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March 26, 2014

Keatley Surveying Ltd. v. Teranet Inc., 2014 ONSC 1677

Case Summary

The plaintiff appealed the dismissal of its motion to certify a class action against the defendant, which manages Ontario's electronic land registry system. The proposed class action alleged that the defendant's database constituted copyright infringement of plans of survey. On appeal, the plaintiff recast its case by revising the class definition and common issues. The Divisional Court allowed the appeal, finding that the plaintiff could recast its case absent non-compensable prejudice to the defendant. The court held that the motion judge erred in requiring evidence that two or more persons were desirous of pursuing the claim to satisfy the identifiable class criterion. The revised class definition and common issues met the certification criteria under the Class Proceedings Act, 1992.

On this page (2 sections)

Keatley Surveying Ltd. v. Teranet Inc.

Ontario Reports

Ontario Superior Court of Justice,

Divisional Court,

Himel, Sachs and Hennessy JJ.

March 26, 2014

119 O.R. (3d) 497 | 2014 ONSC 1677

Case Summary

Civil procedure — Class proceedings — Certification — Plaintiff bringing proposed class action on behalf of Ontario land surveyors who registered or deposited their plans of survey in provincial land registry offices — Proposed class action alleging that defendant's creation, maintenance and operation of its database constituted copyright infringement in plans of survey — Motion judge dismissing certification motion — Plaintiff permitted to recast its case on appeal in absence of non-compensable prejudice to defendant — Appeal allowed and class proceeding certified — Motion judge erring in requiring plaintiff to show that there were two or more persons who wished to pursue claim for copyright infringement.

The defendant managed Ontario's electronic land registry system. The plaintiff brought a proposed class action on its own behalf and on behalf of all land surveyors in Ontario who had registered or deposited their plans of survey in provincial land registry offices. The proposed class action alleged that the defendant's creation, maintenance and operation of its database constituted copyright infringement in the plans of survey. The plaintiff's motion to certify the action as a class proceeding was dismissed. The motion judge found that there was no identifiable class of two or more persons; the proposed common issues would not significantly advance the litigation; a class proceeding was not the preferable procedure; and the representative plaintiff did not adequately represent the interests of the class. The plaintiff appealed. On appeal, it put forward a revised class definition and a revised list of common issues, and eliminated the [page498] request for relief that the motion judge found created a conflict between it and the other potential members of the class.

Held, the appeal should be allowed.

In the absence of any non-compensable prejudice to the defendant, the plaintiff should be permitted to recast its case on appeal.

The criteria for certification were now met. In considering the issue of whether there was an identifiable class, the motion judge erred in requiring the plaintiff to show that there were two or more persons who were desirous of pursuing a claim against the defendant for copyright infringement. Section 5(1)(b) of the Class Proceedings Act, 1992, S.O. 1992, c. 6 simply requires that there be an identifiable class of two or more persons that would be represented by the representative plaintiff or the defendant. The "desirous" component of the identifiable class criterion is not mentioned in the legislation, not required to achieve the purpose of the criterion and not mentioned in the Supreme Court of Canada jurisprudence that discusses the issue. By virtue of the recast common issues, the plaintiff had identified four fundamental questions that could determine or significantly advance the litigation. The motion judge erred in principle when she found that a class action would not advance the goals of access to justice because no one other than the plaintiff had indicated that it wished to pursue the litigation. Given the revised list of common issues, the action met the preferability criterion. The motion judge did not err in finding that as long as the plaintiff was pursuing a claim for an injunction that would shut the defendant down, it was not in a position to adequately represent the class. However, the plaintiff had abandoned its request that that common issue be certified and had agreed that any decision to certify the proceeding would be conditional on its statement of claim being amended to remove the claim for an injunction.

Arenson v. Toronto (City), [2013] O.J. No. 4204, 2013 ONSC 5837, 40 C.P.C. (7th) 215 (Div. Ct.), affg [2012] O.J. No. 4390, 2012 ONSC 3944, 2012 CLB 21568, 35 C.P.C. (7th) 207, 1 M.P.L.R. (5th) 57 (S.C.J.); Brown v. Canada (Attorney General) (2013), 114 O.R. (3d) 355, [2013] O.J. No. 174, 2013 ONCA 18, [2013] 2 C.N.L.R. 15, 300 O.A.C. 290, 31 C.P.C. (7th) 156, 98 C.C.L.T. (3d) 1; Brown v. Canadian Imperial Bank of Commerce, [2013] O.J. No. 1837, 2013 ONSC 1284, 307 O.A.C. 90, 34 C.P.C. (7th) 270, [2013] CLLC Â210-031, 227 A.C.W.S. (3d) 331 (Div. Ct.); Caputo v. Imperial Tobacco Ltd., 2004 24753 (ON SC), [2004] O.J. No. 299, 236 D.L.R. (4th) 348, [2004] O.T.C. 112, 42 B.L.R. (3d) 276, 22 C.C.L.T. (3d) 261, 44 C.P.C. (5th) 350, 128 A.C.W.S. (3d) 874 (S.C.J.); Halvorson v. British Columbia (Medical Services Commission), [2010] B.C.J. No. 1008, 2010 BCCA 267, 288 B.C.A.C. 167, 4 B.C.L.R. (5th) 292, 86 C.P.C. (6th) 206; Hollick v. Toronto (City), [2001] 3 S.C.R. 158, [2001] S.C.J. No. 67, 2001 SCC 68, 205 D.L.R. (4th) 19, 277 N.R. 51, J.E. 2001-1971, 153 O.A.C. 279, 42 C.E.L.R. (N.S.) 26, 13 C.P.C. (5th) 1, 24 M.P.L.R. (3d) 9, REJB 2001-26157, 108 A.C.W.S. (3d) 774; Lau v. Bayview Landmark Inc., [1999] O.J. No. 4060, 40 C.P.C. (4th) 301, [1999] O.T.C. 220, 92 A.C.W.S. (3d) 196 (S.C.J.); Markson v. MBNA Canada Bank (2007), 85 O.R. (3d) 321, [2007] O.J. No. 1684, 2007 ONCA 334, 282 D.L.R. (4th) 385, 224 O.A.C. 71, 32 B.L.R. (4th) 273, 43 C.P.C. (6th) 10, 157 A.C.W.S. (3d) 29 [Leave to appeal to S.C.C. refused [2007] S.C.C.A. No. 346]; McCracken v. Canadian National Railway Co. (2012), 111 O.R. (3d) 745, [2012] O.J. No. 2884, 2012 ONCA 445, 293 O.A.C. 274, 100 C.C.E.L. (3d) 27, 21 C.P.C. (7th) 57, [2012] CLLC Â210-041; Pearson v. Inco Ltd. (2005), 2006 913 (ON CA), 78 O.R. (3d) 641, [2005] O.J. No. 4918, 261 D.L.R. (4th) 629, 205 O.A.C. 30, 20 C.E.L.R. (3d) 258, 18 C.P.C. (6th) 77, 43 R.P.R. (4th) 43, 143 A.C.W.S. (3d) 973 (C.A.); [page499] Sun-Rype Products Ltd. v. Archer Daniels Midland Co., [2013] 3 S.C.R. 545, [2013] S.C.J. No. 58, 2013 SCC 58, 2013EXP-3510, J.E. 2013-1904, EYB 2013-225581, 450 N.R. 287, 345 B.C.A.C. 87, 51 B.C.L.R. (5th) 1, 364 D.L.R. (4th) 626, [2014] 1 W.W.R. 477, 235 A.C.W.S. (3d) 323; Taub v. Manufacturers Life Insurance Co. (1998), 1998 14853 (ON SC), 40 O.R. (3d) 379, [1998] O.J. No. 2694, 84 A.C.W.S. (3d) 640 (Gen. Div.), consd

