ONTARIO SUPERIOR COURT OF JUSTICE Court File No. CV-10-414169-00CP BETWEEN: KEATLEY SURVEYING - and- LTD. Plaintiff TERANET INC. Defendant Proceeding under the Class Proceedings Act, 1992 NOTICE OF MOTION The Defendant Teranet Inc. ("Teranet") will make a motion before the Honourable Madam Justice Horkins, on February 6, 2012, or as soon after that time as the motion can be heard, at Osgoode Hall, Toronto, Ontario, or at such other place as may be directed by the Court. PROPOSED METHOD OF HEARING: The motion is to be heard orally. THE MOTION IS FOR: 1. Summary Judgment dismissing this action on the basis that there is no genuine issue requiring a trial; 2. costs ofthe motion and of this action; and 3. such further and other relief as counsel may advise and this Honourable Court may permit.
- 2 - THE GROUNDS FOR THE MOTION ARE: THE PARTIES 1. The Plaintiff, Keatley Surveying Ltd. ("Keatley"), is an Ontario land surveying firm. Keatley commenced this proceeding under the Class Proceedings Act, 1992, S.O. 1992, c. 6, alleging that Teranet infringed and continues to infringe copyright of the Plaintiff and all Ontario land surveyors in plans of survey ( "plan" or "plan of survey") created by surveyors and registered or deposited in an Ontario Land Registry Offices ("LRO"). 2. Teranetis a corporation incorporated pursuant to the laws of the Province of Ontario and carries on business in Ontario as a provider of electronic service solutions. 3. Two of Teranet's applications are at issue in these proceedings: (a) Teraview, which provides electronic facilities and services on behalf of the Government of Ontario in respect of Ontario's electronic land registration and administration system; Teraview allows users to electronically and remotely search and register property title records in Ontario, and access a provincewide digital map; and (b) GeoWarehouse, an on-line search service used by land information professions, such as real estate agents, planners, and Ontario land surveyors. DEPOSIT AND REGISTRATION OF PLANS OF SURVEY 4. When a plan is created for the purpose of being registered or deposited at an LRO, the Government of Ontario, including by way of legislation and regulations, exercises substantial control and direction over the preparation and publication of the plan.
- 3-5. All surveyors sign the plans which they submit for deposit or registration, with an express statement acknowledging that the plan is to be deposited or registered under the Land Titles Act or the Registry Act, and expressly agree that his or her plan is to be treated in accordance with the provisions of the statute under which it is deposited or registered. 6. If a plan is accepted for deposit or registration, the plan is filed on title and becomes part of the public record. Pursuant to the Land Titles Act and the Registry Act, copies of all registered and deposited records are mandated to be made available to the public, on request. No COPYRIGHT IN REGISTERED OR DEPOSITED PLANS OF SURVEY 7. No plan has been or will be accepted for registration by an LRO with any copyright mark, by words or symbols, on or pertaining to the plan. This prohibition was established in 1981 by a policy statement issued by the Ministry of Consumer and Commercial Relations of Ontario, now the Ministry of Government Services (the "Ministry"), and subsequently was enacted as part of Regulation 43/96 (the "Surveys Regulation"), made under the Land Titles Act and Registry Act. The Surveys Regulation continues to be in force. 8. Since 1981, Ontario land surveyors have at all times acted and governed themselves in accordance with the Ministry policy and the Surveys Regulation. Surveyors do not print copyright markings or assert entitlement to copyright when preparing and submitting plans to be deposited or registered in the Ontario land registration system. 9. All surveyors are, and at all times have been, aware and agree that once registered or deposited, their plans of survey can and will be made available to the public and that they will receive no compensation for any copies provided. At no time, either under the paper based system or under Ontario's electronic land registry system, have surveyors received any fee,
- 4 - royalty or other compensation in respect of copies of registered or deposited plans provided to the public. ONTARIO'S LAND REGISTRATION SYSTEM PRIOR To AUTOMATION 10. Prior to automation of the land registration system, all transactions with LROs had to occur by attending at the LRO in person, and conducting transactions over the counter. 11. All Ontario surveyors knew, understood, and agreed that members of the public were at all times able to attend at an LRO and obtain a copy of any registered or deposited land title document. In addition, LROs maintained paper versions of provincial maps, referred to as "Block Maps". Copies of the Block Maps were also made available to the public. 12. The Block Maps were maintained by reference to registered and deposited plans of survey, namely, survey data from newly deposited or registered plans of survey was incorporated into the Block Maps, by having LRO staff re-draw the boundaries onto the Block Maps. All surveyors at all times knew and agreed that registered and deposited plans of survey and survey data were being used to update and maintain the Block Maps. THE MOVE TO AN ELECTRONIC LAND REGISTRATION SYSTEM 13. In 1984, the Government of Ontario 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 under the land titles system, such that there was a single record for each parcel of land.
