Robertson v. Thomson Corp.


CITATION: Robertson v. Thomson Corp., [2006] 2 S.C.R. 363, 2006 SCC 43
DATE: October 12, 2006
DOCKET: 30644

Heather Robertson
Appellant /
Respondent on cross-appeal
The Thomson Corporation, Thomson Canada Limited, Thomson Affiliates, Information Access Company and Bell Globemedia Publishing Inc.
Respondents /
Appellants on cross-appeal
Canadian Newspaper Association and Canadian Community Newspaper Association

McLachlin C.J. and Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ.

REASONS FOR JUDGMENT: (paras. 1 to 64)
LeBel and Fish JJ. (Bastarache, Deschamps and Rothstein JJ. concurring)

Abella J. (McLachlin C.J. and Binnie and Charron JJ. concurring)

Show Headnote

The judgment of Bastarache, LeBel, Deschamps, Fish and Rothstein JJ. was delivered by LeBel and Fish JJ. –

I. Introduction

The central issue on this appeal is whether newspaper publishers are entitled as a matter of law to republish in electronic databases freelance articles they have acquired for publication in their newspapers – without compensation to the authors and without their consent. In our view, they are not. Their copyright over the newspapers they publish gives them no right to reproduce, otherwise than as part of those collective works – their newspapers – the freelance articles that appeared in them.

Pursuant to the Copyright Act, R.S.C. 1985, c. C-42, newspaper publishers own the copyright in their newspapers and have a right to reproduce a newspaper or a substantial part of that newspaper but do not have the right, without the consent of the author, to reproduce individual freelance articles. Info Globe Online and CPI.Q are vast electronic databases. They are compilations of individual articles presented outside the context of the collective work of which they were a part. The resulting collective work presented to the public is not simply the collective works joined together – it is a collective work of a different kind.

In our view, therefore, The Globe and Mail (“Globe”) cannot republish freelance articles in the Info Globe Online or CPI.Q electronic databases. The right to reproduce a collective work under the Copyright Act does not carry with it the right to republish freelance articles as part of an entirely different collective work.

On the other hand, we believe the CD-ROMs are a valid exercise of the Globe’s right to reproduce its collective work. The CD-ROMs can be viewed as collections of daily newspapers in a way that Info Globe Online and CPI.Q cannot.

For these reasons and the reasons set forth below, we would dismiss the appeal and dismiss the cross-appeal except with respect to the CD-ROMs.

II. Background

At its core, this case concerns the competing rights of freelance authors and newspaper publishers. The Copyright Act establishes a regime of layered rights. Freelance authors who write newspaper articles retain the copyright in their work while the publisher of the newspaper acquires a copyright in the newspaper.

It is undisputed that freelance authors have the right to reproduce their individual works. The extent and scope of a publisher’s right to reproduce those same articles as part of its right to reproduce its newspaper is less clear.

Advancements in computer technology have drastically altered the newspaper reality. Newspapers, once synonymous with the printed word, can now be stored and displayed electronically. The electronic databases in question archive thousands upon thousands of newspaper articles. Like a stream in constant flux, these databases are continuously growing and therefore changing. Search engines enable users to sift through these articles at lightning speed with the click of a mouse. These advancements, however, like most others, carry with them new challenges. One of these challenges is to evaluate the rights of newspaper publishers in this evolving technological landscape.

For well over a century, newspapers have archived back issues. Initially, as the motions judge observed, this was achieved by keeping them in a library – sometimes referred to in newspaper parlance as a “morgue”. With the advent of microfilm and microfiche, past editions were archived using photographic imaging technology. Currently, newspapers are archived in electronic form. The subject electronic databases, however, do more than simply archive back issues.

10 The transfer of articles from their newspaper format and environment to Info Globe Online and CPI.Q, unlike the conversion to microfilm or microfiche, is no mere conversion of the newspaper from the print realm to the electronic world. As we will explain, the result is a different product that infringes the copyrights of freelance authors whose works appear in those databases. We begin with a review of the factual and judicial history.

III. Factual History

11 Heather Robertson is a freelance author. In 1995, she wrote two articles that were published in the Globe. One, a book excerpt, was the subject of a written agreement between the Globe and the publisher of Robertson’s book; the other, a book review, was written under oral agreement with Robertson. Copyright was not addressed in either case. Subsequently, in 1996, it became the practice of the Globe to enter into written agreements with freelance authors expressly granting it certain electronic rights in freelance work. The agreement was later modified to expand the electronic rights clause. These agreements are not at issue in this case.

