ONTARIO
SUPERIOR COURT OF JUSTICE
COURT FILE NO.: 10-CV-403667CP
DATE: February 21, 2012
BETWEEN:
Lorne Waldman
Plaintiff
- and -
Thomson Reuters Corporation and Thomson Reuters Canada Limited
Defendants
Proceeding under the Class Proceedings Act, 1992
COUNSEL:
• Louis Sokolov, Jordan Goldblatt, and James Kosa for the Plaintiff
• Wendy Matheson and Andrew Bernstein for the Defendants
HEARING DATES: January 30 and 31, 2012
PERELL, J.
REASONS FOR DECISION
A. INTRODUCTION
[ 1 ] Lorne Waldman moves for certification of a proposed class action under the Class Proceedings Act, 1992, S.O. 1992, c. C.6. Mr. Waldman’s action is against Thomson Reuters Canada Limited (“Thomson”) and Thomson Reuters Corporation. On consent, the parties ask that leave be granted to dismiss the action as against Thomson Reuters Corporation, a holding company and an indirect parent of Thomson. I grant leave and dismiss the action as against Thomson Reuters Corporation.
[ 2 ] This action arises because Thomson, through its legal publishing branch known as Carswell, copies court documents that have been authored by lawyers and reproduces them on an electronic data base and search and retrieval service known as “Litigator.” Documents authored by Mr. Waldman, who is a lawyer, were included in Litigator without his express permission. In his proposed class action, Mr. Waldman alleges that Thomson infringes the copyright of the class members by making available, without permission and for a fee, copies of court documents authored by the lawyers and the law firms.
[ 3 ] Thomson asks that the certification motion be dismissed. It submits that Mr. Waldman is seeking to limit access to a publicly-filed court documents and that his action is antithetical to the open court system and to access to justice, behaviour modification, and judicial economy, which are the rationales for class proceedings.
[ 4 ] Further, Thomson submits that the common issues trial would provide no judicial economy and no meaningful access to justice, and it submits that a class action would be unmanageable and not the preferable procedure because the prosecution of a mass claim of copyright infringement would lead inevitably to complex individual trials about the originality and the authorship of the court documents. Thomson submits that some of the Litigator documents are not copyrightable because they lack originality, which is to say the documents were prepared without the exercise of skill or judgment, and it submits that court documents are rarely, if ever, the creation of a single author and adjudicating the complex individual claims would require claimants to breach solicitor and client privilege and that too, makes the action unmanageable and also offensive to the administration of justice.
[ 5 ] Further still, Thomson challenges the commonality of the proposed common issues, and it also submits that Mr. Waldman’s proposed action fails to satisfy the identifiable class criterion and the preferable procedure criterion for a class action. It submits that the class members do not, would not, and should not support a class action that advances a claim that is against public policy, in particular, against the policies of an open court system and freedom of expression.
[ 6 ] Thomson submits that the court should exercise its gatekeeper function and not certify a class action that has negative social utility and little interest from class members.
[ 7 ] However, notwithstanding Thomson’s challenges, in my opinion, Mr. Waldman’s action does satisfy the criteria for certification, and with some modifications to the class definition and to the common questions, his action should be certified.
[ 8 ] As my Reasons will reveal, Thomson’s arguments about commonality and about the preferable procedure criteria of certification should be rejected. In the main, Thomson’s arguments fail to recognize that certification is a technical and procedural legal phenomenon and the court’s gatekeeper’s role is limited to ensuring that the technical and procedural elements of the test are satisfied, which, subject to some adjustments, is the situation for the case at bar. Some of Thomson’s arguments against certification, while relevant to the determination of the merits of the action and to Thomson’s several defences, are not pertinent to whether, as a procedural matter, the action should be certified as a class action.
