Keatley Surveying Ltd. v. Teranet Inc.

Keatley Surveying Ltd. v. Teranet Inc.
Collection
Supreme Court Judgments
Date
2019-09-26
Neutral citation
2019 SCC 43
Report
[2019] 3 SCR 418
Case number
37863
Judges
Wagner, Richard; Abella, Rosalie Silberman; Moldaver, Michael J.; Karakatsanis, Andromache; Côté, Suzanne; Brown, Russell; Martin, Sheilah
On appeal from
Ontario
Subjects
Intellectual property
Notes
Case in Brief
SCC Case Information
Decision Content
SUPREME COURT OF CANADA
Citation: Keatley Surveying Ltd. v. Teranet Inc., 2019 SCC 43, [2019] 3 S.C.R. 418
Appeal Heard: March 29, 2019 Judgment Rendered: September 26, 2019 Docket: 37863
Between:
Keatley Surveying Ltd. Appellant/Respondent on cross-appeal
and
Teranet Inc. Respondent/Appellant on cross-appeal
- and -
Attorney General of Canada, Attorney General of Ontario, Attorney General of British Columbia, Attorney General of Saskatchewan, Canadian Association of Law Libraries, Canadian Legal Information Institute, Federation of Law Societies of Canada, Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic, Land Title and Survey Authority of British Columbia, Centre for Intellectual Property Policy, Ariel Katz and Canadian Standards Association Interveners
Coram: Wagner C.J. and Abella, Moldaver, Karakatsanis, Côté, Brown and Martin JJ.
Reasons for Judgment: (paras. 1 to 91)
Abella J. (Moldaver, Karakatsanis and Martin JJ. concurring)
Joint Concurring Reasons: (paras. 92 to 147)
Côté and Brown JJ. (Wagner C.J. concurring)
Keatley Surveying Ltd. v. Teranet Inc., 2019 SCC 43, [2019] 3 S.C.R. 418
Keatley Surveying Ltd. Appellant/Respondent on cross‑appeal
v.
Teranet Inc. Respondent/Appellant on cross‑appeal
and
Attorney General of Canada,
Attorney General of Ontario,
Attorney General of British Columbia,
Attorney General of Saskatchewan,
Canadian Association of Law Libraries,
Canadian Legal Information Institute,
Federation of Law Societies of Canada,
Samuelson‑Glushko Canadian Internet Policy and Public Interest Clinic,
Land Title and Survey Authority of British Columbia,
Centre for Intellectual Property Policy, Ariel Katz and
Canadian Standards Association Interveners
Indexed as: Keatley Surveying Ltd. v. Teranet Inc.
2019 SCC 43
File No.: 37863.
2019: March 29; 2019: September 26.
Present: Wagner C.J. and Abella, Moldaver, Karakatsanis, Côté, Brown and Martin JJ.
on appeal from the court of appeal for ontario
Intellectual property — Copyright — Crown copyright — Plans of survey — Land surveyor bringing class action on behalf of land surveyors in Ontario who registered or deposited plans of survey in provincial land registry offices — Land surveyor alleging that surveyors’ copyright infringed when plans of survey digitized, stored and copied by province’s service provider — Action dismissed on basis that copyright in plans of survey belongs to province — Whether copyright in plans of survey vests in Crown pursuant to s. 12 of Copyright Act — Whether plans of survey prepared or published by or under direction or control of province — Copyright Act, R.S.C. 1985, c. C‑42, s. 12 .
In 2007, Keatley Surveying Ltd. brought a motion to certify a class action on behalf of all land surveyors in Ontario who registered or deposited plans of survey in the provincial land registry offices. It claimed that Teranet Inc., which manages Ontario’s electronic land registry system as a service provider to the government pursuant to statutory authority and in accordance with the terms of implementation and licensing agreements with the province, infringed surveyors’ copyright by digitizing, storing and copying the plans of survey created by the surveyors and registered or deposited in the electronic land registry system. When plans of survey are registered and deposited at a physical land registry office in Ontario, Teranet scans the plans of survey and adds this electronic information to its databases. Teranet operates two service portals, Teraview and GeoWarehouse, through which licensed users can access Ontario’s land registry documents, including plans of survey, for a statutorily prescribed fee.