12 The Globe is one of Canada’s leading national newspapers and has been produced in both print and electronic editions since the late 1970s. The named respondents on the appeal are: The Thomson Corporation, Thomson Canada Limited, Thomson Affiliates, Information Access Company and Bell Globemedia Publishing Inc., the current publisher of the Globe (collectively, the “Publishers”).

13 Ms. Robertson objects to the presence of her articles in three databases: Info Globe Online, CPI.Q and the CD-ROMs (collectively, the “electronic databases”). The use of freelance articles in the daily internet edition of the Globe is not in issue before us.

14 Info Globe Online is a commercial database that has existed since April 1979, with stories going back to November 1977. It provides subscribers with access to stories from the Globe for a fee. It also allows subscribers to find articles in many other newspapers, news wire services, magazines and reference databases. Subscribers can search by key word and retrieve articles electronically. The subscriber may display, read, download, store, or print the articles.

15 CPI.Q is the electronic version of the Canadian Periodical Index. The Canadian Periodical Index indexes selected newspaper articles from various newspapers. It is available at libraries and is routinely used in research. In 1987, it became available electronically. CPI.Q is an enhanced form of the original index. It allows subscribers to search the electronic archives of indexed periodicals by key word and to retrieve articles electronically. Once an article is displayed, it is possible to print it as well.

16 The CD-ROMs, each containing the Globe and several other Canadian newspapers from a calendar year, have been available since 1991. Users can navigate using search engines and retrieve and print articles. Notably, the content of the CD-ROM is fixed and finite and users are able to view a paper as a single day’s edition.

17 The electronic databases all omit the advertisements, some tables, photographs, artwork, photo captions, birth and death notices, financial tables, weather forecasts and some design elements from the original print edition.

18 Robertson’s action against the Publishers for copyright infringement was certified as a class action, with the class consisting of all contributors to the Globe other than those who died on or before December 31, 1943: Robertson v. Thomson Corp. (1999), 43 O.R. (3d) 161 (Gen. Div.), at p. 168. Robertson brought a motion for partial summary judgment and an injunction restraining the use of her works in the databases. She sought judgment for two individual class members: herself and Cameron Smith, a former employee of the Globe.

IV. Decisions Below

19 The motions judge found that the electronic databases reproduced “individual” articles and not the collective work of the newspapers.

20 The Publishers asserted a number of defences, including an implied contractual right or an implied licence to reproduce the articles. Robertson countered that such an implied licence, to be valid, had to have been in writing. Cumming J. dismissed the motion for partial summary judgment on the grounds that there were genuine issues for trial: (2001), 15 C.P.R. (4th) 147.

21 Weiler J.A. wrote the majority decision for the Ontario Court of Appeal: (2004), 72 O.R. (3d) 481. She found that the motions judge had relied too heavily on New York Times Co. v. Tasini, 533 U.S. 483 (2001), an American case. She also found that Cumming J. erred by attaching significance to the Publishers’ creation of a different economic activity and by focussing excessively on the technological means of accessing the database using advanced search engines.

22 Weiler J.A. dismissed the cross-appeal nonetheless, concluding that neither the databases nor the CD-ROMs reproduced a substantial part of the Globe. She found that approximately half of the newspaper’s content (the articles) was transferred to Info Globe Online daily. Quantitatively, that was a substantial part. Qualitatively, it was not. Applying a qualitative test, she found it necessary for both the selection and arrangement of the original collective work to be preserved if the collective work was to be reproduced.

23 Weiler J.A. found that when the individual articles are disentangled from the collective work they are not covered by the collective copyright because their arrangement within the collective work is lost. She further observed that the “form” and “function” of the new work were different. As to form, the Globe newspaper is limited to the events of the day, whereas Info Globe Online and CPI.Q are ever-expanding. With respect to function, Globe readers read the news, whereas users of Info Globe Online or CPI.Q research.

24 Weiler J.A. also dismissed the appeal. She found no error in the motions judge’s conclusion that the grant of a non-exclusive licence did not have to be in writing. She also agreed that Robertson did not have standing to assert a claim for injunctive relief on behalf of Globe staff writers.

25 Blair J.A. agreed that the appeal should be dismissed for the reasons given by Weiler J.A., but disagreed with her disposition of the cross-appeal. Blair J.A. framed the question by asking specifically “whether the electronic version of the Globe as found in the electronic archive [was] a reproduction of the collective work” (para. 131 (emphasis deleted)). He found that once an article is placed in the database as part of the collective work it is not relevant how it is located, deconstructed, identified, retrieved or displayed on screen.

