Two Major Decisions for Authors Today

the cases are Jameel v. Wall Street Journal and Heather Robertson v. Thomson Corp.

Let’s start with Lord Hoffmann and the Jameel case in the House of LordsOfficial report in PDF.

The case involved a Wall Street Journal story alleging that bank accounts associated with Jameel and other Saudi companies had been monitored by Saudi authorities at the request of US authorities to ensure that the company was not funnelling cash to terrorist organizations. Jameel sued in London since it was a libel plaintiff friendly jurisdiction.

Lord Lennie Hoffmann wrote the lead judgment for a unanimous five-member court. His speech states that although the allegations against Jameel could not be proved, they “made a real contribution to the public interest element in the article”.

Hoffmann added: “Allowance must be made for editorial judgment. If the article as a whole is in the public interest, opinions may reasonably differ over which details are needed to convey the general message. The fact that the judge, with the advantage of leisure and hindsight, might have made a different editorial decision should not destroy the defence. That would make the publication of articles which are, ex hypothesi, in the public interest, too risky and would discourage investigative reporting.”

Another member of the panel, Lord Scott of Foscote, defended the right of the press to publish material deemed private by the government.

“It is no part of the duty of the press to cooperate with any government, let alone foreign governments, whether friendly or not, in order to keep from the public information of public interest the disclosure of which cannot be said to be damaging to national interests,” he stated in his speech.

A third member, Baroness Hale of Richmond, agreed, “We need more such serious journalism in this country, and our defamation law should encourage rather than discourage it.”

The second case comes from our own Supreme Court of Canada which has just given the green light to Heather Robertson’s class action on behalf of freelancers who find their work made available on fee-based databases like InfoGlobe – it can proceed to trial. The court was split on the fundamental issues.

I quote from the headnote on the SCC site:

In 1995, Heather Robertson wrote two freelance articles that were published in The Globe and Mail. Copyright was not addressed in the agreements with respect to either article. Heather Robertson initiated an action against the respondents (“publishers”) for copyright infringement, objecting to the presence of her articles in two databases, Info Globe Online and CPI.Q, and a CD‑ROM. In Info Globe Online and CPI.Q, articles from a given daily edition of The Globe and Mail are stored and presented in a database together with thousands of other articles from different newspapers or periodicals and different dates. The databases identify each article by publication date, page number and other contextual information. The CD‑ROMs also contain The Globe and Mail and various newspapers. Their content is fixed and finite and users are able to view a single day’s edition. The databases and the CD‑ROMs all omit advertisements, most graphic elements, daily information, birth and death notices and some design elements from the original print edition. Heather Robertson’s action was certified as a class action, the class being all contributors to The Globe and Mail except those who died before 1944. Heather Robertson sought partial summary judgment and an injunction restraining the use of her works in the databases, seeking judgment for herself and S, an employee of The Globe and Mail. The motions judge found that the databases and the CD‑ROMs reproduced individual articles, not the collective work of the newspapers, but dismissed the motion on the grounds that there were genuine issues for trial. The Court of Appeal affirmed the decision.

Held (McLachlin C.J. and Binnie, Abella and Charron JJ. dissenting in part on the cross‑appeal): The appeal should be dismissed. The cross‑appeal should be allowed with respect to the CD‑ROMs only.

