Tylor v Sevin
[2014] FCCA 445
•26 February 2014
FEDERAL CIRCUIT COURT OF AUSTRALIA
| TYLOR v SEVIN | [2014] FCCA 445 |
| Catchwords: COPYRIGHT – Photography – whether respondent had adequate notice of hearing – where respondent utilised applicant’s photo on her website without licence of respondent – whether copyright subsisted in photograph – whether applicant owned copyright in photograph – whether respondent infringed applicant’s copyright through use of photo – whether infringement ‘flagrant’ – whether photograph used without licence in knowledge of respondent – whether photograph used without making inquiry as to the authorship of , or ownership of the copyright in the photograph – whether photograph used in reckless disregard of copyright – whether respondent failed to make inquiries in order to avoid paying licence fees for use of photograph in marketing and advertising business – whether respondent obtained commercial or other benefit through use of photograph – assessment of damages. |
| Legislation: Copyright Act 1968 (Cth), s.115 |
| Allam v Aristocrat Technologies Australia Pty Ltd; Global Gaming Supplies Pty Ltd v Aristrocrat Technologies Australia Pty Ltd (2012) 95 IPR 242 Aristocrat Technologies Australia Pty Limited v DAP Services (Kempsey) Pty Ltd (in liq) (2007) 157 FCR 564 Microsoft Corporation & Ors v Tram [2010] FMCA 480 APRA Ltd v Riceboy Pty Ltd & Anor [2011] FMCA 942 Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 157 FCR 442 |
| Applicant: | VINCENT KHOURY TYLOR |
| Respondent: | SERPIL AYDOGAN SEVIN |
| File Number: | SYG 2462 of 2013 |
| Judgment of: | Judge Raphael |
| Hearing date: | 26 February 2014 |
| Date of Last Submission: | 26 February 2014 |
| Delivered at: | Sydney |
| Delivered on: | 26 February 2014 |
REPRESENTATION
| Solicitors for the Applicant: | Banki Haddock Fiora |
| For the Respondent: | No appearance |
ORDERS
The Respondent pay damages to the Applicant under s.115(2) of the Copyright Act 1968 (Cth) (the Act) in the sum of US$1,850.00.
The Respondent pay damages to the Applicant under s.115(4) of the Act in the sum of AUD$12,500.00.
The Respondent pay the Applicant’s costs assessed in the sum of AUD$9,500.00.
The Respondent be permanently restrained from:
(a)reproducing the artistic work Waikiki-Pink Boat – Original Version (Work);
(b)communicating the Work to the public;
(c)authorising reproduction of the Work;
(d)authorising the communication of the Work to the public;
(e)selling, letting for hire, or by way of trade offering or exposing for sale or hire, an article that is a reproduction in a material form of the Work the making of which the Respondent knows, or ought reasonably to know, constituted an infringement of the copyright in any of the Work (or, in the case of an imported article, would, if the article had been made in Australia by the importer, have constituted such an infringement);
(f)by way of trade exhibiting an article in public that is a reproduction in a material form of the Work the making of which the Respondent knows, or ought reasonably to know, constituted an infringement of the copyright in any of the Work;
(g)distributing any article:
(i)for the purpose of trade; or
(ii)for any other purpose to an extent that affects prejudicially the Applicant
that is a reproduction in a material form of the Work.
The Respondent causes to be deleted from her website, including all archives, backups and other forms of storage, reproductions of the Work.
The Respondent pay interest on the damages under s.115(2) of the Act at the Federal Court rate from 24 April 2013 to 26 February 2014, calculated in the sum of US$104.83.
The Respondent pay interest on the damages under s.115(4) of the Act at the Federal Court rate from 24 April 2013 to 26 February 2014, calculated in the sum of AUD$708.31.
| FEDERAL CIRCUIT COURT AT SYDNEY |
SYG 2462 of 2013
| VINCENT KHOURY TYLOR |
Applicant
And
| SERPIL AYDOGAN SEVIN |
Respondent
REASONS FOR JUDGMENT
There comes before me today an application for ex parte judgment against the respondent, Ms Serpil Aydogan Sevin. I am satisfied from the evidence contained in the affidavit of William Peter Knight, sworn on 26 February 2014, that Ms Sevin has had adequate notice of this hearing and has not deigned to attend the Court either to offer a defence or some form of mitigation of the matters in respect of which these proceedings have been commenced against her. This Court has power to deal with a matter in this way under Division 13 of the Federal Circuit Court Rules2001 (Cth), and in particular Rule 13.07.