26 Moreover, Blair J.A. noted that each article, when retrieved, showed clearly that it was from the Globe by referring to the date of the edition, its original page number, the section in which it was contained, whether it was accompanied by an illustration, its title or headline and the author’s byline.

27 Blair J.A. also agreed with Weiler J.A.’s conclusion that the Publishers could place staff written articles in the electronic databases because employees have no right to restrain publication of their articles in a newspaper, magazine or similar periodical pursuant to s. 13(3) of the Copyright Act. According to Blair J.A., the “electronic version of the Globe”, as found in the electronic databases, falls within the ambit of s. 13(3).

V. Analysis

28 Two issues were raised on the cross-appeal: Whether the electronic databases infringed the right of (1) freelance authors; and (2) Globe staff writers. The appeal raises two other issues: (1) would a licence from a freelance author specifically granting a publisher the right to republish his or her article in the electronic databases need to be in writing? and (2) does Robertson have standing to assert a claim on behalf of employees of the Globe?

29 We propose to deal first with the first issue on the cross-appeal since the bulk of argument related to that issue. We will then turn to the remaining issues.

A.  Cross-Appeal: The Main Issue

30 Section 13(1) of the Copyright Act states: “Subject to this Act, the author of a work shall be the first owner of the copyright therein.” And, s. 2.1(2) of the Copyright Act confirms that “[t]he mere fact that a work is included in a compilation does not increase, decrease or otherwise affect the protection conferred by this Act in respect of the copyright in the work”. Accordingly, Robertson, as the author of her freelance works, is the owner of the copyright in those articles. The same is true for other freelance authors.

31 A publisher does not have any rights in freelance articles themselves but has another, distinct, copyright in the daily newspapers in which the freelance articles appear. Newspapers are included in the definition of “collective work” in accordance with s. 2 of the Copyright Act. A newspaper can also be characterized as a “compilation” pursuant to s. 2 of the Copyright Act, which defines “compilation” as a work resulting from “selection or arrangement”. We are thus confronted with two different but overlapping copyrights.

32 Section 3(1) of the Copyright Act provides:

33 Plainly, freelance authors have the right to reproduce, and authorize the reproduction of, their articles. Similarly, as the holders of the copyright in their newspapers, the Publishers are entitled to “produce or reproduce the work or any substantial part thereof in any material form whatever”.

34 The real question then is whether the electronic databases that contain articles from the Globe reproduce the newspapers or merely reproduce the original articles. It is open to the Publishers to reproduce a substantial part of the collective work in which they have a copyright; it is a violation of the Copyright Act for the Publishers to reproduce, without consent, the individual works with respect to which an author owns the copyright. 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?: see Allen v. Toronto Star Newspapers Ltd. (1997), 36 O.R. (3d) 201 (Div. Ct.).

35 “Originality” is the foundation stone of copyright. Section 5 of the Copyright Act states that copyright shall subsist “in every original literary, dramatic, musical and artistic work”. This was explained by McLachlin C.J., for the Court, in CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, 2004 SCC 13:

36 More specifically, McLachlin C.J. addressed originality as it relates to compilations – in that case, judicial decisions:

37 Similarly, the Publishers have a copyright in their newspapers, each an original collection of different components reflecting the exercise of skill and judgment. Section 2 of the Copyright Act, as noted above, defines a compilation as an original work that is created as a result of selection or arrangement. This same conception of originality underlies the inclusion of the newspapers in the definition of collective work. We note that the use of the disjunctive “or” in s. 2 is significant. The Copyright Act does not require originality in both the selection and arrangement. Similarly, and with all due respect to Weiler J.A.’s contrary finding, we agree with the Publishers that a reproduction of a compilation or a collective work need not preserve both the selection and arrangement of the original work to be consistent with the Publisher’s reproduction rights.

38 Section 3 of the Copyright Act provides the copyright owner with the right to reproduce a work or a substantial part thereof. It follows that a substantial part of a newspaper may consist only of the original selection so long as the essence of the newspaper is preserved, i.e., that which embodies the originality of the collective work that is capable of attracting copyright. In Édutile Inc. v. Automobile Protection Assn., [2000] 4 F.C. 195, the Federal Court of Appeal stated:

39 There is much originality in a newspaper: the editorial content, the selection of articles, the arrangement of articles, the arrangement of advertisements and pictures, and the fonts and styles used. But the true essence of the originality in a newspaper is its editorial content. It is the selection of stories, and the stories themselves, that resonate in the hearts and minds of readers.