-5-14. POLARIS consists of two databases: a title index database containing searchable information from title abstracts, and a database of maps providing survey information, property boundaries and unique Property Identification Numbers ("PINs"). 15. In 1987 surveyors initiated discussions with the Ministry to advocate for the creation of an electronic land registration system for Ontario. Surveyors in particular suggested that the POLARIS model allow for remote user access. 16. In 1988 the Ontario Government issued a Request for Expressions of Interest ("RFI"), followed by a Request for Proposal ("RFP") seeking to create an electronic land registration and administration system. The goals ofthe project were: (a) to develop an electronic land registration system, whereby users could conduct real property registrations and document searches electronically and remotely; (b) to develop a province-wide digital parcel map (the "POLARIS Map"); and (c) to spearhead a Land Related Information System ("LRIS") industry in Ontario. 17. Given the multidisciplinary nature of the project, interested companies formed into two consortiums to bid on the project: Real/Data Ontario Inc. ("RDO") and FimTech. 18. Both consortiums included a significant number of surveyors and surveying firms, such that most Ontario land surveyors were involved in the RFI and RFP processes through one or the other of the two consortiums. 19. Accordingly, most Ontario land surveyors participated in the RFI and RFP processes and had direct knowledge of all facets of the POLARIS project, including that the
- 6- Government intended to create a province-wide digital parcel map, and that plans of survey already on deposit at LROs would be utilized in the creation and implementation of the project. 20. At no time throughout the RFI and RFP processes did any surveyors take the position that they retained copyright in registered or deposited plans. Nor did they raise any concern or complaint that provision of plans via an electronic database would result in infringement of copyright in the plans, nor that the contemplated electronic land registration system should take into account compensation to surveyors pursuant to any copyright entitlement. THE RELATIONSHIP BETWEEN TERANET AND THE MINISTRY 21. The relationship between Teranet and the Ontario Government was and continues to be governed by the terms of implementation and licensing agreements. Pursuant to the agreements, inter alia: (a) Teranet provides the public with electronic land registration facilities and services on behalf of the Ontario Government. (b) Teranet accesses the Government data required to provide electronic land registration services pursuant to a licence granted to it by the Government. (c) the Ontario Government retains all right, title, and interest, including expressly the intellectual property rights, to the data used in the provision of services. The data includes registered and deposited plans of survey.
-7 - (d) Teranet created an electronic land registration system, and provmce wide digital property index map, and continues to maintain and operate the system and the map. USE OF DEPOSITEDIREGISTERED SURVEYS 22. Plans which are deposited or registered in LROs are used by Teranet in two ways: (a) Teranet receives a hard copy of registered or deposited plans certified by LROs, which it scans into a digital format and adds to its databases, so as to make them accessible to the public; and (b) the survey data contained in the plan is added to the POLARIS Map. The POLARIS Map is a mapping database showing property ownership, boundaries, and registered and deposited plans. The POLARIS Map links boundary information with title information. 23. Both of these functions are mandated by legislation and regulation, and are and have been well-known and agreed to by surveyors in Ontario. SURVEYORS' DIRECT KNOWLEDGE OF AND ROLE IN CREATING ONTARIO'S ELECTRONIC LAND REGISTRATION SYSTEM (a) Surveyors' role in the creation and implementation of Ontario's electronic land registration system and POLARIS Map 24. Surveyors had direct and significant roles in the development of Ontario's electronic land registration and administration system, including: (a) Surveyors who were members of the wmnmg consortium who bid on the POLARIS project were initially shareholders of Teranet; as such those
-8 - surveyors had a financial interest in Teranet, and were afforded status as preferred service providers in the POLARIS Map project; (b) The Association of Ontario Land Surveyors ("AOLS"), the professional governing body of Ontario land surveyors had extensive consultations with the Ontario Government prior to and in respect of creating the electronic land registration system and the regulations for electronic registration; and (c) Surveyors directly contracted with Teranet to provide the surveying, mapping, and ancillary services necessary to create the POLARIS Map. 25. The POLARIS Map project took 20 years to complete. Surveyors from across the Province participated in the project by providing survey, mapping, and ancillary services to Teranet. In creating the POLARIS Map surveyors referred to and relied upon, inter alia, copies of registered and deposited plans of survey as reference documents. 26. The total cost of the mappmg project was approximately $60 million. Of that, approximately $40 million was paid to surveyors as fees for the work they conducted on the project. 27. By virtue of their specific and direct involvement and participation, as summarized above, surveyors had direct knowledge of the creation and functionality of the electronic land registration system and the POLARIS Map, and knowledge of the use to which Teranet was putting, and would continue to put, registered and deposited plans of survey, and agreed to such uses.
