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Ruling addresses copyright infringement in the digital age

Originally published in

A recent Federal Court case recognized the ease in which digital works can be reproduced and awarded a photographer the maximum statutory damages for infringement of one of his works, Toronto intellectual property lawyer John Simpson tells

The matter involved a dispute between Simpson’s client, a plaintiff who produces high-quality works of nature photography, and the defendants he engaged to sell the photos on his behalf.

Following a change of ownership in the business, the photographer withdrew his authorization for the resale of his works but later discovered that low-quality prints were being sold online and at trade shows, sometimes with another photographer’s signature on them, the decision states.

The defendants also copied pages from the plaintiff’s website to their own without authorization. The photographer sought statutory damages for copyright infringement, damages for moral rights infringements, aggravated and punitive damages and injunctive relief.

“Courts very rarely award maximum statutory damages. They save that for the most egregious cases,” says Simpson, principal of Shift Law, a boutique firm specializing in IP and new media law.

In awarding maximum statutory damages in this case for one of the infringed works, the judge addressed the particular need for deterrence in the digital world, stating: “In light of the evidence showing the apparent ease in which copyright infringement of this type can be – and in this case has been – accomplished using modern technology, there is a clear and compelling need to deter the defendants from further infringements of [the plaintiff’s] works.”

The case is notable because lawyers can look at it from many different angles, says Simpson, who is certified by the Law Society of Ontario as a specialist in copyright and trademark law.

One notable feature of the case, Simpson says, is that the plaintiff succeeded on summary judgment.

“Summary judgment motions are usually only granted where there is no dispute over the facts, only a disagreement about matters of law. This matter was arguably a long shot for a summary judgment motion as it had a number of highly contentious facts, issues of credibility and relatively complicated issues. The judge dealt with the credibility issues by ordering a one-day mini-trial," he says.

“The evidence was largely circumstantial as to whether the photos had been copied. The defendants claimed it was old inventory so it required a connecting of the dots with affidavits of different people to prove that was not the case,” Simpson adds.

He explains that the photographer’s moral rights – including his right to be identified as the author of the works – were also at issue because the defendants had placed another photographer’s signature on one of the photos.

“The defendants argued that this was done mistakenly by a former employee,” he says. “But the judge was not impressed. He found that moral rights had been infringed by the false attribution.”

Another aspect of the case, Simpson says, related to the reproduction of the photographer’s home page and bio on the defendants' website. Within the home page, the site also pictured one of the man's photos.

The judge awarded statutory damages for infringement of each of these works, including the home page and the photo displayed within it.

“The home page and the photo on the site were seen as two separate works,” Simpson notes.

This case is a caution to others when it comes to reproducing website content, he says. “If you copy a page of a website, you also need to be concerned about what’s in it.”

The court awarded Simpson's client $45,000 in statutory damages, $10,000 for infringement of moral rights, $25,000 in punitive damages and $20,000 in costs.

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