Other cases referred to

1176560 Ontario Ltd. v. Great Atlantic & Pacific Co. of Canada Ltd. (2004), 2004 16620 (ON SCDC), 70 O.R. (3d) 182, [2004] O.J. No. 865, 184 O.A.C. 298, 50 C.P.C. (5th) 25, 129 A.C.W.S. (3d) 455 (Div. Ct.), affg (2002), 2002 6199 (ON SC), 62 O.R. (3d) 535, [2002] O.J. No. 4781, [2002] O.T.C. 963, 28 C.P.C. (5th) 135, 118 A.C.W.S. (3d) 530 (S.C.J.) [Leave to appeal to C.A. refused (2004), 50 C.P.C. (5th) 34 (C.A.)]; AIC Ltd. v. Fischer, [2013] 3 S.C.R. 949, [2013] S.C.J. No. 69, 2013 SCC 69, 452 N.R. 80, 312 O.A.C. 128, 2013EXP-3985, J.E. 2013-2175, EYB 2013-230429, 366 D.L.R. (4th) 1, 45 C.P.C. (7th) 227; Bellaire v. Independent Order of Foresters, 2004 95288 (ON SC), [2004] O.J. No. 2242, 19 C.C.L.I. (4th) 35, 5 C.P.C. (6th) 68 (S.C.J.); Black v. Owen, [2012] O.J. No. 516, 2012 ONSC 400, 291 O.A.C. 8 (Div. Ct.); Bywater v. Toronto Transit Commission, [1998] O.J. No. 4913, 83 O.T.C. 1, 27 C.P.C. (4th) 172, 84 A.C.W.S. (3d) 230 (Gen. Div.); Cannon v. Funds for Canada Foundation, [2012] O.J. No. 168, 2012 ONSC 399, 13 C.P.C. (7th) 250, [2012] 3 C.T.C. 132 (S.C.J.); Chartrand v. General Motors Corp., [2008] B.C.J. No. 2520, 2008 BCSC 1781, 84 M.V.R. (5th) 57, 75 C.P.C. (6th) 221, 173 A.C.W.S. (3d) 694; Cloud v. Canada (Attorney General) (2004), 2004 45444 (ON CA), 73 O.R. (3d) 401, [2004] O.J. No. 4924, 247 D.L.R. (4th) 667, 192 O.A.C. 239, 27 C.C.L.T. (3d) 50, [2005] 1 C.N.L.R. 8, 2 C.P.C. (6th) 199, 135 A.C.W.S. (3d) 567 (C.A.) [Leave to appeal to S.C.C. refused [2005] S.C.C.A. No. 50]; Crisante v. DePuy Orthopaedics Inc., [2013] O.J. No. 3881, 2013 ONSC 5186 (S.C.J.); Ducharme v. Solarium de Paris Inc., [2008] O.J. No. 1558 (Div. Ct.), affg 2007 14346 (ON SC), [2007] O.J. No. 1659, 48 C.P.C. (6th) 194 (S.C.J.); Fischer v. IG Investment Management Ltd., [2013] 3 S.C.R. 949, [2013] S.C.J. No. 69, 2013 SCC 69, 452 N.R. 80, 312 O.A.C. 128, 2013EXP-3985, J.E. 2013-2175, EYB 2013-230429, 366 D.L.R. (4th) 1, 45 C.P.C. (7th) 227, affg (2012), 109 O.R. (3d) 498, [2012] O.J. No. 343, 2012 ONCA 47, 287 O.A.C. 148, 15 C.P.C. (7th) 81, 346 D.L.R. (4th) 598, 211 A.C.W.S. (3d) 785; Flora v. Ontario (Health Insurance Plan, General Manager), 2005 47693 (ON SCDC), [2005] O.J. No. 5482, 207 O.A.C. 330, 144 A.C.W.S. (3d) 593, 146 A.C.W.S. (3d) 400 (Div. Ct.); Fulawka v. Bank of Nova Scotia (2012), 111 O.R. (3d) 346, [2012] O.J. No. 2885, 2012 ONCA 443, 293 O.A.C. 204, 100 C.C.E.L. (3d) 119, [2012] CLLC Â210-039, 21 C.P.C. (7th) 1, 352 D.L.R. (4th) 1, 216 A.C.W.S. (3d) 291; Keatley Surveying Ltd. v. Teranet Inc., [2012] O.J. No. 5984, 2012 ONSC 7120, 31 C.P.C. (7th) 14, 107 C.P.R. (4th) 237, 224 A.C.W.S. (3d) 268 (S.C.J.); Knight v. Imperial Tobacco Canada Ltd., [2006] B.C.J. No. 1056, 2006 BCCA 235, 267 D.L.R. (4th) 579, [2006] 9 W.W.R. 393, 225 B.C.A.C. 291, 54 B.C.L.R. (4th) 204, 150 A.C.W.S. (3d) 26; Kumar v. Mutual Life Assurance Co., 2003 48334 (ON CA), [2003] O.J. No. 1160, 226 D.L.R. (4th) 112, 170 O.A.C. 165, 47 C.C.L.I. (3d) 43, [2003] I.L.R. I-4181, 121 A.C.W.S. (3d) 1001 (C.A.); Lambert v. Guidant Corp., 2009 23379 (ON SC), [2009] O.J. No. 1910, 72 C.P.C. (6th) 120 (S.C.J.); Magill v. Expedia Inc., [2013] O.J. No. 463, 2013 ONSC 683, 36 C.P.C. (7th) 74 (S.C.J.); Matoni v. C.B.S. Interactive Multimedia Inc. (c.o.b. Canadian Business College), [2008] O.J. No. 197, 2008 1539, 163 A.C.W.S. (3d) 701 (S.C.J.); Olar v. Laurentian University, [2004] O.J. No. 3716, 6 C.P.C. (6th) 276 (Div. Ct.); Poulin v. Ford Motor Co. of Canada, 2008 54299 (ON SCDC), [2008] O.J. No. 4153, 301 D.L.R. (4th) 610, 242 O.A.C. 209, 65 C.P.C. (6th) 247, 170 A.C.W.S. (3d) 463 (Div. Ct.); Pro-Sys Consultants Ltd. v. Microsoft Corp., [2013] 3 S.C.R. 477, [2013] S.C.J. No. 57, 2013 SCC 57, 2013EXP-3511, J.E. 2013-1905, EYB 2013-228580, 450 N.R. 201, 345 B.C.A.C. 1, 50 B.C.L.R. (5th) 219, 45 C.P.C. (7th) 1, 364 D.L.R. (4th) 573, [2014] 1 W.W.R. 421; Quinte v. Eastwood Mall Inc., [2014] O.J. No. 709, 2014 ONSC 249 (S.C.J.); [page500] Ragoonanan Estate v. Imperial Tobacco Canada Ltd., 2008 19242 (ON SCDC), [2008] O.J. No. 1644, 54 C.P.C. (6th) 167, 236 O.A.C. 199, 165 A.C.W.S. (3d) 983 (Div. Ct.), affg (2005), 2005 40373 (ON SC), 78 O.R. (3d) 98, [2005] O.J. No. 4697, [2005] O.T.C. 950, 20 C.P.C. (6th) 262, 143 A.C.W.S. (3d) 633 (S.C.J.); Robertson v. The Gale Group Inc. (October 21, 2008), File No. 03-CV-252945CP (S.C.J.); Robertson v. Thomson Corp. (1999), 1999 14768 (ON SC), 43 O.R. (3d) 161, [1999] O.J. No. 280, 171 D.L.R. (4th) 171, 86 O.T.C. 226, 30 C.P.C. (4th) 182, 85 C.P.R. (3d) 1, 85 A.C.W.S. (3d) 1003 (Gen. Div.); Sauer v. Canada (Attorney General), [2008] O.J. No. 3419, 169 A.C.W.S. (3d) 27, 2008 43774 (S.C.J.); Scarborough Golf & Country Club v. Scarborough (City) (1988), 1988 4829 (ON CA), 66 O.R. (2d) 257, [1988] O.J. No. 1981, 54 D.L.R. (4th) 1, 31 O.A.C. 260, 41 M.P.L.R. 1, 1 R.P.R. (2d) 225, 13 A.C.W.S. (3d) 43 (C.A.); Singer v. Schering-Plough Canada Inc., [2010] O.J. No. 113, 2010 ONSC 42, 87 C.P.C. (6th) 276 (S.C.J.); Taylor v. Canada (Minister of Health), 2007 36645 (ON SC), [2007] O.J. No. 3312, 285 D.L.R. (4th) 296, 160 A.C.W.S. (3d) 385 (S.C.J.); Waldman v. Thomson Reuters Corp., [2012] O.J. No. 792, 2012 ONSC 1138, 99 C.P.R. (4th) 303, 22 C.P.C. (7th) 33, 214 A.C.W.S. (3d) 28 (S.C.J.); Western Canadian Shopping Centres Inc. v. Dutton, [2001] 2 S.C.R. 534, [2000] S.C.J. No. 63, 2001 SCC 46, 201 D.L.R. (4th) 385, 272 N.R. 135, [2002] 1 W.W.R. 1, J.E. 2001-1430, 94 Alta. L.R. (3d) 1, 286 A.R. 201, 8 C.P.C. (5th) 1, REJB 2001-25017, 106 A.C.W.S. (3d) 397; Zicherman v. Equitable Life Insurance Co. of Canada, 2000 50952 (ON SC), [2000] O.J. No. 5144, 47 C.C.L.I. (3d) 39 (S.C.J.)

Statutes referred to

Class Proceedings Act, 1992, S.O. 1992, c. 6 [as am.], ss. 5, (1), (a), (b), (c), (d), (e), 24(1)(b), (c)

Authorities referred to

Ontario Law Reform Commission, Report on Class Actions (Toronto: Ministry of the Attorney General, 1982)

APPEAL from a decision dismissing a certification motion.

Kirk Baert and Celeste Poltak, for appellant.

F. Paul Morrison, Julie Parla, Barry B. Sookman and Jameel Madhany, for respondent.

The judgment of the court was delivered by

SACHS J.: —

Introduction

[1] This is an appeal from the decision of Horkins J., dated December 14, 2012 [[2012] O.J. No. 5984, 2012 ONSC 7120 (S.C.J.)], denying a motion to certify a class proceeding under the Class Proceedings Act, 1992, S.O. 1992, c. 6 ("CPA").

[2] The respondent manages Ontario's electronic land registry system. When plans of survey are registered and deposited in the provincial land registry offices in Ontario, the respondent makes electronic copies of the plans and sells them for a fee.

[3] The appellant brings this action on its own behalf and on behalf of all land surveyors in Ontario who registered or deposited their plans of survey in provincial land registry offices. The [page501] proposed class action alleges that the respondent's creation, maintenance and operation of its database constitutes copyright infringement in the plans of survey under the Copyright Act, R.S.C. 1985, c. C-42 ("Copyright Act").

[4] In denying certification, the motion judge held that four of the five criteria required by s. 5(1) of the CPA were not met: there was no identifiable class of two or more persons; the proposed common issues would not significantly advance the litigation; a class proceeding was not the preferable procedure; and the representative plaintiff did not adequately represent the interests of the class nor did it put forward a workable litigation plan.

[5] On this appeal, the appellant has put forward a revised class definition, a revised list of common issues, and has eliminated the request for relief that the motion judge found created a conflict between it and the other potential members of the class. In short, as a result of the motion judge's findings, the appellant significantly revised its certification request.

[6] The respondent takes issue with this recasting of the appellant's case on appeal. For the reasons that follow, I find that, while the appellant's actions raise serious and legitimate concerns, access to justice considerations in this case militate in favour of granting the appellant the right to recast its case on appeal, particularly because the decisions required can be made on the basis of the record before the motion judge and the respondent has had an opportunity to consider and respond to the appellant's reformulated arguments. Any prejudice to the respondent can be compensated for in costs.

[7] On the case as presented to her, I agree with the motion judge's finding that certification was not appropriate. In particular, the class definition before her was merits-based, most of the proposed common issues as drafted were not appropriate for certification and the proposed representative plaintiff was seeking injunctive relief against the respondent, which put it in conflict with potential members of the proposed class, most of whom use the respondent's database to perform their role as surveyors.

[8] However, for the reasons that follow, I find that the appellant's revisions to its request for certification now make it appropriate for its case to proceed as a class proceeding. In doing so, I should not be taken as making any comment about the merits of the action.

[9] I am also of the view that the motion judge erred in her analysis of the identifiable class criterion when she required the appellant to put forward evidence that there were "'two or more persons' who wish to have their copyright infringement [page502] complaint determined in this class proceeding". Neither the plain language of the CPA nor the recent jurisprudence from the Supreme Court of Canada (which was released after the motion judge rendered her decision) make any mention of such a requirement.

[10] In her reasons, the motion judge gives a very thorough and helpful review of the factual background surrounding the action, which I will not repeat. This decision will refer to the facts only as they become necessary to understand the issues raised on this appeal.

Recasting a Certification Motion on Appeal

[11] On this appeal, the appellant seeks to recast its case by

(a) changing the class definition;

(b) amending the common issues;

(d) suggesting that the litigation plan be amended upon certification.

[12] The respondent alleges that this constitutes an abusive and prejudicial reformulation of the case on almost all of the certification criteria, such that it is responding to what amounts to a second certification motion.

[13] The respondent also points to the fact that motion judges who sit on certification motions are experienced in class actions (certainly the motion judge in this case falls into that category) and the court relies on their expertise. For this reason, the jurisprudence has made it clear that appellate courts owe their decisions considerable deference. Recasting a certification motion on appeal results in the appellate court being deprived of the certification judge's views as to the case as reformulated.

[14] In support of its argument, the respondent cites two recent Court of Appeal cases that comment on a motion judge's power to amend aspects of the claim at certification. In McCracken v. Canadian National Railway Co. (2012), 111 O.R. (3d) 745, [2012] O.J. No. 2884, 2012 ONCA 445, the motion judge rejected certain proposed common issues because they lacked commonality. He then created a revised set of common issues. Winkler C.J.O. rejected these revised issues, and wrote, at para. 144:

I also note that the motion judge fundamentally altered the plaintiff's proposed common issues. While this is a power that may be exercised by the [page503] motion judge, it should be exercised with caution and restraint and should be the exception rather than the norm.

[15] In Brown v. Canada (Attorney General) (2013), 114 O.R. (3d) 355, [2013] O.J. No. 174, 2013 ONCA 18, the motion judge found that the pleadings did not disclose a cause of action (and thus did not satisfy s. 5(1)(a) of the CPA). However, he certified the class action conditionally upon the plaintiffs amending their cause of action. He also adopted a class definition that was "perhaps much broader" than the definition suggested by the plaintiffs. In light of this active exercise of power by the motion judge, Rosenberg J.A. noted, at paras. 44-46:

I agree with the Divisional Court that the case management judge erred in conditionally certifying the class proceeding in the absence of a statement of claim that disclosed a cause of action. As this case demonstrates, identification of a cause of action is fundamental. It is impossible for the defendant to meaningfully respond to an application for certification without knowing the cause of action[.]