The dispute is an important and interesting one. The plaintiff, Mr Tylor, is an American photographer. In his affidavit sworn on 30 September 2013 and filed in this Court on 11 October 2013, he deposes to the fact that he lives in the state of Hawaii where he runs a business of taking, selling and licensing what are known as stock photos. Stock photos are photographs of scenes which can be used in a generic form by illustrators. They can be used in advertisements, on websites, or as part of a business’ brochures whenever there is a need to have an illustration but no wish to expend the money involved in arranging a professional shoot.
Many photographic libraries purchase and then license stock photographs. One of the most well known is a company called Getty Images, which has offices both in the United States of America and Australia. Another is Australian Associated Press. Mr Tylor operates his own small business of licensing the stock photographs that he takes, and, so it would appear from his advertisement, he is successful in this endeavour.
The evidence is not only from Mr Tylor but also from the expert, Mr Christopher Alexander Shain, who swore an affidavit on 14 October 2013. His evidence is that the advent of the internet and, in particular, the major search engines, has caused some serious problems with the use of stock images. They have become picked up from a site where they appear and where an appropriate licence fee has been paid, and transferred to sites where no licence fee is paid in breach of the copyright of the photographer. This is what has occurred in the instant case. It is the first case brought in this court of this type, which is why the court has noted that it is important
Ms Sevin is a travel agent operating out of Melbourne. She works, apparently, almost exclusively on the internet, and at the relevant time had an internet address of and an email address [email protected]. It seems that since the time that investigations were made concerning her alleged breach of copyright, she may have changed her web addresses. The applicant’s solicitor, Mr Knight, deposed that Ms Serpil now maintains a Facebook page, and that her email address is now [email protected], with a business known as Seek Travel.
In her former guise at Home Away Travel, Ms Sevin published a flight listing of flights available from Melbourne to various places. In the screenshot of the listing found at [30] and [31] of Mr Tylor’s affidavit, there are 13 small photographs each next to a destination, and a price. One of those photographs is a photograph taken by Mr Tylor of a beach in Hawaii, and there is next to it the destination “Hawaii” and the price of $1,120. A copy of the original photograph is found as annexure A to Mr Tylor’s affidavit, and I am satisfied from what he has said within his affidavit that he owns the copyright in that photograph. He titles the photograph ‘Waikiki Pink Boat’. Unlike Australia, the United States has a system of registering copyright. There is annexed as annexure B to Mr Tylor’s affidavit a photocopy of the certificate of registration of Mr Tylor’s copyright in ‘Waikiki Pink Boat’.
For some time, Mr Tylor had been concerned about the use of his stock photographs, unlicensed, on the internet. He decided to do something about it. He put into place searches of the internet to find out where his images were being used and, as the court has noted, he came across this use by this defendant. Mr Tylor consulted Australian solicitors, and when they were unable to come to any resolution of the matter with Ms Sevin, he instructed them to commence these proceedings.
An application was filed on 11 October 2013. The allegations made against the respondent are contained in some detail in that application, but it is best that the court set them out in full, given the ex parte nature of these proceedings:
“1. Copyright subsists in the Work under the Copyright Act 1968 (Cth) by virtue of the Copyright International Protection Regulations 1969 (Cth).
(a) The Applicant is a citizen of the United States of America.
(b) The Applicant created the Work in 1999 and published it in the United States in 2000.
(c) The Work is registered with the United States Copyright Office with registration number VA0001759562.
2. The Applicant is the owner of the copyright in the Work.
3. The Respondent is, and was at all material times:
(a) doing business under the name “Home Away Travel”; and
(b) using in the course of such business a website at for the promotion of her business.
