In last week's Keatley Surveying decision, the Supreme Court considered the test that should determine when the Crown will acquire copyright in third-party works that are published under government authority. This is the first time that Crown copyright has been litigated in Canada before the Supreme Court of Canada, and one of only a handful of cases worldwide that consider the issue.
As a result, Keatley Surveying is a landmark case for businesses and individuals who submit documents to federal and provincial governments (including Crown corporations and even third-party service providers acting at the Crown's behest). It is also of interest for anyone who relies on documents published by the government or public agencies and service providers.
Like all provinces, Ontario operates a public land registry whose purpose is to record and publicize transactions involving real estate. Various documents related to these transactions may or must be filed with the land registry, and after filing, members of the public can obtain a copy of the document by paying a small fee.
The system was originally operated by the Ontario government, but following the digitization of the registry in the 1980s and 1990s, many services are now provided by Teranet, a private corporation. Teranet provides these services via a licence agreement with the province, and pursuant to a statutory framework.
Among the documents that are filed with the land registry (and made available to the public by Teranet) are plans of survey. These surveys are prepared by licensed Ontario surveyors and are a crucial component of the land registry, since they are relied upon to determine the boundaries of land, along with associated property rights. The preparation and filing of surveys with the registry is subject to a detailed list of regulatory requirements, and once filed, the plans are declared to become property of the Ontario government.
In 2007, Keatley Surveying Inc was lead plaintiff on a class action against Teranet and the government of Ontario for copyright infringement. Keatley Surveying complained that Teranet infringed copyright in the plans of survey prepared by Ontario land surveyors, since these plans were copied and sold to the public without the consent of the surveyors who prepared them.
The class action was certified, only to be met with a motion for summary judgment on several grounds, including that the surveyors did not own copyright in their plans, since copyright would have vested in Crown under Section 12 of the Copyright Act:
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.
The Ontario Superior Court and Court of Appeal both found that copyright in the surveys belonged to the provincial Crown, although they reached this result by slightly different routes. This set the stage for the Supreme Court to consider the same question. The result was a 4-3 split judgment. While all seven judges agreed that copyright in the plans belonged to the Crown, they divided on the appropriate test to determine the scope of Crown copyright.
Justice Abella wrote for a majority of four judges, and was concerned to balance the state's need to rely on Crown copyright with creators' rights to be free from de facto expropriation. She began her reasons by noting that the opening words of Section 12 ("Without prejudice to any rights or privileges of the Crown") preserve the so-called "prerogative copyright" which gives the Crown certain proprietary rights independent of the Copyright Act itself.
The prerogative was left for further exploration another day, and Justice Abella turned to statutory Crown copyright, identifying two branches to Section 12: a "preparation" branch and a "published branch." Under the "prepared" branch, the Crown will own copyright in a work that is prepared by an employee or agent of the Crown, as well as by an independent contractor commissioned by the Crown to create a work.
Moving to the "publication" branch, Justice Abella concluded that mere publication by the Crown was not enough to trigger Crown copyright. Instead, the type of publication which triggers Crown copyright must be one that occurs with a sufficient degree of government "direction and control." The majority reasons do not specify precisely what degree of direction and control is required, apart from noting that the control exercised by Ontario over the publication of land surveys was "complete." Instead, the majority provided "indicia" of control, like whether a statute strictly regulates the form and content of the work, whether the statute transferred "property rights" in the works to the Crown, whether the statute gives exclusive control to the government to modify the work, or whether the Crown took physical possession of the work, etc.
After looking at the extensive web of legislation that surrounds land surveys in Ontario, the majority concluded that the Crown directed and controlled every aspect of the publication of the registered or deposited plans of survey. Consequently, when it published plans of survey, copyright was vested in the Crown by operation of Section 12 of the Act.
The minority of three judges agreed on the outcome, but disagreed on the applicable test. They criticized the majority's approach as ignoring the text of Section 12, which does not require government "direction or control" with respect to "publication", and pointed out that the majority could not explain precisely what threshold of "direction and control" was sufficient to trigger Crown ownership of copyright, short of "complete" control present here. However, the minority also recognized that Crown copyright should not be allowed to expropriate the copyright of others, so they proposed limiting its application to "government works," which they define as a work that serves a public purpose, and which requires that copyright be vested in the Crown to further that purpose.
