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One's Damages Claim against Another for using His/Her Photos at Online Stores
"Photographic works" refers to a type of work expressly stipulated in Article 5 of the Copyright Act which includes photographs, slides and other works created by photographic means.
With the popularity of e-commerce activities, there are many cases where online sellers use the photos or videos of products in their own online stores for marketing purposes without the consent of the copyright owner (who may be another seller), and thus they infringe on the copyrights of the original author’s photographic works. In such cases, most of the copyright owners do not make their livings by selling their photographic works but use their product photos or videos for the purpose of marketing and selling their own products. Therefore, the means by which to prove the amount of damages suffered from the infringement of the photographic copyrights is uncertain.
Regarding the above concern, opinions were expressed in the 2022 Zhi-Jian-Shang Fu-Min-Zi No. 1 decision rendered by the Taiwan New Taipei District Court on June 16, 2022. In this case, an online seller (the defendant) who sold products from a well-known essential oil relief patch manufacturer (the plaintiff) downloaded via the Internet the photographic works which the plaintiff is entitled to enjoy the copyright of without the plaintiff’s consent or license, and uploaded the infringing pictures to an online auction platform. The plaintiff claimed to have suffered the following damages caused by the defendant:
1. The costs for the studio, camera, lighting and other equipment, photo library materials, and the salary of the marcom staff and graphic editors paid during the shooting and production of the photographic works;
2. The plaintiff's loss of business (based on the price difference between the copyright owner's and the defendant's sale of the essential oil relief patch products, multiplied by the quantity of the essential oil relief patch products sold by the defendant);
3. The transportation expenses and attendance expenses incurred by the manufacturer (the plaintiff) as a result of the litigation; and
4. Damages to the plaintiff’s moral right.
Despite recognizing that the defendant's conduct did constitute an infringement of the plaintiff's photographic works, the Taiwan New Taipei District Court rebutted the plaintiff's claim for damages on the following grounds:
1. The costs of the equipment and labor costs for the shooting and producing of the photographic works was not incurred as a result of the defendant's infringement, and there is no causal relationship between the two;
2. Since consumers' decisions on whether to purchase products are not based on the visual appeal of the pictures of such products, it is difficult to recognize that the defendant's infringing use of the photographic works in this case did increase its sales volume; nor is the plaintiff's claim for damages for such loss of business justified;
3. The transportation expenses and attendance expenses incurred by the plaintiff as a result of the litigation do not constitute damages that are directly incurred by the defendant's infringement in this case; and
4. Even if the moral right of the plaintiff, as a legal entity, was infringed against, it is not entitled to claim non-property damages because there is no way to prove the existence of mental anguish suffered therefrom.
If it is difficult for an injured party to prove actual damages, but as the Taiwan New Taipei District Court further stated, the injured party may request the court to award compensation at its discretion based on the seriousness of the matter in accordance with the provision of Paragraph 3, Article 88 of the Copyright Act. However, the plaintiff did not request the court to determine the amount at its discretion, and the court has no legal position to do so in accordance with said provision without the plaintiff making such request.
In local practice, it is common to evaluate a work and its damages based on the costs for accomplishing such work. However, in this case, the court denied the plaintiff's assertions based on the grounds that the costs of producing the photographic works was not causally related to the infringement. Whether this is a recent opinion shared by the courts is worth further observation.