4. The Respondent has infringed the Applicant’s copyright by, without the licence of the Applicant:
(a) reproducing the Work in a material form; and
(b) further, or alternatively, authorising the reproduction of the Work in a material form; and
(c) further, or alternatively, communicating the Work to the public;
(d) further, or alternatively, authorising the communication of the Work to the public; and
(e) further, or alternatively, by way of trade exhibiting an article in public that is a reproduction in a material form of the Work the making of which the Respondent knows, or ought reasonable to know, constituted an infringement of the copyright in the Work.
Particulars of infringement
The Applicant relies upon the facts, matters and circumstances set out in the accompanying affidavit of the Applicant sworn 30 September, 2013.
5. The Respondent did the acts referred to in ground 4:
(a) fragrantly;
(b) knowing that it did not have the licence of the Applicant to do those acts;
(c) knowing that to do those acts without licence of the owner of the copyright in the Work constituted an infringement of the copyright in the Work;
(d) without making any, or any reasonable, inquiry as to the authorship of, or ownership of the copyright in, the Work;
(e) in reckless disregard of copyright;
(f) in order to avoid paying licence fees for the use of images in its marketing and advertising business; and
(g) intending that a commercial or other benefit would accrue to it; and
Particulars under s 115(4)
i. The Respondent made no attempt to ascertain the identity of the copyright owner of the Work;
ii. The Respondent has made a copy in an electronic form of the Work and stored it in the image library/ies used by her website referred to in paragraph 3 of these Grounds for the purposes of communication to the public.
iii. The reproduction and communication of the Work was for the purpose of promoting the business of the Respondent.
iv. when informed by the Applicant that he was aware of her infringing acts, the Respondent has failed and refused to acknowledge any wrongdoing.
v. The Respondent has failed and refused to offer any compensation to the Applicant in the form of a standard licence fee and compensation for the breach of the Applicant’s moral right of attribution.
6. By reason of the matters alleged in paragraph 5 of these Grounds the Respondent’s acts were such as to make an award of damages under section 115(4) of the Act appropriate.
7. In addition, the Respondent by her acts complained of in paragraph 4 in respect of the Work has committed attributable acts within the meaning of ss 189 and 194 of the Copyright Act 1979 without identifying the Applicant as the Applicant as the author of the Work.
8. As a consequence of the Respondent’s acts referred to in paragraph 7, the Respondent has infringed the Applicant’s moral right to attribution in respect of the Work in breach of s. 195AO of the Copyright Act 1968.
9. As a result of the Respondent’s acts the Applicant has suffered loss and damage and will, unless such acts are restrained, continue to suffer loss and damage.”
The court has already dealt with the question of copyright, and confirms that it accepts that Mr Tyler is the owner of the copyright in the work. It has also dealt with its satisfaction that the respondent did business under the name ‘Home Away Travel’, and promoted her business on the website, utilising Mr Tyler’s work. It accepts his evidence that she neither sought nor obtained a licence from him so to do. Consequently, there was an infringement of his copyright by her actions.
In regard to the claims made in paragraph 5 of the application, the court has some difficulty on the evidence in being satisfied that the breach was more than at the very lowest end of flagrancy, given the evidence from the expert of the manner in which these breaches occur. It would not be unreasonable to say that there are many people utilising images for which they have no licence, without realising the gravity of the situation, or in many cases, that they do need a licence for an image which they may feel to have been in common use. That is not to condone what has occurred. This case will be important because, through it, it will be made clear that this conduct cannot continue.
The court is satisfied, however, that the respondent utilised the work without making any reasonable inquiry as to the ownership or authorship of the copyright, and thus was, in all probability, in reckless disregard of it. Whether the applicant did so in order to avoid paying the licence fee for the image is not entirely clear, given the common usage, but there can be no doubt that by not paying a licence fee she attained some commercial benefit.
