When bringing a claim for copyright infringement, it is incumbent on plaintiffs to show a clear right to sue—either by virtue of a clear title to ownership to or an exclusive licence in the work at issue. Otherwise, the plaintiff may lack standing to bring the claims at all under the Copyright Act, 1985 RSC c C-42. Two recent decisions from the Federal Court showcase instances where plaintiffs failed in what may have otherwise been straightforward copyright infringement cases, due to an inability to clearly establish their ownership or license (and thus, their right to sue).

The first case, Lickerish, Ltd. v. Airg Inc., 2020 FC 1128, involved a claim brought by a UK photographic syndication agency, Lickerish Ltd., for copyright infringement by a social networking software company, AirG Inc. of two photographs of Meghan Markle allegedly reproduced on the Defendant’s website. Lickerish argued that it had entered an exclusive agency contract to act on behalf of the photographer of the images. To support its claim, the Plaintiff filed an affidavit of its director, which included a copy of a purported US copyright registration certificate for the photographs. The Plaintiff argued that it had obtained an exclusive license from the photographer, who was the author and owner of the photographs, and that this information was reflected in the US registration.

The action was brought as a simplified procedure. After reviewing this evidence, the Court dismissed the action outright on the basis that the Plaintiff lacked standing. The Prothonotary noted that the Plaintiff provided no direct evidence about the creation of the works, or that it either authored or owned the copyright in the two photographs, including by way of assignment or exclusive license. Moreover, she found the purported US copyright registration inadmissible under the Canada Evidence Act. The certificate provided was a mere copy, not a certified copy; the Plaintiff provided no authority to suggest that the “certified copies” exception in the Canada Evidence Act applied to foreign documents; and the Plaintiff failed to provide any authority to suggest that foreign registration certificates could benefit from s. 53 of the Copyright Act that provides that the Register of copyrights is evidence of the particulars entered in it; moreover, the witness had no personal knowledge about the actual application for registration with the US Copyright Office or the issuance of the registration certificate —in other words, there was no way for the court to authenticate the document and its contents.

In the more recent case of Dunn’s Famous International Holdings Inc. v. Devine, 2021 FC 64, Justice Southcott dismissed copyright infringement claims outright due to the Plaintiff’s failure to provide any evidence of authorship or ownership. The Plaintiff, Dunn’s Famous International Holdings (Dunn’s), operates a consumer retail food product development, marketing, licensing, and wholesale distribution business based out of Montreal, Quebec. The Defendants were a set of unauthorized franchisees of the Plaintiff, and their principals. Among other claims, including for trademark infringement, Dunn’s advanced claims for copyright infringement against a set of the Defendants for the unauthorized reproduction of portions of Dunn’s website, including its logo, the structure of the website, and specific content in the franchising section of the website. The evidence of ownership proffered by Dunn’s consisted of an affidavit from its President and sole shareholder, in which the affiant referred to “our” website, design, and logos.

Justice Southcott found such evidence fell “significantly short” of what was required to establish copyright ownership. It did not show the Plaintiff was the author (and thus, the first owner of the works at issue). Nor was it sufficient to show it was the owner by virtue an assignment by whomever was the author. As such, the copyright infringement claim was dismissed.

By contrast, the trademark-related claims succeeded. Dunn’s was awarded over $500,000 in damages, and pre-judgement and post judgement interest, and costs from the corporate Defendants as well as some individually named directors and officers. This outcome suggests that, had the Plaintiff filed sufficient evidence of ownership, its copyright claim may have succeeded as well.

Why it matters

When a party is wronged, and seeks assistance from the courts, they will no doubt wish to obtain all available remedies for each possible cause of action. Copyright infringement claims can sometimes be an afterthought when advancing other claims, for example trademark infringement, but can nevertheless be just as, or more, important. Where a claim is based on unauthorized reproduction of websites, logos, or other design matter—as may be the case in trademark infringement or passing off actions—copyright law can provide an additional layer of relief. For example, plaintiffs can elect to recover statutory damages, instead of actual damages. Such damages can be up to $20,000 for each work if the infringement is for commercial purposes. This is not an insignificant sum.

As shown in the above recent cases, before commencing litigation, prospective plaintiffs would be well advised to ensure they can show clear evidence of ownership or an exclusive licence in the works they allege are infringed, and, if needed, the chain of title from the author. A certified copy of a valid Canadian copyright registration can meet that requirement (and parties would be advised to register their copyright upon creation of the work). Otherwise, it may be best to include affidavits from witnesses with direct knowledge of how the work was created and assigned to the plaintiff, or at the very least, who can speak to the process of filing and obtaining the certificate of registration. It is critical for parties to ensure they have an assignment from the human author of the work to the intended owner, and waiving moral rights. Canadian copyright law deems the human author to be the first owner (with very few exceptions), including where the work is “made for hire”. Asserting copyright in those works central to a brand—websites, logos, and other branded material—is not always straightforward and clear, and parties need to remember that they have the burden of showing proper title when enforcing those rights.