Proving chain of title to a work is essential for any party wishing to assert copyright infringement. However, this is not always easy, given that the author of the work is not required to register its copyright to acquire the protection by copyright law, provided that the author is Canadian or a citizen of any of the signatory countries to the Berne Convention for the Protection of Literary and Artistic Works of September 9, 1886. Further, in any civil proceeding in which a defendant puts in issue either the existence of copyright or the title of the plaintiff to it, the author shall be presumed to be the owner of the copyright unless the contrary is proven. Given that copyright exists from the moment the original work is created and that the title of ownership may easily be passed around since its existence, it is important to keep a robust documentation of the chain of title of a work.
In the recent decision Lickerish, Ltd v Airg Inc, a copyright infringement action regarding the unauthorized use of two photographs of a celebrity on the defendant’s website, the Federal Court found that the would-be plaintiff did not have standing to bring the copyright infringement action, given that it was unable to prove its ownership to the asserted copyright to the photographs. This is an interesting case because it speaks to (1) the insufficiency of uncertified foreign certificates of registration of copyright as evidence of ownership, and (2) the use of screen captures as evidence of copyright infringement.
The plaintiff, a photographic syndication agency, alleged that it entered into an exclusive agency contract with the purported author of the photographs and put into evidence, through the affidavit of a director of the plaintiff, notably (1) the Certificate of Registration issued by the United States Copyright Office in relation to the photographs, listing the photographer as the author and copyright claimant and the plaintiff as having “rights and permissions” and (2) the exclusive agency agreement with the photographer. The plaintiff argues that the photographer is owner of copyright to the photographs and that the foreign certificate of registration of copyright is evidence that copyright subsists and that the person registered is the owner of that copyright, even in Canada.
The key issue in this decision was whether the evidence tendered by the plaintiff to prove ownership of copyright and ultimately standing to assert copyright infringement was sufficient. In its decision, the Court dealt carefully with each piece of evidence.
First, the Court found that the affidavit contained elements of hearsay with regard to the photographer’s photoshoot of the celebrity, and therefore any evidence of the photographer taking photographs was inadmissible. It also drew a negative inference against the plaintiff due to the absence of evidence from the photographer, the purported author who logically should have been called as an affiant. With regard to the uncertified copy of the Certificate of Registration exhibited to the affidavit, the Court held that the director did not have personal knowledge of the actual application for registration with the United States Copyright Office and the issuance of Certificate or Registration, he did not make the copy of the Certificate exhibited, nor did he compare the copy to the version provided by a third party that actually filed the application. The plaintiff therefore did not meet its burden to prove the authenticity of the Certificate. The Court added that even if the document was admissible, a Certificate of Registration issued by the United States Copyright Office does not constitute prima facie proof of the existence of the photographer’s copyright in the photographs pursuant to section 53(2) of the Copyright Act.
The Court concluded that there was insufficient evidence that the photographer was the owner of the copyright in the photographs. The Court’s analysis considered the possibility that even if the photographer was the owner of the copyright, it was not satisfied of the authenticity of the exclusive agency agreement with the photographer exhibited to the affidavit. Therefore, the plaintiff still did not have any standing to assert copyright infringement.
Finally, the screen captures of the alleged infringement, tendered through the affidavit, were not made by the director himself, who had never visited the defendant’s website. The evidence was therefore considered hearsay and could not be saved by the statutory presumption of the Canada Evidence Act, because they were not taken by a party adverse in interest to the plaintiff.
This decision shows that foreign certificates of registration of copyright may not suffice to prove that copyright subsists in Canada. It also provides a rigorous analysis of the use of screen captures as evidence and may be of interest to those who employ third-party investigators to preserve screen captures as evidence for infringement cases.
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 Section 5(1) of the Copyright Act, RSC, 1985, c C-42.
 Section 34.1(1)(b) of the Copyright Act.
 Lickerish, Ltd v Airg Inc, 2020 FC 1128.
 Ibid, at para 21.
 Ibid, at para 29.
 Ibid, at Para 30.
 Ibid, at Para 39
 Section 31.3(b) of the Canada Evidence Act, RSC, 1985, c C-5.
Amy Tang is an associate with the Intellectual Property group. She advises and represents clients in connection with intellectual property disputes and drafts proceedings related to copyright, trademark, patent and trade secrets.