In essence, the court held that as there were no human authors of the directories, they were not original works and thus not protected under the Copyright Act 1968 (Cth).
Software comes in a variety of forms and the tasks performed by it range from the trivial to the substantial. So long as the person controlling the program can be seen as directing or fashioning the material form of the work there is no particular danger in viewing that person as the work’s author. But there will be cases where the person operating a program is not controlling the nature of the material form produced by it and in those cases that person will not contribute sufficient independent intellectual effort or sufficient effort of a literary nature to the creation of that form to constitute that person as its author: a plane with its autopilot engaged is flying itself. In such cases, the performance by a computer of functions ordinarily performed by human authors will mean that copyright does not subsist in the work thus created. Those observations are important to this case because they deny the possibility that [Telstra's] Mr Vormwald or Mr Cooper were the authors of the directories. They did not guide the creation of the material form of the directories using the programs and their efforts were not, therefore, sufficient for the purposes of originality.Keane CJ commented that -
# In Australia copyright is a creature of the Copyright Act 1968 (Cth) (the Act). The monopoly in copyright subsists only insofar as the Act provides. Because the terms of the Act reflect the intention of the Berne Convention for the Protection of Literary and Artistic Works to protect the rights of authors, copyright subsists in a literary work only by virtue of the authorship of that work by an individual or individuals. It may be that if the author of a work is the employee of another person, ownership of the copyright may vest in the employer; but copyright in a literary work can subsist only if it originates from an individual. This case highlights the difficulty confronting a claim to copyright in a literary work which is compiled by an automated process.Keane went on to state that -
In these proceedings, the learned trial judge determined, as an issue separate from the other issues in the case, the question whether copyright subsists under the Act in the White Pages Directory (WPD) and the Yellow Pages Directory (YPD) published by Telstra Corporation Limited and Sensis Pty Ltd (the appellants). The question concerned regional WPDs and YPDs dating back to the year 2000 for 11 different regional areas of Australia. Her Honour determined the question in the negative.
The appellants’ case is that each WPD and YPD is an original literary work. In particular, each directory is said to be a compilation consisting of the expression of the information in individual listings in their particular form and arrangement and in the overall arrangement of the individual listings, and, additionally in the case of the YPD, in the cross-referencing of the information under subject matter headings.
Numerous individuals, some identified and some not, contributed to the work preparatory to the compilation of each of the WPDs and YPDs, but the compilations were brought into the form in which they were published primarily by an automated computerised process. No claim was made by the appellants to copyright in the computer database or software.
The trial judge approached the determination of the question by reference to the decision of the High Court of Australia in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14; (2009) 239 CLR 458.
In this Court, the principal argument of the appellants is that, because each directory is a literary work published in Australia, the only question to be answered is whether it is an original literary work; this question can be answered, they say, without identifying any particular author much less all the authors. That is said to be because copyright in a work first published in Australia can subsist by virtue of s 32(2)(c) of the Act if the work is original in the sense of not being a copy. The appellants contend that it can be inferred that intellectual effort of some kind was applied by some individual or individuals in the production of each directory so that it can be said to be an original literary work. They argue that, neither the decision in IceTV, nor the reasons given by the High Court in that case, compels, or points to, a different conclusion in this case.
The principal contention of the respondents is that the directories were compiled, not by the individuals engaged to facilitate the process, but by a computerised process of storing, selecting, ordering and arranging the data to produce the directories in the form in which they were published.
In my respectful opinion, the principal contention of the respondents should be accepted, and the decision of the trial judge should be upheld for that reason.
