IP Case Law library

Lens Eye Images Limited v Mediamax Network Limited [2022] KEHC 22881 (KLR) Commercial Suit E231 of 2022)

 Facts: 

Lens Eye Images Limited (plaintiff), a company engaged in video and photography, sued Mediamax Network Limited (defendant), a media company, for copyright infringement. The plaintiff alleged that the defendant published two of their photographs without consent or acknowledgment. These photographs appeared in the defendant’s newspaper and on its social media platforms and website. The defendant argued that the use of the photographs was fair dealing and that the phrase "photo courtesy" sufficed as an acknowledgment. The defendant also claimed that one of the images did not originally bear the plaintiff's watermark as it was obtained from a social media platform. 

Issue: 

The main issue is whether the defendant's use of the photographs constituted an infringement of the plaintiff's copyright or if it fell under the exception of fair dealing. 

Rule: 

Under Section 35 of the Copyright Act Copyright or related rights are infringed when a person engages in or causes others to engage in actions that are exclusively reserved for the rights holder. This includes any form of reproduction, distribution, public performance, or communication to the public of the copyrighted material without obtaining prior permission from the copyright owner. 

The Supreme Court of Canada in CCH Canadian Ltd v Law Society of Upper Canada [2004], laid down several factors to consider for a successful defence of fair dealing. 

1. Purpose and Character of Use: This factor examines the reason behind and the manner in which the copyrighted material is used. It evaluates whether the use is for a transformative purpose, such as for criticism, comment, news reporting, teaching, scholarship, or research, rather than for commercial exploitation. The use should contribute something new or beneficial for it to be deemed fair.
2. Amount of the Dealing: This involves considering the quantity of the copyrighted material used and its importance. The assessment focuses on whether the amount used is appropriate and necessary for achieving the intended use. Using the minimal necessary amount of copyrighted material leans more favorably towards fair dealing.
3. Alternatives to the Dealing: This looks at whether there were reasonable and viable alternatives to using the copyrighted material that would achieve the same purpose. If alternatives were available that could have avoided the use of copyrighted material, the claim of fair dealing may be weakened.
4. Nature of the Work: The nature or type of the copyrighted work used also influences the fair dealing assessment. Certain types of works might be more susceptible to fair dealing claims, especially if they are factual or non-fictional, as opposed to creative works like music or art.
5. Effect of the Dealing on the Work: This crucial factor examines the impact of the use on the market or potential market for the copyrighted work. The effect is assessed in terms of whether the dealing with the copyrighted material adversely affects the sales or value of the copyrighted work. A negative impact on the market or potential market for the original work typically undermines a fair dealing claim.

The overarching test for fair use is whether the progress of human thought and the advancement of science and arts would be better served by allowing the use of the copyrighted work rather than by preventing it.

Analysis
 
The court found that the plaintiff legitimately owned the copyrights to the photographs. It acknowledged that the defendant used the images to accompany news articles, which could fall under the fair dealing exception for reporting current events. However, the court critiqued the defendant's claim of fair dealing on the grounds of inadequate acknowledgment of the plaintiff's copyright. While the defendant argued that the use of "photo courtesy" was a sufficient acknowledgment, the court noted that proper acknowledgment would require clear identification of the photographer and the work.

Additionally, the court examined the nature and amount of the work used and its effect on the market value of the copyrighted material. It determined that the use of the photographs was minimal and did not significantly affect the market for the original works, thereby leaning towards fair dealing. Nevertheless, the lack of proper acknowledgment did not fully exempt the defendant from liability for copyright infringement.
The court's decision to focus on the acknowledgment aspect under the fair dealing exception highlights the importance of proper credit to copyright holders, which is crucial in the media industry. The judgment balances the need for freedom of the press to report current events with the rights of copyright owners to be recognized for their work. However, the court could have provided a more detailed analysis on why "photo courtesy" was deemed insufficient for acknowledgment, considering its widespread use in the industry. Additionally, the decision to award nominal damages, while justifiable under the circumstances, leaves an open question about the quantification of such damages in cases where the infringement is minimal but still significant enough to merit compensation. This case sets a precedent that may encourage media companies to seek explicit permissions or provide clearer acknowledgments, enhancing respect for intellectual property rights in journalism.
 
Conclusions

The court concluded that the defendant's use of the photographs partially satisfied the criteria for fair dealing, particularly concerning the purpose of use and the non-commercial nature of the newspaper. However, the defendant failed in sufficiently acknowledging the plaintiff's copyright, leading to a nominal damages award to the plaintiff for this oversight. The court awarded nominal damages of Kshs. 500,000/=, reflecting the trivial nature of the infringement and the lack of direct commercial benefit to the defendant from the use of the photographs.

Judgement available here