COURT FILE NO.: 1392

ONTARIO

DIVISIONAL COURT

SUPERIOR COURT OF JUSTICE

CUNNINGHAM, A.C.J., KENT, R.S.J. and McKINNON J.

B E T W E E N:

LAWRENCE BRUCE RITCHIE

Lawrence Bruce Ritchie, In Person

Plaintiff (Appellant)

• and -

SAWMILL CREEK GOLF & COUNTRY CLUB LIMITED and WILLIAM M. GERRITS

L.E. Trent Horn/Jeilah Y. Chan, for the Defendants (Respondents)

Defendants (Respondents)

HEARD: April 20, 2004.

On appeal from the Judgment of the Honourable Mr. Justice Edward W. Ducharme dated May 16, 2003.

C. McKinnon J.

1The Appellant seeks to overturn findings of fact and law made by the trial judge following a three day trial. For the reasons that follow, and with the exception of reversing the trial judge’s decision on one technical point, the appeal is dismissed.

Background Facts

2The Appellant is an entrepreneur of diverse talents, including photography. The Defendant William Gerrits is the Chief Executive Officer of the Defendant Sawmill Creek Golf & Country Club Limited.

3Sometime in 1999 the Appellant went without invitation to the Sawmill Creek Golf & Country Club located near Sarnia, Ontario and took a number of photographs of the golf course and facilities and placed them in an album. In late June or early July, 1999 he called upon William Gerrits to try and interest him in promoting and marketing Sawmill Creek.

4The album was given to Mr. Gerrits. The original album was unavailable at trial because almost immediately after receiving the album Mr. Gerrits intermingled the photographs with hundreds of others already in Sawmill Creek’s collection.

5The Appellant wrote to Mr. Gerrits on July 7, 1999 proposing a substantial overhaul of Sawmill Creek’s brochures and website and the creation of a significant inventory of aerial and ground level still photos and video clips of the Sawmill Creek facilities. The proposed cost was $22,600. On August 5, 1999 the Appellant set out a more ambitious design which would involve him being the marketing agent for Sawmill Creek, working for 12 months at $5,000 per month “plus reasonable expenses”.

6Ultimately, Mr. Gerrits rejected Mr. Ritchie’s proposals as overly expensive and uncompetitive, although he did specifically retain the Appellant to photograph a wedding and upgrade the Sawmill Creek website.

7Photographs of the Purves wedding were taken on September 11,1999. The Appellant was paid $282.89 for photo services, three rolls of film, processing and production of a photo album.

8Between July and October Mr. Ritchie took numerous photographs of Sawmill Creek. The new website designed by the Appellant included numerous photos he had taken during this time. The Appellant called these the “July to October photographs” in his pleadings. The Appellant and Mr. Gerrits collaborated on the choice of photos to be exhibited on the website. Invoices for the updating of the web page dated October 18 and October 26, 1999 totalling $3,210 were paid by the Defendant. At a meeting to discuss the update of the website, Mr. Gerrits made a handwritten note on one of Mr. Ritchie’s letters of proposal to the effect that “We own copyright” in all materials on the website.

9Certain of the photographs in the possession of Sawmill Creek that had been provided by the Appellant to Mr. Gerrits were used in promotional advertising. Some were enlarged for posters. At a reception held at Sawmill Creek in January, 2000 the Appellant attended uninvited and noticed a number of his images had been transposed to large posters.

10On January 12, 2000, Mr. Gerrits wrote a letter to the Appellant rejecting his most recent proposals as “uncompetitive” and informing him that Sawmill Creek had decided to handle marketing in-house for less cost. The Appellant, in a letter of the same date, alleged infringement of copyright. He subsequently went to the R.C.M.P. who conducted an investigation and determined that the case fell into the civil and not the criminal context. Thereafter, Mr. Gerrits ordered that the Appellant’s name be removed from the website and denied him access to it. Hence, the present action and appeal.