Seven common issues were certified in Keatley’s proposed class action. In 2016, Keatley and Teranet moved for summary judgment. Determination of the motion turned on the second common issue, which asked whether the copyright in the plans of survey belongs to Ontario pursuant to s. 12 of the Copyright Act as a result of the registration or deposit of those plans in the Ontario land registry office. Section 12 of the Copyright Act provides that the copyright in any work prepared or published by or under the direction or control of Her Majesty or any government department belongs to Her Majesty. The motions judge found that the copyright belonged to the Crown and therefore that there was no copyright infringement. Since the answer to the second common issue was dispositive of Keatley’s claim, the motions judge allowed Teranet’s motion for summary judgment and dismissed Keatley’s class action. The Court of Appeal dismissed Keatley’s appeal. Keatley appeals to the Court, and Teranet cross‑appeals in order to preserve its rights in relation to the remaining common issues.
Held: The appeal should be dismissed. It is unnecessary to deal with the cross‑appeal.
Per Abella, Moldaver, Karakatsanis and Martin JJ.: The interpretation of s. 12 of the Copyright Act is informed both by the words of the provision and the general purposes and objectives of the Copyright Act as the Court has come to understand them in the century since s. 12 came into being. Together these interpretive tools yield a narrow scope for Crown copyright. This case is the Court’s first opportunity to examine the scope and application of s. 12 of the Copyright Act , enacted in 1921.
The opening language of s. 12 — “without prejudice to any rights or privileges of the Crown” — reflects the historical Crown prerogative over publishing. The remainder of s. 12 provides a statutory basis for Crown copyright, which will subsist in any work “prepared or published by or under the direction or control of Her Majesty”. The purpose of statutory Crown copyright is to protect works prepared or published under the control of the Crown where it is necessary to guarantee the authenticity, accuracy and integrity of the works in the public interest. But Crown copyright cannot be so expansive in scope that it allows for the routine expropriation of creators’ copyright in their works or that it impedes the public interest in accessing information.
The notion of direction or control is critical to the assessment of whether Crown copyright exists. The goal of the s. 12 inquiry in its entirety is to determine whether the degree of the Crown’s direction and control over the preparation or publication of the work is sufficient to vest copyright in the Crown.
A work will be prepared by the Crown when its agent or employee brings the work into existence for and on behalf of the Crown in the course of his or her employment or when the Crown essentially determines whether and how a work will be made, even if the work is produced by an independent contractor. In these two circumstances, the Crown exercises direction and control over both the person preparing the work and the work that is ultimately prepared.
The evaluation of the Crown’s direction or control takes on heightened importance in determining whether a work is published by the Crown within the meaning of s. 12 . Merely making someone else’s work available to the public is insufficient. A work will only be published by or under the direction or control of the Crown when it can be said that the Crown exercises direction or control over the publication process, including over both the person publishing the work and the nature, form and content of the final, published version of a work.
Determining whether a work was published with sufficient governmental direction or control to comply with s. 12 necessitates an inquiry into the Crown’s interest in the works at the time of publication. Relevant indicia of governmental direction or control may include the presence of a statutory scheme transferring property rights in the works to the Crown; a statutory scheme which places strict controls on the form and content of the works; whether the Crown physically possesses the works; whether exclusive control is given to the government to modify the works; the opt‑in nature of the statutory scheme; and the necessity of the Crown making the works available to the public.
The crux of this appeal is publication, namely whether the registered and deposited plans of survey were published by or under the direction or control of the Crown. The nature and extent of the Crown’s direction and control are informed by a comprehensive statutory regime governing land registration in Ontario which gives the Crown complete control over the process of publication. The Crown has proprietary rights in the plan, as well as custody and control over the physical plans. The statutory scheme ensures that the Crown directs and controls the format and content of registered plans. This control subsists after registration or deposit. It is only the Crown who is able to alter the content of the plans and it is the Crown that has ongoing control over and responsibility for the publishing process, including the final form of the work. Likewise, it is the Crown who — through validly enacted legislation — has the exclusive authority to make copies of the registered or deposited plans of survey.
When either the Crown or Teranet publishes the registered or deposited plans of survey, copyright vests in the Crown because the Crown exercises direction or control over the publication process. This conclusion furthers the underlying purposes of Crown copyright because registered and deposited plans of survey in the land registry system are intended to be relied upon by members of the public to determine property rights and obligations.
