2016 QCCQ 2735, 2016 QCCQ 2735

Chung c. Brandy Melville Canada Ltd. 2016 QCCQ 2735 COURT OF QUEBEC Small Claims Division CANADA PROVINCE OF QUEBEC DISTRICT OF MONTREAL Civil Division N°: 500-32-141688-145 DATE: April 14, 2016 ______________________________________________________________________ BY THE HONOURABLE VINCENZO PIAZZA, J.C.Q. ______________________________________________________________________ EDMOND CHUNG Plaintiff v. BRANDY MELVILLE CANADA LTD. Defendant ______________________________________________________________________ JUDGMENT ______________________________________________________________________ [ 1 ] Mr.

Chung, a professional photographer, claims $5,000.00 from Brandy Melville Canada Ltd. (“Brandy”) as compensation for the unauthorized promotional use by the latter of a photograph taken by Mr. Chung to which he claims exclusive copyright. [ 2 ] Mr. Chung produced a Facebook conversation he had on July 24, 2013, with Catherine Moisan, who is the model appearing in the photograph and was Brandy’s employee at the time (she no longer is) [1] . [ 3 ] In this conversation, Mr. Chung agreed to do a photo shoot of Brandy’s clothing modeled by Ms. Moisan. It is clear that he was not to get paid for these services. Ms.

Moisan stated in this conversation that not much editing was required on the part of Mr. Chung as the pictures were intended to be used on Instagram. [ 4 ] In this conversation, Mr. Chung expressed his intention to send “a bunch” of the pictures resulting from the shoot to Brandy’s management in Canada and the United States, hoping to “land some in a magazine, catalog or look book”. [ 5 ] Although she said that Mr. Chung’s name could not appear on the photographs on Instagram, because the clothes needed to be the only focus, thereby increasing the chances of the photographs being reposted, Ms.

Moisan promised that Mr. Chung would be credited by being “tagged” on all posts. Mr. Chung accepted this modus operandi for Instagram, since the pictures on this website are rather small and of poor quality, but he insisted that his name appear on any photograph posted on Facebook. [ 6 ] In August 2013, Mr. Chung found out that one of the pictures he had taken of Ms. Moisan had been formatted and incorporated into a promotional postcard which was being stapled to Brandy’s shopping bags in Montreal. [ 7 ] On August 22, 2013, Mr.

Chung sent a demand letter to Brandy, in which he proposed a settlement of what he considered an infringement of his copyright and moral rights to the photograph. Having received no reply, he sent a second demand letter, on December 19, 2013, claiming $5,000.00 for copyright infringement of the picture featured on Brandy’s Montreal shopping bags for the fall / winter season. [ 8 ] In its plea, Brandy alleges that it was given the photograph by Ms. Moisan, the model appearing therein. Brandy adds that the photograph was taken from Instagram and was not watermarked [2] .

It also claims that there was no evidence that the photograph was taken by Mr. Chung. [ 9 ] Mr. Chung says that there is no watermark in the picture as a result of the direct requirement to that effect by Ms. Moisan in view of its posting on Instagram [3] . ANALYSIS [ 10 ] At trial, Brandy’s representative testified that the Instagram rules and regulations are such that anyone who authorizes anything to be posted on this website ipso facto loses all intellectual property rights that they may have had as regards the object of said post.

However, this has not been proven, as these rules and regulations were not produced into the Court record. [ 11 ] This representative also testified that Ms. Moisan never was the social media manager for Brandy. In a document appended to its plea, Brandy mentions that “we had an arrangement with Catherine to take pictures for us and provide us with pictures, therefore giving us the rights to do whatever we wish with the photographs.” [ 12 ] It was also established at trial that Brandy’s current social media manager was already in function in July 2013.

However, she was not called as a witness by Brandy, nor was Ms. Moisan.

[ 13 ] The person to whom the photographs of the July 24 shoot were sent by Ms. Moisan is Melissa Belding, Brandy’s former Operations manager. Mr. Chung’s second demand letter of December 2013 was addressed to her office in Toronto. Like Ms. Moisan and Brandy’s social media manager, Ms. Belding was not called to testify. [ 14 ] In fact, although one of them used to work with Ms. Moisan at Brandy’s store in Montreal, the two representatives of Brandy heard at trial have no personal knowledge of what was discussed and agreed to between Ms. Moisan and Mr. Chung in July 2013. [ 15 ] The applicable legislative provisions read as follows: Copyright Act [4]

