Canadian and US Court decisions on the re-use of freelance contributions in database and CD-ROM

In Canada and in the US, copyright law allows newspapers publishers, as owners of the copyright in a collective work, to reproduce freelance contributions when as part of the collective work. Outside the context of this collective work, newspapers publishers are not allowed to reproduce the individual contribution without the authorization of the freelance author. 

The following question regularly arises before courts: are the re-uses of articles or photos in databases and CD-ROM simply a reproduction of the collective work permitted by law or a new form of use laying outside the scope of this privilege?

In its 2001 landmark case News York Times v. Tasini, the US Supreme ruled that the New York Times' sales of its published news articles to online databases offering users individual articles, not intact periodical, is an infringement of the rights of the authors. The criteria set by the Supreme Court is the following: is the freelance contribution removed from the context of the original collective work or not?

On 12 October 2006, the Supreme Court of Canada decided along the line of the Tasini case in the case Robertson v Thomson Corp: it held that putting articles into databases was not merely reproducing the newspaper, therefore infringing the author’s copyright.

However, in the same case, the Supreme Court unanimously held that the reproduction of the articles in a CD-ROM did not infringe the author’s copyright as the CDs presented the users with a collection of daily newspapers which can be viewed separately, and when viewing an article in a particular edition the other articles from that edition appear in the frame on the right hand side of the screen. Therefore it still was a reproduction of the collective work.

On 13 June 2007, the US Court of Appeal for the 11th circuit issued a similar ruling regarding the reproduction of photos in a CD-ROM in the case Greenberg v National Geographic. “The Complete National Geographic”, a CD-ROM reproducing each monthly issue from the magazine since its first issue, contained photos by freelance photographer Greenberg. The CD-ROM also contains a computer programme which compresses and decompresses the images, and allows the users to search an electronic index. The CD-ROM further contains a introductory sequence with a moving display of 10 magazine covers, including one of Greenberg’s photograph.

The Court ruled that neither the replica of the issues not the search programme infringe Greenberg’s copyright, on the ground that the photos were not removed from the context of the original collective work. However it conceded that the photo in the introductory sequence was used out of context.