The issue on which the Supreme Court of Canada split in its copyright decision in Robertson relates to historical content only, says Wendy Matheson in Law Times

October 23, 2006

In Robertson v. Thomson, a Supreme Court of Canada majority ruled that electronic databases are "a collective work of a different nature" from newspapers, so that publishers must get consent before they republish freelance articles in this form.

At the centre of the action were two freelance articles published in The Globe and Mail in 1995. The appellant (respondent on the cross-appeal) and author, Heather Robertson, initiated an action against The Globe and Mail alleging copyright infringement when her articles also appeared in the Info Globe Online and CPI.Q databases, as well as on CD-ROM.

The action was brought as a class action, with the class being all contributors to The Globe and Mail except those who died before 1944. Robertson sought partial summary judgment and an injunction restraining the use of her works in the databases, seeking judgment for herself and for an employee of the newspaper.

Wendy Matheson, Sheila Block, Andrew Bernstein and Afshan Ali represented the defendants, including The Thomson Corporation and The Globe and Mail.

Thomson's appeal, which was denied by the Supreme Court, involved the issues of whether a licence from a freelance author granting a publisher the right to reproduce his or her article in an electronic database needs to be in writing and whether Robertson could assert a claim on behalf of the Globe employees.

"I think it will be an important case going forward," says Wendy. "It decides unanimously on a couple of very major issues. For example, the court unanimously decided that the arrangements with freelancers need not be in writing, which is key, since for about 100 years, there's been a long-standing practice until very recently of all those arrangements being done orally."

According to the decision, however, in 1996, says Wendy, "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. After the inception of this litigation, not only The Globe and Mail, but indeed most of the newspaper industry, moved to written agreements that expressly provide consent to all electronic uses at issue, including electronic databases. So, for the most part, the issue that the Supreme Court split on relates to historical content only. The fact that it’s split 5–4 shows the debate that’s going on about the extent to which the newspaper’s copyright extends to its use of other media. The Supreme Court of Canada’s decision against electronic databases, for example, does not finally determine whether The Globe and Mail had the right to put those articles on the database. That issue still has to go to trial."

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