Definitions 2 In this Act, (…) artistic work includes paintings, drawings, maps, charts, plans, photographs , engravings, sculptures, works of artistic craftsmanship, architectural works, and compilations of artistic works; (…) copyright means the rights described in (

a) section 3, in the case of a work, (…) infringing means (

a) in relation to a work in which copyright subsists, any copy , including any colourable imitation, made or dealt with in contravention of this Act , (…) moral rights means the rights described in subsections 14.1(1) and 17.1(1); (…) photograph includes photo-lithograph and any work expressed by any process analogous to photography; (…) 2.2

(1) For the purposes of this Act, publication means (

a) in relation to works, (

i) making copies of a work available to the public, (…) Copyright and Moral Rights in Works 3

(1) For the purposes of this Act, copyright , in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever (…) and to authorize any such acts . (…) Term of copyright 6 The term for which copyright shall subsist shall, except as otherwise expressly provided by this Act, be the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year. Ownership of copyright 13

(1) Subject to this Act, the author of a work shall be the first owner of the copyright therein.

(…) Assignments and licences

(4) The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector of the market or other limitations relating to the scope of the assignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by licence, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made , or by the owner’s duly authorized agent. (…) Moral rights 14.1

(1) The author of a work has , subject to

section 28.2, the right to the integrity of the work and, in connection with

an act mentioned in

section 3, the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym and the right to remain anonymous. No assignment of moral rights

(2) Moral rights may not be assigned but may be waived in whole or in part . No waiver by assignment

(3) An assignment of copyright in a work does not by that act alone constitute a waiver of any moral rights . (…) Infringement generally 27

(1) It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do . Secondary infringement

(2) It is an infringement of copyright for any person to (

a) sell or rent out, (

b) distribute to such an extent as to affect prejudicially the owner of the copyright, (

c) by way of trade distribute , expose or offer for sale or rental, or exhibit in public, (

d) possess for the purpose of doing anything referred to in paragraphs (

a) to (c) , or (

e) import into Canada for the purpose of doing anything referred to in paragraphs (

a) to (c), a copy of a work , sound recording or fixation of a performer’s performance or of a communication signal that the person knows or should have known infringes copyright or would infringe copyright if it had been made in Canada by the person who made it. (…) Moral Rights Infringement Infringement generally 28.1 Any act or omission that is contrary to any of the moral rights of the author of a work or of the performer of a performer’s performance is, in the absence of the author’s or performer’s consent, an infringement of those rights . Nature of right of integrity 28.2

(1) The author’s or performer’s right to the integrity of a work or performer’s performance is infringed only if the work or the performance is, to the prejudice of its author’s or performer’s honour or reputation , (

a) distorted, mutilated or otherwise modified; or (

b) used in association with a product, service, cause or institution. (…)

PART IV Remedies Civil Remedies Infringement of Copyright and Moral Rights Copyright 34

(1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages , accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right. Moral rights

(2) In any proceedings for an infringement of moral rights, the court may grant to the holder of those rights all remedies by way of injunction, damages , accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right. (…) Presumptions respecting copyright and ownership 34.1

(1) In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it , (

a) copyright shall be presumed, unless the contrary is proved, to subsist in the work , performer’s performance, sound recording or communication signal, as the case may be; and (

b) the author , performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright . (…) Statutory damages 38.1

(1) Subject to this section, a copyright owner may elect, at any time before final judgment is rendered, to recover, instead of damages and profits referred to in subsection 35(1), an award of statutory damages for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, (

a) in a sum of not less than $500 and not more than $20,000 that the court considers just, with respect to all infringements involved in the proceedings for each work or other subject-matter, if the infringements are for commercial purposes ; and (…) Factors to consider

(5) In exercising its discretion under subsections (1) to (4), the court shall consider all relevant factors, including (

a) the good faith or bad faith of the defendant ; (

b) the conduct of the parties before and during the proceedings ; (

c) the need to deter other infringements of the copyright in question; (…) Exemplary or punitive damages not affected

(7) An election under subsection (1) does not affect any right that the copyright owner may have to exemplary or punitive damages . [Emphasis by the Court.] [ 16 ] In view of the evidence adduced at trial, it is obvious that Mr. Chung is the author of the picture used commercially by Brandy and that he did not authorize such use. Brandy has not rebutted the presumption set out in

section 34.1 of the Copyright Act (the “Act”). [ 17 ] Several provisions of the Act prohibit this unauthorized use of Mr. Chung’s work and confer protection to the author while exposing the contravener to severe sanctions.

