Robertson 2 copyright class action settles

January 18th, 2011 by Barry Sookman Leave a reply »

The lawyers for Heather Robertson have announced the settlement of the “Robertson 2” class action copyright case. The freelance authors reached a tentative settlement worth more than $5 million with the publisher defendants which include the Toronto Star, Rogers Publishing Limited, CEDROM-SNi Inc., and ProQuest Information and Learning LLC.

The suit alleged that the defendants infringed on the copyrights of the freelance writers by disseminating their articles online without their consent.

There will be a hearing in the Ontario Superior Court on April 11 for the court to consider whether to approve the settlement.

This settlement follows an earlier settlement in the “Robertson 1” case. That was also a class action lawsuit against various publishers alleging that they reproduced works of freelance writers and artists on electronic databases without consent or additional compensation. That lawsuit was launched in 1996 and the settlement in that case was approved in August, 2009. Under the terms of that settlement, the freelancers were to be paid $11 million.

Before being settled, Robertson 1 went to the Supreme Court of Canada, Robertson v. Thomson Corp., [2006] 2 S.C.R. 363.  An issue in the case was whether a non-exclusive copyright license has to be in writing. The court held it did not have to be.

Another main issue in the case was whether Thomson, as the owner of the copyrights in the collective works of its newspapers, had a right to republish the freelance articles as part of its online and other electronic publications without compensating the authors and obtaining their consents. The Supreme Court held that Thomson was not entitled to republish freelance articles acquired for publication in its newspapers in Info Globe Online or CPI.Q without obtaining their consents. The court nevertheless held that Thomson could reproduce articles as part of a service or product, such as back issues on CD-ROMs, as long as the essence of the originality of the newspapers was preserved.

The rights of newspaper publishers to republish articles and other works submitted by freelancers without written agreements is an important question that has challenged the courts around the world in other cases. Prior to the Robertson case, the issue was canvassed by the US Supreme Court in the New York Times Co. v. Tasini, 533 U.S. 483 (2001) case.

The issue was recently also canvassed in the UK case, MGN Ltd v Grisbrook [2010] EWCA Civ 1399 (09 December 2010). The issue in this case was whether newspapers have an implied right to publish photographs from freelance photographers on their back numbers websites.

The MGN case involved the well known UK publisher, The Daily Mirror. It launched several websites (the back numbers websites) including mydailymirror.com and arcitext.com. mydailymirror.com enables users to access the front pages of editions of the Daily Mirror from 1903 to the present day. A user can select the front page for a particular day and then purchase a reproduction of it either in poster form or with it printed on T-shirts or greetings cards. arcitext.com is an online research source which allows users to search for and to obtain access to articles and stories from the archives of the Daily Mirror from 1903 onwards. The articles are presented in pdf format which therefore reproduces the relevant part of the newspaper in the same format in which it was printed.

The photos were acquired by The Daily Mirror pursuant to unwritten agreements from Mr Grisbrook which contemplated, at the very least, the use of the photos as part of the newspaper, the newspaper database and archives. But, did the implied licenses between the publisher and Mr Grisbrook extend to the uses made possible by mydailymirror.com and arcitext.com? The Court of Appeal said they did not, affirming the decision of Lord Justice Patten in Grisbrook v MGN Ltd [2009] EWHC 2520 (Ch) (16 October 2009).

Patten LJ, had held that any license represents a derogation from or relaxation of the copyright owner’s statutory rights. It must therefore be for the defendant to justify (absent express agreement) the basis for extending the license to cover what would otherwise be separate acts of infringement. Although that test was satisfied in respect of the compilation of the database and its use for archive purposes, its exploitation through the back numbers websites was considered to be a different kind of operation which was not contemplated at the time when the license was granted and could not be said to have been necessary to regulate the rights of the parties at that time.

Before Patten LJ it had been submitted for MGN that the inclusion of Mr  Grisbrook’s photographs, with his consent, in the published editions of the Daily Mirror precluded him from asserting his own copyrights in any way which was inconsistent with the exploitation by MGN of its separate copyrights in its literary works. Counsel for MGN relied on the decision of the Supreme Court in Robertson v Thomson This submission was rejected by Patten LJ as follows:

I can deal with this point quite shortly. The issue in Robertson v The Thomson Corporation was whether the writer of a freelance article published in a newspaper could prevent its subsequent inclusion on a website and in some CD-ROMS. The Supreme Court of Canada was divided as to whether the website and the CD-ROMS constituted the reproduction of the defendant’s collective work (i.e. the newspaper) in which it had copyright. But all members of the court appear to have proceeded on the assumption that the publishers could market further copies of their original collective work free from any claims of infringement by the contributors. The only issue was whether they had done so.

The concept of a “collective work” (as opposed to a compilation) is not a feature of the 1988 Act and there may be provisions in the Canadian Act which give such works a measure of special protection. But the decision is, I think, inconsistent with English law which, so far as I am aware, has never treated copyright in a compilation as providing a defence to a claim for infringement brought by someone whose own copyright material has been included without his consent. The rights of copyright owners are governed by the 1988 Act and there is nothing in the Act which limits the rights under s.16 of someone in the position of Mr Grisbrook in the event that his work is included in a newspaper or other compilation. He retains the exclusive right to copy the work save to the extent that he licenses the publishers to do so. MGN are not therefore assisted by the Canadian decision.

MGN did not appeal from that conclusion. Nor did the UK courts point to any difference between collective works and compilations under Canadian and UK law that would distinguish Robertson from the case before the court. Notwithstanding this, the courts held that Mr Grisbrook was entitled to assert his copyrights in his photographs so as to inhibit the exploitation of its copyrights in the newspapers by MGN unless he was to be treated as having consented to it.

The Court of Appeal agreed with Patten LJ’s decision that no consent could be implied in the circumstances.

For my part I would agree that the operation of the website can be regarded as further delivery of the original, but not that it can only be so regarded. A website operates over a global area, its coverage is greatly in excess of anything MGN could have reached with hard copy newspapers. It enables a member of the public to read it before deciding whether he wants a hard copy and the production of hard copies by the public far in excess of anything MGN could have produced. The extent of the market and the costs incurred in reaching it are quite different to those of the hard copy newspapers of the past. There is no need to emphasise the differences further. The suggestion that an intention may be imputed to Mr Grisbrook and MGN from their conduct in relation to Mr Grisbrook’s photographs in the period 1981 to 1997 that MGN should be entitled without further charge to exploit the copyright of Mr Grisbrook in his photographs by inclusion on their websites is, to my mind, unacceptable. Newspapers are essentially ephemeral and, save for the enthusiastic collector, retain no long lasting status: the parties will have intended that they would be treated as daily papers are generally treated, that is to say, read and replaced with the following day’s edition. To incorporate the pictures into the website is to provide a permanent and marketable record easily available world-wide which could well reduce the value of the further use by Mr Grisbrook of the photographs over which it is common ground he possesses the copyright. That is why, to my mind, this is not just a question of degree but of kind.

The settlement of the Robertson 2 case resolves a major dispute between freelance writers and Canadian publishers over electronic publishing rights. The pace in which the publishing industry is being transformed from print to electronic media which include ebooks and online media guarantees, however, that the scope of authors’ and publishers’ rights will be tested in other cases.

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