Per Bastarache, LeBel, Deschamps, Fish and Rothstein JJ.: Newspaper publishers are not entitled to republish freelance articles acquired for publication in their newspapers in Info Globe Online or CPI.Q without compensating the authors and obtaining their consent. Newspaper publishers have a copyright in their newspapers and have a right, pursuant to s. 3(1) of the Copyright Act, “to reproduce the work or any substantial part thereof in any material form whatever”. It follows that a substantial part of a newspaper may consist only of the original selection so long as the essence of the newspaper is preserved. The task of determining whether this essence has been reproduced is largely a question of degree but, at a minimum, the editorial content of the newspaper — the true essence of its originality — must be preserved and presented in the context of that newspaper. Here, in Info Globe Online and CPI.Q, the originality of the freelance articles is reproduced, but the originality of the newspapers is not. The newspaper articles are decontextualized to the point that they are no longer presented in a manner that maintains their intimate connection with the rest of that newspaper. Viewed “globally”, these databases are compilations of individual articles presented outside of the context of the original collective work from where they originated. The resulting collective work presented to the public is not simply each of the collective works joined together — it is a collective work of a different nature. The references to the newspaper where the articles were published, the date they were published and the page number where they appeared merely provide historical information. By contrast, the CD‑ROMs are a valid exercise of The Globe and Mail’s right to reproduce its collective work. By offering users, essentially, a compendium of daily newspaper editions, the CD‑ROMs remain faithful to the essence of the original work. Lastly, the concept of media neutrality reflected in s. 3(1) of the Act is not a license to override the rights of authors. Media neutrality means that the Copyright Act should continue to apply in different media, but it does not mean that once a work is converted into electronic data anything can then be done with it. The resulting work must still conform to the exigencies of the Copyright Act.

A non‑exclusive license granting the right to republish an article in databases or CD‑ROMs does not need to be in writing. Under s. 13(4) and (7) of the Copyright Act, only an exclusive license requires a written contract.

The newspaper staff writers should not have been certified as members of the class because they have no cause of action. Pursuant to s. 13(3) of the Act, the employer owns copyright in articles written in the course of employment while the employee is given a right to restrain publication of the work (other than in a newspaper, magazine or similar periodical). In this case, S never attempted to restrain publication of his articles, and no evidence was introduced indicating that other staff members exercised such a right.

Per McLachlin C.J. and Binnie, Abella and Charron JJ. (dissenting in part on the cross‑appeal): The class action should be dismissed. The newspaper publishers own the copyright in their newspapers. Since Info Globe Online and CPI.Q contain a reproduction of a “substantial part” of the skill and judgment exercised by the publishers in creating their newspapers, they are within their right of reproduction conferred by s. 3(1) of the Copyright Act. The “originality” that conferred copyright in relation to the newspapers has been preserved in the databases because they reproduce fully both the publisher’s selection and editing of the articles appearing in the newspaper, as well as some of the arrangement. This being the case, the databases reproduce the newspaper. Integrating the electronic reproduction into a database containing similarly organized versions of other newspapers or periodicals is the electronic analogy to stacking print editions of a newspaper on a shelf and does not cause the electronic version to lose its character as a reproduction of a newspaper. Further, any difference between the print and database versions of the newspaper is attributable to the digital “form” alone, and thus does not detract from the publisher’s right to reproduce its newspaper in the online databases. Under the concept of media neutrality reflected in s. 3(1), an author’s exclusive right to reproduce a “substantial part” of a copyrighted work is not limited by changes in form or output made possible by a new medium. It is not the physical manifestation of the work that governs, it is whether the product perceivably reproduces the exercise of skill and judgment by the publishers that went into the creation of the work. The loss of “context” emphasized by the majority underlines the form, not the substance, of the databases, and is inconsistent with the media neutral approach mandated by s. 3.

It follows that the copyrights of freelance authors whose works appear in those databases are not infringed, and that the employees cannot restrain publication of their individual works in those databases under s. 13(3) of the Copyright Act since that publication continues to be “part of a newspaper, magazine or similar periodical”.


  1. Robertson v. Thomson Corp., 2006 SCC 43

    a 5-4 decision that divides on whether the electronic databases ‘Info Globe Online’ and ‘CPI.Q’ violated copyright by including articles by freelancers that were originally published in the newspaper. the court was unanimous in determining that the cd-rom collection of newspapers did not violate the copyright of the freelance authors.

    the majority ruled that the articles, when re-published in the databases, became part of a separate work no longer tied to the original newspaper. the minority felt that since a substantial part of the newspapers was reproduced, that the newspaper’s copyright in its compilation should be recognized. the decision parallels the majority and minority opinions in the u.s. tasini decision.

    the majority in the decision seemed to focus on the rights of the freelance authors while the minority seemed to focus on the rights of end users (including libraries and researchers) and noted that the effect of the u.s. decision was the removal of all freelance articles from the electronic databases.