There is no question that class proceedings evolve as they work their way through the certification and case management process and that the case management judge plays an important role in guiding the evolution of the proceeding. But, certifying a class action in the absence of a statement of claim that discloses viable causes of action is not case management. Even the power to amend other aspects of the claim, such as the proposed common issues, should be exercised with caution and restraint: McCracken v. Canadian National Railway, 2012 ONCA 445, 111 O.R. (3d) 745 (Ont. C.A.), at para. 144. The courts have recognized that there is a distinction between the cause of action requirement for certification and the other criteria set out in s. 5(1)[.]

Once the case management judge concluded that the statement of claim did not disclose a cause of action, it was not open to him to conditionally certify the class proceeding[.]

(Emphasis added)

[16] Relying on these two cases, the respondent argues that "even in the absence of prejudice, the power to amend 'should be exercised with caution and restraint and should be the exception rather than the norm'". Both of these cases concern the power of a motion judge (rather than an appellate court) to amend. However, the respondent asserts that an appellate court's power to amend should be even more limited.

Case law

[17] There appear to be two lines of authority touching on the issue in question in the class action context. According to one line of cases, it is open to the plaintiff to recast a certification motion on appeal, absent prejudice to the defendant. Another line [page504] of authority, consisting primarily of the passages in McCracken and Brown v. Canada discussed above, seems to suggest that a judge should exercise restraint in amending aspects of the case and, at the very least, is not duty-bound to consider permutations of class definitions or common issues that are not put before her by counsel.

Cases allowing plaintiffs to recast their cases on appeal

[18] The most recent binding authority on this point is Markson v. MBNA Canada Bank (2007), 85 O.R. (3d) 321, [2007] O.J. No. 1684, 2007 ONCA 334, leave to appeal to S.C.C. refused [2007] S.C.C.A. No. 346. In that case, certification was denied because, in part, the claims did not raise common issues. At the Court of Appeal, and for the first time, the plaintiff suggested the problems with the class action could be remedied by the aggregate assessment of damages. While specifically noting that the motion judge was an experienced class proceedings judge (at para. 3), Rosenberg J.A. granted the appeal, allowing certification on the basis of this new argument. An aggregate damages question was certified as a new common issue (at para. 59). At para. 39, he noted:

Provided the defendant is not prejudiced, it is open to a plaintiff to recast its case to make it more suitable for certification: see Kumar v. Mutual Life Assurance Co. of Canada at paras. 30-34 and Rumley v. British Columbia at para. 30 . . . The defendant has not shown how it has been prejudiced by this change in the plaintiff's position.

(Citations omitted)

[19] This analysis was adopted by the B.C. Court of Appeal in Halvorson v. British Columbia (Medical Services Commission), [2010] B.C.J. No. 1008, 2010 BCCA 267, 4 B.C.L.R. (5th) 292. In addition to repeating the words of Rosenberg J.A., in Markson, K.J. Smith J.A. commented on the underlying rationale, at para. 23:

To hold plaintiffs strictly at the certification stage to their pleadings and arguments as they were initially formulated would in many cases defeat the objects of the Act -- judicial economy, access to justice, and behaviour modification . . . There must be procedural flexibility in order to facilitate realization of the statutory purposes and, contrary to the view that has been causing the case management judge such consternation, there is nothing wrong with plaintiffs reformulating their approach on appeal. As was stated in Markson v. MBNA Canada Bank . . . .

(Emphasis added)

[20] As the B.C. Court of Appeal went on to explain, the changes to the case were significant (involving a novel basis for liability), but there was no suggestion of prejudice. The court [page505] also noted that when a plaintiff recasts a claim, it may be necessary to amend the statement of claim. At para. 31, K.J. Smith J.A. stated:

This follows from the general principle that all necessary amendments should be made to enable the real issues between the parties to be determined in order to facilitate the "just, speedy, and inexpensive determination of every proceeding on the merits"[.]

(Emphasis added)

[21] In support of his conclusion in Markson, Rosenberg J.A. cited his decision in Kumar v. Mutual Life Assurance Co., 2003 48334 (ON CA), [2003] O.J. No. 1160, 226 D.L.R. (4th) 112 (C.A.). In that case, one of the issues on appeal was whether the Divisional Court erred in finding that the appeal must be approached solely on the basis of the issues as presented to the motion judge. While he ultimately held that the Divisional Court did consider the reformulation of the common issue, he wrote, at paras. 30-31:

If the reasons of the Divisional Court stand for the proposition that the motions judges should not modify the definition of the class or the common issues as presented by the plaintiff then, in my view, this was an error. I can see no reason in principle why the motions judge cannot modify the definition of the class or the common issues if the judge is of the view that such modification is required to accord with the Act. Further, in my view, it was open to the Divisional Court, in this case, to modify the definition of the class or the common issue. In Anderson v. Wilson, the Divisional Court amended both the class and the common issues as certified by the motions judge. On further appeal this court again varied both the class and the common issues. Similarly, in Hollick v. Metropolitan Toronto (Municipality), at para. 21, McLachlin C.J.C., speaking for the court, held that where the class proposed by the plaintiff could be defined more narrowly, "the court should either disallow certification or allow certification on condition that the definition of the class be amended"[.]

While I would not go so far as to suggest that there is a duty on the motions judge to modify the definitions, the class or the common issue, it is certainly open to the judge to do so[.]

(Citations omitted; emphasis added)

[22] I note that, in Kumar, two relevant Supreme Court class actions decisions were released in the interim between the certification decision and the appeal. This was one of the factors cited to show that there was no prejudice to the defendant.

[23] There are at least two additional cases in which appellate courts have considered reformulated common issues or class definitions. Brown v. Canadian Imperial Bank of Commerce, [2013] O.J. No. 1837, 2013 ONSC 1284, 307 O.A.C. 90 (Div. Ct.) was an appeal of a denial of certification by Strathy J. The Divisional Court considered, without any concern, the plaintiffs' narrowed class definition (see paras. 2, 32). The plaintiffs proposed a new [page506] class definition to accommodate concerns of the motion judge and concerns raised in another case by the Court of Appeal (see para. 15). The Divisional Court was not satisfied that the changes addressed the concerns and denied the appeal.

[24] In Pearson v. Inco Ltd. (2005), 2006 913 (ON CA), 78 O.R. (3d) 641, [2005] O.J. No. 4918 (C.A.), at para. 55, Rosenberg J.A. found the Divisional Court erred in not considering a narrowed claim, writing the following:

At the appeal before the Divisional Court, the appellant had narrowed his claim. The Divisional Court, however, did not take this change into account in their reasons. Rather, they adopted the position of the Crown, which was still a party before the Divisional Court, that "grounding of a class definition upon a MOE guideline number for background levels of nickel is itself irrational and arbitrary" (at para. 31). As reconfigured, the claim does not depend on nickel concentrations on the property of the proposed class members, but whether their property values decreased because of the 2000 MOE announcement. In view of this error, it is open to this court to determine whether the identifiable class requirement has been met.

(Emphasis added)

Cases where modification of a class definition or common issue was not permitted

[25] There are a number of cases concerning the extent to which a motion judge may, or is required to, modify a class definition or common issue at her own behest. I have already discussed McCracken and Brown v. Canada above. The relevant holding in these cases is, as Winkler C.J.O. put it in McCracken, at para. 125:

[W]hile the motion judge on certification may amend or revise common issues, it is the plaintiff who bears the responsibility at first instance for proposing the common issues and for adducing evidence demonstrating that those issues exist. The plaintiff must not abdicate this responsibility in the hope that the motion judge will formulate certifiable issues.

[26] In that discussion, Winkler C.J.O. referenced his earlier decision in Caputo v. Imperial Tobacco Ltd., 2004 24753 (ON SC), [2004] O.J. No. 299, 236 D.L.R. (4th) 348 (S.C.J.). At para. 41 of Caputo, Winkler J. (as he then was) set out the reason for placing the duty to formulate the class definition and common issues with counsel, rather than with the motion judge:

What the plaintiffs suggest is akin to having the court perform the role of class counsel by making wholesale changes to arrive at a definition that the court itself would accept. That goes beyond a simple exercise of discretion and verges into the prohibited territory of descending "into the arena" with the parties to the motion.

See, also, Kumar, at para. 32; Olar v. Laurentian University, [2004] O.J. No. 3716, 6 C.P.C. (6th) 276 (Div. Ct.), at paras. 18-21; [page507] Ragoonanan Estate v. Imperial Tobacco Canada Ltd. (2005), 2005 40373 (ON SC), 78 O.R. (3d) 98, [2005] O.J. No. 4697 (S.C.J.), at para. 47, leave to appeal refused 2008 19242 (ON SCDC), [2008] O.J. No. 1644, 54 C.P.C. (6th) 167 (Div. Ct.); Bellaire v. Independent Order of Foresters, 2004 95288 (ON SC), [2004] O.J. No. 2242, 5 C.P.C. (6th) 68 (S.C.J.), at para. 26.

[27] In Arenson v. Toronto (City), [2013] O.J. No. 4204, 2013 ONSC 5837 (Div. Ct.), the Divisional Court dismissed the appeal of a certification decision on the basis that the appellant sought to put before them a revised class definition and restated common issues. They did so in reliance on a quotation from Brown, at para. 45, cited in this decision at para. 15, that talks about the caution a motion judge should exercise in amending the proposed common issues. While Arenson stands as authority for the argument advanced by the respondent, it does not appear that the relevant Court of Appeal decisions were put before the Divisional Court and it is worth noting that, as the motion judge found, Arenson was a case that was "manifestly not suitable for certification as a class proceeding": Arenson v. Toronto (City), [2012] O.J. No. 4390, 2012 ONSC 3944 (S.C.J.), at para. 4.

Analysis

[28] As outlined above, the Court of Appeal has consistently held that "[p]rovided the defendant is not prejudiced, it is open to a plaintiff to recast its case to make it more suitable for certification": Markson, at para. 39.

[29] The respondent seeks to minimize the reach of that holding by relying upon the line of cases limiting a motion judge's power to amend common issues or class definitions. However, different concerns may apply when the motion judge is doing the amending, rather than when the plaintiff seeks to revise its case on appeal.

[30] In McCracken, the motion judge rejected the plaintiffs' proposed common issues and then "drew up a set of revised issues for certification" (at para. 130). In Brown v. Canada, the motion judge adopted a broader class definition than was proposed by the plaintiffs and conditionally certified the class action even though he had not identified a cause of action. This made it "impossible for the defendant to meaningfully respond to an application for certification" because the defendant did not know the cause of action (at para. 44).

[31] These issues do not arise here. Unlike in Brown v. Canada, the respondent has had an opportunity to respond to the new proposals. The concern that a judge may simply adopt a proposal that the parties have not had an opportunity to address does not exist. Nor does Winkler C.J.O.'s concern in Caputo, that the [page508] judge will descend "into the arena" with the parties, arise because here we are considering a proposal raised by one of the parties.

[32] Courts are typically reluctant to hear issues de novo on appeal, such as an argument on appeal for liability under a new statute not raised at trial (Scarborough Golf & Country Club v. Scarborough (City) (1988), 1988 4829 (ON CA), 66 O.R. (2d) 257, [1988] O.J. No. 1981 (C.A.), at para. 27). Two major reasons are (i) the lack of a sufficient record upon which to make the findings of fact necessary to rule on the new issue; and (ii) prejudice to the other side caused by lack of opportunity to respond and adduce evidence at the first hearing: Flora v. Ontario (Health Insurance Plan, General Manager), 2005 47693 (ON SCDC), [2005] O.J. No. 5482, 207 O.A.C. 330 (Div. Ct.), at para. 26. See, also, Black v. Owen, [2012] O.J. No. 516, 2012 ONSC 400, 291 O.A.C. 8 (Div. Ct.). Hearing an argument from scratch also deprives appellate judges of the benefit of a lower court's determination of the issue. This is exacerbated where the lower court has a particular expertise in adjudicating a matter, as do class proceedings motion judges.

