Raenelle Manning is an IPilogue Writer and 2L JD Candidate at Osgoode Hall Law School.

On April 5^th 2022, the Federal Court released its decision for ,a copyright infringement action concerning images of singer-actress, Jennifer Lopez. Prior to trial, this case commenced as a simplified action procedure, whereby evidence is adduced through affidavit.

The Plaintiff, August Image LLC (“August”) is a photographic syndication agency based in New 91��ɫ, USA. Generally, holds contractual agreements with various photographers to sell and license their photos for commercial and/or editorial use. ��For example, the allows users to purchase photos from categories like “beauty look book” or select photos from a specific photographer. In this case, August held a syndication agreement with the photographer of the Lopez portraits, Joe Pugliese, which granted them the exclusive and global right to sell, licence and promote his photographic portraits.

August asserts that the Defendant, AirG Inc, a Canadian social media brand, committed copyright infringement by reproducing six of Pugliese’s Jennifer Lopez photos on their without permission. They sought $22,412.45 in damages, which is the total license fee for the photos.

Why August image LLC’s Case Failed

The Court was satisfied that the photos were reproduced on the AirG website without permission. However, the Court ultimately dismissed August’s case because they failed to prove all the necessary elements of copyright infringement.

One of the central issues in this case was whether Joe Pugliese owned the copyright to the photographs.

According to the , the following conditions must be met for a copyright to be conferred to an author of an artistic work:(1) the work must be original; (2) the person must be the author of the work; and (3) they must, at the date of its creation, be either a Canadian citizen or a citizen of a signatory country on the Berne Convention (para 26). The provides that works created in one of the signatory countries must be given the same copyright protection in each of the other signatory countries as the latter grants to its own citizens. The United States is a signatory country. Although August was able to satisfy the first two criteria, they were unable to prove that Pugliese was a US citizen at the time that the photographs were taken. Therefore, he could not be recognized as a copyright owner, nor receive copyright protection under the Canadian Copyright Act. This factor was detrimental to their case.

Inadmissible Evidence

August did attempt to establish that Pugliese was a citizen of the United States. They supported this claim with the following evidence: the statement in Pugliese’s affidavit where he identifies himself as being “of Los Angeles, California”; a copy of the Copyright Registration Certificate (issued in the United States) which bears a California address and identifies him as a citizen; and the contract between August and Pugliese that also includes the same address.

The Court was not satisfied that any of this evidence confirmed that Pugliese was a US citizen in April 2015, when photos were created. ��The Court indicated that the standard affidavit formula requires a person to insert their name followed by an address. This was not admissible proof of a US citizenship. The same was true regarding the address listed on the 2012 syndication agreement between Pugliese and August.

The Court spent more time analysing the admissibility of the Copyright Certificate of Registration as evidence of Pugliese’s citizenship. In the affidavit, Pugliese indicated that he had registered the Jennifer Lopez photographs with the United States Copyright Office, as he typically does with his works.�� August asserted that this would establish Pugliese as the copyright owner and entitle him to copyright protection (para 46). Unfortunately, section 53(2) of the Copyright Act provides that only works registered with the Canadian Copyright Office will constitute as evidence that the copyright subsists and is owned by the registrant ��). Further, the Court stated that the statements regarding Pugliese’s citizenship and residence, in the certificate of registration, fell under the definition of hearsay (they were written by a person not involved with the case). The statements were also not accompanied by a declaration from Pugliese verifying the validity of the statements. Thus, the certificate was also inadmissible as to establish Pugliese as a US citizen and August was unable to prove that a copyright subsisted in the photographs.

Another Escape by AirG

In 2020, AirG was involved in a similar copyright infringement action, . ��There, Lickerish, a UK company that provides beauty, celebrity, fashion and model medial argued the AirG reproduced images of Meghan Markle on their website without authorization. The Federal Court also dismissed this case. The Court failed to establish ��copyright ownership — they were unable to prove that an exclusive licence existed between them and the photographer — and thus lacked standing to assert copyright infringement in relation to the photographs. ��Ultimately, it seems that AirG has yet again managed to escape an infringement sanction.

Further Reading

August Image LLC v AirG Inc. 2022 FC 470:��

Federal Court Dismisses Copyright Claim Due to Plaintiff’s Failure to Establish Ownership:

The post Copyright Infringement Case Concerning Photos of Jennifer Lopez Gets Dismissed: An Overview of the August Image LLC v AirG Inc Decision appeared first on IPOsgoode.

Through references to films like Titanic and The Clock, Professor Bently spoke about the importance of fair dealing and ensuring that courts are not interpreting these provisions in an unduly restrictive manner.

Fair Dealing Exception

One of the exemptions parties may be afforded in the case of infringement is the fair use (the similar doctrine in the United States) or fair dealing (the doctrine in Canada) exception. On the surface, both doctrines animate similar principles, such as “character of the dealing”, however that the fair dealing doctrine is far more amenable and expansive compared to fair use. Fair dealing is a statutory exception to a copyright infringement, whereby the user is able to exercise rights in respect to copyrighted material belonging to an owner. Many scholars in favor of fair use find the fair dealing doctrine to be too amenable, making greater expansion, as Professor Bently advocates for, all the more difficult.

