Photo Credit: Prof Pina D'Agostino

Prof Giuseppina D’Agostino is the Founder & Director of IP Osgoode, the IP Intensive Program, and the IP Innovation Clinic, the Editor-in-Chief for the IPilogue and the Intellectual Property Journal, and an Associate Professor at Osgoode Hall Law School. She is also very proud of her new book!

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I am excited to share that I just published a collection on Artificial Intelligence (AI) and the law, Leading Legal Disruption: Artificial Intelligence and a Toolkit for Lawyers and the Law (Thomson Reuters 2021). Co-edited with Dr. Aviv Gaon and Carole Piovesan, the book provides a provocative analysis on the emerging terrain of AI and how it interrogates various areas of the law. The book, that features a foreword from the Hon. Marshall Rothstein (formerly of the Supreme Court of Canada), is an international collaboration of thought leaders in AI, with contributors from Canada, the USA, Europe and Israel. Issues discussed include intellectual property, privacy, contract law, regulation, governance, ethics, business and more. Importantly, such issues merit a toolkit of practical and international perspectives as they are increasingly complex and ajurisdictional. ����

In many ways this book is also a reflection of Osgoode’s strengths in AI. My co-editors, Dr. Aviv Gaon, Director at IDC Herzliya of Experiential Programs, is a PhD graduate (class of 2019) publishing several other books on AI and emerging technology, and Carole Piovesan (class of 2009) has co-founded her own firm, INQ Law. ��I am myself an LL. B graduate from Osgoode (class of 1999), eventually returned as faculty to found and run IP Osgoode and I am currently co-chairing the 91��ɫ AI & Society Task Force, among many other initiatives in this space.

I am particularly thankful to the Osgoode JD students who provided helpful research assistance: Elif Babaoglu, Daniel Joseph, Joseph Simile, Rachel Marcus, Christopher Tsuji, and Julianna Felendzer.

I am most grateful for the enthusiastic endorsements by Prof David Vaver (Professor of Intellectual Property Law, Osgoode; Emeritus Professor of Intellectual Property & Information Technology Law, University of Oxford), Prof Jane Ginsburg (Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia University School of Law), Justice Michael Manson (Federal Court of Canada), and Dan Bereskin (Partner, Bereskin & Parr LLP) all which can be read on the back cover.

They say you can’t judge a book by its cover, but I particularly like this one, inspired by an AI and suggestive of our youth, our future ultimately grappling with AI and other emerging technology, that will iterate in every generation.

I look forward to hearing from you on your thoughts on the book (and the cover!). You may order your copy��here.

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Procedural History

In May 2010, a collection of lawyers and law firms in Canada launched a class action suit against Thomson Reuters, alleging that the company’s Westlaw “Litigator” service directly infringed works in which the individual members owned copyright. The claim, led by representative plaintiff , alleged infringement in over 50,000 works available through the Litigator service, and sought general damages of $50 million, as well as $1 million in Punitive Damages (IPilogue’s coverage of the initial is available ).

In February 2012, for the proposed action under the , 1992, SO 1992, c C-6 (for IPilogue’s coverage of the certification, see ). In the decision granting certification, the Court noted certain public policy problems involved in granting copyright protection to the types of material included in Westlaw’s Litigator service. Citing IP Osgoode's , Judge Perell noted in paragraph 93 that recognition of copyright in such materials

would affect the ability of lawyers to serve other clients and would detract from the profession’s obligation to serve the public to the best of its ability, would promote needless variety when standardization and consistency in legal expression would be beneficial, and would monopolize legal services and suppress healthy competition.

However, as this was a certification proceeding, the Court declined to rule on the merits of the action and specifically made no finding on the existence or restriction of copyright protection in court documents.

The Proposed Settlement

Two years after certification, and four years after the action was commenced, the parties negotiated a settlement agreement. One major factor spurring settlement was , two of which (Society of Composers, Authors and Music Publishers of Canada v Bell Canada, and Alberta (Education) v Canadian Copyright Licensing Agency, ) dealt with the fair dealing��exception in a manner which had a direct impact on the litigation.

