In the Federal Court’s recent decision of Andrew Collett v Northland Art Company Canada Inc and Bremner Fine Art Incorporated, 2018 FC 269 [Collett], Justice Gleeson addressed the plaintiff’s claims for damages for infringement of copyright and moral rights, including statutory and punitive damages. This article summarizes the Court’s consideration of these damages.
Facts
Andrew Collett is a commercial photographer who through contract had provided prints of his photographic works to Northland Art Company for resale. Following a breakdown of the relationship, Mr. Collett advised Northland that it was no longer authorized to distribute, offer for sale or sell any of his works. Northland, however, continued to display Mr. Collett’s works on its website and at tradeshows, and continued to solicit and fill orders by reproducing those works. Northland also continued to provide an active link to Mr. Collett’s website on its website, thereby infringing Mr. Collett’s copyright in his website content.
Statutory Damages
Subsection 38.1(5) of the Copyright Act requires a court, in exercising its discretion in awarding statutory damages, to consider all relevant factors and provides the following factors for consideration where the infringing activity is for commercial purposes: good or bad faith of the defendant, conduct of the parties, and the need to deter other infringements of the copyright in question. Taking these factors into account, a court is required to arrive at a reasonable assessment of statutory damages “in order to yield a just result” [1].
The facts in Collett are not unique, but highlight the ease with which copyright can be infringed where the original work can be digitized and reproduced using modern technology. Justice Gleeson noted the “clear and compelling need” to deter defendants from further infringement in these cases. In Collett, the need for deterrence was further emphasized by the fact that the defendants’ conduct in carrying out the infringing activity had been intentional and deliberate. In the result, Mr. Collett was awarded between $10,000 and $20,000 per work infringed, and $7,500 for the infringement of his website content [2].
Damages for the Infringement of Moral Rights
Collett is also instructive in that it provides insight into the facts necessary to support a finding that the moral rights of an artist have been infringed. Subsection 14(1) of the Copyright Act provides that “[t]he author of a work has… the right to the integrity of the work and… where reasonable in the circumstances, to be associated with the work as its author”.
In Collett, the defendants’ unauthorized reproductions of Mr. Collett’s works were of an inferior quality to those supplied by him and, in some cases, were falsely attributed to another photographer because the defendants had placed the other photographer’s signature on the prints in place of Mr. Collett’s. Justice Gleeson, in addressing the infringement of moral rights in a particular photographic work titled “Spirit of Our Land”, found that the defendants’ conduct in “producing inferior versions of [the Work] in a significant quantity, attributing that Work to another artist and then selling the inferior product into the very marketplace in which Mr. Collet carrys [sic] on business violated his moral rights in that Work”.
In determining the quantum of damages for the infringement of moral rights, Justice Gleeson referred to a recent decision of the Federal Court involving the same defendant and substantially similar circumstances in which $10,000 was awarded [3] and awarded that amount to Mr. Collett.
Punitive Damages
The objectives of punitive damages—retribution, deterrence and denunciation—are well established [4]. In relation to copyright infringement, subsection 38.1(7) provides that an election for statutory damages “does not affect any right that the copyright owner may have to exemplary or punitive damages”.
In awarding punitive damages, Justice Gleeson considered the defendants’ infringing activity in light of the factors summarized by Justice Boswell in Microsoft Corporation v Liu, 2016 FC 950 [Liu] [5] and stated the following regarding the defendants’ conduct:
The infringing activity in this case was planned and deliberate. It was motivated by profit. It was not limited to a single occurrence. Northland was well aware of its infringing activity and sought to conceal the activity by attributing Mr. Collett’s Work to another photographer. In short, Northland and its managers and officers demonstrated complete disregard for Mr. Collett’s legitimate interests in protecting his copyright.
In determining the quantum, Justice Gleeson referred to the range identified in Liu at para 28: “This Court in recent years has awarded punitive damages… in amounts ranging from $15,000 to $100,000”, and concluded that a “substantial award” of $25,000 was appropriate in the circumstances.
Conclusion
The Collett decision is instructive of the type and quanta of damages recoverable in an action for copyright and moral rights infringement. Statutory damages eliminate the difficult task of establishing the actual damages suffered by the plaintiff and are particularly useful where the value of each work is small or the amount of loss is otherwise difficult to quantify (as is in the case of uncooperative defendants). Damages for moral rights infringement and punitive damages may also be recoverable where the infringing activity violates the integrity of the work and where the defendant’s infringing conduct is sufficiently egregious to warrant further denunciation and retribution.
ABOUT THE AUTHOR
Jennie Yum is a Staff Lawyer at Blake, Cassels & Graydon LLP
Any article or other information or content expressed or made available in this Section, is that of the respective author and not of the OBA.
[1] Telewizja Polsat SA v Radiopol Inc, 2006 FC 284 at para 37.
[2] For copyright infringement in the commercial context, subsection 38.1(1) establishes a range for statutory damages of between $500 and $20,000 per work infringed.
[3] Megan Lorenz v Northland Art Company Canada Inc. et al, T-376-17.
[4] Whiten v Pilot Insurance, 2002 SCC 18 at para 123.
[5] At para 27, the factors were: whether the conduct was planned and deliberate, intent and motive of the defendant, whether the conduct persisted over a lengthy period of time, whether the defendant concealed its misconduct, defendant’s awareness that what he or she was doing was wrong, and profit.