Robertson v. Thomson Corp. et al., (2006) 353 N.R. 104 (SCC)

• Judge: McLachlin, C.J.C., Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein, JJ.
• Court: Supreme Court (Canada)
• Case Date: October 12, 2006
• Jurisdiction: Canada (Federal)
• Citations: (2006), 353 N.R. 104 (SCC);2006 SCC 43

Robertson v. Thomson Corp. (2006), 353 N.R. 104 (SCC)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2006] N.R. TBEd. OC.008

Heather Robertson (appellant) v. The Thomson Corporation, Thomson Canada Limited, Thomson Affiliates, Information Access Company and Bell Globemedia Publishing Inc. (respondents)

The Thomson Corporation, Thomson Canada Limited, Thomson Affiliates, Information Access Company and Bell Globemedia Publishing Inc. (appellants by cross-appeal) v. Heather Robertson (respondent by cross-appeal) and Canadian Newspaper Association and Canadian Community Newspaper Association (intervenors)

(30644; 2006 SCC 43; 2006 CSC 43)

Indexed As: Robertson v. Thomson Corp. et al.

Supreme Court of Canada

McLachlin, C.J.C., Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein, JJ.

October 12, 2006.

Summary:

A newspaper published articles by a free­lance writer (Robertson). The news­pap­er's owners also placed the articles in the elec­tronic version of the newspaper, electron­ic databases and on a CDROM. Robertson, as a representative plaintiff of all freelance writers published in the newspaper since 1942, commenced a class action for copy­right infringement. The newspaper's and own­­er's defence was that they acted lawfully in exercising the rights inherent to their "collective work" copyright in the news­paper. Robertson moved for partial summary judgment and ancillary relief through an in­junction restraining use of her works in the electronic media.

The Ontario Superior Court, in a judgment reported [2001] O.T.C. 723, held that the reproduction of Robertson's articles from the Globe's electronic databases via CD-ROM's, Info Globe Online, Info Globe Dow Jones and CPI.Q constituted a reproduction of her in­dividual works to which she had the copy­right. However, because of the issues raised by the asserted defences, there were genuine issues for trial and partial summary judgment was denied. Robertson appealed. The news­paper and owners cross-appealed.

The Ontario Court of Appeal, Blair, J.A., dissenting in part, in a judgment reported (2004), 190 O.A.C. 231, dismissed both the appeal and cross-appeal. Robertson appealed. The newspaper and owners cross-appealed.

The Supreme Court of Canada, McLachlin, C.J.C., Abella, Binnie and Charron, JJ., dis­senting in part on the cross-appeal, dis­missed the appeal and allowed the cross-appeal in part. Freelance articles reproduced in the Info Globe Online and CPI.Q data­bases in­fringed Robertson's copyright, sub­ject to resolving the issue of the implied licence. However, reproduction of freelance articles on the CD-ROMs constituted a valid exercise of the newspaper's right to repro­duce its collective work and did not infringe Robert­son's copyright.

Copyright - Topic 1003

Works subject to copyright - General - Literary works (incl. compilations and collective works) - [See Copyright - Topic 4563 ].

Copyright - Topic 1003

Works subject to copyright - General - Lit­erary works (incl. compilations and collec­tive works) - A freelance writer published two articles in a newspaper - The news­paper also placed the articles in the elec­tronic version of the newspaper, a sub­scrip­tion database (Info Globe Online, which included a cumulative collection of articles and editorials from the newspaper, other newspapers, magazines, newswires and television transcripts), another elec­tronic database (CPI.Q), and on a CDROM (articles from the newspaper and six other newspapers for one year) - Robertson had copy­right in her articles - The newspaper had copyright in its collective work (news­paper) and was entitled, under s. 3(1) of the Copyright Act, to "reproduce the work [collective work of its newspaper] or any substantial part thereof in any material form whatever" including the right in s. 3(1)(f) "to communicate the work to the public by telecommunication" - The Su­preme Court of Canada stated that "we agree with the publishers that a reproduc­tion of a compilation or a collective work need not preserve both the selection and ar­rangement of the original work to be con­sistent with the publisher's reproduction rights. ... we again agree with the publish­ers that their right to reproduce a substan­tial part of the newspaper includes the right to reproduce the newspaper without ad­vertisements, graphs and charts, or in a different layout and using different fonts." - See paragraphs 37, 41.

Copyright - Topic 3010

Licences - General - Oral or bare licences - The author of articles published in a news­­paper claimed the newspaper infringed her copyright by reproducing the articles in several electronic databases - The new­s­paper alleged it had permission pursuant to an implied term or licence - Section 13(4) of the Copyright Act provided that the own­er of copyright may assign the rights, either in whole or in part with limitations, and may "grant any interest in the right by licence" - Section 13(7) re­quired an exclu­sive licence granting an interest to be in writing - The Supreme Court of Canada agreed that only an exclu­sive licence need be in writing - Accord­ingly, it was poss­ible to have an enforce­able implied licence that was not in writing - See paragraph 56.

