Supreme Court of Canada Protects the Copyrights of Freelance Journalists

December, 2006

In 1995, Heather Robertson had two of her freelance articles published in The Globe and Mail.  The contractual documents governing the publication of the articles did not address the issue of copyright.  The Globe in addition to publishing her articles in the Globe newspaper also placed the articles on a CD-ROM and two databases: Info Globe Online and CPI.Q.  The CD-ROM contained the Globe and various other newspapers.  Its contents were fixed and finite and users were able to view a single day’s edition.  Info Globe Online and CPI.Q store articles from any daily edition of the Globe newspaper with thousands of other articles from different newspapers or periodicals with different dates.  The CD-ROM and databases all omit advertisements, most graphical elements, daily information, some design elements of the original print edition, and birth and death notices.

Robertson initiated an action against the Globe for copyright infringement with respect to the presence of her articles in Info Globe Online, CPI.Q, and the CD-ROM.  Robertson sought partial summary judgment and an injunction restraining the use of her works in the databases and CD-ROM.  The motions judge found that the databases and the CD-ROM reproduced individual articles, not the collective work of the newspapers, yet dismissed the motion on the grounds that there were genuine issues for trial.  The Ontario Court of Appeal affirmed the decision.  The plaintiff appealed to the Supreme Court of Canada.

The Decision of the Supreme Court of Canada

In a 5-4 decision, the Supreme Court of Canada dismissed the appeal.  LeBel and Fish JJ. speaking for the majority framed the relevant question in the case as whether the electronic databases that contain articles from the Globe reproduce the newspapers or merely the original articles.  The Court stated that newspapers are included in the definition of “collective work” in accordance with s. 2 of the Copyright Act.  Further, a newspaper may also be characterized as a “compilation” under s. 2 of the Copyright Act, which defines “compilation” as a work resulting from “selection or arrangement”.  Therefore, the decision had to address two different but overlapping copyrights.  A publisher, such as the Globe, may reproduce a substantial part of the collective work in which they have a copyright, while it is a violation of the Copyright Act for any publisher to reproduce without consent the individual works with respect to which an author owns the copyright.  The majority stated that the answer to this questions lies in the determination of whose “originality” is being reproduced: the freelance author’s alone or the publishers’ as a collective work.

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 with different publication dates.  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, the court held that the originality of the freelance articles is reproduced, while the originality of the newspapers is not.  This is true despite the fact that 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.

The majority ruled that the CD-ROMs were a valid exercise of the Globe’s right to reproduce its collective works or a substantial part thereof pursuant to s. 3(1) of the Copyright Act.  The reason is that the CD-ROMs preserve the linkage to the original daily newspaper.  The CD-ROM presents the user with a collection of daily newspapers which can be viewed separately.  When viewing an article on the CD-ROM, the other articles from that day’s edition appear in the frame on the right hand side of the screen.  This reproduction as a compendium of daily newspaper editions on a CD-ROM remains faithful to the essence of the original work.

The Reasons of the Dissent

For the dissenting judges, Abella J. argued that Info Globe Online and CPI.Q databases reproduce a “substantial part” of the publishers “work” and are as a result within the right of reproduction conferred by s. 3(1) of the Copyright Act.  Therefore, no individual could restrain the publication of their individual works in those databases under s. 13(3) since the publication continues to be “part of a newspaper, magazine or similar periodical”.  Abella states that the fundamental right conferred by the publisher’s copyright is the right to produce and reproduce the copyrighted work.  The right contains two features: (i) the holder of the copyright may reproduce not only the work, but also a “substantial part thereof”; and (ii) the Copyright Act is media neutral: the right to reproduce the work in “any material form whatever”.

Abella goes on to argue that based on the assumption that a collection of electronic articles from one day’s edition of the newspaper constitutes a reproduction of that day’s newspaper, the integration of the electronic reproduction into a database containing similarly organized versions of other periodicals does not cause the electronic version to lose its character as a reproduction of a newspaper and its protection under s. 3 of the Copyright Act.  Abella states that the ultimate question to be asked is whether the database contains a reproduction of a substantial part of the skill and judgment exercised by the publishers in creating the newspaper.  If an “electronic edition” reproduces the publishers’ skill and judgment and is, on that basis a reproduction of the publishers’ newspaper, there is no reason why the nature of the database in which the electronic editions are housed should change the designation and character of those editions.

Commentary

After reviewing the reasons of the majority and the dissent, I find myself siding with the reasoning of the majority for the following reasons.

