Authors' Lawsuit to Test Canadian Copyright Law
Ken Wachsberger
Writers, photographers,and cartoonists create their original literary and artistic works. Newspapers and magazines publish the works in print media. Who owns the right to include these works in computer databases, online services, and other electronic media?A first-ever class action suit filed in Ontario Superior Court of Justice claims the creators are the owners and is asking for remedies under Canada's Copyright Act.
According to Heather Robertson, a long-time freelance writer from King City, Ontario, the background for the case began in 1995 when major publishers in Canada began sending out legal contracts to freelancers "demanding we surrender all rights forever and ever". The practice up until that time, she explained, had been to do verbal contracts. "We had to learn about legal contracts. We researched electronic rights and discovered that the money to be made is huge, and we needed to protect those rights".
On September 10 1996, a group of writers backed by Canada's major writers' groups, including the Writers Union of Canada and the Periodical Writers Association of Canada, and with Robertson as the lead plaintiff, sued the Thomson Corporation, a multinational information company and newspaper publisher; two of its holdings, Thomson Canada Limited and Information Access Company, both electronic publishers and information providers; and their affiliates for damages and injunctive relief arising from their alleged infringement of rights under the Copyright Act. According to their own Web site, Thomson Corporation has annual revenues of over$6 billion. Thomson Canada Limited is a Canadian corporation that is a wholly owned subsidiary of Thomson Corporation. Information Access Company was a Foster City, California-based provider of information-based products collected from more than 6,500 sources worldwide and distributed in CD-ROM, microfilm, print,and online formats. In September 1998, it merged with Gale Research and Primary Source Media to become The Gale Group.
Robertson's suit claims the defendants illegally disseminated copies of original literary and artistic works through computer databases, online services, and other electronic media in violation of the rights of creators or assignees of those works under the Copyright Act.
The lawsuit claims $50 million for compensatory, punitive, and exemplary damages; and $50 million for injunctive relief against the defendants.
The defendants claim they acted within their rights.
According to a notice published under the Ontario Class Proceedings Act, 1992, Robertson asked the Superior Court of Justice to let her represent a group of people consisting of the following creators of original literary or artistic works, along with their assignees or estates:
All persons who were the authors or creators of original literary works or original artistic works(collectively "Works") which were published in Canada in any newspaper,magazine, periodical, book, newsletter, journal or other paper-based form whatsoever (collectively "Print Media") which Print Media have been reproduced,distributed and/or communicated to the public by telecommunication by the Defendants through any computer database, CD-ROM, diskette, online service, or other electronic system or device (collectively "Electronic Media"), on or after April 24, 1979 except:
(a)persons who by written document assigned all of the copyright in their Works to the Defendants or their predecessors in interest in the subject Print Media; or
(b)persons who by written document granted to the Defendants or their predecessors interest in the subject Print Media a license to publish or use their Works in Electronic Media;or
(c)persons who were unionized employees of the Defendants or their predecessors in interest in the subject Print Media
are excluded regarding any Works created for the subject Print Media at times when their unions' collective agreement governed the use of their Works in Electronic Media.
For Canadian editions of foreign publications, only works comprising the content exclusive to the Canadian editions are included under this definition.
On February 11, 1999,Justice Sharpe of the Superior Court of Justice allowed Robertson to represent this class of people in a class action lawsuit. According to Robertson, it is the first time ever in North America that an electronic rights case has been certified as a class action.
Whereas in the USA a member of a class must choose to opt in to be included in a class action suit, in Canada a class member must choose to opt out to be excluded from a class action suit. According to Kirk Baert,an attorney with McGowan and Associates of Toronto, the firm retained by Robertson to represent her and the class in the lawsuit, no statistics are available as to the potential number of class members but they would include anyone who has written not only for any Thomson publications but also for any journals they disseminate. In an interview with Library Hi Tech News, Baert estimated the total to be at least 10,000. The deadline to opt out was August 3, 1999. Only six creators opted out.
According to the above-mentioned notice, special issues arise in connection with works created by employees rather than freelancers:
The copyright in Works created by employees in the course of their employment is owned by their employers unless the employer and employee agreed otherwise. Employees who create Works in the course of their employment for inclusion in a newspaper,magazine or similar periodical, in the absence of an agreement to the contrary,have the right to restrain the publication of the Works otherwise than as a part of a newspaper, magazine or similar periodical. It is the latter group of employees who may form part of the Class unless those employees are governed by a Collective Agreement which governs the use of employees' materials in Electronic Media ("Class Employees").
What this means is that even employees, who no longer own their copyright as do freelancers, are members of the same class and therefore still retain the right to limit use of their creative work beyond the print media, unless their collective bargaining union has actually signed an agreement giving away that right. "If the union negotiates a contract that signs away electronic rights for money, they're gone. But if the contract doesn't exist, then it's on the table".
Based on this understanding, Robertson continues, the defendants should not have reproduced the works of the class employees in electronic media because electronic media are not "newspapers, magazines or similar periodicals". She cites her own case:In the fall of 1995, she sold excerpts from a book of hers to the Toronto Globe and Mail with permission to publish first serial rights only. They republished it in InfoGlobe, their electronic database. The defendants claim that electronic media like InfoGlobe indeed are "newspapers,magazines or similar periodicals" and that they do have the right to reproduce the works there. But Robertson disagrees, insisting it only contains individual selections from the newspaper, not the entire newspaper. "They claim they have collective right to everything they publish in the newspaper. We say they don't have rights to individual works".
The defendants are further denying her claim to monetary damages even if they are found in violation. In addition to claiming general innocence, the defendants have claimed in their"Statement of Defence" that class members were required to lay claims within three years of any alleged infringement. Therefore, "No remedy can be awarded for any alleged infringement in the period from April 24, 1979 through to September 10, 1993".
What's next? Funding. With certification as a class action, Robertson hopes the Law Foundation of Ontario will underwrite the cost of the case. The Law Foundation was created soon after Canada began recognizing class action suits in 1992 in order to "encourage plaintiffs who cannot afford to sue individually to work through the courts". Robertson and her group applied to the committee in 1997. "The real issue is my exposure as a class representative. If we lose, I have to pay. I don't earn $6 billion a year. The Law Foundation postponed its decision until they found out if we would be classified. We're still waiting to hear".
What's holding them up?
"They have dozens of cases to consider. Class action is a big thing in Ontario. But we feel confident they will support us once they decide. Then we'll move on from there".
A member of the Law Foundation's class proceedings committee explained that the process is confidential and would not reveal the status of the case or when a decision would be made.
LATE-BREAKING NEWS
In a press release received on 25 October 1999, plaintiff Heather Robertson announced that the class action has received funding from the Class Proceedings Fund. "This clears the way for the class action to proceed on behalf of freelance writers and others who own the copyright to works originally published in print media in Canada but which were later placed in electronic databases such as InfoGlobe,without permission", she said. According to the release, the next court hearing in the class action is likely to be held after the new year.
Ken Wachsberger is the Editor of Library Hi Tech News, Ann Arbor, Michigan. eng_wachsber@online.emich.edu.
