Canada: Ontario Court Of Appeal Examines Right Of Freelance Authors

This article was originally published in Blakes Bulletin on Information Technology - November 2004

In Robertson v. Thomson Corporation, the Ontario Court of Appeal has considered the right of a freelance author, who had contributed articles to a newspaper, to restrain publication of her articles in electronic archiving and search databases and CD-ROMs. The Court held that, subject to any applicable defences, the reproduction of the freelance author’s articles in these electronic databases without her authorization infringed her copyright in the articles.

Heather Robertson, an award-winning Canadian author and freelance writer, wrote two articles that were published in The Globe and Mail (the Globe), a national newspaper. Subsequently, the owners of the Globe placed the articles in three electronic databases – two online databases and a CD-ROM. Each database uses different search methods for locating articles, but all of them differ from the electronic edition of the Globe. Articles may be accessed conducting various searches, including by date or keyword, although no pictures, advertisements or artworks appearing in the print version of the newspaper are reproduced. The electronic edition of the Globe was not subject to dispute in this case.

As part of a class proceeding, Robertson, as a representative plaintiff of the Globe’s independent contractors and employees, brought a motion for partial summary judgment and an injunction restraining the use of her work in the electronic databases on the basis of infringement of copyright in her articles by the Globe for making her articles available to the public through these electronic databases. The Globe argued that there was no infringement of copyright since it owned the copyright in each newsprint edition of the newspaper as a collective work. The Globe also argued alternative defences including the existence of an implied licence or an implied term in the contract in the event that the court was to find a prima facie infringement.

The Ontario Superior Court of Justice, in a judgment rendered in 2001, had ruled that, as an independent contractor, Robertson had no standing to assert claims on behalf of the employees of the Globe and that she could not seek to restrain the Globe from including its employees’ works in the electronic databases since the employees must do so personally. The court concluded that the Globe had the right to reproduce the newspaper in any material form, which included the right to archive and make the newspaper available electronically, but only so long as the reproduction is that of the entire collective work and not of its individual works. The court held that the electronic databases were systems of retrieving individual articles in which Robertson, and not the Globe, held copyright. As a result, the reproduction of the articles written by Robertson in the databases prima facie infringed the copyright held by her in her individual works. The court concluded that there was a genuine issue for trial with respect to the defences asserted by the Globe and dismissed the motion.

The principal issue before the court was whether the reproduction of Robertson’s articles in the electronic databases fell within the copyright in the collective works of the Globe or infringed the copyright of Robertson in her works.

Under the Copyright Act (Act), the Globe has copyright in its newspaper because it is both a "collective work" and a "compilation". The definition of "collective work" in the Act expressly refers to newspapers. The Act defines a "compilation" as a work resulting from the selection or arrangement of literary, dramatic, musical or artistic works or part thereof, or a work resulting from the selection or arrangement of data. Although an arranger of a compilation may own the copyright in the compilation, depending on the facts of each case, the arranger may or may not own the copyright in the individual components of the compilation.

The court stated that, as a freelance author, Robertson created an original work and was the first owner of the copyright in that work. The Globe, however, is entitled to copyright in each edition of the newspaper as a collective work. The Globe’s copyright in its collective work does not extinguish Robertson’s copyright in her individual work. In order for the reproduced electronic databases to fall within the Globe’s collective copyright, they must have constituted the newspaper "or any substantial part thereof in any material form whatever". The majority of the court (Blair J. was in dissent) concluded that the newspaper’s arrangement was not sufficiently preserved in the databases and that a substantial part of the newspaper was not reproduced. Therefore, the court held that, subject to any defences that the Globe may have, the Globe infringed Robertson’s copyright when it included her work in the various databases. These defences will be the subject of a trial and the court did not consider them.

The court also upheld the motion judge’s decision that Robertson had no standing to assert a claim for injunctive relief on behalf of Globe’s employees. Although the Act deems an employer to be the owner of copyright in a work created by an employee in the course of his or her work, the employee is deemed to have a right to restrain publication of his or her work other than as part of a newspaper, magazine or similar periodical. However, the court held that the employees’ right of restraint under the Act is a personal right, and hence, Robertson did not have standing to assert a claim for injunctive relief on their behalf.

It is also important to note that although the court reached a similar conclusion as that reached by the Supreme Court of the United States in N.Y. Times Co. v. Tasini, the court accepted the Globe’s arguments that the motion judge had erred by placing too much reliance on American case law. Given the different approaches to copyright in the United States and Canada, courts must be very careful in applying United States decisions.

Although this was a victory for freelance contributors to publications, we must wait for the decision of the trial court regarding the defences asserted by the Globe in order to fully appreciate how the courts will interpret, in electronic media, the rights of publishers and those of freelance contributors to newspapers, periodicals and magazines.

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