Databases at issue in Globe and Mail freelancer’s fight

The copyright industry continues to feel the effects of the watershed Théberge and CCH Supreme Court of Canada decisions as a body of cases continues to build on the subject of electronic content. The latest decision, by the Court of Appeal for Ontario and handed down on October 6 sees the court cite both cases in denying a cross-appeal by The Globe and Mail of a lower court ruling that the newspaper does not have the right to publish freelance news articles in online databases without compensating the authors. The appeal court’s decision is heavily influenced by CCH, in particular – unsurprising, since the court asked the parties what the impact of CCH would be on their case given that it was handed down following hearing arguments in the case. As one copyright expert told Canadian NEW MEDIA: "when the Supreme Court talks, Canadian courts listen." The case, Heather Robertson v. The Thomson Corp. et. al., was brought by Globe freelancer Heather Robertson as part of a class action suit against the paper seeking compensation for freelance articles that were placed in several online archives and databases. The Globe was seeking to overturn a decision that went against them in the Superior Court of Justice in October 2001 that ruled that a database is not an article. The Court of Appeal, however, rejected several critical arguments made by the Globe to affirm the lower court’s ruling. In seeking to overturn the 2001 decision, the Globe made the case that the previous judge had relied too much on similarities between American and Canadian copyright law, that he didn’t take into account media neutrality in his decision, and was wrong to rule that simply preserving all the stories that appeared in the print edition of the newspaper was not a "reproduction of a substantial part of the collective work." In a majority decision, Justice Karen Weiler, supported by Justice E.E. Gillese, agrees with the first two arguments, while disagreeing with the third, and dismisses the Globe’s counter-appeal. In the first argument, that relating to media neutrality, Weiler finds some sympathy with the Globe’s arguments. She agrees with the newspaper that re-purposing content for a different economic purpose doesn’t automatically create a copyright infringement. Nor, she says, does the existence of a key word finder that allows users to isolate particular articles from the rest of the collected work infringe on the rightsholder. Toward that conclusion, she writes: "For example, the electronic version of the newspaper, which Robertson concedes does not violate copyright, has a similar electronic indexing or search feature. Although this electronic version of the newspaper is initially presented to the viewer as a collective work with a list of the titles of various articles and excerpts of stories all visible on the same screen, individual articles can easily be isolated. Thus, the fact one can isolate and view an article from the collective work by the use of electronic software, does not necessarily mean that the dominant or overall purpose of the collective work, a newspaper, is lost. "This ability to isolate an individual article simply means the collective aspect of the work is not always visible, analogous to looking at a printed newspaper article through a magnifying glass. Similarly, the machine used to view microfilmed copies of the newspaper also has a zoom feature, and depending on the layout, the viewer may or may not be able to see the arrangement of other parts of the newspaper. What is happening in each of these analogous cases is that the user is engaging in a form of management of the newspaper, the collective work, through the use of technology. As the Supreme Court held in C.C.H. Canadian at para. 38, ‘a person does not authorize copyright infringement by authorizing the mere use of equipment that could be used to infringe copyright.’ The fact that an article can be isolated on a computer and a copy made of the article does not mean that the Globe is authorizing copyright infringement." One copyright expert says the other argument on which the court and the Globe agreed – too heavy a reliance in the 2001 decision on American law – is interesting. The court found that there are significant differences between how Americans and Canadians treat compilations or collections of work that weren’t properly treated by the lower court judge. Michael Geist, a law professor at the University of Ottawa, tells CNM that "I thought the discussion comparing and contrasting Canada and the United States was interesting. I think it’s always worthwhile calling attention to the fact that here we’ve got a Canadian court making quite clear that Canadian law and U.S. law are not the same. That’s a mistake that is often made up here by some people." Geist also finds particular interest in a small paragraph near the conclusion of the majority decision. In it, Weiler explains that the parties were invited to submit comments with respect to the impact of CCH. The Globe did so, with a telling interpretation of fair dealing rights. Weiler writes: "One of the submissions made by the Globe was that the three databases do not infringe copyright because the user is authorized to make only a single copy of the work for research purposes and thus the fair dealing limitation of the Act applies. Fair dealing was the subject of some oral submissions during the hearing of this appeal but did not form the thrust of this appeal. Fair dealing does not appear to have been argued before the motion judge. Robertson submits that the fair dealing limitation might give a third party user the right to make a copy but fair dealing does not allow the Globe to reproduce the freelance authors’ articles in its databases." Geist says the argument seems counter-intuitive since it would leave the Globe open to unfettered copying from its database, unless, he says, the paper is counting on strong digital rights management protection systems coming down the pipe. "I was very surprised to see them try to argue that. To effectively say that anybody should be able to copy that using one of the exceptions, because while I understand that it lets you win the battle, maybe, if a court buys it, surely the longer-term damage that it causes to them, or the cost to them in terms of effectively arguing that people ought to be able to copy material out of their database without compensation and sort of having a very, very expansive definition of that – one would think would be contrary until you think, well, what if you’ve got a database right that creates an extra layer of rights on top of that work, which might well eliminate the power to use that right, and anti-circumvention legislation?" Geist tells CNM, and argues elsewhere, that the Robertson case may well be a spur to adopt new copyright protections for databases, a measure that would arouse no end of controversy in this country.

Databases at issue in Globe and Mail freelancer’s fight

News | 10/29/2004 4:00 am EDT

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