Counsel for the affected class saw these decisions as “substantially increase[ing] the litigation risk for the Class Members” [], as the decisions of the Supreme Court provided Thomson Reuters with a broader fair dealing defence, and clarified that the for-profit nature of its Litigator service was not an insurmountable barrier against pleading fair dealing under The negotiations which followed were, in the words of the Court, “adversarial, arm’s length, and intensive.” In the end, Thomson Reuters made no admission of liability, and continues to deny the validity of Waldman’s claim.

Nevertheless, the parties were able to come to a mutually agreeable conclusion. Thomson Reuters insisted on a licence as part of the settlement, to avoid any claims in the future. Counsel for the class members proposed that Thomson Reuters fund a cy-près trust in the amount of $350,000 in lieu of direct compensation for individual plaintiffs, as specific losses were impossible to calculate.

The settlement also included mandatory copyright notices to users of the Litigator service about potential third-party copyright claims affecting the material accessible through Westlaw’s database. Class Members were permitted to opt out of the settlement, and Counsel for the plaintiffs secured $825,000 in legal fees as part of the settlement.

Fair and Reasonable: Objection to the Settlement and its Rejection by the Court

This proposed settlement was objected to by seven class members, all of whom are individual lawyers whose works appear on the Litigator service. Of these seven, five explicitly mention the disproportion between the amount awarded to the Class ($350,000) and the amount awarded to Class Counsel ($850,000).

Of the remaining two lawyers, one strongly objected to the notion that he retained any copyright in his court documents after they were filed, and objected to the suit on principle. Another objector claimed that no licence should be given to Thomson Reuters, as the settlement would therefore confer a direct benefit on the defendant (a licence) but only an indirect benefit on the plaintiffs (a fund for public interest litigation).

The Court agreed with the objecting Class Members, and rejected the settlement on the grounds that it was not fair, reasonable, and in the best interest of Class Members. In particular, Judge Perell emphasized that the paramount concern in approving a proposed class action settlement is access to justice. Moreover, the decision contains a consideration of what the phrase “access to justice” means in the context of class action settlement. In addition to substantive and procedural fairness, the Court held that a consideration of fairness in the context requires a court to consider:

circumstantial fairness, i.e., the fairness of the settlement to the parties and the class members in their particular circumstances, institutional fairness, and the fairness of the settlement from the perspective of a robust notion of access to justice that includes an outcome that objectively should satisfy the class members’ entitlement to justice for their grievances.��[]

In particular, “institutional fairness” prevents a Court from “rubber stamping” settlements, to avoid setting an example through which fatigue, incompetence, opportunism, or the business model of Class Counsel or representative plaintiffs will result in a settlement which restricts the legal options of individual Class Members.

In the current settlement, the Court found it was unable to approve the settlement both because the award to Class Counsel was larger than that to Class Members, and because the settlement effectively “expropriates the Class Members’ property rights in exchange for a charitable donation from Thomson” [].

Moving Forward – Class Actions and Copyright Infringement in Canada

The decision contains valuable insight into judicial approval of class action settlements involving copyright infringement in Canada. The idea of class certification in copyright infringement actions seems at first��glance to overcome some of the current barriers imposed on rights holders in asserting claims in the current legal climate – in particular the difficulty of proving individual damages, the restrictions on statutory damages imposed through recent legislative amendments, the limited means of some rights holders, and the relative power of organizations which distribute and communicate works to the public.

However, the decision in Waldman v Thomson Reuters shows that such actions have substantial public policy considerations involving access to justice. In particular, the decision shows that “access to justice” means something particular in the context of a settlement. The access to justice at issue is that afforded to members of the Class, not general projects – such as a fund for public interest litigation – which may provide access to justice for society writ large.

In addition to the concern about optics, the Court also addressed the ability of Class Members to “opt out” of the settlement agreement. ��Since classes are certified in part because individual members lack the resources to pursue claims individually, the Court saw the argument that the settlement was fair because individual members could opt out as “specious.” Class action infringement suits may offer Canadian rights holders a powerful option for protecting their intellectual property, but the Ontario Superior Court has made it clear that such options must be exercised with a real concern for the Class Members whose rights are being protected.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School

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The suit was launched by Mr. Lorne Waldman, an Ontario lawyer specializing in immigration and refugee law, who alleged that Carswell (Thomson’s legal publishing branch) reproduced and published publicly filed court documents without the express permission or license of the authors of those works - including his - on “” (a service provided on Carswell's Westlaw). Mr. Waldman alleged that Carswell committed both primary and secondary copyright infringement, infringement of moral rights and filed for $50 million in compensation and $1 million in punitive damages on behalf of the class members.