In accordance with the principle of technological neutrality, Ontario’s reliance on new technologies post‑digitization does not change the assessment of whether the Crown has copyright by virtue of s. 12 of the Copyright Act . There is no practical difference between obtaining a copy of a registered or deposited plan of survey from a physical land registry office or electronically. Because the Crown has copyright in the works pursuant to s. 12 of the Act, there is no infringement under the electronic registry system.
Per Wagner C.J. and Côté and Brown JJ.: There is agreement with the majority that the appeal should be dismissed since copyright in plans of survey registered or deposited in the land registry office belongs to Ontario under s. 12 of the Copyright Act . There is disagreement, however, with the majority’s interpretation of s. 12 .
Statutory interpretation entails discerning Parliament’s intention by examining statutory text in its entire context and in its grammatical and ordinary sense, in harmony with the statute’s scheme and objects. On its face, it would appear that the ordinary and grammatical sense of the text of s. 12 is clear: copyright in “any work” vests in the Crown where the Crown prepares or publishes the work, or a third party prepares or publishes the work under the Crown’s direction or control. However, the legislature does not intend to produce absurd consequences, and a literal reading of s. 12 would result in an overly broad Crown copyright which sweeps aside the careful balance that Parliament struck between creators’ and users’ rights. A literal reading would effectively empower the Crown to expropriate copyright from independent creators in any copyrightable work merely by publishing the work itself or causing a third party to publish the work. Although the courts below and the majority recognized the absurdity worked by a literal reading of s. 12 , their solution — requiring that the Crown have sufficient “direction or control” in the publishing process, including the work itself — reads out part of s. 12 and distorts what is left.
“Prepared or published by or under the direction or control” of the Crown should be interpreted according to its ordinary meaning: the act of preparing or publishing the work must be done either by the Crown itself or under the Crown’s direction or control. In each case, inquiries must be made into the person preparing or publishing the work, and into that person’s relationship to the Crown. A requirement that both the “prepared” prong and the “published” prong entail inquiring into whether the Crown has sufficient direction or control in the work itself should not be imported into the statute. The question to ask is simply whether the Crown brought about the preparation or publication of the work, either by its own agents and servants or by exercising direction or control over a third party.
A work is prepared by or under the direction or control of the Crown where the Crown is in a position to determine whether or not a work will be made. It is not sufficient for the purposes of the “prepared” prong for the Crown to determine that, if the work is to be made, it will be made a particular way. A work is prepared by the Crown where an agent or servant of the Crown brings the work into existence in the course of his or her duties. A work is prepared under the direction or control of the Crown where the Crown determines that a third party shall make the work. A work is published by the Crown where the Crown itself publishes the work, and a work is published under the direction or control of the Crown where a third party, such as an independent contractor, publishes the work at the Crown’s behest. Neither prong requires an inquiry into whether the Crown exercises direction and control over the person preparing the work and the work that is ultimately prepared. The only inquiry is into the identity of the author and the relationship of that author to the Crown.
However, the fact that a work is published “by or under the direction or control” of the Crown is not the end of the s. 12 analysis. Once a court is satisfied that a work was “prepared or published by or under the direction or control” of the Crown, it must then consider whether, at the time of preparation or publication, the work is a “government work”. A government work is a work that serves a public purpose and in which vesting copyright in the Crown furthers that purpose. These will be works in which the government has an important interest concerning their accuracy, integrity, and dissemination — the mere fact that the government has a work prepared or published is not itself conclusive that the work serves a public purpose.
The plans of survey in the instant case are made available to the public and are therefore both “published by” Ontario and published by Teranet under Ontario’s direction or control, since Ontario makes the plans available in the land registry office, and Teranet makes the plans available to subscribers of its platforms. Furthermore, the plans of survey at issue in this case are clearly government works. They have a clear public character, as they define and illustrate the legal boundaries of land within Ontario, clarifying land ownership, and allowing landowners and users to govern their affairs accordingly. People rely on the accuracy of survey plans for determining their interest in property and facilitating land transactions. By holding copyright in the plans, the Crown can restrict the ability of a surveyor or other private party to make alterations to the plans and then sell or distribute them privately. By asserting Crown copyright, the government can ensure that survey plans obtained from the land registry office or from Teranet are accurate. As well, because survey plans are so widely relied upon, it is important to ensure wide public availability so that whomever requires access to them can obtain it. As the registered and deposited plans of survey are government works when they are “published by or under the direction or control” of Ontario, copyright in them is vested in the Crown under s. 12 , and not in the original surveyors.