Copyright - Topic 4563

Infringement of copyright - Internet, On­line services, CD Rom and other electronic media - Newspapers and newspaper articles - A freelance writer published two articles in a newspaper - The newspaper also placed the articles in the electronic version of the newspaper, a subscription database (Info Globe Online, which included a cumu­lative collection of articles and editor­ials from the newspaper, other newspapers, magazines, newswires and television trans­cripts), another electronic database (CPI.Q), and on a CDROM (articles from the newspaper and six other newspapers for one year) - Robertson had copyright in her articles - The newspaper had copyright in its collective work (newspaper) and was entitled, under s. 3(1) of the Copyright Act, to "reproduce the work [collective work of its newspaper] or any substantial part thereof in any material form what­ever" including the right in s. 3(1)(f) "to communicate the work to the public by tele­communication" - The Supreme Court of Canada agreed that a "substantial part" of the newspaper was not "reproduced" in the databases and, subject to any defence the newspaper might have, the newspaper infringed Robertson's copyright - The Info Globe Online and CPI.Q databases were data­bases of individual articles rather than reproductions of the newspaper - Copyright was infringed, subject to available de­fences, where the originality of the free­lance articles was preserved, but the origi­nality of the newspaper was not - How­ever, reproduction in the CD-ROMs did not infringe copyright, as they preserved the linkage to the original daily newspaper and remained faithful to the essence of the original work - See paragraphs 1 to 53.

Cases Noticed:

New York Times Co. v. Tasini (2001), 533 U.S. 483, refd to. [para. 21].

Allen v. Toronto Star Newspapers Ltd. (1997), 105 O.A.C. 191; 36 O.R.(3d) 201 (Div. Ct.), refd to. [para. 34].

CCH Canadian Ltd. et al. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339; 317 N.R. 107; 2004 SCC 13, refd to. [para. 35].

Edutile Inc. v. Automobile Protection Association, [2000] 4 F.C. 195; 255 N.R. 147, refd to. [para. 38].

Thrustcode Ltd. v. W.W. Computing Ltd., [1983] F.S.R. 502 (Ch. D.), refd to. [para. 46].

Apple Computer Inc. et al. v. Mackintosh Computers Ltd., [1988] 1 F.C. 673; 81 N.R. 3 (F.C.A.), affd. [1990] 2 S.C.R. 209; 110 N.R. 66, refd to. [para. 46].

Ritchie v. Sawmill Creek Golf & Country Club Ltd. et al., [2003] O.T.C. 736; 35 C.P.R.(4th) 163 (Sup. Ct.), refd to. [para. 56].

Théberge v. Galerie d'Art du Petit Cham­plain inc. et al., [2002] 2 S.C.R. 336; 285 N.R. 267; 2002 SCC 34, refd to. [para. 69].

Society of Composers, Authors and Music Pub­lishers of Canada v. Canadian Assoc­iation of Internet Providers et al., [2004] 2 S.C.R. 427; 322 N.R. 306; 2004 SCC 45, refd to. [para. 69].

Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co. (1984), 3 C.P.R.(3d) 81 (B.C.S.C.), refd to. [para. 83].

Statutes Noticed:

Copyright Act, R.S.C. 1985, c. C-42, sect. 3(1) [para. 32]; sect. 13(3) [para. 61]; sect. 13(4) [para. 54]; sect. 13(7) [para. 55].

World Intellectual Property Organization Copyright Treaty, CRNR/CD/94 (De­cember 23, 1996), art. 1(4) [para. 97].

Authors and Works Noticed:

Bickham, Douglas P., Extra! Can't Read All About It: Articles Disappear After High Court Rules Freelance Writers Taken Out of Context in New York Times Co. v. Tasini (2001), W. St. U.L. Rev. 85, p. 102 [para. 71].

Geist, Michael, Our Own Creative Land: Cultural Monopoly & The Trouble With Copyright (2006), p. 9 [para. 79].

McKeown, John S., Fox on Canadian Law of Copyright and Industrial Designs (4th Ed. 2003) (2006 Looseleaf Update, Re­lease 2), pp. 1 to 13 [para. 69].

Sims, Charles S., and Morris, Matthew J., Tasini and Archival Electronic Publi­cation Rights of Newspapers and Maga­zines (2001), 18:4 Comm. Law 9, p. 15 [para. 71].

World Intellectual Property Organization, Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms (2003), p. 55 [para. 95].

Counsel:

Michael McGowan, Ronald E. Dimock, Dorothy Fong, Sangeetha Punniyamoor­thy and Gabrielle Pop-Lazic, for the appellant/respondent on cross-appeal;

Sheila R. Block, Wendy Matheson, An­drew Bernstein and Jill Jarvis Tonus, for the respondents/appellants on cross-ap­peal;

Thomas G. Heintzman and Barry B. Sook­man, for the interveners.

Solicitors of Record:

McGowan & Company, Toronto, Ontario, for the appellant/respondent on cross-ap­peal;

Torys, Toronto, Ontario, for the respon­dents/appellants on cross-appeal;

McCarthy Tétrault, Toronto, Ontario, for the intervenors.

This appeal and cross-appeal were heard on December 6, 2005, and reheard on April 18, 2006, before McLachlin, C.J.C., Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein, JJ., of the Supreme Court of Canada.

On October 12, 2006, the judgment of the Supreme Court of Canada was delivered and the following opinions were filed:

LeBel and Fish, JJ. (Bastarache, Des­champs and Rothstein, JJ., concurring) - see paragraphs 1 to 64;

Abella, J. (McLachlin, C.J.C., Binnie and Charron, JJ., concurring), dissenting in part on the cross-appeal - see para­graphs 65 to 101.