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Focus: Full Court rules White and Yellow Pages not 'original literary works'

17 December 2010

In brief: In a landmark copyright decision, the Full Federal Court has upheld a decision that copyright in both the White Pages and the Yellow Pages directories was not made out because computer programs, rather than human authors, had done the crucial work of arranging the information and producing the particular form of its expression. Partner Jackie O'Brien and Law Graduate Henry Fraser report.

How does it affect you?

  • The decision does not mean that compilations are no longer protected by copyright, or that a creative spark in the process of creation is required to attract protection. If there had been evidence that human authors, rather than computer programs, had been responsible for putting the information into the form in which it was expressed in the directories, it is likely that the court would have held that the directories were original literary works protected by copyright.
  • If you seek to protect material created by multiple authors – in particular a compilation that is based on the gradual accumulation of information – you must be able to provide evidence that the form in which the information is presented is the result of the intellectual effort of human authors. To do so, you would not necessarily have to identify every author and their contribution. However, the material will not be protected by copyright unless you can demonstrate authorship. It is therefore important for providers of content in the form of databases and compilations to keep good records of the process of arranging and presenting the content. If there are multiple authors, it will be important to show that their work:
    • was collaborative rather than separate;
    • involved intellectual effort; and
    • was directed at arranging and presenting the information, and not only at collecting it, or processing it though computer programs.

Compilations as literary works

Tables and compilations, such as telephone directories and television program guides, can be protected under the Copyright Act 1968 (Cth) as 'compilations'. A compilation is treated by the Act as a 'literary work'. One of the key requirements for copyright protection of a literary work, including a compilation, is that the work be 'original'. In the context of Australian copyright law, 'original' does not mean creative or innovative. Rather, it means that the work must have originated with an author, who exercised skill and effort in creating it. Until recently, the skill, effort, and expense involved in collecting the information set out in a compilation was considered to be enough to satisfy the requirement of originality. However, a recent High Court decision brought that proposition into question.1

Ice TV and the decision in the present case at trial

In IceTV v Nine Network Australia Pty Ltd, a case about the appropriation of information from Channel Nine's television programming database, the High Court considered what degree and kind of skill and labour are required to attract copyright protection for a compilation. The High Court made it clear that copyright does not provide monopolies on facts or information. Nor does copyright simply reward effort for its own sake, or protect against perceived misappropriation of labour. The kind of effort and skill that the copyright regime in Australia protects is very specific. It is the independent intellectual effort involved in the production of a particular form of expression, and the fixation of ideas or information in that form. The author or authors of a compilation, according to Justices Gummow, Hayne and Heydon, are 'those who gather or organise the collection of material and who select, order or arrange its fixation in material form.' The court held that the expression of time and title information in Channel Nine's programming database was not the product of any author's intellectual effort. IceTV did not therefore infringe copyright by reproducing that information.

The decision in IceTV also placed great emphasis on demonstrating authorship in order to satisfy the requirement of originality. Justices Gummow, Hayne and Heydon said:

To proceed without identifying the work in suit and without informing the enquiry by identifying the author and the relevant time of making or first publication, may cause the formulation of the issues presented to the court to go awry.

 

This comment gave rise to a view that it would be necessary to identify each and every author of a work of joint authorship in order to demonstrate authorship, and thus to show that a work was an 'original' work protected by copyright.

The trial decision in the present case

The present case was an appeal from a decision of Justice Gordon in the Federal Court.2 Telstra and Sensis sued Phone Directories Company and Australian Local Directories, claiming that those companies had infringed copyright in the hard copies of various regional editions of Telstra's Yellow Pages and White Pages directories. Justice Gordon, applying the decision in IceTV, held that Telstra had failed to show that copyright subsisted in the directories. The principal reason for the decision was that Telstra could not identify the necessary human authorial contribution to the work. The secondary reasons all related to the fact that the works had not been created by independent human intellectual effort, and that the main human effort occurred in the stages before the work was put into material form.

Justice Gordon appears to have interpreted the High Court's comments on authorship in IceTV as requiring the identification of all authors of a work in order to show the work is an original work. Her Honour said that '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' or a 'sufficient effort of a literary nature') to the particular form of expression of the work.' Justice Gordon's decision provided further support for the view that it would be necessary to identify every author of a work in order to pursue a claim for copyright infringement of that work.

