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Ontario Court of Appeal confirms broad scope of Crown copyright

Crown copyrightIn Keatley Surveying v Teranet, the Ontario Court of Appeal (ONCA) issued one of the only decisions in Canada (and the world) which deals with Crown copyright.[1] Keatley Surveying confirms the broad scope for Crown copyright under the Canadian Copyright Act – including its potential to deprive copyright holders of ownership in the works they created but later submit to government agencies. This decision will have implications for businesses which rely on documents made available to the public by federal or provincial governments, and for businesses which submit those documents to governments in the first place.

Background

Keatley Surveying was the representative plaintiff in a class action pitting land surveyors against Teranet, the private corporation which administers Ontario’s electronic land registry. The surveyors argued that Teranet infringed their copyrights by making copies of the plans available to the public.

Teranet replied that the surveyors no longer owned copyright in the plans they submitted the land registry, since copyright in the plans was owned by the provincial government through the Crown copyright provisions of the Copyright Act. The trial judge agreed with Teranet, and Keatley Surveying appealed to the Ontario Court of Appeal.

Executive summary

  • Crown copyright has two branches: (1) works prepared by the government; (2) works published under the government’s “direction or control”.
  • Under the publication branch, whether a work is published under the government’s direction and control depends on a multi-factor balancing test, which focuses on the scope of the rights held by the government at the moment of publication.
  • Crown copyright can apply even if the government is not the first entity to publish a work. As a result, certain government publications can effectively deprive copyright owners of their ownership of copyrights.
  • Provincial laws are relevant to determining whether the government exercised direction or control, but cannot directly transfer copyright.

Analysis

Given that Teranet is a private corporation, the first issue facing the Court was whether the Crown copyright regime applied at all.[2] Writing for a unanimous Court, Doherty J.A. quickly concluded that the regime did apply. According to the Court, the involvement of a private corporation was “irrelevant” to the merits of Keatley’s claim.[3] Similarly the Court found that Teranet’s actions should be attributed to the provincial Crown to determine whether Crown copyright applied.[4]

The next question was whether the survey plans had been “prepared or published by or under the direction or control of Her Majesty”, which is the requirement to trigger Crown copyright. The Court treated this provision as establishing a two-branch test, with separate “prepared by” and “publication” branches. If either branch were satisfied, copyright would belong to the provincial Crown.

The Court of Appeal agreed with the trial judge that the plans were not “prepared” by or under the direction or control of the Crown, since the plans were drawn up by private surveyors acting on their own initiative.[5] Thus, the appeal turned on whether the plans were “published by or under the direction or control” of the province.[6]

The Court had little trouble concluding that publication by the government had occurred, since the Copyright Act defines publication as making copies of a work available to the public.[7] As a result, by making copies of survey plans available upon request to the general public, Teranet “published” them for copyright purposes.[8]

The finding that the surveys were published by the Crown should have ended the analysis, since the Copyright Act confers Crown copyright on any work “published by” the Crown.[9] However, the Ontario Court of Appeal declared that “mere publication by the Crown” does not trigger the Crown copyright regime.[10] The Court continued its reasoning by holding that only works published “under the Crown’s direction or control” could trigger Crown copyright.[11]

This ruling represents an important narrowing of Crown copyright in Canada. Under the Court’s approach, Crown copyright will not apply simply because a work is published by the Crown. Instead, the publication must satisfy the “direction or control” test as well.

To determine whether a publication occurs under the Crown’s “direction or control” the ONCA held that courts must analyze the scope of the rights held by the Crown at the moment of publication: “the more extensive those rights, and the more rights associated with copyright are in the Crown’s hands the stronger the inference that the publishing occurs under the ‘direction or control’ of the Crown.”[12]

In analyzing the degree of control, the Court considered a number of factors, none of which were individually determinative:[13]

  • Custody or ownership of the physical embodiment of the work (here the survey plan physically deposited with the land registry).
  • Control over the form and content of the work.
  • The inability of the surveyor to make changes to the plan after its deposit.
  • The government’s exclusive power to alter the survey plan, even without the knowledge or approval of the surveyor.
  • The Crown’s statutory obligation to make copies of the plans available to the public.
  • Regulations forbidding the land registry from accepting any plan which contains a copyright claim or marking.

Collectively, these factors were held to support a finding of the Crown’s “direction and control” over the publication, such that copyright vested in the Crown. The Court then considered and rejected two challenges to its conclusions in favour of Crown copyright: federalism and first publication.

On federalism, the Court noted that provincial statutes could be relevant to determine whether a publication occurs under the direction or control of the provincial Crown.[14] However, the Court of Appeal ruled that provincial statutes cannot directly transfer ownership of a copyrighted work from one person to another.[15]

The Court also rejected Keatley’s argument that the Court should follow Australian caselaw which required that the Crown be the first person to publish a work before Crown copyright could apply.[16] The Ontario Court of Appeal noted that the Canadian Copyright Act applies to all publications under the Crown’s direction and control, regardless of whether or not this constitutes the first publication of a work.[17] This contrasts with the Australian Act, which expressly refers to first publication by the Crown. As a result, any publication under the Crown’s direction and control can trigger Crown copyright, even if the work was already published by a private party. This aspect of the ruling broadens the scope of Crown copyright in Canada, since it means that certain publications by the government can retroactively usurp copyright ownership previously held by a private party.

In order to protect their ownership of copyright, organisations whose works might be published by the government should obtain any necessary assignments or waivers, since the Crown copyright regime does not apply if there is a private arrangement with the work’s author.[18] If these preventive measures have not been taken, it may be necessary to obtain a re-assignment from the Crown.

By Michael Shortt, Fasken


[1] Keatley Surveying v Teranet, 2017 ONCA 748.

[2] Ibid at para 19.

[3] Ibid at para 19.

[4] Ibid at para 31.

[5] Ibid at paras 29-30.

[6] Ibid at para 31.

[7] Copyright Act, RSC 1985, c C-42, s 2.2(1)(a)(i).

[8] Supra note 1 at para 31.

[9] Copyright Act, RSC 1985, c C-42, s 12. This is even clearer in the French version of section 12, which confers Crown copyright on all works “publiées par l’entremise […] de Sa Majesté.”

[10] Supra note 1 at para 32.

[11] Ibid at para 31.

[12] Ibid at para 33. See also para 43.

[13] Ibid at para 34-43.

[14] Ibid at paras 53-54.

[15] Ibid at paras 45, 53-55.

[16] Ibid at paras 46-50.

[17] Ibid at paras 49-51.

[18] Copyright Act, RSC 1985, c C-42, s 12.

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