Cases Cited
By Abella J.
Referred to: Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336; CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339; Society of Composers, Authors and Music Publishers of Canada v. Bell Canada, 2012 SCC 36, [2012] 2 S.C.R. 326; Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37, [2012] 2 S.C.R. 345; R. v. Bellman, [1938] 3 D.L.R. 548; Attorney‑General (N.S.W.) v. Butterworth & Co. (Australia) Ltd. (1938), 38 S.R. (N.S.W.) 195; Land Transport Safety Authority of New Zealand v. Glogau, [1999] 1 N.Z.L.R. 261; Robertson v. Thomson Corp., 2006 SCC 43, [2006] 2 S.C.R. 363; Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34, [2012] 2 S.C.R. 231; Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57, [2015] 3 S.C.R. 615.
By Côté and Brown JJ.
Referred to: Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27; Bell ExpressVu Limited Partnership v. Rex, 2002 SCC 42, [2002] 2 S.C.R. 559; Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336; Copyright Agency Ltd. v. New South Wales, [2007] FCAFC 80, 159 F.C.R. 213, rev’d [2008] HCA 35, 233 C.L.R. 279; Land Transport Safety Authority of New Zealand v. Glogau, [1999] 1 N.Z.L.R. 261; P.S. Knight Co. Ltd. v. Canadian Standards Association, 2018 FCA 222, 161 C.P.R. (4th) 243; R. v. Bellman, [1938] 3 D.L.R. 548.
Statutes and Regulations Cited
Class Proceedings Act, 1992, S.O. 1992, c. 6.
Condominium Act, 1998, S.O. 1998, c. 19.
Copyright Act, R.S.C. 1985, c. C‑42, ss. 2 , 2.2(1) , 12 , 13(1) , (3) , (4) .
Copyright Act, 1911 (U.K.), 1 & 2 Geo. 5, c. 46, s. 18.
Electronic Land Registration Services Act, 2010, S.O. 2010, c. 1, Sch. 6.
Land Titles Act, R.S.O. 1990, c. L.5, ss. 14(1), 145(6), 164, 165(1), (4).
O. Reg. 43/96, ss. 5(1), 7, 9(1)(e), 49(2).
O. Reg. 49/01, s. 17.
O. Reg. 216/10, s. 8.
R.R.O. 1990, Reg. 690, s. 3.
Registry Act, R.S.O. 1990, c. R.20, ss. 15(4), 17(4), 18(1), (10), 50(3), 89.
Surveyors Act, R.S.O. 1990, c. S.29.
Surveys Act, R.S.O. 1990, c. S.30.
Authors Cited
Canada. Consumer and Corporate Affairs. From Gutenberg to Telidon: A White Paper on Copyright. Ottawa, 1984.
Chitty, Joseph. A Treatise on the Law of the Prerogatives of the Crown and the Relative Duties and Rights of the Subject. London: Butterworths, 1820.
Driedger, Elmer A. Construction of Statutes, 2nd ed. Toronto: Butterworths, 1983.
Fox, Harold G. “Copyright in Relation to the Crown and Universities with Special Reference to Canada” (1947), 7 U.T.L.J. 98.
Geist, Michael. “Introduction” in Michael Geist, ed., The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Canadian Copyright Law. Ottawa: University of Ottawa Press, 2013.
Gilchrist, John. “Origins and Scope of the Prerogative Right to Print and Publish Certain Works in England” (2011), 10 Canberra L. Rev. 139.
High, James L., ed. Speeches of Lord Erskine, While at the Bar, vol. 1. Chicago: Callaghan & Company, 1876.
Judge, Elizabeth F. “Crown Copyright and Copyright Reform in Canada” in Michael Geist, ed., In the Public Interest: The Future of Canadian Copyright Law. Toronto: Irwin Law, 2005.
McKeown, John S. Fox Canadian Law of Copyright and Industrial Designs, 4th ed. Toronto: Thomson/Carswell, 2003 (loose‑leaf updated August 2019, release 4).
