When does copyright transfer to the Crown under the Copyright Act? The Supreme Court clarified this in a landmark ruling released earlier today in Keatley Surveying Ltd. v. Teranet Inc., 2019 SCC 43, authoritatively interpreting Section 12 of the Act.

The Court did so in delivering two sets of reasons, the majority written by Justice Abella (Moldaver, Karakatsanis and Martin JJ. concurring) and by Justices Côté and Brown JJ. (Wagner C.J. concurring). All seven Judges agreed that the decision of the Court of Appeal (2017 ONCA 748) which sided with Teranet should be affirmed. In the result, the Court unanimously agreed that when surveyors register or deposit plans of survey in a public registry system (including land titles) and those plans are made available to the public by the Ontario Government or its service provider Teranet, the copyright in the surveys passes to the Crown.

Section 12 has had a long legislative history, having been copied from the UK 1911 Copyright Act. Despite this, the scope of this provision, which transfers copyright to the Crown in certain circumstances, has not been authoritatively interpreted by any Canadian court, until now.

Section 12 reads as follows:

Where copyright belongs to Her Majesty

Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.

All seven judges agreed that opening words of the section preserve the Crown Prerogative. The prerogative confers on the Crown a “property right” which grants the Crown a monopoly on printing certain works in perpetuity. The types of works which the Crown traditionally had the sole right to originally publish included works of religion, statutes and public documents and law reports. Justifications for the continued existence of the Crown prerogative over publishing “include ensuring the preservation, authenticity, accuracy and reliability of certain documents, while simultaneously retaining the discretion of the executive.” The continued subsistence of the Crown prerogative is a derogation from the general rule that copyright is wholly a “creature of statute”.

The balance of s. 12, which was in issue in the case, is when copyright passes to the Crown under the phrase “prepared or published by or under the direction or control of Her Majesty”. All members of the Court recognized that the disjunctive wording could result in the Crown becoming the owner of a copyright under either the “prepared” or “published” prongs. According to the Court (per Abella):

Section 12 states that the Crown will have copyright when a work is prepared or published by or under its direction or control. Critical to the assessment of whether Crown copyright subsists, is the notion and extent of government direction or control in relation to a work. As it is in the Copyright Act generally, the “work” is the lynchpin of s. 12. While it is true that s. 12 has two parts — the prepared prong and the published prong — these two “prongs” are different only to the extent that preparation and publication are different processes. The goal of the s. 12 inquiry in its entirety is to determine whether the degree of direction and control of the Crown over the preparation or publication of the work is sufficient to vest copyright in the Crown. While the manner of assessing whether the requisite degree of direction or control is present will necessarily vary depending on whether Crown copyright is asserted on the basis of preparation or publication, the overarching question remains: has the Crown exercised sufficient direction or control, consistent with the purposes of Crown copyright, that it can be said that Crown copyright subsists?

As for the “prepared” prong, the Court recognized two situations in which copyright could vest in the Crown. First, when an agent or servant of the Crown brings the work into existence for and on behalf of the Crown in the course of his or her employment. The copyright would also vest in the crown in this situation under s. 13(3) of the Act. Second, “when the Crown essentially determines whether and how a work will be made.”

As for the “publish” prong, “a work will only be published by or under the direction or control of the Crown when it can be said that the Crown exercises direction or control over the publication process, including both the person publishing the work and the nature, form and content of the final, published version of a work.” This interpretation was adopted by the majority of the Court to avoid an overly broad construction of the section wherein a mere publication of a work by the Crown might have transferred copyright in the work to the Crown, something all members of the Court sought to avoid.

The Court expanded on the meaning of direction or control in this context stating (per Abella J):

…I am of the view that determining whether a work was published with sufficient governmental direction or control to comply with s. 12 necessitates an inquiry into the Crown’s interest in the works at the time of publication since this interest will demonstrate the degree of direction or control exercised by the Crown over the publication process. As with the “prepared” prong, the Crown must wield direction or control over the publication process, regardless of whether the works are published “by” the Crown itself, or by a third party under the Crown’s “direction or control”.