- 9-28. At no time during the creation and implementation of Ontario's electronic land registration system and POLARIS Map did any surveyor or the AOLS raise any concerns that the creation, implementation or functioning of the system or the POLARIS Map functioned so as to infringe in any way any copyright of Ontario land surveyors. (b) Surveyors knowledge of the creation and implementation of Ontario's electronic land registration system and POLARIS Map 29. At all times, all Ontario land surveyors knew of and understood the method of creation and operation of Ontario's electronic land registry system and, in particular, that Teranet was providing copies of registered and deposited plans to the public. In particular: (a) the Ministry made presentations to the AOLS and its members regarding the development of POLARIS, the functionality of the electronic land registration system, and the nature of its relationship with Teranet; (b) in the early 1990' s there were numerous media reports regarding the thenunique public-private partnership to create an electronic land registry system for Ontario; (c) Teranet made presentations at Universities where students were trained and educated in the profession of surveying in order to educate surveying students on developments to Ontario's electronic land registration system; (d) academic articles were published discussing the Government's relationship with Teranet and the nature of the electronic land registry system;
-10 - (e) surveyors entered into numerous contractual relationships with Teranet, III which surveyors at all times acknowledged and agreed that copyright III deposited and registered plans of survey was held by Teranet and/or its licensors, and not by surveyors; and (f) Teranet has had and continues to have numerous direct dealings with the AOLS, including contracting for provision of services by Teranet to the AOLS, attending and presenting at the AOLS annual conferences, and engaging in discussions regarding opportunities for partnership in improving Teranet's mapping products, which discussions are on-going. 30. Moreover, surveyors are and at all times have been regular users of Teraview and Geo Warehouse. Most Ontario land surveyors were and continue to be licenced users of Teraviewand GeoWarehouse. 31. The Teraview and GeoWarehouse Terms and Conditions, to which all users, including land surveyors, agree explicitly provide that the user agrees and acknowledges the owner or licensee of all intellectual property rights in the land information that Teranet is products and materials accessed on Teraview, which materials include deposited and registered plans. 32. By virtue of these direct contacts and contractual relationships, and the breadth of public information and information provided specifically to the surveying community, the Plaintiff and all Ontario land surveyors had direct knowledge of the creation and functionality of the electronic land registration system, including the POLARIS Map, and the use to which Teranet was putting registered and deposited plans of survey, and agreed to such use.
- 11-33. Having such direct knowledge, not only did Ontario surveyors not object to Teranet's use of deposited and registered plans and surveys and Teranet's copyright therein, they expressly and contractually agreed to it. No GENUINE ISSUE REQlJIRING A TRIAL 34. There is no genuine issue requiring a trial with respect to this action: (a) Surveyors do not have any copyright in registered or deposited plans by virtue of section 9(1)( e) of the Surveys Regulation, pursuant to which any plan or survey registered or deposited under the Land Titles Act or Registry Act is the property of the Crown, inclusive of intellectual property rights. (b) Plans of survey registered or deposited with LROs are prepared and published under the substantial control and direction of the Crown. Copyright in the Surveyors' Works therefore vests in the Crown, and not surveyors, by virtue of the Copyright Act, R.S.C. 1985, c. C-42, s. 12. Teranet is expressly authorized and licensed by the Crown to use the works for the specific purposes and in the manner at issue in this action. (c) Surveyors at all times consented to all alleged infringing uses of Surveyors' Works and have granted and continue to grant express licences, or in the alternative implied licences, for all uses of Surveyors' Works made by Teranet. (d) All Teranet's uses of Surveyors' Works that are alleged to be infringing are a fair dealing for research and private study within the meaning of s. 29 of the Copyright Act, R.S.C. 1985, c. C-42;
- 12 - (e) Legislation mandates the Ontario Government to provide the services which Teranet then provides under contract. The uses of Surveyors' Works which are alleged to be infringing are required by statute. Teranet's actions are not an infringement of copyright of the Plaintiff or any members of the proposed class. (f) Surveyors, expressly and by having engaged in a course of conduct with full and direct knowledge of the matters now complained of are estopped from pursuing this claim, have acquiesced to the uses of their plans of survey, have waived the rights they purport to enforce, and are barred from pursuing this claim based on the equitable doctrine of laches. (g) By submitting plans of survey for deposit or registration with a signed statement requiring the plans to be deposited or registered under the Land Titles Act or Registry Act, surveyors unequivocally and expressly agree to be bound by the provisions of those Acts. As such the Plaintiff and members of the proposed class, have transferred their copyright, if any, in the Surveyors' Works, or in the alternative have abandoned any claim to copyright, or in the alternative have waived any retention of copyright, or the right to enforce copyright, if any, in the Surveyors' Works. (h) The Plaintiff and members of the proposed class knew or reasonably ought to have known of the conduct alleged to be an infringement of copyright in the Statement of Claim by no later than 1995. Accordingly, the herein action is statute barred.
