Labrecque c. Trudel – The Tale of a Copyright Infringement Action Gone Wrong

In Canada, a copyright infringement action may be brought before either the Federal Court or the Superior Court of a province. The Federal Court is generally favoured by litigants given its experience with copyright law. The Superior Court of Quebec’s decision in Labrecque (O Sauna) c. Trudel (Centre Bellaza, s.e.n.c.) exemplifies why that is, and also why it is prudent to assure that your lawyer is up on his or her copyright law. 

One of the photos in question

Plaintiff, a sauna manufacturer and distributer, entered into negotiations with Defendant who was seeking to purchase a sauna for a beauty/wellness center (which ultimately never opened). The deal went sour and resulted in litigation. Defendant had registered a domain name where it posted images of saunas belonging to Plaintiff; Plaintiff was posing in the photos (pictured to the left). Defendant found the images in a Google image search.

Plaintiff sued Defendant asking for $1,500 in compensatory damages and $5,500 in punitive damages. The claim was based on provisions of the Quebec Charter of Human Rights and Freedoms (Quebec Charter) and Civil Code of Quebec (C.c.Q.) dealing with the right to privacy:

Article 5 – Quebec Charter

 “Every person has a right to respect for his private life”

Article 35 C.c.Q.

 

Every person has a right to the respect of his reputation and privacy.

No one may invade the privacy of a person without the consent of the person unless authorized

by law.

Article 36 C.c.Q.

 The following acts, in particular, may be considered as invasions of the privacy of a person: 

…

(5) Using his name, image, likeness or voice for a purpose other than the legitimate information of the public.”

Gervais J. did not accept Plaintiff’s arguments based on these provisions. He found that since Plaintiff posted the images online herself, they could hardly be considered “private”. The Court did find that Defendant infringed Plaintiff’s copyright. 

In addition to more minor errors, such as equivocating between a domain name registrar and internet service provider (para. 22), or imputing a Canadian citizenship requirement for an author’s work to be protected in Canada (para. 44), the Court conflated the legal analysis for calculating damages and accounting of profits. Of course, none of this mattered in the end as the Court decided to, seemingly arbitrarily, award Plaintiff $400 in damages without justifying that calculation. The Court also cited repealed provisions of the Copyright Act (“Act”) to determine whether Plaintiff actually owned rights in the photographs, though Gervais J. did acknowledge his awareness that the provisions had been repealed. 

Since Defendant never launched a business, Plaintiff was unable to prove that it suffered losses resulting from the infringement. This would have been a perfect occasion for Plaintiff to take advantage of the Act’s new statutory damage provisions. Since these were arguably “commercial” infringements, Plaintiff would have been awarded $500-$20,000 per image, at the court’s discretion (s. 38.1(1)(a)). Electing statutory damages would also not have prevented Plaintiff from seeking punitive damages (s. 38.1(7)), though none appear to be merited in this case. 

Counsel for Plaintiff also curiously failed to ask the Court for an injunction forcing Respondent to remove the images from the website. This would have been appropriate given that Plaintiff only found out about the images from other customers asking whether Plaintiff was affiliated with the website. Plaintiff has an interest in ending that confusion.

This appears to be a case in which nearly everything that could go wrong did. While the Court rightly found that Defendant infringed Plaintiff’s copyright, the $400 damage award was entirely baseless. Gervais J. noted that Plaintiff did not prove that it suffered any damages or that Defendant made any profits. However, he states that even though he could find no quantifiable harm, the jurisprudence gives judges broad discretion on whether and how much to award a successful party in a copyright claim. Gervais J. fails to cite any authority for this statement. Upon a finding of infringement, the court does not have any discretion to refuse proven damages. Accounting of profits is an equitable remedy and it is therefore at the court’s discretion whether it should be granted; but once the court decides to allow an accounting, the manner in which the accounts are calculated should not be seen as discretionary. 

Counsel for Plaintiff’s reliance on Article 5 of the Quebec Charter and Articles 35-36 C.c.Q. was misguided. As Gervais J. rightly pointed out, the right to privacy under Article 35 C.c.Q. and Article 5 of the Quebec Charter cannot be engaged when the information (or in this case image) is already in the public domain. This is consistent with the Supreme Court of Canada’s 2004 decision in Gilles E. Néron Communication Marketing Inc. v. Chambre des notaires du Québec.

The Court found as a matter of fact that Defendant had no malicious intent in using Plaintiff’s images and that they were not trade competitors. The claim for punitive damages was therefore rightly recognized by the Court as unwarranted. 

