In an eagerly awaited decision of the Federal Court of Australia [1], Justice Gordon held that no copyright subsists in the White Pages and Yellow Pages directories.
The decision has significant ramifications for producers of compilations and databases of factual information (such as telephone directories, public transport timetables and horse racing guides) as it suggests that such works may not be capable of copyright protection.
Facts
Telstra Corporation Limited (Telstra) and Sensis Pty Limited (Sensis) published the White Pages and Yellow Pages directories. Telstra and Sensis brought proceedings in the Federal Court against Phone Directories Company Pty Ltd and Australian Local Directories Pty Ltd alleging that the phone directories published by those companies infringed the copyright in the White Pages and Yellow Pages.
The issue at question was whether copyright subsists in the White Pages and Yellow Pages.
“Originality”
Under the Australian Copyright Act 1968 (Cth), a compilation is classed as a “literary work” and copyright will subsist in such work if (amongst other matters) the work is original and the author of the work was a qualified person (i.e. an Australian citizen or a person resident in Australia).
Whether compilations of factual information qualify as original literary works has been considered by many overseas courts and has received inconsistent responses.
Until 2009, the Australian courts followed the UK approach on originality with respect to compilations as a form of literary work. The UK courts held that copyright could subsist in compilations if sufficient intellectual effort was applied in the selection or arrangement of the facts, or if the author has engaged in sufficient effort or incurred sufficient expense in gathering the facts. In other words, “copyright protection will be given as a reward for the author’s investment of time and money, even if there be no creativity in the work” [2]. This is the “sweat of the brow” doctrine.
In 2009, the High Court in IceTv Pty Ltd v Nine Network Australia Pty Ltd [3] (which concerned copyright in Channel Nine’s television programme guides) departed from the UK approach and unanimously held that for a work to be sufficiently original for subsistence of copyright, substantial labour and/or substantial expense is not alone sufficient. The Court further held that originality under the Act means that the creation of the work required some independent intellectual effort and/or the exercise of sufficient effort of a literary nature, and discussion of the need for some “creative spark” and exercise of “skill and judgment”. This is the approach taken in the United States and Canada, where the courts have respectively held that “mere effort in collecting facts was not sufficient; originality required creativity in the selection and arrangement of data” [4] and “copyright did not subsist because there was insufficient skill or judgment in the overall arrangement, regardless of the industrious collection of information”[5].
The decision
In the Telstra case, Justice Gordon held that no copyright subsists in the White Pages and Yellow Pages directories. His reasoning was as follows:
1. Among the many contributors to the directories, Telstra and Sensis could not identify who provided the necessary authorial contribution to each directory.
2. Even if the persons who contributed to each directory were capable of being identified, much of the contribution to the directory was not:
- “independent intellectual effort” and “sufficient effort of literary nature”;
- the result of human authorship but was computer generated.
3. The directories cannot be considered as “original works” because the creation of each directory did not involve “independent intellectual effort” and/or “sufficient effort of literary nature”.
Justice Gordon also focused heavily on the relationship between authorship and originality. His Honour considered that originality is closely tied to authorship and, in following the IceTv case, held that for a work to be sufficiently original, it must involve originality by an identified author in an identified work. In respect of compilations, where no author can be identified at all, copyright cannot subsist.
Implications in Australia
The decision has significant impact on producers of compilations and databases of factual information as it establishes that investing a significant amount of labour and money in producing compilations and databases does not render them capable of copyright protection. Producers will instead have to prove authorship and the requisite degree of originality in order to obtain copyright protection. This effectively means that some compilations and databases, which have involved significant expenditure of labour and money, will be able to be copied by anyone without liability.
As this is a first instance decision, it does not bind any other court. It is also subject to appeal. Therefore, it remains to be seen whether future Australian courts will take the same approach to the protection of compilations and databases.
New Zealand position
“Compilation” is defined under the New Zealand Copyright Act 1994 to include “a compilation of data” and, therefore, any databases of compiled data will fall within the definition. It is important to distinguish this with the Australian Copyright Act, which does not define “compilation”. The judges in the IceTv case, therefore, assumed that Nine Network’s database of the scheduling of programmes was a compilation for the purposes of the Australian Copyright Act.
As with the Australian Copyright Act, under the New Zealand Copyright Act a compilation is classed as a “literary work” and copyright will subsist in such work if it is original. What constitutes “original” is not determined by the New Zealand Copyright Act, so common law principles will apply.
The New Zealand approach to “originality” with respect to compilations was clarified by the Court of Appeal in University of Waikato v Benchmarking Services Ltd [6], which held that the threshold test for originality is not high, the determining factor being whether sufficient time, skill, labour or judgement has been expended in producing the work. The Court further held that there can be no claim to any right in the information contained in the compilation where the compiler of the factual information is not the author or originator of the individual facts recorded in the compilation.
The Court of Appeal referred to a House of Lords decision [7] which held that copyright subsisted in betting coupons as “a great deal of skill, judgment, experience and labour had gone into devising the coupons”. The Court of Appeal also referred to an Australian case [8] (which predates the Telstra case) where the Court held that copyright subsisted in the directories even though labour and expense incurred was substantially in collecting, verifying, recording and assembling the relevant data. These cases supported the Court of Appeal’s principle that copyright is not concerned with the originality of ideas, but with the form of their expression.
It, therefore, appears that New Zealand follows the UK “sweat of the brow” approach on questions of originality. In other words, compilations and databases will attract copyright protection if sufficient time and labour has been expended in the collection, selection or arrangement of information - a low level of originality and creativity is required.
This will come as relief to those persons who invest a lot of labour and money in producing compilations and databases. If there is no copyright protection, any person would be entitled to copy, adapt or transmit the compilation or database thereby reducing the benefit of investing in the production of compilations and databases.
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44 (8 February 2010).
[2] Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 61.
[3] (2009) 254 ALR 386.
[4] Feist Publications v Rural Telephone Services Co, Inc 499 US 340 (1991).
[5] Tele-Direct Publications v American Business Information (1997) 154 DLR (4th) 328.
[6] (2004) 8 NZBLC 101,561 (CA).
[7] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465, 469 (HL).
[8] Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd (2002) 55 IPR 1.