An Ontario lawyer successfully moved for certification of a class action alleging that the Carswell database search and retrieval service known as "Litigator" infringes the copyright of the authors of legal documents that have been filed in Canadian courts. In Waldman v. Thomson Reuters Corporation,Justice Perell of the Ontario Superior Court of Justice stressed that the merits of the action would be considered on another day; at the certification stage, the court's "gatekeeper" function was limited to ensuring that the technical and procedural elements of the test for certification were satisfied. In this case, His Honour found that the test was met.
The action represents a challenge to the manner in which Thomson Reuters Corporation's legal publishing branch, Carswell, carries on the business of making court documents available for search and retrieval through its "Litigator" subscription service. The action arose after a document filed by the representative plaintiff, lawyer Lorne Waldman, was made available on the service. The document was a factum that was filed in support of Maher Arar's intervention in the Court of Appeal for Ontario, in Bouzari v. Islamic Republic of Iran (a claim for damages for acts of torture). Mr. Waldman had registered copyright in the document. Without Mr. Waldman's permission, Carswell copied the factum and made it available to its subscribers through the Litigator service.
The Litigator Service
Carswell's Litigator service enables subscribers to examine documents copied from court files from across Canada – including pleadings, notices of motion, affidavits, and facta – along with embedded material: a citation; a hyper-link to other motions and proceedings; a classification by legal issue; highlighting of relevant procedural rules; links to related cases; hyperlinks to the full text of a decision and secondary sources; and redactions where necessary. Subscribers may download, edit, and print the documents.
Carswell estimates that approximately 10,000 lawyers have access to the database, which includes approximately 100,000 documents associated with 12-13,000 lawyers and 6,500 law firms. Carswell does not ask the lawyers or the law firms that filed the documents for permission to post them on Litigator, but says it will respond to requests to remove them.
The Court noted that Litigator is not the only source for copies of court documents. Factums filed with the Supreme Court of Canada are available online; as are primary and secondary legal materials filed with Legal Aid Ontario. The Canadian Bar Association also operates the National Class Actions Database, which provides court documents from class proceedings. None of these services are for-profit services. It was also noted that lawyers also share these kinds of documents among themselves, for free.
Lawyers (and members of the public) are also able to attend at a court office and obtain copies of publicly-filed court documents for a service fee.
The Relevant Concepts in Copyright Law
The Court noted that copyright is a creature of the Copyright Act, (the Act) and the rights and remedies it provides are exhaustive. It is an infringement of copyright for anyone to do anything that the Act only permits owners of a literary work to do, including authorizing the exercise of an owner's rights. The Act also prohibits "secondary" infringement of copyright, which includes selling or renting out copies of works that the defendants knew, or should have known, infringed copyright.
For the purposes of Waldman's claim, a class member would have to prove the following: that copyright exists in a document; that he or she is the owner of the copyright in the work; that Thomson has done a thing that only the owner of the copyright has the right to do; and that the class member did not consent to Thomson's conduct. Conversely, Thomson could argue in its defense that it has the copyright owner's express or implicit consent to make the works available for a fee; it can rely on a specific exemption, such as fair dealing; and it can show a business or professional custom, or public policy reason, that allows copying.
Finally, the Act provides that an author of a work has "moral rights" under the Act that cannot be assigned (although they can be waived): these are the right to the integrity of the work and a right to be associated with the work as its author by name (or to keep his or her association anonymous). Mr. Waldman alleged that the moral rights of class members were infringed by the use of their works in association with Litigator.
The Parties' Allegations and Defences
Mr. Waldman alleged that Carswell has committed primary and secondary copyright infringement. He also alleged that Carswell had infringed his "moral rights", as well as those of the class as a whole, by asserting that they are the owners of copyright in the works. He pleaded that Thomson encourages its subscribers to infringe copyright. He claimed $50 million in compensation for the proposed class members and punitive damages of $1 million, as well as disgorgement of any profit made by Thomson in infringing copyright and a permanent injunction restraining Thomson from dealing with the class members' court documents.
Thomson denied any wrongdoing and raised a variety of defenses. For example, Thomson argued that the subscribers of Litigator are subject to terms and conditions that accord with the Act; that it did not engage in copyright infringement; that its conduct constituted "fair-dealing"; that it had the consent and/or an implied licence to copy and sell copies of court documents; and that it had a right supported by s. 2(b) (freedom of expression) of the Charter of Rights and Freedoms, to copy and sell the works.
Thomson also disputed that Mr. Waldman was the author or the sole author of the factum in issue, and argued, in any event, that once the document was filed with the Court of Appeal, Mr. Waldman accepted that the factum could be accessed and copied for a fee, and he consented or implicitly licensed the factum's reproduction and communication to the public. Finally, Thomson raised a public policy defense, arguing that it relied on the public interest in an open court system and the public interest in the availability and dissemination of publically available materials as an exception to copyright under the Act.
The Court Examines its Gatekeeper Role
As a threshold matter, Thomson argued that the Court should play a gatekeeper role to deny certification to a proposed class proceeding that is of little social utility or that arguably is socially detrimental. In this case, Thomson argued that the Litigator service advances the open court principle and that the copyright claim was actually contrary to the public interest as well as the interests of the class: lawyers. Thomson relied on recent judicial statements suggesting that the certification motion is an important screening mechanism for claims that are not appropriate for class actions, and could protect the defendant from being unjustifiably embroiled in complex and costly litigation.1
Justice Perell rejected this argument, finding that the Court's gatekeeper function is actually quite modest, because the Ontario legislature has already made a conscious attempt to avoid setting the bar for certification too high; indeed, if anything, the appellate courts have lowered the bar to certification in recent years. The Court's gatekeeper function and screening function is limited to determining whether the certification criteria are satisfied.
