The Federal Court's recent decision in August Image LLC v. AirG Inc, 2022 FC 470, saw the Court adopt a somewhat rigid approach to assessing the evidence in a copyright infringement case. The decision serves as a caution that parties claiming copyright infringement must adduce evidence that directly establishes that the author of the work was a citizen of, or ordinarily resident in, Canada or another signatory to the Berne Convention1 (i.e., a "Treaty country") at the particular time that the work was created. Without such direct evidence, the claim may be dismissed even if the court could indirectly infer from other evidence that the author did reside in a Treaty country in other relevant periods of time, and even if the other elements of copyright subsistence are well-established.
Factual and Procedural Background
The decision involved a claim by August Image LLC (the "Plaintiff"), a photographic syndication agency, against AirG Inc (the "Defendant"). The Plaintiff asserted exclusive licenses in six photographs of Jennifer Lopez taken by celebrity photographer Joe Pugliese and alleged that the Defendant reproduced these photographs on the Defendant's website without authorization. The photographs were taken at a California photoshoot directed by Mr. Pugliese in 2015. He had entered into an exclusive license agreement with the Plaintiff three years earlier.
The Plaintiff pursued its claim using the Federal Court's simplified action procedure. As such, he relied on affidavit evidence from two affiants with first-hand knowledge of the facts, namely, Mr. Pugliese and Mr. Hannigan, the Plaintiff's co-founder and CEO. The Defendant neither cross-examined the Plaintiff's affiants nor adduced any evidence of its own, asserting that virtually all of the Plaintiff's evidence was inadmissible and that the Plaintiff had failed to establish the elements of the cause of action.2
Subsistence of Copyright in Canada and Ordinary Residence
Central to the dispute was the issue of whether Mr. Pugliese owned the copyright in the photographs in Canada. While the Court was satisfied that Mr. Pugliese was the author of the photographs,3 it was not satisfied that copyright subsisted in the photographs in Canada. Section 5(1) of the Copyright Act confers copyright to the author of an artistic work if the author was, at the time the work was created, either a citizen, a subject, or an ordinary resident of Canada or another Treaty country. According to the Court, Mr. Pugliese's affidavit failed to establish that he was ordinarily resident in the United States (a Treaty country) at the time the photographs were taken.4
The evidence of Mr. Pugliese's residency at the relevant time failed in several respects. First, Mr. Pugliese's affidavit did not expressly state that he was a US resident at the time of the photoshoot. Second, the copies of the US copyright registration certificates adduced by the Plaintiff were not admissible to prove residency. While the copies contained statements that Mr. Pugilese was a US citizen and listed his address, those statements were hearsay and the copies did not qualify as admissible "business records" under s. 30 of the Canada Evidence Act, R.S.C., 1985, c. C-5.5 The certificates themselves could not be used to prove the subsistence of copyright in the photographs in Canada because they were not issued by the Canadian Copyright Office referred to in s. 53 of the Copyright Act, which provides that registration certificates issued by that Office are evidence of the subsistence of copyright in Canada.6
The 2012 licensing agreement between the Plaintiff and Mr. Pugliese, which contained a California address for Mr. Pugliese, could not prove that Mr. Pugliese resided there in 2015. Even though the 2015 photoshoot occurred in California and Mr. Pugliese resided there in 2021, the Court recognized that a person's residence is "not static" and can change from year to year.7
Copyright could have also subsisted in the photographs if they were first published in a Treaty country "in such a quantity as to satisfy the reasonable demands of the public."8The photographs at issue were published in the June 2015 issue of US Weekly. However, the Court refused to take judicial notice of the place where the magazine was in fact published and the quantities involved.9
Copyright Infringement Outside Canada
Had the Court found that copyright subsisted in the photographs, it would not have found the Defendant guilty of infringement. The Copyright Act only protects against infringement in Canada. Where Internet communications are concerned, there must be a real and substantial connection between the communication and Canada.10 Relevant connecting factors include the situs of the content provider, the host server the intermediaries and the end user. In this case, the Court found no such connection, noting that Mr. Hannigan, the only person who deposed to seeing the Defendant's website, was a resident of New York. While the Defendant's place of business was in Vancouver, there was no evidence as to who uploaded the photographs, the situs of the content provider, or any end users in Canada.11
Parties claiming copyright infringement would be well advised to view this decision as guidance on the type and quality of evidence the courts expect to receive in respect of the citizenship/residency requirement for copyright subsistence. Affidavit evidence must contain direct language that clearly attests to the author's citizenship or residency at the time the work was created. Similarly, this decision provides helpful examples of the types of evidence the court expects to see in respect of the "real and substantial connection" requirement for copyright infringement on the Internet.
1. Berne Convention for the Protection of Literary and Artistic Works.
2. August Image LLC v. AirG Inc, 2022 FC 470 at para 3 [August Image].
3. August Image at para 42.
4. August Image at para 54.
5. August Image at paras 47-52.
6. August Image at para 46.
7. August Image at para 57.
8. Copyright Act, R.S.C., 1985, c. C-42, s. 5(1)(c).
9. August Image at para 58.
10. Society of Composers, Authors & Music Publishers of Canada v. Canadian Assn. of Internet Providers,  2 S.C.R. 427.
11. August Image at para 73.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.