Iced directories

In Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 Gordon J indicates that -

It is not sufficient to demonstrate the subsistence of copyright by asserting that someone (and I do not accept that such a person has been found in this matter), who may in certain broad circumstances, in an unspecified number of relevant instances, have done an act that constitutes some unknown contribution to a work in question "no matter how unimpressive" will be enough to make good the Applicants’ claim.

That decision, which has wider ramifications than lower revenue for Telstra's directories arm, calls on the IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 case in addressing questions about copyright protection of databases.

In the current judgment Gordon J notes that -

Many thought that the issue in these proceedings – whether the [White Pages and Yellow Pages directories] published by the Applicants satisfy the requirements of the Copyright Act 1968 (Cth) (the Copyright Act) to attract the statutory monopoly granted by that Act – might have been resolved by the decision of the High Court in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14; (2009) 254 ALR 386 (IceTV). It seems they were mistaken. The Respondents say it was. The Applicants say it was not.

Some law undergrads, on the basis of questions to me today, seem to think that the issues had been settled forever by the decision in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112, famously contrasted with the Feist judgment in the US.

The Australian court in Desktop gave copyright protection to Telstra's telephone directories, enshrining a 'sweat of the brow' doctrine.

In the IceTV case the High Court considered originality and use of non-substantial parts of television program (ie directory) information, with a comment that -

Much has been written about differing standards of originality in the context of the degree or kind of "skill and labour" said to be required before a work can be considered an “original” work in which copyright will subsist. "Industrious collection" or "sweat of the brow", on the one hand, and "creativity", on the other, have been treated as antinomies in some sort of mutually exclusive relationship in the mental processes of an author or joint authors. They are, however, kindred aspects of a mental process which produces an object, a literary work, a particular form of expression which copyright protects. A complex compilation or a narrative history will almost certainly require considerable skill and labour, which involve both "industrious collection" and "creativity", in the sense of requiring original productive thought to produce the expression, including selection and arrangement, of the material.

The current decision indicates that -

1. among the many contributors to each Work, the Applicants have not and cannot identify who provided the necessary authorial contribution to each Work. The Applicants concede there are numerous non-identified persons who “contributed” to each Work (including third party sources);

2. even if the human or humans who “contributed” to each Work were capable of being identified (and they are not), much of the contribution to each Work -

2.1 was not "independent intellectual effort" (IceTV [2009] HCA 14; 254 ALR 386 at [33]) and further or alternatively, “sufficient effort of a literary nature” (IceTV [2009] HCA 14; 254 ALR 386 at [99]) for those who made a contribution to be considered an author of the Work within the meaning of the Copyright Act;

2.2 further or alternatively, was anterior to the Work first taking its “material form” (IceTV [2009] HCA 14; 254 ALR 386 at [102]);

2.3 was not the result of human authorship but was computer generated;

3. the Works cannot be considered as "original works" because the creation of each Work did not involve "independent intellectual effort" (IceTV [2009] HCA 14; 254 ALR 386 at [33]) and/or the exercise of "sufficient effort of a literary nature": IceTV [2009] HCA 14; 254 ALR 386 at [99]; see also IceTV [2009] HCA 14; 254 ALR 386 at [187]-[188].

It will be interesting to see whether Telstra appeals to the full Federal Court (and beyond) and whether the failure of such an appeal is reflected in calls for amendment of the Copyright Act 1968 (Cth) to provide database protection through a sui generis regime modelled on the European Database Directive, discussed in Mark Davidson's The Legal Protection of Databases (Cambridge: Cambridge University Press 2003).