For anyone interested in copyright, electronic databases, and freelance writers, there's a new Canadian decision you should know about that promises to be a landmark case: Robertson v. Thomson Corp. [2001 O.J. No. 3868]. The case has not yet been reported in printed Canadian law reports, but a summary of the decision is available at http://www3.quicklaw.com/cgi-bin/lnetdoc.pl?DOCNO=522.
Robertson v. Thomson Corp. is a major Canadian copyright decision in a CDN $100 million class-action suit between Heather Robertson, on behalf of freelance authors, and Thomson Corp.; its electronic publishing affiliate, Information Access Co.; and The Globe and Mail newspaper (recently sold and now owned by Bell GlobeMedia). This is the first Canadian case to examine the ownership of—and the subsequent right to be compensated for the use of—articles by freelance writers in online databases.
On October 3, the Ontario Superior Court of Justice held that freelance authors in Canada own the copyright to their articles as resold in archival online and CD-ROM databases. The court ruled that the works are "stand-alone articles," thus copyright is owned by the freelancers. The Globe and Mail may not claim that individual freelance articles are covered under its copyright ownership in the "collective work."
This is a victory for the freelancers on the issue of copyright ownership. However, the judge didn't rule on the other major issue in the case: whether or not custom and practice in pre-1996 freelancer/Globe agreements can be interpreted by The Globe and Mail as consent of the freelancers to the republication of their articles in the databases.
In 1995, Robertson, a Canadian freelance author, sold two articles to The Globe and Mail. The agreement between Robertson and the paper didn't mention electronic copyright. After publishing the two articles in the paper, The Globe and Mail retained the articles in its electronic archive, which it then offered for sale in its online, CD-ROM, and Internet products.
Robertson argued that The Globe and Mail didn't have the right to resell her articles because she had only entered into an agreement for one-time use of the articles. In 1996, Robertson sued Thomson Corp., The Globe and Mail, and Information Access Co. for unauthorized reselling of her articles in their databases and CD-ROMs. In 1999, Robertson's case was successful in being certified as a class-action lawsuit and it's now estimated that it includes 10,000 other freelance writers.
Thomson and The Globe and Mail claimed to have acted lawfully on the basis that they were exercising their rights inherent to their copyright in the newspaper as a "collective work," whether in print or other media. The paper further argued that it had a license to include the articles through implied terms in the contract and the "custom and practice" in the agreements between The Globe and Mail and its freelance writers.
The central issue in the case was whether freelancers' articles are covered by Canadian copyright as individual works (thus owned by the freelancer), or whether they are covered by the publisher's copyright in the collective work (thus owned by The Globe and Mail).
The court decided clearly in favor of the freelance authors, stating that they own the copyright to their articles as resold and reproduced in online databases and CD-ROM formats. The electronic articles are not covered by The Globe and Mail's inherent ownership in the copyright of its electronic newspaper archive as a collective work. Thus, individual articles may not be reused or resold in archival databases without the express agreement of the author/copyright holder. In his judgment, Mr. Justice Cumming stated: "The Globe is selling access to stand-alone freelance articles.… It is impossible to view the reproduction of the plaintiff's work on The Globe's various databases as reproduction of a collective work." He found that, "[T]he reproduction of the articles in electronic media constitutes a reproduction of her ‘individual' works to which she alone has copyright."
The judge didn't rule on the other major issue in the case: whether the freelancers had consented to the articles being included in the online and CD-ROM databases. Cumming stated: "In my view, The Globe's asserted defences of implied terms, implied license, consent, and acquiescence and waiver are based upon claimed facts in respect of which there is conflicting evidence. For example, there is some dispute over the custom and practice governing the agreements between The Globe and the freelancers. Specifically, there remain questions as to whether these agreements, which were generally oral contracts, included a right to publish materials on the electronic databases. The plaintiff denies that there was any implied term in the contract allowing the defendants to reproduce her articles. However, there is evidence from The Globe that this was understood to be the practice, and that this practice was simply codified in 1996 by a new standard contract. As this question is unresolved, I am unable at this point to come to a determination as to whether there could have been an implied term or license in the agreement. This raises a genuine issue for trial."
Stay tuned. There will be more developments in this case. It's a benchmark in Canadian copyright law and is a long way from being resolved. No trial date has yet been set on the issue of damages and the question of The Globe and Mail's defense of implied consent. It's possible, even likely, that the case could be appealed all the way to the Supreme Court of Canada. The principals in the case are reviewing the decision and no announcement has been made about an appeal. Gabrielle Pop-Lazic (of McGowan and Associates, Robertson's counsel) notes: "This was a partial summary judgment in favor of the freelancers. A trial will be needed on the issue of the customary practices in freelancer/publisher licenses prior to 1996."
Tasini and Robertson
Canadian copyright law differs significantly from the law in the U.S. However, Robertson will have the same impact on Canadian copyright law as Tasini is currently having in the U.S. Although there are major differences between Canadian and U.S. law, the Ontario judge noted: "The wording of the copyright statutes is somewhat different in the two countries. However, in my view, the intent and underlying policy objectives of the respective statutes remain the same." The judge went on to review copyright law and cases in Canada with references to the U.S. Supreme Court decision in Tasini, noting: "…The court held that a newspaper publisher could not sell an individual hard copy of an author's article directly to the public, without the author's consent. The newspaper should not be able to do this indirectly through the medium of a computer database."
Cumming held that: "Databases such as Info Globe On-Line, Info Globe Dow Jones, and CPI.Q, and those located on CD-ROMs do not have the function, form, or content of either a periodical or a newspaper. The reproduction is visually limited to the specific, isolated freelancer's article.… The freelancer is the person who is responsible for the creation of, or originality seen in, the article. On this view, the electronic database is simply a grouping of individual works."
The significance of the decision (including its appeals) will set a precedent in Canadian law. It will also spotlight the ongoing efforts by publishers, creators, and users to find solutions to complex issues of electronic content. Mary Rose MacLachlan, executive director of the Periodical Writers Association of Canada (PWAC; http://www.pwac.ca), said: "The ruling is a positive outcome, especially for freelancers, because Justice Cumming has ruled that copyright exists with the creator. As for compensation for past use, we hope to work with the publications to arrive at mutually acceptable agreements to cover compensation for past use."
Educating the public about intellectual property and its significance and importance to the economy and culture of Canada has been a perpetual recommendation of government task forces and committees; Canadian copyright collectives; and legal, library, education, and information industry groups. Ann Douglas, president of PWAC, looks forward to enhanced interest in copyright and greater public awareness as a direct result of this case. She said: "It has always been a huge challenge for freelancers to spread the word about this all-important issue. Newspapers and other media outlets are sometimes reluctant to give electronic rights and copyright issues the attention they deserve because it is in their best interests to ignore them and hope they will go away. As a result, the issue gets buried in the back of the newspaper—assuming, of course, that it even gets covered at all. But as the Robertson case demonstrates, copyright is an issue that won't go away until freelancers are fairly compensated for each additional use of their work."