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Posts Tagged ‘Keatley’

“the hill to die on”

In Case Reviews, Posts on November 3, 2019 at 8:05 pm

In March of this year, Howard Knopf informed readers of a pending Supreme Court hearing: that of a private company claiming copyright infringement at the hands of a public-service provider in Ontario. The works of contention were land surveys, which are essential documents in terms of establishing boundaries to parcels of land and the rights thereto.

Until the later twentieth century, surveyors would deposit land surveys with the provincial land registry. Individuals could request copies, conditional on payment of a fee. Monies collected remained with the province; surveyors received no further compensation. That system had not attracted any displeasure; however, after the registry was digitized in the 1980s and its services outsourced to a private corporation (Teranet), which had the responsibility for scanning/uploading the surveys into a digital repository and providing copies to the public. Again, receiving a copy required payment of a statutorily prescribed fee. (Generally speaking, Teranet’s operations are shaped by agreements with the province.) Yet surveyors filed a class action lawsuit (led by Keatley Surveying Ltd.) claiming copyright infringement. They lost in the lower courts, but were given leave to appeal to the Supreme Court.

Knopf wrote: “Teranet, which is resisting the payment of additional fees to surveyors beyond that which they were paid originally for doing the survey – has never disputed the notion that copyright subsists in land surveys. Indeed, the two actual parties (Keatley and Teranet) agreed for purposes of this litigation that copyright so subsists, although this crucial issue is far from clear and certainly not obvious.”

In late September, the Supreme Court of Canada issued its decision in Keatley Surveying Ltd. v. Teranet Inc. bringing to an end the surveyors’ twelve-year odyssey to hold Teranet liable for copyright infringement. With unanimity the Supreme Court Justices declared that the land surveys had passed into the realm of Crown copyright, and thus by virtue of the arrangements made between Teranet and the Province of Ontario, no infringement by Teranet had occurred.

Crown copyright is defined in Section 12 of the Copyright Act as:

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 … (emphasis mine).

But despite the unanimous outcome, opinion was divided among the seven justices. The majority opinion held by four justices, led by Justice Abella, focused on the degree to which the Crown provided direction or imposed control in the preparation or publication of the work. Whereas the minority contingent, comprising three justices, including Chief Justice Wagner, gave weight to the nature of the work produced, that it should serve a public purpose (as one would expect of a government work).

From the Majority: “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 (para. 69).”

From the Minority: “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’. This entails examining the character and purpose of the work. The work will be a ‘government work’ where the work serves a public purpose and Crown copyright furthers the fulfillment of that purposes. These will be works in which the government has an important interest concerning their accuracy, integrity, and dissemination (para 127).”

This marked the first occasion where the matter of Crown copyright was discussed by the Supreme Court. The Justices were quite direct in suggesting that Parliament revisit the principles and statutory language of the nearly 100-year-old provision. A sentiment also noted in the INDU Report of the Copyright Review (2018-2019), “Several witnesses criticized section 12 of the Act and called for its reform. In fact, no witness supported its continuation, at least in its current form—a rare point of consensus.”

Since the Keatley decision was announced, numerous commentaries have been published. A complete list has been compiled by Amanda Wakaruk; a selection thereof is:

Also, in a podcast that lived up to its billing, Carys Craig detailed the case, and the shortcomings of the outcome in Crown Copyright is NOT Boring. Provided by Stereo Decisis, hosted by Robert Danay and Hilary Young, Craig shares Knopf’s concerns, that it is far from evident that land surveys are eligible for copyright protection.

In Craig’s words, “this is the hill to die on.” She emphasizes that copyright law does not protect ideas or information, and land surveys are an embodiment of information. To provide copyright in a land survey undermines a fundamental tenet of the system of copyright.

That the Court did not address this aspect is disappointing, but nonetheless is irresistible for comment.

If the question –are land surveys eligible for copyright protection– had been raised, presumably, the Court would have started from first principles.

In Canada, copyright ensues when one creates an original work (expression) of a literary, dramatic, artistic or musical nature. While “artistic works” are defined as including “paintings, drawings, maps, charts, plans…,” not all such items are protected. The pivotal requirement is that the creation be “original.”

In 2004, in CCH, the Supreme Court famously declared that originality requires an exercise of skill and judgment that is more than trivial. Shortly thereafter, Teresa Scassa* reminded us that the Court’s words should not be read in isolation but along with the Court’s accompanying language about the importance of having a robust public domain. To do otherwise, runs the risk of extending protection to “original facts,” which Scassa defines as “facts that owe their existence to the exercise of intellectual effort.”

Looking back in more detail to the Court’s ruminations on originality in 2004:

For a work to be “original” within the meaning of the Copyright Act, it must be more than a mere copy of another work.  At the same time, it need not be creative, in the sense of being novel or unique. What is required to attract copyright protection in the expression of an idea is an exercise of skill and judgment. By skill, I mean the use of one’s knowledge, developed aptitude or practised ability in producing the work. By judgment, I mean the use of one’s capacity for discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. This exercise of skill and judgment will necessarily involve intellectual effort. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise (para 16).

At that time, the Court was addressing a personal question: did copyright exist in the writings of a judicial decision itself? In answering the question, the Court sought a workable standard, one that fell between the endpoint possibilities of the “sweat of the brow” (on which industriousness is the principle concern) and “creativity.”  Interestingly though, the Court did not give equal attention to defining what creativity is, but, as shown above, was content to focus on what creativity is not—that it need not be “novel or unique.”

However, in the situation at hand, one must ask: what if the intellectual effort is one where novelty should be actively discouraged?

Arguably, a land survey should not be an invitation to novelty—its sole purpose is to establish facts. A land survey is created by data and mathematical/scientific operations. If two independent surveys were commissioned for the same purpose, one would expect that the outcomes would be at least similar, if not identical. And while similarity in two independent, creative works does not deny two separate claims of copyright,** it does not follow that two similar displays of independent skill and judgement must each be granted copyright.

It is at least an article of faith that facts are not protected by copyright. The rationale being, as Scassa writes, “either because they are not considered to be the product of someone’s authorial effort, or because some efforts are made for the common good and not for reward through copyright monopolies.” She provides a compelling rationale regarding the importance in distinguishing between the skill and judgment that gives rise to facts and that which gives rise to a copyright-protected work.

It may be that the difference between these two categories rests on a more precise definition of “creativity,” which I suspect no court will welcome having to define.

But it would have been satisfying to see our highest court give it a try.

* Teresa Scassa, “Original Facts: Skill, Judgement and the Public Domain” (2006) 51 McGill L.J. 253.  For more, “Copyright Reform and Fact-Based Works”, in M. Geist, ed. From “Radical Extremism” to “Balanced Copyright”: Canadian Copyright and the Digital Agenda, (Irwin Law, 2010), 571-597.

** While Sheldon et al. v. Metro-Goldwyn Pictures Corp. et al (1936) is a case from American jurisprudence, Judge Learned Hand’s ruminations on independent but identical creation of an Ode to a Grecian Urn comes to mind.