January 26, 2021
The Federal Court’s recent decision in Lickerish, Ltd. v. Airg Inc., 2020 FC 1128, demonstrates that copyright infringement claims are predicated on establishing ownership of the underlying copyright. Thus, a failure to establish ownership or an exclusive license agreement regarding the copyright at issue will inevitably result in the failure of any infringement claim.
Lickerish, Ltd. (“Lickerish”), a UK company that provides beauty, celebrity, model and fashion images to the media, brought a copyright infringement action against Airg Inc. (“Airg”), a Canadian social media company.
Lickerish claimed to have copyright in two photographs of Meghan Markle (the “Photographs) by virtue of an exclusive license it entered into with the photographer (the “Photographer”). Lickerish claimed that Airg began reproducing the Photographs on its website without authorization or permission as early as October 1, 2014, which it alleged amounted to copyright infringement.
In its defence, Airg asserted first, that it did not publish the Photographs on its website and, in the alternative, that Lickerish lacked standing to bring the action.
The Federal Court’s Decision
In its determination as to whether Airg infringed Lickerish’s copyright, the Court reminded litigants that, in order to bring a copyright infringement claim in Canada, one must first establish authorship of the copyrighted work. The Court further noted that a prerequisite to the admission of evidence is the verification of the authenticity of such evidence. Ultimately, the Court concluded that Lickerish had failed to establish ownership of the copyrighted work and thus did not have standing to assert copyright infringement in relation to the Photographs.
The Ownership Claim
Lickerish claimed the Photographer with whom it had entered into an exclusive license agreement was the owner of the copyright in the Photographs. To establish that the copyright was owned by the Photographer, Lickerish relied on the affidavit evidence of its director, Nigel Williams, and an exhibit containing an uncertified copy of the registration of the Photographs with the US Copyright Office (the “US Registration”).
Airg filed a notice of objection, challenging the admissibility of the majority of Mr. Williams’ affidavit on the basis that it contained inadmissible hearsay, argument, speculation and opinion. Airg also objected to the exhibits within Mr. Williams’ affidavit on the basis that they were hearsay, not properly certified or verified copies, irrelevant and/or incomplete.
Admissibility of the Affidavit Evidence in Support of the Authorship Claim
Within his affidavit, Mr. Williams stated that the Photographer took the Photographs. At trial, it was revealed that Mr. Williams had no firsthand knowledge of the creation of the Photographs as he was not present for the photoshoot. Rather, the information set out in his affidavit was conveyed to him by the Photographer, and therefore, hearsay. Mr. Williams also admitted that it would have been possible to locate the Photographer and call him to testify as to the ownership of the Photographs.
The Court drew an adverse inference against Lickerish for its failure to call the Photographer. It further held that Mr. Williams’ hearsay evidence could not be used as evidence in support of the ownership claim advanced.
Admissibility of the Certificate of Registration
Lickerish asserted that the US Registration constituted valid proof of the existence of the Photographer’s copyright in the Photographs. In support of this position, Lickerish made three claims.
First, that section 24 of the Canada Evidence Act, which provides that copies of official or public documents are admissible as evidence, applied to the Photographs as they were searchable as a public record by virtue of their status in the United States Copyright office as a government document. The Court rejected this argument as it was not satisfied that section 24 of the Canada Evidence Act applied to foreign documents.
Second, Lickerish claimed that subsection 53(2) of the Copyright Act provides that a certificate of registration of copyright is evidence that copyright subsists, and that the US Registration was sufficient to engage subsection 53(2). The Court rejected this argument on the basis that subsection 53(2) of the Copyright Act makes no reference to foreign certificates of registration, and no evidence was led to establish that the copyright was registered in Canada.
The final argument advanced by Lickerish was that section 5 of the Copyright Act, which recognizes a copyright in Canada if the relevant work was created by an author resident in a nation that is a party to the Berne Convention, applied to the Photographs as the Photographer was a resident of the United States. The Court rejected this argument as Lickerish failed to lead admissible evidence to establish the Photographer’s residence. As a result, the Court held that authorship of the Photographs had not been demonstrated.
The Exclusive License Claim
Notwithstanding its finding that authorship had not been demonstrated, the Court went on to consider whether Lickerish had an exclusive license granting it a proprietary interest in the Photographs, assuming the Photographer was the owner of the copyright in the Photographs.
Admissibility of the Exclusive License Agreement
With respect to the exclusive license agreement, Lickerish relied on the affidavit evidence of Mr. Williams to establish authenticity. In his affidavit, Mr. Williams claimed that he negotiated the standard form exclusive licence agreement that was prepared by Lickerish and sent to the Photographer for execution. Mr. Williams stated that he received the executed agreement by email and thereafter printed, signed and electronically forwarded the agreement to Lickerish.
On cross-examination, Mr. Williams admitted that he did not make the copy of the agreement exhibited to his affidavit nor did he review the copy exhibited to his affidavit as against the original agreement. Mr. Williams also admitted that he did not witness the Photographer sign the agreement, and as such he did not know whether the signature on the agreement was the Photographer’s signature. Lickerish did not produce the email attaching the executed agreement or any affidavit from the Photographer attesting to the authenticity of the signature or any witness to the signing. Furthermore, Mr. Williams admitted that the agreement itself failed to include the name of the Photographer.
In light of the complete absence of any admissible evidence corroborating the existence of a contractual relationship between the Photographer and Lickerish, the Court found that the evidence was insufficient to establish the authenticity of the exclusive license agreement.
Given the absence of a determination that the Photographer was the owner of the copyright and that Lickerish received an exclusive license from the Photographer, the Court concluded that Lickerish failed to establish that it had standing to bring a copyright infringement action against Airg.
Authors: Sam Galway and Nargis Fazli