In the last month of 2020, Canadian courts decided two proceedings involving alleged copyright infringement and social media platforms. Both proceedings were small scale and involved foreign copyright holders. One proceeding was heard by the British Columbia Civil Resolution Tribunal (BCCRT) and the other was heard by the Federal Court of Canada (FC) under its simplified procedure for small claims.
The plaintiffs in both proceedings were foreign entities that claimed to hold copyright in works from countries other than Canada. Under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), signatory countries will respect and enforce the copyrights of authors from other signatory countries in works published in those countries. Section 5 of the Canadian Copyright Act extends copyright protection in Canada to foreign works in accordance with the Berne Convention. Although both proceedings were ultimately unsuccessful, the courts held that it was possible, at least in theory, for the foreign copyright holders to bring small claims proceedings in Canada.
Lickerish v Airg:
The FC dismissed a copyright infringement action in Lickerish, Ltd v Airg Inc, 2020 FC 1128 (Lickerish). In Lickerish, the plaintiff was a UK company that provides beauty, celebrity, model, and fashion images to the media. It sued a Canadian social media company for copyright infringement relating to its use of two photographs of Meghan Markle (Photographs) to promote one of its social media products. The plaintiff claimed to have an exclusive agency license with the photographer (Photographer) regarding the Photographs.
The Berne Convention and the Copyright Act:
To bring a copyright infringement action in Canada, one must either be the owner of the copyright or an exclusive licensee. To establish that the plaintiff is an exclusive licensee, one must demonstrate that: (a) the plaintiff has the copyright owner’s permission to do something within the copyright, (b) the copyright owner has promised not to extend this permission to another for the duration of the license, and (c) the copyright owner promises to abstain from the licensed behavior for the duration of the license. The condition precedent to this test is establishing that the copyright owner does indeed hold copyright in the impugned work. It is this condition that the plaintiff in Lickerish failed to demonstrate.
To establish that (1) it had an exclusive license regarding the Photographs and (2) that their copyright was owned by the Photographer, the plaintiff relied on an affidavit from one of its directors, an uncertified copy of the registration of the Photographs with the US Copyright Office (US Registration), and a copy of the unsigned license agreement with the Photographer. The FC found the plaintiff’s evidence to be insufficient to establish either fact. In his testimony, the plaintiff’s director admitted that he had no firsthand knowledge of the creation of the Photographs, the US Registration, or the exclusive license with the Photographer. He also admitted that it would have been possible to locate the Photographer and have him testify as to his authorship of the Photographs in this proceeding. Thus, the FC found the portions of the plaintiff’s evidence on copyright ownership and the exclusive license to be inadmissible hearsay. Consequently, the plaintiff was unable to establish that it had standing as an exclusive licensee, and its action was dismissed.
Bjørnsen v Sharpe:
Unlike in Lickerish, the plaintiff in Bjørnsen v Sharpe, 2020 BCCRT 1425 (Bjørnsen) was able to establish that he owned the copyright in the works. He provided affidavit evidence of his first hand knowledge of the works as well as excerpts from his book where the Illustrations appeared. The BCCRT, however, ultimately found that the plaintiff was unable to demonstrate infringement.
In Bjørnsen, the plaintiff was a Norwegian author who creates works involving Norse mythology. He alleged that the defendant, a Canadian author, had infringed his copyright by reproducing illustrations from one of his published books (Illustrations) in a Facebook post to promote a crowdfunding campaign. The images on the defendant’s post were stripped of copyright and attribution information. The plaintiff claimed that the defendant had knowingly stripped this information from the Illustrations; but the defendant claimed he had found the “clean” Illustrations on Pinterest without attribution to the plaintiff.
Because the defendant claimed that he reproduced “clean” versions of the Illustrations and not the original Illustrations, the BCCRT focussed its analysis on whether the defendant had engaged in secondary infringement. In order to prove secondary infringement, a copyright holder must show that: (1) the copy was the product of primary infringement, (2) the alleged infringer knew that the copy is the product of primary infringement, and (3) the copy was distributed by the infringer.
Although the plaintiff was able to show that the “clean” Illustrations were likely produced by infringement and the defendant had distributed these works, the plaintiff was unable to show that the defendant was likely aware that the “clean” Illustrations were infringing works. The defendant brought evidence that showed that one of the “clean” Illustrations was available on Pinterest and that this social media site was where he had found it. The BCCRT concluded that this scenario was likely the case for the other “clean” Illustration and held that the defendant therefore likely did not know that the “clean” Illustrations were infringing copies. Thus, the BCCRT found that the plaintiff had not established secondary infringement and dismissed the action.