Raenelle Manning is an IPilogue Writer and 2L JD Candidate at Osgoode Hall Law School.
On April 5th 2022, the Federal Court released its decision for August Image LLC v AirG Inc ,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 York, USA. Generally, a photographic syndication agency holds contractual agreements with various photographers to sell and license their photos for commercial and/or editorial use. For example, the official August website 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 website 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 Copyright Act RSC 1985, c. C-42, 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 Berne Convention 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, Lickerish, Ltd. v AirG Inc. 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 concluded that Lickerish 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: https://www.canlii.org/en/ca/fct/doc/2022/2022fc470/2022fc470.html?searchUrlHash=AAAAAQANIjIwMjIgRkMgNDcwIgAAAAAB&resultIndex=1
Federal Court Dismisses Copyright Claim Due to Plaintiff’s Failure to Establish Ownership: https://www.goodmansip.ca/post/federal-court-dismisses-copyright-claim-due-to-plaintiff-s-failure-to-establish-ownership