The decision on appeal

The Full Federal Court, in separate decisions, unanimously upheld Justice Gordon's decision that copyright did not subsist in the hard-copy directories.3 Chief Justice Keane, and Justices Perram and Yates, agreed that the work of arranging the information in the directories was done by computer programs rather than human authors, and that none of the human contributors' work involved intellectual effort producing original expression or arrangement of information. However, both Chief Justice Keane and Justice Perram said that it is not necessary to identify all the authors of a literary work in order to establish that it is an original work. Section 32(2) of the Act provides that copyright subsists in an original work (literary, artistic, musical or dramatic) first published in Australia. Chief Justice Keane and Justice Perram considered that this section only requires the existence of an author, not that the author or authors be identified. Their Honours explained that the comments about identifying authors in IceTV (quoted above) were made by way of practical advice, rather than as a binding prescription. Justice Bennett also recently said, in Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd,4 that she did not think it essential to identify authors individually in order to show a work to be original. In the absence of an authoritative or prescriptive statement from the High Court, the principal that it is only necessary to show that an author exists in order to show that a work is original, rather than to identify each author, should be considered authoritative.

The Full Court rejected Telstra's argument that the directories had been works of joint authorship. Their Honours observed that collaboration is essential to joint authorship. If contributors to a compilation do not collaborate, and if their work is separate and distinct, they are not joint authors.

The Full Court also clarified the application of section 128 of the Copyright Act. The section provides, among other things, that copyright is presumed to subsist in a work published anonymously or pseudonymously in the past 70 years, 'unless the contrary is established'. The court held that this is not a presumption that must be rebutted by the party denying that the work is protected by copyright. The section does not mean that copyright is presumed to subsist unless the respondent proves it does not. Rather, the court decides from the evidence provided whether copyright subsists in the work on the basis that the work is original. If it is not shown that the work is original, then copyright cannot subsist. The court will then consider that it has been established that copyright does not subsist, contrary to the presumption in s128.

Analysis

This decision confirms the High Court's revision of the approach to the skill and labour involved in producing a work. The decision in the present case also makes it clear that the previously accepted practice, of finding that a compilation is an original work on the basis of the labour involved in collecting the information, should no longer be followed.5 Copyright protects the intellectual effort of an author in putting a work in material form: in putting the ideas or information in the work into a particular form of expression. Preparatory work such as research, or the collection of information, is not protected by copyright. Such work is still relevant to show that a work is not copied. A great deal of research and preparation will also suggest originality. However, for the originality of a compilation to be certain, and for the compilation to be considered to have an author, a person or persons must also have taken an active role in arranging the final form of expression of the information in the compilation.

It should also be remembered that, in the present case, the judges were careful to observe that the copyright in the databases and software from which the directories were generated was not in issue. The copyright in issue was that in the hard copy editions of the directories. Justice Yates went so far as to say that the activities involved in selecting, customising, maintaining and operating the computer systems used to produce the directories, might have resulted in the creation of other works protected by copyright. That means that there may be a basis for copyright protection of some other work created in the process of making the directories.

The material form in which information must be expressed in order to attract copyright includes any form of storage, whether visible or not. That includes digital storage and storage in computer memory. The information in the directories may have been arranged, expressed and stored digitally in material form in the databases or software used to generate the compilations that were finally manifested in the hard copy directories. The effort of making that arrangement may well have been human, authorial, intellectual effort.

If that were the case, then the compilation stored in that way would be protected by copyright, even though the hard-copy directories are not protected. The owners of copyright in the digitally stored compilations – presumably Telstra or Sensis – would have the exclusive right to reproduce those compilations, which they would be exercising by producing hard-copy or online directories. Anybody else reproducing the hard copies of the Yellow Pages and White Pages directories might be taking a substantial part not just of the hard-copy directories, but also of the compilation stored on the database or software, because the arrangement of the information in the hard-copy directories may actually be a reproduction of the arrangement stored in software or a database. That taking of a substantial part might, in those circumstances, be an infringement of copyright in the databases or software used to produce hard-copy directories, even though the present case found that there was no copyright in the hard-copy directories themselves.

Conclusion

The decisions in IceTV and the present case have brought about a degree of inconsistency. Copyright would subsist in a compilation in circumstances where human authors arranged the information contained within it. Yet the same compilation would not be an original literary work in circumstances where the arrangement had been generated by a computer program.

It appears unlikely that this inconsistency will prevail for long. Compilations such as the Yellow Pages and White Pages are extremely valuable to their owners, and are the product of an enormous amount of labour and resources. Justice Gordon noted in her decision that Telstra had more than $1.3 billion of revenue at stake in the case. Her Honour, at trial, and Chief Justice Keane, on appeal, both suggested that the Federal Parliament amend the Copyright Act to provide for better protection for databases. The European Parliament has already passed a directive protecting the arrangement and layout of databases from reproduction in Directive 96/9/EC, and the UK Copyright, Designs and Patents Act 1988 provides protection both for databases and works produced through the use of computer software.

Footnotes
  1. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2005) 254 ALR 386.
  2. Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44.
  3. Telstra Corporation v Phone Directories Company [2010] FCAFC 149.
  4. [2010] FCA 984.
  5. Desktop Marketing Systems v Telstra Corporation [2002] FCAFC 112.

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