40 The task of determining whether this essence has been reproduced may be difficult. Indeed, it is largely a question of degree. At a minimum, however, the editorial content of the newspaper must be preserved and presented in the context of that newspaper.

41 We again agree with the Publishers that their right to reproduce a substantial part of the newspaper includes the right to reproduce the newspaper without advertisements, graphs and charts, or in a different layout and using different fonts. But it does not follow that the articles of the newspaper can be decontextualized to the point that they are no longer presented in a manner that maintains their intimate connection with the rest of that newspaper. In Info Globe Online and CPI.Q, articles from a given daily edition of the Globe are stored and presented in a database together with thousands of other articles from different periodicals and different dates. And, these databases are expanding and changing daily as more and more articles are added. These products are more akin to databases of individual articles rather than reproductions of the Globe. Thus, in our view, the originality of the freelance articles is reproduced; the originality of the newspapers is not.

42 The Publishers argue that the connection with the original newspaper is not lost in the databases because the articles in Info Globe Online and CPI.Q contain references to the newspaper they were published in, the date they were published and the page number where the article appeared. We do not share this view. Rather, we agree with the United States Supreme Court’s finding in Tasini where the same argument was canvassed and rejected. Ginsburg J., for the majority, stated:

43 Weiler J.A. correctly pointed out that caution must be adhered to when referencing Tasini in the Canadian context due to differences in the applicable governing legislation. Pursuant to the U.S. Copyrights Act,17 U.S.C. § 201(c) (2000), the publisher does not have a separate copyright in the collective work but has only the “privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series”. Nonetheless, we find the reasoning in the foregoing passage, which simply describes the nature of the decontextualization that occurs in similar databases, compelling and applicable.

44 This decontextualization is critical to the disposition of this case. As Weiler J.A. observed, “In this vast storehouse of information, the collective work that is the Globe is fragmented, submerged, overwhelmed and lost” (para. 82). In our view, date and page references do not change this – they merely provide historical information, as the U.S. Supreme Court observed.

45 The Publishers also argue that the Court should focus on input rather than output. This was also the view of Blair J.A. in his dissenting opinion. According to this reasoning, a substantial part of the print edition of each day’s Globe (excluding pictures, advertisements, tables and charts) is stored in an electronic file. Blair J.A. found that this electronic data, input into the databases, which represents the electronic reproduction of the print daily. He therefore concluded that the electronic file contains the editorial content of the newspaper and is therefore a “reproduction” within the meaning of s. 3(1) of the Copyright Act, regardless of what use it is put to afterwards.

46 With respect, we believe this approach prematurely terminates the analysis. And the manner in which Blair J.A. framed the question – by asking whether the electronic version of the Globe in the electronic databases is a reproduction of the Globe – presupposes an answer in favour of the Publishers. It is not the electronic data that is presented to the public but the finished product, i.e., the databases. We cannot avoid comparing the original collective work with the finished collective work when determining whether there has been a reproduction. As Megarry V.-C., put it in Thrustcode Ltd. v. W. W. Computing Ltd.,[1983] F.S.R. 502 (Ch. D.), cited with approval by Mahoney J.A. in Apple Computer, Inc. v. Mackintosh Computers Ltd.,[1988] 1 F.C. 673 (C.A.), aff’d [1990] 2 S.C.R. 209: “For computers, as for other things, what must be compared are the thing said to have been copied and the thing said to be an infringing copy” (p. 505).

47 Viewed “globally”, to use the language of this Court in CCH, Info Globe Online and CPI.Q are different selections than the selections that they incorporate. They are compilations of individual articles presented outside of the context of the original collective work from where they originated. The resulting collective work presented to the public is not simply each of the collective works joined together – it has become a collective work of a different nature.

48 To be clear, this analysis is not predicated on the ability of a user to search by key word. We agree with both Weiler J.A. and Blair J.A. that the search mechanism which enables a user to isolate individual articles is not determinative. The focus of our analysis firmly remains on what the Globe presents to the user; not on how the user makes use of it. In this sense, the input/output dichotomy is misleading. Moreover, we are mindful of the principle of media neutrality under the Copyright Act and agree that the principle precludes a finding of copyright infringement merely because it is possible to search with more efficient tools than in the past. That being said, focussing exclusively on input in the name of media neutrality takes the principle too far and, ultimately, turns it on its head.

49 Media neutrality is reflected in s. 3(1) of the Copyright Act which describes a right to produce or reproduce a work “in any material form whatever”. 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 then be done with it. The resulting work must still conform to the exigencies of the Copyright Act. Media neutrality is not a licence to override the rights of authors – it exists to protect the rights of authors and others as technology evolves.