In determining whether a work was published “by” the Crown for the purposes of s. 12, relevant indicia of governmental direction or control may include the presence of a statutory scheme transferring property rights in the works to the Crown; a statutory scheme which places strict controls on the form and content of the works; whether the Crown physically possesses the works; whether exclusive control is given to the government to modify the works; the opt-in nature of the statutory scheme; and the necessity of the Crown making the works available to the public. It is only when it can be said that the Crown has sufficient governmental direction or control over the publication process that Crown copyright will subsist within the meaning of s. 12.

These same factors are relevant to the inquiry of whether a work is published “under the direction or control” of the Crown when a third party is involved in the publication process. When it is a third party who does the actual publishing, however, it will also be necessary to examine the direction or control exercised by the Crown over the third party publisher.

Under both the prepared and published prongs of s. 12, therefore, the inquiry will always be whether the extent of the government’s direction or control over the preparation or publication of the work are sufficiently extensive to vest copyright in the Crown. The prepared and published prongs of the s. 12 inquiry cohere: both necessitate an examination into the level of the Crown’s direction or control over the person preparing or publishing the work and the work that is being prepared or published. While the inquiry may vary, the overarching task is the same — to measure the degree of direction or control exercised by the Crown in bringing about the creation or dissemination of a work.

Justices Côté and Brown took a different approach in construing s. 12. In their opinion, the phrase “prepared or published by or under the direction or control” of the Crown should be construed according to its ordinary meaning.

In our view, this should also be interpreted literally: the act of preparing or publishing the work must be done either by the Crown itself or under the Crown’s direction or control. A work is prepared or published by the Crown where the Crown prepares or publishes the work through an employee or agent. Preparation or publication under the direction or control of the Crown occurs where a third party does so at the behest of the Crown.

In short, we would read the entirety of the phrase consistently, in each case inquiring into the person preparing or publishing the work, and into that person’s relationship to the Crown. This divides us from our colleague in this way: she would import into the statute a requirement that both the “prepared” prong and the “published” prong entail inquiring into whether the Crown has sufficient direction or control in the work itself. Specifically, a work is “prepared or published by or under the direction or control” of the Crown where the Crown has “sufficient” direction or control in the preparation or publication process, including the person preparing or publishing the work and the Crown’s interest in the work itself at the time of preparation or publication (Abella J.’s reasons, at paras. 63-71). But we see several difficulties with such an interpretation…

Our interpretation of “published by or under the direction or control” is also consistent with the academic authorities cited by our colleague (paras. 55-59). There is no mention in these authorities of a requirement that the Crown have “direction or control” over the work itself or that an inquiry into the Crown’s interest in the work is necessary. Rather, they acknowledge that s. 12 grants the Crown copyright in a work by preparing or publishing it or having the work prepared or published by a third party under the Crown’s direction or control. For example, Dr. Fox states that: “the [C]rown will have copyright merely by paying for the publication of a work or, even without paying for it, by having it published under the direction or control of the [C]rown or a government department” (H. G. Fox, “Copyright in Relation to the Crown and Universities with Special Reference to Canada (1947-48),” 7 U.T.L.J. 98, at p. 125 (emphasis added)).

However, to avoid an overly expansive reading of the section, they would read into the section a requirement that the work be a government work”; that is, “a work that serves a public purpose and in which vesting the copyright in the Crown furthers that purpose”. The types of works that would be covered were explained as follows:

Further, these purposes inform what works are government works covered by s. 12, by clarifying that s. 12 applies to works of a public character — that is, where they serve a public purpose. These will be works for which accuracy, integrity and dissemination will be important for the works to effectively fulfill their public purposes. In determining whether a particular work is a government work, then, the purpose of the work must be considered. Section 12 gives the Crown copyright in works where it would be detrimental to the public interest to have multiple versions available, containing potentially different and contradictory information. It applies to works which the public will rely upon, such that there is a public interest in knowing where to obtain copies of the work and receiving authentic versions. Additionally, it covers works to which many people may need access, such that limited dissemination would not be in the public interest, and works to which access may be restricted in the public interest.

