Equip: IP Litigation Case of the Week
Written by Dominique T. Hussey, Jeilah Y. Chan, Emily P. Kettel and Melissa M. Dimilta
Two recent copyright infringement disputes involved the rare intersection of intellectual property with real property.
In the first, the Ontario Court of Appeal determined who owned copyright in land surveys deposited with the registry office (hint—it’s not the surveyor). In the second, a consulting firm sued for copyright infringement, alleging an architect and homeowner reproduced a home’s original design.
Keatley Surveying Ltd v Teranet Inc, 2017 ONCA 748 and Strathearn Consulting Inc v Barbra Ann Kirshenblatt et al, T-1876-14
Who owns copyright? Land Surveys: Keatley Surveying Ltd v Teranet Inc
In Ontario, homeowners can access the Ontario land registration system electronically to obtain copies of land surveys. This system is the result of a joint project between the Ontario government and Teranet Inc., a private sector company that manages the province’s electronic land registration system.
On behalf of land surveyors in Ontario, Keatley Surveying Ltd. started a class action proceeding alleging that Teranet infringed the surveyors’ copyright in the surveys by digitizing, storing and copying the surveys deposited by surveyors in the registry system.
There was no dispute that the surveys were artistic works, protectable under the Copyright Act; the central question was who owned the copyright. Teranet argued that the Crown owned the copyright—not the surveyors—and therefore the surveyors’ infringement action should be dismissed. The Ontario Superior Court and the Court of Appeal agreed that copyright in land surveys belongs to the Crown, citing section 12 of the Copyright Act, which grants the Crown copyright in any work prepared or published by or under the direction or control of the Crown or any government department.
The Court of Appeal found that the Crown directed or controlled the surveys’ publication because provincial legislation that governs the land registry system requires the Crown to make copies of surveys available upon request.
Reproduction? House designs: Strathearn Consulting Inc v Barbra Ann Kirshenblatt et al
In the Strathearn litigation, Strathearn Consulting Inc. sued a homeowner, an architectural firm, a real estate agent, and a brokerage firm for copyright infringement of its house design, claiming $2.5 million in damages. Strathearn stated its house design was “an original design consisting of a large single-family dwelling with a unique look and feel”, to which the stonework with unique patterns and colours, distinctive details on the stone corbels and chimney, and unique wood details at the top of prominent gables contribute.
Strathearn claimed that homeowner Kirshenblatt directed the creation, design, and construction of an infringing house design which allegedly reproduced substantial portions of the Strathearn design, including stonework in the same shape and colour, same stone corbel and chimney details, and same wood details at the top of prominent gables. Kirshenblatt defended the suit, alleging that the Strathearn design is not protectable as an original architectural work under the Copyright Act, and that the renovation’s design did not amount to a protectable “architectural work” in its own right.
The matter was ultimately resolved by consent judgment in October 2017 without reasons. Nevertheless, a copyright infringement action may be a viable avenue for preventing others from “keeping up with the Joneses” by copying home designs.
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