On April 5, 2022, the Federal Court of Canada (the Court) released its decision in August Image LLC v AirG Inc., 2022 FC 470, dismissing August Image LLC’s (August) claim that it had exclusive rights to license certain photographs of Jennifer Lopez taken by celebrity photographer Joe Pugliese, and that airG Inc. (airG) infringed August’s copyright in the photographs by reproducing them without authorization on airG’s website.

The Court first examined the issue of authorship. The Court held that Mr. Pugliese was indeed the author of the photographs, and stated that Mr. Pugliese sufficiently explained the steps, skills, and judgment he took, used, and expended to create the works.

The Court then considered August’s assertion that the relevant certificates of registration bearing Mr. Pugliese’s California address showed that copyright subsisted in the photographs and that the person registered constituted the owner of such copyright under Section 53 of the Canadian Copyright Act. The Court maintained that Section 53 is only applicable to Canadian certificates of registration; accordingly, certificates of registration issued by the United States Copyright Office cannot be used as proof of the existence of copyright pursuant to Section 53(2).

The Court also found that the US certificates of registration were inadmissible for the purpose of establishing Mr. Pugliese’s citizenship or residence in the US. The Court maintained that the certificates fell squarely within the definition of hearsay and were not admissible under the “business records” exemption. In considering the available evidence, the Court concluded that August failed to prove that copyright subsisted in the photographs at issue, as it failed to show that Mr. Pugliese was a resident or citizen of the US (or any other Berne Convention country) at the time the photographs were created.

In obiter, the Court noted that if copyright had subsisted in the photographs at issue, August would have standing to assert copyright infringement pursuant to its written, exclusive license, granted and signed by the photographs’ author.

Furthermore, the Court found that airG reproduced the photographs at issue without August’s permission. However, the Court maintained that there was a lack of evidence surrounding who uploaded the content to the website, the situs of the content provider, the location of any server or intermediary, and any end users located in Canada. The Court was not satisfied that there was a real and substantial connection between airG’s unauthorized use and Canada, and concluded that it did not have jurisdiction to apply the Copyright Act to sanction such unauthorized use (assuming that Canadian copyright subsisted in the photographs).

Lastly, the Court noted that if it had found in favour of August, it would have assessed and awarded damages on the basis of the licence fee that would otherwise have been charged for each photograph – an average of $2,084 USD per image.

Ultimately, the Court dismissed August’s action for copyright infringement and awarded costs in favour of airG.

Summary By: Steffi Tran


22 05 04

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