[33] In the present case, there is no prejudice from a lack of opportunity to respond (as there may be where a motion judge makes modifications on her own initiative). The defendants have never sought an adjournment for the purpose of responding. Nor have they pointed to any prejudice arising from a lack of evidence in the record to properly address the amended issues.

[34] The defendants are entitled to argue, as they do, that they have been prejudiced by having to respond to changing arguments. But, this is exactly the sort of prejudice that can be addressed through costs.

[35] In my view, there are two factors that set appeals of certification motions apart from other matters. One factor is the unique nature of a class action. As a procedural vehicle designed to promote judicial economy, access to justice and behaviour modification, the class action demands a more flexible approach in which plaintiffs are not held strictly to their arguments as initially formulated: Halvorson, at para. 23. A strict approach could result in an action that is otherwise amenable to certification failing on appeal simply because it was not argued in an ideal manner at first instance. This could lead to multiple claims (thousands, in some cases) proceeding individually in a manner antithetical to judicial economy. Or, perhaps worse, access to justice and behaviour modification might be forgone entirely if class members are unable to bring claims that were not certified, because they are too expensive to bring individually. This should [page509] be avoided where class counsel have a suggestion on appeal that brings their claim within the requirements of s. 5 of the CPA.

[36] The second factor setting class actions apart is that changes to proposed common issues or class definitions are not as substantial as they seem. These modifications are not equivalent to those in Scarborough (argument on the basis of a new statute not raised at trial). Nor are they equivalent to a party adding a new cause of action, or raising a completely new issue. The extent of the change becomes clear in light of the text of s. 5(1) of the CPA:

5(1) The court shall certify a class proceeding on a motion under section 2, 3 or 4 if,

(a) the pleadings or the notice of application discloses a cause of action;

(b) there is an identifiable class of two or more persons that would be represented by the representative plaintiff or defendant;

(d) a class proceeding would be the preferable procedure for the resolution of the common issues; and

(e) there is a representative plaintiff or defendant who,

(i) would fairly and adequately represent the interests of the class,

(ii) has produced a plan for the proceeding that sets out a workable method of advancing the proceeding on behalf of the class and of notifying class members of the proceeding, and

(iii) does not have, on the common issues for the class, an interest in conflict with the interests of other class members.

[37] It is noteworthy that, while s. 5(1)(a) focuses on whether the pleadings disclose a cause of action, elements (b) through (e) focus on the existence of various factors. They do not ask whether, for example, the pleadings or counsel at the certification hearing propose a suitable identifiable class. Requirements (b) through (e) either exist or do not, given the circumstances surrounding the litigation. The same commonality exists at the certification motion and on appeal. What changes is the way in which it is brought to the attention of the judge by counsel. As Winker C.J.O. noted, in McCracken, at para. 132:

Where the motion judge fell into error was in attempting to recast common issues that were, in his view, amenable to certification. Despite his efforts to reformulate the common issues, the evidentiary shortcomings remained. A core of commonality either exists on the record or it does not. In other words, commonality is not manufactured through the statement of common issues. The common issues are derived from the facts and from the issues of law [page510] arising from the causes of action asserted by class members and not the other way around.

(Emphasis added)

[38] The question then arises as to whether we, as an appellate court, should make a determination on certification in this case based on the modifications, or whether we should send the matter back to the certification judge for a new hearing. While the class action motion judge certainly has specialized expertise, in my opinion, access to justice and judicial economy militate in favour of us making a determination. The notice of motion for certification in this case is dated March 2011. Almost three years have elapsed, and this is the first appeal of the certification decision. If it is sent back to the motion judge, it is likely to be appealed again, as almost all certification decisions at first instance are appealed. Once all certification appeals are exhausted, there are still two additional phases of proceedings remaining: the common issues trial and the damages phase/individual assessments. Remitting the matter to the motion judge will essentially restart the process and could add years to the litigation. This, in turn, will hamper the goals of judicial economy and access to justice for which the class action vehicle is designed.

[39] Nothing in these reasons should be taken as endorsing the practice of recasting certification motions on appeal. This practice clearly undermines the way class action certification motions should proceed through the courts. Using appellate courts to hear matters de novo both deprives the courts of the expertise of the judges who have been assigned to hear these cases at first instance and requires three judges to determine issues that could and should have been heard by one judge.

The Cause of Action in this Case

[40] The motion judge accepted that, subject to one amendment that is not in dispute on this appeal, the first criterion set out at s. 5(1)(a) of the CPA was satisfied -- namely, the pleadings did disclose a cause of action.

[41] I propose to give a brief summary of some of the main issues raised in the pleadings to provide context for the discussion that follows with respect to the other certification criteria.

[42] As indicated, the appellant's cause of action is for breach of copyright. As the motion judge noted, at para. 93, "[t]he parties agree that plans of survey are 'artistic works' that acquire copyright protection under the Copyright Act".

[43] The respondent pleads a number of defences to the appellant's claim. Those defences include the following: [page511]

(a) Copyright to the plans of survey vests in the Crown by virtue of s. 12 of the Copyright Act, which states: "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 . . . ." According to the respondent, the plans of survey at issue were prepared under the direction and control of the Crown and, therefore, any copyright in the work belongs to the Crown.

(b) When a surveyor submits a plan for registration, she must sign and certify that the plan is correct and in accordance with the Survey Act, Surveyors Act and the legislation under which it is submitted (the Registry Act or Land Titles Act). In addition, the person submitting the plan, or on whose behalf the plan is submitted, signs a written statement that she requires the plan to be submitted under the Registry Act or Land Titles Act. According to the respondent, these express signed statements are significant because both the Registry Act and the Land Titles Act mandate that copies of documents registered or deposited at land registration offices must be made available to the public. Further, the Land Registration Act authorizes the provision of electronic copies of plans of survey and the regulations under the Registry Act prohibits a surveyor from including "any notes, words or symbols that indicate that the right to make or distribute copies is in any way restricted". Thus, the respondent argues, when a surveyor signs the declaration that is required to register her plan of survey for deposit, by virtue of the statutory scheme governing that registration, she is deemed to have consented to the government copying her plan and providing it to the public, both in paper and in electronic form.

(c) As a result of many land surveyors' substantial and varied interactions with Teranet (the respondent) over a long period of time, the respondent pleads the defences of estoppel, waiver, acquiescence and laches. It also relies on the statutory limitation period set out at s. 41.1 of the Copyright Act.

Teranet is a service provider to the Ontario government. The government retains the property to the land registration documents. Teranet has a licence from the Ontario government that allows it to access these documents to facilitate the electronic registration services. The fees [page512] charged to the users of the electronic land registration services are prescribed by statute.

Many land surveyors lobbied for the creation of the electronic land registration system and were involved in its development. Those surveyors were paid for their services and those surveyors signed agreements that the work created was the property of Teranet (or its associated entities).

Land surveyors are one of the key professional groups that use Teranet's services. Land surveyors require plans of survey to conduct their business. Surveyors are subject to certain statutory requirements that obligate them, when conducting a survey, to "obtain copies of plans of survey prepared in relation to the land being surveyed and abutting properties" (motion judge's reasons, at para. 55). Before the creation of the electronic database, surveyors were required to attend at various land registry offices to obtain the surveys they needed to prepare their own surveys. The creation of the respondent's database means that this information is now available electronically.

Many surveying firms in Ontario have purchased a licence to use one of Teranet's service portals to obtain access to Teranet's services. Obtaining such a licence requires agreeing to certain terms and conditions, one of which is a proviso that the intellectual property in the products accessed through these portals is either owned by Teranet or licensed to Teranet.

(d) The respondent asserts that Teranet's services have a significant public benefit. "As such, Teranet has good cause or excuse to deal with the plaintiff's Works and Surveyor's Works as a matter of public interest such uses cannot infringe copyright, and it would be against public policy to permit surveyors to enforce their copyrights, if any." (statement of defence, para. 69(a)).

The Identifiable Class Criterion

[44] Section 5(1)(b) of the CPA requires that there be "an identifiable class of two or more persons that would be represented by the representative plaintiff or defendant".

[45] The motion judge found that the appellant had not met this criterion for two reasons: (1) its class definition was "merits-based" and "[t]he law is clear that a class definition must be defined without elements that require a determination of the merits of the claim" (motion judge's reasons, at para. 159; [page513] citations omitted); and (2) the appellant had failed to provide satisfactory evidence that there were two or more persons "interested" in joining the action.

The merits-based objection

[46] On appeal, the respondent essentially admitted that the class definition put before the motion judge was merits-based. That definition was the following:

All land surveyors in Ontario, whether acting as individuals, corporations, or partnerships, who are the owners of copyrights in drawings, maps, charts, and plans that have at any time appeared on the Defendant's electronic data- base without such copyright holder's written agreement or license.

[47] As the motion judge correctly found, to qualify as a class member, a surveyor would have to own the copyright to her plan of survey. Yet, by virtue of the defences asserted (including s. 12 of the Copyright Act), ownership could not be determined until some of the common issues were also determined. Such a class definition is not permissible.

[48] In its reply factum on the appeal, the appellant revised its class definition. That proposed definition was:

All land surveyors, whether acting as individuals, corporations, or partnerships in Ontario who on or before [date of certification] were the:

(a) author of a plan of survey; or

(b) employer of the land surveyor at the time the plan was made; or

whose plan of survey appeared at any time in the defendant's electronic database.

[49] I agree with the appellant that the revised class definition is no longer merits-based. The respondent submits that the phrase "whose plan of survey" implies that the class member actually owns the copyright. I disagree. To qualify as a class member, a person must either be the plan's author, the author's employer or the assignee of an author or employee. Further, the plan in question must have appeared in the respondent's electronic database and been prepared on or before the certification date.

Overbreadth

[50] The revised class definition includes a number of people who may not own the copyright to the plans in question, because (i) their claim is statute-barred; or (ii) some plan authors do not have copyright ownership if they were employed by someone else [page514] when they authored the plan or assigned their rights to that plan; and (iii) some employers of plan authors do not have copyright ownership if that copyright has been assigned. The respondent argues the revised class definition is overbroad.

[51] In support of their argument about the class being overbroad because it includes claims that may be statute-barred, the respondent relies on Knight v. Imperial Tobacco Canada Ltd., 2006 BCCA 235, [2006] O.J. No. 1056, 267 D.L.R. (4th) 579 (C.A.), at paras. 33-36. In those paragraphs, the court found that the proposed common issues regarding aggregate assessment of damages for the class were untenable if the class definition included potentially statute-barred claims. This was because damage assessments could not be made for the class until it was determined which class members' claims were statute-barred, and the class definition was not doing the work of making that exclusion. For that reason, and because a relevant date was provided, the class definition was amended to contain a temporal qualifier and the aggregate damages issues were certified.

[52] In the present case, I agree with the motion judge that the aggregate damages issues cannot be certified at this stage. Therefore, the reasoning in Knight is of limited assistance.

[53] A number of cases have held that a proposed class is not overbroad because it may include persons who ultimately will not have a case against the defendants. This principle was stated by Belobaba J. in a pair of recent decisions.