Oldfield, Laurel C. F. The Law of Copyright, London: Butterworths, 1912.
Payne, Sebastian. “The Royal Prerogative”, in Maurice Sunkin and Sebastian Payne, eds., The Nature of the Crown: A Legal and Political Analysis. Oxford: Oxford University Press, 1999.
Petit Robert: dictionnaire alphabétique et analogique de la langue française, nouvelle éd. Paris: Le Robert, 2019, “surveiller”.
Siemiatycki, Matti. “Public‑Private Partnerships in Canada: Reflections on twenty years of practice” (2015), 58 Can. Pub. Admin. 343.
Sullivan, Ruth. Driedger on the Construction of Statutes, 3rd ed. Toronto: Butterworths, 1994.
Torno, Barry. Crown Copyright in Canada: A Legacy of Confusion. Ottawa: Consumer and Corporate Affairs, 1981.
Vaver, David. “Copyright and the State in Canada and the United States” (1996), 10 I.P.J. 187.
Vaver, David. Intellectual Property Law: Copyright, Patents, Trade‑marks, 2nd ed. Toronto: Irwin Law, 2011.
APPEAL and CROSS‑APPEAL from a judgment of the Ontario Court of Appeal (Doherty, Brown and Miller JJ.A.), 2017 ONCA 748, 418 D.L.R. (4th) 425, 87 R.P.R. (5th) 4, 139 O.R. (3d) 340, [2017] O.J. No. 5023 (QL), 2017 CarswellOnt 14961 (WL Can.), affirming a decision of Belobaba J., 2016 ONSC 1717, 131 O.R. (3d) 703, 72 R.P.R. (5th) 248, [2016] O.J. No. 2370 (QL), 2016 CarswellOnt 7233 (WL Can.). Appeal dismissed.
Luciana P. Brasil, Michael Sobkin and Avichay Sharon, for the appellant/respondent on cross‑appeal.
Julie Parla, Barry B. Sookman, F. Paul Morrison, Stephanie Sugar and Hovsep Afarian, for the respondent/appellant on cross‑appeal.
Kathryn Hucal and John Provart, for the intervener the Attorney General of Canada.
Michael S. Dunn and Yashoda Ranganathan, for the intervener the Attorney General of Ontario.
Graham J. Underwood and Wes G. Crealock, for the intervener the Attorney General of British Columbia.
Theodore Litowski, for the intervener the Attorney General of Saskatchewan.
Robert Janes, Q.C., and Kim Nayyer, for the intervener the Canadian Association of Law Libraries.
Rahool P. Agarwal and Khrystina McMillan, for the interveners the Canadian Legal Information Institute and the Federation of Law Societies of Canada.
Jeremy de Beer and David Fewer, for the intervener the Samuelson‑Glushko Canadian Internet Policy and Public Interest Clinic.
Steve Garland, Theodore Sum and Laura Easton, for the intervener the Land Title and Survey Authority of British Columbia.
Michael Shortt and Jean‑Philippe Mikus, for the interveners the Centre for Intellectual Property Policy and Ariel Katz.
John E. Callaghan and Kevin Sartorio, for the intervener the Canadian Standards Association.
The judgment of Abella, Moldaver, Karakatsanis and Martin JJ. was delivered by
[1] Abella J. — This appeal gives the Court its first opportunity to examine the scope and application of Crown copyright. The tools at our interpretive disposal are not only the usual principles of statutory interpretation, they also include extensive jurisprudence explaining how this Court has come to understand copyright law in the years since the Crown copyright provision was enacted in 1921. Together, in my view, they yield a narrow scope for Crown copyright, one that protects the rights of the creators of a work but grants ownership to the Crown only where it has exercised a sufficiently extensive degree of direction or control in the creation or dissemination of the work.
[2] The context is Ontario’s land registration system. Historically, land registration in Ontario was exclusively paper-based. The documents comprising the land registry, including plans of survey, were registered or deposited with Ontario’s land registry offices. Members of the public who wished to obtain copies of these documents could attend a physical land registry office and request a copy for a prescribed fee. The surveyors who created the plans of survey were paid neither fee nor royalty when the government provided copies of registered and deposited plans to members of the public.