It is clear that Robertson owns the copyright in her article.  Once the Globe obtains the right to use Robertson’s article in one of its newspapers, the Globe may select the article for and/or arrange the article in the Globe.  Should the Globe incorporate the article into a Globe newspaper, a copyright arises in favor of the Globe for the selection of the articles for the newspaper and/or arrangement of the newspaper of which the article forms a part.  These copyrights arise to protect the originality the Globe produced in creating the newspaper.  However, the Globe has no copyright to produce or reproduce the individual article itself, except in the context of the newspaper.

The Copyright Act protects the originality of an author’s work and grants the author an exclusive right to reproduce the work.  In this case, the Globe has the copyright to reproduce the newspaper, which qualifies as a collective work and a compilation.  The originality of a newspaper, which the Copyright Act protects, is the selection of articles for the newspaper and the arrangement of the articles in the newspaper.

The Info Globe Online and CPI.Q only permit the articles of newspapers to be accessed individually and not otherwise in or as a part of a newspaper.  Therefore, the publisher may only assert that its copyright in the selection of the articles for its newspaper gives it the right to reproduce the newspaper articles in the database.  As the databases do not present the article as a part of the newspaper in which it was published unlike the CD-ROM, the publisher is unable to assert that it reproduces the article in the database on the basis of its copyright in the arrangement of the newspaper.

When one accesses an article in the database, it is only the references, which detail the newspaper the article was published in, the date it was published, and the page number where the article appeared, which indicate that the article ever formed a part of a newspaper.  It seems insufficient to argue that the inclusion of such information means that the newspaper publisher is reproducing the articles on the basis of its copyright in the selection of the articles published as a newspaper.  Naturally, a physical copy of a newspaper contains all the articles selected for the newspaper.  However, because the database is only capable of reproducing the individual articles, how can the publisher claim that it reproduces the individual articles on the basis of its copyright in the selection of the articles for a newspaper?  One cannot state that a publisher’s copyright in the selection of the articles for the newspaper authorizes the individual production of articles on the database for the reason that a person has the information necessary to assemble all or a substantial part of the newspaper in which the article appeared.  The various newspaper articles on the database are not akin to a physical copy of a newspaper in which all the articles are present.  Instead, the database more clearly resembles thousands of individual newspaper articles cut out and presented in no particular order, while containing a reference to the newspaper in which they were published.

Taken another way, does the fact that the articles were published in a newspaper grant the copyright to the publisher to permit the article to be reproduced individually on the database?  Certainly, if the article never formed a part of the newspaper, the newspaper publisher would have no copyright to produce it on the database.  And of course, the Copyright Act does create certain copyrights in the publisher once the article becomes a part of a newspaper.  Yet in the case of a newspaper, the publisher only owns the copyright created from the arrangement and/or selection of the items making up the newspaper – not any copyright to the individual items themselves.  If cannot be the function of the Copyright Act to grant the publisher of a newspaper, who published a freelance article in its newspaper, the right to make the individual article available in any form or format, i.e. book, database, separate and apart from the newspaper so long as a reference is made that the article did at one time form a part of a published newspaper.  If such were true, once any person licensed someone else to use an article in a compilation such as a newspaper, the party who created the compilation would have the copyright to reproduce the individual article separate and apart from the newspaper.  What right would the freelance journalist have left to the individual article?  The fact is that where an individual article is separated from the newspaper in which the copyright in the selection of articles for the newspaper and/or arrangement of the newspaper arose, the copyright of the publisher in the selection of the articles for the newspaper and/or arrangement of the newspaper does not permit the publisher to store the articles individually on a database on the basis that reference is made to the day, page, and newspaper in which the article once appeared; the copyright of a newspaper publisher only exists in the entire or substantial selection of articles for the newspaper and/or arrangement of the newspaper not in the reproduction of the individual articles themselves.

The practical result of this decision shall mean that if a newspaper publisher, who obtains a license from a freelance author to use an article in its newspaper, wishes to make such article available separate and apart from the newspaper, it will have to obtain such right from the author.  Otherwise, newspaper publishers remain able to lawfully reproduce a substantial part or entire newspapers containing the articles of freelance authors in any other format so long as the originality of the newspaper in the arrangement of the newspaper or the selection of the articles for the newspaper, for which the Copyright Act provides certain rights and protections, is present.

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Ryan K. Smith is a lawyer and trade-mark agent at Feltmate Delibato Heagle LLP. He specializes in corporate and commercial law with expertise in intellectual property matters including trade-marks, copyrights, privacy, information technology, and confidential information.  You can reach Ryan at rsmith@fdhlawyers.com and (905) 287-2215.