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Court decision foreshadows policy debate

Copyright ruling seeks a balance

As Canadians gather on this Thanksgiving holiday, they might consider giving thanks to Canada's judiciary. This past year has been a monumental one for our judiciary with several courts exhibiting courage in addressing novel and challenging copyright issues.


The Supreme Court of Canada has led the way with two key decisions — CCH v. The Law Society of Upper Canada, often called the legal publishers case, and the online music case frequently referred to as the Tariff 22 decision. In both cases, Canada's top court affirmed the need for a balanced approach to copyright, rising above the lobbying and politicization of copyright reform to craft decisions that take the public interest seriously.


Copyright has also been a hot topic in the federal and provincial courts. At the federal court level, Judge Konrad Von Finckenstein dealt a blow to the recording industry last spring by refusing to harm the privacy interests of dozens of individual Canadians when presented with insufficient evidence.


Last week, the Ontario Court of Appeal weighed in, releasing an important new copyright decision that pitted thousands of freelance writers against the Thomson Newspapers Corp., then the publisher of The Globe and Mail (now published by Bell Globe Media), in a major class action lawsuit.


The case involved a lawsuit launched by Heather Robertson, a well-known Canadian author and freelance writer, who wrote two articles that were published in the Globe in 1995. The Globe later included the work in several databases. Robertson sued, arguing that the inclusion of the articles without permission or compensation constituted an infringement of her copyright. For its part, the Globe argued that inclusion of the work in the database fell within its copyright as a collective work or compilation of material.


Although the Copyright Act grants copyright to the original author of a work, the statute also contemplates the possibility of copyright being granted to a party that compiles existing material and casts it in a unique manner. While that copyright holder does not hold copyright in the individual works that constitute the compilation, the collection itself benefits from copyright protection.


Today most newspapers recognize the value of including articles in both the print form of a newspaper as well as in a searchable database. Publishers therefore typically secure the rights to include the work of freelance writers in their databases. Freelance contracts dating prior to the late 1990s were not particularly prescient however, and often failed to include specific provisions to address publication beyond the print edition of the newspaper.


When freelance writers began to assert that they were entitled to additional compensation for the inclusion of their work within the databases, the publishers balked, claiming that they could rely on existing copyright law to support the additional use of the work. That argument has given rise to litigation in both the United States and Canada.


In the U.S., the matter was addressed by the U.S. Supreme Court, which ruled in favour of the freelance writers in a landmark 2001 case called Tasini v. New York Times. The Robertson case provided Canada with a parallel case, though the Canadian version has moved very slowly through the court system. Robertson commenced her action in 1996 and expanded it to a class action in 1999. An appeal of last week's decision is a distinct possibility, suggesting many more years of legal wrangling lies ahead.


At the trial, an Ontario court concluded that the use of Robertson's work within the Globe's databases fell outside of its compilation copyright. A split Ontario Court of Appeal affirmed that decision last week. The court ruled that in both form and function, the Globe newspaper and database differ. In form, the newspaper is limited to the events of the day, whereas the database expands daily with a new collection of articles. In function, the newspaper's primary purpose is to provide readers with the news, while the database is chiefly used for research. Given the differences, the court was convinced that the effect of a newspaper is lost when placed into a searchable database.


While this decision is certainly noteworthy, its importance extends beyond the particular facts of the case in three ways. First, the decision provides a clear illustration that when the Supreme Court talks, Canadian courts listen. In this case, the court relies heavily on the Supreme Court's emphasis on copyright balance, commenting that "the Act's objective is to maintain a balance between the public interest in access to information and the right of the author to prevent others from appropriating the benefits generated from his or her work. Excessive control by authors that limits creative innovation is not in the long-term best interests of society as a whole."


Second, the court engages in a spirited discussion of the differences between Canadian and U.S. copyright law. While concluding that the policy objectives may be similar, it notes that there are sufficient differences such that caution is needed when applying U.S. law within a Canadian context. These differences are important, since there is a tendency among some to simply assume that Canadian law mirrors the rules found in the U.S.


Third, and most importantly, the case raises the spectre of a future copyright policy fight over the establishment of a new copyright right in databases. The prospect for a new database right has been a contentious issue in North America for several years. Although the European Union provided specific protections for databases in 1996, both Canada and the U.S. have yet to follow suit. Canadian leaders such as Canadian Heritage Minister Liza Frulla, her Parliamentary Secretary Sarmite Bulte, and Industry Minister David Emerson have not articulated a position on the issue.


Owners of large databases, particularly media publishers, are unsurprisingly the loudest proponents of a new database right. They argue that the additional protections will encourage the creation of new, useful databases.


Critics fear that a new database right will grant proprietary rights in data that currently do not enjoy protection, thereby limiting public access to facts that are not otherwise subject to copyright. For example, public domain information could become subject to new restrictions once enclosed within a protected database. Moreover, there is no evidence that new incentives are needed to encourage database creation. North America has a flourishing information database industry without any additional protections and there is no evidence that the European Union's approach has resulted in a stronger database industry than that found elsewhere.


The prospect that Canada may be heading toward a fight over the database right is hidden toward the end of the Ontario court's decision. The court notes that in light of the Supreme Court's expansive definition of fair dealing in the legal publishers case to include the possibility of copying full articles for research purposes, the Globe argued that its databases did not infringe copyright since the users of the database could lawfully copy articles under the Copyright Act's fair dealing provisions.


While the court declined to address the issue, at first blush the argument is a surprising one for the Globe to raise since, if successful, it would seemingly reduce the value of the Globe's copyright by empowering users to freely copy stories from its database without compensation.


Upon reflection, however, it becomes clear that the fair dealing provisions will cease to be a concern for major publishers if they are effectively able to eliminate users' ability to make fair dealing copies by exerting technological and legal controls (known as anti-circumvention legislation) to block such copying.


That scenario, which the court foreshadows with its reference to the detrimental effects of excessive control, sits at the heart of the current copyright reform debate. Should Canada follow the U.S. lead by enacting controversial anti-circumvention legislation, content owners will have the ability to stop users from making copies that the Copyright Act currently permits by "locking" content through a combination of technological and legal controls. Similarly, the establishment of a database right would provide publishers with additional rights that could effectively trump the user rights that form a core component of the copyright balance.


The Robertson decision represents another important step in the evolution of Canadian copyright law. The response of Canadian policy makers may well determine whether next year Canadians will again have much to be thankful for in the copyright realm.

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