    while the CCH decision was unanimous in determining that users rights need to be balanced with those of creators and rightsholders, this decision seems to return to the philosophical 4-3 split seen in Théberge v. Galerie d’Art du Petit Champlain inc., [2002] 2 S.C.R. 336, 2002 SCC 34.

    looking at the 2 split decisions, the background of the justices is striking. i am curious about whether a grounding in civil law vs common law played some essential part in these decisions ? the informed background of our newest justice also may have had some influence. quoting kirk makin from the globe article referenced by simon:

    “The nature of today’s legal cliff-hanger shed light on the Court’s decision last winter to re-hear the case to allow its newest member – Mr. Justice Marshall Rothstein – to participate. It now seems clear that the Court was deadlocked 4-4 at the time, meaning that Judge Rothstein came on board as the likely swing vote.”

  2. Great coment, senatorhung. And quick work in digesting the decision in time to write such a clear analysis.

  3. I have always thought that a database that is just a loose collection of articles from all over, not just from one paper, was a different work, so I like the majority’s decision here. It seems right in principle, even with its requirement that one draw a line – not a bright one in every case – between a collection that is substantially the same as the original and one that has become something different.

    I find the headnote strange in suggesting in any way that the court was unanimous on some points, and the dissent went only to the cross-appeal. I suppose if the “appeal” went only to whether there would be summary judgment rather than a trial based on the law as found by the court, then the whole SCC said “no summary judgment”. But there was, as Senator Hung notes, and as reading the full text of what Simon C posted, a 5:4 split on the essence of the legal argument about copyright.

    Reading it quickly earlier today, I had (mis)understood it as if the dissent dealt only with whether the CD-ROM should be treated the same way as the database, i.e. that the Globe had no right to publish the freelance article there either. Au contraire, the dissent would have lumped them all together as being the same as a newspaper. I find the dissent’s anology of a database searchable by topic or author, with articles from many publications, to a stack of newspapers on a shelf, unpersuasive.

    Going forward, does this matter very much to publishers and freelancers? No doubt since 1995 the Globe and other papers have put something into their contracts with freelancers about compilations etc. Whether they try to compensate freelancers from before then, or remove all their articles, remains to be seen. Some kind of collective compensation would be easier to administer, but may not be manageable in law. (I don’t suppose damages in the class action would serve as payment so as to allow the data bases to continue to hold freelancers’ articles.)

    Does it cast any doubt on whether one might need a database rights treaty, as is being proposed in Europe? Or is that a completely separate issue, about the rights of the compiler not of the authors of the elements being compiled?

  4. thanks for the kind words SimonF. i had made up the first draft of the note to inform my local library association and then decided to re-purpose it for this forum. i later added a bit more discussion on my own blog, including a comparison of where the judges sat on today’s 5-4 split and where the judges sat on the harvard oncomouse 5-4 split (it’s eerie).

    taking another late look at the decision this evening, i’m troubled by problems with the arguments of both camps.

    if the majority is ok with the presentation of the cd-rom, how difficult would it be for publishers to simply have their existing databases re-formatted to match the cd-rom appearance ? or for a more refined hack, why not just PDF each page of the newspaper, but extract a full-text index of each edition (ala google) in parallel. the collection of indexes would be meta-searched by end-users, and the PDF of the entire page would be displayed as a search result, with full pan / zoom functionality like those dusty microfiche readers in the dark corners of our libraries. this slight modification in *presentation* alone would seem to satisfy the seemingly simplistic contextual argument of the majority that the electronic version be “[52] … faithful to the essence of the original work”.

    for the minority, while i am heartened that the public interest is raised at [70], i am sorely troubled that they would use that as a rationale for awarding the copyright in the electronic compilation to the publishers. to my mind, the public interest is served by making the articles available. a choice between given the copyright to the publishers versus to the authors does not ensure the accessibility of the work. while publishers would presumably have more resources and capacity than individual authors to disseminate the works, giving them a 50-year copyright in their compilation is overkill and robs the public domain unnecessarily.

    and kudos to Michael Geist for getting the Court’s nod at [79].