In the 2009 IceTV case, Gummow, Hayne and Heydon JJ of the High Court of Australia remarked that there was a need to treat with caution the emphasis in Desktop Marketing v Telstra upon labour and expense per se when determining whether copyright subsists in a compilation. Following this decision, I expected that we would see, in the next few years, some judicial consideration of the High Court’s remarks in a subsequent compilation case. I didn’t expect that it would come so soon or be so on point.

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 is an important decision because not only it is the first major case to consider subsistence of copyright in data compilations since IceTV, but it reconsiders the question of whether copyright subsists in Telstra’s Yellow Pages and White Pages telephone directories.

Some background

Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112 considered the question of whether Telstra held copyright in their Yellow Pages and White Pages directories. The court approached this as a question of originality – were the directories (which were essentially just compilations of name, address and phone number data, arranged alphabetically) sufficiently original to attract copyright protection? The court held that copyright can subsist in a compilation produced as a result of the exercise of skill, judgment or knowledge in the selection, presentation or arrangement of materials or where substantial labour or expense has been invested in collecting the materials included in the compilation (at [409]). Telstra had undertaken substantial labour and incurred significant expense in compiling the Yellow Pages and White Pages directories, and therefore owned copyright in the directories as compilations.

In my blog post on the IceTV decision in 2009, I wrote:

Since Desktop Marketing v Telstra, there has been significant uncertainty around a user’s ability to reproduce material contained in a copyrighted data compilation because the test for originality was so wide. This meant that a copyright holder could assert such control over a database that at times they appeared (and often purported) to be able to control use of what essentially amounted to mere facts and information in circumstances where copyright law should not extend. The [IceTV decision], while not bringing us in line with the US decision of Feist v Rural Telephone Services in regards to whether copyright should subsist in a compilation that lacks creative input, at least takes a step in the right direction of tightening the originality threshold to provide that reproduction of the purely informational material within a compilation will not constitute a substantial part sufficient to give rise to an infringement claim.

The Telstra Corp v Phone Directories decision

In Telstra Corp v Phone Directories, the question again arose as to whether copyright subsists in the White Pages (WPDs) and Yellow Pages (YPDs) directories.

Gordon J considered that the proper starting point was the Copyright Act ([7]) and that the completion of four steps could assist in determining whether copyright subsists in a work ([28]):

1. Identify the work
2. Identify the author/s of the work
3. Determine when first publication of the work occurred
4. Identify how the work is original.

Her Honour placed significant weight on the necessity of being able to identify an author before copyright can be held to subsist in a work. She states at [20], “The centrality of authorship is self evident”. She then sets out ten points in support (and elaboration) of this statement. I reproduce these in full because they are central to Justice Gordon’s reasoning in this case:

The “theoretical underpinnings” of the Copyright Act strike a balance between rewarding authors of original literary works against policy considerations concerning “the public interest in maintaining a robust public domain in which further works are produced”: IceTV [2009] HCA 14; 254 ALR 386 at [24] and [71]. The genesis of copyright legislation in England was to protect the rights of authors of work from the reproduction of their work without their consent: see IceTV [2009] HCA 14; 254 ALR 386 at [25].

The Copyright Act fixes on the author: ss 32, 33, 35 and 127 of the Copyright Act; IceTV [2009] HCA 14; 254 ALR 386 at [22]- [25] and [96]-[97] and Vawdrey Australia Pty Ltd v Krueger Transport Equipment Pty Ltd (2009) 83 IPR 1 at [147] per Lindgren J.

The author is the person or persons who bring the work into existence in its material form: s 10(1), 31 and 32 of the Copyright Act and IceTV [2009] HCA 14; 254 ALR 386 at [26], [33] and [98]-[99]. To be considered as an author of a literary work the person or persons must have exercised “independent intellectual effort” (IceTV [2009] HCA 14; 254 ALR 386 at [33] and [48]) and / or “sufficient effort of a literary nature” (IceTV [2009] HCA 14; 254 ALR 386 at [99]).

The Copyright Act provides for the possibility of joint authors: s 10(1) of the Copyright Act and IceTV [2009] HCA 14; 254 ALR 386 at [23] and [100]. A “work of joint authorship” requires that the literary work in question “has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors”: s 10(1) of the Copyright Act; see also Levy v Rutley (1871) LR 6 CP 523 at 529 per Keating J; Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd (No. 1) [1995] FSR 818 at 835-836 per Laddie J; Prior v Lansdowne Press Pty Ltd (1975) 12 ALR 685 at 688 per Gowans J.