Issue

11The main issue argued before this Court was whether the trial judge had misapprehended the evidence and, specifically, the evidence relating to the gift of the photo album at the initial meeting between the Appellant and Mr. Gerrits.

Discussion

12One thing is quite clear: Mr. Gerrits was not in possession of any photographs taken by the Appellant other than those provided to Mr. Gerrits at the initial meeting, or given to him as a result of the retainer for the Purves wedding, or provided for incorporation on the website created by the Appellant for Sawmill Creek.

13The trial judge preferred the evidence of Mr. Gerrits that a photo album containing some of the “July to October photographs” were given as a gift to Mr. Gerrits and that the Appellant told him “he could do with them as he wished”. The trial judge found that this was an act designed to curry favour with Mr. Gerrits in order to enter into an employment relationship.

14A review of the trial proceedings, including the examinations-in-chief and cross-examinations of both the Appellant and Mr. Gerrits provide ample support for the conclusion arrived at by the trial judge. This Court was invited to overturn the trial judge’s finding on the basis that a re-created book of photographs presented by the Appellant to the trial judge demonstrated that a number of photographs could not have been taken before early July, 1999 because these photographs depict fall colours and post-July construction at Sawmill Creek.

15We note that the so-called “July to October photographs” is a phrase used in the Appellant’s original pleadings and comprise a large number of photographs taken by the Appellant between those dates. Nowhere in his Reasons for Judgment does the trial judge find that the recreated album was the album presented to Mr. Gerrits at the original meeting. In fact, he held otherwise. The trial judge found that an album was presented to Mr. Gerrits comprised of some of the “July to October photographs”. The use of this unfortunate nomenclature skewed the main ground of appeal. It is completely obvious in looking at the promotional material filed before the trial judge that numerous photographs were taken after July. We must conclude that these photographs came from one or all of three sources: the initial album gifted to Mr. Gerrits; the Purves wedding photographs; and the photographs provided for incorporation into the website.

16The trial judge preferred the evidence of Mr. Gerrits to that of the Appellant. This was a finding of credibility that can be interfered with on appeal only in the very rarest of cases: see Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235; R. v. White, 1947 1 (SCC), [1947] S.C.R. 268; R. v. W.(R.), 1992 56 (SCC), [1992] 2 S.C.R. 122. There was ample evidence in support of the factual findings made by the trial judge and, as stated, nowhere in his Reasons does he conclude that the photographs that were gifted to Mr. Gerrits in late June or early July 1999 constituted all of the photographs that were subsequently used in promotional material for Sawmill Creek.

17The Appellant argues that at no time did he give written permission pursuant to the Canadian Copyright Act to use photos for promotion. The Appellant’s evidence was that the photograph album was given to Mr. Gerrits and could be used to show the potential users of the Club premises or individuals who wished to join the Club, the many interesting vistas of Sawmill Creek. In his Reasons, the trial judge found that in presenting the initial album to Mr. Gerrits, the Appellant said nothing about ownership or copyright and imposed no conditions upon the gift of the album. He found that the first issue of copyright was raised on January 12, 2000 after the Appellant’s ambitious and costly proposals for marketing were rejected. He found that the initial album given to Mr. Gerrits was gifted unconditionally and that it constituted “an irrevocable license from which Mr. Ritchie cannot now resile”.

18As a matter of law, a license that is a mere permission to do a certain thing, as opposed to a license that gives an ownership interest, need not be in writing. The Appellant hinges his argument on s. 13(4) of the Copyright Act which provides:

(4) Assignments and licenses. – The owner of the copyright in any work may assign the right, either wholly or partially, and either generally or subject to limitations relating to territory, medium or sector or the market or other limitations relating to the scope of the assignment, and either for the whole term of the copyright or for any other part thereof, and may grant any interest in the right by license, but no assignment or grant is valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by the owner’s duly authorized agent.

19It is significant that the licensing referred to is limited to licenses where there has been a “grant of an interest”. Some licenses, such as an exclusive license, can grant a property interest. Non-exclusive licenses do not transfer a property interest but rather give permission to do certain things: see Sunny Handa, Copyright Law in Canada (Markham: Butterworths, 2002 at p. 337).