50 Recent developments in international agreements on copyright have not changed these principles. On the contrary, they recognize and apply them.

51 Notwithstanding the foregoing, we part ways with Weiler J.A. regarding the CD-ROMs. In our view, the CD-ROMs are a valid exercise of the Globe’sright to reproduce its collective works (or a substantial part thereof) pursuant to s. 3(1) of the Copyright Act. The CD-ROMs, like Info Globe Online and CPI.Q, do not contain advertisements, pictures or colour and are presented in a different medium and format than the print edition. The critical distinction, however, is that the CD-ROMs preserve the linkage to the original daily newspaper.

52 The user of the CD-ROM is presented with a collection of daily newspapers which can be viewed separately. 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 screen. To pass muster, a reproduction does not need to be a replica or a photographic copy. But it does need to remain faithful to the essence of the original work. And, in our view, the CD-ROM does so by offering users, essentially, a compendium of daily newspaper editions.

53 In our view, the fact that the CD-ROM includes other newspapers is not fatal. The essential characteristic of the newspaper is not lost when it is presented together on a CD-ROM with a discrete number of other newspapers, each of which is viewable as a separate and distinct paper. Moreover, as we indicated above, the ability to search by key word does not make the CD-ROM reproduction any less of a reproduction.

B. The Remaining Issues

54 Section 13(4) of the Copyright Act provides:

55 Section 13(7) of the Copyright Act states:

56 We are satisfied that Weiler J.A. was correct in concluding that only an exclusive licence must be in writing. If Parliament intended for any type of non-exclusive licence to be deemed a “grant of an interest” requiring a written contract, it could have explicitly provided so just as it did for exclusive licences in s. 13(7). In our view, the following passage from the Ontario Superior Court of Justice decision in Ritchie v. Sawmill Creek Golf & Country Club Ltd. (2004), 35 C.P.R. (4th) 163, correctly states the matter:

57 There was conflicting evidence before the motions judge regarding the scope of such an alleged implied licence. The content of these licences is a live issue that should go to trial, as ordered by the motions judge.

58 If it is determined that freelance authors have in fact impliedly licensed the Globe the right to republish their articles in the electronic databases, this decision will, of course, be of less practical significance. Parties are, have been, and will continue to be, free to alter by contract the rights established by the Copyright Act.

59 With respect to the second issue on the appeal, we find that employees of the Globe, including Cameron Smith, should not have been certified as members of the class because they have no cause of action.

60 In a class action, the class definition must be supported by a statement of claim that includes one or more causes of action applicable to each class member. The class definition in the present case does not distinguish between freelance authors and staff writers. The rights of each, however, are fundamentally different.

61 Section 13(3) of the Copyright Act states:

62 When a staff member writes an article for a newspaper, magazine or similar periodical during the course of his or her employment, s. 13(3) of the Copyright Act provides that copyright vests with the employer while the employee is given a right to restrain publication of the work (other than in a newspaper, magazine or similar periodical). Thus, even when freelance authors have a cause of action for copyright infringement, staff writers have no cause of action unless they previously exercised their right to restrain publication. In this case, Cameron Smith never attempted to restrain publication of his articles. And, no evidence was introduced indicating that other staff members exercised such a right.

63 It is therefore unnecessary for the purposes of this case to determine whether the electronic databases constitute “newspapers, magazines or similar periodicals” within the meaning of s. 13(3) of the Copyright Act. We have already found that Info Globe Online and CPI.Q do not constitute reproductions of a substantial part of the underlying print newspapers because they are works of a different nature. Without so deciding, it follows, we believe, for essentially the same reasons, that these same databases cannot be characterized as newspapers, magazines or similar periodicals for purposes of s. 13(3).

VI. Disposition

64 For the foregoing reasons, we would dismiss the appeal and allow the cross-appeal with respect to the CD-ROMs only. Taking into account all of the circumstances and the mitigated result, the parties should bear their own costs in this Court.

Show Reasons Dissenting in Part of the Cross-Appeal by Abella J.

Appeal dismissed and cross-appeal allowed in part, McLachlin C.J. and Binnie, Abella and Charron JJ. dissenting in part on the cross-appeal.

Solicitors for the appellant/respondent on cross-appeal: McGowan & Company, Toronto.

Solicitors for the respondents/appellants on cross-appeal: Torys, Toronto.

Solicitors for the interveners: McCarthy Tétrault, Toronto.

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