The Copyright Act also provides for compilations – the bringing into existence of a literary work which gathers and organises material from various sources: IceTV [2009] HCA 14; 254 ALR 386 at [72], quoting William Hill (Football) Ltd v Ladbroke (Football) Ltd [1980] RPC 539 at 550 per Diplock LJ. The fact a work is a compilation will itself inform the issues of authorship to be considered: IceTV [2009] HCA 14; 254 ALR 386 at [99]. The author or authors will be those who gather or organise the collection of material and who select, order and arrange its fixation in material form: ss 10(1), 31 and 32 of the Copyright Act and of IceTV [2009] HCA 14; 254 ALR 386 at [73]- [74] and [99]. However, it is a question of fact and degree which one or more of them will have expended “sufficient effort of a literary nature” to be considered an author under the Copyright Act: IceTV [2009] HCA 14; 254 ALR 386 at [99].

Original works emanate from authors: ss 32, 33 and 35 of the Copyright Act and IceTV [2009] HCA 14; 254 ALR 386 at [22], [24], [33], [48] and [96]. Authorship and originality are correlatives: IceTV [2009] HCA 14; 254 ALR 386 at [33], [34], [47]-[49], [52] and [54]. In that context, as mentioned in [20(3)] above, “originality” under the Copyright Act “means that the creation (ie the production) of the work required some independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”: IceTV [2009] HCA 14; 254 ALR 386 at [33], [47]-[48] and [99]; see also at [187]-[188] and discussion of the need for some “creative spark” and exercise of “skill and judgment”. The phrases adopted are different. However, each phrase confirms that for a work to be sufficiently original for the subsistence of copyright, “substantial labour” and / or “substantial expense” is not alone sufficient. More is required. What that more is will, of course, vary from case to case but must involve “originality” by an identified author in an identified work. Where the expression of the work is dictated by the nature of the information the subject of expression without such effort, it will go against a finding of originality: IceTV [2009] HCA 14; 254 ALR 386 at [42] and [170].

The Copyright Act does not protect facts, ideas or information contained in a work, to ensure a balance is struck between the interests of authors and those in society: IceTV [2009] HCA 14; 254 ALR 386 at [28] and the cases cited therein. The Copyright Act does not provide protection for skill and labour alone: IceTV [2009] HCA 14; 254 ALR 386 at [49], [52], [54] and [131].

The Copyright Act protects the particular form of expression of the information: IceTV [2009] HCA 14; 254 ALR 386 at [26], [28], [40], [70], [102] and [160]; Hollinrake v Truswell [1894] 3 Ch 420 at 424 per Lord Herschell LC; Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 177 FCR 61 at [17] per Emmett J; see also Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29 at [40], [41] and [212]. Copyright is not given to reward work distinct from the production of a particular form of expression: IceTV [2009] HCA 14; 254 ALR 386 at [28] and [31]. Accordingly, it is “unhelpful to refer to the ‘commercial value’ of the information, because that directs attention to the information itself rather than to the particular form of expression”: IceTV [2009] HCA 14; 254 ALR 386 at [31] and [166].

As compilations often contain facts and information, it is necessary to focus on the nature of the skill and labour required to create the work and ask whether it is directed to the originality of the particular form of expression: IceTV [2009] HCA 14; 254 ALR 386 at [31], [33], [47]-[48], [52] and [54].

“Fixation” or identification of the original work is essential: ss 8 and 31-35 of the Copyright Act and IceTV [2009] HCA 14; 254 ALR 386 at [15], [24]-[28] and [102]-[105]. Copyright does not subsist in a work unless and until the work takes a material form: IceTV [2009] HCA 14; 254 ALR 386 at [26] and [103].

A number of things become very clear from Gordon J’s enumeration of these points. Firstly, she has relied strongly on the reasoning in IceTV in her judgment, preferring that to the Desktop Marketing decision even though it was argued by the Applicants that Desktop Marketing had greater relevance. In fact, Gordon J addresses this argument directly at paragraph [46]:

