Photographer Edmond Chung’s fashion photos of Brandy Melville Canada Ltd. (“Brandy Melville”) employee Catherine Moisan were destined to be viewed on Instagram and Facebook. However, Brandy Melville’s unauthorized use of one of his photographs led Edmond Chung on a years-long effort to seek redress from the retailer for breach of his copyright. Edmond Chung finally succeeded in his efforts this April 2016 when the Court of Quebec’s Small Claims Division condemned Brandy Melville to pay Edmond Chung $5,000.00 for copyright infringement.  This decision is good news for creators seeking to share their work with a larger audience as it attests that copyright persists, even when a protected work is shared over social media.
Edmond Chung’s story begins in July 2013 when he agreed to photograph Catherine Moisan wearing Brandy Melville clothing. Though it was agreed that he would not be compensated for this photoshoot, Edmond Chung did insist that his name be associated with the photos, hoping that this exposure would be beneficial for his photography career. He and Catherine Moisan agreed that he would be tagged in the Instagram posts of his photographs and that his name would appear on the photographs in any Facebook post. Shortly thereafter, in August 2013, Edmond Chung discovered that one of his photographs was being used by Brandy Melville in their promotional material, attached to every shopping bag at the Sainte-Catherine Street store in Montreal. Edmond Chung quickly took action to enforce his legal rights, sending the retailer a demand letter proposing a settlement for the infringement of his copyright and moral rights. Receiving no response, Edmond Chung sent a follow-up demand letter in December 2013 claiming $5,000.00 for copyright infringement.
When the dispute finally came to trial, Brandy Melville’s representative disputed Edmond Chung’s claim of copyright infringement by alleging that there was no evidence that Edmond Chung had taken the photograph, reinforced by the fact that the photograph was not watermarked. A watermark is a digital identifier that can be attached to any audio, video or image file by the work’s owner as a clear marker of ownership. Typically, the watermark can only be removed by the owner and the watermark obscures the work in some way, inhibiting its unauthorized use. Brandy Melville’s representative also testified that posting a photograph on Instagram entails an automatic loss of any intellectual property rights associated with the photograph as a consequence of Instagram’s rules and regulations. The latter argument was not examined by the judge in his decision since Instagram’s rules and regulations were not introduced into the court record.
Justice Vincenzo Piazza was dismissive of Brandy Melville’s main argument, stating that “it is obvious that Mr. Chung is the author of the picture used commercially by Brandy and that he did not authorize such use.” The lack of any watermark is explained by Edmond Chung’s initial agreement with Catherine Moisan, whereby he agreed merely to be tagged in any Instagram posts. Given Instagram’s small formatting, any watermark would interfere with Instagram users’ appreciation of the photograph and negate the purpose of Edmond Chung and Catherine Moisan’s collaboration. Edmond Chung made a deliberate decision not to use a watermark.
In his decision, Justice Piazza canvasses the relevant provisions of the Copyright Act (the “Act”), finding that Brandy Melville’s promotional use of Edmond Chung’s photo is a “blatant infringement” of Edmond Chung’s copyright under s.27 of the Act. The decision further states that Brandy Melville’s failure to attribute the photograph to Edmond Chung constitutes an infringement of his moral rights under s.14.1 of the Act. Justice Piazza rebuked Brandy Melville for failing to inquire into the origin of the photograph used in their promotional material, asserting that the retailer must have known that the photographer was likely not being paid for his or her work. Justice Piazza writes that Brandy Melville’s unquestioned and uncompensated use of the photograph is “at the very best, extremely poor judgment and at worst, a total lack of consideration for the rights of the author of the pictures.”
Justice Piazza based his awarding of damages on the sum specified in Edmond Chung’s demand. While Edmond Chung did not specify whether he sought punitive or compensatory damages, Justice Piazza wrote that Edmond Chung would be well within his rights to seek $5,000.00 in punitive damages, given that Brandy Melville’s use of his photograph constituted an unlawful and intentional interference with his rights under the Act and the Charter of Human Rights and Freedoms.
This decision is a clear win for creators and provides some clarity to the legal grey zone of intellectual property rights in the digital domain. Creators can be more confident that sharing their work over social media does not amount to a waiver of their intellectual property rights. The decision sends a message to individuals and corporations that they cannot make unauthorized use of any work found on social media and that doing so may result in serious consequences. Nevertheless, questions still remain. For instance, would the outcome be different if Brandy Melville introduced Instagram’s rules and regulations into the court record? What if Instagram decided to use Edmond Chung’s photos in its own promotional materials? While this decision is supportive of creators’ rights, creators must still be conscious of the consequences of sharing their work over social media and should pay close attention to the terms and conditions of any online medium used.