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COPYRIGHT - Ownership - Crown

Thursday, September 26, 2019 @ 1:50 PM  


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Appeal from a judgment of the Ontario Court of Appeal affirming a decision dismissing a class action brought by Keatley Surveying Ltd (Keatley). Teranet Inc. 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. 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. Teranet alleged that the plans of survey were “prepared or published by or under the direction or control” of the province, and therefore that copyright belonged to the Crown. The class proceedings judge initially declined to certify the action. Keatley revised its proposed list of common issues, and the Divisional Court certified the action. A motions judge found that the copyright belonged to the provincial Crown and therefore that there was no copyright infringement, dismissing the class action. The Court of Appeal dismissed Keatley’s appeal. The Court had to determine whether the copyright in the plans of survey belonged to the province of Ontario pursuant to s. 12 of the Copyright Act.

HELD: Appeal dismissed. Section 12 of the Copyright Act stated that the Crown would have copyright when a work was prepared or published by or under its direction or control. Critical to the assessment of whether Crown copyright subsisted was the notion and extent of government direction or control in relation to a work. A work was prepared under the Crown’s direction or control within the meaning of s. 12 when the Crown essentially determined whether and how a work would be made. In such circumstances, Crown copyright would subsist even though the Crown was not the “author” of the work because the Crown exercised direction or control over the work’s creation. Determining whether a work was published with sufficient governmental direction or control to comply with s. 12 necessitated an inquiry into the Crown’s interest in the works at the time of publication since this interest would demonstrate the degree of direction or control exercised by the Crown over the publication process. It was particularly significant that the Crown had the power to amend the content of the plans of survey once registered or deposited. Taken together, the provincial land registration regime gave the Crown complete control over the process of publication. When either the Crown or Teranet published the registered or deposited plans of survey, copyright vested in the Crown because the Crown exercised direction or control over the publication process, which included both the publisher and the resulting publication. While the s. 12 test was a stringent one, it was readily met on the facts of this case. As the holder of copyright in the plans of survey, the Crown was free to license the use of the works in the manner that it saw fit, which included permitting Teranet to access, publish and make copies of the registered or deposited plans of survey as Ontario’s licensee.

Keatley Surveying Ltd. v. Teranet Inc., [2019] S.C.J. No. 43, Supreme Court of Canada, R. Wagner C.J. and R.S. Abella, M.J. Moldaver, A. Karakatsanis, S. Côté, R. Brown and S.L. Martin JJ., September 26, 2019. Digest No. TLD-September232019015-SCC