20The “grant of an interest” referred to in s. 13(4) is the transfer of a property right as opposed to a permission to do a certain thing. The former gives the licensee the capacity to sue in his own name for infringement, the latter provides only a defence to claims of infringement. To the extent there was any uncertainty as to the meaning of “grant of an interest” and whether this section applied to non-exclusive licenses, the issue was resolved in 1997 when the Copyright Act was amended to include s. 13(7):

(7) For greater certainty, it is deemed always to have been the law that a grant of an exclusive license in a copyright constitutes the grant of an interest in the copyright by license.

21The oral license granted to Sawmill Creek to use the photographs as it saw fit was a license operating as a permission to do certain things. This type of license does not fall within the ambit of s. 13(4). There is no requirement that such a license be in writing: see John S. McKeown, Fox Canadian Law of Copyright and Industrial Designs, 4th ed., looseleaf (Toronto: Thomson Canada Ltd., 2003) at pp. 19-26; Robertson v. Thomson Corp. (2001), 2001 28353 (ON SC), 15 C.P.R. (4th) 147 at 186 (Ont.S.C.J.).

22Non-exclusive licenses, such as the one granted to Sawmill Creek, may be in any form, including oral. There is no requirement that non-exclusive licenses be signed or in writing: see Handa, supra, at p. 338. The trial judge found that there was an express license between the Appellant and Sawmill Creek. The license granted by the Appellant to Sawmill Creek was a permission, which constitutes a defence to an infringement action. The trial judge made no error in law in finding that the license granted to Sawmill Creek constituted a defence to infringement.

23The same reasoning would apply to the photographs which were provided for incorporation into the website. There was a license granted to Sawmill Creek, the license is non-exclusive and may be used by the Defendants.

24We would find, however, that while the permission to use the photographs constitutes a defence to infringement, it is not exclusive. We find that a mere note on a letter to the effect that “We own copyright” is insufficient to constitute a written grant of an exclusive license, as contemplated by the provisions of s. 13(4) of the Copyright Act. The trial judge’s order that the “July to October photographs” be transferred to the Respondents is vacated.

25With respect to the Purves wedding photographs, there is no dispute that the Appellant took photographs of the Purves wedding at Sawmill Creek in September, 1999. He was retained to take those photographs by Sawmill Creek, he was invoiced, and the invoice was paid in full. There was no evidence of any agreement whereby the Appellant or his company would be the first owner of the copyright in the wedding photographs. Mr. Gerrits in his evidence stated there was no such agreement. His evidence on the point was preferred by the trial judge.

26Section 13(2) of the Copyright Act provides:

(2) Where, in the case of an engraving, photograph or portrait, the plate or other original was ordered by some other person and was made for valuable consideration, and the consideration was paid, in pursuance of that order, in the absence of any agreement to the contrary, the person by whom the plate or other original was ordered shall be the first owner of the copyright.

27With respect to the Purves wedding photographs, Sawmill Creek is the first owner of the copyright and is entitled to all negatives in the possession of the Appellant.

28As to the Appellant’s arguments with respect to the damages assessed by the trial judge, including an alleged breach of his “moral rights” by making enlargements of the photographs that had been provided to Sawmill Creek, we see no merit in these submissions. We conclude that the findings of the trial judge on all issues relating to damages are sound and should not be the subject of interference.

29The Appellant also asserted that he believed he was dealing with Mr. Gerrits personally and not the corporate entity “Sawmill Creek Golf & Country Club Ltd.”, and consequently Mr. Gerrits should be held personally liable for infringement and resulting damages. The trial judge rejected this argument. In our view, he rejected the argument for sound reasons.

30Subject to the vacation of the order that the Defendants/Respondents own copyright in the “July to October photographs” and that those photographs be delivered up by the Appellant, the appeal is dismissed.

31We invite short written submissions on costs to be delivered within 30 days hereof.

C. McKINNON J.

I agree