PARTY FACES COPYRIGHT INFRINGEMENT CHARGES

PARTY FACES COPYRIGHT INFRINGEMENT CHARGES AFTER HANDING
PHOTOGRAPHS OF AN ILLICIT NATURE TO THE AUTHORITIES
LAURENT CARRIÈRE AND JASON MOSCOVICI*
LEGER ROBIC RICHARD, LLP
LAWYERS, AND PATENT AND TRADE-MARK AGENTS
PRECIS: The Ontario Superior Court of Justice dismissed a motion for leave to appeal
concerning two orders made against plaintiffs to produce photographs in support of
their claim of copyright infringement.
In the matter of Wojtanowska v. Mustard [
brought
forward by the Ontario Superior Court of Justice, plaintiffs sought damages for
copyright infringement with regards to photographs that were given to defendant to be
developed and which were subsequently handed to the police authorities due to the
illicit nature of the subject matter depicted in the pictures.
The facts are as follows: plaintiffs delivered photographs to defendant, Black Photo
Corporation, to be developed. The photographs showed marijuana plants growing in
plaintiffs’ residence amongst other subject matter of a sensitive, intimate nature. The
defendant handed the photographs to the Peel county police and a search warrant
was obtained and executed the same day on June 14, 2001. The execution of the
search warrant resulted in the discovery and the seizure of the marijuana plants;
plaintiffs were subsequently charged and arrested. The charges against plaintiffs were
dropped after it was determined that the photos were seized under conditions violating
their constitutional rights and therefore the only evidence supporting the charges was
deemed inadmissible. The seized materials (the photographs) were ordered to be
returned to plaintiffs.
Plaintiffs issued a statement of claim naming defendant for alleged copyright
infringement for a total of $1,375,000 in damages and $85,694 in special damages.
They claimed that defendant breached their copyright in the photographs by using
them and by handing them to the police. An examination for discovery was held on
March 27 and 28, 2006 and plaintiffs undertook to provide the photographs for which
they were claiming copyright and for which they had sole possession of; however, due
© CIPS, 2009.
*
Lawyer and trade-mark agent, Laurent Carrière, is a senior partner with LEGER ROBIC RICHARD,
LLP a multidisciplinary firm of lawyers, and patent and trade-mark agents. Karine Jarry is an articling
student with the firm. Published at [2009-03-19] World Media Law Report. Publication 328.060.
2
to the sensitive, intimate nature of the photos, plaintiffs then refused to produce said
evidence. A motion was brought on June 26, 2008 by defendant that plaintiffs comply
with their undertakings and produce the litigious photographs. The judge held that
plaintiffs needed to provide the photographs as they had undertook; after which they
sought leave to appeal of the decision made on June 26th 2008, which is the subject
of this case review.
In order to obtain leave to appeal in Ontario, a plaintiff must meet the test set out in
rule 62.02 (4) of the Rules of Civil Procedure which can be read as follows:
“62.02 (4)
Grounds on which leave may be granted – Leave to appeal shall
not be granted unless,
(a) there is a conflicting decision by another judge or court in Ontario or
elsewhere on the matter involved in the proposed appeal and it is, in the
opinion of the judge hearing the motion, desirable that leave to appeal
be granted; or
(b) there appears to be the judge hearing the motion good reason to doubt
the correctness of the order in question and the proposed appeal
involves matters of such importance that, in his or her opinion, leave to
appeal should be granted.”
The Court found that plaintiffs were not able to meet either of the criteria found under
62.02 (4). Concerning criteria (a), plaintiff brought forward jurisprudence concerning
the use of detained original materials which was quickly distinguished by the Court as
there is a difference between original materials held by the police and original
materials held by a plaintiff. The original materials in this case were photographs
which were created by the plaintiffs and that were no longer held by the authorities.
Analysis of plaintiffs’ arguments under criteria (b), that the photos dealt with sensitive
matters and were therefore of importance to them, was also not considered since it
was logically found that plaintiffs, having sued for use of the photographs by
defendant, could not then refuse to produce said photos to defendants for
assessment. While it was obvious that plaintiffs were sensitive about others seeing
their photographs, defendant can only properly analyse the case against them by
viewing and reviewing the pictures.
It was found that plaintiffs’ appeal was without merit and costs were awarded against
them for a total of $12,000; with $6,000$ being deferred until trial or settlement with
respect to the initial question of copyright infringement.
3
ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué
depuis 1892 à la protection et à la valorisation de la propriété intellectuelle dans tous
les domaines: brevets, dessins industriels et modèles utilitaires; marques de
commerce, marques de certification et appellations d'origine; droits d'auteur, propriété
littéraire et artistique, droits voisins et de l'artiste interprète; informatique, logiciels et
circuits intégrés; biotechnologies, pharmaceutiques et obtentions végétales; secrets
de commerce, know-howet concurrence; licences, franchises et transferts de
technologies; commerce électronique, distribution et droit des affaires; marquage,
publicité et étiquetage; poursuite, litige et arbitrage; vérification diligente et audit.
ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892
to the protection and the valorization of all fields of intellectual property: patents,
industrial designs and utility patents; trademarks, certification marks and indications of
origin; copyright and entertainment law, artists and performers, neighbouring rights;
computer, software and integrated circuits; biotechnologies, pharmaceuticals and
plant breeders; trade secrets, know-how, competition and anti-trust; licensing,
franchising and technology transfers; e-commerce, distribution and business law;
marketing, publicity and labelling; prosecution litigation and arbitration; due diligence.
COPYRIGHTER
IDEAS LIVE HERE
IL A TOUT DE MÊME FALLU L'INVENTER!
LA MAÎTRISE DES INTANGIBLES
LEGER ROBIC RICHARD
NOS FENÊTRES GRANDES OUVERTES SUR LE MONDE DES AFFAIRES
PATENTER
R
ROBIC
ROBIC + DROIT +AFFAIRES +SCIENCES +ARTS
ROBIC ++++
ROBIC +LAW +BUSINESS +SCIENCE +ART
THE TRADEMARKER GROUP
TRADEMARKER
VOS IDÉES À LA PORTÉE DU MONDE , DES AFFAIRES À LA GRANDEUR DE LA
PLANÈTE
YOUR BUSINESS IS THE WORLD OF IDEAS; OUR BUSINESS BRINGS YOUR
IDEAS TO THE WORLD
Trade-marks of LEGER ROBIC RICHARD, LLP ("ROBIC")
4