The applicant has claimed damages under sections 115(2) and 115(4) of the Copyright Act 1968 (Cth).[1] He has elected to seek damages rather than an account of profits. He seeks an injunction against the respondent in terms contained in paragraph 2 of the final orders sought and other consequential orders. In regard to the damages under s.115(2), evidence has been brought of the charge that Mr Tyler normally levies for use of his stock images. He has explained in his affidavit how that charge is calculated by reference to the charges made by Getty Images, and he makes a note of the exclusiveness of his photographs, which he believes adds to their value, noting that they are gallery quality images, which is a higher quality than regular online stock images.
[1] The “Act”.
I am satisfied, from the evidence provided by Mr Tyler, which includes some invoices for images, and from the affidavit of the expert, Mr Shain, that Mr Tyler would be entitled to a fee slightly more than what might have been charged by Getty Images. He suggests that an appropriate figure would be US$1,850.00. I have no reason to believe that that is in any way excessive.
Mr Tyler also seeks damages under s.115(4), which is in the following form:
(4) Where, in anactionunder this section:
(a) an infringement ofcopyrightis established; and
(b) the court is satisfied that it is proper to do so, having regard to:
(i) the flagrancy of the infringement; and
(ia) the need to deter similar infringements ofcopyright; and
(ib) the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff'scopyright; and
(ii) whether the infringement involved the conversion of aworkor other subject-matter from hardcopy or analog form into a digital or other electronic machine-readable form; and
(iii) any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv) all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
The court has taken into account those matters in the following way:
(i) As indicated, the court would make, in this particular instance, a finding of flagrancy at the lowest end of the scale.
(ia) The court does believe that there is a need to deter a similar infringement of copyright, either by this respondent, or by any other potential respondents. Breaches of copyright in this manner are common, as evidenced by Mr Tyler and Mr Shain, and the courts must do what they can to assist copyright owners to maintain their property, and prevent the unlawful use of it.
(ib) The defendant’s conduct since this matter was first intimated to her has been far from exemplary. The evidence reveals that at first, she suggested that the matter was a problem caused by her web designer, and that this person, unnamed, should be the target of any proceedings. She made no effort to apologise for the breach, to take down the offending photograph, or to offer to pay a licence fee for its use. When eventually the applicant commenced these proceedings, she has taken no part in them whatsoever, notwithstanding a series of letters and emails sent to her by the solicitors acting on behalf of the applicant. She has, in effect “cocked a snook” at the court.
(ii) This is not alleged.
(iii) A benefit has been shown to have accrued to the respondent by reason of the infringement. She has not paid the licence fee which she would have otherwise had to have paid if she had acted in accordance with the law.
(iv) To the extent that the court has not expressed it, the court believes that the requirement of deterrence is not just a general one, but is particular to this respondent, given the manner in which she has treated the efforts by the applicant’s solicitors to conclude the dispute without resort to the court.
Having taken all these matters into account, and noting the awards of damages that have been made both in this court and in the Federal Court pursuant to s.115(4), of which it is only necessary to mention: Allam v Aristocrat Technologies Australia Pty Ltd; Global Gaming Supplies Pty Ltd v Aristrocrat Technologies Australia Pty Ltd (2012) 95 IPR 242, Aristocrat Technologies Australia Pty Limited v DAP Services (Kempsey) Pty Ltd (in liq) (2007) 157 FCR 564, Microsoft Corporation & Ors v Tram [2010] FMCA 480, APRA Ltd v Riceboy Pty Ltd & Anor [2011] FMCA 942, Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 157 FCR 442. The court will make an award of damages in favour of the applicant under s.115(2) of the Act in the sum of US$1,850.00. The court will make an award of damages under s.115(4) of the Act against the respondent in the sum of $12,500.00. The respondent must pay the applicant’s costs, which the court assesses in the sum of $9,500.00. The court will order the injunctions contained in the final orders sought in the application at paragraphs 2 and 3. The court will order that the respondent pays interest on the damages under s.115(2), at the Federal Court rate, from 24 April 2013 to today’s date.
I certify that the preceding sixteen (16) paragraphs are a true copy of the reasons for judgment of Judge Raphael
Associate:
Date: 7 March 2014