- 13 - ST ATUTORY PROVISIONS AND RULES OF THE COURT 35. Teranet relies on the following statutes and regulations: (a) Copyright Act, R.S.C. 1985, c. C-42, ss. 2, 3, 5,12-1427-29,30.2,41 (b) Land Titles Act, R.S.O. 1990, c. L-5, ss. 1-23, 66-85, 140-154, 163-172 (c) Registry Act, R.S.O. 1990, c. R-20, ss. 1,3-21, 18,21,22,25, 78-93, 94-96. (d) Surveys, Plans and Description of Land Regulation, O. Reg. 43/96, ss. 1-13.1, 44-48 (e) Land Registration Reform Act, R.S.O. 1990, c. L.4; (f) Electronic Registration Act (Ministry of Consumer and Business Services Statutes), 1991, S.O. 1991, c. 44. (g) Electronic Land Registration Services Act, 2010, S.O. 2010, c. 1, Sch. 6 36. Teranet also relies on Rules 20, 37 and 57 of the Ontario Rules of Civil Procedure, R.R.O. 1994, Reg. 194. 37. Teranet will rely on such further and other grounds as counsel may advise and this Honourable Court permit. motion: THE FOLLOWING DOCUMENTARY EVIDENCE will be used at the hearing of the 38. The Pleadings herein; 39. The Affidavit of Art Daniels, sworn July 28,2011;
- 14-40. The Affidavit of Christopher Valentine, sworn July 28,2011; 41. The Affidavit of Al Buckle, sworn August,2011; and 42. such further and other material as counsel may advise and this Honourable Court may permit. July 29,2011 McCarthy Tetrault LLP Suite 5300, Toronto Dominion Bank Tower Toronto ON M5K le6 F. Paul Morrison LSUC#: 17000P Tel: 416601-7887 Fax: 416 868-0673 Julie K. Parla LSUC#: 45763L Tel: 416601-8190 Fax: 416 868-0673 Jameel Madhany Tel: 416 601-8329 Fax: 416 868-0673 LSUC#: 59247Q Lawyers for the Defendant TO: Gardiner Roberts LLP Scotia Plaza 3100-40 King Street West Toronto ON M5H 3Y2 William S. O'Hara Tel: (416) 865-6632 Fax: (416) 865-6636 Branch MacMaster 1410-777 Hornby Street Vancouver BC V6Z 1S4 Ward K. Branch/Luciana Tel: (604) 654-2996 Fax: (604) 684-3429 Basil Lawyers for the Plaintiff
KEATLEY SURVEYING LTD. d TERANET INC. Plaintiff an Defendant Court File No: CV-10-414169-00CP ONTARIO SUPERIOR COURT OF JUSTICE Proceeding commenced at Toronto NOTICE OF MOTION McCarthy Tetrault LLP Suite 5300, Toronto Dominion Bank Tower Toronto ON M5K 1E6 F. Paul Morrison LSUC#: 17000P Tel: 416 601-7887 Fax: 416 868-0673 Julie K. Parla LSUC#: 45763L Tel: 416 601-8190 Fax: 416 868-0673 Jameel Madhany Tel: 416 601-8329 Fax: 416 868-0673 LSUC#: 59247Q Lawyers for the Defendant #10507734