Canada: SCC Rules On Electronic Database Copyright Issues

On October 12, 2006, in Robertson v. Thomson Corp., a slim majority of the Supreme Court of Canada held that newspaper publishers are not entitled to republish in certain types of electronic databases articles sourced from freelance journalists, without compensation to and consent of the authors.

Heather Robertson, a freelance author, wrote two articles that were published in The Globe and Mail (the Globe) in 1995. Ms. Robertson objected to the presence of her articles in three electronic databases subsequently published by the Globe, and launched a class-action suit against the Globe and its then-owner Thomson Corporation (the Publishers), alleging copyright infringement.

Pursuant to section 3(1) of the Copyright Act, freelance authors who write newspaper articles retain the copyright in their work, while the publisher of the newspaper acquires a copyright in the newspaper. The Court was therefore confronted with two different but overlapping copyrights. The majority phrased the question at issue as being whether the electronic databases that contain articles from the Globe reproduce the newspapers (or a substantial part thereof) or merely reproduce the original articles.

In answering this question, the majority considered whether or not the "originality" inherent in the newspaper was being reproduced in each of the three databases: Info Globe Online, CPI.Q, and CD-ROMs.

Publishers have copyright in newspapers on the basis of each newspaper being an original collection of different components that reflects the exercise of skill and judgment by the publisher. As copyright owner, a publisher has the right to reproduce not only the work (the newspaper) but also a substantial portion thereof. However, the substantial portion must encompass the essence of the newspaper, or those elements which embody the originality of the collective work. The majority identified the essence of originality in a newspaper as being its editorial content, namely the selection of the stories and the stories themselves.

This requirement led the Court to treat the three different databases in different ways. Info Globe Online and CPI.Q both allow subscribers to search by keyword and retrieve single articles electronically. While users of the CD-ROMs can also navigate using search engines and retrieve articles, the content of the CD-ROM is fixed and finite and users are able to view a paper as a single day’s edition.

The majority of the Supreme Court held that the vast Info Globe Online and CPI.Q electronic databases are best characterized as compilations of individual articles, rather than as a version of the newspaper, because the articles are presented outside of the context of the collective work—the newspaper—of which they were initially a part. As such, they lack the originality necessary to justify the Publishers’ right to reproduce.

The minority dissented on this point, finding that the databases were sufficient to constitute a reproduction of the work or a substantial part of the work. While the majority had viewed the fact that each story was dated and included a section, page number, headline and byline as insufficient to contextualize the article within the collective work, the minority disagreed and found that the database did still reflect the skill and judgment of the newspaper’s editors.

With respect to the CD-ROMs, both the majority and the minority held that they were a valid exercise of the Globe’s right to reproduce its collective works. The majority noted that when viewing an article on CD-ROM after searching for a particular edition, the other articles from that day’s edition appear in the frame on the right-hand side of the page. This was sufficient to render the reproduction "faithful to the essence of the original work."

The majority was also careful to note that the principle of technological media neutrality remained relevant to Canadian copyright law, but did not constitute a license to override the rights of authors. The Copyright Act should continue to apply in different technological media, and once a work is converted into electronic data, the resulting work must still conform to the exigencies of the Copyright Act.

Aside from the main issue, the nine members of the Court held in favour of the Publishers on two other issues.

The Court held that a non-exclusive license need not be in writing. As a result, an implied license from the freelance authors to the Publishers could suffice to defeat the claims of the freelance authors with respect to copyright infringement. Whether or not an implied license could be found on the facts of this case remains to be determined at trial.

The Court also found that employees of the Globe should not have been included as members of the certified class because they have no cause of action against the Globe. Section 13(3) of the Copyright Act provides that when a staff member writes an article for a newspaper, magazine or similar periodical during the course of his or her employment, the copyright vests with the employer while the employee is given a right to restrain publication of the work. As a result, the situation of employee authors was different than that of freelance authors and the class of plaintiffs should not have included employee authors.

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