Sean Drakes v Donald Grant
| Jurisdiction | Trinidad & Tobago |
| Judge | Master Sherlanne Pierre |
| Judgment Date | 18 November 2022 |
| Neutral Citation | TT 2022 HC 261 |
| Court | High Court (Trinidad and Tobago) |
| Docket Number | Claim No. CV2018-01224 |
TT 2022 HC 261
Master Sherlanne Pierre
Claim No. CV2018-01224
IN THE HIGH COURT OF JUSTICE
Claimant: Mr. Jason Nathu
Defendant: Mr. Derrick H. Redman
Mr. Drakes is a Trinidadian journalist/photographer based in the United States of America (USA). In January 2016, he took a stunning photograph of The Dying Swan Ras Nijinsky in Drag as Paplova 1 at Trinidad's 2016 Carnival celebrations. He uploaded it to a licensing agent's online platform 2 in the hope of offering its use to interested persons for a licence fee. To his dismay, he discovered that his photograph had been utilised by the defendant in the latter's promotion of the for-profit social event on the island of Tobago, Tobago Fashion Coda 4. Tobago Fashion Coda 4 would be hosted at the Magdalena Grand Beach and Golf Resort, one of the larger hotels on the island.
The defendant used the photograph in the following ways:
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a. a poster on Facebook advertising and marketing the event;
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b. on the hosting hotel's corporate Facebook page;
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c. a large hardcopy poster at the ANR Robinson International Airport, Tobago; and
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d. on the event page for Tobago Fashion Coda 4.
The claimant drew the breach of copyright to the defendant's attention in April 2016 and asked that the defendant pay him the sum of $5,800.00 for use of his photograph. The defendant agreed to pay but the claimant's many attempts to actually make him do so were futile. The claimant eventually sued and obtained judgment for breach of copyright with damages to be assessed.
The claimant asked that he be awarded the sum of $5,800.00 being the agreed licence fee; ‘additional damages’ between $54,000.00 and $225,000.00 and exemplary damages in a reasonable sum for the defendant's ‘cynical disregard’ 3 of the claimant's rights.
Copyright is a property right which subsists in literary and artistic works that are original intellectual creations in the literary and artistic domain and include photographic works. Works are protected by the sole fact of their creation. 4
Section 38 of the Copyright Act, Chap 82:10 reads as follows:
“38 (1) The Court shall have the authority –
(a) to grant injunctions to prohibit the committing, or continuation of committing, of an infringement of any right protected under this Act;
(b) to order the impounding of copies of works or sound recordings suspected of being made or imported without the authorisation of the owner of any right protected under this Act where the making or importation of copies is subject to such authorisation, as well as the impounding of the packaging of, the implements that could be used for the making of, and the documents, accounts or business papers referring to, such copies;
(c) to order the forfeiture and seizure of all copies of works or sound recordings manufactured, reproduced, distributed, sold or otherwise used, intended for use or possessed with intent to use in contravention of section 8 or 22 and all plates, moulds, matrices, masters, tapes, film negatives, or other articles by means of which such copies of works or sound recordings may be reproduced, and all electronic, mechanical or other devices for manufacturing, reproducing, or assembling such copies of works or sound recordings;
(d) to order that the owner of any right protected under this Act whose right has been infringed, be paid by the infringer, damages adequate to compensate for the injury suffered as a consequence of the act of infringement, as well as the payment of expenses caused by the infringement, including legal costs;
(e) to fix the amount of damages taking into account the pecuniary and non-pecuniary loss suffered by the owner of the right;
(f) to order an account of the infringer's profits attributable to the infringement;
(g) where infringing copies exist, to order the destruction or other reasonable disposition of those copies and their packaging outside the channels of commerce in such a manner as to avoid harm to the right holder, unless the owner of the right requests otherwise.
(2) Where the infringer did not know or had no reasonable reason to know that he was engaged in infringing activity, the Court may limit damages to the profits of the infringer attributable to the infringement.
