Database dispute goes on

DAVID CANTON - For the London Free Press - November 13, 2004 Read this on Canoe

The Ontario Court of Appeal recently decided newspapers cannot put articles on their on-line versions that freelance writers wrote for them without the writer's permission.

The decision involved the Globe and Mail newspaper and Heather Robertson, a freelance writer. Most current contracts between freelances and newspapers address the right of the newspaper to post articles in on-line versions, but older agreements didn't.

In 1995, Robertson submitted two articles to the Globe to include in its newspaper. The Globe later placed the articles in three databases: Info Globe Online, a CD-ROM including a year's edition of the Globe, and the electronic version of the Canadian Periodical Index (CPI.Q).

Each of those allows users to search for articles in various ways and retrieve the full text.

When a newspaper includes freelance articles, multiple instances of copyright exist. The article itself is protected by copyright of its author. The newspaper publisher also holds copyright in the newspaper as a collective work or compilation, meaning a work resulting from the selection or arrangement of literary works. The copyright in the collective work does not extinguish the copyright in the articles.

The issue in this case specifically relates to whether reproduction of newspaper articles in those databases comes within the Globe's copyright in the collective work or within Robertson's copyright in the specific articles.

The Globe asserted that placing the articles in the databases came within its copyright in the collective work of the newspaper.

Robertson said she never gave the Globe permission to place her articles in the databases, nor was she compensated. She claimed the articles, once placed in the databases, were removed from the collective work and, therefore, an infringement of her copyright.

The court held that placing freelance articles in the Globe's databases was a copyright infringement. The Globe has the right to reproduce its newspapers or 'any substantial part' in any material form, including in electronic form. The databases were not 'newspapers' or substantial parts of the Globe's newspapers because they did not retain the skill and labour the Globe's editors put into the original.

The databases and the newspapers differed in form and function. In form, the databases were ever expanding as they accumulated new articles as more editions of the newspaper were converted into electronic form. Newspapers, however, only contain articles specific to that day. Databases, however, are used for research purposes.

A reproduction of collective news and articles would be a reproduction of a "substantial part" but the availability of using keyword searches and viewing the articles stand-alone removed the reproduction from the protection of the Globe's copyright and infringed the freelance author's copyright in the article itself. The ability to view articles by keyword searches does not in itself constitute copyright infringement -- the infringement is the ability to view the articles in isolation without any association or link with the collective work.

Although the majority of the court held that this issue alone constituted an infringement of the freelance writer's copyright, it remains to be determined, by trial, whether Robertson granted the Globe an implied licence to place her work in the databases or whether permission should be implied as a term of the agreement between the freelance author and the publisher.

The battle over database rights in Canada is unlikely to end there. The issue of database rights is one Parliament may address in upcoming copyright reforms.