Messages

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Getty Images Letter Forum / Re: Canada and Copyright Trolls

« on: September 16, 2014, 02:49:06 PM »

I am a Canadian lawyer who posts on this site from time to time.  I have  passing interest in intellectual property and trademark infringement. I was approached by an  acquaintance who received a demand letter from one of the Canadian photo repositories.  I have used this blog extensively to educate myself along with traditional legal sources to respond to the demands.  The matter is  ongoing.  However, generally speaking I have focused on the following issues which I have found interesting in challenging the demands made

license agreement itself and language used - consider whether agreement uses proper language that allows rights to be asserted - some of the older agreements do not and there is case law in Canada that  requires the agreement  to be clear in its language especially where the agreement purportedly relied upon is drafted by the party asserting the right

whether dual copyright exists - interesting issue of whether two legal entities can claim the same copyright - this site references situations where the lead repository sub licenses to a third party and both claim copyright of the same image with actual copyright claims on the image

quantum of damages - note that the repository often provides discounts that call into question what the value of  the alleged loss actually is - an arguable point
limitation period - I find it odd that the repository has access to webcrawler software that identifies alleged infringers and the demand is often made into alleged infringement  year 3 - is the repository sitting on the claim for 3 years to  maximize the demand? there may be an argument  made that the repository must act upon knowledge and not allow time to run before claiming

check the federal court dockets in Canada and determine infringement suits that are being filed - there are not many

it is possible to file suit in provincial and supreme courts in each province but again there are not many

copyright law recently changed in the last year that softened the blow of an infringement where done without intention vis a vis available damages such that a repository may not be inclined to pursue minor infringements

more interesting is how to deal with court costs issues even where an unintentional infringement is made out - there are few reported decisions that  I have been able to find - if the repository bullies an alleged infringer into court who makes a reasonable offer on an unintentional infringement but which offer is refused, how would a court view the matter?  costs are always discretionary and my gut feeling is that the repository is  not going to receive much sympathy in pursuing minor infringements in court

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Getty Images Letter Forum / Re: I am a frustrated and sick to my stomach Canadian!! Help!!!!

« on: May 21, 2014, 02:29:16 AM »

if in Canada brief summary of copyright law

limitation period is 3 years from date alleged infringement discovered or owner should have discovered
owner can elect statutory or actual damages
must  prove actual damages - ie what a customer would pay to license the image usually what the website pricing shows and I question whether available promotions and discounts that are always shown should be considered
if statutory damages unless infringement is wilful, statutory damages were significantly reduced in 2011 amendments to the copyright act so that a court may award a minimum of I believe of $200 per image where non commercial use made of the image and infringement not  wilful
there is no need to register copyright in Canada to take advantage of statutory remedies like in the US
however, an owner can more easily prove ownership if the image has been registered with the  proper government office here
real issue is firstly if owner can prove ownership and that is done by stock companies usually taking written assignments
this is where some of the stock companies got into trouble as their  assignment agreements were declared invalid by the courts
in order to have standing in a Canadian court to sue the  stock company must have exclusive ownership and their problems arise  where they pick and choose from the bundle of rights of ownership ie stock company says we have copyright and IF we need to sue you the original owner agree to give us the  right to sue on your behalf
the courts had a problem with that here in Canada
see Master File 2002 decision of the Federal Court that declared assignment invalid
Master File in response changed the language of its assignments as I understand

makes for interesting reading as portions of artist agreements are reproduced

http://www.canlii.org/en/ca/fct/doc/2001/2001fct1416/2001fct1416.html?searchUrlHash=AAAAAQAYbWFzdGVyZmlsZSBhbmQgaW50ZXJuZXR0AAAAAAE
 
I like most feel that the  current system is broken in that the threat of litigation in this  area causes stress and often payment without ensuring the owner is actually entitled as it is confusing and the law is very relevant in that  it requires verification of ownership whether actual or by way of proper assignment and there are damages to be considered and whether  an alleged inf ringer has legal defenses such as fair use which is not  dissimilar to  the US experience.

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Getty Images Letter Forum / Re: copyright legal issues mitigation and dual copyright

« on: May 20, 2014, 07:50:15 PM »

and if and when MF proceeds to suit the discovery process will require MF to disclose this information if mitigation is pleaded as one aspect of any number of defences - realizing that MF will not want the process to get that far.  Often a game of chicken

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Getty Images Letter Forum / Re: copyright legal issues mitigation and dual copyright

« on: May 18, 2014, 06:45:09 PM »

Regarding mitigation the standard is knew or ought to have reasonably known.  I am curious how stock companies using picscout software that is scouring the internet 24 hours a day seem to always take 3 years to locate an alleged infringement. Seems that the ought to have known standard is applicable given that the very tools the stock companies use to locate these images should allow them to find the alleged infringing images "faster"

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Getty Images Letter Forum / copyright legal issues mitigation and dual copyright

« on: May 18, 2014, 03:06:04 AM »

Mitigation

appears stock companies sit on alleged infringements after finding them using webcrawler technology and then send demands to maximize profits ie would not be profitable to send letter after one week of infringement.  Standard of discovery is knew or ought to have known of the infringement - sitting on the claim for years may be a lack of mitigation reducing potential damages.  Stock companies have access to this technology so I do not buy that it takes them 3 or more years to find an image and would be interested in obtaining documents during a lawsuit if mitigation was raised as an issue against the stock company - comments?


Dual copyright

secondly is the dual copyright that has been raised in a few places in this forum - for example stock company A and  stock company B e have apparently a sublicensee relationship where stock company B purports to license their copyright to stock company A - stock company A identifies photo as it having copyright so that  the result is 2 different companies both claiming  copyright.  Company B sends demand  for alleged infringement and response is prove your ownership and disprove Company A's alleged ownership as one copyright cannot exclusively belong to 2 different entities unless there is joint ownership of the copyright. comments?

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Getty Images Letter Forum / Re: A Masterfile Demand Letter Story

« on: May 02, 2014, 09:09:52 AM »

observations from Canada

interesting points

MF inadvertantly allows its sub-licensees to exhibit images with their own copyright, referring to MF using the word "Agency"

A sub-licensee is not an agent

MF cannot assert exclusive copyright where 2 legal entities claim copyright separately and therefor cannot maintain an action

Damages - MF claims typically 3 years (limitation period) - should MF not be held to a higher standard of due diligence ie it has access to the  webcrawler software that monitors the internet 24 hours a day - how is it that alleged infringements come to its attention only after 3 years

Damages - coupons are shows on its site allowing 20-30% discounts - is not after  discount pricing its true measure of damages if all other elements proven

Random points for consideration