(3) Where there is a danger that implements may be used to commit or continue to commit acts of infringement, the Court shall have the authority, whenever and to the extent that it is reasonable, to order their destruction or other reasonable disposition outside the channels of commerce in such a manner as to minimise the risks of further infringements, including surrender to the owner of the right.
(4) The Court shall not, in respect of the same infringement, both award the owner of rights damages and order that he shall be given an account of profits.
(5) The provisions of subsection (1)(g) shall not be applicable to copies and their packaging which were acquired by a third party in good faith.
(6) Where there is a danger that acts of infringement may be continued, the Court shall have the authority to order that such acts not be committed and the Court shall fix a fine of five thousand dollars for each day on which the infringement is continued, which fine shall be paid if the order is not respected.”
Where a claimant is in the business of licensing out the copyright, damages are to be measured by a licence fee: Sheldon v Daybrook House Promotions Limited. 5 Where there is no ‘going rate’ for licences, a case has to be decided on all the evidence: Ludlow Music Inc v. Williams 6 and Oliver Homes (Manufacturing) v Hamilton. 7 In the latter case, the appropriate measure of damages was held to be ‘a reasonable charge for the use of plans based on what would have been a fair remuneration if a licence had been granted’.
Although the claimant said he was entitled to receive a licence fee (through his agent, Getty Images) in the event his work was used, he did not say what that licence fee was likely to be.
The claimant testified that shortly after he engaged the defendant, he, the claimant requested the sum of $5,800.00 for use of his photograph. He sent the defendant an invoice in that sum. His note said it was for the defendant's ‘ one-time unauthorised use of [his] work in his marketing materials’.
In cross-examination, when asked about how monetary value was assessed for photographs, the claimant said that as creator, he was best placed to ascribe a monetary value for use of his work. He asserted, however, that the sum of $5,800.00 was a ‘discounted fee’ which he offered the defendant ‘out of his generosity’. He produced the online exchanges between the parties. The online exchanges showed that the claimant proposed and requested the sum of $5,800.00. His proposal was not the result of negotiations between the parties neither was there any indication by the claimant that the sum of $5,800.00 represented a discounted fee or a fee below market value.
In the absence of other evidence as to a ‘going rate’ and in light of the claimant's evidence, the court used the sum of $5,800.00 as the licence fee.
The claimant said that he suffered consequential loss as a result of the defendant's breach. He said he invested a substantial amount of time in attempting to resolve the matter which interfered with his work as a freelancer. He said as a result, he suffered loss of potential work and bookings as he could not pursue contracts or editorial work while travelling to Trinidad to handle the matter. He said he earned a minimum of $5,000.00 United States dollars (USD) for a ‘gig’. Considerations of remoteness aside, he provided no documentary evidence in support of his statement that he usually earned $5,000.00 USD for a ‘gig’ nor provided evidence of potential work or contracts that he may have had to forego.
The claimant said that he was constrained to travel to Trinidad in 2017 and again in 2018, to retain legal counsel. As a result, he was put to inconvenience and expense for room and board. He said he spent a total of $6,195.00 for air travel, room and board, ground transportation, phone calls and legal fees. He provided no particulars such as where he stayed, what kind of ground transport he used nor how he arrived at any of the figures specified such as the sum of $142.00 for meals and $73.00 for ground transportation. He provided no documentary evidence in support of his special damages.
In the above circumstances, there was not sufficient evidence upon which the Court could make an award under this head of loss. However, the claimant's evidence as to the inconvenience to which he was put, was considered below.
Counsel for the claimant asked for an award of ‘additional damages’. He submitted that the Court should award a sum of $225,000.00 as additional damages. He invited the Court to make the award having regard to the flagrancy of the defendant's actions, the defendant's deliberate and studied disregard of the claimant's rights and for the fact that the claimant's photograph likely contributed to the goodwill and overall profitability of the Coda event. He relied on four Commonwealth cases in support of his submissions.
Absolute Lofts was decided in the High Court of Justice Chancery Division Intellectual Property Enterprise Court 9. It was affirmed on appeal in Absolute Lofts South West London Limited v Artisan Home Improvements Limited and another (2016). 10 This case dealt with the infringement of...
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