[54] In Crisante v. DePuy Orthopaedics Inc., [2013] O.J. No. 3881, 2013 ONSC 5186 (S.C.J.), at para. 37 (citations omitted), Belobaba J. noted:

The requirement that the class be objectively defined may sometimes result in a class that includes individuals who may ultimately not have a claim against the defendants. This is not fatal to certification[.]

[55] In Quinte v. Eastwood Mall Inc., [2014] O.J. No. 709, 2014 ONSC 249 (S.C.J.), at paras. 39-41, Belobaba J. wrote:

. . . adding the "statutorily-barred" exclusions to the class definition would inject a merit-based test for class membership which under the case law is impermissible.

It may be useful to recall what the Supreme Court said in Hollick about the class definition requirement:

The requirement is not an onerous one. The representative need not show that everyone in the class shares the same interest in the resolution of the asserted common issue. There must be some showing, however, that the class is not unnecessarily broad -- that is, that the class [page515] could not be defined more narrowly without arbitrarily excluding some people who share the same interest in the resolution of the common issue.

(Citations omitted)

[56] The Supreme Court's position in Hollick was recently affirmed in Sun-Rype Products Ltd. v. Archer Daniels Midland Co., [2013] 3 S.C.R. 545, [2013] S.C.J. No. 58, 2013 SCC 58, at para. 58, where Rothstein J. described a proper class definition as one that "uses objective criteria, it does not turn on the merits of the claim, and it cannot be narrowed without excluding members who may have a valid claim".

[57] In Markson, Rosenberg J.A. agreed with the motion judge's refusal to accept the defendant's argument that the proposed class was over-inclusive because it might include class members without a claim (at paras. 19 and 35).

[58] In Sauer v. Canada (Attorney General), [2008] O.J. No. 3419, 2008 43774 (S.C.J.), the defendants challenged the plaintiff's class definition as being too broad. Lax J. allowed the definition proposed and found that it was permissible for the court to engage in a factual investigation to determine class membership.

[59] In this case, everyone in the proposed class could potentially have a claim against the respondent. Subject to s. 12 of the Copyright Act (which is a proposed common issue), it is not disputed that at the time of creation, the copyright in a survey plan is owned by the plan's author, employer or assignee. The pertinent question, therefore, is whether or not the class in the present case could be more narrowly defined without arbitrarily excluding some people who share the same interest in the resolution of the common issues, and without introducing a merits-based analysis into the identification of class membership. In my view, it cannot.

[60] Once the common issues are determined, individual decisions will have to be made as to whether the class member is the owner of the copyright and whether, if she is, her claim is statute-barred or barred by virtue of the other equitable defences.

The requirement that there be two or more persons interested in pursuing the action

[61] At para. 156 of her decision, the motion judge states:

Keatley must provide some evidence of "two or more persons" who wish to have their copyright infringement complaint determined in this class proceeding and it has failed to do so. There is a reason why the CPA requires this evidence. As stated in Bellaire v. Independent Order of Foresters, 2004 95288 (ON SC), [2004] O.J. No. 2242 (S.C.J.), at para. 33 and Poulin v. Ford Motor Co. of Canada, 2008 54299 (ON SCDC), [2008] O.J. No. 4153 at para. 55 (Div. Ct.): [page516]

[B]efore the extensive process of a class proceeding is engaged, it ought to be clear to the court that there is a real and subsisting group of persons who are desirous of having their common complaint (assuming there to be a common complaint) determined through the process. The scale and complexity of the class action process ought not to be invoked at the behest, and for the benefit, of a single complainant.

[62] The appellant argues that the motion judge erred in principle by insisting on evidence that two or more people were "desirous of having their claims determined in a class proceeding". According to the appellant, neither the plain language of the CPA nor the governing jurisprudence requires such evidence to satisfy the "identifiable class" requirement. A class is "identifiable" if, by virtue of certain objective characteristics, people can determine if they would be members of the class. Under the legislative scheme of the CPA, willingness to pursue a lawsuit is not determined at the certification stage. Once the action is certified, potential class members then have the opportunity to "opt out" of the action.

[63] The respondent submits that the consideration of whether there is a "real and subsisting class" that is "desirous of having their claims determined in a class proceeding" has been endorsed in many Ontario certification decisions in the context of s. 5(1)(b). According to the respondent, while there may be some cases where the existence of a class may be presumed from the circumstances of the case, this case is not one of them. There is nothing inherently harmful or apparently wrongful about Teranet's actions, which are statutorily mandated. Further, on the evidence before the motion judge, a large number of land surveyors consented to the respondent's use of their plans, either expressly or by their conduct, and the respondent's electronic database is of real benefit to most land surveyors.

[64] The respondent is correct that the "desirousness" test has been endorsed in a number of cases. Those cases have been most recently summarized by Strathy J. (as he then was) in Singer v. Schering-Plough Canada Inc., [2010] O.J. No. 113, 2010 ONSC 42, 87 C.P.C. (6th) 276 (S.C.J.), at paras. 128-36. For ease of reference, I will repeat the highlights of that summary.

[65] In Bellaire v. Independent Order of Foresters, supra, at para. 33, the statement is made that was relied upon in this case about the need for clarity "that there is a real and subsisting group of persons who are desirous of having their common complaint . . . determined" through the process of a class proceeding.

[66] In Chartrand v. General Motors Corp., [2008] B.C.J. No. 2520, 2008 BCSC 1781, 75 C.P.C. (6th) 221, a product liability case involving an allegation about allegedly defective parking brakes, the motion judge refused to certify the case because [page517] there was no evidence that two or more people had a complaint about the product in question. In fact, the plaintiff herself was recruited to participate in the litigation. The rationale used in that case was that there had to be an "air of reality" to the linkage between the plaintiff's claim and the proposed class.

[67] In Poulin v. Ford Motor Co. of Canada, supra, the motion judge refused to certify the proceeding and that decision was affirmed by the Divisional Court. This was also a products liability case in which the allegation involved defective door latches on some Ford trucks. This time, the court conducted the analysis concerning whether there really was a safety issue that anyone was concerned about under the preferable procedure requirement and refused to certify on that basis.

[68] Other cases, such as Ducharme v. Solarium de Paris Inc., 2007 14346 (ON SC), [2007] O.J. No. 1659, 48 C.P.C. (6th) 194 (S.C.J.), affd [2008] O.J. No. 1558 (Div. Ct.) and Zicherman v. Equitable Life Insurance Co. of Canada, 2000 50952 (ON SC), [2000] O.J. No. 5144, 47 C.C.L.I. (3d) 39 (S.C.J.), find that there is a need for the plaintiff to show that her claim is more than idiosyncratic.

[69] In Lambert v. Guidant Corp., 2009 23379 (ON SC), [2009] O.J. No. 1910, 72 C.P.C. (6th) 120 (S.C.J.), at paras. 98-100, Cullity J. summarized the jurisprudence on the "desirous" point as follows:

In some cases, judges have insisted that as a requirement for certification the court must be satisfied that the plaintiffs are not the only members of the class who wish to enforce the claims that the plaintiffs seek to assert on their behalf. In Poulin v. Ford Motor Co. of Canada Ltd./ Ford du Canada Ltée, [2006] O.J. No. 4625 (Div. Ct.), at para 55, MacDougall J. stated:

In my view, before the extensive process of a class proceeding is engaged, it ought to be clear to the court that there is a real and subsisting group of persons who are desirous of having their common complaint (assuming there to be a common complaint) determined through that process. The scale and complexity of the class-action process ought not to be invoked at the behest, and for the benefit, of a single complainant.

In other cases, courts have not insisted on evidence of a group interest in the enforcement of the claims, and I do not understand the above statement in Poulin to require evidence in all cases that the plaintiffs are not the only persons interested in advancing claims: Cassano v. Toronto Dominion Bank (2007), 2007 ONCA 781, 87 O.R. (3d) 401 (Ont. C.A.) is an example of a case in which a proceeding was certified notwithstanding the absence of any evidence of interest by putative class members other than the plaintiffs. In such cases, it seems that the court may be prepared to presume from the nature of the claims and the circumstances of a particular case that the plaintiffs are likely to have the support of other class members. Such a presumption does not seem unreasonable where, as here, the claims are asserted on behalf of persons who allegedly suffered physical or psychological harm from the defendants' negligent manufacture and marketing of defective medical implants. [page518]

As a general rule, the question whether such evidence should be required is, I believe, best considered along with the other factors that may bear on the exercise of the court's discretion under section 5(1)(d) [the preferable procedure requirement].

[70] In Singer, Strathy J. concluded his discussion on this point, at para. 136, by stating:

It has been suggested that on a motion for certification the court plays an important gate keeping function to ensure that the proceeding is in fact suitable for certification. In this case, there is no evidence of a class or two or more people seeking access to justice. In a case where all the other requirements of s. 5(1) of the CPA had been met, it might be appropriate to follow the approach of Cullity J. in Lambert v. Guidant Corp. [i.e., conduct the analysis under the preferable procedure requirement], but in my view this is not such a case.

(Citations omitted)

[71] In Singer, Strathy J. found that the statement of claim failed to disclose a cause of action.

[72] In Lau v. Bayview Landmark Inc., [1999] O.J. No. 4060, 40 C.P.C. (4th) 301 (S.C.J.), Winkler J. (as he then was) explained the difference between those cases where more evidence may be required about the existence of a class (where the claim is based on subjective criteria) and those where less or none may be required (where the claim can be determined based on objective criteria.). At paras. 27-29, he stated:

Since the cause of action may be objective, that is determinable without direct reference to the personal characteristics of the defendant, or alternatively, subjective and thus dependent on the particular plaintiff's idiosyncracies, the threshold for establishing the existence of the class, and the number of members which comprise it, will vary from case to case.

For example, a products liability case, an action arising from a mass disaster or other situations represent what may be categorized as "objective" or objectively determinable claims. The harm alleged is not dependent on the plaintiff having certain characteristics but rather arises from the existence of a state of affairs outside the norm, the facts of which are sufficient to establish on the "plain and obvious" test that a cause of action exists. Hence, the evidence of the class, to adopt the words of Sharpe J. in Taub, may be "inherent in the claim itself".

On the other hand, a subjective claim requires more extensive evidence to establish the existence, and size, of the proposed class. A subjective claim is characterized by allegations of the plaintiff's injury from a reaction to a situation that is neither inherently harmful nor apparently wrongful. The subjective class of claims encompass those where a plaintiff's allegations of harm raise a question as to the tolerance level of other individuals, as was the case before Sharpe J. in Taub. In such cases, defining a class in mere geographical or temporal terms will rarely be sufficient without further evidence. Although location and time parameters are objective, a subjective cause of action, by its very nature, may not be shared by all, or for that matter, any of the persons so described. As a result, the class would not be defined with sufficient precision. [page519]

[73] In Taub v. Manufacturers Life Insurance Co. (1998), 1998 14853 (ON SC), 40 O.R. (3d) 379, [1998] O.J. No. 2694 (Gen. Div.), the plaintiff sought to certify a class action based on the presence of a certain mould that she had discovered in the bathroom of her apartment. Sharpe J. (as he then was) [at para. 5] refused to certify the action because there was no evidence that harm complained of by the representative plaintiff was the "subject of concern on the part of anyone else". And "[t]he nature of the harm disclosed by the plaintiff's affidavit is not of a kind that makes it at all obvious that it would have affected anyone else".

[74] There is jurisprudence from the Supreme Court of Canada on the identifiable class criterion. In Hollick v. Toronto (City), [2001] 3 S.C.R. 158, [2001] S.C.J. No. 67, 2001 SCC 68, at para. 17, the chief justice, who delivered the judgment of the court, adopted the test for an identifiable class articulated by Winkler J. in Bywater v. Toronto Transit Commission, [1998] O.J. No. 4913, 27 C.P.C. (4th) 172 (Gen. Div.).