B. ORGANIZATION OF REASONS FOR DECISION
[ 9 ] My Reasons for Decision are organized under the following headings:
• Introduction
• Organization of Reasons for Decision
• Evidentiary Background
• Factual Background
o Carswell, Litigator, and the Court Document Collection Service
o Mr. Waldman and the Arar Factum
o Mr. Slaght’s Expert Evidence
o The Proposed Class Action
• Copyright and Copyright Infringement
o Introduction to Copyright Law
o Authorship, Copyright Ownership, and Copyright Infringement
o The Problem of Client Ownership of Copyright in a Lawyer’s Work Product and the Privilege Problem
o Remedies for Copyright Infringement
• The Criteria for Certification
o Introduction – The Test for Certification
o The Gatekeeper Argument
o Disclosure of Cause of Action
o Identifiable Class
o Common Issues
o Preferable Procedure
o Representative Plaintiff and the Litigation Plan
• Conclusion
C. EVIDENTIARY BACKGROUND
[ 10 ] The evidence for the certification motion was provided by affidavits from:
• Lorne Waldman, an Ontario lawyer, who is one of Canada’s leading practitioners in immigration and refugee law
• Jilean Bell, the Director of the Legal and Regulatory Strategic Market Group at Carswell, who was involved in the services offered by Carswell, including the Litigator service on Westlaw Canada
• Ronald G. Slaght, one of Canada’s foremost civil litigation practitioners and a respected leader of the legal community and valued contributor to the administration of justice.
[ 11 ] Mr. Waldman and Ms. Bell were cross-examined on their affidavits. Mr. Slaght’s evidence was not challenged.
D. FACTUAL BACKGROUND
1. Carswell, Litigator, and the Court Document Collection Service
[ 12 ] Thomson Reuters Canada Limited operates a legal publishing division known as Carswell that publishes law reports, legal textbooks, loose-leaf services, and annotated statutes. Carswell offers numerous electronic publications and online services for legal research including a database service known as “Litigator.”
[ 13 ] One of the Litigator products is the “Court Document Collection,” which offers subscribers the means to examine documents copied from court files from across Canada. The subscriber may download, edit, and print the court documents. The text, or more likely portions of the text, can be incorporated into the subscriber’s own court documents.
[ 14 ] Lawyers and legal scholars and the editors of several of Carswell’s case reporting services select the court files, i.e. the actions and applications from which court documents will be extracted for the Litigator service. The documents are from significant cases in the provincial superior and appellate courts, the Federal Court, and the Supreme Court of Canada. The Litigator’s court documents include pleadings, notices of motion, affidavits, and factums.
[ 15 ] There are approximately 100,000 documents that have been selected for inclusion in Litigator. There are approximately 12,000 to 13,000 different lawyers’ names on the court documents in Litigator. There are approximately 6,500 different firm names listed.
[ 16 ] Carswell does not ask the lawyers or the law firms for permission to place the documents on Litigator. It says, however, that it will respond to requests from lawyers and law firms to remove their documents from the database.
[ 17 ] Carswell obtains copies of the documents from the courts’ files from across the country. It scans the document into portable digital format (“.pdf”), and then using optical character recognition technology, it creates a document that can be searched on- line and edited off line. The documents are not translated or otherwise modified, but they are redacted to remove personal information such as social insurance numbers, bank account numbers, dates of birth or death, passport numbers, etc. for privacy and to comply with any publication bans.
[ 18 ] Carswell adds several features to its Litigator data-base; namely: (a) a citation; (b) a hyper-link to other motions and proceedings; (c) a classification by legal issue; (d) highlighting of relevant procedural rules; (e) links to related cases; and (f) hyperlinks to the full text of a decision and secondary sources; (g) the redaction.
[ 19 ] Litigator is connected to Westlaw Canada’s research service, “Law Source,” which provides cases, legislation and secondary sources electronically. A lawyer who finds a case of interest on Law Source may find considerable information about that case on Litigator, including the direct history, the case history, citing references, and a Canadian Abridgement digest.
[ 20 ] Carswell has made a substantial investment in Litigator. In addition to the expense of the technology and the expense of the editorial contribution, more than $1 million has been paid to courts across the country for file access fees and photocopying charges . Adding new cases to the service requires a substantial investment each year.
[ 21 ] Subscribers to Litigator must sign a Licence Agreement. Under the agreement, subscribers are limited to use in “the regular course of legal and other research related work and study.” The subscribers may only copy “insubstantial portions” of court documents to “give to a judge or other presiding officer … in making filings or submissions and filing court documents … in judicial or quasi-judicial or parliamentary proceedings.”