Failing to ask for statutory damages was a major oversight. It was obvious that no real injury occurred. Since Defendant never launched a business, it is debatable whether it was truly a “commercial infringer”. In any event, Plaintiff would have been entitled to damages under s. 38.1(1) of the Act. 

By far the funniest paragraph in the decision (para. 22) is where Gervais J. relays Defendant’s testimony regarding its domain name registration. Defendant testified that since it signed a three-year contract with the “internet service provider”, it could not remove the content before that time was up. Such a counter-factual argument did not, however, noticeably diminish Defendant’s credibility with the Court considering Gervais J.’s low damage award.

Montreal Graffiti Artist Sues Radio-Canada For Breach Of Moral Rights

A Montreal graffiti artist named Alexandre Veilleux (a.k.a. Alex Scaner) is suing Radio-Canada, the CBC’s French language service, for $45,000 for breaching the moral rights in one of his tags. The tag in question features the words “30 VIES” (30 Lives) written in red paint. A Radio-Canada television show entitled 30 Vies uses an image of the tag in its opening credits.

The tag in question

Mr. Veilleux, who appears to be an internationally known graffiti artist, claims that Radio-Canada used the image without his consent. He contends that his moral rights have been infringed because the image was distorted or mutilated in such a way so as to cause damage to his honour or reputation.

The most interesting issue here is whether one can claim copyright infringement in a work that has been created in violation of the law. Mr. Veilleux did not get permission to tag the wall in question. The Copyright Act itself does not determine the subsistence of copyright based on whether the work was created legally or illegally; all that really matters is fixation and originality. There is, however, a long standing public policy rule in the Common Law that a person should not be allowed to profit from his or her own misdeed -nemo auditur propriam turpitudinem allegans. Under this principle, Veilleux should not be able to enforce the copyright in his work even if such copyright was valid and subsisting at the time of the alleged infringement. 

This would be a satisfactory analysis, except for the fact that Quebec is a Civil Law jurisdiction. Since Veilleux’s entitlement to compensation has to do with the law of remedies rather than copyright law, the Common Law should not apply in this case. The question then become whether the nemo auditur maxim applies in Quebec. The answer is yes and no.

A preliminary search of the case law shows applications of this principle both before and after the coming into force of the current Civil Code of Quebec (C.c.Q.). From my search, I was only able to find applications of this maxim in contractual matters where one party was prevented from receiving restitution when the contract was breached by the other party. In each of these cases, the moving party committed some act in bad faith to cause the breach entitling them to restitution. This is inspired by Article 1699 al. 2 C.c.Q.:

Art. 1699 - Restitution of prestations takes place where a person is bound by law to return to another person the property he has received, either unlawfully or in error, or under a juridical act which is subsequently annulled with retroactive effect or whose obligations become impossible to perform by reason of superior force.

The court may, exceptionally, refuse restitution where it would have the effect of according an undue advantage to one party, whether the debtor or the creditor, unless it considers it sufficient, in that case, to modify the scope or mode of the restitution instead.

Art. 1699 - La restitution des prestations a lieu chaque fois qu'une personne est, en vertu de la loi, tenue de rendre à une autre des biens qu'elle a reçus sans droit ou par erreur, ou encore en vertu d'un acte juridique qui est subséquemment anéanti de façon rétroactive ou dont les obligations deviennent impossibles à exécuter en raison d'une force majeure.

Le tribunal peut, exceptionnellement, refuser la restitution lorsqu'elle aurait pour effet d'accorder à l'une des parties, débiteur ou créancier, un avantage indu, à moins qu'il ne juge suffisant, dans ce cas, de modifier plutôt l'étendue ou les modalités de la restitution. (Emphasis added).

This Article is found in the part of the C.c.Q. dealing with obligations. It applies in two cases: 1) When an individual receives property to which he or she has no right; and 2) when a contract is “resolved” (“resolu”) - the parties are restored to their pre-contractual position as though the contract never happened. 

Copyright is a right in rem (note that Common Law and not Civilian principles of property law apply now because we are talking about copyright proper). Article 1699 C.c.Q. clearly does not apply in this case.

Given the opportunity, the Quebec Superior Court should take this chance to clarify whether the age old nemo auditor maxim applies to such cases in Quebec. Since Radio-Canada will likely submit case law from other Provinces showing application of this principle, it is an open question as to whether the courts in Quebec will choose to harmonize this point of law with the rest of the country or go its own route.