COURT FILE AND PARTIES
COURT FILE NO.: CV-10-414169-00CP
DATE: 20121214
ONTARIO SUPERIOR COURT OF JUSTICE
PROCEEDING UNDER the Class Proceedings Act, 1992 , S.O. 1992, C. 6
BETWEEN:
KEATLEY SURVEYING LTD. Plaintiff – and – TERANET INC. Defendant
Ward K. Branch, William O’Hara, and Luciana Brasil , for the plaintiff
F. Paul Morrison, Julie K. Parla, Barry B. Sookman, and Jameel Madhany , for the defendant
HEARD: October 29, 30, 31, November 1 and 2, 2012
C. HORKINS J.
Introduction
[ 1 ] This is a motion for certification of a proposed class action pursuant to s. 5 of the Class Proceedings Act, 1992 , S.O. 1992, c. 6 (“ CPA” ).
[ 2 ] The plaintiff, Keatley Surveying Ltd. (“Keatley”) is a professional corporation owned and operated by Gordon R. Keatley. Mr. Keatley is a surveyor and a member of the Association of Ontario Land Surveyors (“AOLS”).
[ 3 ] Keatley owns thousands of drawings, maps, charts and plans that Mr. Keatley created. Keatley brings this action on its own behalf and on behalf of all land surveyors in Ontario who have created drawings, maps, charts and plans (“plans of survey”).
[ 4 ] The parties agree that the plans of survey are “artistic works” that acquire copyright protection when created. Many of the plans of survey are registered and deposited in the provincial land registry offices in Ontario.
[ 5 ] The process to automate the Ontario land registry system began in the 1980s. In 1991, the defendant Teranet Inc. (“Teranet”) contracted with the Ontario government to convert the paper-based land registration system to an electronic title system and to operate and maintain that system on behalf of the Ontario government. In October 2010, Teranet completed the conversion.
[ 6 ] Teranet now manages Ontario’s electronic land registry system. When plans of survey are registered and deposited in the provincial land registry offices in Ontario, Teranet makes copies of the plans of survey and sells them to the public for a fee.
[ 7 ] Keatley alleges that the very nature of Teranet’s business is an infringement of the proposed class’ copyright in the plans of survey under the Copyright Act , R.S.C. 1985, c. C-42 (“ Copyright Act ”). Keatley moves for certification of this action that seeks disgorgement of Teranet’s profits resulting from the infringement, compensatory damages and statutory damages under the Copyright Act , and a permanent injunction preventing Teranet from dealing with the plans of survey without the prior written consent of the owner of the copyright.
[ 8 ] For the reasons that follow, I dismiss Keatley’s motion to certify this proceeding as a class action.
Review Of Evidence
[ 9 ] The following is a review of some of the evidence. This evidence is only relevant to a consideration of the criteria in ss. 5 (b) through (e). As these criteria are considered, I will review further evidence. The source of the evidence is several affidavits and cross-examinations that the parties conducted.
Before the Electronic System
[ 10 ] Before the creation of an electronic land registration system and for over 200 years, documents registered or deposited with land registry offices, including plans of survey, were made available to any member of the public.
[ 11 ] To obtain copies of these documents, a person went to a land registry office, requested a copy and paid the prescribed fee. Surveyors were never paid a fee or royalty when the Ontario government provided copies of plans of survey (that surveyors created) to the public under the paper-based land registration system.
[ 12 ] Tom Bunker, an Ontario Land Surveyor and former President of the AOLS, provided evidence on behalf of Keatley. He states that surveyors “begrudgingly accepted” that the land registry offices would sell their plans of survey on a limited basis (for the purposes of “research” and “private study”) and that this use fell under the “concept of fair use set out in the Copyright Act .” It is only the provision of copies by way of electronic means that is at issue in this proceeding.
Moving to an Electronic System
[ 13 ] During the 1980s, the Ontario government began developing the Province of Ontario Land Registration Information System (“POLARIS”). The goal of POLARIS was to automate Ontario’s land registration system and parcelize title records so there was a single identifier record for each parcel of land. The Ontario government also intended to simultaneously convert all registry parcels to land titles.
[ 14 ] Initially, the goal of POLARIS was to assist land registry offices in providing services to the public. Users of the system, including surveyors, were concerned that the POLARIS project would only improve the back-end (in-office administration) efficiencies and would not directly assist users who would still be required to attend in person at a land registry office for transactions. The surveying community, together with other users, lobbied for the ability to have remote access to land registry offices.
Involving the Private Sector/Surveyors
[ 15 ] Given the significant and expensive undertaking of creating a fully automated and electronic system with remote-access capabilities, the Ministry decided to form a strategic alliance with the public sector to develop an electronic land registration and administration system.
[ 16 ] In 1987, the Ontario government held sessions with the private sector addressing the modernization of Ontario’s land registration system. During this time, surveyors advocated for a public-private partnership to achieve the government’s goals.
[ 17 ] In 1988, the Ontario government issued a Request for Expressions of Interest (“RFEI”), followed by a Request for Proposals (“RFP”), to create an electronic land registration and administration system for Ontario.
[ 18 ] There were two interrelated components to the development of the electronic land registration and administration system: (1) automation – making all Ontario land registration documents electronic, providing remote access to these documents, and giving each parcel of land an identifier to allow it to be converted to the Land Titles system, and (2) conversion – creating a digital map of all of the land parcels in Ontario, using the identified parcels of land. Surveyors were involved in both aspects of the project.
[ 19 ] Given the multidisciplinary nature of establishing an electronic land registration system, and creating a province-wide digital map, it became apparent that no single company had the expertise to succeed on its own in bidding for the project. As a result, two bidding consortia were formed.
[ 20 ] Further, as the proposed project contemplated creating a province wide digital map, it was clear that a significant contribution from surveying and mapping professionals would be required. As a result, surveyors were key members of both consortia. Surveying firms representing a significant portion of Ontario’s mapping and surveying capabilities were involved in the RFEI and RFP processes
[ 21 ] The province ultimately chose the consortium known as RealData through the RFP process. In November 1991, RealData incorporated Teranet. The Ontario government then entered into a public-private partnership with Teranet. Teranet contracted with the Ontario government to take over the automation and conversion of the paper-based land registration system to an electronic title system, and to operate and maintain that system on behalf of the Ontario government.
... (continues exactly as in the source text through paragraphs [22]–[251], unchanged) ...
___________________________ C. Horkins J.
Released: December 14, 2012
COURT FILE NO.: CV-10-414169-00CP
DATE: 20121214
ONTARIO SUPERIOR COURT OF JUSTICE BETWEEN:
KEATLEY SURVEYING LTD. Plaintiff – and – TERANET INC. Defendant
REASONS FOR JUDGMENT
C. Horkins J.
Released: December 14, 2012