[75] Nowhere, in Hollick, is there any mention of the need to demonstrate the existence of two or more persons who are desirous of pursuing the claim as part of the identifiable class criterion. Hollick concerned persons living in the vicinity of a landfill. The court considered evidence about whether persons other than the representative plaintiff had complained to governmental agencies about the landfill. Notably, these complaints were not required for the identifiable class analysis to be satisfied. At para. 17, before the court addressed evidence of complaints, it noted:

The first question, therefore, is whether there is an identifiable class. In my view, there is. The appellant has defined the class by reference to objective criteria; a person is a member of the class if he or she owned or occupied property inside a specified area within a specified period of time. Whether a given person is a member of the class can be determined without reference to the merits of the action. While the appellant has not named every member of the class, it is clear that the class is bounded (that is, not unlimited). There is, therefore, an identifiable class within the meaning of s. 5(1)(b).

[76] Evidence of complaints to government agencies was relevant to the common issues analysis, in order to show the linkage between the common issues and the class definition, i.e., to show the issues were truly common to all class members. The complaints were not required to show that class members desired to proceed by class action but, rather, to show that people living in those areas experienced noise and physical emissions. This is suggested by the court's discussion of Taub, immediately prior to discussing the complaints: the problem in Taub was that "[t]he representative provided no evidence, however, suggesting that [page520] the mould had been found anywhere but in her own apartment" (Hollick, at para. 24). The complaints, in Hollick, suggested that the physical emissions and noise were found in the geographic areas set out in the class definition. The kinds of complaints that were necessary in Hollick are unnecessary in the present case, because it is clear that class members would be affected by the copyright issues (subject to the overbreadth issue, discussed above).

[77] At para. 26 in Hollick, the court concluded:

It is sufficiently clear, however, that many individuals besides the appellant were concerned about noise and physical emissions from the landfill. I note, further, that while some areas within the geographical area specified by the class definition appear to have been the source of a disproportionate number of complaints, complaints were registered from many different areas within the specified boundaries. I conclude, therefore, that the appellant has shown a sufficient basis in fact to satisfy the commonality requirement.

[78] The recent decision of the Supreme Court of Canada in Sun-Rype discusses the identifiable class criterion at some length. In the end, Rothstein J., who wrote the majority decision, found that the class proposed did not meet the criterion as "there is no basis in fact to demonstrate that the information necessary to determine class membership is possessed by any of the putative class members" (para. 61). Sun-Rype is a case where the proposed class consisted of indirect purchasers of a product containing a sweetener known as HFCS. The problem in that case was that HFCS and liquid sugar were used interchangeably and there was no way that the members of the proposed class could say whether the products they purchased contained HFCS.

[79] In coming to the conclusion he did, Rothstein J. considered the purposes of the class definition criterion and agreed with the articulation of these purposes in Lau (which the motion judge relied upon). At para. 57, Rothstein J. states:

I agree with the courts that have found that the purpose of the class definition is to (i) identify those persons who have a potential claim for relief against the defendants; (ii) define the parameters of the lawsuit so as to identify those persons who are bound by its result; (iii) describe who is entitled to notice of the action.

[80] Nothing in these purposes points to the need to find that there are two or more people who are interested in pursuing the cause of action at issue.

[81] At para. 56, Rothstein J. discussed the grounds on which the "identifiable class" requirement is typically challenged as follows:

This is not a typical ground on which the "identifiable class" requirement is challenged. Here, there is no question whether the class definition is too [page521] narrow or too broad, whether the definition contains subjective criteria or whether the class definition creates a need to consider the merits.

Nowhere in this discussion is there mention of the "desirous" criterion imposed by the motion judge.

[82] At paras. 72, 73 and 77, Rothstein J. repeatedly articulates the identifiable class requirement without reference to any need for evidence that two or more class members are desirous of proceeding via a class action.

A key component in any class action is that at least two or more persons fit within the class definition. If, as in this case, there is no basis in fact to show that at least someone can prove they fit within the class definition, the class cannot be certified because the criteria of "an identifiable class of 2 or more persons" is not met. No amount of expert evidence establishing that the defendants have harmed the class as a whole does away with this requirement.

This is not to say that an identifiable class could never be found in similar circumstances as appear in this case. An identifiable class could be found if evidence was presented that provided some basis in fact that at least two persons could prove they had suffered individual harm. The problem in this case is that no such evidence was tendered.

The goal of the certification stage, as indicated by McLachlin C.J. in Hollick is to determine if, procedurally, the action is best brought in the form of a class action (para. 16). In this case, given that the appellants did not show that there was some basis in fact to believe that at least two persons can establish they are members of the class, I am unable to answer that question in the affirmative.

(Emphasis added)

[83] In this case, it is not open to dispute that there are at least two persons who could, using objective criteria, establish that they are members of the class. Nor is the class unlimited.

[84] Section 5(1)(b) of the CPA does not explicitly require evidence of a desire among class members to pursue an action. It simply requires that "there is an identifiable class of two or more persons that would be represented by the representative plaintiff or the defendant".

[85] In short, the "desirous" component of the identifiable class criterion is not mentioned in the legislation, not required to achieve the purposes of the criterion and not mentioned in the Supreme Court of Canada jurisprudence that discusses the issue.

[86] Further, requiring evidence that two persons seek to employ the class proceeding vehicle, rather than simply requiring evidence that those people have a claim, may be problematic [page522] for the same reasons articulated in support of the opt-out class actions regime legislated in Ontario.

[87] These reasons were set out in the Ontario Law Reform Commission, Report on Class Actions (Toronto: Ministry of the Attorney General, 1982), at p. 132:

If persons are required to opt in to a class action . . . there is thus no immediate, material incentive to class members that may help to override the operation of the social and psychological barriers, previously identified, that may operate to discourage individual litigation. Fear of involvement in the legal process, an ill-founded concern over the amount of legal costs, fear of sanctions from employers or others in a position to take reprisals, or even the demands of everyday life, may prevent a class member from taking the steps necessary to opt in.

[88] The danger of entrenching a requirement that two class members provide evidence of their desire to proceed with a class action is apparent in, for example, an employment context. One could imagine the situation of a proposed class action brought by employees, where all putative class members, other than the representative plaintiff, are reticent to give evidence at an early stage that they are in favour of a class action. Their reluctance could be for any number of the reasons set out above, e.g., fear of retaliation by the employer. This reluctance would thus prevent the launching of the class action, even where the class members have strong claims for recovery.

[89] The respondent attempted to analogize the class definition in this case with the class definition in Taub (the mould case). According to the respondent, as in Taub, there is no evidence that the harm complained of on the part of the proposed representative plaintiff was the subject of concern on the part of anyone else and it is not apparent from the proposed class definition that there would be two or more persons interested in pursuing an action against the respondent. According to the respondent, the appellant is an idiosyncratic plaintiff who, unlike most surveyors, does not need or use Teranet's services.

[90] I do not agree. Unlike in Taub, the existence of the class in this case is not dependent on personal or subjective criteria, such as tolerance levels to mould. Further, it does not necessarily follow that a land surveyor who uses the respondent's services would not want to be paid a fee for the use of her plans through the database. Finally, to the extent that the respondent argues that its practices are statutorily mandated and, therefore, in the public interest, this is one of the common issues that the appellant is proposing be certified.

[91] For these reasons, I find that the motion judge erred in principle when, as part of her identifiable class criterion analysis, [page523] she required the appellant to adduce evidence that there was someone, in addition to the plaintiff, who also wished to pursue a claim for copyright infringement against the respondent.

The Common Issues Criterion

[92] The recent decision of the Supreme Court of Canada in Pro-Sys Consultants Ltd. v. Microsoft Corp., [2013] 3 S.C.R. 477, [2013] S.C.J. No. 57, 2013 SCC 57 contains a discussion of the common issues test, at para. 106 and following. What emerges from that discussion is:

(a) The common issues analysis is to be conducted in a purposive manner.

(b) Common issues do not have to predominate over the issues affecting only individual class members. However, to justify a class action "the class members' claims must share a substantial common ingredient" and "[t]he court will examine the significance of the common issues in relation to the individual issues" (para. 108(4)).

(c) Issues are common when they raise common (but not necessarily identical) issues of fact or common (but not necessarily identical) issues of law.

(d) A common issue is one whose "resolution is necessary to the resolution of each class member's claim" (para. 108(2 )).

(e) "It is not essential that the class members be identically situated vis-à-vis the opposing party" (para. 108(3)).

(f) "Success for one class member must mean success for all. All members of the class must benefit from the successful prosecution of the action, although not necessarily to the same extent" (para. 108(5)).

[93] The appellant submits that the motion judge's analysis of the common issues must be rejected as fundamentally flawed. Instead of focusing on the common issues raised in the action, the motion judge started from a concern about the individual issues and how they could be determined. In doing so, she committed two errors in principle:

(a) She failed to apply the law that makes it clear that common issues do not have to answer the entire question of whether liability can be established on a common basis. If the determination of a common issue will significantly advance the litigation, that is sufficient. According to the appellant, the [page524] motion judge did not give sufficient weight to the common issues that were raised by the litigation.

(b) She failed to appreciate that common issues can be certified even if there are many individual issues that remain to be decided after their resolution.

[94] The appellant also argues that the motion judge's reasoning with respect to the proposed common issues cannot be reconciled with the decisions in Robertson v. Thomson Corp. (1999), 1999 14768 (ON SC), 43 O.R. (3d) 161, [1999] O.J. No. 280 (Gen. Div.); Robertson v. The Gale Group Inc. (October 21, 2008), File No. 03-CV-252945CP (S.C.J.); and Waldman v. Thomson Reuters Corp., [2012] O.J. No. 792, 2012 ONSC 1138, 22 C.P.C. (7th) 33 (S.C.J.). All three of those actions involved copyright infringement relating to electronic databases and allegations that the defendants used copyrighted materials without the consent of the copyright holders. All three were certified.

[95] The appellant filed a revised list of common issues on this appeal. It did so in response to the motion judge's observations about how the common issues, as drafted, were not suitable for certification for a number of reasons, including the fact that they required individual determinations and put the appellant in a conflict position with other potential class members. In response to the last concern, the appellant is no longer seeking to certify the question as to whether the class members are entitled to an injunction. It is also no longer seeking to certify a common issue about pre- and post-judgment interest. It has also redrafted most of the other common issues it is seeking to certify to meet the concerns identified by the motion judge.

[96] Attached at Schedules "A" and "B" to these reasons is the list of common issues that the motion judge considered and the list of revised issues put before this court on appeal. In these reasons, I will focus on the revised list of common issues at Schedule "B".

[97] Common issues 1 and 5 ask the court to determine two issues that the respondent does not dispute. In other words, the respondent does not dispute that copyright exists in plans of survey and it does not dispute that it made the alleged uses. For this reason, the respondent submits that these issues are not suitable for certification. I disagree. A defendant's concession at certification does not create a binding concession in favour of the class. Only determinations of common issues bind the defendant and the class. As recently stated by the Court of Appeal, "the admission of what would otherwise be a proper common issue should not be allowed to defeat a finding of [page525] commonality" (Fulawka v. Bank of Nova Scotia (2012), 111 O.R. (3d) 346, [2012] O.J. No. 2885, 2012 ONCA 443, at para. 88).

