CALL/ACBD Copyright Information

The plaintiff Robertson was a freelance journalist who submitted two articles for publication to the Globe & Mail for its newspaper. The Globe subsequently added these articles to three online databases - Info Globe Online, CD-ROM and the online version of the Canadian Periodicals Index (CPI.Q). Robertson sued for copyright infringement alleging that her oral agreement with the newspaper was for the print newspaper only and did not give the newspaper the right to publish her articles online in an archival database without her permission (although she did acknowledge their right to publish the articles the same day on the newspaper's website, which retained the look and feel of the print newspaper).

At trial, the court ruled that Robertson had copyright in her articles, that the Globe had a copyright in its newspaper as a collective work, but that the databases were "not 'a newspaper...or similar periodical' because they lacked the defining unique characteristics of a newspaper" and that "the production or reproduction of the articles written by the freelance authors in the databases prima facie infringed the copyright held by them in their individual work" (¶¶ 48-49).

This part of the ruling was substantially upheld by a majority of the Court of Appeal (Weiler, J.A., with Gillese, J.A. agreeing) at paragraphs 81-82:

A comparison of the electronic version of the Globe and the Info Globe Online database illustrates that the qualitative aspect of the newspaper is not preserved. In terms of function, the user's purpose in looking at the electronic version of the daily Globe is to read the news; the user's purpose in looking at a database is research. In terms of form, the content of the electronic version of the newspaper is limited to the events of a particular day, whereas the Info Globe Online database is ever expanding. In addition, while the parts of the electronic newspaper are initially presented in a collective context, the Info Globe Online database removes the context of the articles. The removal of the articles from their collective context coupled with the compilation of multiple periodicals into one database means that a substantial portion of the Globe newspaper is not reproduced on Info Globe Online. These changes in form and function mean that the effect of a newspaper is lost when articles are placed in the database.

I agree with the motion judge, that when the form, function and effect of the newspaper and the database Info Globe Online are compared, a substantial part of the newspaper is not reproduced in the Info Globe Online database. The database is a subscription search service that relies on a group of individual articles not necessarily connected to the newspaper and extending beyond the Globe's content. In this vast storehouse of information, the collective work that is the Globe is fragmented, submerged, overwhelmed and lost. Therefore, it cannot be said that a "substantial part" of the newspaper was reproduced in the database.

Blair, J.A., dissented on this part of the ruling. He characterized the issue as "whether the electronic version of the Globe, as found in the database, constitutes a reproduction of the Globe's collective work or a substantial part thereof" (¶ 134). He held, in essence, that the online databases were versions of the newspaper and that the Globe had the right to reproduce Robertson's articles in the online databases. Relying on s. 3(1) of the Copyright Act, Blair, J.A., pointed out that "the owner of the copyright in the collective work has the sole right (a) to produce or reproduce the collective work or any substantial part thereof, and (b) to do so in any material form whatever" (emphasis in the original) (¶ 133). In holding that the electronic versions retained the character of the print version of the newspaper, Blair, J.A., seizes in part on the definition of "compilation" in the Act and that the Globe does not lose its copyright in its "collective work" by mere reason that the online versions have a different "arrangement" (¶ 145):

First, a "compilation" consists of either (a) a work resulting from the selection or arrangement of literary works, or (b) a work resulting from the selection or arrangement of data: Copyright Act, s. 2. The motion judge noted that the terms "compilation" and "collective work" are often used interchangeably. It is accepted that the electronic version of the Globe contained in the databases retains the editors' selection of all the news, stories, articles and editorials as found in the printed newspaper. Since the terms "selection" and "arrangement" are disjunctive, rather than conjunctive, in the definition of "compilation" in the Act, it is not necessary that the electronic version retain the arrangement of the newsprint version in order to preserve its character as a compilation, and therefore as a collective work, or substantial part thereof.

On June 30, 2004 the Supreme Court of Canada, with all nine justices sitting, issued an important ruling involving copyright and the Internet and whether Internet service providers (ISP's) must pay royalties for music that is downloaded by their customers. Mr. Justice Binnie, writing for the majority, held that ISP's were not liable to pay royalties where they were acting as a mere "conduit" since, in this case, they lacked actual knowledge of the infringing content and it would have been impractical - both technically and economically - to monitor the downloading activities of their customers (para. 101).

In reaching this conclusion, the court spent a fair bit of time interpreting s. 2.4(1)(b) of the Copyright Act, a recently added section that states:

"a person whose only act in respect of the communication of a work or other subject-matter to the public consists of providing the means of telecommunication necessary for another person to so communicate the work or other subject-matter does not communicate that work or other subject-matter to the public."

The court held that an Internet "communication" need not originate from a server in Canada (paras. 42-47). However, to determine whether a "communication" has occured for the purpose of Canada's Copyright Act, the court adopted a "real and substantial connection" test (Lebel, J., dissenting) (paras. 60-61):

A real and substantial connection to Canada is sufficient to support the application of our Copyright Act to international Internet transmissions in a way that will accord with international comity and be consistent with the objectives of order and fairness.

In terms of the Internet, relevant connecting factors would include the situs of the content provider, the host server, the intermediaries and the end user. The weight to be given to any particular factor will vary with the circumstances and the nature of the dispute.

On the issue of whether "caching" by the ISP's constituted infringement of the Copyright Act, the Supreme Court of Canada agreed with the Copyright Board when it held in its ruling between these parties that "the means 'necessary' under s. 2.4(1)(b) were means that were content neutral and were necessary to maximize the economy and cost-effectiveness of the Internet 'conduit'. " As such, where caching is done to improve performance and where its purpose is to not authorize particular infringement (i.e., where it is content neutral), caching alone will not make an ISP liable for copyright infringement.

