SCC dismisses appeal of Ontario land surveyors over breach of copyright

“The decision provides guidance to a section that had no prior authoritative interpretation in Canada,” says Barry Sookman, a senior partner at McCarthy Tétrault LLP in Toronto and a counsel for the respondent, Teranet Inc. The judgment “carefully attempts to balance the important public interest in publishing works for public purposes and the rights of copyright owners not to have their work transferred to the Crown where not warranted.”

The respondent, Teranet Inc., manages the Province of Ontario’s electronic land registry system (ELRS). Documents prepared by land surveyors — such as drawings, maps, charts and plans — are registered in the ELRS. The public can obtain those documents online through Teranet for a fee prescribed by statute. The system has been electronic since 2010.

The appellant, Keatley Surveying Ltd., was the representative plaintiff in a certified class action brought on behalf of approximately 350 land surveyors whose plans of survey were scanned and copied into the respondent’s digital database and made available online. The appellant claimed that Teranet was in breach of copyright by reaping profits at the expense of surveyors.

The Ontario Superior Court of Justice dismissed the appellant’s motion for summary judgment and the class action, finding that as a result of the legislative regime requiring registration or deposit of the plans of survey in the land registry office, ownership in the property of the plans of survey — including copyright — is transferred to the province, and the plans of survey are then “published by or under the direction or control of Her Majesty” pursuant to s. 12 of the Copyright Act. The Ontario Court of Appeal dismissed the appeal.

Section 12 of the Copyright Act reserves copyright for all works that are “prepared or published by or under the direction or control of Her Majesty or any government department.” Such copyright normally lasts for 50 years after a work was performed or created.

In today’s 7/0 decision, the Supreme Court upheld the decisions of the lower courts.

“Keatley argued for an interpretation of s. 12  which would, in effect, only apply to works prepared by or under the direction or control of Her Majesty,” Justice Rosalie Abella wrote in the majority reasons, with Justices Michael Moldaver, Andromache Karakatsanis and Sheilah Martin concurring.

“Section 12 would be tantamount to a ‘work for hire’ provision. Teranet, on the other hand, proposed an interpretation of s. 12  which would allow any work to be caught by Crown copyright if the Crown simply publishes it on or in any platform. In my respectful view, the correct position is between these extremes.”

But while the majority found that copyright is vested in the Crown when the Crown exercises direction and control over the publication process and over the work itself, the minority found that whether the Crown has sufficient direction or control over the work itself is not relevant.

In minority reasons that concurred in the result, Justices Suzanne Côté and Russell Brown, also writing for Chief Justice Richard Wagner, found that “we would adopt an interpretation whereby the copyright in a work is vested in the Crown where the work is ‘prepared or published by or under the direction or control’ of the Crown, and where the work is a government work [emphasis in original]. A government work is a work that serves a public purpose and in which vesting the copyright in the Crown furthers that purpose.”

“Ultimately, I think the court narrowed the scope of Section 12 [and] plainly recognized the important public interest in making sure that copyright vests in the Crown for those works that serve vital public purposes,” says Julie Parla of McCarthy Tétrault LLP, a counsel for the respondent Teranet before the court.

Parla says that “what was central to the decision is the operation of the land registry system in Ontario,” which insofar as it meant the Ontario government could continue to operate that system in a way that provided accurate information “served the public interest.”

The Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic intervened in the case from a concern to see creator and user rights balanced under s. 12. CIPPIC lead counsel Jeremy de Beer, of the University of Ottawa’s Faculty of Law, Common Law section, said he was pleased to see the court emphasize the importance of a balanced approach to the Copyright Act as a whole.

But while the key finding was that the scope of Crown copyright is narrow, and that the government doesn’t acquire copyright merely by making work available online, “the takeaway … is the urgency with which statutory reform is now required,” he says.

Abella explicitly mentioned the possibility of considering this issue in the ongoing parliamentary review of the Copyright Act, but statutory reform is required now “because the approach of the majority leaves a lot of uncertainty regarding when a Crown does acquire copyright in a work that it doesn’t produce but does publish,” he said.

Works the government is considered to “publish” could possibly include security prospectuses, patent and trademark filings, reports to administrative tribunals, or pleadings to courts; and in all of these situations, de Beer says, “it’s now necessary to ask, ‘How much direction or control does the government have over the publication process?’”

As well, Canada has long been out of step with other Commonwealth countries such as the U.K. and New Zealand, says Kim Nayyer, Vice-President of the Canadian Association of Law Libraries, another intervener in the case, and a counsel for CALL before the court in today’s decision.

“Section 12 should be rewritten if it continues to exist at all,” says Nayyer; it “was adopted nearly word-for-word from the 1911 U.K. statute,” which has since been amended, as have the statutes of other Commonwealth jurisdictions that had similarly applied that same statute.

Those amended statutes “do what we have asked our Parliament to do, which is to expressly exclude primary legal information from being considered to hold any copyright at all.”

In a written statement to Canadian Lawyer, a spokesman for Ontario’s Ministry of the Attorney General wrote, “We are pleased that the Supreme Court of Canada has held, consistent with Ontario’s position, that Ontario holds copyright to plans of survey that are deposited or registered in the Ontario land titles system.”

Counsel for the appellant was not immediately available for comment.