Originally published in Blakes Bulletin on Intellectual Property, November 2006
The Supreme Court of Canada, in Robertson v. Thomson Corp., clarified the respective rights of authors and publishers in the thorny area of collective works. In a split five-to-four decision, the Supreme Court of Canada upheld lower court decisions that a newspaper publisher’s electronic databases potentially infringed a freelance author’s copyright in her articles, but found that selling searchable CD-ROMs with historical content from the newspaper was a valid exercise of the publisher’s copyright in the newspaper and did not infringe the author’s rights.
Heather Robertson was a freelance writer who, in 1995, contributed two articles to The Globe and Mail newspaper, which at that time was published by Thomson Canada Limited (Thomson), a subsidiary of The Thomson Corporation. Robertson’s contributions pre-dated Thomson’s practice, adopted in 1996, of entering into written agreements with freelance authors expressly granting it certain electronic rights in freelance work. Robertson brought a class action alleging that Thomson infringed copyright in the articles by reproducing them in three electronic databases: the "Info Globe Online", the "CPI.Q" and a third CD-ROM-based product.
The Info Globe Online database included articles, stories, headlines, by-lines, and page and section references from the newspaper. It excluded advertisements, photos, photo captions, illustrations, stock market and financial tables, birth and death notices, cross-references, "what’s inside" teasers and weather forecasts. Each component of the newsprint edition was transferred to the database through the use of computer source code and stored as a separate electronic document with a unique identifier. The database could be searched electronically. When an article was retrieved, the text of that article was displayed along with its headline, and page and section references in the newsprint edition. Design and editorial elements of the newspaper, e.g., the fonts, mast head, logos, layout and crossreferences to related stories or editorials, were not displayed.
Articles were also accessible through the CPI.Q database. The Canadian Periodical Index (CPI) was an index, organized by author and subject, used to locate articles in the print copies of newspapers. The CPI.Q was an electronic version of CPI, key word searchable and capable of displaying the individual article resulting from the search.
Lastly, Thomson made available on CD-ROM a year’s worth of editions of its newspaper along with several other Canadian newspapers from that calendar year. The content was similar to the Info Globe Online. A reader could scroll through the electronic edition of the newspaper, or search the database and view an article in isolation.
The Motion Judge
Robertson brought a motion for partial summary judgment. The motion judge held that copyright might be infringed by each of the three databases, but there were still genuine issues for trial with respect to Thomson’s defences of implied terms, implied licence, consent, acquiescence, and waiver. The motion for summary judgment was dismissed.
The motion judge held that in the absence of an agreement to the contrary, copyright in an individual work and related resale rights remained with a freelance author. However, the freelance author could not restrict the reproduction of the collective work once the individual work was integrated into it. Under subsection 3(1), "‘copyright’, in relation to a work, means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever." Thus, the publisher, as owner of the collective work, could reproduce "any substantial part" of the collective work. Subsection 3(1) also reflected that the Copyright Act was designed to be media neutral since the collective work could be produced or reproduced by the publisher "in any material form whatever." Originality in a collective work, such as a newspaper, was based on the editors’ labour, judgment and skill in selecting, editing and arranging the various components of the newspaper.
The motion judge set out two perspectives from which the Info Globe Online could be viewed. In the first perspective, the electronic database was a reproduction of the collective work. It was mechanically derived from the digitized version of the given edition of the newspaper. The electronic version of the article was identical to the newsprint version of the article and the database always identified its source as being The Globe and Mail. From this perspective, it was the input to the database that mattered. After a search, the isolated article emanated from the electronic text of the newspapers that were in the database. The article was part of the underlying collective work. "The facility of being able to see one article alone is simply an incident of the technology."
In the second perspective, which the motion judge held was the correct legal analysis, the reproduction of an article from the electronic database was a reproduction of the individual work. A search of the database displayed only the stand-alone article downloaded onto a computer and, thus, virtually all of the original arrangement and selection of the collective work was lost. Since the Info Globe Online contained articles from many newspapers, magazines, periodicals and wire services, the user did not necessarily intend to search the collective work known as The Globe and Mail. The electronic databases did not have the function, form or content of a newspaper. On this view, the electronic database was simply a grouping of individual works.
The motion judge considered the U.S. Supreme Court’s reasoning in New York Times Co. v. Tasini (Tasini). On similar facts, that Court recognized that a newspaper publisher could not sell a print copy of an author’s individual article directly to the public without the author’s consent. The Court held that the publisher should not be able to do so indirectly through the medium of a computer database. The motion judge also noted that the courts of European countries considered a new mode of communication to be employed when journalists’ articles and photographs were reproduced through the Internet, so that the electronic version infringed the rights of the journalists. He noted, however, that the copyright statutes under consideration by those courts did not recognize media neutrality as provided in the Canadian Copyright Act.
Court Of Appeal For Ontario
The motion judge’s decision was appealed by both sides to the action (see Ontario Court of Appeal Examines Right of Freelance Authors, Blakes Bulletin on Information Technology, November 2004). A majority of the Court of Appeal for Ontario agreed with the motion judge and endorsed the "second perspective" that the reproduction of an article from the electronic database was an infringing reproduction of the individual work. However, the dissenting judge endorsed the "first perspective" as the correct, media neutral view of the electronic database. The majority and dissent both upheld the motion judge’s finding that the grant of a non-exclusive licence did not have to be in writing and that Robertson did not have standing to restrain the publication of articles on behalf of the staff writers.
Supreme Court Of Canada
A majority of the Supreme Court of Canada held that the Info Globe Online and CPI.Q infringed Robertson’s copyright in her individual works, but found that the CD-ROM was a valid exercise of Thomson’s copyright in the collective work and, therefore, did not infringe. With respect to the other issues under appeal, the Supreme Court of Canada agreed with the decisions below and, in the result, held that the question of the scope of an alleged implied licence involved conflicting evidence and should be determined at trial.