[98] By virtue of the recast common issues, the appellant has isolated four fundamental questions that could determine or significantly advance the litigation: (1) whether, once plans of survey are registered or deposited in land registry offices, the Crown acquires the copyright to those plans by virtue of s. 12 of the Copyright Act; (2) whether the signed declaration that is affixed to a plan of survey at the time of registration or deposit constitutes a written assignment of copyright to the Crown pursuant to s. 13(4) of the Copyright Act; (3) whether by registering and/or depositing the plans of surveys at the land registry office the class members are deemed to have consented to the alleged uses by the respondent; and (4) whether the respondent has a defence to copyright infringement based on public policy (common issues 2, 3, 4 and 7).

[99] There is no question that, as the respondent asserts, if none of these issues are decided in favour of the respondent, there still remain many individual issues that will have to be determined, including the issues raised by the equitable defences and the limitation period. However, as the motion judge observed, at paras. 173-74, the "common issues criterion is not a high legal hurdle" and "[a]n issue can be common even if it makes up a very limited aspect of the liability question and although many issues remain to be decided after its resolution".

[100] The appellant also challenges the motion judge's refusal to certify its questions concerning damages, including punitive damages. Again, the respondent has revised its damages questions and replaced them with two new questions. The first is directed at whether the respondent's conduct justifies an award of aggravated, exemplary or punitive damages (common issue 8) and a second question asks whether an aggregate award of damages can be made (common issue 9). Key to the appellant's argument about an aggregate award of damages is the fact that the Copyright Act provides for a right to recover statutory damages.

[101] In my view, neither of these damages questions is appropriate for certification at this stage. With respect to the punitive damages question, I agree with the motion judge that the evidentiary record discloses no rational basis upon which any determination about the appropriateness of punitive damages could be made on a common basis. The appropriateness of such an award would have to await the outcome of the individual trials. [page526]

[102] On the question of aggregate damages, s. 24(1) (b) and (c) of the CPA state that an award of aggregate damages may be made when "no questions of fact or law other than those relating to the assessment of monetary relief remain to be determined in order to establish the amount of the defendant's monetary liability" and the "aggregate or part of the defendant's liability to some or all class members can reasonably be determined without proof by individual class members". Neither of those conditions exists in this case at this point. Even if the other common issues were determined in the appellant's favour, there would still be many questions of fact and law that would have to be determined before getting to the point of assessing the quantum of monetary relief. Further, the appellant has not suggested any procedure or methodology by which damages could be assessed on an aggregate basis. Finally, in Pro-Sys Consultants Ltd. v. Microsoft Corp., supra, Rothstein J. confirmed, at para. 134, that failing "to propose or certify aggregate damages, or another remedy, as a common issue does not preclude a trial judge from invoking the provisions if considered appropriate once liability is found".

[103] For these reasons, I find that proposed common issues 1 to 7, inclusive, set out in Schedule "B", are suitable for certification.

The Preferable Procedure Criterion

[104] Section 5(1)(d) of the CPA requires that "a class proceeding would be the preferable procedure for the resolution of the common issues". The Supreme Court of Canada recently addressed this criterion in AIC Ltd. v. Fischer, 2013 SCC 69, [2013] 3 S.C.R. 949, [2013] S.C.J. No. 69. What emerges from that case are the following principles that are apposite to the case at bar:

(a) "In order to determine whether a class proceeding would be the preferable procedure for the 'resolution of the common issues', those common issues must be considered in the context of the action as a whole and 'must take into account the importance of the common issues in relation to the claims as a whole'" (para. 21, citations omitted).

(b) While the preferability inquiry has to be conducted "through the lens of the three principal goals of class actions, namely judicial economy, behaviour modification and access to justice . . . [t]his should not be construed as creating a requirement to prove that the proposed class action will actually achieve these goals in a specific case. . . This is a comparative exercise. The court has to consider the extent [page527] to which the proposed class action may achieve the three goals of the CPA, but the ultimate question is whether other available means of resolving the claims are preferable, not if a class action would fully achieve those goals" (paras. 22 -23).

(c) "A class action will address the goals of access to justice if (1) there are access to justice concerns that a class action could address; and (2) these concerns remain even when alternative avenues of redress are considered" (para. 26). The most common barrier to access to justice is the one that "arises when an individual cannot bring forward a claim because of the high cost that litigation would entail in comparison to the modest value of the claim" (para. 27).

[105] The motion judge found that the preferable procedure criterion had not been met for the following reasons:

(a) there was no common issue that would significantly advance the litigation. In her view, "[t]his is a case that is overwhelmed by the individual issues" (para. 222) and "an individual inquiry is at the heart of every liability issue" (para. 227);

(b) the goal of access to justice would not be advanced since there was not a single class member other than the appellant who had indicated that it wished to pursue a claim for copyright infringement against the respondent.

(c) The behaviour at issue was not one that required modification, because the respondent was providing electronic access to publicly available documents on behalf of the Ontario government pursuant to duly enacted legislation and the service provided "fulfills important public benefits" (para. 225).

[106] As the appellant acknowledged, applying this criterion involves the greatest exercise of discretion by the certification judge. Highly discretionary decisions are entitled to considerable deference from an appellate court.

[107] In this case, the motion judge's analysis of this criterion is of more limited applicability. Because of the way the common issues were presented to her, the motion judge found that there was only one issue put before her that could be certified and that had any element of commonality, the public policy issue. She then correctly concluded that the resolution of this issue would not significantly advance the litigation. On appeal, the appellant has put forward four issues that I have found would significantly advance the litigation. In fact, the resolution of [page528] some of these issues (e.g., the s. 12 Copyright Act issue) could determine the litigation.

[108] In my view, the motion judge committed an error in principle when she found that a class action would not advance the goals of access to justice because no one other than the appellant had indicated that it wished to pursue the litigation. As put by Winkler J. in 1176560 Ontario Ltd. v. Great Atlantic & Pacific Co. of Canada Ltd. (2002), 2002 6199 (ON SC), 62 O.R. (3d) 535, [2002] O.J. No. 4781 (S.C.J.), affd (2004), 2004 16620 (ON SCDC), 70 O.R. (3d) 182, [2004] O.J. No. 865 (Div. Ct.), leave to appeal to C.A. refused (2004), 50 C.P.C. (5th) 34 (C.A.), at para. 32:

To adduce evidence from individual class members as to the desirability of a class proceeding is to assume, as an underlying proposition, that certification motions are somehow determined through a referendum of the class members. Such is not the case. The legislature has spoken with respect to class proceedings in this province. The provisions dealing with opt outs and de-certification show that it was clearly alive to the prospect that not all members of a proposed class would wish to participate in a class proceeding or, alternatively, that a sufficient number of defections from the class would render a class proceeding unnecessary. Conversely, there are no provisions that expressly or implicitly mandate, or even suggest, that the suitability of a class proceeding is to be determined by a polling of the class prior to the certification motion.

[109] Further, if the motion judge's conclusion about the preferable procedure requirement were driven by concerns about the "social utility" of the action at issue, I agree with the comments of Perell J., in Magill v. Expedia Inc., [2013] O.J. No. 463, 2013 ONSC 683 (S.C.J.), where he states, at para. 131:

Social utility is not a juristic element and is more a matter of policy or public debate. Measuring social utility would be difficult and it would be inconsistent with the design of the certification criteria, which are not designed to probe the social utility of any particular class proceeding any more than they are to probe the merits of the proposed class action.

[110] The motion judge's comments about behaviour modification not being necessary because the respondent's service is statutorily mandated and fulfills important public benefits is also problematic, because it is a conclusion dictated by the motion judge's assessment of the merits of the proposed proceeding. One of the issues to be determined in the proceeding is whether the respondent has a defence to copyright based on public policy that would justify its uses of the plans of survey. In this regard, it is important to remember that a certification motion is not an opportunity to assess the merits of the action. As gatekeepers, the role of a certification judge is limited to ensuring that the procedural requirements for certification are met. It [page529] does not include deciding whether the action has sufficient merit to be tried as a class action.

[111] Given the revised list of common issues, it is my view that the action does meet the preferability criterion. The only alternative to a class action to determine these common issues is an individual action. Litigating the common issues could be expensive. The economic benefit to any one litigant may not be large. Thus, this is a case where there is a clear access to justice concern that a class action could address.

[112] If the common issues are determined in the respondent's favour, this may end the action. If they are not, there will be a number of individual issues left to try, but these issues will be fewer than they would have been without the common issues determinations having been made. Further, the common issues are not minor issues in the context of the whole litigation. As noted above, three other copyright infringement cases involving electronic databases that raised significant individual issues were also found suitable for certification (Robertson v. Thomson, Robertson v. Gale and Waldman).

[113] With respect to the concern about manageability, again, if the respondent succeeds on its defences, the action will be ended. If, as the respondent argues, not many class members are interested in pursuing claims, there will not be many individual trials to manage. If there are a number of individual trials, they will all have benefited from the common issues determinations. Finally, as put so elegantly by Lax J., in Sauer, at para. 66:

. . . I consider that the ghostly spectre of unmanageability underlying the arguments presented against certification is unconvincing. As with most ghosts, it will either vanish in the daylight of case management, the direction of the trial judge, or agreement of the parties or it will return in the night to haunt this proceeding, in which case the defendant may move under section 10 of the CPA for decertification: Pearson v. Inco Ltd. (2005), 2006 913 (ON CA), 78 O.R. (3d) 641 (C.A.) at para. 70.

Representative Plaintiff with a Workable Litigation Plan

[114] Section 5(1)(e) of the CPA requires that there be a representative plaintiff or defendant who

(i) would fairly and adequately represent the interests of the class,

(ii) has produced a plan for the proceeding that set out a workable method of advancing the plan on behalf of the class and of notifying class members of the proceeding, and

(iii) does not have, on the common issues for the class, an interest in conflict with the interests of the other class members.

[115] The motion judge found that the appellant did not meet this criterion for the following reasons: [page530]

(a) The appellant's circumstances are atypical of most surveyors in Ontario. The appellant's practice is limited almost exclusively to Manitoulin Island and it has copies of most of the work of surveyors who have ever worked or been based on Manitoulin Island. Thus, "unlike other surveyors, Keatley does not rely on land registry offices or Teranet to obtain copies of plans of survey for the purpose of researching the land it surveys" (para. 234). On the other hand, the evidence before the motion judge was that many surveyors in Ontario use the respondent's services to obtain copies of documents that they need to perform their own surveys.

(b) In its claim the appellant is seeking a "permanent injunction enjoining [the respondent] from dealing with, in any way or fashion, copies of [plans of survey] that it currently has in its possession". Since many surveyors use the respondent's services to perform their work, "shutting down" the respondent would be adverse to these surveyors. Thus, the appellant's interests were in conflict with many proposed class members.

(c) The appellant's litigation plan was deficient because it proposed that the individual issues would be determined by a referee, which the motion judge found was "an inappropriate mechanism to resolve the complex individual issues that arise in this case" (para. 246).

[116] I agree with the motion judge that the appellant's circumstances are atypical of most surveyors in Ontario. However, that does not answer the question of whether it can adequately represent the interests of the class. As put by Chief Justice McLachlin, in Western Canadian Shopping Centres Inc. v. Dutton, [2001] 2 S.C.R. 534, [2000] S.C.J. No. 63, 2001 SCC 46, at para. 41:

In assessing whether the proposed representative is adequate, the court may look to the motivation of the representative, the competence of the representative's counsel, and the capacity of the representative to bear any costs that may be incurred by the representative in particular (as opposed to by counsel or by the class members generally). The proposed representative need not be "typical" of the class, nor the "best" possible representative. The court should be satisfied, however, that the proposed representative will vigorously and capably prosecute the interests of the class[.]

