct was within the terms of an implied license. This was based on factual findings flowing from the evidence of specific circumstances in which agents used the realestate.com.au platform,” says Longstaff. “In those circumstances, the judge found the photographer should have expected the photographs would be uploaded to another platform, as generally occurred with photographs submitted for use on the realestate.com.au platform.” 

For Smith, the absence of a written agreement between REMA and the real estate firms caused the downfall of the former and its director.  

“The parties agreed that the agencies had a license over the copyright in the photos and floor plans, and that the license allowed the agencies to grant a sublicense. However, the terms of the license were not express and as a result, there was room for debate about the scope of the license, particularly what sub-licensing was permitted,” says Smith.  

According to Smith, it would have served REMA if it prepared standard terms and conditions for its services. These would have included a clear statement about who owns the IP rights over the materials and the exact scope of the agencies’ license to use these rights.  

In the first place, digitization and proliferation of online platforms can indeed cause problems for copyright owners.  

Explains Longstaff: “Often, only a small part of a website will infringe copyright, and domain hosts and internet service providers generally will not intervene to assist in any way, as a matter of policy. The international aspects of e-commerce and other websites also make copyright enforcement difficult. Frequently the operator of an infringing website will be located in another country to the copyright owner. Bringing a party located overseas into any domestic litigation is difficult and expensive, as is enforcing a judgment obtained against a foreign party who does not even contest the litigation. The relatively small revenues associated with individual e-commerce sites often make it difficult to justify the cost and complexity of copyright enforcement proceedings.” 

Because of these, the lawyers say it is imperative for copyright owners to start learning about their IP rights and appreciate how a specific industry or platform operates. 

“By continuing to transmit copyright works which are then used in a way which is well-known and generally accepted and understood , an owner of copyright may be found to have known about and by implication consented to those uses,” says Onur Saygin, a lawyer at Shelston IP in Sydney. “Whether and what license terms might be implied during litigation will depend heavily on the facts of each case, including whether there are standardised channels for a copyright owner’s work to be submitted, used and distributed to third parties. There will be many cases where the facts are materially different from those in Hardingham and a permissive copyright license will not be implied by a court.”  

For Smith, now is also the time for creative workers and organizations to start establishing clear contractual terms and conditions for their clients. 

“This is to ensure all parties share the same understanding as to how the customer may use, reproduce, sublicense and otherwise exploit the IP rights in their created works,” he says. “The creative individual or organization can then set their prices according to the scope of the license they grant.”

Espie Angelica A. de Leon.