The Litigator offers several products, including one that grants access to court files such as pleadings, notice of motions, affidavits and factums to its subscribers. Subscribers are not only granted access to the document bank (of roughly 100,000), they are also permitted to download, edit, print, and even allowed to incorporate portions of these documents into their own work. Although Carswell does not request permission from the authors to upload the documents, they apparently adhere to take-down requests made by the authors of those works.

Notably, many of the documents available on the Litigator service are also accessible through various resources such as the Supreme Court of Canada, Legal Aid and the Canadian Bar Association, and also provide disclaimers that caution users against copyright infringement. However, unlike the Litigator they are not for profit.

In general, Thomson argued that restricting access to the documents is “antithetical to the open court system and to access to justice, behaviour modification, and judicial economy, which are the rationales for class proceedings”. (para 3) Further, Thomson argued that the legal documents lack the level of skill and judgment necessary to be considered an original copyrightable work, and also stated that because the documents are authored by clients and lawyers, the suit would mandate a breach of client and attorney privilege, and make it unmanageable for the administration of justice.

The Court summarized Thomson’s position from their filed on December 20, 2011, asserting:

"(a) the subscribers of Litigator are subject to terms and conditions that accord with the Copyright Act;
(b) it did not engage in copyright infringement;
(c) its conduct constituted “fair-dealing,” pursuant to s. 29 and s. 29.1 of the Act;
(d) it has the consent and/or an implied licence to copy and sell copies of court documents; and
(e) has a right supported by s.2(b) (freedom of expression) of the Charter of Rights and Freedoms, to copy and sell the works." (para 48)

was cited heavily throughout the discussions on originality, copyright infringement, and fair dealing. Interestingly, the Court specifically noted:

"Although arguably there may be distinguishing features, by way of analogy, the Great Library’s photocopy service is comparable to Litigator in that legal materials (literary works) authored by lawyers were reproduced by the users of the photocopying service (subscribers) or the legal materials were reproduced by library staff and delivered to the users, who, in turn could use the copies for their own purposes, including incorporating the information into court documents." (para, 82)

However, the Court also ‘appreciated’ the differences between Thomson’s for profit, versus LSUC not for profit photocopying service.

In the end, the Court held that the threshold for certification is one of technicality and procedure, and as a result determined that the elements had been satisfied by Mr. Waldman. The Court also held that the allegations did merit further consideration in future proceedings.

For guidance on the issue, the Court approvingly cited “” (1993) 31 Osgoode Hall L J 661, by , Professor of Intellectual Property Law at Osgoode Hall Law School, stating that:

"The copyright in legal documents is not a settled matter. In his very interesting and informative article, Professor David Vaver identifies the uncertainties associated with copyright in legal documents. Professor Vaver’s article is not specifically about court documents but about legal documents generally, and he points out several public policy concerns that arise because the extent of copyright in legal documents, if any, would affect the ability of lawyers to serve other clients and would detract from the profession’s obligation to serve the public to the best of its ability, would promote needless variety when standardization and consistency in legal expression would be beneficial, and would monopolize legal services and suppress healthy competition. Professor Vaver suggests that it would be unethical and contrary to professional ethics for a lawyer to insist on copyright."�� (para, 93)

In his article, Professor Vaver discusses the various issues surrounding the copyright eligibility of legal documents such as the bar for originality, ownership, moral rights, and infringement and concludes with various recommendations for both reform and guidelines for this genre of work. For example, he notes that one solution would be to not give copyright protection to legal documents at all, or that a perhaps another solution would be to “accept that some legal documents need protection in some circumstances”. (Vaver, 681)

As discussed in a written after the lawsuit was first launched in May 2010, the outcome of this decision at trial will have significant ramifications on the future digitization, as well as legal collegiality, and most importantly, on the interplay between users' and creators' rights.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

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