[3] In the 1980s, Ontario began to develop the Province of Ontario Land Registry Information System, or POLARIS, which, among other goals, was intended to automate Ontario’s land registry system. POLARIS was initially designed to complement the existing land registry offices in their delivery of services to the public. However, the stakeholders in the land registry scheme were concerned that POLARIS alone would not meaningfully assist those who used and relied on the land registry. In particular, users would still be required to attend a physical office to perform land-related transactions. To alleviate those shortcomings, land surveyors, along with the other users of the system, lobbied for the ability to have remote access to the land registry offices.
[4] The process of creating a fully automated and electronic land registry system with remote access capabilities came, however, with a high price tag. In 1987, Ontario started a consultation process surrounding the modernization of the land registry system. Surveyors taking part in the consultation advocated for a public-private partnership to undertake this modernization. In 1988, Ontario requested expressions of interest and then proposals for the creation of an electronic land registry and administration system. Developing this system involved two interrelated goals: digitalizing all land registration documents and providing remote access to these documents, and creating a province-wide index map. Surveyors were involved with both aspects of modernization. Ontario also worked closely with the Association of Ontario Land Surveyors, the professional self-governing body responsible for the licensing and governance of Ontario land surveyors, in the electronic land registry system’s development phase.
[5] Because of the interdisciplinary nature of the modernization process, individual companies lacked the capacity to complete the project. Accordingly, bidding consortia were formed. Surveyors and surveying companies were integral to these consortia. Real/Data Ontario Inc., the ultimately successful entity, for example, was composed of over a dozen participating member corporations, five or six of which were surveying firms or consortia of surveying firms.
[6] In 1991, Ontario entered into a public-private partnership with Real/Data, which was subsequently incorporated as Teranet Inc. Teranet contracted with Ontario to perform the automation and conversion of the paper-based registry system into an electronic land title system, as well as to operate and maintain this system on Ontario’s behalf. When Teranet was incorporated, LanData Group, a consortium of surveying firms, became a shareholder in Teranet.
[7] The Ontario-Teranet public-private partnership was part of the so-called “first wave” of public-private partnerships. These projects were planned directly by government departments or agencies in order to increase public funding for infrastructure by raising new money through user fees or payments, and transfer supply, availability and demand risk to the private sector partner. These partnerships were undertaken in the belief that greater competition and involvement in the provision of public services would lead to lower costs and greater efficiency.[1]
[8] In 1991, Teranet began building the POLARIS province-wide index map. LanData was tasked with building the “fabric” of the POLARIS map. Teranet entered into agreements with LanData for work related to a specific geographical region. LanData then assigned the work to a member surveying firm. LanData and Teranet also entered into an Implementation Services Agreement confirming that LanData would provide implementation services to Teranet. These implementation services included mapping as well as automation and conversion of registry documents and records, and maintenance of the land registration database and the POLARIS map. The Implementation Services Agreement stipulated that Ontario retained all right, title and interest in and to the land registration documents, including plans of survey. LanData disbanded in 1999. From that point on, Teranet contracted directly with individual surveyors and surveying firms. These contracts were made publicly available to any surveyor. In the period between 1991 and 2010, approximately $40 million of the cost of creating the POLARIS map was paid to surveyors. Surveyors were responsible for a plethora of roles in the creation of POLARIS including field work, the preparation of digital files, data collection and the preparation of reports based on survey findings. In creating the automated electronic land registry system, the surveyors contracted for by Teranet relied on existing plans of survey. The conversion to an electronic land registry system was completed in 2010.
[9] Teranet now manages Ontario’s electronic land registry system as a service provider to the government. Teranet acts pursuant to statutory authority and in accordance with the terms of implementation and licensing agreements with the province (Electronic Land Registration Services Act, 2010, S.O. 2010, c. 1, Sch. 6). Under these agreements, Ontario retains all rights, title and interest, including intellectual property rights, to the data used in the electronic land registry system, including plans of survey. The licensing agreement allows Teranet to access registry documents, which belong to Ontario, to facilitate the electronic land registry system.
[10] Since 1999, land registry documents could be registered electronically, with the sole exception of plans of survey. When plans of survey are registered and deposited at a physical land registry office in Ontario, Teranet scans the plans of survey and adds this electronic information to its databases. Teranet provides electronic copies of plans of survey to the public for a statutorily prescribed fee. In certain circumstances, copies of the plan of survey are immediately distributed to a variety of persons and entities, including, for example, when an application for the first registration of a land parcel or the registration of a condominium plan is made (Procedures and Records, R.R.O. 1990, Reg. 690, to the Land Titles Act, R.S.O. 1990, c. L.5, s. 3; Description and Registration, O. Reg. 49/01, to the Condominium Act, 1998, S.O. 1998, c. 19, s. 17).