Before turning to the facts, mention must be made of the decision of the Full Court of the Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112; (2002) 119 FCR 491 (Desktop Marketing). In that decision, copyright was found to subsist in certain editions of WPDs and YPDs. The Applicants submitted that the resolution of the present case remains governed by the outcome in Desktop Marketing [2002] FCAFC 112; 119 FCR 491 and that the High Court’s comments on copyright subsistence in IceTV [2009] HCA 14; 254 ALR 386 should be regarded as obiter dicta. I reject that contention. Firstly, IceTV [2009] HCA 14; 254 ALR 386 is binding authority on the proper interpretation of the Copyright Act. The reasoning of both plurality judgments establishes principles of law beyond copyright infringement. Secondly, the High Court directly warned of the need to treat Desktop Marketing 119 FCR 491 with particular care: see IceTV [2009] HCA 14; 254 ALR 386 at [52], [134], [157] and [188]. Thirdly, Desktop Marketing [2002] FCAFC 112; 119 FCR 491 did not deal directly with the issue of authorship. Rather, all issues in respect of copyright had been conceded other than that of originality. In fact, Finkelstein J (at first instance) questioned the assumptions the parties had made about authorship: Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612; (2001) 51 IPR 257 at [4]. Finally, the facts of this case are significantly different. The WPDs and YPDs in question are different. Moreover, the Genesis Computer System which stored the relational database and which was used in the production of some of the WPDs and YPDs in issue in these proceedings (after September 2001 in the case of YPDs and late 2003 in the case of WPDs) was not in use in Desktop Marketing [2002] FCAFC 112; 119 FCR 491. (The Genesis Computer System is considered in detail at [60]ff below).

Secondly, consistent with IceTV, she rejects the notion that skill, labour or expense alone can give rise to copyright protection (see also [341]). There must be something more, and that something more is the exercise of “independent intellectual effort” and /or “sufficient effort of a literary nature”.

Finally, she draws strong correlations between the concepts of “authorship” and “originality” in copyright law, such that a consideration of the latter is dependent on identification of the former. She says at [45]: “It would be absurd to assume that I am bound only to determine whether copyright subsists in the Works whilst ignoring any question of ownership. Copyright is a form of property created by statute for the benefit of the author or authors who, in the absence of some other arrangement, is the owner or are the owners of the work.”

Ultimately, the case turned on two factors. Firstly, Telstra’s inability to identify with any degree of certainty the “authors” of the WPDs and YPDs. Gordon J found that there were numerous people who had contributed in part to the production of the directories – some of these people were employees and some were independent contractors; some were still in the Applicants’ employ but others were not; and some had played only minor roles whereas others had played more significant roles. The exact number of contributors was unknown and the Applicants had not identified who the contributors were.

Secondly, Gordon J held that even if the authors could be identified with sufficient clarity and certainty (which they could not), the people suggested to be the authors of the works did not exercise “independent intellectual effort” and/or “sufficient effort of a literary nature” ([338]). The majority of the processes creating the WPD and the YPD was heavily automated. A system of computer-imposed “Rules” (which the judge considered extensively at [88]-[166]) controlled the content and prescribed the form of expression of the works (see [163]). Any human discretion had to be exercised in accordance with the Rules ([164]). The system was designed to limit originality, not provide for it ([341]). The tasks performed by individuals applying the Rules were mechanical and often able to be completed in large numbers swiftly ([341]). Very few people had any part to play in the final presentation of the works or the particular form of the expression of the information ([338]). Gordon J rejected the Applicants’ contention that the relevant intellectual effort involved was understanding and applying the Rules, holding that the independent intellectual effort required must be directed to the creation of the work and that the independent effort claimed by the Applicants was not ([165]). Consequently, Gordon J held that none of the works were original and none of the people said to be authors of the works exercised “independent intellectual effort” or “sufficient effort of a literary nature” in creating the works ([340]).

Conclusion

At paragraphs [343]-[344], Gordon J summarised her position:

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.

Authorship and originality are correlatives. The question of whether copyright subsists is concerned with the particular form of expression of the work. You must identify authors, and those authors must direct their contribution (assessed as either an “independent intellectual effort” of a “sufficient effort of a literary nature”) to the particular form of expression of the work. Start with the work. Find its authors. They must have done something, howsoever defined, that can be considered original. The Applicants have failed to satisfy these conditions. Whether originality be the product of some “independent intellectual effort” and / or the exercise of “sufficient effort of a literary nature”, or involve a “creative spark” or the exercise of “skill and judgment”, it is not evident in the claim made by the Applicants.

Accordingly, Gordon J held that copyright did not subsist in Telstra’s WPDs and YPDs.

My thoughts

The broad test of originality set down in Desktop Marketing only served to create uncertainty for both creators and users in this area (especially users). It blurred the boundaries between facts, which are not protectable by copyright, and compilations of facts or data, which could be protected (raising questions of what constituted a “substantial part” of a factual database or compilation – some of those non-copyrighted facts?) It extended copyright protection to a realm of works not previously contemplated as falling within copyright’s scope, and encouraging overly broad copyright assertions by opportunistic compilers of data.

In my opinion, the result reached by Justice Gordon in Telstra Corp v Phone Directories continues the sensible approach of the IceTV High Court in reining in the overreach of copyright in this area.