On June 30, 2022, Taiwan Intellectual Property and Commerce Court (“IPC Court”) found that CLI Investment Limited (“CLI”), the company in charge of the operation of Kimpton Da An Hotel in Taipei, had violated Taiwan Copyright Law for using a copyrighted photo without permission from the copyright holder.
This copyright infringement dispute arose out of CLI’s use of a photo created and shared by the plaintiff, a professional photographer, via his Facebook and Instagram account. According to the plaintiff, the theme of the misused photo featured the interaction between a pet cat and the pet owner, and was planned, staged, prepared, and shot by the plaintiff at CLI’s Kimpton Da An Hotel. After the plaintiff uploaded and publicly shared the photo on his Facebook and Instagram, CLI’s Facebook administrator noticed the plaintiff’s photo, and reached out to the plaintiff via Instagram asking for permission to display the plaintiff’s photo on Kimpton Da An Hotel’s own Facebook webpage. CLI’s administrator promised to “tag” the plaintiff when displaying the photo on its Facebook post, so that users would know that the displayed photo originated from the plaintiff. However, the plaintiff later on found that CLI had not only used his photo on its Facebook, but also on other commercial websites such as Agoda and Booking.com, without identifying the plaintiff as the source of the photo. The images uploaded by CLI in these commercial websites only showed CLI’s trademarks, without any information regarding the plaintiff’s authorship. Consequently, the plaintiff filed a copyright infringement lawsuit, alleging that CLI’s use of a photo did not obtain his prior consent, and thus constituted a copyright infringement.
CLI did not deny it had reproduced, edited, and uploaded the plaintiff’s photo on Booking.com and Agoda, but argued, among the others, that such use should be permissible because a prior consent from the plaintiff had been obtained. CLI contended that by giving his consent to its Facebook administrator, the plaintiff had agreed to enter into collaboration agreement, under which CLI may use the plaintiff’s photo for marketing purpose, and in return, CLI’s Facebook administrator would tag the plaintiff when using his photo on Facebook. IPC Court disagreed and cited the correspondence between CLI’s Facebook administrator and the plaintiff, which showed that the plaintiff had agreed to let CLI’s Facebook administrator use his photo when posting on Kimpton Da An Hotel’s Facebook webpage. Such consent should not extend to CLI’s use on other websites like Agoda for Kimpton’s booking system, where the photo is used for commercial purpose. Also, IPC Court opined that the plaintiff’s consent was given under the condition that CLI should always tag the source of the photo, which CLI failed to do when using the plaintiff’s photo on Booking.com or Agoda. Hence, CLI had no ground to argue that the photo was reproduced and uploaded on Agoda and Booking.com based on the plaintiff’s consent. In the end, IPC Court awarded the plaintiff NT$ 20,000 for damages caused by CLI’s unauthorized use of the copyrighted work.
Although copyright license need not be made in writing, it is worth noting that the terms and conditions regarding the licensed scope and use should be as clear and explicit as possible. Take the above case as an example, CLI had indeed sought the plaintiff’s consent; however, the consent was silent on whether the authorized use is limited to Facebook, and IPC Court construed the licensed scope narrowly.
When seeking prior consent for use of a copyrighted work, one should pay close attention to the language used and the context under which the permission is sought, so as to avoid infringement dispute.