[11] Teranet operates two service portals, Teraview and GeoWarehouse, through which licensed users can access Ontario’s land registry documents, including plans of survey, for a statutorily prescribed fee, which, when viewed on either service is currently in the amount of $16.30 per plan.[2]
[12] Teranet collects these statutorily prescribed fees on behalf of Ontario. According to an agreement between Ontario and Teranet, Teranet invoices Ontario for the services it has provided and is then paid by Ontario for the performance of those services.
[13] Land surveyors are required to use copies of plans of survey in order to fulfill their statutory and professional duties, which are codified in the Surveyors Act, R.S.O. 1990, c. S.29, and its accompanying regulations. When surveyors create a plan of survey, they must research all evidence related to the parcel of land being surveyed (O. Reg. 216/10). This evidence includes copies of registered plans of survey prepared in relation to the land being surveyed and the abutting lands (s. 8). Many surveyors routinely access registered plans of survey through Teranet’s online service portals. The terms and conditions accompanying the licenses to these portals state that the intellectual property in the products accessed on Teraview or GeoWarehouse are either owned by Teranet’s suppliers or have been licensed to Teranet.
[14] A web of legislation governs the deposit and registry of plans of survey, the format and content of these plans of survey, and the government’s subsequent use of these documents. Ontario Regulation 43/96, made under the Registry Act, R.S.O. 1990, c. R.20, applies to plans registered and deposited under the Registry Act or Land Titles Act. Section 5(1) of this Regulation states:
. . . plans that are to be submitted for registration or deposit shall comply with,
(a) the Act, or the Land Titles Act if the plan was prepared under that Act, and this Regulation;
(b) the Surveys Act and the regulations made under it;
(c) the Act and the regulations under which the plan was prepared; and
(d) the Surveyors Act and the regulations made under it.
[15] In accordance with s. 165(1) of the Land Titles Act, all plans submitted for registration and deposit at a land registry office become the property of the Crown. Section 50(3) of the Registry Act similarly indicates that every registered instrument is the property of the Crown, while s. 18(1) states that all records created, used or maintained for the purposes of the land registry system are the property of the Crown.
[16] A plan of survey will not be accepted for registration or deposit when it contains any copyright mark, by words or symbols, on the face of the plan (s. 9(1)(e), O. Reg. 43/96 to the Registry Act; Land Titles Act, s. 164). In accordance with s. 14(1) of the Land Titles Act, the Deputy Minister is responsible for appointing an Examiner of Surveys, who carries out the duties prescribed by the land registration legislation, including the Land Titles Act and the Registry Act. The Examiner of Surveys is in turn responsible for ordering the correction of any defect or omission in a registered or deposited plan of survey. Once a plan of survey has been registered or deposited, the surveyor is prohibited from amending the content of the plan without permission from the Examiner of Surveys. A person other than the surveyor who created the plan may also apply to the Examiner for an order directing that a change be made to the registered or deposited plan (Land Titles Act, s. 145(6); Registry Act, s. 89; O. Reg. 43/96, s. 49(2)).
[17] This appeal arises from a motion to certify a class action brought by Keatley Surveying Ltd., a professional corporation owned and operated by Gordon R. Keatley, a professional land surveyor and member of the Association of Ontario Land Surveyors.
[18] In 2007, Keatley brought a motion to certify a class action on behalf of all land surveyors in Ontario who registered or deposited plans of survey in the provincial land registry offices. Keatley claimed that Teranet infringed surveyors’ copyright by digitizing, storing and copying the plans of survey created by the surveyors and registered or deposited in the electronic land registry system.