[ 22 ] The Licence Agreement expressly permits copying but requires the subscriber to acknowledge the intellectual property rights of “Carswell or its suppliers and licensors” In this regard, s. 2.1 of the agreement states:
2.1 The Subscriber acknowledges that all intellectual property, including all copyright, trademarks, patents or rights to trade secrets in the Features and Data belongs to Carswell or its suppliers and licensors, as the case may be, and that the Subscriber’s rights do not extend beyond the limited license expressly granted herein. Subject to Section 3, the Subscriber is permitted to:
(a) use the Features and browse and search the Data;
(b) download and temporarily store insubstantial portions of the Data (“Downloaded Data”) to a storage device within the Subscriber’s exclusive control, solely:
(i) to display internally such Downloaded Data; and
(ii) to quote and excerpt from such Downloaded Data (the parts of which are commentary, references and case law being appropriately cited and credited) by electronically cutting and pasting or other means in memoranda, facta, client communications and similar work product created by the Subscriber in the regular course of its research and work;…
[ 23 ] When a subscriber uses Litigator, a copyright notice appears from clicking “copyright” from the “What’s in Litigator” page, which includes the following language:
….Each reproduction (as permitted and/or required by the Licence Agreement for Westlaw Canada) of a portion of Westlaw Canada (specifically other than court documents) must contain notice of copyright as follows:
Copyright © CARSWELL, a division of Thomson Reuters Canada Limited, or its licensors. All rights reserved….
[ 24 ] Every download of a court document occurs by way of telecommunication over the internet. A subscriber may save a downloaded document onto his or her own computer, or else download the document in Microsoft Word, WordPerfect, HTML, plain text format, .pdf format or rich text format.
[ 25 ] Where documents are downloaded by a subscriber in .pdf format, no enhancements are included. Where documents are downloaded in formats other than .pdf, or are viewed on the Litigator web-site, the enhancements are active.
[ 26 ] There are approximately 1,300 subscribers, including sole practitioners, law firms, in-house law departments, government lawyers, and law schools across Canada. Although Thomson does not have exact numbers, it estimates that over 10,000 lawyers across Canada currently have access to the Litigator service.
[ 27 ] Thomson’s marketing material indicates that subscribers may usefully copy portions of the court documents and use them for their own document creation. It praises the skill, experience, and ingenuity of the lawyers and law firms that prepared the court documents.
[ 28 ] Carswell has had only two complaints about its posting court documents on Litigator; i.e., Mr. Waldman’s complaint and a complaint from the law firm Sutts, Strosberg in 2007. In response to these complaints, Carswell removed the documents, and it states that it will continue that practice in similar circumstances when it receives a complaint in writing from a lawyer or law firm with the appropriate authority to ask that the document be removed.
[ 29 ] Carswell is not the only source for copies of court documents. The Supreme Court of Canada permits users to download factums filed with the Supreme Court. Legal Aid Ontario provides a collection of primary and secondary legal materials, including court documents. The Legal Aid Ontario service is provided to Ontario lawyers representing clients who have legal aid certificates. The Canadian Bar Association operates the National Class Actions Database. This database provides court documents from class proceedings. Each of these services includes a specific caution against copyright infringement, and in contrast to Litigator, none of these services are for profit.
[ 30 ] Lawyers (and members of the public) are also able to attend at a court office and obtain copies of publicly-filed court documents for a service fee. It is not disputed that for a fee, process servers routinely obtain copies of court documents for lawyers. Mr. Waldman has no objection to these activities.
... (decision continues verbatim in same format through paragraph [220]) ...
Perell, J.
Released: February 21, 2011
COURT FILE NO.: 10-CV-403667CP
DATE: February 21, 2012
ONTARIO
SUPERIOR COURT OF JUSTICE
BETWEEN:
Lorne Waldman
Plaintiff
‑ and ‑
Thomson Reuters Corporation and Thomson Reuters Canada Limited
Defendants
REASONS FOR DECISION
Perell, J.
Released: February 21, 2012