[ 18 ] The reproduction and distribution by Brandy of Mr. Chung’s work constitute a blatant infringement of Mr. Chung’s copyright within the meaning of

section 27 of the Act . Failure by Brandy to credit him as the author of the photograph also constitutes a violation of his moral rights guaranteed by

section 14.1 of the Act . However, the fact that the picture on the postcard appears in “broken segments” does not, contrary to what Mr. Chung wrote in his second demand letter, absent proof that this caused prejudice to his honour or reputation. [ 19 ] Brandy’s statement that there was no evidence that the photograph was taken by Mr. Chung is contradicted by the documents it produced in support of its own contestation. In the email Ms. Moisan sent to Ms.

Belding along with the photographs taken on July 24, 2013, it is written “Here are the pictures Edmond sent us after the shoot.” [ 20 ] In accordance with paragraph 13(1) of the Copyright Act , Mr. Chung had specifically limited Brandy’s right to use the photo in respect of media, to wit, Instagram only and, on the condition that his name be mentioned as the author, Facebook. Any other use by Brandy required a license in writing signed by Mr. Chung. [ 21 ] Brandy’s statement that its arrangement with Ms. Moisan carried the right to do whatever it wished with the pictures taken by Mr.

Chung is in manifest violation of the letter and spirit of the Act . Furthermore, Mr. Chung is not a party to that “arrangement” and it is therefore not opposable to him [5] . [ 22 ] Brandy must have known that Ms. Moisan had not taken these pictures herself. Therefore, unless Brandy assumed that with her salary of $10.55 per hour [6] , Ms.

Moisan had obtained, on its behalf, a universal, unrestricted and unlimited license to use in any way it deemed appropriate all the pictures of her that she brought it in the course of her employment, Brandy knew that the author of the pictures – which obviously were originals, and of professional quality – was not getting paid. This is, at the very best, extremely poor judgment, and at worst, a total lack of consideration for the rights of the author of the pictures. [ 23 ] The Court must now determine, in its discretion, whether the amount claimed by Mr. Chung should be granted in whole or in part.

On this, the Court takes note of the following elements: 23.1. Before the proceedings were filed, Brandy neglected to respond to Mr. Chung’s demand letters not once, but twice. 23.2. In its proceedings, Brandy maintained that it had no contract with Mr. Chung, and that it was free to use his work as it saw fit – which is an oxymoronic proposition. 23.3. At trial, Brandy denied the existence of any copyright, alleging in support of this position the Instagram rules and regulations and its so-called arrangement with Ms. Moisan. 23.4. Brandy used Mr.

Chung’s work in a commercial context and with a view to making profit. 23.5. Mr. Chung is a professional photographer. Taking pictures for clients such as Brandy is what he does for a living. 23.6. Among Mr. Chung’s motivations to grant a limited license for the use of his work on Instagram, there was, precisely, the possibility to enter into further ventures with Brandy and to “land” his photographs in other publications or formats of the latter, against remuneration. [ 24 ] Mr. Chung has not specified, in his introductory motion, whether he was seeking punitive or compensatory damages.

Also, no proof was made of the profit that Brandy generated by using Mr. Chung’s work, nor as to what the market rate was in 2013 for pictures such as the one that Brandy used on its shopping bags. [ 25 ] On its part, it should be noted that Brandy has not contested the quantum of Mr. Chung’s claim. [ 26 ] This said, as appears from the provisions of the Act , Mr.

Chung could have opted for statutory damages, in which case he would have automatically been awarded $500.00, had Brandy’s violation of the Act been of the least serious nature imaginable, and $20,000.00 if it had been the gravest possible – all without having to prove that he actually suffered any damages or that Brandy benefited in any way from the illegal use of his work. [ 27 ] Here, the Court considers that Brandy’s behaviour lies somewhere between these two extremes. It is clear to the Court, though, that this behaviour is tantamount to unlawful and intentional interference [7] with Mr.

Chung’s rights under both the Act and the Charter of Human Rights and Freedoms [8] , thus giving rise to a condemnation for punitive damages. [ 28 ] Considering that in copyright cases in Canada, an award of punitive damages alone varies from $5,000 to $200,000 [9] , the Court considers that Mr. Chung’s claim is not unreasonable . FOR THESE REASONS, THE COURT: GRANTS the action; CONDEMNS Brandy Melville Canada Ltd. to pay $5,000.00 to Edmond Chung, with interest at the legal rate, plus the additional indemnity provided by law, to accrue from February 6, 2014; WITH COSTS in the amount of $169.00.

__________________________________ VINCENZO PIAZZA, j.c.q. Date of hearing: April 11, 2016 [2] Digital watermark : a piece of electronic information that is put into a computer file and that cannot be removed, showing who created or owns the file: In order to view a digital watermark, you need a special program that can extract the watermark data. (Definition from the Cambridge Business English Dictionary © Cambridge University Press) h ttp://dictionary.cambridge.org/dictionary/english/digital-watermark