This appeal was a consolidation of claim number 456 of 2011 and 26 of 2013 but the appeal stems from case number 456 of 2011, and as such, the facts therein are relied on.
An application to strike out a claim alleging breach of contract and in the alternate copyright infringement was granted in the lower court. According to the claimants/appellants (a registered company in Belize) 10 photographs in total were licenced to the defendant/respondent (a registered company in the U.S.A) for 1 year. The use of the first five photos was agreed upon in writing while the use of the latter five was based on an oral agreement. According to the claimants/appellants, the agreement was that any other use of the 10 photos required a separate licence.
The claimants/appellants sought the following reliefs, (a) damages for breach of contract and in the alternate, (b) a declaration that the respondent infringed their copyright, (c) delivery up and (d) order for accounts of profits.
While the defendant/respondent agreed with the period of 1 year for the first 5 images, they denied that there was an oral agreement concerning the remaining 5 images. Further, they submitted that they did not publish or circulate any of the disputed images in Belize and based on s. 9 and 33(1) of the Copyright Act (“the Act”), Belize is not the appropriate forum as the alleged acts took place outside of Belize. In response, the claimants/appellants stated that acceptance of service was acceptance of jurisdiction and any challenge to jurisdiction was therefore waived.
The defendant/respondent also rebutted that the contract had expired and therefore there could be no breach of contract. An invoice was sent to the defendant/respondent with a renewal period of the licence for 2 years. Payment was sent but it was rejected by the claimants/appellants as they claim to subsequently become aware that there were misrepresentations by the defendant/respondent on the dates of publication. The publication dates of the images were required to be known in order to calculate the licence period as the licence was to end one year from the date of publication. A counterclaim alleged that the defendant/respondent were left with no choice but to withdraw advertisements and use different images which caused them to suffer loss. The withdrawal of the advertisements was an independent decision of the defendant/respondent according to the claimants/appellants.
The lower court agreed with the defendant/respondent that Belize is not the forum to hear the matter and dismissed the case.
The appeal was based on whether appellants had reasonable grounds to bring the copyright claim and whether the court was the appropriate forum.
The appeal court was of the view that the question of copyright infringement was not the sole basis of the claim for breach of contract and the trial judge erred in taking the view that copyright was the sole basis. The licence was for a period of one year and the images were used beyond the agreed period which is a triable issue.
It was argued that the licence had expired and there was no surviving term. The appeal court however noted that a surviving term existed in the agreement, “any other use of the Work by the Licensee shall require a separately negotiated license”, para 46 and 51. Additionally, the licence granted worldwide included Belize and any determination of whether the publications were brought to or accessed from the jurisdiction required a trial.
The agreement did not specify where to bring the action but it did note that the parties agreed that any enforcement of the terms could be brought in the licensor’s place of business which is Belize: “(f) In the event of default, action to be brought in the state of the licensor’s principal place of business (Belize)…”, see para. 46 and 54. Further, the appeal court agreed that the licence was granted worldwide. In assessing the evidence, the court of appeal found that it was unsatisfactory and therefore worthy of case management and the allowance of time for amendments and a trial. Belize was decided as an adequate forum to hear the matter on whether there was a breach of contract and in the alternate, copyright infringement.
Cases referred to:
(a) Biscombe et al v Fadelle et al, Claim No. DOMHCV 2010/0022; M4
(b) DMV Ltd v Tom L Vidrine, Civil Appeal No. 1 of 2010
(c) Mc Philemy v Times Newspaper Ltd and Others [1999] 3 All ER 775
(d) Baldwin Spencer v Attorney General of Antigua et al, Civ. Appeal No. 20 A of 1997
(e) CITCO Global Custody NV v Y2K Finance Inc, HCVAP 2008/022
Other authorities referred to: Supreme Court (Civil Procedure) Rules 2005