Implications for Copyright Owners and Copyright Users
Keatley Surveying is the first Canadian case to provide a detailed analysis and application of Crown copyright. While it brings some clarity to this area of the law, it also introduces substantial uncertainty. Notably, the majority reasons leave unexplored the following key questions:
- Precisely what degree of "direction and control" is required for statutory Crown copyright under Section 12 to apply?
- What other "indicia" are relevant to the determination of Crown copyright, beyond the highly specific indicia used here for Ontario's land registry?
- How should Crown copyright apply when the government exercises different levels of control over a multi-component work? Take a patent application or trademark application, both of which may consist of text and images; if the Crown exercises differing levels of control over the text and the images, does the Crown acquire partial Crown copyright?
- The majority acknowledged the continued existence of prerogative Crown copyright, but said little about it, apart from the fact that it is perpetual. As a result, we cannot answer basic questions like what is the scope of prerogative Crown copyright, and what conditions are required for its application? Does it too require "direction and control" or is there some other test? What limitations or exceptions apply to prerogative Crown copyright?
This uncertainty leads to different practical takeaways for copyright owners and copyright users.
- Takeaways for copyright owners: Copyright owners who submit copyrighted works (including copyrighted compilations of data) to the government must be vigilant. If those works are to be later published or made available to the public, and the indicia of government direction and control are present, there is a difficult-to-quantify risk that Crown copyright will be triggered, and copyright in the work will be effectively expropriated. To manage this risk, copyright owners should rely wherever possible on the contractual override provision of Section 12, which allows the copyright owner and the Crown to agree that Crown copyright will not apply to a given work.
- Takeaways for copyright users: The uncertainties associated with Crown copyright create difficulties for users. When dealing with documents made available by the government or its private-sector partners, users cannot be certain who owns copyright in these documents: the Crown or the person/organization who created them. This in turn complicates licensing, assignments, and any fair dealing analysis. Unlike copyright owners, copyright users have not obvious mechanism to manage these uncertainties. Depending on the circumstances, they may need to deal with two potential owners.
 Keatley Surveying v Teranet, 2019 SCC 43 [Keatley Surveying].
 Michael Shortt and Jean-Philippe Mikus represented two interveners in the Keatley Surveying case: the McGill Centre for Intellectual Property Policy (CIPP) and University of Toronto Professor Ariel Katz. The CIPP and Professor Katz made submissions on the applicability of Crown copyright to statutes, judicial decisions, and other public legal documents.
 Uniquely though, Ontario has both a land registry system and a land titles system (Land Titles Act, RSO 1990, c L5; Registry Act, RSO 1990, c R.20). For copyright purposes, the differences between the two systems are irrelevant, so for ease of reference this bulletin mentions only the land registry.
 Keatley Surveying, supra note 1 at paras 9, 12.
 Ibid at paras 10, 13-16, 74-75.
 Copyright Act, RSC 1985, c C-42, s 12.
 For a summary of the lower court decisions, see Fasken's bulletin Ontario Court of Appeal Confirms Broad Scope of Crown Copyright.
 Keatley Surveying, supra note 1 at paras 53-54.
 Ibid at paras 48-52 (majority). See also para 129 (minority). Neither the majority or the minority spent much time on the prerogative issue, which had been largely ignored by the parties until it was raised in the submissions of the CIPP and Professor Katz.
 Ibid at para 63.
 Ibid at paras 64-66.
 Ibid at para 67. As the minority notes, this conclusion may be difficult to reconcile with the text of Section 12, which expressly refers to "publication" by the Crown, especially since "publication" is a defined term under the Act (Copyright Act, supra note 6, s 2.2(1)(a)(i)).
 Ibid at paras 69-70.
 Ibid at para 78.
 Ibid, at para 69.
 Ibid at para 79.
 Ibid at para 98.
 Ibid at para 99.
 It is an open question whether merely including a reservation of copyright on a document submitted to the government would be enough to trigger the override, or whether a traditional contractual agreement is required. Further complicating matters is a drafting error in Section 12, which refers to "the author" rather than "the copyright owner" as the person who must agree with the Crown (Copyright Act, supra note 6, s 12).