On March 31, 2004, Mr. Justice von Finckenstein of the Federal Court, Trial Division, denied the motion of the plaintiffs - a group of music producers (collectively described by the court as the Canadian Recording Industry Association) - asking that various Internet Service Providers (ISP's) disclose the names of their customers who the music producers alleged were violating their copyright by downloading music on the Internet using file-swapping software such as Kazaa!. The Canadian Internet Policy and Public Interest Clinic and Electronic Frontier Canada were granted intervener status for the purpose of making arguments.

In denying the motion of the CRIA, the court ruled that:

• The CRIA failed to establish a prima facie case against the alleged wrongdoers because the affidavit in support of the motion was based on information and belief and not the personal knowledge of the person hired by the CRIA to track the alleged downloading (paras. 17-19).

• The affidavit failed to clearly establish a connection between the pseudonyms used by the downloaders (e.g., "Geekboy@KaZaA") and the IP address "24.84.179.98" it was allegedly linked to (para. 20).

• There was no evidence of copyright infringement. In particular, the downloading of a song for personal use does not amount to infringement (para. 25) and there was no evidence that "the alleged infringers either distributed or authorized the reproduction of sound recordings" but that they "merely placed personal copies into their shared directories which were accessible by other computer user via a P2P service" (para. 26).

• There is not "a real difference between a library that places a photocopy machine in a room full of copyrighted material and a computer user that places a personal copy on a shared directory linked to a P2P service" since "in either case the preconditions to copying and infringement are set up but the element of authorization is missing" (para. 27).

• "The mere fact of placing a copy on a shared directory in a computer where that copy can be accessed via a P2P service does not amount to distribution. Before it constitutes distribution, there must be a positive act by the owner of the shared directory, such as sending out the copies or advertising that they are available for copying. No such evidence was presented by the plaintiffs in this case. They merely presented evidence that the alleged infringers made copies available on their shared drives. The exclusive right to make available is included in the World Intellectual Property Organization Performances and Phonograms Treaty, (WPPT), 20/12/1996 (CRNR/DC/95, December 23, 1996), however that treaty has not yet been implemented in Canada and therefore does not form part of Canadian copyright law" (para. 28)

• Privacy concerns of the alleged infringers and the accuracy of the information to be disclosed was a concern (paras. 36-43) as were the delays in the CRIA bringing the motion (para. 42), delays which would make it more technically difficult for the ISP's to trace the downloading activity.

On March 4, 2004, the Supreme Court of Canada issued an important judgment in CCH Canadian Ltd. v. Law Society of Upper Canada that clarifies the law of copyright and fair dealing. Ted Tjaden, the current Copyright Chair for CALL/ACBD has prepared a case comment (below, in PDF) on this case which sets out an overview of the court's decision and some practical implications for Canadian law libraries:

• "Fair Dealing Clarified: A Case Comment on the Supreme Court of Canada decision in CCH Canadian Ltd. v. Law Society of Upper Canada" (SCC) - Ted Tjaden, CALL/ACBD Copyright Committee Chair, April 15, 2004
(PDF)


• "L'utilisation équitable : un commentaire sur la décision de la Cour suprême du Canada dans l'affaire CCH Canadienne Ltée c. Le Barreau du Haut-Canada" (CSC) - Ted Tjaden, ACBD/CALL président du droit d'auteur, 15 avril 2004
(PDF)


• See also: Denis Marshall, "First Impressions of a Troubling Case: Some comments on CCH Canadian Limited v. The Law Society of Upper Canada" (FCC) (2000) 25 Can. L. Libraries 18. (PDF)

• See also: Daniel J. Gervais, "Canadian Copyright Law Post-CCH" (2004) 18 I.P.J. 131. (PDF)

In a 4-3 split decision, Mr. Justice Binnie, writing for the majority opinion, held that the copyright of the artist in this case had not been infringed when the appellant art galleries transferred the image from some of the artist's posters (validly purchased) onto canvas backing. The majority made note of the fact that the transfer process, involving the "lifting" of the ink from the poster, left the poster blank and therefore did not result in more copies of the artwork being made. In other words, it was a "transfer", not a "reproduction." In other words, "[t]he process began with a single poster and ended with a single poster" (¶ 38) The artist's moral rights were not involved in this process. The minority judgment, written by Mr. Justice Gonthier, disagreed on a number of points and held that it is not necessary for there to be an increase in the number of copies of the work for there to be a "reproduction" (in other words, a reproduction can occur even if the reproduction does not create more copies of the work). In a somewhat confusing judgment that involves English/French interpretations of the Act and the application of Quebec law to the assignment contract the artist signed, the minority judgment held that "by expressly confining the rights that were assigned to producing reproductions of his works on paper, the [artist] retained all his rights to produce reproductions on any other medium whatsoever. By transferring authorized reproductions of the [artist]'s works onto canvas", the art galleries infringed the artist's copyright.

For a more detailed analysis of this case, see any of the following case comments/articles:

• Adams, Wendy A., “Secondary Markets for Copyrighted Works and the ‘Ownership Divide’: Reconciling Competing Intellectual and Personal Property Rights” (2002) 37 Can. Bus. L.J. 321.

• Katul, Ziad J., “To Reproduce or to Multiply” (2003) 16 I.P.J. 335.

• Tamaro, Normand, “L'Affaire Théberge: une Cour suprême canadienne mal éclairée, ou insensible aux artistes, ou insensible au Québec?” in Développements récents en droit du divertissement (2003) (Cowansville, Qué: Éditions Yvon Blais, 2003) at 1-96.