On Friday, the Ontario Superior Court of Justice dismissed a motion for certification of a proposed class by surveyors alleging infringement of copyright. The suit commenced by Keatley Surveying Ltd claims that Teranet Inc, the company that manages Ontario’s electronic land registry system for the Ontario Government, infringes copyright by making and distributing plans of survey in the course of those operations. In giving reasons for dismissing the motion, the court in the Keatley Surveying LTD v Teranet Inc 2102 ONSC 7120 case made a number of important statements concerning the claims for copyright infringement.*
The motion for certification was brought pursuant to 5 of the Class Proceedings Act (CLA). The plaintiff, Keatley, is a professional corporation owned and operated by Gordon R. Keatley, a surveyor. Keatley allegedly owns thousands of drawings, maps, charts and plans of survey that Mr. Keatley created. Keatley brought the action on its own behalf and on behalf of all land surveyors in Ontario who created plans of survey.
The parties agreed that the plans of survey are “artistic works” under the Copyright Act. On the motion for certification, no issue was raised as to whether the individuals plans were original so as to be capable of attracting protection.
Two copyright issues raised by Teranet under Section 5(1)(a) of the CLA were considered by the court. First, Teranet contended, inter alia, that when individual plans of survey were deposited in land registry offices, copyright therein transferred to the Crown under s. 12 of the Copyright Act, which states:
Without prejudice to any rights or privileges of the Crown, where any work is, or has been, prepared or published by or under the direction or control of Her Majesty or any government department, the copyright in the work shall, subject to any agreement with the author, belong to Her Majesty and in that case shall continue for the remainder of the calendar year of the first publication of the work and for a period of fifty years following the end of that calendar year.
The court did not finally decide the matter, but concluded that “a compelling case can be made that copyright belongs to the Crown, based on s. 12 of the Copyright Act”.
Second, the statement of claim alleged that Teranet infringed surveyors’ exclusive right under Section 3(1)(a) of the Act by translating them into a digital format including Portable Document Folder (PDF) and Tagged Image File Format (TIFF). Section 3(1)(a) gives copyright owners the right to produce, reproduce, perform or publish any translation of a work. The court struck out this pleading holding it was plain and obvious that it could not succeed. According to the Court:
What is a translation? The word “translation” is not defined in the Copyright Act. However, there is case law and authoritative texts that discuss the meaning of this word as used in the Act. In essence these sources confirm that the word “translation” is used in the Act in its “primary sense of the turning of something from one human language into another.” (John S. McKeown, Fox on Canadian Law of Copyright and Industrial Designs, 4th ed., looseleaf (Toronto: Carswell, 2003) at 21:9; David Vaver, Copyright Law (Toronto: Irwin Law, 2000) at 130). In order to constitute a “translation”, the resulting work must also be original.
This interpretation of “translation” was applied in Apple Computer, Inc. v. Mackintosh Computers Ltd.,  1 F.C. 673 at para. 3 (C.A.), aff’d  2 S.C.R. 209. In Apple the issue was “whether a person who duplicates a computer chip thereby infringes the exclusive rights granted by section 3 of the Copyright Act”…
The statement of claim alleges that copies of the plans of survey “were translated into various digital formats, including Portable Document Folder (PDF) and Tagged Image File Format (TIFF)”. Following Apple, I conclude that scanning the plans of survey to create a digital format is not a translation within the meaning of s. 3(1)(a) of the Copyright Act. The resulting digital plan of survey is not an original work, as there is no “skill and judgment” involved in simply scanning the plans of survey. It is therefore plain and obvious that there is no infringement of copyright for “translating copies” of the plans of survey by converting the plans into digital formats. As a result, those parts of the statement of claim dealing with translation to advance an infringement cause of action will fail and must be struck.
* Teranet was represented by Paul Morrison, Julie Parla, Barry Sookman and Jameel Madhany of MCCarthy Tétrault.