Member Article

Photographer’s legal victory over Next in use of photo

A photographer has secured a legal victory over high street fashion retailer Next for unauthorised use of one of his images

Advised by Midlands law firm FBC Manby Bowdler LLP, photographer Allan Potts, who specialises in taking pictures of freestyle motocross motorcycling (FMX) and other extreme sports, has prevented Next from continuing the illegal use of a photograph he took during the Shropshire County Show in June 2010.

Mr Potts’ image of Bolddog rider Arran Powley performing at the County Show was found on the internet by an agent of Next, who then replaced the rider’s head with that of a chimp and put it on a Next child’s t-shirt, known as ‘Blue Bike Monkey T-shirt’. The t-shirt was put on sale this year (2013) in the fashion retailer’s directory, on its website and in its 500 UK high street stores.

Charlotte Clode, an associate in FBC Manby Bowdler’s Litigation Department, forced Next to accept Mr Potts’ ownership of the photograph and to acknowledge that he had not consented to its use.

She said: “As a photographer specialising in extreme sports, and as the official photographer for the Bolddog Freestyle Motocross Display team, Allan was understandably worried that it could harm his reputation if it was thought he had sold this picture to the fashion chain. We therefore had to act fast to protect his reputation.”

Next accepted Mr Potts’ ownership of the photo, removed all stock nationally and online promptly and agreed a payment for damages and costs. With Mr Potts’ approval, as part of the legal settlement, Next also agreed that the remaining t-shirts will be donated to Oxfam for use in their charity work abroad.

Mr Potts said: “It was fortunate that my original copyrighted image was so easily recognisable by FMX followers, so that I was soon alerted to the misuse of this photograph, and felt it was vital to take action to stop its use as soon as possible.

“I am delighted that FBC Manby Bowdler resolved the matter so swiftly, thoroughly and professionally. Donating the remaining t-shirts to Oxfam means that some good has come from this episode and will mean that it remains a much more pleasant memory for me than it otherwise could have been.”

According to Miss Clode, copyright is a valuable protection for photographers and other creative people, but sometimes recourse to the law is required to enforce it.

She explained: “Copyright applies to original artistic works such as photographs and arises without any formal registration.

“In this case, Allan was able to produce a photograph which was timed and dated as evidence he owned copyright in the image. It was also accepted that the photograph was used without his consent when it became apparent that Next’s supplier had simply found the original image online. Those factors all meant the matter could be resolved promptly by agreement. For anyone working in this type of area, therefore, it is useful to know the position of copyright in law because that will confirm the steps you ought to take in order to maximise the protection available to you with as little distress and expense as possible.”

Miss Clode also believes that there are clear parallels in this case with pop singer Rihanna’s legal victoryearlier this year (2013) over clothing retailer Topshop about a t-shirt bearing her image.

“Although there is a difference on the points of law on which the cases of Mr Potts and Rihanna were based, that of breach of copyright and of passing off, they both serve as warnings to retailers and designers to ensure that they acquire the correct legal rights and clearances to use any image before committing designs to print. Otherwise it could end up costing them dear in both monetary and reputational terms.”

FBC Manby Bowdler’s 17-strong Litigation Department is ranked by Legal 500 in the top tier of law firms in the West Midlands outside Birmingham. Within the department the specialist IP, Technology & Media Law Group advises clients on licensing and protecting Intellectual Property and all aspects of Information Technology within an organisation. Services include registration and protection of trademarks, copyright, design rights and patents, as well as the licensing and use of all aspects of technology, as well as advice on the use of IT and IT contracts.

With 35 partners, FBC Manby Bowdler is one of the largest law firms in the West Midlands and the largest in Wolverhampton. The firm also has offices in Willenhall, Telford, Shrewsbury and Bridgnorth.

This was posted in Bdaily's Members' News section by FBC Manby Bowdler .