In certifying the class action, the Court revised the definition of the class and the common issues. As proposed, class members included lawyers from both the private sector and the public sector, lawyers from in-house law departments, and also self-represented litigants, clients and affiants, on the understanding that all of these persons could be authors of documents in the database. Thomson objected to this class definition, in part, because it was unmanageable; a court document may have multiple co-authors, including senior and junior lawyers, lawyers from more than one law firm, and clients as authors. The Court agreed that the proposed class was over-inclusive, finding that Mr. Waldman's interests were aligned with those of lawyers in private practice; among other considerations, the other potential class members probably had no commercial interests to protect. Accordingly, the class was limited to lawyers and paralegals in private practice and licensed to practice law in Canada who were authors and owners of copyright in work that was included in Litigator.
With regard to the common issues, the Court made revisions in this case to avoid questions which were tautological or would pre-suppose the determination of individual issues; for example, two of the proposed common issue questions involved whether Litigator contains works authored or owned by class members; if there was copyright in these documents, the answer to these questions would always be "yes". On the other hand, the Court found that several of the proposed common issues could be productively dealt with; for example, Thomson's defenses, which could be established by general practice evidence.
Accordingly, the Court approved the following common issues:
- Did Thomson through its Litigator service reproduce, publish, telecommunicate to the public, sell, rent, translate, or hold itself out as the author or owner of court documents?
- Did Thomson through its Litigator service authorize subscribers to reproduce, publish, telecommunicate to the public, sell, rent, translate, or hold themselves out as the author or owner of court documents?
- Did Thomson have the copyright owner's implicit consent to reproduce, publish, telecommunicate to the public, sell, rent, translate, or hold itself out as the author or owner of court documents?
- Does Thomson have a public policy defence to copyright infringement or to the violation of moral rights based on (a) fair dealing, (b) the open court principle, (c) freedom of expression, (d) the necessity of using the idea of the court document as it is expressed, or (e) a business or professional custom or public policy reason that would justify reproducing, publishing, telecommunicating to the public, selling, renting, translating, or holding itself out as the author or owner of court documents?
- Does Thomson's conduct justify an award of aggravated, exemplary, or punitive damages?
- Are Class Members entitled to injunctive relief against Thomson under s. 34 (1) of the Copyright Act?
Notably, the Court could find no basis for certifying a common issue in relation to the quantification of damages, which would involve individualized assessments. Nonetheless, for the reasons the Court canvassed in Robinson v. Medtronic Inc.,  OJ No 4366 (SCJ), aff'd  OJ No 3056 (Div Ct), the Court held that where the ultimate determination of the entitlement and quantification of punitive damages must be deferred until the conclusion of the individual trials, the question of whether the defendants' conduct was sufficiently reprehensible or high-handed to warrant punishment is capable of being determined as a common issue.
Finally, the Court allowed that a number of material individual issues would remain to be addressed. In particular, the Court held that unless Thomson's defences succeeded, there would necessarily have to be individual issues trials to determine: (a) whether a particular document is a literary work; (b) who is the author(s) of the literary work; (c) who is the owner of the copyright; (d) what is the quantification of compensation for infringement; and, (e) if Thomson's conduct qualifies for condemnation, what is the quantification of the punitive damages. Further, if the common issues judge decided that the consent to copying defence was not proven systemically or innately across the class, the issue of whether a Litigator document was reproduced without the consent of the copyright owner would also be an individual issue.
Thomson raised a number of arguments at the "preferability" stage of the analysis, including that the proceedings would be inefficient; that the proposed class members confront no economic or social barriers to making claims to enforce their legal rights; and that its behaviour does not need to be modified, because the Litigator service, on the contrary, facilitates the open court principle, freedom of expression, the administration of justice, and the professionalism of the legal profession. The Court rejected these arguments, finding that (besides the manageability issue) Thomson was inviting the Court to conclude that it was innocent from the outset: "A necessary premise of Thomson's argument is that the Court will, on the merits, decide that Thomson committed no legal wrong and that its Litigator service is not an infringement of copyright or a violation of individual class members' moral rights." Absent that premise, a class proceeding was a reasonable means to provide access to justice to class members.
The Court acknowledged that complex issues might nevertheless remain to be determined in individual trials. First among these could be the question of authorship. Because court documents may reflect the work of multiple authors – including clients – the Court agreed with Thomson that solicitor and client privilege would have to be waived in relation to contested documents, if the trial reached this stage.
This case reaffirms the courts' reluctance to give credence to arguments about the merits of a claim which would undermine the rule that the facts set out in the statement of claim are assumed to be true and provable. To the extent the defendant wishes to challenge the merits of a proposed class action at an early stage, Justice Perell's holding confirms implicitly that a summary judgment motion may be one of the only available options.
1.See Arabi v. Toronto-Dominion Bank,  OJ No 2072 (SCJ) at para 9, aff'd  OJ No 5035 (Div Ct) and Robertson v. Thomson Corp. (1999), 43 OR (3d) 161 (Gen Div) at p 391.