On the facts of the case, all Justices agreed that copyright in surveys passed to the Crown. According to the majority reasons:

Taken together, the provincial land registration regime gives the Crown complete control over the process of publication. The Crown has proprietary rights in the plan, and custody and control over the physical plans. The statutory scheme ensures that the Crown directs and controls the format and content of registered plans. Significantly, this control subsists after registration or deposit. It is only the Crown, through the Examiner of Surveys, who is able to alter the content of the plans, and only the Crown has ongoing control over and responsibility for the publishing process, including the final form of the work. Likewise, it is the Crown who — by validly enacted legislation — has the exclusive authority to make copies of the registered or deposited plans of survey.

Viewed in its entirety, the scheme demonstrates the extent of the Crown’s direction or control over the publication process. The rights normally given to the creator of the work, including the right to amend the work and make copies, are instead given to the Crown. The Crown directs and controls every aspect of the publication of the registered and deposited plans of survey. Because of the extent of this direction and control, copyright vests in the Crown by operation of s. 12 of the Act when the registered or deposited plans of survey are published. When it is the Crown that publishes the works by making them available through the Land Registry offices, the works are published “by” the Crown within the meaning of s. 12….

When either the Crown or Teranet publishes the registered or deposited plans of survey, copyright vests in the Crown because the Crown exercises direction or control over the publication process, which includes both the publisher and the resulting publication. While the s.12 test is a stringent one, it is readily met on the facts of this case.

The concurring reasons were equally emphatic that copyright in surveys passes to the Crown when registered or deposited in either the registry or land title system.

As to the plans of survey at issue in this case, it is clear that they are government works to which s. 12, properly interpreted, applies. They have a clear public character, as they define and illustrate the legal boundaries of land within the Province. This information is of the highest public importance, clarifying land ownership, and allowing landowners and users to govern their affairs accordingly. Therefore, the works serve a public purpose within the Province.

Crown copyright in this information is of similar importance. People rely on the accuracy of survey plans for determining their interest in property and facilitating land transactions. The Crown has a strong interest in the integrity of the land registry system and in public access to accurate versions of surveys. (Indeed, the fact that only the Examiner of Surveys can amend deposited or registered plans of survey demonstrates just how crucial accurate survey plans are to the system.) By holding copyright in the plans, the Crown can restrict the ability of a surveyor or other private party to make alterations to the plans and then sell or distribute them privately. By asserting Crown copyright, the government can ensure that survey plans obtained from the Land Registry Office or from Teranet are accurate. As well, because survey plans are so widely relied upon, it is important to ensure wide public availability so that whomever requires access to them can obtain it. In this regard, the pertinent statutes actually require the Province to make the plans available to the public for a prescribed fee (Land Titles Act, s. 165(4); Registry Act, s. 15(4)). Were private surveyors to continue to hold the copyright in the registered and deposited plans of survey, they could restrict the Crown’s ability to ensure the plans are disseminated widely. The record indicates that accuracy, integrity, and dissemination of the works in question are of great importance to the proper functioning of the land registry system in Ontario.

All of these considerations support the conclusion that the registered or deposited plans of survey are government works once published by Teranet and/or the Land Registry Office. We agree with our colleague that “[t]hese are precisely the types of works over which Crown copyright should subsist — those over which it is necessary for the Crown to guarantee authenticity, accuracy and integrity in the public interest” (para. 82). Indeed, if these plans of survey do not qualify as government works, we would be at loss to know what would.

As the registered and deposited plans of survey are government works when they are “published by or under the direction or control” of the Province, copyright in them is vested in the Crown under s. 12, and not in the original surveyors. This copyright vests in the Crown from the first time the works are published “by or under the direction or control” of the Province and continues “for the remainder of the calendar year of [that] first publication of the work and for a period of fifty years following the end of that calendar year”.

The decision of the Court will undoubtedly be welcomed by many copyright lawyers and their clients. The Court took a nuanced and policy approach to s. 12 to address some of the criticisms that had been made about its possible unfair scope while at the same time preserving its historic purpose so as to enable the Crown to own copyright for public purposes and in the public interest.

This article was first published on barrysookman.com.