The majority stated: "The real question then is whether the electronic databases that contain articles from the Globe reproduce the newspapers or merely reproduce the original articles. … The answer to this question lies in the determination of whose "originality" is being reproduced: the freelance author’s alone or the Publishers’ as a collective work?"
Referring to its decision in CCH Canadian Ltd. v. Law Society of Upper Canada, the majority reasoned that a substantial part of a newspaper could consist of the original selection so long as the essence of the newspaper was preserved, i.e., that which embodied the originality of the collective work that was capable of attracting copyright. The true essence of the originality in a newspaper was its editorial content, the selection of stories, and the stories themselves. However, for this essence to be reproduced, at a minimum, the editorial content of the newspaper must have been preserved and presented in the context of that newspaper. The publisher’s right to reproduce a substantial part of the newspaper did not require that it be reproduced with advertisements, graphs and charts, and in the same layout. But the "decontextualization" in the Info Globe Online and the CPI.Q went beyond this. The Globe and Mail articles were stored and presented in a database together with thousands of other articles from different periodicals and different dates. The databases were expanding and changing daily as more and more articles were added. The product was a database of individual articles rather than reproductions of the newspaper and was, therefore, a different collective work.
The majority also agreed with the majority below that Canadian courts must be cautious when referencing Tasini. Nevertheless, it adopted the U.S. Supreme Court’s statement in Tasini: "That each article bears marks of its origin in a particular periodical … suggests the article was previously part of that periodical. But the markings do not mean the article is currently reproduced or distributed as part of the periodical." Date and page references merely provided historical information.
The majority of the Supreme Court of Canada held that the ability of a user to search by key word did not determine the issue. However, it disagreed with the analysis of the dissenting judge below, which focused on the source for or input into the electronic database being the electronic version of the newspaper. The majority of the Supreme Court of Canada reasoned that even if the emphasis was not on how the user made use of the database, the focus of the analysis must remain on what the database presented to the user. The Court must compare the original collective work (the newspaper) with the finished collective work (the database) when determining whether there has been a reproduction. "Media neutrality means that the Copyright Act should continue to apply in different media, including more technologically advanced ones. But it does not mean that once a work is converted into electronic data anything can be done with it."
However, the majority held that the CD-ROM did not infringe because it preserved the linkage to the original daily newspaper. When viewing an article after searching for a particular edition, the articles from that day’s edition appeared in the frame on the right side of the screen. The newspaper was presented together on the CD-ROM with a discrete number of other newspapers, each of which was viewable as a separate and distinct newspaper. The essential character of the newspaper was retained.
The dissenting justices of the Supreme Court of Canada would have found in favour of Thomson and dismissed the class action. Justice Abella, who wrote the reasons dissenting in part, agreed that the CD-ROM did not infringe, but would have also held that the Info Globe Online and CPI.Q were equally reproductions within Thomson’s copyright in the collective work.
The majority asked whose originality, the publisher’s or the freelance author’s, was reproduced in the databases. In Justice Abella’s view, the majority’s approach contradicted the essence of a collective work, which inherently contained the originality of the authors as well as the originality of the publisher. Instead, she asked whether a substantial part of the originality that conferred copyright in relation to the collective work had been preserved in the electronic reproduction.
Justice Abella was also of the view that, to be consistent with the principles of media neutrality, one should not conduct a mere visual comparison of the work and the item said to be a reproduction of the work. “The conversion of a work from one medium to another will necessarily involve changes in the work’s visual appearance, but these visual manifestations do not change the content of the right.” Robertson did not take issue with the daily Internet edition of the newspaper. Justice Abella reasoned that, in substance, there was no difference between the daily Internet edition and a bundle of electronic articles from a given day’s paper. Both contained every article selected by the editors for inclusion in the newspaper and the text of every article was as it appeared in the newspaper. The skill and judgment of the newspaper’s editors exercised in selecting and editing the articles were fully contained in the electronic reproductions.
Referring to Tasini, Justice Abella stated that it would be unwieldy to view an entire newspaper as a single stream of electronic text. Therefore, the “logical unit” by which to divide the newspaper into manageable pieces was the individual article. The loss of context emphasized by the majority underlied form over substance and, as a result, was inconsistent with the principle of media neutrality. Any difference between the print and database versions of the newspaper was attributable to the digital form alone. “So long as a ‘substantial part’ of the work is ultimately reproduced, the publisher’s entitlement under our media neutral Copyright Act is to be able to adjust the form of its work to suit the exigencies of new media technologies.”
In Justice Abella’s view, the fact that a number of electronic editions were collected together did not change the analysis. “This is simply the electronic analogy to stacking print editions of a newspaper on a shelf.” Individual authors did not lose copyright in their articles by virtue of their inclusion in an electronic database, so, too, newspaper publishers did not lose their right to reproduce their newspaper by doing the same.
The prescriptive value of this case may be minimal since the best advice for publishers and freelance authors is to expressly state in a written agreement the uses that articles may be put to in electronic form. This is what Thomson has done since 1996. Nevertheless, the Supreme Court of Canada’s decision illustrates the difficulties in attempting to address possible future changes in technology before problems arise and are litigated. The Supreme Court of Canada’s five-to-four split decision mirrors the Court of Appeal for Ontario’s two-to-one decision and the two perspectives identified by the motion judge. Thus, it is clear from the history of this case that there were strong arguments supporting both interpretations on how the rights in the individual and collective works should transfer into the electronic realm. It can be expected that copyright owners and their counsel will continue to have their work cut out for them when crafting contracts dealing with copyright and collective works.
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