[19] The class proceedings judge declined to certify the action (Keatley Surveying Ltd. v. Teranet Inc., 2012 ONSC 7120, 107 C.P.R. (4th) 237). Keatley revised its proposed list of common issues, and the Divisional Court certified the action under the Class Proceedings Act, 1992, S.O. 1992, c. 6, with seven Common Issues (Keatley Surveying Ltd. v. Teranet Inc., 2014 ONSC 1677, 119 O.R. (3d) 497):
1. Does copyright under the Copyright Act [R.S.C. 1985, c. C-42 ] subsist in the Plans of Survey?
2. Does the copyright in the Plans of Survey belong to the Province of Ontario pursuant to section 12 of the Copyright Act as a result of the registration and/or deposit of those Plans of Survey in the Ontario Land Registry Office?
3. Does the signed declaration affixed to the Plan of Survey at the time of registration and/or deposit constitute a signed written assignment of copyright to the Province of Ontario pursuant to subsection 13(4) of the Copyright Act ?
4. Are Class Members deemed to have consented to any or all of the Alleged Uses by the Defendant of Plans of Survey as a result of the registration and/or deposit of those Plans of Survey to the Ontario Land Registry Office?
5. Did the Defendant make any or all of the Alleged Uses of Plans of Survey? If so, which ones?
6. If the answers to common issues 2 and 3 are no, do any or all of the Alleged Uses constitute:
a. uses that by the Copyright Act only the owner of the copyright has the right to do?
b. uses that are listed in paragraphs 27(2) (a) to (e) of the Copyright Act and that the Defendant knew or should have known infringes copyright? and if so, which ones?
7. Does the Defendant have a defence to copyright infringement based on public policy that would justify the Defendant making the Alleged Uses of Plans of Survey?
[20] Teranet’s appeal of the certification decision to the Ontario Court of Appeal was dismissed (Keatley Surveying Ltd. v. Teranet Inc., 2015 ONCA 248, 125 O.R. (3d) 447).
[21] In early 2016, both Keatley and Teranet moved for summary judgment. Belobaba J. considered the seven Common Issues (Keatley Surveying Ltd. v. Teranet Inc., 2016 ONSC 1717, 131 O.R. (3d) 703). The first — whether copyright subsists in the plans of survey — was not disputed. The parties agreed that plans of survey fall within the definition of an “artistic work” in s. 2 of the Copyright Act , which includes “drawings, maps, charts, [and] plans”.
[22] The second Common Issue — whether the copyright in the plans of survey belongs to the province of Ontario pursuant to s. 12 of the Copyright Act — was most intensely contested by the parties. Section 12 of the Act says:
Where copyright belongs to Her Majesty
12 Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.
Teranet alleged that the plans of survey were “prepared or published by or under the direction or control” of the province, and therefore copyright belongs to the Crown.
[23] In Belobaba J.’s view, s. 12 has two prongs: the “prepared” prong and the “published” prong. In his opinion, plans of survey are not prepared “under the direction or control” of the province. Plans are generally prepared by surveyors at the request of private clients. While these plans must conform to statutorily prescribed guidelines, these guidelines speak to form and not content. If the plans of survey were found to be “prepared” under the direction or control of the province, it would mean that copyright in all plans of survey, even those that are never registered or deposited, would automatically belong to the Crown upon creation.
[24] Belobaba J. then considered whether the plans of survey were published under the province’s direction or control. He was not persuaded that, because the digitization and publication of plans of survey registered or deposited at the land registry office are done under the direction or control of the province, it follows that the copyright in the documents belongs to the province. However, this was not dispositive because provincial statutes make clear that the property in the plans of survey, including copyright, is transferred to the province when they are registered or deposited at the land registry office. The province then has “control” of the plans of survey, and publications of these documents are done “by or under the direction or control of Her Majesty”. When this happens, s. 12 dictates that the copyright in these works belongs to the province for the prescribed term. In the result, the answer to the second Common Issue — the dispositive issue for Keatley’s claim — was that the copyright belongs to the Crown and therefore there was no copyright infringement.
[25] Belobaba J. considered the remaining certified Common Issues, starting with the third Common Issue, which was whether a signed declaration affixed to plans of survey at the time of registration or deposit constitutes an assignment of copyright to the province of Ontario pursuant to s. 13(4) of the Copyright Act . This declaration stated that the plan complied with all applicable Acts, regulations and practice standards. Because the declaration says nothing about copyright or an assignment of rights, Belobaba J. concluded there was no assignment of copyright.
[26] The fourth Common Issue was whether class members are deemed to have consented to the alleged uses of the plans of survey by Teranet as a result of the registration or deposit of thos