The High Court has rejected a proposed representative action brought by Thomas M. Barwick, Inc (Barwick), on behalf of c.50,000 photographers who have exclusively licensed their copyright works to Getty Images (Getty). This is part of Getty’s claim that Stability AI Ltd (Stability) infringed copyright by scraping images in which the copyright is owned or exclusively licensed by Getty and using them to train its generative AI model, Stable Diffusion.
This is the latest in a string of unsuccessful attempts by claimants, following the Supreme Court’s decision in Google LLC v Lloyd [2021] UKSC 50, to use the representative action procedure in CPR 19.8 to bring mass claims against companies in England & Wales in the absence of a class action regime outside of the competition space (eg in Prismall v Google UK Ltd in December 2024 and Wirral Council v Indivior PLC & Reckitt Benckiser Group PLC in January 2025. Companies facing such claims will be reassured by the Court’s rejection of this latest attempt, where the Court reiterated the need for clarity as to the scope of the class and the approach to trying the claims. However, the Court left the door open to a future application in this case in relation to exclusive copyright licences.
Who can bring a representative action?
CPR 19.8 provides that, where more than one person has ‘the same interest’ in a claim, it may be pursued by one or more persons with that same interest, and the judgment will bind all parties with that interest.
Why did Barwick fail?
The Court identified two issues with the proposed class definition:
- First, defining the class as ‘owners of the copyright subsisting in artistic works and film works that have been licensed on an exclusive basis to [Getty]… the copyright in which has been infringed by the Defendant’ meant membership could only be determined at trial, which is not permissible. If the claim succeeded, each person would still need to prove whether their copyright had been infringed, and if it failed, it would not be clear who was barred from re-litigating the issue.
- Second, to identify those whose works were actually ‘used to train Stable Diffusion’ would be ‘wholly disproportionate and practically impossible without significant resources’ – the parties had not made any proposals as to how this could be managed.
Interestingly, the Court accepted that defining the class by reference to particular licensing agreements would have been permissible. However, as this was only raised at the hearing, the Court considered it was not fair or consistent with the overriding objective to permit the representative action using this definition.
The Court also commented that it would not use its discretion to permit the representative action to proceed, even if it could do so, including because it was ‘essentially in the dark’ as to how the matter would be addressed at trial, and it was concerned a representative action may not remove the need for individual assessment of liability or quantum.
A new route to representative actions for copyright owners?
Barwick also asked the Court to exercise its discretion and make an order allowing the Claimants to pursue the claims under the exclusive licences without joining the copyright owners to the proceedings (effectively permitting a representative action) under:
- CPR 19.3(1), which states that ‘all persons jointly entitled to the remedy claimed by a claimant must be parties unless the court orders otherwise’ (emphasis added); and
- S102(1) Copyright, Designs and Patent Act 1998, which provides that ‘where an action for infringement of copyright brought by the copyright owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the copyright owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant’ (emphasis added).
Stability argued CPR 19.3 should not be a ‘safety net’ for claims that failed the test in CPR 19.8. However, the Court found they were two different rules with different requirements.
Ultimately, the Court refused to make an order for an action under CPR 19.3, as no formal application had been made, and the Claimants had failed to provide ‘comfort’ that the Defendants would not be ‘vexed’ by fresh proceedings being issued by licensors outside of the representative action. However, it did not rule out making such an order once it had appropriate evidence before it, noting ‘in many ways an order under CPR 19.3 would make very good sense’, subject to it being satisfied ‘there is no risk to the Defendant of future claims’. In this regard, it commented it was ‘difficult to see what possible downside there could be’ to Getty providing an undertaking to take on the risk to Stability of future claims brought by a licensor outside any such representative action.
Key takeaways
This decision exemplifies the challenges being faced by the Courts in managing claims where the potential claimants are in the thousands. The Courts are looking to balance, on the one hand, efficient and practical case management of claims with significant numbers of potential claimants with the same or similar claims, and on the other hand, the need to ensure fairness and certainty for Defendants. On the latter, those facing mass claims will be reassured by the Court’s focus on the need for certainty as to the class of claimants and the risk of future claims. For Claimants, it is clear that the Court remains open to using the tools available to it to facilitate mass claims where appropriate, but it would be a ‘mistake’ if they fail to engage with the case management aspects of representative actions at an early stage, and risk criticism where such proposals are ‘on the hoof’, or the Court feels it has a ‘lack of satisfactory proposals as to how the representative action would proceed’.
Exclusive copyright licensees are the subject of bespoke statutory rules, where they can bring infringement actions but normally need to join the owners. That gave the Court room for a potential resolution for this type of case. More broadly, it remains to be seen what impact the Intellectual Property Office’s latest consultation on AI and copyright will have on claims of this nature. This is especially relevant given its proposed exemption to copyright laws for training AI models and its proposal for greater transparency from model providers on what content they use to train their models and how they access and scan websites.