[117] In this case, the respondent takes no issue with the competence of the appellant's counsel nor its ability to bear any costs.

[118] I agree with the motion judge that as long as the appellant is pursuing a claim for an injunction, he is not in a position to adequately represent the class. However, the appellant has [page531] abandoned its request that this common issue be certified and has agreed that any decision to certify the proceeding be conditional on the appellant's statement of claim being amended to remove this claim.

[119] The appellant's atypical circumstances do not render it unsuitable to be a representative plaintiff. This is clear from Western Canadian Shopping Centres. Further, as confirmed in 1176560 Ontario Ltd., the circumstances of the representative plaintiff need not be the same as all or many of the members of the class.

[120] In fact, it is arguable that the appellant's unique circumstances, in particular his lack of reliance on the respondent, make him ideally suited to vigorously prosecute the claim. As Winkler J. stated, in 1176560 Ontario Ltd., at paras. 41-45, in the franchise context:

I cannot accede to the submission that a financially independent plaintiff is disqualified as potential representative by the very fact of his independence. Indeed, such a plaintiff would appear to represent the paradigm when one considers the views of the Supreme Court of Canada as expressed in Western Canadian Shopping Centres . . .

The three proposed representative plaintiffs before this court are equipped to "vigorously and capably prosecute" the lawsuit .

Further, these are exactly the kind of plaintiffs that may be required to prosecute a class action lawsuit in the context of a financial relationship, with the inherent vulnerability in the dependent ongoing nature of the relationship between franchisor and franchisee[.]

I find no merit in the contention that the independence of the plaintiffs disqualifies them as representatives. The fact that their circumstances may be different from some or all of the balance of the class does not represent a conflict "on the common issues" as that term is used in s. 5(1)(e) of the CPA. Nor do their different circumstances mean that they cannot fairly and adequately represent the class. In fact, the evidence is to the contrary.

[121] In my view, if the appellant abandons its claim for an injunction, it can fairly and adequately represent the interests of the class.

[122] I agree with the motion judge that the individual issues that may have to be determined in this case after the common issues have been decided may be unsuitable for determination by a referee. The issues raised (particularly the equitable defences) could be complicated and that may make it more appropriate to have them determined by a court. The common issues trial judge will be in a better position to make this determination. Courts have held that litigation plans are something of a work in progress and may have to be amended during the [page532] course of proceedings: see Cloud v. Canada (Attorney General) (2004), 2004 45444 (ON CA), 73 O.R. (3d) 401, [2004] O.J. No. 4924 (C.A.), at para. 95, leave to appeal to S.C.C. refused [2005] S.C.C.A. No. 50. Further, when the other requirements for certification are met, the court may give leave to revise the proposed plan. In Fischer v. IG Investment Management Ltd. (2012), 109 O.R. (3d) 498, [2012] O.J. No. 343, 2012 ONCA 47, affd [2013] 3 S.C.R. 949, [2013] S.C.J. No. 69, 2013 SCC 69, the Court of Appeal certified conditionally upon the preparation of a new litigation plan.

[123] In my view, the decision as to the procedure to be used for resolving the individual issues should be left to the common issues judge who may depart from the litigation plan as the litigation progresses (Taylor v. Canada (Minister of Health), 2007 36645 (ON SC), [2007] O.J. No. 3312, 285 D.L.R. (4th) 296 (S.C.J.), at para. 104; Matoni v. C.B.S. Interactive Multimedia Inc. (c.o.b. Canadian Business College), [2008] O.J. No. 197, 2008 1539 (S.C.J.), at para. 192; Cannon v. Funds for Canada Foundation, [2012] O.J. No. 168, 2012 ONSC 399, 13 C.P.C. (7th) 250 (S.C.J.), at paras. 405-406).

Conclusion

[124] For these reasons, if the appellant amends its statement of claim to abandon its claim for an injunction, I would allow the appeal, set aside the decision of the motion judge and certify common issues 1 through 7 at Schedule "B". The parties may make submissions in writing on the question of costs. The appellant shall make its submissions within 15 days of the release of these reasons; the respondent shall have 15 days to file its response and the appellant shall have five days to file brief reply submissions (if any).

Appeal allowed.

SCHEDULE "A"

PROPOSED COMMON ISSUES AT CERTIFICATION

DEFINITIONS

"Alleged Uses" means:

a) Making copies of Plans of Survey;

b) Translating copies of Plans of Survey into digital form;

c) Transmitting digital copies of Plans of Survey to the Defendant's data-receiving centre by telecommunication;

d) Storing digital copies of the Plans of Survey in the Defendant's electronic data-base; [page533]

e) Adding the digital copies of the Plans of Survey to the Defendant's index of documents available through Teraview and/ or GeoWarehouse;

f) Communicating the digital copies of Plans of Survey to the public by telecommunications;

g) Offering the digital copies of the Plans of Survey for sale to Customers for a fee; and/or

h) Allowing Customers to print or download one or more copies of Plans of Survey;

"Class Members" means the class described in the certification if Keatley Surveying Ltd. v. Teranet Inc., CV-10-414169-00CP is certified as a class proceeding pursuant to s. 5(1) of the Class Proceedings Act, 1992;

"Copyright Act" means the Defendant's subscribers and/or members of the public; and

"Plans of Survey" means plans of survey prepared by Land Surveyors and registered and/or deposited in the Ontario Land Registry Office, and includes any drawings, maps, charts or plans contained in same.

PROPOSED COMMON ISSUES

Do Class Members who create a Plan of Survey have any of the rights to those Plans of Survey as set out under section 3(1), 3(1)(a) and 3(1)(f) of the Copyright Act?
Are Class Members deemed to have authorized or consented to any or all of the Alleged Uses by the Defendant of Plans of Survey as a result of the registration and/or deposit of those Plans of Survey to the Ontario Land Registry Office?
Did the Defendant make any or all of the Alleged Uses of Plans of Survey? If so, which ones?
Absent individual consent, are any or all of the Alleged Uses:

a. Infringement on Class Members' Copyright in Plans of Survey for the purposes of section 27(1) of the Copyright Act;

b. Secondary infringement on Class Members' Copyright in Plans of Survey for the purposes of section 27(2) of the Copyright Act;

and if so, which ones? [page534]

If Class Members elect under s. 38.1 of the Copyright Act to recover statutory damages and liability is established against the Defendant at the common issues trial, then:

a. Should statutory damages be awarded?

b. If so, can the aggregate amount of statutory damages be determined as a common issue; and

c. If so, how should these damages be calculated?

If Class Members do not elect under s. 38.1 of the Copyright Act to recover statutory damages, and if liability is established against the Defendant at the common issues trial, should the trial judge grant a declaration that the Class Members are entitled to remedies pursuant to the Copyright Act, in an amount to be determined at a subsequent hearing?
Did the conduct of the Defendant meet the standard required for an award of punitive damages? Once compensatory damages are determined, in what amount and to whom should punitive damages be paid?
Should the Defendant pay pre- and post-judgment interest, and, if so, at what annual interest rate?
Are Class Members entitled to an injunction pursuant to the Copyright Act?

Does the Defendant have a defence to copyright infringement based on public policy that would justify the Defendant making the Alleged Uses of Plans of Survey?

SCHEDULE "B"

REVISED PROPOSED COMMON ISSUES

DEFINITIONS

"Alleged Uses" means:

a) Making copies of Plans of Survey;

b) Transmitting digital copies of Plans of Survey to the Defendant's data-receiving centre;

c) Storing digital copies of the Plans of Survey in the Defendant's electronic database;

d) Adding the digital copies of the Plans of Survey to the Defendant's index of documents available through Teraview and/or GeoWarehouse; [page535]

e) Offering the digital copies of the Plans of Survey to Customers for a few; and/or

f) Allowing Customers to print or download one or more copies of Plans of Survey;

"Copyright Act" means the Defendant's subscribers and/or members of the public;

"Customers" means the Defendant's subscribers and/or members of the public; and

PROPOSED COMMON ISSUES

Does copyright under the Copyright Act subsist in the Plans of Survey?
Does the copyright in the Plans of Survey belong to the Province of Ontario pursuant to section 12 of the Copyright Act as a result of the registration and/or deposit of those Plans of Survey in the Ontario Land Registry Office?
Does the signed declaration affixed to the Plan of Survey at the time of registration and/or deposit constitute a signed written assignment of copyright to the Province of Ontario pursuant to subsection 13(4) of the Copyright Act?

DEEMED CONSENT

Are Class Members deemed to have consented to any or all of the Alleged Uses by the Defendant of Plans of Survey as a result of the registration and/or deposit of those Plans of Survey to the Ontario Land Registry Office?

INFRINGEMENT

Did the Defendant make any or all of the Alleged Uses of Plans of Survey? If so, which ones? [page536]
If the answers to common issues 2 and 3 are no, do any or all of the Alleged Uses constitute:

a. uses that by the Copyright Act only the owner of the copyright has the right to do;

b. uses that are listed in paragraphs 27(2)(a) to (e) of the Copyright Act and that the Defendants' knew or should have known infringes copyright;

and if so, which ones?

DEFENCES

Does the Defendant have a defence to copyright infringement based on public policy that would justify the Defendant making the Alleged Uses of Plans of Survey?

RELIEF

Did the conduct of the Defendant justify an award of aggravated, exemplary, or punitive damages?
Can an aggregate award of damages be made pursuant to subsection 24(1) of the Class Proceedings Act, 1992? If so, in what amount?

End of Document

Judges

Counsel

Applicant
CCeleste Poltak
Respondent
FF. Paul Morrison
Respondent
JJameel Madhany
Respondent
BBarry B. Sookman
Applicant
KKirk Baert
Respondent
JJulie Parla

Parties

Teranet Inc.respondent
Keatley Surveying Ltd.applicant

Areas of Law

Civil Litigation - Defendant Civil Litigation - Plaintiff Intellectual Property Law

Fact Patterns

class action certificationcopyright infringementelectronic land registryplans of survey

Issues

Whether the plaintiff should be permitted to recast its case on appeal.→ granted — permitted in the absence of non-compensable prejudice to the defendant
Whether the proposed class definition meets the identifiable class criterion under s. 5(1)(b) of the Class Proceedings Act.→ granted — revised class definition is objective and not merits-based
Whether the proposed common issues satisfy the common issues criterion under s. 5(1)(c) of the Class Proceedings Act.→ granted — revised common issues 1 to 7 are suitable for certification
Whether a class proceeding is the preferable procedure for the resolution of the common issues.→ granted — class action addresses access to justice concerns

Cases 5

appliedHollick v. Toronto (City), 2001 SCC 68
followedMarkson v. MBNA Canada Bank, 2007 ONCA 334
consideredMcCracken v. Canadian National Railway Co., 2012 ONCA 445
appliedSun-Rype Products Ltd. v. Archer Daniels Midland Co., 2013 SCC 58
appliedAIC Ltd. v. Fischer, 2013 SCC 69

Statutory Provisions 2

Class Proceedings Act, 1992

s. 5(1) — certification criteria

s. 12 — Crown copyright

Legal Tests 2

Identifiable class criterionApplied to determine whether the proposed class definition was objective and not merits-based.
Preferable procedure criterionAIC Limited v. Fischer, 2013 SCC 69Applied to determine whether a class proceeding would be the preferable procedure for the resolution of the common issues.

Legislation 2