This defence provides an opportunity for users to defend a prima facie infringement, provided it is deemed to fall into the purview of sections 29.1 or 29.2 of the . Simply put, an individual can copy from a copyright protected work, without permission, provided the copy is for one of the enumerated purposes. Among these enumerated grounds are allowances for research, private study, education, parody, satire, criticism or review, and news reporting. Additionally, the dealing must be “fair”, as determined by the courts.

The Judicial and Legislative Expansion of Fair Dealing Under Canadian Law

Section 3(1) of the Copyright Act lists the rights of the copyright owner. Among other things, the Act, in the same section, defines a copyright as “the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof”.

In response to this, Professor Bently probed at what truly constitutes a “substantial part”. Does a two-second sample constitute a substantial part, as was discussed in c-476/17, ? The court held, “sampling without authorisation can infringe a phonogram producer’s rights. However, the use of a sound sample taken from a phonogram in a modified form unrecognisable to the ear does not infringe those rights, even without such authorization.” Focusing on Canadian courts, the decision in defends an expansive approach to fair dealing. The court quotes professor who states, “user rights are not just loopholes. Both owner rights and user rights should therefore be given fair and balanced reading that befits remedial legislation.”

 The Quotation Right in the Berne Convention

Adopted in 1886, the is concerned with the protection of works and the rights of their authors. The Convention sets the minimum protections to be afforded to countries who are signatories - Canada is one of these countries.

Article 10(1) of the Berne Convention states, “It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose…”. Professor Bently argues that despite the clarity and strength of the language used (“shall be permissible”), Article 10 has been largely overlooked. Expanding the application of fair dealing in Canada will require a more literal interpretation of this provision. 

Implications: Global, Mandatory Fair Use

In closing, Professor Bently states that Canada should extend its fair dealing exceptions further to permit quotation of all works for any other purpose. Despite the likelihood of dissent from the international community, as the expansion of fair dealing could mean undermining copyright holders’ rights, expansion remains a necessary step forward to prevent artistic expression from being unduly restricted by law.

Written by Jason Clarke, a third year JD Candidate at Osgoode Hall Law School. Jason is also a Clinic Fellow at IP Osgoode Innovation Clinic.

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Professor Ginsburg has a new article��forthcoming in WORKING WITHIN THE BOUNDARIES OF INTELLECTUAL PROPERTY, Rochelle Cooper Dreyfuss, Harry First, Diane Leenheer Zimmerman, eds., forthcoming, Oxford University Press (2009).

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This article addresses the extremes of private ordering, and the extent to which the principal multilateral copyright instruments, the Berne Convention and the TRIPs Accord, limit the range of State responses to the problems encountered at the far ends of the copyright-contract spectrum. At one end, we encounter private ordering at its most aggressive, in which private parties enter into agreements (or, more likely, the stronger party coerces the weaker parties, who may be mass market consumers) to protect subject matter or rights excluded from the ambit of copyright's exclusivity. At the other end, the difficulties arise not from overweening sellers forcing their way with timid buyers, but from failure to find the seller at all. The buyers, would-be copyright exploiters, are unable to locate the right holders from whom to negotiate a license to use their works. In this case, no contract can be concluded, unless the State steps in for the absent right holder. In the first case, a contract has been concluded, but at a cost that the State could not exact were it to seek the same result through public ordering.

The analysis of Part I proceeds in three steps. First, a review of the relevant Berne-TRIPs provisions will identify and assess the "maxima." Second, consideration will be given to whether the prescriptive force of the maxima extends to extra-copyright means of achieving copyright-prohibited objectives. Finally, an inquiry will be made into whether the mandatory exclusions and restrictions apply only to foreign Berne Union works or whether the treaties can also be read to compel their domestic application. Part II shifts from private ordering to State-imposed licenses and other interventions that limit the exercise of exclusive rights. Where Part I inquires whether current multilateral instruments limit private parties' freedom effectively to expand the scope of copyright subject matter or rights, Part II examines whether those same instruments constrain State responses to systemic failures of private ordering by limiting the remedies available against the unauthorized exercise of otherwise exclusive rights. The example of failed private ordering that will be considered concerns the problem of "orphan works," where the inability to find right holders means that would-be exploiters cannot enter into private agreements with them.

This exploration of the extremes of the copyright-contract spectrum finds little prescriptive force in the Berne-TRIPs "maxima" with respect to private agreements to protect subject matter the treaties exclude from copyright's ambit. By contrast, Berne-TRIPs "minima" can meaningfully constrain a State's prerogative to impose compulsory licenses or limit remedies when private agreements cannot be concluded, for example because a willing buyer cannot find the seller (willing or otherwise). The minima should not, however, be regarded as an impediment to resolving the "orphan works" problem. Rather, attention to the minima should enable States to shape an orphan works regime which both permits the exploitation of unlocatable right holders' works, and fairly compensates those right holders who, notwithstanding a rigorously diligent but unsuccessful search, subsequently turn up and object to the uses made of their works.

Professor Jane Ginsburg's article "Contracts, Orphan Works, and Copyright Norms: What Role for Berne and TRIPs?" (Columbia Public Law Research Paper No. 09-200)��is available for download on SSRN .��

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